Federal Circuit: August 2009 Archives
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August 2009 Archives

In re Bose Corp., No. 08-1448

The Trademark Trial and Appeal Board's finding that Bose Corporation (BOSE) committed fraud on the United States Patent and Trademark Office (PTO) in renewing the registration for the trademark WAVE, and its resultant order cancelling the registration entirely, is reversed as there was no substantial evidence that Bose intended to deceive the PTO in the renewal process. 

Read In re Bose Corp., No. 08-1448

Appellate Information

Appeal from:  United States Patent and Trademark Office, Trademark Trial and Appeal Board

Decided August 31, 2009

Judges

Before Michel, Chief Judge, Dyk, and Moore, CIrcuit Judges. 
Opinion by Michel, Chief Judge.   

Counsel
For Appellant:  Charles Hieken, Fish & Richardson P.C., of Boston, Massachusetts.    

For Appellees:  Raymond T. Chen, Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, Virginia.

Sharp v. US, No. 08-5105

A ruling permitting surviving spouses of deceased veterans and military retirees to receive Survivor Benefit Plan (SBP) payments unreduced by the amount of their reinstated Dependency and Indemnity Compensation (DIC) payments is affirmed where the plain language of 38 U.S.C. section 1311(e) unambiguously precludes the DIC-SBP offset of 10 U.S.C. section 1450(c)(1), and partially repeals it so that surviving spouses who receive reinstated DIC by virtue of marrying after age 57 receive their SBP payments unreduced by the amount of their DIC payments.       

Read Sharp v. US, No. 08-5105

Appellate Information

Appeal from:  United States Court of Federal Claims
Decided August 26, 2009

Judges

Before Mayer, Clevenger, and Schall, CIrcuit Judges. 
Opinion by Mayer, Circuit Judge.   

Counsel
For Appellant: Edward R. Reines, Weil, Gotshal & Manges LLP, of Redwood Shores, California. 

For Appellees:  Douglas K. Mickle. Trial Attorney, Commercial Litigation Branch, Civil Division, United States Department of Justice. 

Malloy v. US Postal Service, No. 08-3117

The decision of the Merit Systems Protection Board affirming petitioner's removal from employment by the United States Postal Service (USPS) is vacated and remanded for consideration of petitioner's evidence of mental impairment, and reapplication of the Douglas factors in light of the evidence. 

Read Malloy v. US Postal Service, No. 08-3117 

Appellate Information

Appeal from:  Merit Systems Protection Board 
Decided August 25, 2009

Judges

Before Newman, Moore, CIrcuit Judges, and Gettleman, District Judge. 
Opinion by Newman, CIrcuit Judge.   

Counsel
For Petitioner: Karla M. Malloy, pro se.    

For Respondent:  Ray E. Donahue, Principal Counsel, Office of General Counsel, United States Postal Service, of Washington, DC.

Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., No. 07-1296

In a patent infringement case involving implantable cardioverter defibrillators (ICDs), district court's judgment is reversed in part and affirmed in part where: 1) summary judgment of invalidity for defendant is reversed as invalidity was not at issue on remand because the mandate rule, and reinstatement of the jury's validity verdict precluded defendant's anticipation defense on remand; 2) jury's verdict that the patent was not unenforceable for uninequitable conduct is reinstated, and a grant of a  new trial on that issue is reversed; 3) district court's ruling on damages is remanded for redetermination, limited to instances in which the patented method has actually been performed; and 4) the en banc circuit court reverses a determination that section 271(f) applies to method claims and hence permits damages in this case on devices exported where the claimed method is carried out in countries other than the United States. 

Read Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., No. 07-1296

 

Appellate Information
Appeal from the United States District Court for the Southern District of Indiana.
Decided August 19, 2009

Judges
Before Newman, Mayer, and Louries, Circuit Judges.
Opinion by Lourie, CIrcuit Judge.   

Counsel
For Plaintiff:  Arthur I. Neustadt, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of Alexandria Virgina.    

For Defendant:  Mark A. Perry, Gibson, Dunn & Crutcher LLP., of Washington, DC. 

Callaway Golf Co. v. Acushnet Co., No. 09-1076

In a patent infringement action involving golf balls, district court judgment is affirmed in part and vacated in part where: 1) the court did not err in its claim construction regarding the golf ball covers; 2) the court did not err in concluding that substantial evidence supports the verdict that defendant failed to prove invalidity due to obviousness; 3) the court did not err in excluding the test-ball testimony on the issue of obviousness, and did not abuse its discretion in refusing to allow defendant to introduce evidence of a parallel inter partes re-examination of the patents proceeding before the Patent and Trademark Office; 4) the verdict form returned by the jury reflects an irreconcilable inconsistency and thus a new trial on obviousness must be granted; and 5) the court erred in granting summary judgment that the claims were not anticipated, as the Nesbitt golf ball patent incorporates by reference the potential cover layer materials described in an earlier patent, and thus defendant has raised a genuine question of material fact concerning anticipation. 

Read Callaway Golf Co. v. Acushnet Co., No. 09-1076

Appellate Information
Appeal from the United States District Court for the District of Delaware.
Decided August 14, 2009

Judges
Before LINN, DYK, and PROST, Circuit Judges.
Opinion by DYK, Circuit Judge.

Counsel
For Plaintiff: Frank E. Scherkenbach, Fish & Richardson P.C., Boston, Massachusetts.

For Defendant: Henry C. Bunsow, Howrey LLP, of San Francisco, California.

Gambill v. Shinseki, No. 08-7120

In a dispute over a denial of disability benefits, Court of Appeals for Veterans Claims judgment is affirmed where the absence of a right to confrontation with the Veterans Health Administration ophthalmologist was not prejudicial to plaintiff's claim as there was no evidence of record that established an actual causal nexus between plaintiff's in-service injury and his cataracts.      

Read Gambill v. Shinseki, No. 08-7120

Appellate Information
Appeal from the United States Court of Appeals for Veterans Claims
Decided August 13, 2009

Judges
Before BRYSON, LINN, and MOORE, Circuit Judges.
Per Curium Opinion.
Concurring opinions by Circuit Judge BRYSON and Circuit Judge MOORE.

Counsel
For Appellant: Michael A. Morin, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, DC.

For Appellee: Harold D. Lester, Jr., United States Department of Justice, Washington, DC. 

Sims v. Shinseki, No. 08-7082

Court of Appeals for Veterans Claims judgment denying claim for service connection for an acquired psychiatric disorder is affirmed where: 1) the regional office appropriately issued a supplemental statement of the case on remand in denying plaintiff's claim for service connection; 2) the Board did not exceed its jurisdiction by affirming that ruling; and 3) there was no merit to plaintiff's claim that the notice he received was inadequate under 38 U.S.C. sec. 5104(a) or 38 C.F.R. sec. 3.103(b)(1).     

Read Sims v. Shinseki, No. 08-7082

Appellate Information
Appeal from the United States Court of Appeals for Veterans Claims
Decided August 13, 2009

Judges
Before SCHALL, GAJARSA, and DYK, Circuit Judges.
Opinion by DYK, Circuit Judge.

Counsel
For Appellant: Kenneth M. Carpenter, Carpenter, Chartered, Topeka, Kansas.

For Appellee: Tara J. Kilfoyle, United States Department of Justice, Washington, DC.  

Cushman v. Shinseki, No. 08-7129

In a dispute involving a veteran's service-connected disability claim, Court of Appeals for Veterans Claims judgment is reversed where: 1) a veteran alleging a service-connected disability has a due process right to have his claim for veteran's disability benefits decided according to fundamentally fair procedures; and 2) plaintiff's due process right to a fair hearing was violated by the consideration of tainted medical evidence.  

Read Cushman v. Shinseki, No. 08-7129

Appellate Information
Appeal from the United States Court of Appeals for Veterans Claims
Decided August 12, 2009

Judges
Before SCHALL, PLAGER, and PROST, Circuit Judges.
Opinion by PROST, Circuit Judge.

Counsel
For Appellant: Kevin A. Calia, Morrison & Foerster LLP, of San Francisco, California.

For Appellee: Martin F. Hockey, Jr., United States Department of Justice, Washington, DC. 

Wedgetail, Ltd. v. Huddleston Deluxe, Inc., No. 09-1045

In a dispute over attorney's fees in a patent infringement action, the district court's decision not to award attorney's fees is affirmed where: 1) nothing in the record compels a finding of exceptionality or otherwise suggests a need for the district court to provide its reasoning, and thus the lack of detailed analysis by the court does not warrant reversal; and 2) the court did not err in failing to entertain a motion for attorney's fees, and any error that did occur was harmless.    

Read Wedgetail, Ltd. v. Huddleston Deluxe, Inc., No. 09-1045

Appellate Information
Appeal from the United States District Court for the Eastern District of Texas.
Decided August 12, 2009

Judges
Before SCHALL, GAJARSA, and DYK, Circuit Judges.
Opinion by GAJARSA, Circuit Judge.

Counsel
For Plaintiff: Andy Tindel, Provost Umphrey Law Firm, LLP, Tyler, Texas.

For Defendant: Marc M. Gorelnik, Townsend and Townsend and Crew LLP, San Francisco, California.  

Bank of Guam v. US, No. 08-5078

In a breach of contract action against the United States, Court of Federal Claims' final judgment of dismissal is affirmed where: 1) the court erred in dismissing the plaintiff's breach of contract claims for all years prior to 2001 as the claims were not barred by the statute of limitations; 2) the court properly dismissed plaintiff's breach of express contract claim as plaintiff cannot establish that its express United States government obligations (USGO) contract included a duty exempting the USGOs from taxation by the Guam Territorial Income Tax and thus the government did not breach the USGO contract by imposing the tax; 3) the court properly dismissed the breach of implied-in-fact contract claim as plaintiff cannot prove the existence of an implied-in-fact contract entitling it to the requested relief; 4) the court properly dismissed plaintiff's reformation claim; and 5) since all of plaintiff's claims are dismissed, it is impossible for plaintiff to prevail on its request for declaratory relief. 

Read Bank of Guam v. US, No. 08-5078

Appellate Information
Appeal from the United States Court of Federal Claims
Decided August 12, 2009

Judges
Before LOURIE, SCHALL, and GAJARSA, Circuit Judges.
Opinion by SCHALL, Circuit Judge.

Counsel
For Plaintiff: Kurt W. Melchior, Nossaman LLP, San Francisco, California.

For Defendant: Brian A. Mizoguchi, United States Department of Justice, Washington, DC.  

Hyatt v. Doll, No. 07-1066

District court's grant of summary judgment and upholding of the rejection of various claims of plaintiff's patent application is affirmed where the court properly excluded plaintiff's new evidence as he had an affirmative and specific duty to disclose to the PTO the evidence excluded by the court, willfully refused to provide the evidence in response to a valid action by the examiner, and presented no acceptable excuse for his failure to properly present the evidence.    

Read Hyatt v. Doll, No. 07-1066


Appellate Information
Appeal from the United States District Court for the District of Columbia.
Submitted: March 11, 2009
Filed: August 11, 2009

Judges
Before MICHEL, Chief Judge, DYK and MOORE, Circuit Judges.
Opinion by MICHEL, Chief Judge.
Dissenting opinion by Circuit Judge MOORE

Counsel
For Plaintiff: Kenneth C. Bass, III, Sterne, Kessler, Goldstein & Fox P.L.L.C., Washington, DC.

For Defendant: William G. Jenks, United States Patent and Trademark Office, Arlington, Virginia.

US v. UPS Customhouse Brokerage, Inc., No. 08-1409

In a dispute involving misclassifications within customs entry documents, Court of International Trade judgment is affirmed in part and vacated in part where: 1) the court properly held that defendant misclassified certain merchandise under the Harmonized Tariff Schedule of the United States; and 2) the court erred in upholding the Bureau of Customs and Border Protection's determination that UPS did not exercise responsible supervision and control in violation of 19 U.S.C. sec. 1641, as Customs did not consider all of the factors in the statute defining responsible supervision and control.    

Read U.S. v. UPS Customhouse Brokerage, Inc., No. 08-1409

Appellate Information
Appeal from the United States Court of International Trade.
Submitted: March 11, 2009
Filed: August 11, 2009

Judges
Before SCHALL, ARCHER, and MOORE, Circuit Judges.
Opinion by ARCHER, Circuit Judge.

Counsel
For Plaintiff: Patricia M. McCarthy, United States Department of Justice, Washington, DC.

For Defendant: Terence J. Lynam, Akin Gump Strauss Hauer & Feld LLP, Washington, DC.  

Weeks Marine, Inc. v. US, No. 08-5034

In a dispute involving a pre-award protest of the Army Corps of Engineers' solicitation for indefinite duration indefinite quantity multiple-award task order contracts for dredging, court of federal claims judgment permanently enjoining the Corps from using the solicitation is reversed where: 1) plaintiff has standing to challenge the solicitation as it has demonstrated a non-trivial competitive injury which can be addressed by judicial relief; but 2) plaintiff did not establish that the solicitation violated 10 U.S.C. sec. 2304(a), as the Corps' decision to issue the solicitation evinced rational reasoning and consideration of relevant factors.    

Read Weeks Marine, Inc. v. US, No. 08-5034


Appellate Information
Appeal from the United States Court of Federal Claims.
Decided August 10, 2009

Judges
Before Before RADER, SCHALL, and DYK, Circuit Judges.
Dissenting opinion by Circuit Judge DYK.
Opinion by SCHALL, Circuit Judge.

Counsel
For Plaintiff: Michael H. Payne, Payne Hackenbracht & Sullivan, Fort Washington, Pennsylvania

For Defendant: Misha Preheim, United States Department of Justice, Washington, DC.

Easter v. US, No. 08-5187

In a dispute over whether the commuting time for federal employees who use government vehicles constitutes a compensable period of work under the Fair Labor Standards Act, summary judgment for the government is affirmed where there are no regulations or rulings by either the OPM or the Department of Labor that dictate a different result from that reached by this court when it resolved prior similar disputes. 

Read Easter v. US, No. 08-5187

Appellate Information
Appeal from the United States Court of Federal Claims.
Decided August 5, 2009

Judges
Before MAYER, and BRYSON, Circuit Judges, and SPENCER, Chief District Judge.
Opinion by BRYSON, Circuit Judge.

Counsel
For Plaintiff: Jules Bernstein, Bernstein & Lipsett, P.C., Washington, DC.

For Defendant: Shalom Brilliant, United States Department of Justice, Washington, DC.

Bayer Schering Pharma AG v. Barr Laboratories, Inc., No. 08-1282

In a patent infringement action involving oral contraceptives, district court judgment is affirmed where plaintiff's patent is invalid due to obviousness as it would have been obvious to a person having ordinary skill in pharmaceutical formulation to try a normal pill in formulating drospirenone as an oral contraceptive. 

Read Bayer Schering Pharma AG v. Barr Laboratories, Inc., No. 08-1282

Appellate Information
Appeal from the United States District Court for the District of New Jersey.
Decided August 5, 2009

Judges
Before NEWMAN, FRIEDMAN, and MAYER, Circuit Judges.
Opinion by NEWMAN, Circuit Judge.
Dissenting opinion by Circuit Judge NEWMAN

Counsel
For Plaintiff: Peter B. Bensinger, Jr., Bartlit Beck Herman Palenchar & Scott LLP, Chicago, Illinois.

For Defendant: George C. Lombardi, Winston & Strawn LLP, Chicago, Illinois.

Exergen Corp. v. Wal-Mart Stores, Inc., No. 06-1491

In a patent infringement action involving infrared thermometers, district court judgment is affirmed in part and reversed in part where: 1) the court erred in finding that the claims in plaintiff's '205 patent were not anticipated by an earlier patent, and thus defendant cannot be liable for infringement of this patent; 2) plaintiff failed to provide substantial evidence to support the jury's finding that defendant's device directly infringed on plaintiff's '813 patent and actively induced infringement plaintiff's '685 patent; and 3) the court did not abuse its discretion in denying defendant's motion for leave to add allegations of inequitable conduct to its original answer, as its proposed allegations failed to satisfy the heightened pleading requirement of Federal Rule of Civil Procedure 9(b).   

Read Exergen Corp. v. Wal-Mart Stores, Inc., No. 06-1491

Appellate Information
Appeals from the United States District Court for the District of Massachusetts.
Decided: August 4, 2009

Judges
Before MICHEL, Chief Judge, LINN, Circuit Judge, and ST. EVE, District Judge
Opinion by LINN, Circuit Judge.

Counsel
For Plaintiff: Heidi E. Harvey, Fish & Richardson P.C., Boston, Massachusetts.

For Defendant: Peter M. Midgley, Jr., Zarian Midgley & Johnson PLLC, Boise, Idaho.

Touchcom, Inc. v. Bereskin & Parr, No. 08-1229

District court judgment dismissing plaintiff's action is reversed where the act of filing an application for a patent at the USPTO was sufficient to subject defendant to personal jurisdiction in a malpractice claim based upon that filing and brought in federal court, as defendant's contacts with the United States were sufficient to meet the minimum contacts standard and the exercise of personal jurisdiction over defendants does not offend traditional notions of fair play and substantial justice. The act of filing an application for a U.S. patent at the USPTO is sufficient to subject the filing attorney to personal jurisdiction in a malpractice claim that is based upon that filing and is brought in federal court. 

Read Touchcom, Inc. v. Bereskin & Parr, No. 08-1229

Appellate Information
Appeal from the United States District Court for the Eastern District of Virginia.
Submitted: June 8, 2009
Filed: August 3, 2009

Judges
Before LOURIE, GAJARSA, and PROST, Circuit Judges.
Opinion by LOURIE, Circuit Judge.
Dissenting opinion by Circuit Judge PROST.

Counsel
For Plaintiff: Sheron Korpus, Kasowitz, Benson, Torres & Friedman, LLP, New York, New York.

For Defendant: G. Luke Ashley, Thompson & Knight L.L.P., Dallas, Texas.