Federal Circuit: December 2009 Archives
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December 2009 Archives

In re US, No. 908

Petition for a writ of mandamus by the government to direct the Court of Federal Claims to vacate its orders requiring the US to produce documents that it asserts are protected by the attorney-client privilege is denied as the US cannot deny an Indian tribe's request to discover communications between the US and its attorneys based on the attorney-client privilege when those communications concern management of an Indian trust and the US has not claimed that the government or its attorneys considered a specific competing interest in those communications.  Accordingly, the fiduciary exception is adopted in tribal cases where a fiduciary may not block a beneficiary from discovering information protected under the attorney-client privilege when the information relates to fiduciary matter, including trust management.   

Read In re US, No. 908

Appellate Information

On Petition for Writ of Mandamus to the United States Court of Federal Claims

Decided December 29, 2009

Judges

Before: GajarsaFriedman and Lourie, Circuit Judges

Opinion by Gajarsa, Circuit Judge

Counsel

For Appellant:  Brian C. Toth, US Department of Justice

For Appellee:   Steven D. Gordon, Holland & Knight, LLP

Griffin v. US, No. 09-5045

In plaintiff's suit against the Secretary of Army claiming sex discrimination after the Army granted a promotion to a male colleague instead of plaintiff, United States Court of Federal Claims' dismissal of her suit is affirmed as 28 U.S.C. section 1500 applies and divests the Court of Federal Claims of jurisdiction over her Equal Pay Act claim because plaintiff's claims arise from the same operative facts and seek the same relief as the pending claim in the district court.     

Read Griffin v. US, No. 09-5045

Appellate Information

Appeal from:  United States Court of Federal Claims

Decided December 28, 2009

Judges

Before: Gajarsa, Plager and Linn,  Circuit Judges

Opinion by Linn, Circuit Judge

Counsel

For Appellant:  Robert E. Rigrish, Bodker Ramsey Andrews Winograd & Wildstein, PC

For Appellee:   Robert E. Chandler, US Department of Justice

The Forest Group, Inc. v. Bon Tool Co., No. 09-1044

In a patent infringement suit involving claims for an improved spring-loaded parallelogram stilt of the type commonly used in construction, district court's judgment is affirmed in part, vacated in part, and remanded where: 1) the district court did not clearly err in finding that plaintiff had the requisite knowledge to falsely mark as of a particular date; 2) because the district court's construction of the statute was wrong, an award of $500 in penalties for a single offense of false marketing is vacated and remanded for recalculation of fines under 35 U.S.C. section 292; and 3) the district court's denial of defendant's attorney fees is affirmed.     

Read The Forest Group, Inc. v. Bon Tool Co., No. 09-1044

Appellate Information

Appeal from:  United States District Court for the Southern District of Texas

Decided December 28, 2009

Judges

Before: Plager, Rader, and ZMoore,  Circuit Judges

Opinion by Moore, Circuit Judge

Counsel

For Appellant: Richard A. Ejzak, Cohen & Grigsy, PC

For Appellee:   Kristin K. Tassin, Dry & Tassin, PLLC

In Re Sones, No. 2009-1140

Decision of the Trademark Trial and Appeal Board, denying petitioner's registration application for the mark "One Nation Under God" for charity bracelets, is vacated and remanded as a picture is not a mandatory requirement for a website-based specimen of use, and the test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is "associated" with the goods and services as an indicator of source.  

Read In Re Sones, No. 2009-1140

Appellate Information

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

Decided December 23, 2009

Judges

Before: Newman, Rader, and Linn,  Circuit Judges

Opinion by Linn, Circuit Judge

Counsel

For Appellant:  James R. Menker, Holley & Menker PA

For Appellee:   Thomas V. Shaw, Associate Solicitor, US PTO

i4i Ltd. P'ship v. Microsoft Corp., No. 09-1504

In plaintiff-i4i's patent infringement action against Microsoft alleging that the patented custom XML editor in certain versions of Microsoft Word infringed plaintiff's patent, district court's award of $40 million in damages in addition to the jury award of $200 million in favor of plaintiff after finding Microsoft liable for willful infringement and entry of a permanent injunction is affirmed for the most part where: 1) district court's claims constructions and the jury's findings of infringement and validity are affirmed; 2) district court did not abuse its discretion in admitting plaintiff's evidence as to damages or in granting enhanced damages; but 3) the district court erred by ordering Microsoft to comply with the injunction within sixty days as there were no other or competing evidence as to how long it would take, and as such, the effective date of the injunction is modified to five months. 

Read i4i Ltd. P'ship v. Microsoft Corp., No. 09-1504

Appellate Information

Appeal from:  United States District Court for the Eastern District of Texas

Decided December 22, 2009

Judges

Before:  Schall, Prost, and Moore,  Circuit Judges

Opinion by Prost, Circuit Judge

Counsel

For Appellant:   Donald R. Dunner, Finnegan Henderson Farabow Garrett & Dunner, LLP

For Appellee:    Matthew D. Powers, Weil Gotshal & Manges LLP

Schell v. US, No. 09-5010

Court of federal claims' dismissal of plaintiffs-taxpayers' complaint that the IRS unlawfully denied their claim for a tax refund, involving an issuance of a Notice of Final Partnership Administrative Adjustment to each of plaintiffs' partnership, is affirmed as: 1) a 1997 settlement agreement did not change the FPAA's findings that the activities of the partnerships were sham transactions, the sham-transaction issue was not converted into a non-partnership item, and taxpayers' refund claims necessarily involve resolution of "partnership items"; and 2) thus, taxpayers lacked standing to seek adjudication, and the trial court correctly determined that it lacked jurisdiction over their refund claims. 

Read Schell v. US, No. 09-5010

Appellate Information

Appeal from:  United States Court of Federal Claims

Decided December 22, 2009

Judges

Before: Lourie, Archer, and Gajarsa,  Circuit Judges

Opinion by Gajarsa, Circuit Judge

Counsel

For Appellant:   Thomas E. Redding, Redding & Associates, PC

For Appellee:   Bruce R. Ellisen, Tax Division, US Department of Justice

Int'l Seaway Trading Corp. v. Walgreens Corp., No. 09-1237

In plaintiff's design patent suit against Walgreens and another defendant involving shoes typically referred to as "clogs", district court's grant of summary judgment in favor of defendants in finding that the claims of the asserted patents were invalid as anticipated by a patent assigned to Crocs, Inc. is affirmed in part, vacated in part and remanded as, although district court correctly held that the ordinary observer test is the sole test of invalidity, it erred, however, in failing to compare the insole patterns in plaintiff's patented designs to the prior art as part of an overall comparison of the designs.   

Read Int'l Seaway Trading Corp. v. Walgreens Corp., No. 09-1237

Appellate Information

Appeal from:  United States District Court for the Southern District of Florida

Decided December 17, 2009

Judges

Before:  Bryson,   Clevenger, and Dyk,  Circuit Judges

Opinion by Dyk, Circuit Judge

Counsel

For Appellant:   George L. Pinchak, Tarolli Sundhein Covell & Tummino LLP

For Appellee:    Mark P. Walters, Darby & Darby PC

Agro Dutch Indus. Ltd. v. US, No. 09-1127

Judgment of the Court of International Trade ordering the re-liquidation of imported entries of preserved mushrooms from India by plaintiff is affirmed where: 1) although the Zenith rule ordinarily renders moot court actions in which liquidation has already occurred, there are exceptions to that general rule as in this case where steps are required to enforce a valid injunction; and 2) here, the trial court did not abuse its discretion in amending the judgment to effect the parties' intent to prevent liquidation and allow adjudication of the merits of the dispute. 

Read Agro Dutch Indus. Ltd. v. US, No. 09-1127

Appellate Information

Appeal from:  United States Court of International Trade

Decided December 15, 2009

Judges

Before Rader, Bryson, and Linn,  Circuit Judges

Opinion by Bryson, Circuit Judge

Counsel

For Appellant:   N/A

For Appellee:    Richard P. Schroeder, U.S. Department of Justice

Intellectual Sci. & Tech., Inc. v. Sony Elec., Inc., No. 09-1142

In a patent infringement case involving an apparatus for reading optical discs in a computer that reduces the role of magnetic disc drives, summary judgment of non-infringement in favor of defendants is affirmed as plaintiff has not proffered enough evidence to permit a reasonable juror to conclude that the accused devices contain a "data transmitting means", and without clear identification of the claimed structure or its equivalent in the accused devices, plaintiff cannot survive summary judgment. 

Read Intellectual Sci. & Tech., Inc. v. Sony Elec., Inc., No. 09-1142

Appellate Information

Appeal from:  United States District Court for the Eastern District of Michigan

Decided December 15, 2009

Judges

Before Rader, Archer, and Gajarsa,  Circuit Judges

Opinion by Rader, Circuit Judge

Counsel

For Appellant:   Andrew Kochanowski, Sommers Schwartz, PC

For Appellee:    John R. Hutchins, Kenyon & Kenyon

CNG Transmission Mgmt. VEBA v. US, No. 09-5025

In petitioner's claim that it was not obligated to pay tax on its investment income because it had spent that income on member benefits during the year, judgment of the United States Court of Federal Claims holding that a voluntary employees' beneficiary association (VEBA) may not avoid the limitation on exempt function income in 26 U.S.C. section 512(a)(3)(E)(i) by allocating investment income to the payment of member benefits is affirmed as, the language of the statute  is clear and unambiguous in that CNG's investment income caused its total fund balances to exceed the statutory account limit, and as such, that investment income cannot be classified as exempt function income.   

Read CNG Transmission Mgmt. VEBA v. US, No. 09-5025

Appellate Information

Appeal from:  United States Court of Federal Claims

Decided December 14, 2009

Judges

Before:  Mayer, Linn, and Prost,  Circuit Judges

Opinion by Mayer, Circuit Judge

Counsel

For Appellant:   Eric R. Fox, Ivins Phillips & Barker

For Appellee:    Kenneth L. Greene, Appellate Section, Tax Division, U.S. Department of Justice

Yant v. US, No. 09-5058

In a suit brought by thirty-five current and former nurse practitioners employed by the U.S. Department of Veterans Affairs in the Tennessee Valley Healthcare System alleging that, as predominantly female NPs, they are paid at a lower rate than the predominantly male physician assistants performing jobs of equal skill, effort, and responsibility under similar working conditions, judgment of the United States Court of Federal Claims granting the US summary judgment that plaintiffs do not qualify for coverage under the Equal Pay Act, 29 U.S.C. is affirmed as, plaintiffs have failed to make a prima facie case of an Equal Pay Act violation as they failed to raise a genuine issue of material fact that the pay differential between NPs and PAs is based on sex. 

Read Yant v. US, No. 09-5058

Appellate Information

Appeal from:  United States Court of Federal Claims

Decided December 14, 2009

Judges

Before Mayer, Prost, and, Newman ,Circuit Judges

Opinion by Mayer, Circuit Judge

Counsel

For Appellant: John F. Burke, III, Mansour Gavin Gerlack & Manos, Co., LPA

For Appellee:    Douglas G. Edelschick, Commercial Litigation Branch, U.S. Department of Justice

Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc., No. 08-1269

In plaintiff's patent infringement suit against defendant involving patents directed to medical instruments that employ ultrasonic energy to cut and coagulate vessels in surgery, district court's dismissal of the suit is affirmed as the plaintiff failed to prove ownership of the asserted patents and thus lacked standing to sue.   

Read Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc., No. 08-1269

Appellate Information

Appeal from:  United States District Court for the District of Connecticut

Decided December 7, 2009

Judges

Before Michel, Chief Judge, Newman and Prost,  Circuit Judges

Opinion by Michel, Chief Judge

Counsel

For Appellant: Drew M. Wintringham, III, DLA Piper US LLP

For Appellee:    Barbara L. Mullin, Woodcock Washburn LLP

Source Search Tech., LLC v. Lendingtree, LLC, No. 08-1505

In plaintiff's patent infringement suit against the defendant involving a patent for a computerized procurement service for matching potential buyers with potential vendors over a network, district court's conclusion that the asserted claims of the '328 Patent were infringed but invalid on obviousness grounds is vacated in part, affirmed in part, and remanded where: 1) district court's grant of summary judgment of invalidity and infringement are vacated excepted to the extent that the latter grant forecloses defendant's argument that its website does not offer goods or services; 2) district court's grant of summary judgment on the charges of indefiniteness is affirmed.   

Read Source Search Tech., LLC v. Lendingtree, LLC, No. 08-1505

Appellate Information

Appeal from:  United States District Court for the District of New Jersey

Decided December 7, 2009

Judges

Before Rader, Plager, and Schall, Circuit Judges

Opinion by Rader, Circuit Judge

Counsel

For Appellant:  Jeffrey I. Kaplan, Kaplan Gilman Gibson & Dernier LLP

For Appellee:   Claude M. Stern, Quinn Emanuel Urquhart Oliver & Hedges, LLP

States Roofing Corp. v. Winter, No. 09-1067

In plaintiff's suit against the Navy brought under the Contract Disputes Act of 1978, decision of the Armed Services Board of Contract Appeals denying plaintiff's claim for additional costs incurred in connection with is contract to perform roofing work at a Naval facility is reversed and remanded as, plaintiff's interpretation of the contract as requiring waterproofing paint of the parapet walls was within the zone of reasonableness, and plaintiff is entitled to compensation for the additional costs incurred.   

Read States Roofing Corp. v. Winter, No. 09-1067

Appellate Information

Appeal from:  Armed Services Board of Contract Appeals

Decided December 7, 2009

Judges

Before Michel, Chief Judge, Newman and Lourie, Circuit Judges

Opinion by Newman, Circuit Judge

Counsel

For Appellant:  David W. Lannetti, Vandeventer Black LLP

For Appellee:    Jane C. Dempsey, US Department of Justice, Commerical Litigation Branch

Hewlett-Packard Co. v. Acceleron LLC, No. 09-1283

In a suit brought by HP against Acceleron, a patent holding company, seeking a declaratory judgment of non-infringement and invalidity of a patent related to Blade Servers, grant of defendant's motion to dismiss for lack of declaratory judgment jurisdiction is reversed where there is a definite and concrete dispute between HP and Acceleron with adverse legal interests as the facts of the case, when viewed objectively and in totality, show that defendant took the affirmative step of twice contacting HP directly, making an implied assertion of its rights under the patent against HP's Blade Server products, and HP disagreed. 

Read Hewlett-Packard Co. v. Acceleron LLC, No. 09-1283

Appellate Information

Appeal from:  United States District Court for the Central District of Delaware

Decided December 4, 2009

Judges

Before Michel, Chief Judge, Newman and Moore, Circuit Judges

Opinion by Michel, Chief Judge

Counsel

For Appellant:  Charlene M. Morrow, Fenwick & West LLP

For Appellee:  Jason W. Cook, Alston & Bird LLP

Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., No. 08-1218

In a patent infringement action involving patents related to rapid-hardening, high-strength cement, district court's grant of summary judgments of noninfringement and that no trade secret was violated is  affirmed in part, dismissed in part, vacated in part, reversed in part, and remanded where: 1) district court's finding of noninfringement is vacated and remanded as the court erred in claim construction of the the term "soluble CaSo4 anhydride"; 2) district court's grant of summary judgment of laches is reversed and remanded relating to the '556 patent as it is not clear that plaintiff knew or should have known of defendant's alleged infringement before it conducted discovery on the '684 patent in 2002; 3) district court erred in granting summary judgment that claim 17 of the '684 patent is indefinite; 4) plaintiffs' appeal with respect to the '534 patent is dismissed as it waived the argument of its invalidity; 5) district court denial of plaintiffs' motion to amend their complaint is affirmed; 6) district court's grant of summary judgment of no trade secret violations is affirmed; 7) district court did not abuse its discretion in denying plaintiffs' motion to disqualify defendants' attorneys; and 8) although the district court did not abuse its discretion in declining to make the case exceptional and denying attorney fees, the decision is vacated in light of reversal and vacatur of certain of the court's holdings on summary judgment.   

Read Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., No. 08-1218

Appellate Information

Appeal from:  United States District Court for the Central District of California

Decided December 3, 2009

Judges

Before Lourie, Dyk, and Prost, Circuit Judges

Opinion by Circuit Judge Lourie

Counsel

For Appellant:  Saied Kashani, Saied Kashani Law Offices

For Appellee:  Michael R. Annis, Husch Blackwell Sanders LLP

Perfect Web Tech. , Inc. v. Infousa, Inc., No. 09-1105

In a patent infringement case involving methods of managing bulk e-mail distribution to groups of targeted customers, district court's grant of summary judgment in favor of defendant in concluding that the claims were invalid for obviousness is affirmed where: 1) while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion; 2) the predicate evidence on which the district court based its common sense reasoning appears on the record and also adequately explained its invocation of common sense; and 3) plaintiff failed to show a long-felt and unmet need that existed on the patent's filing date as a secondary consideration of obviousness.  

Read Perfect Web Tech. , Inc. v. Infousa, Inc., No. 09-1105

Appellate Information

Appeal from:  United States District Court for the Southern District of Florida

Decided December 2, 2009

Judges

Before Linn, Dyk, and Prost, Circuit Judges

Opinion by Circuit Judge Linn

Counsel

For Appellant:  John C. Carey, Carey Rodriguez Greenberg & Paul LLP.

For Appellee:  John C. Rozendaal, Kellogg Huber Hansen Todd Evans & Figel PLLC.

Marshall v. Dep't of Health & Human Serv., No. 09-3086

Final decision of the Merit Systems Protection Board (MSPB) dismissing claimant's petition for enforcement of a prior MSPB order requiring that the Department of Health and Human Services (HHS) reconstruct a selection process for a position in the competitive service, arising from its erroneous selection of a non-veteran over the claimant, is reversed and remanded as the MSPB abused its discretion in dismissing claimant's petition because when an agency violates a veteran's preference rights during selection in the competitive service and when it is undisputed that the agency would have selected the veteran for the position sought but for the violation, section 3330c requires the agency to offer the same, or as near as possible, a substantially equivalent position to the veteran.  Moreover, under section 3330c the veteran is also entitled to receive compensation for any loss of wages or benefits suffered by reason of the veterans' preference rights violation involved. 

Read Marshall v. Dep't of Health & Human Serv., No. 09-3086

Appellate Information

Appeal from:  Merit Systems Protection Board

Decided December 1, 2009

Judges

Before Michel, Chief Judge, Newman and Moore, Circuit Judges

Opinion by Circuit Judge Moore

Counsel

For Appellant:   Andrew J. Dhuey, Berkeley, California

For Appellee:  Christopher A. Bowen, US Department of Justice, Washington DC.  

Charles v. Shinseki, No. 09-7024

Veterans Court's decision affirming the Board of Veteran's Appeals decision denying claimant an earlier effective date for service-connected disability benefits is vacated and remanded as a later abandoned claim cannot render final an earlier-filed unadjudicated claim, and because the 1980 claim was not final, all subsequent claims, correspondence, and medical evidence are part of that claim for consideration by VA.     

Read Charles v. Shinseki, No. 09-7024

Appellate Information

Appeal from:  United States Court of Appeals for Veterans Claims

Decided December, 2009

Judges

Before  Gajarsa, Dyk, and Moore, Circuit Judges

Opinion by Circuit Judge Moore

Counsel

For Appellant:   John F. Cameron, Jr., Montgomery, Alabama

For Appellee:  Meredyth Cohen Havasy, US Department of Justice, Washington, DC.