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General and Conclusory Testimony Does Not Suffice as Substantial Evidence of Invalidity

August 23, 2004

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Last Month at the Federal Circuit - September 2004

Judges: Gajarsa (author), Bryson, and Dyk

In Koito Manufacturing Co. v. Turn-Key- Tech, LLC, No. 03-1565 (Fed. Cir. Aug. 23, 2004), the Federal Circuit reversed a jury finding of invalidity based on prior art but affirmed findings that the patent is not invalid for lack of embodiment, failure of written description, and the addition of new matter. In addition, the Federal Circuit affirmed the district court’s decisions reflecting a jury’s verdict of noninfringement.

Turn-Key-Tech, LLC and Jens Ole Sorensen (collectively “Turn-Key”) own U.S. Patent No. 5,045,268 (“the ‘268 patent”), which teaches a method of strengthening injection-molded plastic. After Turn-Key asserted the ‘268 patent against several customers of Koito Manufacturing Company, Ltd. (“Koito”), Koito filed a DJ action against Turn-Key requesting that the ‘268 patent be declared invalid and not infringed.

After a trial, a jury found the ‘268 patent not infringed and invalid for lack of enablement, lack of written description, and addition of new matter through a certificate of correction. The jury also found a certain number of claims anticipated and obvious based on prior art. The district court upheld the finding of invalidity based on prior art but granted JMOL as for the other invalidity grounds.

On appeal, Turn-Key took issue with the district court’s claim construction of certain claim terms. The Federal Circuit concluded, however, that Turn-Key did not preserve its claim-construction argument at trial and did not object to the jury instructions on this claim term. If Turn-Key had wanted a different construction of that limitation, the Federal Circuit commented, it should have objected at trial. After resolving this claim-construction issue, the Federal Circuit quickly concluded that sufficient evidence supported the ruling of noninfringement.

Concerning anticipation and obviousness, the district court had focused exclusively on a Japanese Unexamined Application No. 148,082 (“JP ‘082”). Turn- Key argued that Koito merely submitted that reference into evidence and made no specific mention of it at trial. The Federal Circuit agreed that the evidence based on the JP ‘082 reference was insufficient to support the determination of anticipation and obviousness. Koito had entered the JP ‘082 reference into evidence but otherwise failed to provide any testimony to demonstrate how it met the limitations of the claims. Instead, Koito’s expert simply made conclusory statements about JP ‘082 together with several other pieces of prior art. However, given that Koito had presented an array of other evidence of anticipation and obviousness at trial, the Federal Circuit vacated the district court’s ruling of invalidity based on prior art and remanded for further proceedings to determine whether sufficient evidence supported the jury’s findings of invalidity based on the other prior art evidence.

Koito argued that the ‘268 patent is invalid because a certificate of correction altered the definition of the thickness of a flow channel described in the specification. According to Koito, this change was not supported by the specification and broadened the scope of the claims. The Federal Circuit found that the amended material was inherently contained in the original application and, therefore, was not new matter. The Court also found that certain figures demonstrated that the inventor was in possession of the patent claims at the time of filing, and, therefore, the written description requirement was satisfied.