Fresh From the Bench: Recent Patent Cases From the Federal Circuit
Intouch – The Circuit determined that the evidence "did not even come close" to being substantial enough to support an obviousness finding and therefore reversed the denial of JMOL. But the Circuit affirmed the denial of a motion for new trial, even though defendant's witness testified about an opinion despite the fact that privilege had not been waived prior to trial, and defendant's expert discussed prior art that had not been disclosed prior to trial.
Intouch Technologies, Inc. v. VGO Communications, Inc., Fed. Cir. Case 2013-1201 (May 9, 2014)
InTouch sued VGo for infringement of three patents directed to a robotic system that allows physicians and family members to use a computer to remotely visit a patient. The jury returned a verdict for VGo, finding none of the claims infringed and two of the claims invalid as being obvious. InTouch moved for JMOL, which was denied, the district court determining that there was substantial evidence to support the verdicts. InTouch also moved for a new trial based on (1) the court permitting VGo's witness to discuss opinions regarding non-infringement that he had received from outside counsel even though VGo had not waived the attorney client privilege prior to trial, and (2) VGo's expert relying on prior art that had not previously been disclosed. The district court denied that motion as well, determining that InTouch had failed to establish sufficient prejudice from this ruling, even if it was error, to justify a new trial.
The motion for JMOL
The panel first looked at claim construction and agreed with VGo that the district court's constructions were correct. Turning to infringement, the panel agreed with the district court that substantial evidence existed to support the conclusion that the VGo system was missing several claim limitations, both literally and under the doctrine of equivalents.
With respect to validity, the panel examined the four Graham v. Deere factors and then turned to KSR v. Teleflex, noting that, while an analysis of any teaching, suggestion, or motivation to combine elements from different prior art references is useful in an obviousness analysis, the overall inquiry must be expansive and flexible. It is necessary to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.
While recognizing that the Circuit's standard of review regarding the jury's implied factual findings is a stringent one, the panel determined that the evidence "did not even come close" to being substantial enough to support an obviousness finding. "Dr. Yanco's testimony was plagued with numerous problems, including her failure to: (1) identify sufficient reasons or motivations to combine the asserted prior references; (2) focus on the relevant time frame of 2001; or (3) consider any objective evidence of nonobviousness. Dr.Yanco's testimony was nothing more than impermissible hindsight." While she opined that the references were like separate pieces of a simple jigsaw puzzle, she did not explain what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place these pieces together. Moreover, on cross examination she admitted that she had never heard of objective evidence of nonobviousness and therefore had not factored that into her obviousness analysis.
In denying JMOL the district court had relied on the jury's right to use its common sense, but this factor is not relevant to the obviousness inquiry. A court may only rely upon the common sense of one of ordinary skill in the art, not that of the jury in assessing a claim of obviousness.
The motion for new trial
InTouch argued that it was materially prejudiced by the district court improperly admitting testimony regarding opinions from VGo's outside counsel and as to previously undisclosed prior art. Specifically, during cross-examination InTouch questioned Mr. Ryden about his conclusion that VGo's robots were non-infringing. On re-direct, VGo's counsel asked Ryden: "when you looked at the patents in 2010 what did you do?" Ryden responded that he reviewed the patents and discussed them with their outside counsel. InTouch objected to the reference to outside counsel. The district judge overruled the objection, stating that InTouch "opened the door on that one." The panel agreed with InTouch that the testimony was improper, but determined that InTouch failed to establish that the verdict was more probably than not affected by this error.
The panel therefore affirmed the denial of JMOL as to non-infringement but reversed it as to invalidity. The denial of the motion for new trial was affirmed.