The United States Court of Appeals for the Federal Circuit (CAFC) issued a precedent-setting decision last week, written by Judge Hughes, overturning the district court's decision to uphold the validity of the patent claims owned by Mondis Technology, Ltd.
The original ruling was issued by the U.S. District Court for the District of New Jersey based on a jury verdict, which found that LG Electronics had failed to prove the invalidity of the patent claims at issue and that LG's accused products constituted infringement. The jury awarded Mondis $45 million (approximately RMB 323 million) in damages.
LG subsequently filed a motion for judgment as a matter of law (JMOL), arguing that the patent was invalid due to lack of written description, but the district court denied the motion. In the damages retrial, the retrial jury awarded Mondis $14.3 million (approximately RMB 102 million), denied LG's post-trial motion regarding damages, denied Mondis' motion to increase damages and attorney's fees, and partially granted Mondis' motion regarding pre-judgment and post-judgment interest.
Mondis' U.S. Patent No. 7,475,180, titled “Display Unit with Communication Controller and Memory for Storing Display Unit Identification Numbers to Identify Display Units,” relates to a system for controlling computer displays. On appeal, the CAFC agreed with LG's argument that the written description of the patent failed to support the claim's limitation “an identification number for identifying at least one type of the display units,” which the court referred to as the “type limitation.”
Although Mondis argued that, due to the presumption of validity for granted patents, it was not required to provide any evidence to support adequate written description, the CAFC explained: “Sometimes the patent itself is sufficiently clear to indicate that, absent contrary evidence, the written description fails to provide adequate support for the full scope of the invention claimed... This is the case here, and Mondis' own expert testimony on the key points also confirms this.”
The court noted that Mondis's expert testified that the specification “does not explicitly record an identification number used to identify the type of display unit,” and both parties agreed that the patent itself “does not explicitly disclose this type limitation”—according to a footnote in the CAFC's judgment, Mondis's attorney also acknowledged this during oral arguments.
Mondis sought to argue that the jury was entitled to reject LG's expert testimony (i.e., “the patent does not disclose an identification number for identifying the type of display unit”) because the credibility of that expert testimony was impeached. However, the CAFC stated that Mondis' own expert testimony, combined with the patent itself, was sufficient to establish that “any reasonable jury conducting this objective review would necessarily conclude, based solely on the patent documents themselves (the four corners of the patent), that the inventor possessed and disclosed the technology for identifying specific display units.”
The CAFC further stated that “even if the type specification is not explicitly disclosed, the presence of substantial evidence indicating that the patent discloses the identification of display unit types in some less explicit manner does not necessarily constitute a fatal defect.” However, the CAFC rejected Mondis' claim that its expert testimony provided written description support for the type identification number (type ID), as the testimony in question pertained to infringement issues rather than validity issues and did not address the type specification. The court further rejected Mondis' argument that LG's expert's acknowledgment provided substantial evidence, as the statement was made in the context of non-infringement, and when asked, “‘Would the serial number be the identifier used to identify the type of display unit?’…Dr. Stevenson testified, ‘No one has ever made such an allegation.’”
Mondis finally argued that the prosecution history provided substantial evidence, as the type limitation was an amendment added to overcome a rejection based on prior art, and “when a claim amendment is allowed without objection, it ‘enjoys a presumption of correctness of special weight.’” Mondis relied on Commonwealth Sci. & Indus. Rsch. Org. v. Buffalo Tech., Inc. (USA), 542 F.3d 1363, 1380 (Fed. Cir. 2008) to support this argument.
However, the CAFC stated: "Commonwealth Science held that there is a ‘presumption of validity arising from the PTO's grant of the patent after amendment.’ 542 F.3d at 1380. It did not hold that the examiner's grant of the claim itself provides substantial evidence that the claim meets the requirements of Section 112... If that were the case, there would be few, if any, granted patents later invalidated for lack of written description." Even if one were to accept Mondis' argument, the amended claims at issue do not support it, as there is no evidence that the examiner considered whether the specification contained written description support for the amendment.
Ultimately, the CAFC concluded that the only evidence regarding written description before the jury came from the patent itself, which did not disclose the type limitation. Mondis also failed to re-direct its own expert testimony (i.e., “the patent did not explicitly disclose the type limitation”) and failed to “call him to testify in rebuttal,” and “there is no evidence in the record that would allow a reasonable jury to conclude that a person of ordinary skill in the art would understand that the patent disclosed the type limitation.” Therefore, the district court's judgment was overturned, and the claims at issue were declared invalid.The United States Court of Appeals for the Federal Circuit (CAFC) issued a precedent-setting decision last week, written by Judge Hughes, overturning the district court's decision to uphold the validity of the patent claims owned by Mondis Technology, Ltd.
The original ruling was issued by the U.S. District Court for the District of New Jersey based on a jury verdict, which found that LG Electronics had failed to prove the invalidity of the patent claims at issue and that LG's accused products constituted infringement. The jury awarded Mondis $45 million (approximately RMB 323 million) in damages.
LG subsequently filed a motion for judgment as a matter of law (JMOL), arguing that the patent was invalid due to lack of written description, but the district court denied the motion. In the damages retrial, the retrial jury awarded Mondis $14.3 million (approximately RMB 102 million), denied LG's post-trial motion regarding damages, denied Mondis' motion to increase damages and attorney's fees, and partially granted Mondis' motion regarding pre-judgment and post-judgment interest.
Mondis' U.S. Patent No. 7,475,180, titled “Display Unit with Communication Controller and Memory for Storing Display Unit Identification Numbers to Identify Display Units,” relates to a system for controlling computer displays. On appeal, the CAFC agreed with LG's argument that the written description of the patent failed to support the claim's limitation “an identification number for identifying at least one type of the display units,” which the court referred to as the “type limitation.”
Although Mondis argued that, due to the presumption of validity for granted patents, it was not required to provide any evidence to support adequate written description, the CAFC explained: “Sometimes the patent itself is sufficiently clear to indicate that, absent contrary evidence, the written description fails to provide adequate support for the full scope of the invention claimed... This is the case here, and Mondis' own expert testimony on the key points also confirms this.”
The court noted that Mondis's expert testified that the specification “does not explicitly record an identification number used to identify the type of display unit,” and both parties agreed that the patent itself “does not explicitly disclose this type limitation”—according to a footnote in the CAFC's judgment, Mondis's attorney also acknowledged this during oral arguments.
Mondis sought to argue that the jury was entitled to reject LG's expert testimony (i.e., “the patent does not disclose an identification number for identifying the type of display unit”) because the credibility of that expert testimony was impeached. However, the CAFC stated that Mondis' own expert testimony, combined with the patent itself, was sufficient to establish that “any reasonable jury conducting this objective review would necessarily conclude, based solely on the patent documents themselves (the four corners of the patent), that the inventor possessed and disclosed the technology for identifying specific display units.”
The CAFC further stated that “even if the type specification is not explicitly disclosed, the presence of substantial evidence indicating that the patent discloses the identification of display unit types in some less explicit manner does not necessarily constitute a fatal defect.” However, the CAFC rejected Mondis' claim that its expert testimony provided written description support for the type identification number (type ID), as the testimony in question pertained to infringement issues rather than validity issues and did not address the type specification. The court further rejected Mondis' argument that LG's expert's acknowledgment provided substantial evidence, as the statement was made in the context of non-infringement, and when asked, “‘Would the serial number be the identifier used to identify the type of display unit?’…Dr. Stevenson testified, ‘No one has ever made such an allegation.’”
Mondis finally argued that the prosecution history provided substantial evidence, as the type limitation was an amendment added to overcome a rejection based on prior art, and “when a claim amendment is allowed without objection, it ‘enjoys a presumption of correctness of special weight.’” Mondis relied on Commonwealth Sci. & Indus. Rsch. Org. v. Buffalo Tech., Inc. (USA), 542 F.3d 1363, 1380 (Fed. Cir. 2008) to support this argument.
However, the CAFC stated: "Commonwealth Science held that there is a ‘presumption of validity arising from the PTO's grant of the patent after amendment.’ 542 F.3d at 1380. It did not hold that the examiner's grant of the claim itself provides substantial evidence that the claim meets the requirements of Section 112... If that were the case, there would be few, if any, granted patents later invalidated for lack of written description." Even if one were to accept Mondis' argument, the amended claims at issue do not support it, as there is no evidence that the examiner considered whether the specification contained written description support for the amendment.
Ultimately, the CAFC concluded that the only evidence regarding written description before the jury came from the patent itself, which did not disclose the type limitation. Mondis also failed to re-direct its own expert testimony (i.e., “the patent did not explicitly disclose the type limitation”) and failed to “call him to testify in rebuttal,” and “there is no evidence in the record that would allow a reasonable jury to conclude that a person of ordinary skill in the art would understand that the patent disclosed the type limitation.” Therefore, the district court's judgment was overturned, and the claims at issue were declared invalid.
