Wednesday, August 5, 2009

Exergen v. SAAT

This case involves infrared thermometers for taking people's temperature. The Federal Circuit reversed the jury's finding that one of the patents at issue was not invalid and reversed the jury's findings of infringement. It also affirmed the district court's denial of a motion to amend its pleadings to add allegations of inequitable conduct. So, as is not all that unusual, the case left the Federal Circuit in a much different posture than it was after trial (when the plaintiff had a $2.5 million judgment.)

Three points of note that I see here. First, before trial, the plaintiff waived any argument for infringement based on the doctrine of equivalents (p. 5), and it came back to haunt. (pp. 15 ("Exergen’s [argument], including its criticism of SAAT’s alleged ‘word-sniffing,’ is an argument sounding in the doctrine of equivalents—a doctrine ‘designed to do equity’ and ‘to relieve an inventor from a semantic strait jacket,’ but one which Exergen expressly waived before trial.").) This is often a tough call for a plaintiff to make. Arguing for infringement under the doctrine of equivalents weakens or at least confuses your literal infringement arguments. Plus, it is cumbersome and time consuming, so it is very tempting to just go for literal infringement, especially in light of all the hurdles placed in front of finding infringement under the doctrine of equivalents. However, as seen in this case, you can't be certain how things will go. That being said, it may well have still been the correct call in this case, depending on what obstacles were placed in front of the doctrine of equivalents.

The second part of this case of interest is the Federal Circuit's holding regarding pleading inequitable conduct. First, it stated that this issue was one of Federal Circuit law, not of the regional circuit. Then, it held that an allegation of inequitable conduct must be plead with particularity: "Based on the foregoing, and following the lead of the Seventh Circuit in fraud cases, we hold that in pleading inequitable conduct in patent cases, Rule 9(b) requires identification of the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO." (p. 23.) Specifically, "although ‘knowledge’ and ‘intent’ may be averred generally, a pleading of inequitable conduct under Rule 9(b) must include sufficient allegations of underlying facts from which a court may reasonably infer that a specific individual (1) knew of the withheld material information or of the falsity of the material misrepresentation, and (2) withheld or misrepresented this information with a specific intent to deceive the PTO.” (pp. 24-25.) While not 100% clear on what needs to be included in the pleadings, it provides decent guideposts.

Finally, the court made some surprisingly strong statements about the arguments of plaintiff's counsel. (p. 17, n.2.)