Intellectual Property Law

License under method patent not limited to use with licensor's products absent express limitation

By McKee, Voorhees & Sease, P.L.C.

In a decision Wednesday, the Federal Circuit affirmed-in-part, vacated-in-part, and reversed-in-part a district court's decision regarding two patents.  The district court held the broadest claims of both patents invalid and not infringed, and dismissed claims of inequitable conduct relating to the patents.

The Federal Circuit affirmed with respect to one patent, but vacated and reversed with respect to the other.  Regarding the first patent, the court held there was no genuine issue of material fact that a product embodying all the claim limitations was in public use before the critical date.  There was also no genuine issue of material fact that the defendants were licensed under the patent, as the license grant was not limited to use with the plaintiff's products.

With regard to the second patent, however, the court held the defendant's motion for summary judgment of invalidity was not properly supported, and vacated the finding of invalidity.  Further, there were insufficient findings in the district court's summary judgment order to support a finding of noninfringement of the second patent.  The court also reinstated the defendant's claims of inequitable conduct, as not all claims of the patents had been found invalid, making an additional finding of unenforceability not moot.

More detail of Zenith Electronics Corp. v. PDI Commc'n Sys., Inc. after the jump.

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Full post as published by FileWrapper on April 18, 2008 (boomark / email).