Home -> Law Blog Directory -> Intellectual Property Law Blogs -> Two-Seventy-One Patent Blog

Intellectual Property Law

: Two-Seventy-One Patent Blog

CAFC Chides Counsel, Court, On Claim Construction Conduct

By Two-Seventy-One Patent Blog

LSI Industries, Inc. v. ImagePoint, Inc., (2007-1292), March 19, 2008

In this nonprecedential case, the CAFC reversed almost every disputed claim term construed by the district court which was the basis for summary judgment of noningfringement. During litigation, the district court openly admitted it was in over its head with the patent case, and reached out to counsel for guidance. Apparently, that's not what it got in return:

At the claim construction hearing, the district court judge communicated his lack of familiarity with patent law . . . (?I get a patent case about every three years. In the 27 years, I?ve only had about five of them. And this seems to be the most complex so far.?), and repeatedly requested guidance from counsel on both sides on how to construe the claims. The record reveals that counsel made little effort to simplify the case, but instead presented the district court with a firestorm of issues and arguments, fueled by the voluminous reexamination record and an aggressive use of statements in that record to support multiple contentions that subject matter was disavowed. In the end, counsel for LSI was successful in persuading the district court to adopt constructions for each of the disputed terms that, in most instances, inappropriately imported limitations from the specifications and prosecution histories into the claims. The victory was short-lived, however, and warrants our reemphasizing that an attorney has a duty not only to zealously advocate on behalf of his client, but also to aid the court in the fair and efficient administration of justice. Allen Eng?g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1356 (Fed. Cir. 2002) (?Counsel must remember that they are not only advocates for their clients; they are also officers of the court and are expected to assist the court in the administration of justice, particularly in difficult cases involving complex issues of law and technology.?).

The district court didn't get off much easier:

The district court also has an obligation, despite any obfuscation or lack of assistance of counsel, to carefully consider, and independently decide, the issues in the case. Following the claim construction hearing, the district court adopted LSI?s proposed findings of fact and conclusions of law verbatim . . . While this practice is not prohibited, it is frowned upon because, in situations such as these, it gives the impression that there was insufficient independent evaluation of the parties? arguments and evidence.

VACATED AND REMANDED

Full post as published by Two-Seventy-One Patent Blog on March 19, 2008 (boomark / email).