The U.S. Court of Appeals for the Federal Circuit recently affirmed in part and vacated in part a district court’s grant of judgment as a matter of law (JMOL) and remanded for further proceedings on the issues of invalidity. Old Town Canoe Co. v. Confluence Holdings Corp., Case No. 05-1123 (Fed. Cir. May 9, 2006) (Linn, J.; Mayer, J., dissenting).
The Federal Circuit first addressed Old Town’s appeal of the district court’s grant of defendant, Confluence’s motion for JMOL of no infringement. The Federal Circuit upheld the grant of JMOL after affirming the district court did not err in its claim construction and that it properly determined no reasonable juror could have found infringement.
Even though its affirmance of the district court’s JMOL of no infringement resolved Old Town’s claim, the Federal Circuit also addressed the invalidity issues. With respect to obviousness, the Federal Circuit held that a reasonable juror could have found support for the proposition that the patent would be an obvious improvement over the prior art. With respect to enablement, the Federal Circuit concluded that Confluence produced sufficient evidence for a reasonable juror to conclude the experimentation could be unduly laborious. The Federal Circuit also concluded a reasonable juror could find the specification’s failure to disclose information (contained in a document the inventor prepared and presented to his patent attorney prior to the filing date) was a failure to disclose the best mode. Therefore, the Federal Circuit vacated the district court’s grant of JMOL on the issues of obviousness, enablement, and best mode and remanded for further proceedings.
Finally, the Federal Circuit addressed the district court’s finding of no inequitable conduct. Confluence had made two separate arguments with respect to inequitable conduct—one related to the best mode requirement and another related to one of Old Town’s sales. However, Confluence did not meet the threshold level of intent to deceive the U.S. Patent and Trademark Office (USPTO) because it did not point to any evidence of intent to deceive. The Federal Circuit noted that failure to disclose the best mode will not always constitute inequitable conduct if the failure was unintentional, and it consequently affirmed the JMOL of no inequitable conduct.
Judge Mayer dissented solely on the ground that the Federal Circuit no longer had jurisdiction of the declaratory judgment action once it affirmed the district court’s finding of no infringement because there was no longer a reasonable apprehension of suit.
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