Disney Enterprises, Inc. v. Kappos
923 F. Supp. 2d 788
E.D. Va.2013Background
- On Feb. 21, 1996 Kirsch filed the original '915 patent, issued Oct. 5, 1999.
- On Oct. 4, 2001 Kirsch filed the '772 application seeking reissue under 35 U.S.C. § 251.
- Infoseek assigned the '915 patent and the '772 application to Disney around Aug. 2006.
- USPTO rejected the '772 claims on Apr. 6, 2011 as obvious over Levergood and other references.
- Disney filed §145 action on Jun. 22, 2012 seeking a reissue; bench trial scheduled for Feb. 12, 2013.
- Court decisions on motions in limine and partial summary judgment/ remand are issued in this memorandum opinion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Untimely expert opinions on SID expiration attribute | Disney argues supplemental Geller opinions were timely | USPTO contends Geller supplement was untimely | Geller opinions precluded; USPTO motion granted |
| Admission of Levergood-source-code testimony by Weadock | Weadock qualified despite lack of C language expertise | Weadock should be excluded as unqualified | Disney's first motion denied; Weadock permitted to testify |
| Post‑date publications as state‑of‑the‑art evidence | Publications after Feb. 1996 may show state of art | Post-date items should be excluded as not prior art | Disney's second motion denied; publications relevant to state of the art acknowledged |
| USPTO’s request for partial summary judgment/remand | Disney should be allowed to present post‑Hyatt evidence | Precludes new issues not raised before the Board | Denied; Hyatt framework allows new evidence but court retains weight over evidence |
Key Cases Cited
- Kappos v. Hyatt, 132 S. Ct. 1690 (U.S. 2012) (§ 145 proceedings; new evidence allowed under equity practice)
- Hyatt I, 625 F.3d 1320 (Fed. Cir. 2010) (exhaustion concepts limit issues in district court, weight governs)
- Graham v. John Deere Co., 383 U.S. 1 (Sup. Ct. 1966) (obviousness analysis factors in patent law)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (Sup. Ct. 2007) (necessity of considering the scope/content of prior art)
- Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008) (expert qualification and scope of testimony in obviousness)