Old Reliable Wholesale, Inc. v. Cornell Corp.
635 F.3d 539
| Fed. Cir. | 2011Background
- Old Reliable is assignee of the '950 insulated roof board patent and alleged Cornell's VT-1 infringed while asserting VT-2 anticipated the patent.
- Cornell argued the '950 patent was invalid due to anticipation by VT-2 prior art and other references including Branch River Air-Flo.
- The district court granted summary judgment of invalidity and later awarded Cornell attorney fees under 35 U.S.C. § 285, but only for the period after Crookston's deposition.
- Crookston deposition (Sept. 26, 2007) testified VT-2 and the patented invention performed the same function, influencing the fee decision.
- PTO ex parte reexamination proceedings initially indicated patentability but ultimately the PTO withdrew a notice and later acknowledged patent invalidity; the court treated PTO actions as probative but not controlling.
- On appeal, the Federal Circuit reversed the fee award, vacating the attorney-fee judgment.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the case was exceptional under § 285. | Old Reliable argues not exceptional; there were reasonable foundations for validity. | Cornell argues the case was exceptional due to anticipation by VT-2 and baseless infringement suit after Crookston deposition. | No; the standard for objective baselessness not met; reasonable bases existed. |
| Whether Crookston deposition rendered the case objectively baseless. | Old Reliable contends VT-2 did not anticipate and deposition did not prove all claims were disclosed. | Cornell asserts deposition showed anticipation of the '950 patent. | Not objectively baseless; deposition did not show all claim limitations disclosed by a single reference. |
| Whether Air-Flo (Branch River) anticipates the patent. | Air-Flo lacked cross-ventilation disclosure before the critical date; not clearly anticipatory. | Branch River testimony showed possible cross-ventilation, supporting anticipation. | Non-frivolous grounds existed; not clearly anticipatory. |
| What weight to give PTO reexamination in § 285 analysis. | PTO reexamination proceedings provide probative evidence supporting non-abusive litigation. | PTO determinations are not binding on the court's § 285 analysis. | PTO findings can be probative but are not controlling; not enough to sustain exceptional finding. |
| Whether litigation misconduct was shown to support § 285 sanctions. | No clear misconduct; failure to settle does not equal misconduct. | Misconduct not shown to warrant sanctions. | No litigation misconduct established; sanctions not warranted. |
Key Cases Cited
- In re Skvorecz, 580 F.3d 1262 (Fed. Cir. 2009) (anticipation requires all elements in a single reference)
- Applied Med. Res. Corp. v. United States Surgical Corp., 147 F.3d 1374 (Fed. Cir. 1998) (prior art must disclose same structure to anticipate)
- iLOR, LLC v. Google, Inc., 631 F.3d 1372 (Fed. Cir. 2011) (objective baselessness depends on merits, not litigant's state of mind)
- Brooks Furniture Mfg., Inc. v. Dutailier Int'l, Inc., 393 F.3d 1378 (Fed. Cir. 2005) (objective baselessness requires both subjective and objective showing)
- Medtronic Navigation, Inc. v. BrainLAB Medizinische Computersysteme GmbH, 603 F.3d 943 (Fed. Cir. 2010) (examine record carefully for exceptional-case determination)