Patent Defenses Addressed On The Merits Even After Non-Infringement Finding Affirmed
Client Alert | 1 min read | 05.22.06
In Old Town Canoe Co. v. Confluence Holdings Corp . (May 9, 2006; Nos. 05-1123, 05-1148), a Federal Circuit panel affirms findings of non-infringement and no inequitable conduct based on motions for judgment as a matter of law ("JMOL"), but vacates JMOL findings of no invalidity and remands for further proceedings. The patent-in-suit claims a method for making a laminated plastic boat hull by rotational molding, and the parties disputed whether, in the accused process, "coalescence" was "completed." In finding non-infringement, the Federal Circuit affirms the district court's claim construction and agrees that the disputed limitation requires the plastic laminate to reach the end of coalescence, that is, its optimum state as disclosed in one of the patent diagrams. Because the accused process is "brought to a halt," it does not infringe.
With respect to invalidity, the Federal Circuit concludes that the accused infringer presented enough evidence that a reasonable juror could decide against the patentee on each of the obviousness, enablement, and best mode defenses, and thus vacates the JMOL. In contrast, patentee did not provide enough evidence for the Federal Circuit to conclude that the district court abused its discretion in finding no inequitable conduct, and thus JMOL of no inequitable conduct is affirmed.
While agreeing with the JMOL of non-infringement, Judge Mayer dissents from the panel's resolution of the invalidity and unenforceability counterclaims as lacking an actual controversy.
Insights
Client Alert | 6 min read | 07.17.25
On 11 July 2025, the European Commission published the final version of its Code of Practice for General-Purpose Artificial Intelligence (GPAI). This Code is meant to serve as a tool for GPAI model providers, helping them to comply with the transparency, copyright and security provisions governing general-purpose AI models as set out in the AI Act (arts. 53 and 55), which will become applicable on 2 August 2025. Adherence to the Code is on a voluntary basis.
Client Alert | 3 min read | 07.17.25
(Not the Funniest) Weekend Update: Recap of Recent Developments in the EU-US Tariff Dispute
Client Alert | 5 min read | 07.16.25
Client Alert | 8 min read | 07.16.25