No Red Carpet But Academy Award Winner Wins Again

The Court of Appeals for the Federal Circuit today handed the win to David Grober and reinstated his patent infringement action by reversing a district court’s award of summary judgment based only on claim construction. Grober v. Mako Products,  2010-1519, -1527 (Fed. Cir. July 30 2012). Mr. Grober must be a lawyer in addition to being an inventor because he was on the appellant’s brief.

The invention is known commercially as the Perfect Horizon and it keeps a steady horizon through extreme tossing and turning on the ocean or a bus occupied by Harry Potter. Mr. Grober’s Oscar® for scientific and technical achievement in 2006 was for the device covered by the patent in suit.

The decision is another caution to district courts about prosecution history disclaimers that are construed to narrow the scope of patent claims. The language relied on by the district court here came up during a reexamination rather than the original prosecution of the patent. But wherever they occur, the CAFC reminded everyone that “prosecution disclaimer only applies to unambiguous disavowals.”

Then the court explains piece by piece why the language relied on by the district court just was not such a disavowal, and why the reexamination context may have been treated differently than normal prosecution history without justification. It concludes “the district court’s claim construction misread the context of the reexamination process and improperly emphasized a general statement out of context to limit the disputed claim term.”

Along the way, the court finds fault with a statement by defense counsel that “all” claims had to have been infringed when it of course only takes one. The CAFC also did not approve skipping a comparison of the construed claims to the accused device.

When you win an Academy Award, maybe one of the questions people wonder about is what they’re going to do next. In this case, Mr. Grober probably has a fair idea.



About Craig Pinkus

Craig Pinkus is a partner in the Intellectual Property Group. He also is a member of the Litigation and the Sports, Entertainment and Media Groups. He assists clients with a broad range of disputes and transactions involving all areas of intellectual property, entertainment, and other complex business arrangements. He has conducted trials and arbitrations throughout the United States and has argued appeals before the Seventh, Sixth and Federal Circuit Courts of Appeal, the Indiana appellate courts, and United States Supreme Court.
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