Federal Circuit Affirms EDVA Judge's Ruling in Long-Running Patent Interference Action
On May 5, the Federal Circuit upheld a decision by EDVA District Judge Leonie Brinkema reversing a decision of the Board of Patent Appeals and Interferences (BPAI) in an interference proceeding that has taken eight years to work its way through the courts. Rolls-Royce, PLC v. United Technologies Corp., No. 2009-1307 (Fed. Cir. May 5, 2010) (found here).
For an EDVA case, the case has a long and unusual history, and it’s not over. United Technology Corp. (UTC) filed its Request for Interference in the BPAI in July, 2002, and Judge Brinkema conducted a bench trial on the appeal from the BPAI in December, 2005. For some reason, however, Judge Brinkema did not issue a decision until more than three years later, on March 31, 2009. Rolls-Royce didn’t waste any time once the Federal Circuit upheld Judge Brinkema’s decision in its favor, however. The same day of the decision, Rolls-Royce filed suit for infringement of the patent-at-issue in the EDVA (Complaint found here). Rolls-Royce, PLC v. United Technologies Corp., Case No. 1:10CV00457 (E. D. Va.). The infringement suit has also been assigned to Judge Brinkema. Because of the long delay, however, Rolls-Royce has potentially lost several years of recoverable damages.
The patents involved in the interference proceeding involve an improved design for jet engine fan blades to reduce the amount of shockwaves produced by the engine. The BPAI ruled in favor of UTC, holding that UTC’s application covered a fan blade that had a tip that swept either forward or rearward.
Judge Brinkema reversed the BPAI’s decision. She construed the UTC claim to cover only fan blades with tips that swept rearward, and so the UTC patent did not capture Rolls-Royce’s patent on a forward swept tip. Based on her claim construction, Judge Brinkema found that the Rolls-Royce patent was not obvious over the UTC claim.
UTC appealed, and the Federal Circuit upheld both Judge Brinkema’s construction and her finding of non-obviousness. The Federal Circuit rejected UTC’s argument that a forward sweep in the tip of the fan blade would have been an easily predictable and achievable variation in view of the disclosure of the rearward sweep in UTC’s earlier application. The invention was not obvious to try, the Court held, because of the broad selection of choices for further investigation that included any degree of sweep for the fan blade tip. Further, secondary considerations, which showed that an embodiment of Rolls-Royce’s invention had become the industry standard, reinforced the finding of non-obviousness.
