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A jury in the U.S. District Court for the Western District of Wisconsin was correct in its conclusion that a paper cutter manufactured by Hunt Manufacturing Co. infringes a patent owned by Fiskars Inc., the Federal U.S. Circuit Court of Appeals ruled July 24 ( Fiskars Inc., et al. v. Hunt Manufacturing Co., et al., Nos. 98-1560 and 98-1566, Fed. Cir.). The court also affirmed the District Court’s holding that Fiskars did not engage in inequitable conduct before the U.S. Patent and Trademark Office and its ruling that Hunt engaged in vexatious conduct on the issue of inequitable conduct. Fiskars is the owner of U.S. Patent No. 5,322,011, which is directed to a circular blade paper cutter. Hunt is the manufacturer of the Heavy Duty Rotary 12 Paper Trimmer. The Hunt device differs from the Fiskars device in that its circular blade is mounted in a subassembly that is biased by a spring within the carriage assembly, while the blade in the Fiskars device is mounted in the carriage assembly, which is biased by a spring. In addition, the Hunt device uses a freestanding coil spring; the Fiskars patent specifies a pair of leaf springs and states that the spring assembly is “formed on” the carriage assembly. SUIT FILED Fiskars sued; Hunt raised the defenses of noninfringement, patent invalidity and unenforceability for inequitable conduct. The District Court entered summary judgment for Hunt on literal infringement; Hunt abandoned the patent invalidity defense before trial. The issue of infringement by equivalents went to a jury, which found for Fiskars; the inequitable conduct issue was tried to the court, which also ruled for Fiskars. Hunt appealed. Affirming, the Federal Circuit rejected Hunt’s contention that the lower court erred in finding that prosecution history estoppel did not bar Fiskars from asserting infringement by the equivalents. The panel held that amendments made during prosecution were not made for reasons of patentability. The court also dismissed Hunt’s argument that Fiskars had the burden of presenting evidence that the Hunt device was not in the prior art. “Hunt’s theory is incorrect,” the panel said. “It is an affirmative defense of the accused infringer to allege and to show that it is practicing the prior art. When the patentee has presented a prima facie case of infringement, the burden shifts to the accused infringer to come forward with evidence to establish this defense.” JURY VERDICT The court also found the jury’s verdict of infringement by equivalents supported by substantial evidence, rejecting Hunt’s contention that the lower court erred in refusing to allow it to present evidence of the patentability of its device. “Since it is well established that separate patentability does not avoid equivalency as a matter of law, we do not intrude upon the trial court’s evidentiary ruling,” the panel said. The panel also rejected Hunt’s argument that any element of its device found to be in the prior art cannot be deemed equivalent to any claimed elements of the patented device. “A claim to a mechanical device usually recites a combination of several elements, most or all of which may be separately known,” the panel said. “That an element of an accused device already existed does not bar equivalency as to that element.” INEQUITABLE CONDUCT On the issue of inequitable conduct, the Federal Circuit held that Hunt failed to introduce any evidence of prior art material to patentability or evidence of intentional withholding of material prior art. Finally, the panel agreed with the lower court’s conclusion that the inequitable conduct claim was “so lacking in substance as to constitute a waste of the time and resources of all the participants,” justifying the imposition of sanctions against Hunt’s counsel. Fiskars is represented by David J. Harth, Joan L. Eads, Anat Hakim and Nancy Y.T. Hanewicz of Foley & Lardner in Madison, Wis. Hunt is represented by Joseph F. Posillico, Mark D. Simpson and Gary A. Hecht of Synnestvedt & Lechner in Philadelphia. �; Copyright 2000 Mealey Publications, Inc.

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