"Zarian Midgley Wins Significant Appeal in Federal Circuit Court," (Aug. 11, 2009)
Click Here for PDFJury Verdict and $2.5 Million Damage Award Reversed
BOISE, Idaho – Zarian, Midgley and Johnson, PLLC (Zarian Midgley) announced a major victory in the U.S. Court of Appeals for the Federal Circuit in Exergen Corp. v. Wal Mart Stores, Inc., No. 06-1491.
On appeal, Zarian Midgley represented defendants-appellants S.A.A.T. Systems Application of Advanced Technology, Ltd. (SAAT), an Israeli company that manufactures infrared thermometers used to measure human body temperature, and Daiwa Products, Inc. (Daiwa), a distributor of the thermometers in the United States. Siding with SAAT and Daiwa, the defendants in the case, the Federal Circuit reversed a jury verdict that these companies had willfully infringed three patents held by Exergen Corp. (Exergen). In an opinion issued August 4, 2009, the court also reversed an award of $2.5 million in damages by a federal jury in the District of Massachusetts. At trial and on appeal, Exergen was represented by Fish & Richardson P.C. in Boston, which is ranked by many as the top patent litigation firm in the country.
“Not only did we obtain reversal of the jury’s $2.5 million damage award, but we also invalidated one of Exergen’s three asserted patents,” said Peter Midgley, who represented SAAT and Daiwa on appeal and argued the case before the Federal Circuit in Washington, D.C. “This was a hard-fought case and a very significant victory for our clients.” In addition to invalidating one patent, the Federal Circuit also held that Exergen failed to introduce substantial evidence to support the jury’s finding that the other two patents in the case were infringed. The appeals court did affirm, however, the trial court’s decision denying SAAT’s request to allege inequitable conduct as part of its defense and counterclaim against Exergen.
“While this was a minor issue in the appeal and did not affect the outcome of the case, it is a significant development because the Federal Circuit took the opportunity to establish new legal standards by which future claims of inequitable conduct will be governed,” said Midgley. “The court’s ruling has received quite a bit of attention from patent attorneys around the country, because it heightens the standard for pleading claims of inequitable conduct against patent holders and now requires that litigants be very specific in making such allegations. Under this new standard, many claims of inequitable conduct pending today would likely fail.”
To read the Court’s full decision, visit http://www.cafc.uscourts.gov/opinions/06-1491.pdf.
Established in 2007, Zarian Midgley (www.zarianmidgley.com) is a boutique law firm specializing in intellectual property matters (especially patent law), intellectual property litigation, and complex business litigation. The firm’s registered patent attorneys, patent agents, and lawyers hold technical degrees in electrical engineering, computer engineering, physics, chemical engineering, microbiology, genetics, molecular and cellular biology, aeronautical engineering, mechanical engineering, and manufacturing engineering. The firm’s objective is to provide the high-quality representation expected of large firms, with greater efficiency.