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Victory: July 2018: Federal Circuit Affirms Invalidity Ruling, Ending Six Years of Litigation

July 2018


The firm recently achieved an appellate victory at the Federal Circuit for long-time client EIZO Inc. On April 3, 2018, a panel of Judges Timothy Dyk, Raymond Clevenger, and Raymond Chen affirmed District Court Judge Timothy C. Batten, Sr.’s ruling that certain claims of U.S. Patent Reissue No. 43,707 were invalid.

EIZO is a Japanese manufacturer of high-end liquid crystal displays (LCDs) for medical applications (e.g., viewing mammogram images for cancer diagnoses). In 2011, EIZO’s chief competitor – Barco N.V. – sued EIZO for infringement U.S. Patent No. 7,639,849 in the Northern District of Georgia. The asserted patent related to image correction in LCDs and the infringement allegations posed a significant risk to EIZO’s business in the United States. Two months after Barco filed the infringement action, it successfully sought a reissue of the ‘849 patent at the U.S. Patent Office to broaden the scope of its original patent and – presumably – to strengthen its infringement positions. The ‘849 patent subsequently reissued as U.S. Patent No. RE43,707, and removed certain limitations related to measuring light output.

Between 2011 and 2016, the district court case was stayed while the reissue and various post-grant proceedings (ex parte reexaminations, inter partes reexaminations, and inter partes review) were underway. When the smoke cleared, Quinn Emanuel had successfully invalidated a majority of claims that Barco had asserted against EIZO. Undeterred, Barco began litigating the remaining claims aggressively once the stay was lifted in the district court case. Within a few weeks, Quinn Emanuel quickly moved for summary judgment on the grounds that the remaining claims violated the Rule Against Recapture, which precludes a patentee from recapturing scope on reissue that it had previously disclaimed to obtain issuance of the original patent in the first instance. The District Court agreed and invalidated all but three claims without the need for oral argument.

In response, Barco dismissed the remaining three claims with prejudice and appealed to the Federal Circuit. Following briefing, the Federal Circuit heard oral argument on April 2, 2018 and issued a summary affirmance of the district court’s ruling a mere 24 hours later, resulting in a complete victory for EIZO and Quinn Emanuel.