Federal Judiciary

CSIRO v. Buffalo infringement holding vacated for reconsideration in light of KSR; Federal Circuit Mum on Whether Grant of Injunction Appropriate

By Michael Smith

CSIRO v. Buffalo Technology, Inc., No. 2007-1449 (Federal Circuit, Sept. 19, 2007)
In the fall of 2006, Judge Leonard Davis resolved this case on cross-motions for summary judgment (at the parties' request in lieu of a trial), finding for the plaintiff CSIRO.  Then, last summer, in CSIRO v. Buffalo Technology, Inc., 2007 WL 1739999 (E.D. Tex., June 15, 2007) (6:06-CV-324), he held that the prevailing plaintiff, CSIRO was entitled to an injunction against defendant Buffalo. (See weblog post with additional details on the grant of the injunction here).  On appeal, the case generated intense interest because of the issue of when a non-practicing entity (at least one with CSIRO's characteristics) is entitled to an injunction after prevailing at trial.
On September 19, the Federal Circuit issued its opinion in the case, and, showing once again that what the bar thinks is important about a case isn't necessarily what really is important, it did not address the injunction issue at all.  Instead, it affirmed Judge Davis' summary judgment holdings in all respects but one, and remanded for a determination on that issue.  It affirmed his finding of infringement, and his finding that the patent was not invalid due to anticipation or lack of specific written description, but vacated his finding that the patent was not invalid as obvious.  Why?  Because in making his holding in late 2006 (before the Supreme Court issued KSR) Judge Davis used the pre-KSR strict requirement for a motivation to combine references, and under the new standard for determining obviousness, there was a fact issue which precluded summary judgment on Buffalo's obviousness defense.  This holding once again illustrates the continuing application of the immortal phrase from Otter in Animal House, "you [screwed] up - you trusted us".   Accordingly, the court remanded for further proceedings limited to the obviousness defense, so the next appeal will, presumably consider the obviousness issue under the KSR standard, and if the court got that right, then maybe the injunction issue, and maybe maybe whichever other issues the law has been changed on in the interim.
Interestingly, Judge Lourie added a brief concurrence noting that there was a "sound basis" for a different decision on one of the infringement defenses, but given the standard of review he believes that the affirmance on that ground was okay as well. 

Full post as published by Eastern District of Texas Federal Court Practice on September 26, 2008 (boomark / email).