In Jacobs Vehicle Co. v. Pacific Diesel Brake Co. (Dist. Conn. 2011), Jacobs had filed suit as plaintiff in a Declaratory Judgment Action against Pac Brake. Jacobs manufactures and sells compression release engine brakes primarily used on on-road heavy trucks, commonly known as “Jake Brakes” in the U.S. During the course of the litigation, the patent at issue owned by Pac Brake went through a reexamination, during which time the litigation was stayed in Federal Court. The patent survived the reexamination proceedings and the claims of the patent remained in their original form. Jacobs later hired Todd Taylor to analyze the infringement and invalidity claims of the patent owned by Pac Brake, based upon the extensive experience of Taylor in patent matters related to internal combustion (IC) engines. Taylor rendered an opinion that the claims of the Pac Brake patent were either not infringed or invalid based upon prior art.
The case was later tried in New Hartford, Connecticut. During the trial, Taylor testified extensively as to the invalidity and infringement issues in the case. His experience relating to IC engines was put under scrutiny during testimony, including his practical experience working on IC engines, advanced college courses in IC engines, and extensive patent work in the field of IC engines. After being examined by trial counsel, the judge retained Taylor on the witness stand to ask additional questions pertaining to technical issues in the litigation.
The Court’s decision found that the claims of the Pac Brake patent were either not infringed or invalid in view of the prior art, along the lines of the opinion rendered by Taylor.
From a legal and practical view, the Jacobs case has been discussed on some patent blogs for the proposition that a patent can emerge unscathed from a reexamination proceeding, but still be found to have at least some claims that are invalid during the course of litigation. The USPTO is assumed to have expert capabilities when deciding the patentability of claims; however, a Federal Court judge need not follow the lead of the USPTO in such decisions.
A copy of the Jacobs decision can be found at http://law.justia.com/cases/federal/district-courts/connecticut/ctdce/3:1993cv01093/30564/409. The Jacobs decision has been appealed by Pac Brake….
Update:
The Jacobs Vehicle Co. v. Pacific Diesel Brake Co. (Dist. Conn. 2011) patent infringement suit mentioned in an earlier news release was affirmed without a written decision by the Court Of Appeals for the Federal Circuit on January 16, 2013.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1193.pdf
