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Zenith Elecs. Corp. v. PDI Commun. Sys.

Zenith Elecs. Corp. v. PDI Commun. Sys.

United States Court of Appeals for the Federal Circuit

April 16, 2008, Decided

2007-1288, 2007-1321

Opinion

 [***1514]   [*1351]  SCHALL, Circuit Judge.

This is a patent infringement case. Two patents are at issue: United States Patent No. 5,495,301 (the "'301 patent") and United  [***1515]  States Patent No. 5,502,513 (the "'513 patent"). Both patents are owned by Zenith Electronics Corporation ("Zenith"). The '301 and '513 patents generally relate to televisions and wired remote control devices used in hospital rooms.

 [*1352]  Zenith appeals from the final judgment of the United States District Court for the Northern District of Illinois in favor of PDI Communications Systems, Inc. ("PDI") in Zenith's suit against PDI for infringement of the '301 and '513 patents.  [**2] The district court entered judgment in favor of PDI after granting summary judgment of (1) invalidity of claim 1 of the '301 patent and claim 1 of the '513 patent by reason of anticipation; (2) noninfringement of the '301 patent; and (3) noninfringement of claim 1 of the '513 patent. Zenith Elecs. Corp. v. PDI Commc'n Sys., Inc., No. 04-C-4796, slip op. at 1 (N.D. Ill. Mar. 21, 2007) ("Order Entering Judgment"); Zenith Elecs. Corp. v. PDI Commc'n Sys., Inc., No. 04-C-4796, slip op. at 39-40 (N.D. Ill. Jan. 18, 2007) ("Summary Judgment Order"). For its part, PDI cross-appeals the district court's (1) dismissal without prejudice of PDI's counterclaim of inequitable conduct with respect to the '301 patent and claim 1 of the '513 patent and (2) dismissal with prejudice of PDI's counterclaim of inequitable conduct with respect to claims 2-8 of the '513 patent. Order Entering Judgment at 2; Summary Judgment Order at 39-40. PDI also cross-appeals the district court's denial of its motion for costs. Zenith Elecs. Corp. v. PDI Commc'n Sys., Inc., No. 04-C-4796 (N.D. Ill. Mar. 28, 2007).

For the reasons set forth below, we affirm the district court's (1) grant of summary judgment of invalidity  [**3] of claim 1 of the '301 patent; (2) grant of summary judgment of noninfringement of the '301 patent; and (3) dismissal with prejudice of PDI's counterclaim of inequitable conduct with respect to claims 2-8 of the '513 patent. However, we vacate the district court's (1) grant of summary judgment of invalidity of claim 1 of the '513 patent; (2) grant of summary judgment of noninfringement of claim 1 of the '513 patent; (3) dismissal without prejudice of PDI's counterclaim of inequitable conduct with respect to the '301 patent and claim 1 of the '513 patent; and (4) denial of PDI's motion for costs. As far as these matters are concerned, we remand the case to the district court for further proceedings. In sum, we affirm-in-part, vacate-in-part, and remand.

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522 F.3d 1348 *; 2008 U.S. App. LEXIS 8128 **; 86 U.S.P.Q.2D (BNA) 1513 ***

ZENITH ELECTRONICS CORPORATION, Plaintiff-Appellant, v. PDI COMMUNICATION SYSTEMS, INC., Defendant-Cross Appellant.

Prior History:  [**1] Appeal from the United States District Court for the Northern District of Illinois in case no. 04-CV-4796, Senior Judge William T. Hart.

Disposition: AFFIRMED-IN-PART, VACATED-IN-PART, and REMANDED.

CORE TERMS

pillow, television, patent, infringed, district court, invalid, inequitable conduct, implied license, license, supplied, manufacturers, anticipated, noninfringement, counterclaim, digital, summary judgment, encoder, control signal, summary judgment order, public use, television receiver, costs, grant of summary judgment, critical date, wires, genuine issue of material fact, capacitor, invention, analog, license agreement

Civil Procedure, Summary Judgment, Entitlement as Matter of Law, Appropriateness, Appellate Review, Standards of Review, Appeals, Standards of Review, De Novo Review, Patent Law, Statutory Bars, Public Use Bar, General Overview, Anticipation & Novelty, Prior Knowledge & Use of Invention, Infringement Actions, Appeals, Fact & Law Issues, Claim Evaluation, Business & Corporate Compliance, Defenses, Implied Licenses, Ownership, Conveyances, Licenses, Burdens of Proof, Nonmovant Persuasion & Proof, Evidence, Weight & Sufficiency, Nonobviousness, Elements & Tests, Prior Art, Clear & Convincing Proof, Claims, Claim Language, Justiciability, Mootness, Inequitable Conduct, Pleadings, Counterclaims, Permissive Counterclaims, Effect of Inequitable Conduct, Costs & Attorney Fees, Costs