US Law – LawFuel, The Legal News Network – New York, NY, October 3, 20…

US Law – LawFuel, The Legal News Network – New York, NY, October 3, 2006 — A federal court in New York City has awarded summary judgment of noninfringement in all respects to Iwasaki Electric Co., Ltd. (Tokyo) on a patent claim against Iwasaki by U.S. Philips Corporation. The dispute is about lamps used in personal computer projectors and rear projection television displays. The opinion filed on September 28 by Judge P. Kevin Castel confirmed a decision revealed to the parties by Judge Castel earlier in the month when he cancelled the jury trial that had been scheduled to begin on September 11 in the U.S. District Court for the Southern District of New York.

According to Iwasaki’s lead counsel John B. Pegram of Fish & Richardson P.C.’s New York office, Iwasaki was charged with infringing U.S. Patent No. 5,109,181 by actively inducing infringement by projector makers who include Iwasaki lamps in their products. An Iwasaki customer was initially sued with Iwasaki, but was dismissed from the New York litigation after Iwasaki agreed not to contest personal jurisdiction. Iwasaki does business only in Japan and sells the lamps in question in Asia.

The Court’s opinion concluded that Philips could not recover damages for any acts before the filing of the Complaint, that Iwasaki had not made lamps literally infringing the ‘181 patent since the Complaint was filed, and that reliance on the Doctrine of Equivalents is legally barred in this case. The pre-Complaint notice of infringement by Philips International B.V. was not effective as a notice by the patent owner U.S. Philips Corp. under Federal Circuit precedent. Judge Castel rejected Philips’ attempt to have a jury apply rounding principles to the numeric range limits in the patent claims.
U.S. Philips had originally included three patents in its Complaint; however, at an early stage of the case, it abandoned its claims under two patents against Iwasaki and its customers. Iwasaki’s counterclaims for declaratory judgments of invalidity, inequitable conduct and patent misuse, its attorneys’ fees claim, and its antitrust counterclaim remain to be considered in future proceedings.

In addition to Mr. Pegram, Iwasaki is represented by David Francescani, John T. Johnson, Michael F. Autuoro, Autumn J. Hwang, and Jorge Torres of Fish & Richardson’s New York office.

U.S. Philips and other Philips entities are represented by John M. DiMatteo, Steven H. Reisberg, Sean S. Buckley, Diane C. Ragosa, and Scott S. Rose of Willkie Farr & Gallagher LLP in New York.

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