Gus, re your message #796: In his 8/15/97 order denying Ampex's motion for a new trial, and in his 6/18/97 order setting aside the jury's verdict, Judge McKelvey found that it WAS clear from the evidence that the amendment to the patent was related to patentability and that therefore the rebuttable presumption did not come into play. Here is the pertinent part of the 8/15 order:
"For the reasons set out in the court's June 18, 1997 opinion, Ampex's motions for reargument and for entry of findings are denied.... In Hilton Davis Chem. Co v. Warner-Jenkinson Co.,{citation} the court held that, where the prosecution history is silent or unclear a patentee should be afforded the opportunity to establish the reasons for a claim amendment in order to overcome a presumption that the reason for the amendment related to patentability. Here, there is no uncertainty concerning Ampex's reasons for making the statements at issue. As discussed in the court's June 18, 1997 opinion, see Opinion at 18, these statements were clearly made in support of patentability. An evidentiary hearing is therefore unnecessary."
In order for Ampex to prevail on appeal, it will be necessary to show either that McKelvey is wrong in his reading of the evidence, or that the Markman case should be disregarded and that the jury and not the judge should be the ones to decide whether or not the amendments relate to patentability. Either way, Ampex has a tough row to hoe on appeal.
The remaining claims of infringement relate to patents # 4,224,645 and # 4,075,666. Perhaps there is a more favorable prosecution history as to those patents. |
