TRANSAMERICA LIFE INS. v. LINCOLN NAT. LIFE INS.
Decision Date | 08 March 2010 |
Docket Number | No. C 06-110-MWB.,C 06-110-MWB. |
Citation | 691 F. Supp.2d 946 |
Parties | TRANSAMERICA LIFE INSURANCE COMPANY, Western Reserve Life Assurance Co. of Ohio, and Transamerica Financial Life Insurance Company, Plaintiffs, v. LINCOLN NATIONAL LIFE INSURANCE COMPANY, Defendant. |
Court | U.S. District Court — Northern District of Iowa |
Aaron S. Jacobs, John K. Felter, Ropes & Gray, LLP, Jeremy P. Oczek, Steven M. Bauer, Proskauer Rose, LLP. Boston, MA, Gregory M. Lederer, Lederer Weston Craig PLC, Cedar Rapids, IA, James R. Myers, Ropes & Gray, LLP, Washington, DC, Mark Henry Bloomberg, Ropes & Gray, LLP, New York, NY, for Plaintiffs.
Carrie Marie Raver, Dale Randall Brown, Gary C. Furst, Barnes and Thornburg LLP, Fort Wayne, IN, Dennis P. Stolle, Barnes and Thornburg LLP, Indianapolis, IN, Denny M. Dennis, Todd A. Strother, Bradshaw Fowler Proctor Fairgrave, Des Moines, IA, Jonathan P. Froemel, Barnes and Thornburg LLP, Chicago, IL, for Defendant.
After a jury verdict finding patent infringement and awarding damages based on a reasonable royalty rate, and after the court's entry of a permanent injunction against further infringement, the parties in this litigation have filed post-trial motions concerning the infringer's compliance with the permanent injunction. The infringer asserts that changed circumstances, consisting of its implementation of various "design arounds," make prospective application of the permanent injunction inequitable and, indeed, that one of its "design arounds" warrants refund of the royalties that it has paid since implementing that "design around." The patent holder asserts that the infringer's "design arounds" still infringe, so that, pursuant to the terms of the permanent injunction, the patent holder is now entitled to a further royalty, at a further enhanced rate, for continued infringement.
On August 8, 2006, Transamerica Life Insurance Company, Western Reserve Life Assurance Co. of Ohio, and Transamerica Financial Life Insurance Company, collectively "Transamerica," filed a Complaint For Declaratory Judgment (docket no. 1) initiating this action. In its Complaint, Transamerica asserted, in essence, that it is not infringing a patent held by Lincoln National Life Insurance Company (Lincoln) by selling various annuity product contracts. Transamerica also alleged that the patent-in-suit is invalid on "anticipation" and "obviousness" grounds, pursuant to 35 U.S.C. §§ 102 and 103, respectively, and subsequently clarified in amended pleadings that it was also asserting invalidity of the patent for an "inadequate specification," pursuant to 35 U.S.C. § 112. See Amended And Substituted Complaint (docket no. 52).1 In contrast, in an Answer To Plaintiffs' Complaint And Patent Infringement Counterclaim (docket no. 14), filed December 29, 2006, Lincoln sought declarations that the patent-in-suit is not invalid and that Transamerica is infringing the patent, as well as damages for infringement, injunctive relief from such infringement, and reasonable attorney fees for litigating this matter.
This litigation involves United States Patent No. 7,089,201 B1 (the `201 patent), entitled "METHOD AND APPARATUS FOR PROVIDING RETIREMENT INCOME BENEFITS," which is assigned to Lincoln. In pertinent part, the `201 patent is a "business method" patent. See State Street Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1375 (Fed.Cir. 1998) ( ); accord In re Comiskey, 499 F.3d 1365, 1374 (Fed.Cir.2007) ( ). The business methods claimed in the `201 patent are "computerized methods for administering variable annuity plans." The `201 patent, Abstract.
Independent Claim 35 of the `201 patent, the claim at issue for present purposes, claims a five-step computerized method for administering a variable annuity plan having, inter alia, a guaranteed minimum payment feature associated with a systematic withdrawal program. Claim 35 is quoted below, with bold text indicating claim terms for which the parties had agreed on a construction and italicized text indicating claim terms for which the parties disputed the proper construction.
In a Memorandum Opinion And Order Regarding Construction Of Disputed Patent Claim Terms (the Markman Ruling)2 (docket no. 64), entered March 10, 2008, the court adopted the parties' agreed constructions of certain terms and...
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