Federal Circuit Affirms Order Entering
Judgment as a Matter of Law
In Mirror Worlds, LLC v. Apple, Inc. (Appeal
No. 2011-1392), the Federal Circuit affirmed the district court order entering
judgment as a matter of law.
Mirror
Worlds had asserted infringement of three patents. The jury returned a verdict in favor of
Mirror Worlds and awarded $208.5 million in damages. In separate rulings, one
at the end of Mirror Worlds’ case in chief and another after the jury verdict,
the district court entered judgment as a matter of law in Apple’s favor,
finding that Apple was not liable as a matter of law for infringement of any
of the asserted patent claims and vacating the damages verdict. Specifically,
the district court concluded that Mirror Worlds did not establish infringement
of the asserted claims of two of the patents under the doctrine of
equivalents because the accused products did not have an equivalent of a
“cursor or pointer.” The district court also concluded that Mirror Worlds
failed to offer substantial evidence that Apple performed each step of the
claimed methods in the third patent and that the evidence presented at trial
was not sufficient to support the damages award.
On appeal,
the Federal Circuit reviewed the evidence and found the testimony presented
was insufficient to allow a reasonable juror to find that Mirror Worlds had
met its burden of proof in showing that the accused product had the
equivalent of a “cursor or pointer.” The Federal Circuit stated, with respect to the first two patents,
that reading the “cursor or pointer” limitation out of the claim improperly
vitiates claim language by allowing the exact opposite of what is required.
As such, the Federal Circuit held that the district court correctly found
that Mirror Worlds failed to provide substantial evidence to the jury to
support a verdict of infringement.
With
respect to the third patent, the Federal Circuit held that there was a lack
of substantial evidence on which a jury could render a verdict of direct
infringement or for inducement of infringement. Accordingly, the Federal
Circuit affirmed the district court’s grant of judgment as a matter of law.
Federal Circuit Affirms Jury Finding of Infringement
In K-TEC, Inc. v. Vita-Mix Corp. (Appeal
Nos. 2011-1244, -1484, -1512), the Federal Circuit affirmed the jury finding
of infringement.
At trial, it
was held that Vita-Mix infringed the asserted claims of two U.S. patents,
that two prior art references were not analogous art for the purposes of an
obviousness analysis, that substantial evidence supported the jury’s findings
that the asserted claims were not invalid, that Vita-Mix’s infringement was
willful, and that K-TEC, Inc. was entitled to approximately $11 million in
reasonable royalty and lost profits damages.
The
patents-in-suit claim a “blending jar” that comprises “four side walls” and a
“fifth truncated wall” arranged in a specific geometry. According to the patents, using this geometry,
the vortex created when blending liquid inside the container moves away from
the central axis and toward the truncated wall. The shifted vortex creates a
flow pattern in which, during blending, the liquid will climb up the corner
opposite the truncated wall and will be lower at the truncated wall. That flow
pattern reduces cavitation in the container, increasing the speed and
efficiency with which smoothies and other beverages can be made.
Vita-Mix
argued that two references were analogous art for an obviousness analysis
because they were “reasonably pertinent” to the particular problem K-Tec was
trying solve. The district court
found, that the two references, which related to non-blending containers and
food mixers, were not reasonably pertinent.
The
Federal Circuit held that the district court
properly granted summary judgment that the asserted prior art references were
not analogous art. The Federal Circuit stated that “to qualify as prior art for an obviousness analysis,
a reference must qualify as ‘analogous art,’ i.e., it must satisfy one
of the following conditions: (1) the reference must be from the same field of
endeavor; or (2) the reference must be reasonably pertinent to the particular
problem with which the inventor is involved. [Citation omitted]. A reference is reasonably pertinent if it,
as a result of its subject matter, ‘logically would have commended itself to
an inventor’s attention in considering his problem.’”
Federal
Circuit Reverses Finding of inequitable Conduct
In 1st Media, LLC v. Electronic
Arts, Inc. et al. (Appeal No. 2010-1435), the Federal Circuit reversed a
finding of inequitable conduct.
The district
court found that during prosecution of the patent-in-suit, the named inventor
and his attorney withheld three material references and information about rejections
in two related prosecutions from the United States Patent and Trademark
Office (“PTO”). The district court
then held that inequitable conduct rendered the patent-in-suit unenforceable.
On appeal,
the Federal Circuit noted that the Therasense case changed the standard for proving inequitable conduct based on
nondisclosure of a reference to the PTO. Under the Therasense standard, absent affirmative egregious misconduct, a
defendant must prove by clear and convincing evidence both of the separate requirements
that: (1) “the patentee acted with the specific intent to deceive the PTO”;
and (2) the non-disclosed reference was but-for material. In order to show
that the patentee acted with the specific intent to deceive the PTO, a
defendant must prove “that the applicant knew of the reference, knew that it
was material, and made a deliberate decision to withhold it.” The Federal
Circuit stated that a failure of proof on any element precludes a finding of
inequitable conduct. “[T]o meet the clear and convincing evidence standard,
the specific intent to deceive must be ‘the single most reasonable inference
able to be drawn from the evidence.’” The Federal Circuit noted further that
a district court can no longer infer intent to deceive from non-disclosure of
a reference solely because that reference was known and material. A patentee
need not offer any good faith explanation for its conduct unless and until the
accused infringer has met its burden to prove intent to deceive by clear and
convincing evidence.
The
Federal Circuit reviewed the record, and found that the district court did not discuss or consider whether there was any
deliberate decision on either the applicant’s or attorneys’ part to withhold
the references from the PTO. Accordingly, the Federal Circuit specifically held that, because the
accused infringer Appellees could not prove on the record that either the
applicant or his attorney made a deliberate decision to withhold references
from the PTO, and because Appellees acknowledged that the record is complete,
the district court order had to be reversed. The Federal Circuit did not decide whether any of the references were
but-for material.
Federal
Circuit Holds Declaratory Judgment Plaintiff Who Is a Licensee Has Burden of
Proving No Infringement
In Medtronic Inc. v. Boston Scientific Corp.
and Mirowski Family Ventures, LLC (Appeal Nos. 2011-1313 and 1372), the
Federal Circuit held that the district court relied on a legally
incorrect allocation of the burden of proof to find noninfringement.
Medtronic
had filed a complaint in the U.S. District Court for the District of Delaware
seeking declaratory judgment of noninfringement and invalidity of two patents
assigned to Mirowski Family Ventures, LLC (“MFV”).
The district court entered judgment of noninfringement in favor of Medtronic
and judgment of validity and enforceability in favor of MFV. MFV appealed the
district court’s judgment of noninfringement and Medtronic cross-appealed the
district court’s claim construction on which its judgment of validity is
based.
The
district court held a bench trial and
ruled that the defendants, as patentees, had the burden to prove
infringement. The district court then
found that MFV’s expert testimony lacked sufficient foundation because of his
failure to consider each limitation of each asserted claim in comparison to
each accused product before rendering his infringement opinions. The district court also found that
defendants had failed to prove literal infringement by a preponderance of the
evidence. The district court further found
MFV’s expert report and testimony conclusory and insufficient to show that
the products infringed the patents-in-suit under the doctrine of equivalents.
The
Federal Circuit stated that the contract at-issue required MFV to identify
products it believed were covered by the contract. After MFV identified those
products, Medtronic was required to either pay royalties on them, or sue for
declaratory judgment that the products were not covered. Thus, the Federal
Circuit concluded, Medtronic was the party requesting relief from the district
court: it already has a license; it cannot be sued for infringement; it is
paying money into escrow; and it wants to stop. In contrast, MFV sought nothing more than to
be discharged from the suit and be permitted to continue the quiet enjoyment
of its contract. In other words, Medtronic,
and not MFV, was asking the court to disturb the status quo ante and to relieve it from a royalty obligation that it
believes it does not bear. As such, the Court held that Medtronic must
present evidence showing that it is entitled to such relief.
The
Federal Circuit held the district court’s
conclusion that defendants had failed to prove literal infringement by a
preponderance of the evidence could not stand, and reversed the district
court’s order. Thus, because the
license in this case prohibited Boston Scientific from pursuing infringement
counterclaims, Medtronic had the burden of proving no infringement.
Federal Circuit Affirms Dismissal of Declaratory Judgment
Action
In Matthews Int’l Corp. v. Biosafe Eng., LLC (Appeal Nos. 2012-1044), the Federal Circuit affirmed a district court’s
dismissal of a declaratory judgment action. |
