Friday, March 14, 2014

Bose does not fare well at the CAFC in Bose v. SDI

On all points but one, Bose lost.  Summary judgment of noninfringement by SDI was affirmed.  The last point on induced infringement is of interest.

SDI moved for summary judgment of noninfringement
for lack of requisite intent for indirect infringement
because, after learning of the existence of the asserted
patent, it obtained and allegedly relied upon an opinion of
counsel stating that the patent is invalid.
SDI relied on precedent that good-
faith belief of noninfringement can be
established by reliance on advice of counsel obtained after
learning of the asserted patent and that an invalid patent
cannot be infringed.  Manville Sales Corp. v. Paramount
Sys., Inc., 917 F.2d 544, 553 (Fed. Cir. 1990);
Commil USA, LLC v . Cisco Sys, Inc.
, 720 F.3d 1361, 1369 (Fed. Cir. 2013)
(“evidence of an accused inducer’s good-
faithbelief of invalidity may negate the requisite intent for
induced infringement.”)

Under the law of the First Circuit, SDI’s interrogatory answers
suffice for consideration on summary judgment.
Sensing v. Outback Steakhouse of Florida, LLC,
575 F.3d 145, 151 n.10 (1st Cir. 2009) (letter as described in
interrogatory response is a part of the summary judgment record even if
the letter itself has not been properly authenticated and
is not part of summary judgment record);
Council of Ins. Agents & Brokers v. Juarbe-
Jimenez, 443 F.3d 103, 110
(1st Cir.2006) (interrogatory answers based on personal 
knowledge suffice for summary judgment).
Furthermore, even were the interrogatory answers deficient for lack of
verification, their contents were confirmed by Bose’s own
admissions. A4756. We therefore reject Bose’s argument
that the District Court was barred from considering SDI’s
interrogatory answers.

But, the CAFC paid attention to the timeline:

The record is however silent as to what may have
transpired after December 10, 2008 and up to March 26,
2009, when representatives of SDI and Bose had a meet-
ing. For this time interval, the record reveals only that
SDI knew of the asserted patent but nothing about SDI’s
state of mind in reaction to that knowledge. SDI may or
may not have had reliable information causing it to
believe the patent is invalid, or
may have had other basesto demonstrate good-
faith, and may or may not have
relied on that information


At the March 26, 2009 meeting, SDI brought the
Frank Patent to Bose’s attention and
argued that the asserted patent is invalid in view of the Frank Patent in
combination with other prior art. The record neither
shows that SDI based its position on any opinion of counsel nor names the art in addition to the Frank Patent
necessary to invalidate the asserted patent. It may be
that the SDI representatives had been briefed by counsel
and that the interrogatory answers fail to express all the
details revealed at the March 26 meeting, but that evi-
dence is not before us. It is only after the meeting that
SDI commissioned an opinion of counsel.
Where the record reveals no basis for a good-
faith belief sufficient to thwart liability, summary judgment of no
liability cannot stand.



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