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

.

AND

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.


link:  http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1347.Opinion.3-12-2014.1.PDF