Wednesday, August 15, 2012

CAFC stirs up a froth in Meyer v. Bodum

In a complex legal case about a a relatively simple method of making froth, the CAFC had to address four issues:

On appeal, Bodum argues that the district court erred when it: (1) granted summary judgment of direct infringement and inducement of the asserted method claims, despite the lack of evidence that any one party – including Bodum – actually performed each step of the asserted claims; (2) made several evidentiary rulings that made it impossible for Bodum to present its case; (3) dismissed Bodum’s affirmative defense of inequitable conduct on a motion in limine; and (4) denied Bodum’s JMOL of no willful infringement. We address each of these issues in turn.

There was an issue of "who" practiced the method claims:

Where, as here, the asserted patent claims are method claims, the sale of a product, without more, does not infringe the patent. i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 850 (Fed. Cir. 2010) (citation omitted). Instead, direct infringement of a method claim requires a showing that every step of the claimed method has been practiced. Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1317 (Fed. Cir. 2009).
Under 35 U.S.C. § 271(b), a party who “actively in-duces infringement of a patent shall be liable as an in-fringer.” To prevail on an inducement claim, a patentee must establish that: (1) there has been direct infringe-ment; (2) the defendant, with knowledge of the patent, actively and knowingly aided and abetted such direct infringement. DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1305 (Fed. Cir. 2006) (en banc). It is well-established that a finding of direct infringement is a prerequisite to a finding of inducement. Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1341 (Fed. Cir. 2008) (“[A] finding of inducement requires a threshold finding of direct infringement.”).

Yes, Akamai was mentioned:

Since this court’s decision in Akamai has been vacated pending en banc review, Bodum relies upon our decision in BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) to support its argument.

The decision of the district court was NOT affirmed:

For the reasons discussed below, we conclude that the district court erred in granting summary judgment of infringement with respect to both the Version 1 and Version 2 frothers because the record was inadequate to support such a conclusion as a matter of law. In reaching this conclusion, we find no reason to discuss or apply this court’s case law on divided infringement or to await its clarification en banc because we find that, properly construed, each step of the method claims could be performed by a single user.

And there was no waiver:

Given this language, we find that the district court erred in concluding that Bodum “raise[d] no defense to the argument that its products directly in-fringed the Meyer Patents.” Summary Judgment Version 1, 597 F. Supp. 2d at 794. In these circumstances, we agree with Bodum that no waiver occurred.

In this case, claim construction was reached for the first time on appeal:

During claim construction, neither party asked the court to construe the term “providing.” Although claim construction is a question of law, we are generally hesi-tant to construe claim terms for the first time on appeal. Wavetronix v. EIS Elec. Integrated Sys., 573 F.3d 1343, 1355 (Fed. Cir. 2009). Under the circumstances of this case, however, we find it appropriate to do so. While the parties specifically addressed the meaning and scope of this term in their summary judgment briefing to the district court, the court did not formally construe the claim term because it found no reason to do so.

There was a lack of evidence on the record of infringement:

For the reasons explained below, we agree with Bodum that the district court’s judgments of infringement as to both the Version 1 and Version 2 frothers suffer from the same deficiency: there was no evidence of direct infringement in the record.

The CAFC was critical of the district court:

We find it troubling that the district court based its direct infringement analysis on what it assumed happened, rather than on actual evidence of record. This assumption contradicts our well-established law that a patentee must prove infringement by a preponderance of the evidence. See Siemens Med. Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d 1269, 1279 (Fed. Cir. 2011) (“Patent infringement, whether literal or by equivalence, is an issue of fact, which the patentee must prove by a preponderance of the evi-dence.”). And, by assuming testing without any evidence in the record, the court improperly drew an inference in favor of Meyer and against Bodum. Because factual inferences must be drawn in favor of the nonmoving party on summary judgment, we find that the district court’s decision cannot stand. See IMS Tech., Inc. v. Haas Auto-mation, Inc., 206 F.3d 1422, 1429 (Fed. Cir. 2000) (noting that, on summary judgment, “[w]e view the evidence in a light most favorable to the non-movant, and draw all reasonable inferences in its favor”).

Of evidentiary issues, the term "laundry list" appeared:

In its proposed list of exhibits in the Final Pretrial Order, however, Bodum included what the court characterized as a “laundry list” of prior art exhibits. Because it found that Bodum’s discovery responses and expert report narrowed the relevant prior art, the court found that Bodum could rely only on two items of prior art at trial: the Reissue Ghidini Patent and the Bodum French 3-Cup French Press. As discussed below, more-over, at trial, the court further limited Bodum’s introduc-tion of evidence to exclude the Bodum 3-Cup French Press.

Oral argument was cited: at a minimum, the following prior art was disclosed in Bodum’s interrogatory responses: “certainly the 3 cup was in there, the Ghidini Patent was in there, there was also, I think, a digital image from a movie, there was also a catalog.” See Oral Argument at 17:45, available at


Where, as here, the technology involved is simple, we can think of no explanation for excluding prior art that was disclosed in interrogatory responses but was not relied upon in an expert report. As this court recently reiterated, “[t]here is no invariable requirement that a prior art reference be accompanied by expert testimony.” In re Brimonidine Patent Litig., 643 F.3d 1366, 1376 (Fed. Cir. 2011) (citation omitted). It is well-established, more-over, that, where the technology involved is easily under-standable, expert testimony is not required. Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010); see also Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1369 (Fed. Cir. 2004) (“In many patent cases expert testimony will not be necessary because the technology will be ‘easily understandable without the need for expert explanatory testimony.’” (citation omitted)).

Of expert reports:

In the patent context, an expert report that merely lists a number of prior art references and concludes that one skilled in the art would find the claims obvious is deficient under Rule 26. Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008). In Innogenet-ics, for example, we found that the expert’s report failed to “state how or why a person ordinarily skilled in the art would have found the claims . . . obvious in light of some combination of those particular references.” Id. Given this deficiency, we affirmed the district court’s decision precluding the expert’s vague and conclusory testimony regarding obviousness. Id. at 1374.
Here, the district court found that Anders’ report failed to comply with Rule 26, and that Anders advanced “his opinion as a mere ipse dixit . . . .” Meyer, 715 F. Supp. 2d at 830. In reaching this decision, the district court relied heavily on Innogenetics, suggesting that it “might well have been written for this case.” Id. We disagree. Unlike the situation in Innogenetics, here, Anders’ report does more than merely list prior art refer-ences and provide a conclusion of obviousness.

Careful review of Anders’ report reveals that it con-tains a sufficiently detailed statement of his opinions and the bases for his conclusions. This is particularly true given that the technology involved in this case – using a plunger to froth milk in a container – is not complex. According to Anders, the patents-in-suit are obvious because one skilled in the art would have been motivated based on familiarity with the prior art to combine the known method for aerating milk in a frother with the structure of a French press. In other words, Anders invoked the common sense of one skilled in the art as evidence of motivation to combine prior art references.
Indeed, this court has specifically recognized that the common sense of one skilled in the art can play a role in the obviousness analysis. See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (holding that “an analysis of obviousness . . . may include recourse to logic, judgment, and common sense available to the person of ordinary skill [which] do[es] not necessar-ily require explication in any reference or expert opin-ion”).

The Barbed Wire doctrine is cited:

The “Barbed Wire doctrine” provides that “[c]orroboration is required of any witness whose testi-mony alone is asserted to invalidate a patent.” TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1159 (Fed. Cir. 2004) (citation omitted); see also Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 412 F.3d 1331, 1339 (Fed. Cir. 2005) (“The law has long looked with disfavor upon invalidating patents on the basis of mere testimonial evidence absent other evidence that corroborates that testimony.”) (citation omitted). We have explained that this requirement “arose out of a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another’s patent.” Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996); see also Barbed Wire Patent, 143 U.S. 275, 284 (1892) (recognizing that testimony regarding invalidity can be “unsatisfactory” given “the forgetfulness of wit-nesses, their liability to mistakes, their proneness to recollect things as the party calling them would have them recollect them, aside from the temptation to actual perjury . . . .”).
Bodum argues that the Barbed Wire doctrine does not apply here because: (1) the district court did not rely on it in excluding the testimony; and (2) Bodum is not relying on oral testimony alone to prove invalidity. We agree with Bodum on both points.

Of inequitable conduct:

After careful review of the record, we conclude that the district court erred in addressing the sufficiency of Bodum’s inequitable conduct defense on an evidentiary motion. We agree with Bodum that the district court essentially converted Meyer’s motion in limine into a motion for summary judgment. In doing so, the court did not allow for full development of the evidence and de-prived Bodum of an opportunity to present all pertinent material to defend against the dismissal of its inequitable conduct defense. Although both parties argue the merits of Bodum’s inequitable conduct defense on appeal, we need not address those arguments at this stage. Because we conclude that it was procedurally improper for the court to dispose of Bodum’s inequitable conduct defense on a motion in limine, we reverse the court’s decision and remand for further proceedings.

Bard v. Gore is cited:

Given our decision to remand this case for a new trial to address infringement and invalidity, we vacate the jury’s verdict of willfulness and the district court’s decision denying Bodum JMOL that it did not willfully infringe the patents-in-suit. On remand, Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 682 F.3d 1003 (Fed. Cir. 2012), may be a helpful starting place for any future analysis of willfulness.
Because we vacate the jury’s finding of willfulness, we also vacate the district court’s decision awarding en-hanced damages to Meyer. See i4i, 598 F.3d at 858 (“A finding of willful infringement is a prerequisite to the award of enhanced damages.”). With respect to attorney fees, the district court based its decision, at least in part, on the willfulness verdict and Bodum’s alleged litigation misconduct in its presentation of evidence. Because we have herein reversed the district court’s evidentiary rulings and vacated the willfulness verdict, we also vacate the award of attorney fees.

The case is Meyer Intellectual Properties v. Bodum JOSHUA C. KRUMHOLZ, Holland & Knight, LLP represented the appellees (Meyer).


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