Wednesday, December 19, 2012

CAFC discusses Panduit factors


Of the Panduit factors:

Presidio advanced its lost profits theory under the four-factor Panduit test, which requires Presidio to show: (1) demand for the patented product; (2) absence of ac- ceptable noninfringing substitutes; (3) manufacturing and marketing capability to exploit the demand; and (4) the amount of profit that would have been made. Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1329 (Fed. Cir. 2009) (citing Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152, 1156 (6th Cir. 1978)). ATC argues Presidio did not establish the first two Panduit factors. With respect to the first factor —demand for the patented product— ATC contends Presidio’s BB capacitors are neither covered by the asserted patent, nor in direct competition with the infringing 545L capacitors.

As an initial matter, the demand in question in the first Panduit factor is not limited to demand for the patented products. Rather, demand may also arise from a product that “directly competes with the infringing de- vice.” Depuy Spine, 567 F.3d at 1330 (citing Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1548–49 (Fed. Cir. 1995) (en banc)). Because Presidio conceded that the ‘356 patent does not cover its BB capacitors, this record must show that the BB capacitors directly competed with ATC’s 545L capacitors.

Of the law of infringement:

To prove literal infringement, a plaintiff must show that the accused device contains each and every limitation of the asserted claims. Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1301 (Fed. Cir. 2011). In infringe- ment cases, the court first interprets the claims to deter- mine their scope and meaning. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). Next, the jury compares the properly construed claims to the allegedly infringing device. Id. “If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). This court reviews a finding of infringement for substantial evidence. Uniloc, 632 F.3d at 1301.

Of permanent injunctions:

However, particularly with an eye to protecting the public interest, the decision to deny a permanent injunction remains within the equitable discretion of the district courts. eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006). A trial court, though, can misapply and abuse that discretion with “a clear error of judgment in weighing relevant factors or . . . an error of law or clearly erroneous factual findings.” lnnogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1379 (Fed. Cir. 2008) (quoting Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 772 (Fed. Cir. 1993)). “To the extent the court’s decision is based upon an issue of law, we review that issue de novo.” Sanofi-Synthelabo v. Apotex, lnc., 470 F.3d 1368, 1374 (Fed. Cir. 2006).


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