Friday, January 04, 2013

CAFC in Staples case: Both parties have appealed and have raised many— too many—issues.

The Accentra v. Staples decision begins Plaintiffs Worktools, Inc., and Accentra, Inc., (collectively, “Accentra”) are the owners and licensees of several patents concerning staplers.

Of history

Following trial, the jury returned a verdict for Accentra on all counts. The jury found that each of the three asserted patents was valid and infringed, and that the infringement was willful. Based on a finding as to the reasonable royalty, the jury awarded damages of $2.2 million. Staples moved for judgment as a matter of law, arguing again that the asserted claims of the ’709 patent were invalid for indefiniteness and that there was insufficient evidence to support the verdicts of infringement as to the other two patents. Staples also challenged the willfulness findings and the damages award. Accentra moved for enhanced damages based on the jury’s finding of willfulness.


Based in part on its erroneous claim construction, the district court found the ’709 patent to be indefinite. We disagree with the court’s conclusion. The definiteness requirement seeks to “ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee’s right to exclude.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). To do so does not require “absolute clarity” or precision in claim language; this court has ruled that claims are not invalid for indefiniteness unless they are “‘not amenable to construction’ or ‘insolubly ambiguous.’” Id.

As to the word -- about --

Any minor differences can be accounted for in the claims’ use of the word “about”—a term that, when considered in context, is not ordinarily regarded as giving rise to fatal indefiniteness. See, e.g., Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1554 (Fed. Cir. 1996) (“Although it is rarely feasible to attach a precise limit to ‘about,’ the usage can usually be under- stood in light of the technology embodied in the inven- tion.”); BJ Servs. Co. v. Halliburton Energy Servs., Inc.,
338 F.3d 1368, 1372-73 (Fed. Cir. 2003) (affirming a jury verdict that the term “about 0.06” did not render the claim indefinite, even though the specification did not describe how to calculate the relevant measurement). The only evidence cited by the district court to show that the choice of measurement methodology could place the same accused device on different sides of the line between infringement and non-infringement was the recanted deposition testimony of Accentra’s expert. That is not enough.

Bottom line:

The jury awarded Accentra approximately $2.2 million in reasonable royalty damages based on $16.7 million in sales of the accused devices. The awarded amount was higher than any figure proffered by either party’s expert. Accentra’s expert testified that all three patents would have together commanded a royalty rate of 10 percent in a hypothetical negotiation, while Staples’ expert testified that the appropriate royalty rates were 0.6% each for the ’768 and ’709 patents and 0.3% for the ’692 patent. The district court reduced the $2.2 million reasonable royalty award to an amount consistent with the 10 percent rea- sonable royalty rate that Accentra’s evidence supported. Both Accentra’s expert testimony and the jury’s verdict, however, were premised on a judgment finding all three patents to be valid and infringed. Because we have vacated the judgment as to two of the three patents, we believe that the proper course is to vacate the damages award in its entirety and remand for further proceedings so that the district court can revisit the damages issue based on its reevaluation of the liability issues in light of this decision.


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