Federal Circuit Patent Watch: Sales Without Restrictive Labels Not Inducing When Products Have Both Noninfringing and Infringing Applications

Previous Federal Circuit Notices

1. ROCHE DIAGNOSTICS CORPORATION c. MESO SCALE DIAGNOSTICS, LLC [OPINION] (2021-1609, 2021-1633, April 8, 2022) (NEWMAN, PROST and TARANTO)

Prost, J. Affirming in part and reversing in part the judgment of the district court affirming the jury’s verdict of infringement of three patents. With respect to whether Plaintiff-Respondent had exclusive rights to any of the patents, the JMOL District Court’s denial was appropriate, in part, because the jury heard evidence that the work performed in this patent was part of the research program allegedly described in the agreement. With respect to the other two patents, the district court erred in upholding the jury’s verdict that defendant-appellant induced infringement of those patents. The district court’s findings of will and amelioration compelled the conclusion that defendant-appellant lacked the intent required for inducement under the proper standard. Moreover, the allegedly instigating acts could not support the jury’s verdict of induced offense because the evidence indicated that none of these acts occurred during the damages period. Further, Plaintiff-Respondent has presented no evidence that customers purchasing the Accused Products during the Damages Period received the Communications prior to the Damages Period and, relying on them, have used the products in an infringing manner. With respect to the three additional patents that were the subject of the district court’s judgment of non-infringement, that judgment resulted from an erroneous application of the mandatory counterclaim rule. The best understanding of the mandatory counterclaim rule is that it prohibits future claims but does not permit adverse judgment on those claims in the same action.

Bryson, J. Annulment of District Court Claim Construction Decisions and Remand for Further Proceeding. The District Court erred in finding that the relevant independent claims covered only a multi-piece device. The mention of a one-piece apparatus in certain dependent claims was convincing evidence that the relevant independent claims also covered a one-piece apparatus. The detailed description in the specification referred to a “fixing rod” only with respect to the “assembled end cap” embodiment, which is a multi-piece device. But nothing in the specification indicated that a fixing rod could not be present in a one-piece device.

3. GENUINE ENABLING TECHNOLOGY LLC vs. NINTENDO CO., LTD. [OPINION] (2020-2167, April 1, 2022) (NEWMAN, REYNA and STOLL)

Reyna, J. Setting aside the district court’s grant of summary judgment of non-infringement. The District Court erred in its construction of the “input signal”, which should have been interpreted to mean “a signal having an audio or higher frequency”. The parties agreed that the scope of the claim was disavowed upon prosecution of the relevant patent by distinguishing the claimed inventions from a reference to the prior art. The only disclaimer of the scope of the claim that was clear and unequivocal on the record was the disallowance of signals below the audio frequency spectrum. The District Court erred in relying on expert testimony to extend the disallowance to all frequency signals up to 500 Hz, which limited the scope of the claim in a way not contemplated by the intrinsic folder. Nor did the record support a finding of disclaimer separate and distinct from the scope of the claim regarding the particular type or content of the signal.

Floyd N. Morlan