Infringement Claim under D-O-E Doomed by Lack of Specificity and Completeness of Expert Testimony

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In Nextstep, Inc., v. Comcast Cable Communications, LLC, [2022-1815, 2022-2005, 2022-2113](October 24, 2024), the Federal Circuit affirmed the construction of the claim term VoIP, and the district’s court’s grant of judgment as a matter of law that there was no infringement under the doctrine of equivalents.

The appeal involved U.S. Patent No. 8,280,009 directed to a “digital butler” that controls consumer electronics based on audio data, which the jury found was not literally infringed, but was infringed under the doctrine of equivalents.  However, the district court set aside the jury verdict and granted judgment of non-infringement as a matter of law, finding the evidentiary record inadequate to support infringement under the doctrine of equivalents.  The district court primarily reasoned that the testimony of NexStep’s expert, Dr. Ted Selker, was too conclusory to sustain the verdict. Describing portions of Dr. Selker’s testimony as “word salad,” the district court concluded that Dr. Selker’s testimony lacked the specificity and analysis required by Federal Circuit precedent.  Among other things, the district court concluded that Dr. Selker failed to identify specific components in the accused products and failed to offer a reasoned basis for concluding that those specific components were equivalent to the relevant claim limitations.

At trial, the parties’ dispute focused heavily on the “single action” limitation in the claims. Comcast argued that the multiple actions—the several user button presses— required as a predicate to using any of the three troubleshooting tools meant that the My Account App did not infringe. NexStep focused its infringement theory on the view that a series of steps, when taken together, can be appropriately described as a single action.  The jury returned a verdict of no literal infringement, rejecting NexStep’s view that the series of user steps needed for each of the accused tools amounted to “a single action”) but found infringement under the doctrine of equivalents.

The Federal Circuit noted that patentees typically seek to prove infringement under the doctrine of equivalents in one of two ways.  One way, often referred to as the function-way-result test, asks “whether the accused product performs ‘substantially the same function in substantially the same way to obtain the same result.’” The other way asks whether “differences between the claimed invention and the accused device or process are ‘insubstantial.’”  However the test is phrased, courts must employ “special vigilance” to avoid overbroad applications of the doctrine of equivalents, because when applied to broadly, the

doctrine of equivalents conflicts with the definitional and public-notice functions of the statutory claiming requirement.  Thus, the Federal Circuit has imposed specific evidentiary requirements necessary to prove infringement under the doctrine of equivalents: First, proof under the doctrine of equivalents must be on a limitation-by-limitation basis.  Second, the evidence of equivalents must be from the perspective of someone skilled in the art, for example through testimony of experts or others versed in the technology; by documents, including texts and treatises; and, of course, by the disclosures of the prior art.  Third, specificity and completeness of proof is crucial, there must be particularized testimony and linking argument as to the insubstantiality of the differences between the claimed invention and the accused device.

After quoting a little more than a page of testimony, which it said was the only testimony it was aware of in which NexStep asserted infringement under the doctrine of equivalents, the Federal Circuit said that NexStep had to prove—with particularized testimony and linking argument—that the elements of the accused arrangement were substantially the same as the elements of the claimed arrangement.  The Federal Circuit noted that Dr. Selker’s testimony never identified a particular element or elements in the My Account App as being equivalent to the “single action” limitation.  The Federal Circuit concluded that Dr. Selker’s testimony simply does

not include a particularized identification of what elements in the accused device are equivalent to the claimed limitation.  The Federal Circuit said that the failure to explicitly identify the alleged equivalent is fatal to NexStep’s doctrine of equivalents theory.

Resolving the Licensing of Standards-Essential Patents Dispositive Over Infringement Issues

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In Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., [2024-1515] (October 24, 2024), the Federal Circuit reversed and remanded the denial of an injunction against foreign infringement suits over standards essential patents, because resolving the licensing issue was dispositive of the infringement issue.

Lenovo and Ericsson had, for some time, attempted to agree on a global cross-license to SEPs of the other, which would include Ericsson’s 5G SEP.  When an agreement could not be reached, they resorted to litigation in and out of the United States.   Lenovo moved the district court to enter an antisuit injunction prohibiting Ericsson from, among other things, enforcing injunctions it obtained in Colombia and Brazil.  The district court denied the injunction using the framework from the Ninth Circuit’s opinion in Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012), which first determines that the parties and issues are the same in both the domestic and foreign suits, and the domestic suit must be dispositive of the foreign action to be enjoined.  Second, the domestic court considers whether at least one of the antisuit-injunction factors applies, including “whether the foreign litigation would (1) frustrate a policy of the forum issuing the [antisuit] injunction; (2) be vexatious or oppressive; (3) threaten the issuing court’s in rem or quasi in rem jurisdiction; or (4) where the proceedings prejudice other equitable consideration[s].” Finally, the domestic court considers the antisuit injunction’s impact on comity.

The district court concluded that the case before it was not dispositive of the foreign action, and it therefore denied the requested antisuit injunction without reaching the second and third parts of the analysis.  On appeal from that decision, the key dispute is whether the US suit is dispositive of the Colombian and Brazilian actions that were sought to be enjoined.  The Federal Circuit concluded that the US suit was dispositive of the Colombian and Brazilian actions.

Lenovo argued that Ericsson’s FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first complied with the commitment’s obligation to negotiate in good faith over a license to those SEPs. Thus, the “dispositive” requirement is met, because whether Ericsson has complied with its good-faith-negotiating obligation is an  issue that (1) is before the district court—both via Ericsson’s claims and Lenovo’s counterclaims Lenovo maintains that Ericsson’s FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first complied with the commitment’s obligation to negotiate in good faith over a license to those SEPs. Thus, in Lenovo’s view, the “dispositive” requirement is met, because whether Ericsson has complied with its good-faith-negotiating obligation is an issue that (1) is before the district court—both via Ericsson’s claims and Lenovo’s counterclaims; and (2) will, if decided in Lenovo’s favor (i.e., that Ericsson has not so complied), dictate the impropriety of Ericsson’s pursuing SEP-based injunctive relief.

Ericsson argued that the district court correctly concluded that, to meet the “dispositive” requirement, the instant suit must necessarily result in a global cross-license between the parties.

The Federal Circuit said that Ericsson and the district court got it wrong: Ericsson’s and the district court’s interpretation of what it takes to meet the “dispositive” requirement rests on a misunderstanding of Microsoft. The Federal Circuit saw nothing in the Microsoft district opinion that treated as “critical” the fact that the suit before it would result in a license. The court articulated the issues to be determined as both “whether Motorola may seek injunctive relief against Microsoft with respect to its [SEPs]” and “in the event Microsoft is entitled to a [worldwide RAND] license, what the RAND terms are for such a license.”  The Federal Circuit said that this was also true of the 9th Circuit’s opinion, noting that the discussion of the “dispositive” requirement focused on how Motorola’s RAND commitment affected its ability to seek SEP-based injunctive relief.

The Federal Circuit said that with this misunderstanding corrected, Microsoft leads to the rejection of Ericsson’s arguments regarding what it takes to meet the “dispositive” requirement. As to Ericsson’s argument that the domestic suit should resolve not just an injunction, but instead the entire foreign proceeding (e.g., by resulting in a license), that was not necessary in Microsoft.

October 24, 2024

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On October 24, 1876, U.S. Patent No. 183725 issued to Seth E. Thomas (son and namesake of the founder of Seth Thomas & Sons clock making enterprise) on an Improvement in Clock-Cases.

The case was particularly adapted for the now familiar back-winding alarm clock. There were alarm clocks before this (and the patent indicates that “[t]he works need involve no novelty”). Levi Hutchins is credited with one of the first U.S. alarm clocks in 1787. The alarm on this clock had a preset time that could not be changed. U.S. Patent No. X7154 from 1832 on an Alarm Bell, For Time Pieces, Alarm Clock discloses a bell for an alarm clock. U.S. Patent No. 1956 from 1841 mentions the “common alarm clock.” U.S. Patent No. 9123 from 1852 is the first U.S. on an alarm clock per se.

October 23, 2024

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On October 23, 1956, Harry W. Coover, Jr., was awarded U.S. Patent No. 2,768,109, on Alcohol-Catalyzed alpha-Cyanoacrylate Adhesive Compositions:

This patent was assigned to Eastman Kodak Company, which began selling Coover’s adhesive under the brand SUPER GLUE in 1958.

Coover received his B.S. from Hobart College and his M.S. and Ph.D. from Cornell University. Coover, and received more than 460 patents.

Dismissal of Infringement Claim Reversed Because Additional Analysis and Proceedings were Needed to Arrive at a Proper Claim Construction

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In Utto Inc. v. Metrotech Corp., [2023-1435](October 18, 2024), the Federal Circuit we vacated in part the dismissal of Utto’s claim for infringement of U.S. Patent No. 9,086,441, which describes and claims methods for detecting and identifying underground utility lines, and affirmed the dismissal of Utto’s claim for tortious interference with prospective economic advantage.

The court construed the claim language “group of buried asset data points” in both the “receiving” and “generating” limitations of claim 1 to require “two or more” buried asset data points for each buried asset, adopting that construction as reflecting the “ordinary and customary meaning.” The court acknowledged that the specification in two places refers to “one or more buried asset data points” for a given buried asset, but the court said that those references to the singular occur “[o]nly twice” and “neither supports the ordinary reading of the claim language itself.”

On appeal, Utto argued that a district court may never engage in claim construction in deciding a motion to dismiss.  The Federal Circuit did not agree that claim construction is categorically forbidden at the Rule 12(b)(6) stage of a case. But the Federal Circuit agreed that, in this case, additional analysis and proceedings are needed to arrive at a proper construction.  UTTO pointed to several pieces of extrinsic evidence that it sought to present at further proceedings, including encyclopedia articles on “group theory” and “group,” the testimony of its founder, and the testimony and report of an expert.  The Federal Circuit itself saw “several issues relevant to a proper claim construction that would significantly benefit from fuller exploration by the parties and the district court.

The Federal Circuit noted that the claim language does not appear to be the kind of language that has so “plain” a univocal meaning that to give it a contrary construction would require meeting the high standard of redefinition or clear disclaimer.  Relatedly, the Federal Circuit noted, to the extent that “group of [plural term]” shares the character of plurals, the proper meaning is presumptive, but only presumptive—the specification not having to rise to the level of redefinition or disclaimer to overcome the presumed “two or more” meaning.

The Federal Circuit vacated the district court’s dismissal of UTTO’s infringement claim and remand for further claim construction proceedings. We do not here decide whether the district court’s claim construction is correct.

October 14, 2024

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Before modern sensibilities, Christopher Columbus’ achievement in sailing across the Atlantic Ocean in 1492 was celebrated, including in the U.S. Patent Collection. U.S. Patent No. 21448 was issued on a design for a Buckle (with the image of Christopher Columbus):

U.S. Patent No. D21573 issued on a Badge featuring the image of Christopher Columbus:

U.S. Patent No. D221,221 issued on a Spoon featuring Columbus’ ship:

U.S. Patent No. D21255 on the design of a Medal featuring the image of Christopher Columbus:

U.S. Patent No. 418455 issued on an Educational Globe that tracks that voyage of Columbus.

October 11, 2024

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On October 11, 1938, Games Slayter received U.S. Patent No. 2,133,235, on a Method and Apparatus for Making Glass Wool:

Slayter was the driving force behind the development of fiber glass for Owens-Illinois. A few years later Dale Kleist, a researcher working under Slayter, discovered an improvement to the process when he accidently blasted the fiber with air, which after some refinement resulted in U.S. Patent No. 2,121,802:

October 9, 2024

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On October 9, 1855, Isaac M. Singer received U.S. Patent No. 13661 on a Sewing Machine:

Of course, Singers’ was not the first patent on a sewing machine. Elias Howe is generally regarded as the first inventor of the sewing machine, and he received U.S. Patent No. 4750 on September 10, 1846:

Howe also received U.S. Patent Nos. 16,436 on January 20, 1857, 17679 on June 30, 1857, and 21158 on August 24, 1858. However, rather than making and selling machines himself, Howe made his fortune by suing those who he felt had infringed on his patents.

Dismissal of Infringement Claims Reversed; Complaint Merely Must Place the Alleged Infringer on Notice of What Activity is being Accused of infringement. 

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In Alexsam, Inc. v. AETNA, Inc., [2022-2036] (October 8, 2024), the Federal Circuit vacated and remanded portions of the district court’s dismissal of AlexSam’s claim for infringement of U.S. Patent No. 6,000,608.   The ’608 patent is entitled “Multifunction Card System” is directed to “a debit/credit card capable of performing a plurality of functions” and a “processing center which can manage such a multifunction card system.”

The district court found that AlexSam could not prevail on its claims based on the Mastercard Products because Aetna had an express license via the License Agreement to market those products. The court further concluded that AlexSam failed to state a claim of direct infringement based on the VISA Products because only third-party customers, and not Aetna itself, could have directly infringed. It appeared to the district court that AlexSam’s accusations were largely targeted at Aetna’s subsidiaries, who were not defendants, and that “AlexSam fail[ed] to allege control or direction by Aetna which would warrant disregarding the corporate form.”

On appeal, AlexSam raised two specific challenges to the district court’s conclusions: (i) that Aetna’s Mastercard Products are licensed and, therefore, cannot directly or indirectly infringe claims 32 and 33 of the ’608 patent, and (ii) that it is implausible to believe that Aetna itself “makes” or “uses” the VISA Products.

The Federal Circuit agreed with AlexSam that the district court erred by resolving the Mastercard licensing issues “on the limited information provided” in the Second Amended Complaint, its attachments, and the motion to dismiss briefing.   The Federal Circuit said that not only was the scope of the license narrower than the district court seems to have un-derstood, but there were also open issues remaining that need to be resolved before the impact of the license on AlexSam’s allegations can be fully assessed.

On the infringement allegations, the Federal Circuit said the district court erred by concluding that AlexSam failed to allege a plausible claim of direct infringement by Aetna’s making and using the VISA Products.  The Federal Circuit said that a plaintiff is not required to plead infringement on an element-by-element basis.  Instead, it is enough that a complaint place the alleged infringer on notice of what activity is being accused of infringement. 

October 8, 2024

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On October 8, 1940, David C. Rockola received U.S. Patent No. D122,946 on a Cabinet for Remote Control Apparatus:

This was not the first patent by this prolific inventor, that was U.S. Patent No. USD81021 that issued more than ten years earlier in 1930, and it was far from the last, that was U.S. Patent No. US 3771691 that issued more than thirty years later in 1973.

David Rockola invented everything from gaming devices, to parking meters, to vehicles, to juke boxes — what his is probably best know for.

It turns out that ROCKOLA was not just a snappy name for juke boxes, but it a snappy name for a prolific inventor who did far more than juke boxes.