Defending Patent Litigation - Paul, Weiss, Rifkind, Wharton & Garrison

Defending Patent Litigation:
What Really Matters
John E. Nathan
Catherine Nyarady
February 8, 2007
A Continuing Legal Education Program

Table of Contents
Tab
Paul M. Janicke & LiLan Ren, Who Wins Patent Infringement Cases,
34 AIPLA Q.J. 1 (2006) ............................................................................................ 1
35 U.S.C. §§ 102, 282 and 283.................................................................................. 2
Doroodian-Shoja U.S. Patent 5,388,331.................................................................... 3
Gillette U.S. Patent 6,594,904 ................................................................................... 4
Tseng v. Doroodian-Shoja, Patent Interference No. 104,482
(B.P.A.I. October 16, 2001)....................................................................................... 5
Hoganas v. Dresser Indus., Inc., 9 F.3d 948 (Fed. Cir. 1993) .................................. 6
Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp.,
383 F.3d 1337 (Fed. Cir. 2004) ................................................................................. 7
In re EchoStar Comm. Corp., 448 F.3d 1294 (Fed. Cir. 2006) ................................. 8
In re Seagate Technology, LLC, case no. 2006-M830
(Fed. Cir. Jan. 26, 2007) ............................................................................................ 9
MercExchange, L.L.C. v. eBay, Inc., 401 F.3d 1323 (Fed. Cir. 2005)...................... 10
eBay Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837 (2006) .................................... 11
z4 Technologies, Inc. v. Microsoft Corp., 434 F. Supp. 2d 437
(E.D. Tex. 2006) ........................................................................................................ 12
Finisar Corp. v. DirectTV Group, Inc., 1:05-cv-264
(E.D. Tex. July 7, 2006) ............................................................................................ 13
Paice LLC v. Toyota Motor Corp., 2006 U.S. Dist. LEXIS 61600
(E.D. Tex. Aug. 16, 2006) ......................................................................................... 14
Voda v. Cordis Corp., 2006 U.S. Dist. LEXIS 63623
(W.D. Okla. Sept. 5, 2006) ........................................................................................ 15
Sundance, Inc. v. DeMonte Fabricating Ltd., 2007 WL 37742
(E.D. Mich. Jan. 4, 2007) ......................................................................................... 16
Grain Processing Corp. v. American Maize-Products Co., 185 F.3d 1341
(Fed. Cir. 1999).......................................................................................................... 17

Wafer Shave, Inc. v. Gillette Co., 857 F. Supp. 112 (D. Mass. 1993)....................... 18
Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)................................. 19
Philips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ............................................ 20
Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367 (Fed. Cir. 2005) ................ 21

Defending Patent Litigation:
What Really Matters
John E. Nathan
Catherine Nyarady
© Paul, Weiss, Rifkind, Wharton & Garrison LLP 2007

Introduction
The patent landscape changed significantly with the establishment of the
Court of Appeals for the Federal Circuit in 1982. Prior to 1982, the conventional wisdom
was that the overwhelming majority of litigated patents were held invalid. Arguably, the
Federal Circuit has increased the win rate for patentees. See Paul M. Janicke & LiLan Ren,
Who Wins Patent Infringement Cases, 34 AIPLA Q.J. 1 (2006) (Tab 1).
Moreover, the Federal Circuit has endorsed burdens of proof that favor the
patentee. For example, while 35 U.S.C. § 282 (Tab 2) always put the burden of establishing
patent invalidity on the defendant, the Federal Circuit clarified that this burden can only be
met by clear and convincing evidence. American Hoist & Derrick v. Sowa, 725 F.2d 1350,
1360 (Fed. Cir. 1984).
Therefore, it is critical that defense strategy in patent litigation be thought out
in advance and well executed. In fact, good patent defense starts well before infringement is
even alleged. The following practical rules for defending a patent case cover a breadth of
issues from pre-litigation strategies, such as filing defensive patent applications, to
memorable and compelling presentation of the defense case to the jury.
Rule #1: File Patent Applications
Patents are typically obtained to protect technology and/or generate royalties.
This strategy should be expanded to include obtaining patents for defensive reasons.
Having a patent that covers the allegedly infringing product allows the
defendant to argue: “We are not infringing – we are using our patent.” This sends a
powerful message to the jury.
For example, Gillette successfully defended the use of its Mach3 “indicator
strip” against allegations of infringement of Doroodian-Shoja U.S. Patent 5,388,331 (Tab 3).
Gillette obtained its own patent that covered its indicator strip, U.S. Patent 6,594,904
(Tab 4). In a patent interference, the Board of Patent Appeals & Interferences ruled that
Gillette’s indicator strip technology was not covered by Doroodian’s patent and that each
party was entitled to its own patent. Tseng v. Doroodian-Shoja, Patent Interference
No. 104,482 (B.P.A.I. October 16, 2001) (Tab 5). The Doroodian-Shoja et al. v. Gillette
infringement action later settled on favorable terms because Gillette had obtained its own
patent on its indicator technology and could establish that it was for a different technology
than the Doroodian invention.
Having a defensive patent can also be relevant to the non-infringement
analysis under the doctrine of equivalents. The Federal Circuit has stated that “the issuance
of a patent on an accused product or process [is] relevant to the equivalence issue if that
patent was issued on the basis of ‘unexpected results’ over the prior art. Understanding a
finding of ‘unexpected results’ to be tantamount to a finding of nonobviousness, we
conclude the issuance of [defendant’s] patent is relevant to the equivalence issue in this
1

case.” Hoganas v. Dresser Indus., Inc., 9 F.3d 948, 954 n.28 (Fed. Cir. 1993) (citation
omitted, emphasis added) (Tab 6).
Finally, defensive patents may support infringement counterclaims and
provide a platform to settle the case with a cross-license.
A word of caution: one must be judicious in choosing which inventions to
patent. Avoid creating unnecessary prior art. As a general rule, only file patent applications
on inventions that are likely to have commercial value.
Rule #2: Get Opinion
The Federal Circuit has held that “no adverse inference that an opinion of
counsel was or would have been unfavorable flows from an alleged infringer’s failure to
obtain or produce an exculpatory opinion of counsel.” Knorr-Bremse Systeme Fuer
Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1341 (Fed. Cir. 2004) (en banc)
(Tab 7). In the post-Knorr-Bremse world, defendants are not required to produce a
non-infringement opinion to defeat allegations of willful infringement.
However, the absence of a non-infringement opinion is still a risk. The jury
must take into consideration the “totality of circumstances.” See ABA Model Jury
Instructions at 46 (2005). The Federal Circuit left open the issue of whether a jury “can or
should be told whether or not counsel was consulted (albeit without any inference as to the
nature of the advice received) as part of the totality of the circumstances relevant to the
question of willful infringement.” Knorr-Bremse, 383 F.3d at 1346-47. 1 A primary
consideration in determining willful infringement is whether the defendant had a good faith
belief that the patent was invalid, unenforceable and/or not infringed. Id. at 1347. Having
an opinion of counsel can help in this regard. 2
To avoid liability for willful infringement, the opinion of counsel must
provide a competent analysis of all relevant materials and, ideally, address all relevant
1
At least one subsequent Federal Circuit panel found no error in jury instructions
where the defendant had not obtained an opinion of counsel and the “instructions merely
directed the jury to consider whether [the defendant] sought a legal opinion as one factor in
assessing whether, under the totality of the circumstances, infringement . . . was willful.”
Engineered Prods. Co. v. Donaldson Co., Inc., 147 Fed. Appx. 979, 991 (Fed. Cir. 2005).
2
An opinion of counsel can also help in avoiding liability for inducement of
infringement. Sitting en banc, the Federal Circuit recently clarified that inducement of
infringement (under 35 U.S.C. § 271(b)) requires “evidence of culpable conduct, directed to
encouraging another’s infringement, not merely that the inducer had knowledge of the direct
infringer’s activities.” DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1306 (Fed. Cir.
2006) (Tab 18). The Court affirmed a finding of no inducement where the defendant had
obtained an opinion of counsel advising that its product did not infringe, and its owner
testified that the company did not intend to infringe the patent-in-suit. Id. at 1307.
2

issues. Id. at 1345. When obtaining an exculpatory opinion, it is also important to consider
who will present the opinion to the jury and whether that person will be an effective witness.
A related matter is the scope of waiver when an opinion is offered to prove
non-willfulness. In In re EchoStar Comm. Corp., 448 F.3d 1294, 1299 (Fed. Cir. 2006)
(Tab 8), the Court held that by choosing to rely on the advice of its in-house counsel,
EchoStar “waived the attorney-client privilege with regard to any attorney-client
communications relating to the same subject matter, including communications with counsel
other than in-house counsel, which would include communications with [outside counsel].”
However, outside counsel’s opinion work product that was not communicated to EchoStar
was not discoverable. Id. at 1303. A footnote in the EchoStar opinion noted that waiver of
attorney-client privilege may extend to advice given after the litigation begins. Id. at n4.
The Court did not indicate whether such a waiver includes the work of trial counsel.
The Federal Circuit has decided to hear a case en banc that might clarify its
EchoStar ruling. In re Seagate Technology, LLC, case no. 2006-M830 (Fed. Cir.
Jan. 26, 2007) (Tab 9). The Court has invited the parties to address (1) whether “a party’s
assertion of the advice of counsel defense to willful infringement [should] extend waiver of
the attorney-client privilege to communications with that party's trial counsel,” (2) the
“effect of any such waiver on work-product immunity,” and (3) whether the Court should
“reconsider the [1983] decision in Underwater Devices and the duty of care standard itself.”
Id.
Rule #3: Have A “Plan B”
For a defendant in a patent litigation, having a “Plan B” in the form of an
acceptable non-infringing alternative to the allegedly infringing product or process is an
invaluable asset. First, a Plan B design-around product or process is the only sure answer
when faced with the possibility of an injunction. Second, the availability of an acceptable
non-infringing alternative can significantly limit the damages award.
Avoid Injunction:
For decades, 35 U.S.C. § 283 (Tab 2) has been interpreted to mean that
permanent injunctions will issue against patent infringers as a “general rule . . . absent
exceptional circumstances.” MercExchange, L.L.C. v. eBay, Inc., 401 F.3d 1323, 1339
(Fed. Cir. 2005) (Tab 10). However, the Supreme Court recently changed this “general
rule” and held that a permanent injunction in patent cases should be granted in accordance
with traditional principles of equity, just as in other areas of the law. eBay Inc. v.
MercExchange, L.L.C., 126 S. Ct. 1837, 1841 (2006) (Tab 11). Therefore, a plaintiff
seeking a permanent injunction “must demonstrate: (1) that it had suffered an irreparable
injury; (2) that remedies available at law, such as monetary damages, are inadequate to
compensate for that injury; (3) that, considering the balance of hardships between the
plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest
would not be disserved by a permanent injunction.” Id. at 1839.
3

Although eBay changed the general rule that essentially mandated the
issuance of a permanent injunction once infringement, validity and enforceability were
decided, it remains to be seen if there will be any significant reduction in the availability of
permanent injunctive relief to the prevailing patent holder. Since eBay, the district courts
have denied permanent injunctions in five patent cases. By contrast, there have been ten
decisions where the district courts granted permanent injunctions in patent cases.
The U.S. District Court in the Eastern District of Texas has denied permanent
injunctions in three patent cases since eBay. In z4 Technologies, Inc. v. Microsoft Corp.,
434 F. Supp. 2d 437, 438-39 (E.D. Tex. 2006) (Tab 12), the jury found willful infringement.
The District Court (Judge Davis) declined to hold that a finding of infringement and validity
raised a rebuttable presumption of irreparable harm and placed the burden of proving
irreparable harm on the patentee. The Court denied a permanent injunction, noting that the
patentee’s right to exclude alone is not sufficient to warrant injunctive relief. Id. at 444. In
Finisar Corp. v. DirectTV Group, Inc., the jury found willful infringement of Finisar’s
patent. See July 6, 2006 Hearing Tr. at 120 (Tab 13). Nevertheless, the District Court
(Judge Clark) found no irreparable harm where the patentee never made or licensed the
invention and denied a permanent injunction. Id. at 123-24; see also Finisar Corp. v.
DirectTV Group, Inc., 2006 U.S. Dist. LEXIS 76380, at *4 (E.D. Tex. July 7, 2006)
(Tab 13). In Paice LLC v. Toyota Motor Corp., 2006 U.S. Dist. LEXIS 61600, at *3
(E.D. Tex. Aug. 16, 2006) (Tab 14), the jury found that Toyota’s hybrid cars infringed, but
declined to find that infringement was willful. The District Court (Judge Folsom) denied a
permanent injunction, noting that the patented invention formed only a “small component”
of the accused vehicles, and that the plaintiff did not manufacture competing vehicles and
was only interested in licensing its technology. Id. at *18.
The U.S. District Court for the Western District of Oklahoma has also
addressed the issue of a permanent injunction in a patent case since the eBay decision. In
Voda v. Cordis Corp., 2006 U.S. Dist. LEXIS 63623, at *18 (W.D. Okla. Sept. 5, 2006)
(Tab 15), the District Court denied a permanent injunction against Cordis after a jury found
willful infringement. Here, the patentee had granted an exclusive license for the patent in
suit to Scimed, a Cordis competitor who was not party to the lawsuit. The patentee relied on
the alleged injury to Scimed to show irreparable harm. Id. at *18-19. The District Court
was not persuaded and noted that “such harm is irrelevant because Scimed elected not to sue
to enforce the patent rights. As patents have ‘the attributes of personal property,’ the person
seeking a permanent injunction must demonstrate harm from infringement of those rights
that is personal as well.” Id. at *19 (internal citation omitted).
Finally, a permanent injunction was recently denied by a Michigan District
Court. In Sundance, Inc. v. DeMonte Fabricating Ltd., 2007 WL 37742, at *2 (E.D. Mich.
Jan. 4, 2007) (Tab 16), the Court denied a permanent injunction where Sundance had
licensed its patent to companies that competed with DeMonte, delayed filing the lawsuit and
seeking injunctive relief, and the patented invention was just one feature of the infringing
product. The Court failed to find irreparable harm despite Sundance’s argument that its
licensees were at a competitive disadvantage due to DeMonte’s infringing sales. Id. The
Court also noted that money damages were adequate because Sundance had licensed the
patent-in-suit to others and had offered to license it to DeMonte before initiating the suit. Id.
4

These decisions remain in the minority. Since eBay, permanent injunctions
were ordered by District Courts in the Northern District of Illinois, District of Minnesota,
Eastern District of Missouri, Eastern District of New York, Northern District of Ohio,
Western District of Oklahoma, Western District of Tennessee, Eastern District of Texas
(twice) and Southern District of Texas.
The lesson of these post-eBay decisions is clear. Permanent injunctive relief
remains a real possibility. A Plan B alternative should be considered early and often.
Limit Damages Award:
An available non-infringing alternative (even one that is not commercially
sold) can preclude lost profits damages. In Grain Processing Corp. v. American
Maize-Products Co., 185 F.3d 1341, 1350-51 (Fed. Cir. 1999) (Tab 17), the Federal Circuit
explained that “a fair and accurate reconstruction of the ‘but for’ market [for lost profits
analysis] also must take into account, where relevant, alternative actions the infringer
foreseeably would have undertaken had he not infringed. . . . The competitor in the ‘but for’
marketplace is hardly likely to surrender its complete market share when faced with a patent,
if it can compete in some other lawful manner.” The Court upheld denial of lost profits
because the defendant showed that it could have readily turned to an available
non-infringing alternative product and consumers would not have noticed any difference
between the two products. Id. at 1354-56. In DSU Medical Corp. v. JMS Co., Ltd.,
471 F.3d 1293, 1309 (Fed. Cir. 2006) (Tab 18), the Federal Circuit reiterated that a
non-infringing substitute, even one not yet on the market, can defeat a case for lost profits.
The availability of an acceptable non-infringing alternative can also limit the
reasonable royalty award. In Grain Processing, the Court noted the District Court’s ruling
that the defendant’s “production cost difference between infringing and non-infringing
[products] effectively capped the reasonable royalty award.” 185 F.3d at 1347. Further, if
the patentee “had insisted on a rate greater than [the rate reflecting the cost difference
between the infringing and non-infringing products, taking into account cost fluctuations] in
the hypothetical negotiations, [the infringer] instead would have chosen to invest in
producing noninfringing [alternative product].” Id. Neither of these rulings was appealed.
Id. at 1353 n5 (“The district court appears to have conducted a thorough royalty analysis,
challenged by neither party on appeal.”).
Grain Processing and DSU Medical thus reinforce the importance of
having a Plan B.
Rule #4: Look For Evidence In Unlikely Places
Defendants typically focus more on the patentee’s evidence, especially
regarding conception and reduction to practice of the patented invention. However, the
defendant’s evidence can sometimes steal the show. For example, under the first to invent
system in the United States, the defendant’s work can provide proof of prior invention and
invalidate the patent. See 35 U.S.C. § 102(g) (Tab 2).
5

Sometimes, key pieces of evidence are found not in perfectly maintained
laboratory notebooks, but in rather unlikely places, lurking in a pile of papers in the trunk of
someone’s car or a drawing on the back of an envelope or lunch napkin. Therefore, do not
neglect to look beyond the usual sources to find the proof to make the defendant’s case.
For example, in one case the corroboration of the date of conception of an
important medical device came from the checkbook belonging to the inventor’s wife, who
had balanced her checkbook on the inventor’s drawing. Her numbers on the drawing
matched the ones in the checkbook, thereby corroborating the date on the drawing. As a
result, the patent was awarded to the inventor.
Rule #5: Try For Early Markman Knockout
Claim construction is a matter of law to be decided exclusively by the Court.
Markman v. Westview Instruments, Inc., 517 U.S. 370, 384 (1996) (Tab 19). More
recently, the Federal Circuit addressed the issue of which sources the Court should rely on to
interpret patent claims. Philips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)
(Tab 20). The Court held that the claims, specification, and to a lesser extent, the
prosecution history should be given prime importance in claim interpretation. Id. at
1314-17. Reliance on dictionaries was significantly reduced. The Court focused on the
specification as the “single best guide to the meaning of a disputed term.” Id. at 1315.
Interpreting claim terms to determine their meaning and scope is a key first
step in determining whether the claims are invalid or infringed. It is not surprising,
therefore, that resolution of claim construction issues will frequently resolve the parties’
dispute. Getting a Markman ruling early in the case can be an effective strategy for early
dismissal or settlement.
For example, in a patent infringement litigation between Gillette and Schick
over Schick’s Quattro razor, defendant Schick obtained an early Markman ruling on the
meaning of a key claim term. Gillette appealed, and the Federal Circuit issued a claim
construction favoring Gillette. Gillette v. Energizer Holdings, Inc., 405 F.3d 1367, 1374
(Fed. Cir. 2005) (Tab 21). The parties settled the case shortly thereafter.
Rule #6: Use Memorable Graphics
Juries can be easily overwhelmed by all the detail and technology involved in
a typical patent case. Having a few key themes in the presentation of the case will help
focus the jury on the important issues and make a more lasting impression. Graphics will
help the jury understand and remember those themes. Graphics should be clear and simple.
Avoid too slick or over-animated graphics. Graphics rarely are permitted in the jury room
during deliberations, so they must be memorable.
6

AIPLA
JOURNAL
VOLUME NUMBER WINTER
WHO WINS
CASES
Paul
LiLan
INTRODUCTION
Constructing
Database
Summary of the Observed Events
Patent-Owner Winners and Accused-Infringer
Winners
Limitations
of the
II OF MULTIVARIATE REGRESSION 11
Regression with Patentee as Winner 12
Corporate and Income 12
Existence of Jury Verdict 14
TypeofLawFirm 16
Regression Infringer as Winner 17
Corporate and Income 17
Existence of Jury Verdict 17
Type of Law Firm 18
Insufficient Data on Effect of Type 18
Some Weaknesses 18
III AT INDIVIDUAL FACTORS 19
Technology
Differences
Factors Related to the 21
Individual
Patent Owner or Corporate
Owner 21
19
2006 Paul HIPLA Professor Institute for
Intellectual Property Information Law University of Houston Law LiLan Ren
J.D of Houston Center Associate Well Gotshal Manges
Houston office views expressed herein are own and not those of any other
entity However we are most appreciative of extensive and highly research
assistance of Borland University of Houston class We are
also to John Polk Wagner Rochelle and Jack
Goldstein reviewing earlier valuable comments Finally we
thank staff for
many improvements made to the
manuscript during the process

AIPLA Q.J Vol 341
Foreign or U.S Plaintiffs .22
Relative Strengths 25
Fora Differences 28
Different
Jpdges
Authoring 28
Inclusion joining concurring and
dissenting
votes 30
Different Feeder Courts 32
The
Effect of Jury
Home Court Advantage 34
Possible Counsel DWerences
General or Patent Attorney 35
Years of Experience of Lead 36
lv
FINAL OBSERVAnONS
LIST
OF TABLES
Table
Rates
Table Patentees Comparative of
Table Patentees of Winning on Appeal 16
Table Law Firmsin Dispositive
Table Patentees Income Accused Victories
Table Accused Chances on Appeal
Table Financial Database 25
Table Grouped Strengths Database 25
Table Finance Victories
10 10 Finance and Infringer Victories 26
11 11 Results by Authoring 29
12 12 on Judges Authoring
and Combined 31
13 13 High-Volume Courts 32
14 14 Jury on Appeal 34
15 Table 15 Type of Counsel on Appeal 35
16 16 Experience Lead Counsel 37
LIST
OF CHARTS
Chart Percentage of Dispositive
Cases Won by Plaintiffsin Various
Technologies 20

2006 Who Wiss Patent Infringement
Cases
INTRODUCTION
For number of years accused patent infringers have been winning
patent infringement suits at of three to one While patent owners win
slightly more than the cases that proceed to trial are losing more cases
overall end in summary judgments of noninfringement We
investigated who the winners and losers have been and herein to assign
reasons for their success or lack thereof
Numerous studies recent years have focused attention on particular
aspects of the United These include
patent infringementlitigation
articles addressing court results on the involved in patent validity1
appellate handling of questions of patent claim district
interpretation2
results in cases in which the judgment was arrived at by trial3 and the judicial
philosophy of Federal Circuit judges.4 Some research services analyze cases on
an issue by-issue basis.5 No one however seems to have analyzed the results
CIR
See e.g John Allison Mark Lemley Empirical Evidence on the Valid dy
of Litigated Patents 26 AIPLA Q.J 185 1998 Donald Dunner et al
Statistical Look at the Federal Circuits Patent Decisions 1982 1994 FED
B.J 1995
See Christian Chu Empirical Analysis of the Federal Circuits Claim
Construction Trends BERKELEY TECH L.J 1075 2001
Moore and Patent Cases An Empirical Peek
Inside the Black 99 MICH REv 365 2000
SeeR Polk Lee Petherbridge the Federal Circuit Succeeding An
Empirical of Judicial Performance 152 PA REV 1105 116369
2004 comparing the of Federal Circuit judges
in cases in
which there were written opinions on claim-interpretationissues The
patent validity aspects of Federal Circuit voting patterns have been studied
by
and Lemley who report that the results defy easy categorization
John Allison Mark Lemley How Federal Circuit Judges Vote
iii Patent
27 FLA ST REv 7457462000 Their study did not
Validity
include 36 affirmances or decisions on issues other than validity
See INST FOR INTELLECTUAL PRov INFO
e.g
LAW Univ OF HOUSTON LAW
Cm U.S LITIGATION STATISTICS DECISIONS FOR 2003
which
Jeffrey Johnson et al 2003 http//www.patstats.org/2003.htmle
the issues involved
particular
reports patent litigation results segregated
Multiple decided issues given case lead to multiple in this
service The service does not allow user to assemble the results from
given case to see whether the patent owner prevailed on all
necessary to win the case

AIPLA Vol 341
terms of who ultimately wins patent litigations meaning judgment in favor
of particular party at the Appeals full
population of contested We undertook to fill that void analyzing
the dispositive decisions of that court over the three-year period to
2004 By we in which as it leaves
at leastone claim of one patent
is finally adjudicated to have been infringed
not invalid or unenforceable6 i.e win for the patent owner or in which it has
been finally determined that no claim has these
win for the
accused We included
whether by precedential opinion nonprecedential opinion or curiam
affirmance without opinion under courts Rule 36
There were 262 cases Most arrived at the
summary judgment We data on the factors in these
dispositive cases
way of
Which won in the final appellate judgment
Technology area involved
Individual patent owner corporate patent owner
Income level each party
Foreign or U.S party
Identity of judge opinion
Identities
on panel
District courts of origin
Home court
Unenforceability can result before the
States Patent and Trademark Office USPTO or from patent misuse
e.g Hoffman-La Roche Promega Corp 323 1354 1372 66
U.S.P.Q.2C1 BNA Fed breath duty of candor to the
USPTO material misrepresentations or omissions may render patent
unenforceable Braun Med Inc Abbott 124 1419 1427
U.S.P.Q.2d BNA 1902-03 Fed 1997 misuse patent renders
the patent unenforceable until purged
Federal Circuit provides that the court may enter judgment
affirmance without opinion under any of various conditions
most notably
that the judgment appealed was based on findings that are not clearly
erroneous or was entered an of law if an opinion would
no precedential
Fed Cir 36

2006 Who Wiis Infringement
Cases
Effect of jury verdicts
Lead counsel type general attomey or patent attorney
Lead counsel type IF boutique or general
and
Years of experience of counsel
We analyzed of the above individually and ran multivariate
regression analysis that included of
We found of all 25% 262 dispositive cases were
won by the patent owner according to our definition of winning and the other
75% accused This was not of surprising light previous
writers conclusions about 45% of litigated patents are held invalid10 and
additional showing that great majority of on the
infringement issue are against the patent owner and in favor of accused
Among other statistical results multivariateregression analysis tests for
whether variables independently correlate to the response
We use patent owner patentee and accused infringer rather than
plaintiff and defendant to avoid confusion the accused infringer
is plaintiff
in an action for declaratory judgment of invalidity
noninfringement
or unenforceability
Allison Lemley supra note at 205 The authors analyzed on
Federal patent validity rulings during 1989-96 cases in which the
court provided written opinions concluding that the court had upheld
validity in 54% of cases and found invalidity in 46% Id et al
studied Federal validity rulings on statutory section-by-section
basis for period 1982-94 et al so pro note at 153-55 They
concluded example that the court had favor of under
35 U.S.C 102 and 58% of time Ed at 154-55

AIPLA Q.J Vol 341
infringer.l1
We then to profile the winning and losing each
case looking at factors such as annual revenue of the company
the number of
lawyers in the law firm years of experience of the winning and losing
lawyers the district in which case home state of winner and
the general involved many other We deliberately
omitted what
many might consider most important variable legal strength of
the parties respective in order to look at the factors apart from
any subjective perceptions of and legal merits of the parties
Put way we assumed all parties were equally favored by facts
the We wanted to see what factors at work
motivating parties not settle or possibly the outcomes in more
subtle ways
Choosing as population dispositive cases is however not
without difficulties Many remanded cases contain pronouncements
of Such cases tend to settle remand so that in effect
practical
the rulings are dispositive We make no claim that our particular
cases represents the of the patent at large or even patent
litigation generally On the positive side we did no sampling our
population cases the is
complete therefore within
particular confines cannot be skewed in any way
Patstats reports that most rulings on the infringement all courts at
both the district Circuit were against the patent owner
for at least past five years For in 2003 infringers
prevailed in literal patentees in fifty-three
while of were of ratio seventy-one to
nineteen FOR INTELLEcTUAL supra note see also
Gauri Prakash-Canjels Trends in 41 IDEA 283
2001 patentees prevailed in 27%-31% of the judicially
decided cases during 1995-2000 while in -95 the
figure was somewhat at 39%-41% was likely
result of Inc 517 U.S 370
372 1463 affg 52 F.3d 967 U.S.P.Q.2d
BNA 1321 Fed Cir upholding lower court finding patent claim
construction was question of law within the province of the court
and not triable issue of fact As be detailed herein
represent steadily percentage of patent adjudications currently
under 25% of
prevalent mode of
summary judgment

2006 Who Wins Patent Infringement
Cases
the
Constructing
Database
We initially collected patent decisions in appeals
the district
courts
and
precedential non-precedential
of Federal Circuit as well
as those cases decided without opinion under Federal Circuit Rule We then
screened out those cases that involved remands on issues involving the merits
hereinafter remands as these were not dispositive
and thus had no
winning or losing party
Most of the patent
decisions of the Federal
Circuit were merits remands and outside the scope
of our study
We retained in the decisions
pool
which it could be detennined
from the opinion or in the case of summary affirmances from inspection of
appellate file that final decision had been reached in favor of the on at
least one claim of at least one patent or that final had been reached in
favor of accused holding that claimwas
patent
not valid
not infringed or not enforceable.12 We identified of
population
cases
fitting these criteria an average of eighty-seven per year.13 We have made
available online table these cases and citations.4 all
Nearly these
12
These issues are often referred to as the merits to distinguish
from
ancillary questions like damages attorneys fees jurisdiction1 or venue
Often one the other of merits subjects
is not raised in given case
meaning that the in effect conceded example defendant may
elect to litigate the infringement question while not challenging validity of
the claim See e.g Poly-America L.P GSE Lining Tech 383 F.3d
1306 72 U.S.P.Q.2d 1685 1687 Fed 2004 litigant conceded
infringement and proceeded to trial on invalidity and points Intel
Corp United Intl Trade Commn F.2d 821 829 20
U.S.P.Q.2C1 BNA 1168 n.13 Fed Cit 1991 litigant did not challenge
validity but argued ingement
Such cases would be in
dispositive
13
We
our lexicon
did not consider design or plant patents but only utility patents We
did not consider interferences inventorship disputes or other in
the nature of patent infringement or the mirror-image declaratory judgment
cases We thus did not include Federal Circuit appeals from the USPTO
We did include suits against the United States
originating the of Federal Claims as well as cases appealed from
the International Commission These last two categories actions for
compensation for use of patented subject matter or in the nature
of competition the of are sufficiently
like
patent infringement suits to qualify treatment here
14
See http//www.law.uh.edu/faculty/pjanicke/database.pagehtml

AIPLA
Vol
dispositive rulings are affirmances 242 of reversals
twenty This is because reversals usually to merits remands most
numerous of dispositions of patent cases by Circuit and not
dispositive cases that in our study
We identified the main party and main losing party
in each
of the 262 cases In or multiple-defendantcases we those as
the main party
the one whose and case in the
Federal Circuit
In those cases in which the Federal Circuit was by way of
summary affirmance opinion under courts we learned the
nature of the issues on appeal by reviewing reports on prior of
appellants brief at the prior inspections were done
editors of the Patstats service In cases in which court rendered an
opinion either or non-precedential we normally learned nature
of the issues the disposition the courts and in few
ambiguous
situations
inspecting
briefs
through
Summary the Observed Events
Patent-Owner
Winners
Winners
Our question was As patent owners and accused
infringers who wins dispositive
Court Appeals the Federal Circuit generalized answer is the
table
Table Win Rates
Year Dispositive
It
Patent
by
Owner
Won by
Owner
Patent
2002 20 28.2%
2003 101 24.8%
2004 90 19 21.1%
All
years 262 64 24.4%
Since patent owner must prevail on both the and
validity/enforceability
fronts to win the case it should not be too surprising that
patentee victories are relatively Moreover patentees usually to

2006 Who Wins Infringement
Cases
proceed through trial to obtain their
judgments favor5 whereas accused
Trial-based results therefore
infringers more often by summary judgment
represent only minority of cases and in which patent owners do
comparatively much Trial-based results actually by
small When majority.6 one counts in the larger group of summary judgment
the results are
dispositions
strongly the other way
Limitations of
As mentioned to maintain our neutrality on the merits our study
intentionally ignored strength or correctness of parties respective
positions on the facts or the law Our results therefore need to be viewed in that
context We considered to assess overall and in terms of
their commercial significance rather than in terms of one valid enforceable and
infringed claim but the evaluations would have heavily subjective
Without substantial private financial one cannot say that if three of four
patents in the were lost the case balance was lost by the as an
patentee
There considerable on issues relating to trials patent cases
See e.g Moore supra note at 383-94 Arti Rai Trial Courts
Specialized
Concentrating Expertise on Fact 17 BERKELEY TECH L.J 8772002 Phillipe
Signore On the Role of Juries Litigation 83 PAT
TRADEMARK OFF Socv 791 2001 John Should Be ItS Trial
in Court with Specialization Litigation PAT TRADEMARK OFF
SoCY 791 2000 Patent litigation statistics are privately reported by
LegalMetric www.legalmetric.com/judgereport
which counts judgments
in district court including those reached consent and those obtained
default our methodology we would not either type of judgment as
contested
disposition
16
Professor looked at the slice of patent litigation represented by trials
1209 cases over sixteen years
She concluded patentees had an overall
win rate of 58% district court trials Moore note at supra
385 They had
win rate before of if juries patentee initiated but 38% if
the accused initiated by way of suit for declaratory
judgment
Id at 368 In bench trials patentees had rate of 51% at
386 Table At one lime trials were the disposition
method choice
patent cases As shown however by Professor Moores data for 1999 Id at
384 and by ours trials now account for to 4% In
dispositions
2004 3.6% of cases reached trial See OF Js PROGRAMS ADMIN OFFICE
OF U.S STATISTICAL TABLES FOR FEDERAL JUDICIARY 2004
available at http//www.uscourts.gov/judiciary2004/cn1tentsJthhhl
TABLES 2004 judgmentsare much
lhereinafter
more common disposition tool in contested cases as found in our sample

10 AIPLA
Vol 341
economic matter Nor can it be said that if are not infringed
one claim is result an overall win for the accused
infringer That require knowledge market details
design-around feasibility available license terms and host of
points are not available to researchers reader therefore
recognize that the can be as signal whether
the side designated as winnh in fact achieved any significant
advantage
In we did not include cases that were finally at the
trial-court level and not appealed nor did we attempt assess good
settlements achieved patent owners accused
recognize that of the 3000 patent infringementsuits filed each year in
the United States17 most are settled Only about 650 per resolved by
contested court ruling18 and great majority of those by summary
judgment rather by
Of approximately 500 patent appeals currently lodged per year at the
Federal Circuit2 about 200 are actually decided by the judges in one of
modes decision precedential opinion about in
per year
three
STATIsTICAL 2004 supra note 16 at Table C-2 2973 patent cases filed
in the district courts during 2004
The federal statistical tables are inconclusive on this reporting only
that 2279 patent cases disposed phrase
includes many dismissals joint
in settled cases closer
approximation obtained observing that the volume patent appeals to
the Circuit at about cases per year See STATIsTICAL
TABLES 2004 supra note 16
at Table the district courts
in all are patent cases Allowing some
judgments were to unappealed settlement by license after
the district court decision we estimate about 650 contested district
court patent case decisions each year
10
the
of patent cases filed in the courts has increased
about to nearly as of 2000 Prakash-Canjels Trends
Patent supra note 11 at 284 number of patent trials
commenced the U.S has fairly constant around to 105
See e.g STATISTICAL 2004 supra note 16 at Table 100 patent trials
were commenced in Sty-nine them to juries supra note
at 384 eighty-six patent trials Summary judgment increasingly
the tool choice patent cases
20
See e.g STATISTICAL TABLES supra note 16 at Table

2006
Who Wins Infringement
Cases 11
year period the study nonprecedential opinion eighty per year or Rule
per curiam affirmance without opinion twenty-five per year.21 By looking only
at dispositive rulings appealed cases and the number of
larger
remanded cases our study intentionally selected against many patent disputes
that had matured to the of an important appellate ruling arguably
including some cases in which law action would be assessed
patent
Similarlywe did not include
district court determinations on the
unappealed
merits even though such rulings are in judicial sense and could be
dispositive
commercially important
Finally for statistical analysis purposes our population sometimes had
only small number of cases recorded in particular category such as wins by
patentees in non-pharmaceutical chemistry cases eleven over the three-year
period or dispositive opinions by Judge Dyk eleven or Judge Bryson nine
These categories involve sample that too small meaningful statistical
comparisons or conclusions
II RESULTS OF MULTIvARIATE REGRESSION ANALYSIS
We built multivariate regression model using SAS statistical software
to determine which have statistically significant correlation to the
outcome and how these factors influence the outcome We chose the following
factors to model regression home state entity corporate or
individual financial strength parties nationality type of technology involved
existence of jury verdict appellate decision authoring judge type of law firm
involved on each side general or IP boutique type of lead attorney as patent or
general lawyer
and length
of time being
admitted to practice
law for both lead
attorneys Different factors might have been at play when patentees
won
21
According to the Administrative Office of Courts the Federal Circuit
currently disposes of some 355 district cases nearly all patent appeals
each year by what referred to as terminations by judges STATiSTICAL
TABLES 2004 supra note 16 at Table B-8 The hand-counting and individual
case study that went into our database shows that only about 200 cases were
disposed of the judges precedential non-precedential opinion
or per curiam affirmance under Rule 36 If Administrative Office figure
is correct something on the order of appeals are disposed of in some
other manner than decisions by judges These other actions could include
dismissals appeals on motion failure to file brief lack of appellate
jurisdiction or similar grounds
It also possible that number of settled
cases have worked way into the Administrative Offices published
figure such as cases that were dismissed by motion of and
parties
thus involved no serious effort on the

12 AIPLA
Vol.341
compared to when accused won to for we looked at the
two subpopulations separately
Out all the factors included in the regression model we found
only are statistically to the outcome of case patentee
financial strength jury and the type of law firm the winning
side The type of in the patent was marginally significantP
Regression Patentee as Winner
Where patentees prevailed our regression analysis patentees
corporate and strength existence of jury verdict the
patentees choice of are statistically significant factors relating to the
ultimate result in the while the type of technology
marginal correlation to results terms of which side won Statistically
significant correlations not indicate causation of result
The result may be caused outside of our study
Although there were some interesting findings at the observed events
level we found that the following factors did not have statistically
correlations to dispositive case results court advantage
district rendered identities of judges hearing
the case and use of general lawyer vs patent as lead counsel on appeal
Again may in fact important drivers particular
dispositive cases or of direction of
patent law in remanded
cases they may have other significant effects but we did not see resultcorrelation
in our population
Corporate
and Income
We most annual revenue figures
and
Exchange Commission reports for companies other
published business reports for held entities Where litigant company
was subsidiary of larger entity we used revenue of the parent partially
because was usually only figure available and partially because the
parent would likely efforts and may have
applied its own funds to defray
litigation costs
The used would not converge with
numerous of technologies we chose to track

2006
Who Wins Patent Infringement
Cases
13
After collecting and recording the revenue data for the lead litigants23 on
each side of each case in our dataset we divided the data into four levels Level
is for those entities of lowest income $0-$l million This would almost
certainly indude all individual plaintiffs24 and some corporate ones being
represented by
contingent4ee
counsel
Level for those firms with revenues over $1 million and to
up
$100
million Such entities would find litigation very large
resources Level represents companies
with annual incomes
drain on
over $100 million
and up to $1 billion Level for firms with over $1 billion in revenue Levels
and
are for corporations
who would have more freedom in their decisions
litigate rather than join the great majority of patent litigants who settle their cases
by agreeing to license terms In few we were not able to find reliable
income
database
data so the results presented
of 262 cases
do not quite represent
the full
The table below shows in part
how the financial strength
patentees
correlated to the outcome of case The Estimate Odds Ratio shows that for
example
all other factors being equal the odds of level corporate patentee
winning were 4.44 timesmore than an individual patentee.25
As we shall see in
Part III financial strength as between corporate
adversaries also correlated to
litigation success in the individual analysis
23
The lead litigant
is typically
the first party cited in the case name on
Westlaw
24
Since incomes of individuals are rarely published we assumed that any
in
individual owner appearing our database had an income in level
The odds ratio of is the best estimate for 95% certainty corporate
odds are between 0.564 and 35.0 times the odds of an individual
patentees
The
patentee
range of odds ratios is reflection of high confidence
limit imposed 95% and limited quantity of data available

14
AIPLA Q.J Vol 341
Table Patentees Comparative Odds
Patentee
Status
Odds
95% Confidence
Limitsof
Ratio
Level
corporate
compared to individual
Level corporate
patentee
4.44 0.564
4.62 0.976 21.9
compared to individual patentee
Level
corporate
2.97
compared to individual patentee
Level corporate patentee
9.16 2.03 41.3
compared to individual patentee
The is significant when alone also
when considered in regression with the other factors that patentee
financial strength is strong factor correlating to the outcome of case
Existence
Jury Verdict
On average only ninety-five patent
trials commence each year
nationwide26 number that been nearly constant over the past fifteen
years.27 Of those ninety-five per about are now jury trials
26 See e.g STATISTIcAL TABLES 2004 supra note 16
at Table
work of the
Courts published at
http//www.uscourts.govllibrary.html is the most authoritative source for
district court civil dispositions type of case Unfortunately it
reports on trials it does not on trials
27 number is significantly the 1960s In the
period 1968-70 patent case filings per averaged less onethird
of are and patent trials per year averaged 127 See
Blonder-Tongue Labs Inc of Ill Found 402 U.S
U.S.P.Q 513 The rate in those was thus 13.8%
compared to about today See STATISTIcAL 2004 supra note 16 at
Table

2006
Who Wins Patent
Infringement
Cases
15
and the remainder bench trials to district judges or As found
magistrate judges.26
in our study judgments in cases
patent summary judgments
where no
verdict exists Appeals from judgments based on verdicts constitute only
jury
about 14% of the total patent appeals lodged and similar of cases in
percentage
the dispositive group
All other things being equal patentee appeared in the Federal
with verdict favor as appellee
had
times better
odds to win on appeal than had in all cases regardless of victor where the
judgment
below involved no verdict That is mainly due to the fact that this
smallsubpopulation of jury verdict cases inherently excludes summary
judgments these are the relatively few cases that actually got past pretrial
dispositive motions and went trial on the The subpopulation is
therefore highly favorable to patentees Where there was jury verdict for the
accused infringer patentees odds of winning on appeal this time as appellant
were 0.404 those of patentee appealing non-jury verdict-based
This reflects the fad that has more difficult getting
judgment
favorable
result the court of appeals by overturning jury verdict
dispositive
than by overturning other types of judgments
These results are collected in the
following table
2004 note 16 at Table C-4
figures
sixty-nine jury trials and thirty-one bench trials
patent
in 2004 The
corresponding numbers given by Professor Moore indicate for example
that in 1998 there were sixty-two jury trials out of 103 total trials
41 bench trials 1992 there were fifty-two jury trials and thirty-eight
bench trials See patent
Moore so pro note 384 The with the
at years
greatest number of patent trials commenced were 1997 and each with
103 trials Id

16 AWLA Vol
Table Patentees Chances of Winning on Appeal
Where judgment was based
Estimate
95%
on
Jury
to non-verdict
patentee
Jury
patentee compared
judgment
accused
Odds Ratio
0.404
Limitsof Odds Ratio
N.A
compared
to all non-verdict-based
judgments
Calculation indefinite to small
very
denominator
Type of Law
We studied the type
of firm general firm or IF boutique
engaged as the lead firm one side or the difference
in the outcomes The events data in that were29
Table Law Firms in Cases
IP Boutiques
Representing
won/lost
17/93
Representing Accused
Infringers
74/19
General Firms 42/83
General
representing patentees and IF
boutiques had slightly record accused
multivariate regression indicates that the type of not characteristics of the
particular is doing the appellate significantly to
which party ultimately won We are hard to it
explain should
matter what kind of firm winning lawyer is affiliated with as will be
seen in was statistical importance to whether winning
attorney was patent lawyer or general lawyer
Our regression for patentee as winner shows
factors being equal patentee had of winning on appeal
the patentees law firm was an IF boutique
patentee used
general ratio 0.3581 confidence is 95%
between 0.136 and 0.945 regression model indicates that there may
have been an interaction effect existence of jury verdict and
29
are incomplete in that we could not find on type
of for every case especially on the

2006
lVho Patent Infringement Cases 17
the type of on the side An interaction effect means that the
collective effect of two or more factors is stronger than the sum of the two factors
i.e the effect is non-linear
Regression with Accused Infringer
as Winner
Now we look at three factors seeming to contribute to the outcomes of
those cases in which accused were the about threefourths
of
appellate
total
Corporate Status and Income
The table below shows the relative success of accused infringers in
relation to the patentees corporate status and financial strength.3 level
corporate patentee over $1 billion in annual revenue has by the lowest
chance of the case only the chance of an individual patentees
losing
Table Patentees in Accused Infringer Victories
Patentee Income Level
accused infringer wins
Level corporate patentee
compared to individual patentee
Level corporate patentee
compared to individual patentee
Level corporate patentee
Estimate Odds 95% Confidence
Ratio Limitsof Odds
0.225 0.029 1.77
0.216 0.046 1.02
0.336 0.0511 2.21
compared to individual patentee
Level corporate patentee
compared to individual patentee
0.109
0.024 0.492
Existence of Jury Verdict
As we did for cases in which patentees won we now look at how the
presence of jury verdict below correlated to the outcome of cases in which
accused infringers won
All other factors
appeal
being equal an accused
30
figures here are the reciprocals patentees winning odds given
supra Table for cases in which patentees win The estimate odds ratio
shows that for example all factors being equal the odds of level
corporate patentee losing are 0.225 that of an individual patentee
The
odds of 0.225 the estimate with the range of odds going
from 0.0285 to 1.77 with 95% certainty

18 AIPLA Vol 341
infringer with jury verdict at trial an appellee in
the Federal Circuit its chance winning on appeal was 2.48 what would
have been there were verdict in the case Similarly there was jury
verdict below the patentee the accused infringers of winning as
appellant was only 0.027 would in no-verdict case
Table Accused Chances of Winning on Appeal
Judgment Below Was Based On Estimate Odds
95% Confidence
Ratio
Limits
Odds Ratio
Jury verdict for patentee
ppared to no verdict
Jury
0.027
2.48 21.5
infringer compared
to no verdict
Type
of law Firm
Finally our regression study for as winner shows
that all being equal an accused had
winning on appeal it
engaged an IP firm when it used
general law firm the odds ratio was 2.791 95% confidence level 1.06 to 7.38
The same mystery noted type of appears here
Why should accused infringers do IF boutique and patentees
with general firms when in this no
difference Again no is immediately apparent
Insufficient Data on Effect Type
As earlier area of as marginal in
the multivariate regression For all the regressionwe have
approximately 100 cases for patents but ten cases for
non-pharmaceutical patents nineteen cases for manufacturing
patents twenty-two cases for biotech patents and only one for
patents The imbalance these data the regression model
we had to leave the type of out in order to stabilize the regression
model
Some
Methodology
In our study we had two values each factor For example case
in patentee won had patentees financial
and value infringers financial strength In other words any
single we had two values our regression had to account for two

2006 Who Wins Patent Infringement Cases 19
inputs single in calculating response i.e the
Because of the unique binary input nature of our data we had to run two
regression models one for patentee wins and one for
This means that all our data are based on comparing
the cases in which
patentees won and cases in which accused infringers won
While years worth of seem plentifuL it was the minimal
amount of to run meaningful regression
model Another weakness with
analyzing historical is that we only to the we
accounted ultimate outcome Without
with controlled we cannot ascertain whether factors were the
definite of ultimate outcomes Indeed we have been
the strength the positions with respect the facts were equal
in all cases and therefore did not influence outcomes In reality assumption
of course does not hold as each partys evidence arguments
have different
strengths under doctrinal patent and procedural these could and
traditionally should factors this controlled
impractical in the legal various reasons the regression model
have required points and we could have tested for interaction and
causation better focus model pattern
in an
uncontrolled regression model us to point to
statistically significant factors in pool cases that are random than
controlled
III CLOSER AT INDIVIDUAL
We now move from multivariate regression to regression
studies of
several individual
alone i.e without regard to how other
factors may interact with one under study
Technology
Observed as single win rates varied to some extent with
main technology involved in the case Unfortunately our limited
population into nine separate technologies reduced in
most of to numbers are not statistically meaningful The next table

20 AIPLA Q.J Vol 341
shows the results for nine fields31 from the lowest success rate the
highest
Chart
Percentage of Disposifive Cases Won Plaintiffs in Various Technologies
typical patentee had only 14% chance of winning an electrical case
but 37% percent chance if the case involved biotech subject matter.32
31
The selection was largely arbitrary based on perceived interest
among
commentators and the profession Other commentators have looked at this
phenomenon See e.g Dan Burk Mark Lemley Is Patent Law
Technology-Specific 17 BERKELEY TECH L.J 1155 1156 2002 concluding that
the patent system while technology-neutral in is technology-specific
in application Amir Naini Convergent Technologies and Divergent Patent
Validity Doctrines Obviousness and Disclosure Analyses in Software and
Biotechnology 86 TRADEMARK Orr SOCY 541 544-63 2004
discussing differences in validity standards for biotechnology and software
patents
32
Some of areas involved few dispositive cases in the period under
consideration and the results are statistically weak for reason The
underlying data are electrical patentee out of 28 cases electro
mechanical of 31 computer processes of 23 non-pharmaceutical
chemistry of 11 manufacturing methods of 18
chemistry of 27 mechanical 30 100 and biotech of 19

2006 Who Wiis Patent Infringement Cases
possible reasons for disparities are unclear cases for example
are by far the group with one hundred cases represented
The relatively success rate of 30% for those cases
is of the
much lower rates for
One the high success rate for biotech patent
owners the grounds that the cases interesting as parts of new
technology and more suggestive of than older more staid
technologies that might be seen as merely industrial improvements lacking any
direct human Overall there was statistical correlation between
the types of patents involved and
party.TM
Factors Related to the Parties
Individual Patent Owner or Corporate
Owner
Individual
persons were the in patentees fifty cases in the dispositive
case population.35 These won under our definition six of those
cases for win rate of is far lower overall patentee win rate
of 24.4% and it that individual had
suggests
only half as good chance
as corporations to win patent infringement suits Our binary logistic
33 It the cases won by patentees comprise
nearly half thirty out of of patentee wins the entire
dispositive population
Null in patent has no impact on the
ultimate winner test shows P-value of which means
we not reject null DAwn MooRE BAsIC
PRACTICE OF STATISTIcS ed 2000 test of significance as
chi-square test assesses the evidence the
probability P-value less than or equal to 0.05 considered
significant in the community
35
some both corporate and appeared We
identified as lead our by signatures on the
appellate It is certainly possible corporate exclusive licensees as
co-plaintiffs financed and largely controlled

22
AIPLA Qj Vol 341
test shows that an individual patentee may have as low as 30% chance of
winning compared to corporate
Corporations were the patentees in 214 of the cases and prevailed in
fifty-seven of them success rate of Whether the patentee is an
individual or corporation is significant in correlating
to the outcome
of case Corporate patentees had results.37
Foreign Plaintiffs or U.S Plaintiffs
number of previous writers have investigated possible
effects of
patentee being foreign corporation when accused are
U.S entities found in litigation results.38 Our
confirmed what others have found As patent owners foreign companies
appeared in forty-eight cases and won thirteen of for win rate of 27%
slightly higher than the overall win rate for patentees
As accused infringers
defending against patentees claims foreign companies in
eight cases and won fifty-three of them win rate again slightly
than the overall win rate for the
study
population accused in our
36
binary regression comparing individual corporate
with the event of patentee being the winner shows an odds ratio of 0.3
95%
confidence level between 0.11 0.78 means that on an
indivtdual patentee claimant has of winning compared to
corporate claimant This is also part of our full-population
regression analysis
Null hypothesis Whether patentee is an individual or corporation has
no impact on the ultimate winier of the case P-value is 0.06 or 6%
that individual patentee plaintiff and corporate plaintiff equal
impact on the outcome of case P-value 0.06 that is
slight statistically significant and should
rejected
38
Kimberly Moore Xenophobia American 97 Rcv 1497
2003 Based on twelve-year district court data set Professor Moore
that entities prevailed in 56% cases in which their
adversaries were domestic Id at 1509 included summary judgment
decisions judges as well as bench trials She also that
entities most of patent jury the adversaties were
domestic Id see also Lemley supra note 225 that
for reported decisions entities patents were found
valid 58.5% time and entities patents 53.5%

2006 Who Wins Infringement 23
Four of the winning foreign patentees were German with
remainder distributed among nationalities producing one two cases.39 Of
the thirty-five foreign patentees
that lost cases the eight
were from with four Great Britain and Switzerland three
each from Germany the rest scattered among eight
countries.40
As successfully defending against charges of infringement
foreign companies also were well represented They appeared in largest
numbers from Japan successful Canada six and
Sweden five plus sprinkling
of others.41 defendants that
cases from two and two with one
each countries Of particular in regard that
Japanese against charges of infringement won all of
their dispositive cases in the of our study ii no Japanese companies
appeared as patentees either winning or losing our population chi
square test on the factor however showed that the nationality the
patentee has no statistically to the outcome of the
These are Great Switzerland two and one
each from Taiwan France and Finland
France two Israel two and one each Italy Denmark Netherlands
South Taiwan Three were unidentifiable
41
four Great Britain four Switzerland Netherlands
Norway one Spain one Taiwan one France
one Eight
were unidentifiable Note that we have sufficient to compare
U.S corporations corporations we do not have enough
points
to calculate
country
42
Great Netherlands Spain were
unidentifiable
regression analysis on per-country basis impractical there are
insufficient data for each country Moreover because there zero losing
case data Japanese multivariate regression analysis is
meaningless

24 AIPLA Vol
case binary regression
test also shows that whether
infringer is foreign or domestic does not have significant impact on the end
result.45
One can only as to the reasonsunderlying apparent
negation
the
among foreign companies
that not be
treated equally to U.S companies patent litigation Several
possibilitiescome to mind First in this study we looking only at dispositive
cases i.e minority of cases that all the way through
district court judgment and an appeal at the Circuit without having
settled is possible foreign entities are less sanguine
about of
hanging in reaching with We
do not have any statistics on the settlement rates specifically
in patent cases That rate may
well rate
of about 83% the the entity is on makes difference In order
to win as patentee trial is usually needed setting the stage for supposed
prejudices to come to the fore By contrast for an accused
winning
sun-unary judgment is the most likely outcome process that is probably
Before regression we used test analyze whether
there is
any statistical
difference in outcome between U.S
corporations 0.6 shows variation outcome with
respect nationality of the parties is due to random chance not
specific common factor The regression model confirms
of the parties are not statistically in- calculating
outcome
Null Whether is or foreign
corporation has no impact on the winner of the case binary
logistic regression test shows P-value 0.7 we have
no statistical basis to reject the
46
to the annual reports of U.S Courts
there were roughly 2000 patent actions filed in the district courts during
each year of period mentioned earliersome 600
these cases decided in contested manner each year mostly by
summary judgment leaving around 1400 that are believed to have
settled or 70% of the number filed
percentage of the cases
appealed are also as revealed by the disparity
of patent appeals 450 in per year period in and the 200
or truly by action Adding the remaining 250 cases to
the category generates an overall rate of 1650 out of the
2000 cases initially filed or about

2006 Who Wins Infringement
25
prone to such emotional biases Accordingly patentees are likely to be
concerned about unfairly
Relative
Financial
Financial was assessed income categorized
into four levels7
as outlined earlier The results are summarized in the following two tables and
discussion
Table Financial Overall
fl Level Level Level Level
flis 68 69 68
80 42 105
Patent owners generally poorer than accused infringers
perhaps difficult to see in table where because of the breakpoints we
somewhat arbitrarily chose level firms are less numerous than level
both for patent owners Ps for accused infringers AIs The wealth
This
population is more easily seen by
income levels together as follows
the two
lower and two higher
Table Strengths Overall
Levels 1-2
137
Levels
96
AIs 147
significant symmetry exists here Patentees were largely in the two lower
income levels infringers were largely in the upper two levels This
means that most litigations that go all the way through judgment and
appeaL patent owner was typically poorer or individual
an infringement against wealthier company
We will now look at win rates to see if there any correlation to wealth
First cases in which patentee was the ultimate Here
both sides tended to be in the wealthier categories
with revenues
$1 billion
which is
by largest would expected in light of that
wealthy firms make up most of the litigant population on both sides In the far
The levels are Level $0 up to $1 million level over miffion and
up to $100 $100 millionand up to $1 billion level
over $1

26 AIPLA Q.J 341
more in accused prevailed they
to be than their losing There is large of
winning accused-infringer firms that revenues in excess of $1 per
year.49 One would have to conclude it
fairly for patent owners of
whatever income to defeat entities
We now look at the subpopulation of patentee victories and
subpopulation of accused victories both as function of
strength First we consider
levels of
adversaries
the patentee victories versus the
strength
Table Finance Patentee Victories58
Equal levels 22
Patentee
level stronger
Patentee
or more levels stronger
Patentee weaker 12
Patentee
or more levels weaker
Patentees
prevailed were often of the same roughly measured
financial strength as their accused-infringer adversaries Where they are not
equal the financial weight is toward accused infringers
Table 10
and
Infringer Victories51
qual financial levels 62
Accused level stronger 31
Accused or levels stronger 55
Accused level 19
Accused or levels weaker 14
They win by ratio significantly than 32 ratio of
accused to poorer patentees in
Recall that we earlier that
accused-infringer companies with
revenues over $1 their cases during the under
study 2002-04 169 of them won
SO
cases for was available was less the
total victories the database
Again data were not available for all in the

2006 Who Infringement Cases
In of accused wins we likewise see large group of
cases sixty-two in which the parties were roughly evenly matched in terms of
financial strength But where are mismatched accused infringers are
much more often stronger eighty-six cases than twenty-nine cases
Nevertheless unlike regression as single factor
looked at alone were not statistically in correlating
wealth to victories.52 This with from
study shows that the of strength correlates to the outcome of the
case
non-linearly
We asked whether the particular financial strength of
than $1 billion in annual revenue statistically to the outcome of
case To study we compiled table in which the financial strengths
of both
parties are figured into the ultimate outcome The P-value of the chi-square test
was 0.44 indicates the pairings are likewise not statistically
significant to the outcome of casesP Again this does not
mean financial strength is not statistically factor rather this analysis
and the that has an interaction
effect with one more factors in the is only
the
multivariate
analysis
52
hypothesis Relative not impact outcome of
the case chi-square test shows 0.1 which means the null
hypothesis may not be rejected
Null hypothesis The pairing of plaintiff and defendant based on relative
financial strength not impact who wins these cases P-value
indicates that the null hypothesis may not be rejected

28 AIPLA qj
Vol 341
Fora Differences
Different Appellate
Authoring judges
Sorting dispositive cases over the period
the
who
authored the majority we find percentage spread victories
for patent owners As the tables the spread ranges from under
the pen of Judge to 0% written by Judge Bryson
Both are
based on very small number authored dispositive cases for
Schall arid Bryson These not mean that
Judge Bryson did not author any opinions favorable to owner during
2002-04 may well or non-precedential merits
remands in favor patentees possibly in manner that ended up resolving the
case favorably to them and may have been main instigator some of the
sixteen panels issued summary affirmances favor patent
owners Similarly wrong to conclude on our data that
Schall is more pro-patent than The data include only small
of dispositive opinions bearing his name
Wagner and patterns of
Circuit judges cases with on claim-interpretation
See generally Wagner supra note As previously
patent validity aspects of Federal Circuit voting patterns have
studied
by and Lemley who report that results defy easy
compartmentalizing See generally Allison supra note reporting
easy categorization that results Their did not include
Rule 36 or decisions on issues other validity

2006 Who Patent Infringement
Table
Results
fliithorin
Judge For Accused for Patentee
Mayer 33.3
Michel
Linn 14 30
Gajarsa 20
Per uriam Oncl 36 16 73 11.9
Lourie 21 16
Frost 11 15.4
Qyk
10 9.1
Bryson
To organize the raw event data we assigned color to the
authorships grey for judges whose precedential non-precedential
opinions were in favor of the patent owner significantly more often the
overall average of white for judges proportion of opinions for
patent owner were somewhat higher average and gray for judges
whose were below average win rate of patentees We
included per category in order to pick up short opinions so labeled
the and to include summary affinnances 36 even though both
of these categories have no single
For authored opinions both precedential non
precedential the judges in dark grey in the more often patent
claims not invalid who so found than
judges in the bands in the middle
thought as moderate in the frequency which they
ruled
dispositively for one side or the other light grey
lower band
represents judicial more strict constraining patentees in the
enforcement of patents In addition to Judge Lourie this four
relative newcomers to the court Bryson and Prost also
includes the per curiam authorship which does not identify any
single as an author This group drawing its all
judges the bands
should have shown
average results 24.4% rate for patentees The

30
AIPL4 Qj Vol 341
lower observed win-rate figure may signal that
patents viewed as less
meritorious tend more often to be adjudicated per curiam
chi-square test comparing individual
value of 0.1 which is not statistically significant and does not allow rejection
authoring judges shows
of the null that the identity of authoring judges on the court does not
affect who is ultimate winner For authoring judges viewed in three color
bands however the P-value of the chi-square test is and our null
hypothesis that the identity of the authoring judges had no impact on the
outcome of the case is In other words among the bands of
opinion-authoringjudges there was at least one group that is decisions
in statistically different way This confirms that the combined effect of
authoring judges having similar judicial philosophies has discernible impact on
the outcome
of the cases.55
Interestingly Rule 36 summary affirmances played substantial role
accounting for eighty-nine
decisions far more than the
disposifive-case
authoring output of any individual judge
With only an 18% win rate for
patentees summary affirmances were significant in the overall win
rate of patent owners in court down to 24.4%
Inclusion of joining concurring and
votes
We now consider in addition
to authorships how various judges voted
to join concur or dissent in cases In other words we will add how
the judge viewed various cases as either author or voter and combine the two
numbers
Wagner Petherbridge supra note evaluated claim-interpretation
opinions by the judicial philosophy involved ranging strongly holistic
absence of rigid rules of to strongly procedural legal analysis
proceeds by relatively fixed rules The strongest holistic judges were
identified as Newman Lourie and Bryson In our study which looked at
who won dispositive cases these three did not rank near each other Judge
Newman was in our dark
grey authoring band most often for
patentee
and Judges Lourie and Bryson were in our light grey authoring band most
often for accused
Wagner and Petherbridges procedural judges
were ClevengerLinn and Dyk who in our study were in three different
bands This seems to suggest that judges who seem to decide similarly in
one aspect perhaps function quite in
respects

2006 Who Wins Patent Infringement
Table 12 Results on Judges Authoring and Voting Combined
Authoring or for Accused for
Votin Jud Patentee Infrin er Patentee
Dyk 12 24
Rader 16 54 22.8
j sa 15 53
Michel 14 51
Mayer 11 45
clevenger 10 45
Per Curiam
16 73 17.9
kid 36
teurle
Bryson
10 44
57
18.5
9.5
With the added data on how judges voted test is more
reliable than Note that occupants of
various bands have changed with the data P-value 0.165 shows
that we not reject the hypothesis the identity of voting
judge no difference to the outcome The is 0.002 however for the
three of voting or authoring judges statistical
difference among the groups Once again this to confirm that collectively
judges may be statistically factor in the
outcome
of the case
One may speculate
of decision as being
precedential non-precedential or Rule summary
affirmance makes
difference in the outcome statistics We saw no indication it did soin terms
of types of cases however seem prone to handling
by one of
patentees
represent 19% of the study6 yet they are underrepresented at
9% at 30% in the non-
56
Fifty out of 262
cases in the three-year period
Ten out of
precedential opinions

32
AIPLA Vol 341
precedential ones.58 Rule cases they are represented nearly proportionately
to their numbers at 21%
Different Feeder
Courts
Do in patent litigations to any extent on
the district from the case arrived at the As mentioned
earlier nearly all the patent cases 242 out of 262 out of
the Federal Circuit in the three-year in were affirmances We
may therefore put our question this way Are some districts more likely than
others to produce
one side or the
There were only seven districts
that
generated ten or dispositive
appellate cases each in the 2002-04 appellate results are shown in the
table below in the of providers dispositive cases Recall the
overall win rate for patentees in our study was 24.4 percent
Table 13
Feeder Courts
District
Patentee
Accused
Patentees
on Appeal
Wins on Appeal
Ratio
Delaware 16 27.3
Cal 16 5.9
Ill 13 18.8
Cal 10
Mass 11 8.3
S.NY 10.0
Totals 17 75 18.5
Of these districts in Central in
Delaware and slightly patent owners have better success than the
Twenty-six nut o1 eighty-six
cases
Fourteen out of cases

2006 Who Wins Infringement
Cases 33
dataset average.60 This means the patentee
win rate coming from smaller feeders
was generally higher
the rate in these
large
feeder districts.61
The numbers cases involved are too small for meaningful
statistical analysis Judging from the from entire three-year population
in of results in owners best
dispositive patent-busy
chance of prevailing during the years in question assuming all other factors
were equal appears to have been by in Eastem Northern or Southern
Texas in Southern California Michigan or in Colorado.62
the nondispositive results as many in overall number yet not included in
our study might represent more commercially significant victories even
though not fully of an infringement claim
60 Null hypothesis There is no difference in the end result between cases from
the six feeder courts chi-square test results P-value of 0.26 which
indicates there no significant
correlation between feeder courts and
the end result We have however less than ideal number of cases to run
stable
test
61
We looked districts with both substantial patent output
and significantly
higher rates in the Federal and identified six three of
which are in The District of Texas the source of nine
dispositive appellate produced patentee
wins and accused
infringer or 33% win rate The Northern and Southern of
Texas and Eastern District of each produced eight dispositive
appeals
for patentee and for the accused infringer for win
rate of The District of Colorado supplied seven cases in the three-year
period of which were for patentee and were affirmed on appeal
and other three going to the accused and likewise affirmed on
infringer
appeal or patentee win rate of courts other than those mentioned
produced fewer than seven cases destined for dispositive appeal the
period our study
62 The win rate in less busy districts is often higher mathematically
but such cases too few number to lead to statistically meaningful
finding For example dispositive-case win rate coming from
Louisiana was 100% this represents only two cases over the
period

34
Q.l
341
The Effect
of Jury Trials
Much has written recent years on the impact of
increased use of juries patent casesP We undertook to look at that parameter
separately First some context is necessary
As discussed jury verdicts or bench the for
about of appealed district court judgments in patent cases the
remainder by summary judgment
and in few instances by
generated as for lack of personal jurisdiction We found
patentees won just over half of the cases in which there jury trials
winning thirty-five out of sixty-five of
cases as shown in the
Table 14
Cases on Appeal
of appellate wins accord
with
jury verdict
31
of appellate
wins by negation
of jury verdict
of AL
wins in
21
with
verdict
It of Al appellate wins by
negation of jury verdict
As seen here accused won jury verdicts as well although
not to
the same extent as patent owners Thus in the segment of patent
litigation outcomes that are based on jury findings patentees have
Home Court
Does
do
patentee
litigating in home state than
elsewhere If we lump corporate patentees together answer
is
only slightly We took as corporate home the state in which the executive
offices were located Patentees won twenty-seven of victories home
courts but also lost seventy cases in their courts The win rate in
63
e.g Albert
Elderkin
The at Crossroads in to Harmonize
Law Jury Trial Review 20 Q.J 49
Professor Kimberly Moore has patentees win sixty-eight
percent of patent jury trials supra note at 386

2006 Who Patent Infringement
Cases 35
home courts was 27.8% slightly than the overall dispositive-case patentee
win rate of 24.4%
If we look at individual patentees the story is much the same
Individual patentees won four at home but lost twenty-four home
win rate of just over 14% mentioned the overall win rate for
individual patentees was 12% other words they do slightly
at home
than they do overall Statistically state for the patentee or accused
infringer is not significant factor the outcome of case.65
Possible Effects of Counsel Differences
General Attorney or Patent Attorney
Some authors speculated regarding best kind of counsel to
engage for patent litigation large firm or small general firmor IP boutique.66
For the dispositive-case population of our study we have concluded
little correlation between odds type of The results are
summarized in the table67
Table
Type
of Le ad Counsel
on Appeal
Won/Lost
Won
LGeneral Lawyer
Latent Lawyer
105/104 50.2
153/154 49.8
These results should be viewed caution because we gathered listings
for appellate counsel not for below in Markinan hearings
summary judgment proceedings or trials who
Many parties especially
have lost below counsel for appeal The lead on the appeal
may therefore be when the lead below was patent attorney or
general
65 Null hypothesis
Whether patentee or accused infringer is in its home
state has nn impact on the outcome of case P-value for patentee home
state is 0.6 and for accused infringers indicating that we may not reject
the null hypothesis
66 See e.g
From the Editor PROP TODAY June 1994 at
67
The numbers do not equal the database times 262 cases because
there was no data for some counsel
The great majority of representations
however are included

36 AIPLA Q.J
341
vice versa.68 The here not account for in
representation
The table appears
to indicate that registered patent as counsel
have larger share total representations the
general attorneys 307 to 209 the win rates for each type are nearly
the same within one percentage point of each type of law
engaged whether the lead attorney is patent has no statistically
significant impact on the end
0.6 and 0.2 for winning and
attorneys
respectively.69
Years of
Counsel
We next looked at the so-called grayness factor namely long
lead counsel in dispositive cases had in It is
widely that
more senior lawyers have chance of winning because of better
appellate skills or mundane factors such as sympathy from judges of
similar age How proposition is remains debatable we
found both winning and companies mainly older lawyers to
handle their Federal
in cases that
table shows these cases in which we could
find such of on number losing lead
and few winning why
total number of winners larger
than the total number not prevail our overall
of 262 cases we were able to find 254 lead
and
lead
We
on district court lead
found parties often at several important
the district court proceedings as the eve of or just
after an adverse
verdict
had to abandon
69 Null hypothesis Whether an attorney is patent has no impact on
the case Because P-values are greater than 0.05 we
cannot reject our null hypothesis

2006
Who Wins Patent Infringement
Cases 37
Table 16 of
Experience
Lead Counsel
Year
0-10 Irs
Winning
Losing
11-15 Irs
Winning
Losing
16-20
Winning
Losing
21 yrs
Winning
Losing
4/0
7/5
11/8
49/49
2003 6/3 6/6 17/18 69/65
2004 2/4 10/11 12/13 61/51
Es 12/7 23/22 40/39 179/165
Several observations can be made The first concerns the relative dearth
of young lawyers as lead counsel in these cases This would be expected in
civil litigation generally especially in complex or high-stakes cases both of
which are what patent appeals tend to be About two-thirds of winning
lawyers had more than twenty
of years experience As mentioned
earlier our database of cases nearly all of which are affirmances.7
Accordingly the in these cases losing
were nearly all appellants The
appellants task on appeal is of course much greater having to persuade the
court of error committed below and chance of on is
appeal inherently
greater for appellants Recognizing this appellant companies likely were even
more motivated appellees to choose older and more experienced lead
counsel This tends to be borne out at the other end of experience spectrum
In those few cases in which counsel ten or fewer years of experience
twelve represented appellees and seven losing appellants
The second is that the experience level of counsel at least
as measured in years of practice does not correlate well with or losing
Both sides tend to choose older counsel as above given case one
prevails and the other does not We looked cases in which
specifically
experience level not fit this pattern i.e where there were significant
differences in the experience years between the two sides lead To
equalize the in.volved the lawyers that were compared we selected
subpopulation of eighteen reversal which are harder to get which
the was the appellant eight cases the successful appellants counsel had
more years of experience than the appellees counseL in another eight
fewer
years experience and in two they were the same Furtherdata collection
necessary to deal effectively with factor our database is difficult to
70 Reversals occurred in only twenty out of the 262 dispositive cases in our
study

38
AIPLA Q.J Vol 341
draw any conclusions about experience level playing in winning or losing
patent litigat-ions
It however that prefer grayness.7
IV
SOME FINAL OBSERVATIONS
The often been of having pro-patent
leaning.72 There is nothing our findings that would support that view
Patentees lose most of cases before court and for the most the court
affirms negative of courts in dispositive cases
There is no to think properly institution
whatever that may mean should decide cases fifty-fifty
that conclusion require independently assessing the individual merits
of the case pool before the court and how various cases
ought to out and comparing how court in fact
The numbers cam-tot perform function The weight
and the strength of arguments can and vary from case to case
Moreover patent disputes are frequently charged and we
have no basis for that litigants in patent cases act rationally in assessing
71
two sample
t-test
comparing the of admittance the two groups of
attomeys shows P-value of 0.11 that is no statistically
significant between the two seniority groups The
difference practice years of the winning attomeys and the
ones is between -3.201 to 0.363 years assuming 95%
72
Preponderance 928 2004 mentioning
it is
generally that the pro-patent
bias tenure Allan Litmann Balance
System 37 IDEA 1996-1997 view that
Circuit pro-patent bias One of the scholars to earliest speculate about
possible pro-patent attitudes of the Circuit was Professor Rochelle
Cooper Dreyfuss See Rochelle Circuit
Study Specialized Courts REV
Priest some circumstances the results
approach
fifty-fifty
See George Klein
Disputes for Litigation STuD The circumstances
included some that not apply to modem patent
litigations
that the are risk-neutral reality patent owners
here the parties think in roughly the same in how
money damages and injunctions accused put higher
value on fear on paying damages than
patentees
do

2006
Who Wins Patent Infringement
Cases
39
the strength of their claims or defenses Under these real conditions
conscientious judge with in
strong pro-patent sympathies might
view of the
evidence and issues brought forward decide most cases for the accused
fringer while another one with
conscientious judge hypothetically
philo50Phl hostility to still
the patent systemsmight end for the
up deciding
owner in most cases Therefore not to characterize the
it possible
patent
on the basis of percentage of decisions going one way or the other we did If
have to do that however we would have to say the was either hostile to or
at least suspicious
of and their owners
patents
The reasonsbehind the wide margin of to one for decisions against
are unclear the result is relatively constant during the three
patent
years of the study and is consistent with other scholarship in the field 74 We are
inclined to believe that are too often pushing the envelope in quests
Intemet service Patstats indicates that most accused
both litera1
infringers strongly prevailed on the infringement question
and under the doctrine of equivalents during the period
infringement
question For 2004 accused prevailed eighty-three literal
decisions and patentees
in forty-four Doctrineofequivalant5
infringement
rulings showed higher disparity forty-six to ten See FOR
HOUSTON LAW Cm PATETATS
INTELLECTUAL PROP INFO LAW
U.S PATENT LrrIGATION STATISTICS DECISIONS 21J04
visited 2005 For 2003
http//wWW.pat5tats.oI2004.hhtl
favored the accused infringer by 155 to fiftythree
results on literal infringement
as did the results on doctrine of equivalents infringements seventy-one
to nineteen See INST FOR IWrELLECTUAL PROP INFO LAW supra note
Professor Moores studies on district court results in patent litigation
lists
win rates by district concluding patentees win 58% of the cases See
Kimberly Moore Forum Shopping In Patent Cases Does Geographic Choice
79 NC REV 889916-172001 Her dataset however
Innovation
is only for cases that
Affect
reached trial 1409 cases over sixteen years and hence
does include the much largernumber of summary judgments entered
and appealed

40 AIPLA Qj Vol 341
for financial return on their investment in patents.75 They overvalue their patents
and assign an unrealistic scope
to the of patent claims driven
perhaps by what they thought the claims ought to have said
Another possible reason for the number patentee victories is that
in to win judgment patent owner must only prove infringementof
at least one claim the patent but must also
every validity
attack on that patent claimand every charge of inequitable conduct before
United States Patent Office USPTO
If it fails on any of these
points the accused infringer wins
is an increasingly
uncertain at due to the of interpreting proper
scope to be accorded various words of the Direct
type
infringement is fairly rare leaving claim scope as the central issue in most
litigation today The patentee tends to assign broader meaning to the
terms than it
might have consciously about when patent was being
drafted
and prosecuted to issuance
This investment
is
costly median cost for preparing
filing patent application of minimal was $5504 with more
complex applications running and $10000 on the
area of technology involved and is for United AM
INTELLEcTUAL PROP LAW REPORT OF THE ECONOMK SURVEY 87-89
2003 For filings in the Patent Office and Japan filing
and prosecution costs are involved To must be prosecution
costs issue and maintenance Multinational patent coverage today
costs least per invention and that is conservative See e.g
William Thompson Reforming the Patent the 21st 21
AIPLA 171 177 n.2 1993 the experience one company for
which single patenting in ten countries costs approaching
$250000 Jim Ewing Procurement Peter to Pay Paul INTELL
PROP TODAY Nov 2003 at 32 how relatively simple patent
filing up costing over $110000 for coverage in seven major industrial
countries Mossinghoff Vivian Kuo World Patent Circa
2OXX AD 80J TRADEMARK OFF 523 5241998 noting that
the cost of securing maintaining comprehensive worldwide patent is
within
range of $750000 to $1000000
76
The Federal Circuit en banc the questions methodology
in
patent claim language See Phillips AWH 415
1303 75 BNA 1321 2005 court sought to
provide on the sequence and weight to be given
to various
traditional tools for carrying out this including patent
specification its USPTO file regular language dictionaries and
technical
dictionaries

2006 Who Wins Patent Infringement Cases
On much of prior art or literature is
difficult to find sometimes made so by law Consider example
to search patent applications fruitful source of pertinent
prior literature Until
are on file for
months are held in secrecy by the cannot be seen by
interested example Offers for sale are often highly secret
yet any such starts one-year clock running filing not only
offeror entity but by anyone else as well.Th
even with diligent search
attempts the most relevant prior literature hidden the patent applicant
her counsel patent examiners only to appear later dredged up
by highly in an infringementlawsuit By that time the
patentee
tells itself it has invested too much to give up and the case proceeds to
negative judgment
These patent owners and it is not surprising that
they fail in most of their attempts conspicuous in our
study is Japanese companies As patent owners they appeared no dispositive
cases in our three-year As accused in
and prevailed in all of them suggests level of caution on the part
35 U.S.C 122 2000 part
Confidentiality Except as provided in subsection applications for
patents shall be kept in confidence the and Trademark Office
and no information concerning the same given without authority of
applicant or unless necessary to carry out the provisions an
Act of or in such special circumstances as be determined
may
by the
Publication
in general
Subject to paragraph each application patent shall be
published in accordance determined by the
promptly after expiration of period of 18 months from earliest
filing is sought At the request of
the
such
an application may be published earlier than the end of
period
78
35 U.S.C 102 2000 provides in part person
shall entitled to
patent unless the invention was. sale in this country more
than one prior to the of the for patent in the
United
States

42 Q.J
Vol 341
of Japanese managements about the entire field of U.S patent litigation that
other entities do not share
Another important factor in explainingwhy patent owners
usually
is the summary judgment for in
recent years79 and the recognition by many courts that
patent cases in particular
usually present relatively fact issues to be The contents of the patent
and its file and the of the prior literature affecting validity are
normally known discovery efforts as the
design functions of accused products or processes While
few issues such as willfulness the intent prong of inequitable
conduct before the and determination could
these points matter only have not been invalid and if
infringement has made out Usually case does not that
summary judgment is granted typically in favor of the accused
As set above accused infringers are usually patent
owners This is
perhaps to be expected as plaintiff patentees are motivated
to pursue litigation or royalty-bearing
from
do companies
than companies with less to pay Many patentees are
individuals none of the accused infringers were The wealth
very likely accused to prevail more effort into the
case than
average patent owner
Foreign-owned companies achieved no less favorable than
domestic companies Two possible explanations come to mind
although perceptions are longstanding no firm evidence
such biases exist Second entities believe is bias them
and are often uncomfortable American civil
and expense These factors to settle more so that the ones that
proceed to dispositive judgment are carefully to be strong ones for their
positions
This loosening is usually to the Courts re-articulation of
the in three 1986 cases Matsushita Indus Co Zenith
Radio 475 U.S 574 1986 Anderson Lobby Inc
U.S and Celotex Corp U.S 1986
These cases emphasized
trials were needed only in cases in which the
pretrial indicated trier of an issue
either
way In all cases summary judgment
full or partialwas
appropriate

2006 Who Wins Patent Infringement Cases 43
Home court advantage is often exaggerated and may skew case
assessments of patentees as plaintiffs Plaintiffs their lawyers often believe
they will an advantage being locaL to the or jury Accents
colloquial figures speech names and places mentioned in testimony
are thought to be helpful to local parties As set here however we found
only about percentage-point improvement from 24.4% to 27.8%
patentee litigating the state of its principal
offices versus elsewhere
that most contested judgments in patent cases in the courts are summary
judgments rather following trial not much opportunity
for local flavors to permeate patent cases

Page 1
35 U.S.C.A. § 102
Effective: November 02, 2002
UNITED STATES CODE ANNOTATED
TITLE 35. PATENTS
PART II--PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 10--PATENTABILITY OF INVENTIONS
§ 102. Conditions for patentability; novelty and loss of right to patent
A person shall be entitled to a patent unless--
(a) the invention was known or used by others in this country, or patented or described in a printed publication in
this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on
sale in this country, more than one year prior to the date of the application for patent in the United States, or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the
applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in
this country on an application for patent or inventor's certificate filed more than twelve months before the filing of
the application in the United States, or
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in
the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent
by another filed in the United States before the invention by the applicant for patent, except that an international
application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection
of an application filed in the United States only if the international application designated the United States and was
published under Article 21(2) of such treaty in the English language; [FN1] or
(f) he did not himself invent the subject matter sought to be patented, or
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved
therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention
was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention
thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or
concealed it. In determining priority of invention under this subsection, there shall be considered not only the
respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one
who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
[FN1] So in original. The semicolon probably should be a comma.
Current through P.L. 109-279 approved 08-17-06
Copr. © 2006 Thomson/West. No. Claim to Orig. U.S. Govt. Works
END OF DOCUMENT
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

Page 1
35 U.S.C.A. § 282
Effective: November 02, 2002
UNITED STATES CODE ANNOTATED
TITLE 35. PATENTS
PART III--PATENTS AND PROTECTION OF PATENT RIGHTS
CHAPTER 29--REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS
§ 282. Presumption of validity; defenses
A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent
form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims
shall be presumed valid even though dependent upon an invalid claim. Notwithstanding the preceding sentence, if a
claim to a composition of matter is held invalid and that claim was the basis of a determination of nonobviousness
under section 103(b)(1), the process shall no longer be considered nonobvious solely on the basis of section
103(b)(1). The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting
such invalidity.
The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:
(1) Noninfringement, absence of liability for infringement or unenforceability,
(2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for
patentability,
(3) Invalidity of the patent or any claim in suit for failure to comply with any requirement of sections 112 or 251 of
this title,
(4) Any other fact or act made a defense by this title.
In actions involving the validity or infringement of a patent the party asserting invalidity or noninfringement shall
give notice in the pleadings or otherwise in writing to the adverse party at least thirty days before the trial, of the
country, number, date, and name of the patentee of any patent, the title, date, and page numbers of any publication to
be relied upon as anticipation of the patent in suit or, except in actions in the United States Court of Federal Claims,
as showing the state of the art, and the name and address of any person who may be relied upon as the prior inventor
or as having prior knowledge of or as having previously used or offered for sale the invention of the patent in suit.
In the absence of such notice proof of the said matters may not be made at the trial except on such terms as the court
requires. Invalidity of the extension of a patent term or any portion thereof under section 154(b) or 156 of this title
because of the material failure--
(1) by the applicant for the extension, or
(2) by the Director,
to comply with the requirements of such section shall be a defense in any action involving the infringement of a
patent during the period of the extension of its term and shall be pleaded. A due diligence determination under
section 156(d)(2) is not subject to review in such an action.
Current through P.L. 109-279 approved 08-17-06
Copr. © 2006 Thomson/West. No. Claim to Orig. U.S. Govt. Works
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

Page 1
35 U.S.C.A. § 283
Effective: [See Text Amendments]
UNITED STATES CODE ANNOTATED
TITLE 35. PATENTS
PART III--PATENTS AND PROTECTION OF PATENT RIGHTS
CHAPTER 29--REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS
§ 283. Injunction
The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the
principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems
reasonable.
Current through P.L. 109-279 approved 08-17-06
Copr. © 2006 Thomson/West. No. Claim to Orig. U.S. Govt. Works
END OF DOCUMENT
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

THE OPINION ENTERED TODAY IS NOT
BINDING PRECEDENT OF THE BOARD
Filed by: Merits Panel Paper No. 85
Interference Trial Section
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
MINGCHIH M. TSENG
Junior Party
(Application 08/461,318) 1 ,
v.
SIAMAK DOROODIAN-SHOJA
Senior Party
(Patent No. 5,388,331). 2
_______________
Patent Interference No. 104,482
_______________
Before SCHAFER, LEE and TORCZON, Administrative Patent Judges.
LEE, Administrative Patent Judge.
MEMORANDUM OPINION AND JUDGMENT
Introduction
Senior party patentee Doroodian-Shoja filed (1) preliminary
1
Filed on June 20, 1995. Accorded the benefit of
application 08/269,495, filed July 1, 1994. The real party in
interest is The Gillette Company.
2
Based on application 08/188,244, filed January 28, 1994.
The real party in interest is Arthur D. Little Enterprises, Inc.

Interference No. 104,482
Tseng v. Doroodian-Shoja
motion 1 alleging no interference-in-fact; and (2) preliminary
motion 2 for judgment under 35 U.S.C. § 135(b). Junior party
applicant Tseng filed (1) preliminary motion 1 to add more claims
to its involved application; (2) preliminary motion 2 for
judgment against Doroodian's patent claims 1-6 under 35 U.S.C.
§ 112, first paragraph, for lack of an enabling disclosure; (3)
preliminary motion 3 for judgment against Doroodian's patent
claims 1-6 for indefiniteness under 35 U.S.C. § 112, second
paragraph; (4) preliminary motion 4 for judgment against
Doroodian's patent claims 1-6 under 35 U.S.C. § 112, first
paragraph, for lack of written description in the specification;
and (5) preliminary motion 5 for judgment against claims 1-6 of
Doroodian's patent claims 1-6 as being unpatentable over prior
art.
Findings of Fact
The following findings of fact as well as those contained in
the discussion portion of this opinion are supported by a
preponderance of the evidence.
1. This interference was declared on January 12, 2000.
2. Junior party Tseng is involved on the basis of U.S.
application 08/461,318, filed June 20, 1995.
3. Senior party Doroodian is involved on the basis of U.S.
Patent No. 5,388,331, filed January 28, 1994.
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Interference No. 104,482
Tseng v. Doroodian-Shoja
4. At the time of declaration of this interference, junior
party Tseng was accorded the benefit of application 08/269,495,
filed July 1, 1994.
5. The involved application claims of junior party Tseng
are claims 113, 117-123 and 130-136, which all correspond to the
count in this interference.
6. The involved patent claims of senior party Doroodian
are claims 1-6, which also all correspond to the count of this
interference.
7. Of Tseng's involved applications claims, claims 113,
117, 118, 134 and 135 are each independent claims and the rest
are dependent claims.
8. Of Doroodian's involved patent claims, only claim 1 is
an independent claim.
No. 1 as:
9. The count in this interference is set forth in Paper
Claim 1 of Doroodian or Claim 135 of Tseng.
10. Claim 1 of Doroodian reads as follows:
1. In a disposable razor or razor cartridge
comprising at least one blade mounted in a head or
frame, said blade having a shaving edge, the
improvement comprising wear indicating means for
indicating the amount of wear on the shaving edge, said
wear indicating means being located on the head or
frame in close proximity to the shaving edge of said
blade, and said wear indicating means comprising a
strip of material extending generally parallel to the
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Interference No. 104,482
Tseng v. Doroodian-Shoja
shaving edge, said strip of material gradually wearing
away as the disposable razor or razor cartridge is used
in shaving, the amount of material wearing away being
correlated with the amount of wear on the shaving edge
to provide a visual indication of the relative wear on
the blade.
11. The first paragraph of the BACKGROUND OF THE INVENTION
section of the specification of senior party Doroodian's involved
patent states:
This invention relates to disposable razors, and
particularly to a visual means for readily indicating
to the user the relative amount of wear that the blade
of a given disposable razor has undergone.
12. The fourth paragraph of the BACKGROUND OF THE INVENTION
section of the specification of senior party Doroodian's involved
patent states:
It is believed that the typical user of a
disposable razor would benefit from the inclusion of
some reliable, and easily recognizable, visual
indicator of the relative amount of wear that a
particular disposable razor blade has undergone. With
such a visual indication, it would not be necessary to
determine the wear on the razor by the amount of pain
or discomfort felt when the blade was used.
13. Doroodian's specification describes multiple
embodiments of how a visual indication may be provided on a razor
cartridge which reveals the relative wear on the shaving blade
over a plurality of shaving sessions, including the embodiments
illustrated in Figures 3a through 3j and 4a through 6b.
14. Doroodian's specification does not fully disclose how
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Interference No. 104,482
Tseng v. Doroodian-Shoja
the embodiments shown in its Figures 2 and 7 work or operate.
15. All of the embodiments in Doroodian's specification for
which there is an adequate disclosure of how they operate provide
a "multiple points-in-time" indicator strip that gives a visual
indication of the relative wear on the shaving blade beyond
simply that the shaving cartridge or the indicator strip has
reached its intended useful life.
16. Junior party Tseng's application claim 135 reads:
A razor cartridge comprising a blade and an [sic]
inmovable skin engaging member affixed adjacent said
blade, said skin engaging member located such that it
contacts the skin of a user during shaving, said skin
engaging member comprising two adjoining disparately
colored, solid polymeric layers, said layers comprising
an erodable skin engaging layer of a first color
overlaying a non-skin engaging layer of a different
color, wherein said skin engaging layer is adapted to
erode during contact with said skin during shaving to
visually expose said non-skin engaging layer over time.
17. The Field of the Invention section of junior party
Tseng's specification, as filed on June 20, 1995 (Tseng Exhibit
2008), reads in its entirety as follows:
This invention relates to an improved skin
engaging member for use in razor blade cartridge
assemblies and shaving systems of the wet shave type.
The present invention resides broadly in providing the
skin engaging cap and/or guard surfaces with
configurations which reduce frictional drag of the
razor across the skin. This invention also relates to
a novel method of manufacturing the skin engaging
member of the present invention.
18. The SUMMARY OF THE INVENTION portion of Tseng's
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Interference No. 104,482
Tseng v. Doroodian-Shoja
specification, as filed on June 20, 1995 (Tseng Exhibit 2008),
lists three objectives for Tseng's invention:
An object of the present invention is to provide a
skin engaging member with improved mechanical strength.
Another object of the present invention is to
provide a skin engaging member with improved shaving
aid material release characteristics.
Yet another object of the present invention is to
provide a wear indicating skin engaging member.
19. On page 6 of Tseng's specification as filed on June 20,
1995 (Tseng Exhibit 2008), it is stated:
In an embodiment of the present invention a wear
indicating effect is produced when the sheath material
and the core material are made of disparately colored
materials (e.g. white colored sheath and blue colored
core). Upon use, the sheath material over the skin
engaging surface is typically worn off through use.
With sufficient use, a second colored region
represented by the core is exposed, thus, providing the
user with [an] indication that the shaving unit and/or
skin engaging surface have reached their effective
life. In a preferred embodiment, the sheath material
consists of polyethylene oxide/polystyrene mixture
which is white in color and the core consists of nylon
and/or styrene which has been colored with a FD&C #2
dye. Other suitable dyes or pigments include FD&C Red
No. 40, Erythrosine (FD&C Red No. 3), Brilliant Blue
FCF (FD&C Blue No. 1), Indigotine (FD&C Blue No. 2),
Tartozine (FD&C Yellow No. 5), Sunset Yellow FCF (FD&C
Yellow No. 6) and Fast Green FCF (FD&C Green No. 3) and
Titanium Dioxide. (Emphasis added).
20. With respect to the language on page 6 of Tseng's
specification stating that "a second colored region represented
by the core is exposed," the phrase makes no distinction between
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Interference No. 104,482
Tseng v. Doroodian-Shoja
partial exposure and complete exposure of the core. Tseng's
specification contains no reference to or explanation of any
meaningful distinction between partial and complete exposure of
the core. The core is exposed when any portion of it is exposed.
21. Tseng's specification makes no mention of the duration
of or any significance, value, or benefit, of the time period,
assuming that there is any such time period, between partial
exposure and full exposure of the differently colored core.
Tseng's specification does not describe or disclose that a
meaningful such period exists or that it has a duration longer
than a single shaving session.
22. Tseng's specification does not describe or disclose a
"multiple points-in-time" indicator strip which provides a visual
indication of the relative wear on the shaving blade from one
shaving session to the next. The visual indication provided by
exposure of the core reveals only that the shaving unit and/or
the skin engaging layer has reached its intended useful life.
Discussion
A. Doroodian's preliminary
motion 1 asserting that
there is no interference-in-fact
Patentable distinctness between the parties' claims, in
either direction, is sufficient to demonstrate no interferencein-fact.
As the moving party, Doroodian has the burden of proof
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Interference No. 104,482
Tseng v. Doroodian-Shoja
to demonstrate either (1) that none of its claims corresponding
to the count would have been anticipated by or rendered obvious
over any of Tseng's involved claims, or (2) that none of Tseng's
claims corresponding to the count would have been anticipated by
or rendered obvious over any of Doroodian's involved claims.
Doroodian's preliminary motion 1 chooses to show the former, not
the latter. In the Summary Of Argument portion of its
preliminary motion 1, Doroodian states:
The Doroodian claims [1-6] require a wear indicating
means (a strip of material) having two requirements
that are not taught by the involved Tseng claims or
suggested by the subject matter of the involved Tseng
application and claims: (1) gradually wearing away
during use, due to abrasion with the skin of the user,
where the amount of material wearing away is correlated
with the amount of wear on the shaving edge of the
blade; and (2) as the material wears away, the user is
provided with a visual indication of the relative wear
on the blade. These patentable features recited by the
involved Doroodian '331 patent Claims 1-6 are neither
claimed by the Tseng claims nor disclosed nor rendered
obvious by the subject matter of the Tseng application.
To connect the argument to its claims, Doroodian at page 17 of
its preliminary motion 1, in lines 5-12, states:
The "wear indicating means" limitation found in
independent Claim 1 and dependent Claims 2-6 of the
Doroodian '331 patent, can be subdivided into at least
two (2) separate elements:
(1) a material which is primarily worn away gradually
via abrasion and friction where the amount of
material gradually abrading or wearing away is
correlated with the wear on the shaving edge; and
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Interference No. 104,482
Tseng v. Doroodian-Shoja
(2) the amount of material gradually abrading or
wearing away provides a visual indication of the
relative wear on the blade to the user. (Emphasis
in original).
Doroodian argues that the two claim elements identified
above 3 neither expressly nor inherently form a part of the
subject matter of the involved Tseng claims and thus the subject
matter of the involved Tseng claims does not anticipate the
subject matter of the involved Doroodian '331 claims. According
to Doroodian, these two claim elements also render Doroodian's
claims 1-6 nonobvious over any one of Tseng's involved claim.
We are only partially persuaded by Doroodian's argument. In
our view, only the second of the two elements identified above is
not taught by the involved claims of Tseng. That difference
alone, however, is sufficient to support the conclusion that none
of Doroodian's involved claims is anticipated by or would have
been rendered obvious over any of Tseng's involved claims.
We first discuss why Doroodian's assertion is incorrect that
none of Tseng's involved claims satisfies the first of the two
above-identified claim elements, i.e., that the material is worn
3
Tseng correctly notes that the word "primarily" nowhere
appears in any of Doroodian's claims 1-6 in connection with the
material of the wear indicating means being worn away by abrasion
or friction. However, the mischaracterization is without harm
because if a material is representable as being worn away by
abrasion or friction it reasonably would or should be "primarily"
worn away by abrasion or friction.
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Interference No. 104,482
Tseng v. Doroodian-Shoja
away gradually by abrasion and friction and the amount of
material gradually abrading or wearing away is correlated with
the wear on the shaving edge. Thereafter, we will discuss why
Doroodian's assertion is correct that none of Tseng's involved
claims satisfies the second of the two above-identified claim
elements about providing a visual indication on the relative wear
of the blade.
Our interference-in-fact discussion will not include Tseng's
independent claim 134, because as we will explain later that
claim is unpatentable under 35 U.S.C. § 112, first paragraph. In
the analysis of Doroodian's assertion of no interference-in-fact,
we need not discuss any claim of Tseng which is unpatentable.
We reject Doroodian's argument that because party Tseng had
previously argued to the examiner prior to declaration of this
interference that its claimed invention is patentably distinct
from the claims in Doroodian's involved patent, Tseng cannot now
credibly argue otherwise. Tseng's argument to the primary
examiner was unsuccessful and was also directed to claims
different from those now involved in the interference. Tseng is
not restricted to a position it had previously unsuccessfully
taken before a primary examiner, even if the argument is directed
to the same claims. Tseng has obtained no apparent benefit from
its previous argument, which would render unfair the taking of a
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Interference No. 104,482
Tseng v. Doroodian-Shoja
different position now.
Each of Tseng's independent claims 113, 117, 118 and 135
recites a skin engaging member which includes an erodible skin
engaging layer of a first color overlaying a non-skin engaging
layer of a different color. Each of claims 113, 117, 118 and 135
further recites that the skin engaging layer erodes or is adapted
to erode during contact with skin during shaving to visually
expose the non-skin engaging layer.
We find that according to Tseng's disclosure all described
erosion of the skin engaging layer "during contact" with the
shaver's skin and "during shaving" are gradual and are through
abrasion and friction. We further find that Tseng's disclosure
does not contemplate, recognize, or refer to any erosion through
ordinary use of the shaving cartridge during contact with skin
and during shaving that is not gradual or that is not due to
abrasion or friction. For instance, the shaving aid constituting
Tseng's skin engaging layer is for providing shaving assistance
through "multiple" shaves and the Tseng specification does not
allude to any possible use for a sudden release of all shaving
aid in one stroke of the razor or a single shaving session. In
light of these findings concerning Tseng's specification, we find
that the erosion claimed by Tseng is implicitly gradual.
Notwithstanding that Tseng's disclosed skin engaging layer
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Interference No. 104,482
Tseng v. Doroodian-Shoja
comprises between 70% to 100% of a water soluble shaving aid, the
erosion "during contact" with skin and "during shaving," as
described in Tseng's disclosure is via abrasion and friction with
skin. Even though Tseng's disclosed skin engaging layer is
mostly, if not entirely, water soluble and is designed to
dissolve or leech away during use, it is not worn away from the
razor cartridge until the razor cartridge is applied in physical
contact with the skin of the shaver and stroked over the area
being shaved. Water solubility of the shaving aid facilitates
the material's being worn off the skin engaging layer during
contact with skin, and does not change the fact that abrasion and
friction are responsible for wearing the material off the skin
engaging layer. Merely dissolving material in water is not
ordinarily considered wear on the material. Even dissolved
portions of the material need to be removed, and that is done by
abrasion and friction with skin during shaving. Tseng's
disclosure neither refers to nor acknowledges the existence of
any way to cause erosion of shaving aid material during skin
contact and during shaving that would not be due to abrasion and
friction with skin. Furthermore, if the material eroded away
without having contacted the skin, it would not constitute a
shaving aid - Tseng's disclosed intended use for the material.
In light of our findings concerning Tseng's disclosure, we
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Interference No. 104,482
Tseng v. Doroodian-Shoja
conclude that the gradual wearing down of Tseng's skin engaging
layer during contact with skin and during shaving, as is
specified in Tseng's claims 113, 117, 118 and 135, is indeed by
abrasion and friction.
As for whether the material gradually abrading or wearing
away is correlated to the wear on the shaving edge, we find that
that is an inescapable and necessary result which always follows
from practicing the invention described in Tseng's disclosure.
Tseng's specification recognizes that the shaving blade wears
down and has only a limited life. See Tseng specification at
page 5, lines 21-22. We find that during the ordinary and
intended use of Tseng's disclosed invention, the wearing down of
the skin engaging layer or shaving aid "during contact" with skin
and "during shaving" is always associated with shaving action on
the shaving blade.
While it is true that a cartridge may be placed in a pot of
warm water and in sufficient time the soluble portions of the
skin engaging layer can dissolve entirely without the shaving
blade ever being used or worn. But based on Tseng's
specification, such an event falls clearly outside of the
intended and ordinary use of the disclosed razor cartridge. We
find that for Tseng's disclosed invention, any time the razor
cartridge is used in actual shaving, erosion of the skin engaging
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Interference No. 104,482
Tseng v. Doroodian-Shoja
layer during skin contact and during shaving accompanies some
wear on the shaving blade, without exception. Note that Tseng's
claims 113, 117, 118 and 135 refers to erosion of the skin
engaging layer "during contact" with skin and "during shaving."
See also lines 12-15 of column 3 of Doroodian's specification,
which states: "The strip should be so located that it is
virtually constantly in contact with the skin and hair or beard
during the shaving stroke."
Doroodian's claims require "correlation" to blade wear only
generally. No particular relationship is specified in the
claims. Also, no special meaning is defined in Doroodian's
specification for the term "correlate," which according to
Merriam Webster's Collegiate Dictionary, Tenth Edition, 1999, has
the following general meaning as a verb:
2: to bear reciprocal or mutual relations: correspondvt
1 a: to establish a mutual or reciprocal relation
between b: to
show correlation or a causal relationship between 2: to
present or set forth so as to show relationship . . . .
The only paragraph in the portion of Doroodian's
specification entitled "DETAILED DESCRIPTION OF THE PREFERRED
EMBODIMENT" which uses the word "correlate" is this (column 5,
lines 22-30):
An advantage of the subject invention is that the
amount of wear undergone by strip itself is related to
the "toughness" of the skin and hair being shaved
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Interference No. 104,482
Tseng v. Doroodian-Shoja
i.e., as stated above, "tough" hair will cause the
indicator strip to wear away more rapidly than "soft"
hair. Thus the amount of wear on the strip correlates
well with the amount of wear on the blade. (Emphasis
added.)
What the above-quoted passage from Doroodian's specification
indicates is that two elements are well correlated if simply that
more of one means more of the other. This broad meaning of the
term "correlate" is not disputed by Doroodian's counsel during
oral argument on May 23, 2001, who responded to questions from
the panel on what "correlate" means by stating that no particular
relationship is necessary and that so long as both elements move
in the same direction there is correlation.
In light of the recitation in Tseng's claims 113, 117, 118
and 135 that the skin engaging layer erodes during contact with
skin and during shaving, we find that it is inherent that during
ordinary and intended use of Tseng's claimed razor cartridge more
erosion on the skin engaging layer means more wear of the shaving
edge or blade. As skin contact erodes the skin engaging layer,
the cutting action of the blade on hair wears down the shaving
blade. Our finding of inherency is supported by the following
cross-examination testimony of Doroodian's technical witness
Anthony R. Booth (Tseng Exhibit 2089, page 527):
Q. Is the amount of material that leaches and
erodes away from the outer layer 72 [Tseng's cartridge]
correlated with wear on the edges of the blade 60 and
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Interference No. 104,482
Tseng v. Doroodian-Shoja
62
[Doroodian's counsel]:
Objection.
A. When used in a normal shaving manner I would
expect that to be true.
* * *
Q. [exchange between counsel] Does the outer
layer 72 wear away each time the cartridge is used in
shaving
[Doroodian's counsel]:
Objection.
A. When the cartridge is used in a normal manner
I would assume that to be true, yes.
Q. You don't have any doubt about that, do you
A. Not if it was used in a normal manner, no.
* * *
Q. Does the amount of blade wear on the edges of
blade 60 and 62 of the cartridge shown in Figure 3
[Tseng's application] increase in the aggregate as the
cartridge is repeatedly used
[Doroodian's counsel]: May I have the question
back, please
[Record read.]
[Doroodian's counsel]: Objection.
A. My understanding is that the blades would
wear each time they are shaved.
We conclude that the feature that the amount of material
gradually abrading or wearing away is correlated with the wear on
the shaving edge is inherently a part of Tseng's claims 113, 117,
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Interference No. 104,482
Tseng v. Doroodian-Shoja
118 and 135.
The question now remaining is this: In the invention of
Tseng's independent claims 113, 117, 118, 135, and claims
dependent thereon, does the amount of material worn from the skin
engaging layer provide a visual indication of the wear on the
shaving edge or blade In that regard, Doroodian's independent
claim 1 recites: "wear indicating means for indicating the
amount of wear on the shaving edge" and "the amount of material
wearing away being correlated with the amount of wear on the
shaving edge to provide a visual indication of the relative wear
on the blade" (Emphasis added). Doroodian's claim 1 recites a
means-plus-function clause under 35 U.S.C. § 112, sixth
paragraph, i.e., "wear indicating means for indicating the amount
of wear on the shaving edge."
According to Doroodian, its claimed wear indicating means
requires a "multiple points-in-time" indicator "where the amount
of strip material wearing away is correlated with the amount of
wear on the shaving edge to provide a visual indication of the
relative wear on the blade beginning when the cartridge is first
used, and continuing with each shave until the user decides,
based upon prior experience, the indicator strip (and hence the
cartridge) has worn to a level that will result in shaving
discomfort if used further." Doroodian distinguishes such a
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Interference No. 104,482
Tseng v. Doroodian-Shoja
"multiple points-in-time" indicator from a "single point-in-time"
indicator which gives only a single indication that a skin
engaging layer including a shaving aid is essentially all eroded
away from usage. Doroodian asserts that Tseng's involved claims
require a "single point-in-time" indicator while Doroodian's
claims require a "multiple points-in-time" indicator.
Doroodian's argument is persuasive, except that we regard
the period in which a visual indication must be provided to be
from the time when the razor unit is new to a time when the blade
has reached its intended useful life for shaving. Doroodian's
reference to "shaving discomfort" and an actual user's prior
experience is too subjective to be meaningful. We further
clarify that the term "multiple points-in-time" as used herein
means a substantially continuous spectrum on a shaving session by
shaving session basis whereby each shaving session brings about
an erosion and an observable change in the visual indication.
For reasons discussed below, we regard Doroodian's claims as
requiring a "multiple points-in-time" indicator and Tseng's
claims as requiring a "single point-in-time indicator."
As noted above, Doroodian's claims 1 recites a means-plusfunction
clause the stated function of which is "for indicating
the amount of wear on the shaving edge." The context of claim 1
in its entirety, as written, is not any particular fixed moment
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Interference No. 104,482
Tseng v. Doroodian-Shoja
in time. Rather, it is expressly recited that the wear
indicating means has a strip of material "gradually wearing away
as the disposable razor or razor cartridge is used in shaving."
In such an actively or continuously changing environment, the
reference to "for indicating the amount of wear on the shaving
edge" does not reasonably mean an indication at a particular
moment in time. Rather, it means at whatever time, i.e., the
time of observation of the visual indication. The last phrase in
claim 1 supports our view, in reciting: "the amount of material
wearing away being correlated with the amount of wear on the
shaving edge to provide a visual indication of the relative wear
on the blade." The phrase ties the amount of material "wearing
away" to "relative wear" on the shaving blade, and that reflects
appreciation for an actively or continuously changing environment
and a visual indication on a progressive basis.
In an amendment filed June 22, 1994 (Paper 4a in the file of
Doroodian's involved patent) 4 , wherein the language "for
indicating the amount of wear on the blade edge" was added to the
means plus function clause, Doroodian specifically distinguished
its claimed invention from the prior art by arguing with respect
to the prior art that there is "no suggestion that the strip is
4
We herein designate that paper as a part of the official
record we have considered for purposes of this decision.
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Interference No. 104,482
Tseng v. Doroodian-Shoja
worn away in such a way as to provide a visual indication of
progressive blade wear" (Emphasis in original). Thus, by its own
representation to the U.S. Patent and Trademark Office during
examination of its involved patent, Doroodian has clarified and
limited the visual indication provided by its wear indicating
means to the "progressive" variety. Visual indication of
progressive blade wear unmistakably corresponds to Doroodian's
assertion of a "multiple points-in-time" and not a "single pointin-time"
indicator.
Doroodian's specification supports our view, insofar as
disclosed embodiments and 35 U.S.C. § 112, sixth paragraph, are
concerned. Per 35 U.S.C. § 112, sixth paragraph, the claimed
wear indicating means covers only corresponding embodiments
disclosed in the specification and equivalents thereof. All of
Doroodian's disclosed embodiments which have been described in
sufficient detail are of the progressive or "multiple points-intime"
type. See, for instance, the embodiments illustrated in
Figures 3a-3j, 4a-4b, 5a-5b, and 6a-6b.
Tseng argues that Doroodian's specification discloses other
preferred embodiments which are of the "single point-in-time"
indicator type, for instance, Doroodian's Figures 2 and 7. But
those embodiments have not been described in sufficient detail
for one with ordinary skill in the art to know how they operate
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Interference No. 104,482
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to provide the visual indication. To say that they illustrate a
"single point-in-time" indicator strip more reflects wishful
thinking on the part of Tseng than it does corresponding
description in the specification. In our view, the embodiments
of Doroodian's Figures 2 and 7 are not sufficiently described to
constitute a corresponding embodiment for the wear indicating
means of Doroodian's claim 1, within the context of 35 U.S.C.
§ 112, sixth paragraph. The claimed means-plus-function clause
cannot be defined on the basis of embodiments whose operation are
not sufficiently described to be reasonably understood.
Doroodian's Figure 2 possibly illustrates the shaving head
after a top layer of wear indicating means has been eroded away
completely to reveal the indicia "DISPOSE" on the shaving head.
It also possibly illustrates the indicia on the lower layer of a
two-layer wear indicating means after the top layer has been
eroded away completely. Which is it A structure according to
either possibility is similar to another embodiment in
Doroodian's disclosure (see column 3, lines 24-31) wherein the
wear indicating means is in a single color that contrasts with
the color of the razor head, whereby the color of the razor head
is revealed after the wear indicating layer has been eroded away.
Doroodian's Figure 7 illustrates an embodiment with a twolayer
wear indicating means in which both layers have the same
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Interference No. 104,482
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longitudinal cross-section (see column 3, lines 42-43) but
contrasting colors. In column 3, lines 42-47, the Doroodian
specification states:
The two layers may have the same longitudinal crosssections
(as, for example, in FIG. 7) or may have
different longitudinal cross-sections to create
different visual patterns for example as shown in
FIG. 3a, where the upper layer tapers from a thin edge
at one end of the strip to a wide edge at the other.
(Emphasis added).
Doroodian's argument that Figure 7 in Doroodian's specification
does not illustrate an embodiment of the wear indicator means
claimed in the patent is rejected. Whatever else may be
illustrated via Figure 7, the Figure unquestionably reveals an
embodiment wherein the two layers of the wear indicator means
have the same longitudinal cross section. While Dr. Booth
testified that he does not view Figure 7 as an embodiment, we
have not been directed to any testimony of Dr. Booth in which he
accounted for the above-quoted language in Doroodian's
specification.
The embodiments noted in the two immediately preceding
paragraphs, including the Figure 2 and Figure 7 embodiments,
share a common deficiency in completeness. For these
embodiments, the Doroodian specification does not describe what
the visual indication looks like before the upper layer of the
two-layer indicating means is completely worn away or before the
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Interference No. 104,482
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single layer of contrasting color with the shaving head is
completely worn away. What we have is simply a snap-shot in time
when what we need for a full understanding is a more complete
description of the changes, if any, in visual appearance leading
up to the time of complete erosion of the upper layer, as the
blade is being progressively worn. It is at least plausible that
more and more of the contrasting color or other indicia below
will become visible as a user goes through each shaving session
even though no portion of the lower layer or the shaving head is
physically exposed or uncovered. Whether that is the case is
uncertain. Note further that Dr. Anthony R. Booth testified that
the Figure 2 embodiment is only partially disclosed in
Doroodian's specification. (Booth Tr, 354). It is simply
uncertain how these embodiments work.
Doroodian's specification is far from being a model of
clarity. Many parts of it are outright confusing. In column 3,
lines 6-8, a "wear indicating strip" is defined; but in line 16,
it apparently became a "wear indicating means." No explanation
is provided for this transformation and it should be noted that
under 35 U.S.C. § 112, sixth paragraph, the legal residence of a
means-plus-function clause is only in a claim.
In the brief description of the drawings, Figure 7 is
described as follows: "Figure 7 comprises a diagram illustrating
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Interference No. 104,482
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the formula for determining the coefficient of wear for a given
set of shaving parameters." With regard to Figure 7, the
specification in column 4, lines 48-52 states that "%³X is the
change in thickness X resulting from stroking the razor blade
over the skin for a distance L" and that "L is the distance that
the blade is stroked along the skin in a given [single] shaving
session." But Figure 7 also evidently shows %³X to be the entire
thickness of the skin engaging layer A which should last multiple
shaving sessions, for instance an average of four sessions
according to column 5, lines 8-9. Clearly, %³X cannot be both.
states:
In column 3, lines 31-37, the Doroodian specification
In a preferred embodiment, two layers of material
are used to comprise the wear indicating means, so
that, as the uppermost layer is worn away, the color of
the next layer becomes visible. As a further
alternative, a word such as "DISPOSE", or other words
or indicia (such as diagonal stripes or a row of
stars), could be made to appear as the upper layer is
worn away.
But the disclosure immediately preceding the above-quoted text
does not define a general invention which encompasses the abovedescribed
preferred embodiment. Specifically, in column 3, lines
24-30, the specification states:
By making the wear indicating means in a color that
contrasts with the color of the razor head 14, the
relative wear on the strip will be evident because the
strip will be worn away, and the head will become
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Interference No. 104,482
Tseng v. Doroodian-Shoja
visible. For example, a white strip on a blue razor
head will gradually be worn away to reveal the blue
color underneath.
The above-quoted text does not set forth an invention for which
two layers having contrasting colors would constitute an
embodiment of the wear indicating means. At most, it is an
alternative embodiment which has not been referred to as
"preferred." Furthermore, assuming that it is an alternative
embodiment, it is just as incomplete as are the Figure 2 and
Figure 7 embodiments discussed above. It is uncertain just what
the visual indication reveals before the wear indicating means is
completely worn, beginning when the razor unit is new and unused.
In column 3, lines 38-41, Doroodian's specification states:
In this preferred two layer embodiment, two basic
methods of construction are contemplated. In the first
method, the two layers are constructed from either the
same or different material, but are of contrasting
colors. . . . [Emphasis added.]
No second method is thereafter described, however, even as the
specification commences, beginning in column 3, line 59, to set
forth an alternative embodiment to the two layer preferred
embodiment.
In column 3, lines 59-64, Doroodian's specification states:
In another alternative embodiment, the indicator
means may consist of a single strip of material, but
colored or dyed by known methods, so as to creat[e]
distinguishable zones. As the upper portion or zone of
the strip (of one color) is abraded away, the
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Interference No. 104,482
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contrastingly colored lower zone becomes visible.
The above-quoted description suggests that the two layers
included in the earlier described embodiment do not constitute a
single strip of material. But the two-layered preferred
embodiment described earlier in the specification does appear to
be an implementation of the wear indicating strip first defined
in column 3, lines 6-8. Moreover, as for just how the
contrastingly colored lower layer or zone becomes visible as the
upper layer or zone is abraded away, without abrasion of the
lower layer or zone mixed in with the upper layer or zone,
Doroodian's specification does not say.
In this sea of confusion one particular point stands out
with remarkable clarity - that there is not a single instance in
Doroodian's specification where it discusses or appreciates the
benefit of knowing that the shaving blade is completely worn,
separate and apart from the benefit of knowing on a continuous
basis how much the blade has worn through each shaving session.
On the basis of Doroodian's specification, we cannot find that
there is any "single point-in-time" embodiment, not even with
respect to Doroodian's Figures 2 and 7 which, as we discussed
above, lack detailed explanations as to how they work. We are
not free to add embodiments to Doroodian's disclosure. Nor are
we free to add material to render complete an otherwise
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Interference No. 104,482
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incompletely disclosed embodiment.
Note further that Doroodian's specification refers to the
embodiments of Figure 7, Figures 3a through 3j, and Figures 4
through 6, all in the same vein. See column 3, lines 42-57.
There is not the slightest inkling that a major difference may
exist between these embodiments, e.g., that Figure 7's embodiment
would only give a visual indication at a single point in time,
when the blade is completely worn.
With regard to a two layered embodiment, evidently including
that of Figure 7 because this preferred embodiment can have
either the same or different cross-section, Doroodian's
specification states (column 3, lines 32-34):
"[a]s the uppermost layer is worn away, the color of
the next layer becomes visible. (Emphasis added.)
Further with regard to this preferred two layered embodiment,
which can have either the same or different cross-section,
Doroodian's specification states (column 3, lines 47-51):
As the two layers wear away through abrasion and/or
shear stress against the skin and hair, more and more
of the contrasting colored lower layer is disclosed
[reference to the illustrations of Figure 3].
For all of the foregoing reasons, we do not find that
Doroodian's specification discloses any "single point-in-time"
embodiment which gives only an on/off visual indication as to
whether the shaving blade is completely worn. Furthermore, even
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if it does, Doroodian through its own representation to the U.S.
Patent and Trademark Office during prosecution of the application
maturing into its involved patent has limited or narrowed its
claims to cover only "progressive" indication as discussed above.
Because Doroodian's specification does not disclose a
"single point-in-time" embodiment, the claimed wear indicating
means under 35 U.S.C. § 112, sixth paragraph, cannot be construed
as though a "single point-in-time" embodiment is a corresponding
embodiment in the specification. Furthermore, because "multiple
points-in-time" embodiments are not equivalent to a "single
point-in-time" embodiment 5 , it is our determination that
Doroodian's involved claims are limited to "multiple points-intime"
embodiments and do not cover "single point-in-time"
embodiments.
We recognize that Doroodian's technical witness, Dr. Anthony
R. Booth, on cross-examination by Tseng, indicated that
Doroodian's claim 1 covers Doroodian's Figure 7 embodiment.
However, Tseng pointed to no testimony of Dr. Booth to the effect
that one with ordinary skill in the art would understand
Doroodian's Figure 7 embodiment as not providing a substantially
continuous indicator but only an on/off indicator. Moreover, if
5
Neither party asserts that there is such an equivalence.
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Interference No. 104,482
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it is Dr. Booth's view that claim 1 is sufficiently broad to
cover both on/off and substantially continuous embodiments, the
issue is a question of law and thus Dr. Booth's conclusion on the
ultimate legal issue carries no weight. In any event, Tseng has
not directed our attention to the underlying basis or rationale
for Dr. Booth's conclusion that Doroodian's claim 1 covers the
Figure 7 embodiment. For all of these reasons, Dr. Booth's
testimony does not change our view as to what is covered by
Doroodian's claims.
Tseng asserts that Doroodian's exclusive licensee and real
party in interest, Arthur D. Little Enterprises ("ADLE"), in or
about November 1996, provided Tseng's real party in interest
("Gillette Company") with a document entitled "Razor Gauge TM Wear
Indicator Technology for Razor Blades, Licensing Opportunity
presented to: The Gillette Company, October 1996." Tseng notes
page 6 of that document which describes how the technology works,
in part, as follows:
%Ï Strip of material (integral with or separate from
comfort strip) that changes physical properties
(preferrably appearance) as a function of wear/use.
%Ï Could be designed as an off/on device or a continuously
changing indicia to let users judge for themselves when
it is time to discard product (equivalent to the Oral-B
Toothbrush Indicator).
Tseng further points out that the document on page 10 illustrates
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Interference No. 104,482
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both the On/Off method and the Progressive method. On the basis
of the foregoing, Tseng argues that ADLE contended that the
Doroodian involved patent claims cover both the on/off and the
progressive visual indication. The argument is without merit,
because page 11 of the same document identifies more than
Doroodian's involved patent as the source of proprietary coverage
for the technology being marketed in the document. Moreover, on
page 11 of the document where Doroodian's involved patent is
mentioned, the language states: "Broad U.S. Patent claims
covering change of physical properties as the blade is used US
Patent # 5,388,331." (Emphasis added). The bolded text suggests
a progressive rather than an on/off mechanism insofar as
Doroodian's involved patent is concerned. Also, it appears that
an in-house counsel for the Gillette Company (Tseng's real party
in interest), Mr. Stephan P. Williams, has acknowledged that the
licensing document can include technology not covered by
Doroodian's involved patent. Williams Tr. 158-59.
Tseng also asserts that in 1999 Doroodian had made
statements to the Australian Patent Office to the effect that
Doroodian's claimed invention provided both a single point-intime
and a multiple points-in-time blade wear indicator, citing
to Tseng Exhibit 2090. We have reviewed Tseng's Exhibit 2090 in
detail and do not find the purported representation to the
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Australian Patent Office. The exhibit appears to be a
communication from Doroodian's legal representative to the
Australian Patent Office. In a pertinent part thereof quoted by
Tseng, the communication states: "One of the advantages of the
invention in each of its forms is the ability to construct the
wear indicator so it will indicate wear after a predetermined
amount of or number of uses." This language does not necessarily
indicate that prior to reaching the predetermined number of uses
there would not be any visual indications of wear.
In any event, Tseng has not established that the disclosure
of the Australian patent application it refers to is the same as
the disclosure of Doroodian's involved patent or that the claims
in the Australian patent application are the same as Doroodian's
involved claims in this interference. Tseng has not satisfied us
that oranges are being compared with oranges and apples to
apples. Moreover, as we discussed above, in its remarks to the
examiner during prosecution of Doroodian's involved patent in the
U.S. Patent and Trademark Office, Doroodian in no uncertain terms
represented that its claimed invention is directed to providing a
visual indication of "progressive blade wear." We credit that
representation to the U.S. Patent and Trademark Office more than
we do any contrary statement to the Australian Patent Office.
Even assuming (1) that the Australian patent disclosure is
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the same as the disclosure of Doroodian's involved patent, (2)
that the Australian patent application claims were the same as
Doroodian's involved claims, and (3) further that Doroodian had
represented to the Australian Patent Office that its claims cover
both "single point-in-time" and "multiple points-in-time"
embodiments, that does not counter-balance or overcome the
reasons we discussed herein for concluding that Doroodian's
claims are directed to an invention providing substantially
continuous or progressive visual indications of blade wear. 6
Finally, Tseng argues that by reading the "multiple pointsin-time"
feature into Doroodian's claim 1, we would be including
into claim 1 a feature expressly added or recited in a dependent
claim and that would be an indication that claim 1 should not be
so construed. The argument is misplaced and thus rejected. The
dependent claims are each directed to a particular embodiment,
whereas claim 1 including the "multiple points-in-time" feature
is broad enough to cover all disclosed "multiple points-in-time"
embodiments and equivalents thereof. Tseng has not directed our
attention to any dependent claim which duplicatively recites what
Doroodian contends is required by its independent claim 1.
6
Note, for instance, that the patent laws may not be the
same, especially with regard to means-plus-function clauses under
35 U.S.C. § 112, sixth paragraph.
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Interference No. 104,482
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Now we turn to what Tseng's claims require with regard to a
visual indication. In pertinent part, Tseng's independent claim
113 recites: "wherein said skin engaging layer is adapted to
erode during contact with said skin during shaving to visually
expose said non-skin engaging layer" (Emphasis added). In
pertinent part, Tseng's independent claim 117 recites: "wherein
said skin engaging member is constructed such that said skin
engaging layer erodes during contact with said skin during
shaving to visually expose said non-skin engaging layer"
(Emphasis added). In pertinent part, Tseng's independent claim
118 recites: "wherein said skin engaging layer is adapted to
erode during contact with said skin during shaving to visually
expose said non-skin engaging layer" (Emphasis added). In
pertinent part, Tseng's independent claim 135 recites: "wherein
said skin engaging layer is adapted to erode during contact with
said skin during shaving to visually expose said non-skin
engaging layer over time" (Emphasis added).
None of the above-quoted portions of Tseng's claims can
reasonably be regarded as requiring a progressive visual
indication or a "multiple points-in-time" visual indication,
especially the language of claim 135 which includes the words
"over time." When something is said to be exposed "over time,"
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Interference No. 104,482
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it means the item is not exposed immediately but only after a
period of time. Tseng's specification has not coined a different
definition for the term. Even assuming, without deciding, that
the emphasized quoted portions of Tseng's claims 113, 117, 118
and 135 are broad enough to cover progressive visual indication
or "multiple points-in-time" visual indication, that still does
not mean these claims anticipate, in the sense of 35 U.S.C.
§ 102, Doroodian's involved claims insofar as the "multiple
points-in-time" feature of Doroodian's claims are concerned.
None of Tseng's claims depending from claims 113, 117, 118
and 135 add any recitation which makes up for the shortfall of
independent claims 113, 117, 118 and 135 for anticipating the
"multiple points-in-time" feature of Doroodian's claims.
Accordingly, we find that none of Tseng's involved claims 113,
117-123, 130-133 and 135-136 anticipates any one of Doroodian's
involved claims 1-6.
Doroodian represents that it would not have been obvious to
one with ordinary skill in the art to arrive at Doroodian's
claims including the "multiple points-in-time" feature, starting
from Tseng's involved claims. We agree.
We find that the level of ordinary skill in the art of
disposable razor blades is generally reflected by the technology
described in these items of prior art: U.S. Patent Nos.
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Interference No. 104,482
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5,113,585; 4,982,767; 4,562,644; 4,170,821; 3,879,844;
and 2,703,451. The testimony of Dr. Anthony R. Booth,
Doroodian's technical witness, that "I consider a person of
ordinary skill in the art to be a scientifically trained or
technically trained individual who has worked in the industry for
ten (10) years and has experience designing razor products,
developing razor products, testing razor products and
manufacturing razor products" is too general and vague to be
meaningful. Tseng's position that Doroodian's definition
overstates the ordinary skill in the art is also not helpful.
According to Doroodian, Tseng's involved claims can only be
construed as requiring an all or nothing, or "single point-intime"
visual indication because that is the only notion disclosed
in Tseng's specification. We agree. An application claim can
properly be construed according to its broadest reasonable
interpretation but that interpretation must be consistent with
the specification. Tseng's specification does not describe any
"multiple points-in-time" mechanism that gives a progressive
visual indication. Tseng's specification does not reveal even
that a progressive indication is anything of value or desirable.
The only reference to any kind of indication being provided is a
lone sentence in the SUMMARY OF THE INVENTION section which
reads: "Yet another object of the present invention is to
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Interference No. 104,482
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provide a wear indicating skin engaging member," and the
following paragraph appearing on page 6 of the Tseng
specification as filed (Tseng Exhibit 2008):
In an embodiment of the present invention a wear
indicating effect is produced when the sheath material
and the core material are made of disparately colored
materials (e.g. white colored sheath and blue colored
core). Upon use, the sheath material over the skin
engaging surface is typically worn off through use.
With sufficient use, a second colored region
represented by the core is exposed, thus, providing the
user with [an] indication that the shaving unit and/or
skin engaging surface have reached their effective
life. In a preferred embodiment, the sheath material
consists of polyethylene oxide/polystyrene mixture
which is white in color and the core consists of nylon
and/or styrene which has been colored with a FD&C #2
dye. Other suitable dyes or pigments include FD&C Red
No. 40, Erythrosine (FD&C Red No. 3), Brilliant Blue
FCF (FD&C Blue No. 1), Indigotine (FD&C Blue No. 2),
Tartozine (FD&C Yellow No. 5), Sunset Yellow FCF (FD&C
Yellow No. 6) and Fast Green FCF (FD&C Green No. 3) and
Titanium Dioxide. (Emphasis added)
Thus, the purpose of the indication is to reveal that the shaving
unit and/or the skin engaging surface have reached their
effective life. The indication is not intended to come on when
the shaving unit is relatively new or just beginning to be used.
It is only after "sufficient use" that the second colored region
becomes exposed to give a visual indication.
Consequently, the recitations in Tseng's independent claims
113, 117, 118 and 135 to the effect that the skin-engaging layer
erodes to visually expose the non skin-engaging layer cannot be
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Interference No. 104,482
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so broadly interpreted as covering either the case of "multiple
points-in-time" progressive visual indication or single point-intime"
visual indication. Rather, we conclude that such
recitation in these claims limit the coverage to only "single
point-in-time" visual indication at a particular time.
According to Tseng, Figures 3-6 in its specification
illustrates "multiple points-in-time" wear indicator strips that
would provide a progressive visual indication of the wear on the
blade. In support of that argument, (1) Tseng presents a drawing
produced in its opposition at page 5 that supposedly illustrates
how the wear indicator strip shown in Tseng's Figure 5 gives a
progressive visual indication, and (2) Tseng presents recent test
results on indicator strips made in 1993 by Philip Sweeney, an
employee of the Gillette Co., under the direction of Mingchih M.
Tseng. According to Tseng, the actual samples correspond to what
is described in the specification as Example 13 7 and tests
thereon "confirm" the illustrations or depictions on page 5 of
the opposition with regard to Tseng's wear indicating strip. We
will discuss these efforts, in turn. However, neither
7
Tseng states (Opp. At 6): "Example 13 was inadvertently
identified as 'Example 12' in the application as filed (TE 2008
at 9). That typographical error was corrected during prosecution
(TE 2067 at 7)." Note that it is "Example 12" on page 9 of
Tseng's specification which should be identified as "Example 13."
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Interference No. 104,482
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demonstration is persuasive in establishing Tseng's argument.
Tseng's demonstration presented via a drawing on page 5 of
its opposition is without merit.
First, it can be seen from the illustration on page 5 of
Tseng's opposition that even according to Tseng's illustration,
in going from "Before Use" to "After Some Use" in the second
column of the four-column table, there has been no change in
visual indication. Thus, even though the blade has been
partially worn, there is no visual indication to that effect.
That alone seriously undermines Tseng's assertion that the
illustrated embodiment provides progressive indication of
relative blade wear.
Secondly, when the lower layer of a contrasting color has
been exposed, as is shown in the picture corresponding to "After
Further Use" and in the second column, Tseng's specification as
quoted above provides that the shaving unit and/or the skin
engaging surface have reached their intended effective life.
Tseng's specification makes no distinction between partial
exposure and complete exposure of the differently colored core.
Thus, either partial or complete exposure of the core gives a
visual indication that the shaving unit and/or the skin engaging
surface has reached its intended useful life.
Whether it is the shaving unit or the skin engaging surface
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Interference No. 104,482
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that has reached its intended effective life, the result is the
same. We cannot assume that a shaving unit will continue to be
used when its "skin engaging surface" has reached its intended
useful life. Tseng's specification does not state anything to
the effect that the shaving unit will continue to be used for
shaving after the shaving unit and/or the skin engaging surface
thereof have reached their intended useful life.
Tseng contends that because the conjunctive-disjunctive
"and/or" is used in the phrase at issue, it is not necessarily
true that when the core is exposed the shaving unit has reached
its intended useful life. The argument is wanting because Tseng
does not explain any meaningful difference, in the context of
Tseng's specification, between the shaving unit's reaching its
intended useful life and the skin engaging surface's reaching its
intended useful life. Tseng has pointed to nothing in its
specification which describes how a user would determine whether
it is one and not the other, or how the user's response or
subsequent action upon detecting the visual indication would vary
depending on whether it is one and not the other. In this light,
the end of intended useful life of the shaving unit and of the
skin engaging surface are equivalents and there is no apparent
reason to continue using the shaving unit once the core of
contrasting color has been exposed.
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Interference No. 104,482
Tseng v. Doroodian-Shoja
We recognize that Tseng's specification at page 5 discloses
that the core can be made of a blend of non-water soluble plastic
resin and water-soluble resin and that polyethylene oxide is an
example of one such water-soluble resin. Tseng points out that
polyethylene oxide, according to its specification at page 4, is
an example of a suitable shaving aid material included in the
sheath or skin engaging layer. But that is not sufficient basis
to find that according to Tseng's specification despite
exhaustion of the sheath or skin engaging layer the shaving unit
would continue to be used after exposure of the core.
There is no statement anywhere in Tseng's specification to
the effect that the shaving unit would continue to be used after
exposure of the core. Also, there are a number of indications in
Tseng's specification that the polyethylene oxide used to build
the core is not included as a shaving aid. Note that only the
polyethylene oxide in the skin engaging layer is ever referred to
as "shaving aid," and that of all the different functions Tseng's
specification identifies and describes for the core, none
contemplates the core itself as providing a skin engaging surface
for use in further shaving when the covering sheath has been
eroded away.
Consequently, the illustration corresponding to the "After
Additional Use" label on page 5 of the opposition is something
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Interference No. 104,482
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that will not be reached during normal and intended use of the
shaving unit, insofar as Tseng's invention is concerned.
Tseng's specification also makes no mention of the duration
of or any significance, value, or benefit, of the time period,
assuming that there is any such meaningful time period, between
initial partial exposure and full exposure of the core. Tseng's
specification does not describe or disclose that anything
meaningful occurs in such a period or that it has a duration
longer than a single shaving session. This is consistent with
our finding that either partial or full exposure of the core
gives a visual indication that the shaving unit or the skin
engaging surface has reached its intended useful life.
Alternatively, even if we regard the end of the intended
useful life of the shaving unit and of the skin engaging layer as
non-equivalents, and also assume that the shaving unit would
continue to be used despite exposure of the underlying core,
there still can be no progressive or "multiple points-in-time"
visual indication as is argued by Tseng with respect to its
specification. If the skin engaging layer has reached its
intended useful life, then it can no longer be relied upon or
expected to provide a visual indication after further use of the
shaving unit. Tseng's argument improperly relies on the skin
engaging layer to provide a progressive or ongoing visual
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indication even after the skin engaging layer has reached its
intended useful life.
Furthermore, patent drawings are not usually made to scale
and are not production drawings or blue-prints for manufacturing.
Insofar as Tseng's Figures 3-6 are concerned, no one knows just
how curved the core 70 is in the vicinity of its junction with
the skin engaging layer 74. Indeed, even a plain observation of
Figure 3-6 reveals different curvatures from one to the next,
albeit all of them show only a very slight curvature. On the
basis of such ambiguous evidence, there is no credible basis for
Tseng to conclude that there is progressive indication beginning
from when the core is first exposed to when the core is
completely exposed. For instance, all of that exposure can occur
in a single shaving session through multiple strokes within that
session, in which case there really would be no progressive
indication from shaving session to shaving session.
We have reviewed the second declaration of Edwin L. Thomas
(Exhibit 2115), submitted by Tseng to support its opposition to
Doroodian's motion. It does not account for the above-noted
deficiencies of Tseng's argument. Mr. Thomas' depiction on page
6 of Exhibit 2115 (same as the drawing on page 5 of Tseng's
opposition) of what happens when Tseng's razor unit is continued
to be used after exposure of the core depends on continued usage
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Interference No. 104,482
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of the razor unit after exposure of the core. Yet, on crossexamination,
he acknowledges that according to the disclosure in
Tseng's specification, the "after additional use" category in the
depiction is something that is never reached. (Thomas Transcript
at 1014). Mr. Thomas further explains, with respect to exposure
of the differently colored core (Transcript at 1140):
A. You're reaching the time in which maybe during
that after that shave is over or before the next one
starts you want to change blades.
The question is not whether details can be independently proposed
for various parts in Tseng's drawings such that one can justify
continued use of the shaving unit after exposure of the core, but
what Tseng's specification says or does not say in that regard.
Tseng's demonstration based on recent test results of
indicator strips made in 1993 and which allegedly correspond to
Example 13 in Tseng's specification are also not persuasive, in
several respects, with regard to Tseng's argument that its
specification discloses "multiple points-in-time" or progressive
visual indication of the relative wear on the shaving blade.
First, the actual samples are not commensurate in scope with
either Tseng's claims or the particulars described in the
specification for Example 13. Example 13 does not specify how
thick the skin-engaging layer should be over the core. Depending
on how thick it is, the different color of the core will become
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Interference No. 104,482
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exposed or start to become exposed at different times. Whether
there is a progressive or "multiple points-in-time" visual
indication depends on the thickness of the skin-engaging layer.
Also, the curvature of the core beneath the skin-engaging-layer
is not specified in Tseng's Example 13. Whatever is the
curvature used in the actual samples, it directly affects the
manner in which the color below becomes revealed and yet is
without underlying basis in Example 13 of the specification.
Therefore, even if the photographs of Tseng's Exhibits 2063,
2064A, and 2092-2099 show what Tseng states they show, the
showing is not commensurate in scope with what is described in
the specification as Example 13. Thus, the test results of
actual samples produced in 1993 do not support Tseng's argument
as to what its specification discloses.
Secondly, the photographs reflecting the test results do not
show changes through each successive shaving session. For
instance, in all of the photographs of Tseng's Exhibits 2063,
2064A, and 2092-2099, each one depicting usage of a different
shaving cartridge, there is no meaningful change in color
contrast until after at least two shaving sessions. For two
cartridges, (Tseng Exhibit 2064A and 2095), there is no
discernable color contrast between the skin-engaging layer and
the core or non-skin-engaging layer until after three shaving
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sessions. For three cartridges (Tseng Exhibits 2063, 2093 and
2097), there is no discernable color contrast until after four
shaving sessions. Collectively, the results do not reasonably
show that there is a progressive visual indication, even on
average, as the cartridges advance from one shaving session to
the next beginning from when each shaving cartridge is new, which
is required for satisfying the "multiple points-in-time" visual
indication feature of Doroodian's claims.
The photographs of Tseng's Exhibits 2063, 2064A, and 2092-
2099 do not support the testimony of Michael J. Kwiecien (Tseng
Exhibit 2110, 12) to the effect that more and more of the
underlying blue layer is exposed as each shaving cartridge is
used, when observation begins from when each cartridge is unused.
Finally, as is the case with our discussion of Tseng's
illustration on page 5 of its opposition, the testing of the
actual samples includes photographs taken even after the bluecolored
non-skin-engaging layer or core has been exposed. As has
already been explained, there is no basis in Tseng's
specification for continuing use of the shaving cartridge when
the differently colored core has been exposed, i.e., when the
shaving cartridge and/or the skin-engaging layer have reached
their intended useful life.
In any event, apart from the above-discussed problems, the
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photographs presented in Tseng's Exhibits 2064A and 2096-2099
have questionable value. As is pointed out by Doroodian, the
succession of photographs contained in each exhibit are not
illustrating the same portion of the shaving cartridge from shave
to shave. On cross-examination, Ms. Linda Galfetti, a technician
employed by The Gillette Co. who took the photographs in Tseng's
Exhibits 2064A and 2096-2099 (Galfetti declaration 3-6),
testified that within each exhibit the successive photographs are
images taken of "random" portions of the shaving cartridge and
thus the pictures do not show the same area of the shaving
cartridge from shave to shave. (Galfetti Transcript at 36).
Such evidence is intrinsically suspect and cannot firmly indicate
the before-and-after changes in appearance or color contrast in
the wear indicating strip. Note also that without counting the
photographs in Tseng's Exhibits 2064A and 2096-2099, and
directing our attention only to the photographs in Tseng's
Exhibits 2063 and 2092-2095, Exhibit 2094 apparently shows no
change until after two shaving sessions, Exhibits 2092 and 2095
apparently show no change until after three shaving sessions, and
Exhibits 2063 and 2093 apparently show no change until after four
shaving sessions.
We are not persuaded by Doroodian's argument pointing out
the length of time the actual samples have been placed in storage
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after their production in 1993 and noting that Tseng easily could
have made fresh samples. We are also not persuaded by
Doroodian's argument noting the lack of sample degradation
analysis. Doroodian has not presented credible evidence that
Tseng's samples made in 1993 reasonably would have already
reached a point of degradation that makes testing unreliable. We
are also not persuaded by Doroodian's argument that the testing
protocol was not adequately documented by Tseng. The cartridges
were photographed before and after use in each shaving session.
Doroodian has not explained what deficiency exists in the testing
protocol. Michael J. Kwiecien testified that he developed a
shave test protocol and the particulars of that protocol are
noted in Paragraph Nos. 9-11 of his declaration. We are not also
persuaded that records must be kept of each testing user's
preparation habits, shaving routine, or perception of shaving
quality. Each user has his own idiosyncracies that are not
expected to coincide with those of other users. Although the
possibility always exists that a party might have hand-picked or
specially selected participants which shaved only in a particular
way that would skew the test results in favor of a certain
conclusion, there is not a scintilla of evidence that this
occurred despite cross-examination by Tseng of pertinent
witnesses. Accordingly, we do not regard this as a realistic
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possibility such that the shaving habits of each participant must
be documented and/or corroborated to have value.
For all of the foregoing reasons, we reject Tseng's
assertion that its Figures 3-6 are embodiments having a "multiple
points-in-time" indicator strip that provides progressive visual
indication of blade wear. As we stated above, Tseng's
independent claims 113, 117, 118 and 135, and claims dependent
thereon are limited to a "single point-in-time" indicator strip.
Doroodian asserts that the evidence of record does not
support a conclusion that Tseng's claims, if limited to "single
point-in-time" indicator strips, would render obvious party
Doroodian's claims if they are construed so as to require
"multiple points-in-time" indicator strips. On this record, the
assertion is sufficient to make out at least a prima facie case
of nonobviousness. In that regard, party Tseng does not contend
that its claims, if limited to "single point-in-time" indicator
strips, would render obvious party Doroodian's claims if they are
construed so as to require "multiple points-in-time" indicator
strips. We also have no reason to make that conclusion here.
For all of the foregoing reasons, Doroodian's preliminary
motion 1 alleging no interference-in-fact is GRANTED.
B. Tseng's Claim 134 is unpatentable
Party Tseng's claim 134 reads as follows:
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In a disposable razor or razor cartridge comprising at
least one blade mounted in a head or frame, said blade
having a shaving edge, the improvement comprising
indicating means for providing a visual indication of
the relative amount of use of the razor or cartridge,
said indicating means being located on the head or
frame in proximity to the shaving edge of said blade so
as to contact the skin during use, and comprising a
strip of material having a first layer of a first color
and a second layer of a color contrasting with said
first color, wherein said layers are arranged so that
said strip of material changes in appearance as the
disposable razor or razor cartridge is used in shaving.
(Emphasis added).
In its preliminary motion alleging no interference-in-fact,
Doroodian would have us construe Tseng's claim 134 as being
similarly limited to the "single point-in-time" visual indication
feature that characterizes Tseng's other claims. In our view,
however, the recitations of claim 134 is so inconsistent with the
notion of a "single-point-in time" visual indication that the
claim cannot be reasonably construed that way. Note especially
the bolded text of claim 134 quoted above.
On our own initiative, and done only to provide support for
our finding of no interference-in-fact, we conclude that Tseng's
claim 134 is unpatentable under 35 U.S.C. § 112, second
paragraph, for indefiniteness, and alternatively, under 35 U.S.C.
§ 112, first paragraph, for lack of written description in the
specification.
Claim 134 initially recites an "indicating means for
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providing a visual indication of the relative amount of use of
the razor or cartridge." Per 35 U.S.C. § 112, sixth paragraph,
the indicating means covers only those corresponding embodiments
described in the specification and equivalents thereof. The only
visual indication described in Tseng's specification as filed is
the exposure of a different or contrasting color on the core
underneath the sheath or skin-engaging layer. Note page 6, lines
14-17 of the Tseng specification as filed, which states:
Upon use, the sheath material over the skin engaging
surface is typically worn off through use. With
sufficient use, a second colored region represented by
the core is exposed, thus, providing the user with [an]
indication that the shaving unit and/or skin engaging
surface have reached their effective life.
No other kind of visual indication is referred to or discussed
anywhere in Tseng's specification as filed. Yet, claim 134
further recites broadly that the indicating means comprises a
strip of material which changes in appearance as the disposable
razor or razor cartridge is used in shaving. This language
broadens out the visual indication to cover not just exposure of
a different color beneath and equivalents thereof but any
perceived change in appearance, e.g., size, shape, texture,
regularity, consistency, uniformity, opaqueness, transparency,
etc. Thus, the claim is internally inconsistent and that alone
renders the claim indefinite under 35 U.S.C. § 112, second
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paragraph, for failing to particularly point out and distinctly
claim that which the inventor regards as the invention.
Alternatively, even if we ignore the internal inconsistency
and assume that the claim is not limited to the disclosed manner
of visual indication by exposure of a different color of an
initially covered layer, the claim is nonetheless indefinite
because we find that no objectively determinable standard has
been set forth in Tseng's specification for deciding when the
appearance of the strip of material has changed in terms of
overall "appearance" as is broadly recited in the claim. Claim
134 itself also does not set forth an objective standard.
Change in "appearance" as that term is broadly and loosely
used is a matter of degree. No physical object has absolutely
the same identical appearance at two different times. For
instance, dust may have collected on an object in between the
times of observation, or condensation may have developed on its
surface. When would differences sufficiently amount to a "change
in appearance" Based on Tseng's specification and for the
myriad of possible appearance factors mentioned above, that would
not be known to one with ordinary skill in the art.
Notwithstanding its problems under 35 U.S.C. § 112, second
paragraph, claim 134 is also unpatentable under 35 U.S.C. § 112,
first paragraph, for lack of written description in the
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specification as filed. Claim 134 is not an original claim
presented when Tseng's involved application was filed.
Therefore, its own text cannot be regarded as a part of the
original specification of Tseng. In no uncertain terms, claim
134 recites that the strip of material having the two layers of
contrasting colors changes in appearance as the disposable razor
or razor cartridge is used in shaving.
In our discussion of whether there is interference-in-fact,
we have already explained why Tseng's specification as filed does
not provide a written description for any "multiple points-intime"
embodiment that gives a progressive visual indication from
one shaving session to the next. The very same analysis is
applicable to explain why Tseng's specification as filed does not
provide written description for the feature specifying that the
indicator strip changes in appearance of the indicator strip as
the disposable razor or razor cartridge is used in shaving.
Furthermore, the case of lack of written description in the
specification is much stronger here, in the context of Tseng's
claim 134 which goes beyond visual indications from one shaving
session to the next by specifying that the change in appearance
is "as the disposable razor or razor cartridge is used in
shaving." That means from one shaving stroke to the next, even
within the same shaving session, there would be a visual
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indication of some sort. Tseng's disclosure on page 6 of its
specification states that with sufficient use, the second colored
region of a disparate color is exposed does not provide a
description for the specific requirement set forth in Tseng's
claim 134. As has been discussed above in connection with
Doroodian's no interference-in-fact motion, Tseng's Figures 3-6
do not disclose any "multiple points-in-time" embodiment that
gives a progressive visual indication even from shave to shave.
They also do not give a progressive visual indication from stroke
to stroke. As for the testing results submitted by Tseng with
respect to its Example 13, the photographs of Tseng's Exhibits
2063, 2064A and 2092-2099 illustrate only images taken at the
beginning of each successive shaving session. They do not reveal
the state of the indicator strip from shaving stroke to shaving
stroke.
For the foregoing reasons, Tseng's claim 134 is unpatentable
under 35 U.S.C. § 112, first and/or second paragraphs.
Ordinarily, prior to a sua sponte holding of unpatentability
we would ask the parties to address the pertinent issues. Such
an invitation is unnecessary here, because the parties have
already fully briefed the issue of whether Tseng's specification
provides written description for a "multiple points-in-time"
visual indication, in the context of Doroodian's preliminary
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motion 1 alleging no interference-in-fact. To the extent that
party Tseng would like an opportunity to submit arguments
relating to our finding of indefiniteness under 35 U.S.C. § 112,
second paragraph, it may include such arguments in any request
for reconsideration to be filed within thirty (30) days of the
date of this decision.
There also does not appear to be any useful purpose for
party Tseng to propose a substitute claim to replace claim 134,
since we have concurrently found (1) that Tseng's specification
does not provide written description support for "multiple
points-in-time" visual indication, and (2) that Tseng's claims
directed to "single point-in-time" visual indication do not
interfere with Doroodian's involved claims. Therefore, we will
not provide a period for Tseng to propose a substitute claim.
C. Tseng's preliminary motion 1 to add
claims 137 and 138 to its application
Party Tseng had an opportunity to file a responsive motion
under 37 CFR § 1.633(i) when Doroodian filed a preliminary motion
under 37 CFR § 1.633(b) alleging no interference-in-fact. Such a
responsive motion can be to redefine the interference by adding
one or more claims which would interfere with Doroodian's
involved claims even if it is determined that the original
involved claims of Tseng do not. Here, Tseng filed no responsive
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motion under 37 CFR § 1.633(i) and we have determined that there
is no interference-in-fact between the originally involved claims
of the parties designated as corresponding to the count at the
inception of this interference. Consequently, we need not reach
any preliminary motion of Tseng. However, we are willing to give
the benefit of doubt to Tseng who might have thought that it need
not file a responsive motion to add claims because it already had
filed a preliminary motion to add claims 137 and 138 in the
initial round of preliminary motions.
Therefore, we will consider Tseng's preliminary motion 1 to
add claims 137 and 138, but only from the perspective of a
responsive motion under 37 CFR § 1.633(i), for the potential of
these claims to salvage a holding of no interference-in-fact.
Proposed independent claim 137 reads as follows:
A razor comprising a blade member having a shaving
edge, and an external skin engaging member adjacent the
shaving edge of said blade member, said skin engaging
member comprised of: an elongated sheath comprised of a
mixture of a water soluble shaving aid and a water
insoluble material, and a rigid core extending axially
throughout said sheath; wherein said core and said
sheath are fabricated from materials which exhibit
different core and sheath colors, wherein upon use,
said sheath will wear along a skin engaging surface to
expose said different colored core, thus providing an
indication that the skin engaging member has reached
its desired life or that the razor has reached its
desired life. (Emphasis added.)
Proposed dependent claim 138 reads as follows:
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Interference No. 104,482
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The razor of claim 137 wherein said water soluble
shaving aid is selected from the group consisting of
polyethylene oxide, polyvinyl pyrrolidone,
polyacrylamide, hydroxypropyl cellulose, polyvinyl
imidazoline, polyhydroxyethylmethacrylate, silicone
copolymers, sucrose stearate, vitamin E, panthenol,
aloe, essential oils and combinations thereof and said
water insoluble material is selected from the group
consisting of nylon, ethylene vinyl acetate,
polyethylene, polypropylene, polystyrene, polyacetal
and combinations thereof.
Insofar as any visual indication is concerned, the newly
proposed claims, as compared to the originally involved Tseng
claims 113, 117-123, 130-133 and 135, further specify that visual
exposure of the different color of the core is an indication that
"the skin engaging member has reached its desired life or that
the razor has reached its desired life." The addition of this
recitation does not help to remedy the deficiencies of the
original claims for failing to anticipate or render obvious the
involved Doroodian claims which require progressive or "multiple
points-in-time" visual indication of relative blade wear from
shaving session to shaving session. An indication that either
the skin engaging member or the razor has reached its desired
life is still a "single point-in-time" visual indication not
meaningfully different from that specified in Tseng's claims 113,
117-123, 130-133 and 135. We also have already determined that
Tseng's specification does not disclose any embodiment having a
"multiple points-in-time" visual indication. In that light,
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Interference No. 104,482
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Tseng's motion does not make out a prima facie basis for relief.
Because proposed new claims 137 and 138 do not cure the
deficiencies of the original involved claims insofar as the
existence of interfering subject matter is concerned, Tseng's
preliminary motion 1 to add claims 137 and 138 is dismissed.
D. Tseng's other pending preliminary motions
We have determined that there is no interference-in-fact,
i.e., that the claims of the parties are patentable over the
claims of the opponent even if the opponent is deemed to have
been the prior inventor(s). Tseng has filed numerous preliminary
motions seeking to have the Board hold that Doroodian's claims
are unpatentable. The issue before the Board is whether Tseng's
preliminary motions for judgment against Doroodian's claims
should be reached on their merits when the Director, through the
Board, has determined that no interference exists.
While we have held Tseng's claim 134 to be unpatentable, the
determination is not made pursuant to any preliminary motion for
judgment filed by Doroodian, but necessitated by our analysis of
whether the claims of the parties interfere. An unpatentable
claim cannot serve as the basis for an interference.
On page 24 of Tseng's opposition, it is stated:
Since Perkins v. Kwon, 886 F.2d 325, 328, 12
USPQ2d 1308, 1310 (Fed. Cir. 1989), the Federal Circuit
repeatedly has held that the Board should decide issues
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of patentability and priority that have been fully
developed by the parties, even if the Board determines
that there is no interference-in-fact. (Citations
omitted) (Emphasis added).
We have reviewed every case authority cited by Tseng's
counsel. None of them makes the statement or representation that
even if the Board finds that there is no interference-in-fact, it
should nonetheless decide all issues of patentability and
priority which have been fully developed by the parties. Also,
none of them involves the fact situation that the Board has
determined that the claims of the parties do not interfere.
The issue would appear to be one of first impression.
Accordingly, the parties are required to brief the issue of
whether the Board should decide on the merits Tseng's preliminary
motions 2-5 attacking the patentability of Doroodian's claims.
Among other points, the parties must address the following:
1. Are there alternative remedies for Tseng to urge the
unpatentability of Doroodian's claims (e.g., reexamination,
defense to a civil action alleging infringement, protest under
PTO rules) and, if so, are those remedies adequate or inadequate
and why
2. Would consideration of the patentability of Doroodian's
claims in this interference amount to an impermissible post-grant
cancellation proceeding
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Interference No. 104,482
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3. How will the parties be prejudiced if the Board does
not decide the patentability issues raised by Tseng
4. Given that there is no interference-in-fact, would a
decision on the patentability of Doroodian's claims constitute an
"advisory" opinion and, if so, what justification is there for
expending fee revenue to render an advisory opinion
5. Would deciding Tseng's preliminary motions for judgment
be consistent or inconsistent with the decision of the Court of
Customs and Patent Appeals in Nitz v. Ehrenriech, 537 F.2d 539,
190 USPQ 413 (CCPA 1976), vacating an award of priority where it
held there was no interference-in-fact.
The principal brief of each party must be filed within
fourteen (14) days of the date of this communication. Each party
may file a responsive brief within seven (7) days of the opposing
party's principal brief.
E. The Parties' Motions to Suppress Evidence
Doroodian's Motions to Suppress
Doroodian's Motion 1 to suppress seeks to suppress "new"
evidence relied upon by Tseng in Tseng's reply briefs and the
testimony of Drs. Kwiecien and Thomas based on such "new"
evidence, and to deny consideration of Tseng's replies 1-5 for
failure to follow procedures governing the filing of pleadings.
We have, however, not reached the merits of Tseng's preliminary
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motions 2-5. As for Tseng's preliminary motion 1, it does not
make out a prima facie basis for relief and we have had no
occasion to consider Doroodian's opposition or Tseng's reply.
Accordingly, Doroodian's motion 1 to suppress is dismissed.
Doroodian's Motion 2 to suppress seeks to suppress the
testimony of Drs. Kwiecien (TE 2110, 12) and Thomas (Tseng
Exhibit 2115, 85-86) that Tseng relied on in its Oppositions 1
and 2 and Reply 1 relating to the condition and appearance of
S2293-1 strips during shaving tests. Doroodian's Motion 2 to
suppress also seeks to suppress (a) Tseng Exhibits 2063 and 2092-
2095 (photographs of razor cartridges containing S2293-1 strips);
(b) Tseng Exhibits 2064A and 2096-2099 (photographs of portions
of razor cartridges containing S2293-1 strips); and (c) Tseng
Exhibits 2100-2104 (actual razors with cartridges containing
S2293-1 strips after the end of the shaving tests).
To the extent that items sought to be suppressed are not
relied on in Tseng's opposition to Doroodian's preliminary motion
1, motion 2 to suppress is dismissed, because we have not reached
the merits of Doroodian's preliminary motion 2 or Tseng's
preliminary motions 2-5 and because Tseng's preliminary motion 1
does not make out a prima facie basis for relief. Insofar as the
items are relied upon in Tseng's opposition to Doroodian's
preliminary motion 1, the motion to suppress is denied.
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Drs. Kwiecien and Thomas testified as technical experts.
Their opinions are based on the photographs taken of various
razor cartridges or portions thereof. It is not necessary that
either witness must have personally observed the cartridges while
they were being tested, in order for them to form an opinion
based on the photographs of the cartridges and portions of
cartridges during the testing. Even if the photographs and the
used cartridges are regarded as hearsay, it does not mean that
the experts cannot have an opinion as to what they show. See
Fed. R. Evid. 702. In any event, we do not regard the
photographs as hearsay, because simply by themselves they do not
make an assertion. They are not out-of-court statements offered
to prove the truth of the matter asserted. Rather, they
constitute experimental data which may be relied upon by expert
witnesses in the formulation of their respective opinions. The
photographs and used cartridges have been authenticated by the
testimony of Linda Galfetti (Tseng Exhibit 2113). Ms. Galfetti
testified about her receipt of the razor cartridges with
indicator strips, the shaving test procedures, the taking of the
photographs, and the transfer of the used cartridges and the
photographs to Dr. Kwiecien.
Doroodian's alleges that because Tseng has failed to comply
with 43 of the Notice Declaring Interference which is entitled
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Interference No. 104,482
Tseng v. Doroodian-Shoja
"Reliance on scientific tests and data," Tseng's exhibits
including Exhibits 2063, 2064A, and 2092-2104 relating to shave
test data should be suppressed. Even without suppressing such
exhibits, however, we have granted Doroodian's preliminary motion
1 alleging no interference-in-fact. Accordingly, with regard to
alleged non-compliance with 43 of the Notice Declaring
Interference, the motion to suppress is dismissed as moot.
Tseng's Motion to Suppress
Tseng moves to suppress (1) Affidavits I and II and the
declaration of Anthony R. Booth; (2) Doroodian Exhibit 1023, and
(3) the cross-examination testimony of Tseng's witnesses Michael
J. Kwiecien, Stephan P. Williams, Colin J. Clipstone, and Edwin
L. Thomas.
Because Doroodian's preliminary motion 1 and its reply did
not rely on Affidavit II of Anthony R. Booth (Doroodian Exhibit
1016), the motion is dismissed insofar as it seeks to suppress
that affidavit.
Tseng's opposition did not rely on the declaration of Colin
J. Clipstone (Tseng Exhibit 2025). Doroodian's preliminary
motion 1 and its reply did not rely on any portion of the crossexamination
testimony of Colin J. Clipstone. Accordingly, the
motion is dismissed insofar as it seeks to suppress the crossexamination
testimony of Colin J. Clipstone.
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Interference No. 104,482
Tseng v. Doroodian-Shoja
Tseng argues that Booth's declaration is improperly
duplicative of Booth's Affidavit II. The argument is rejected.
The declaration and the affidavit had different contexts. As is
pointed out by Doroodian, Affidavit II has to do with supporting
Doroodian's prima facie case in its preliminary motion 2. The
separate presentation in Booth's declaration is for rebutting
Tseng's positions. While no doubt there is some overlap between
the subject covered, the separation has a rational basis and
appears to help in providing a better organization. At the very
least it eliminates incorporation by reference or mere reference
to another document which was submitted for a different purpose.
Accordingly, the motion is denied insofar as it seeks to suppress
the declaration of Anthony R. Booth on the basis of
duplicativeness or redundancy.
Tseng's motion seeks to suppress the entire crossexamination
transcript of Stephan P. Williams, Colin J.
Clipstone, Edwin L. Thomas, and Michael J. Kwiecien on the ground
that their deposition was not taken before a notary who was
authorized to take such deposition in Massachusetts. The notary,
Mr. Donald R. DePew, is a notary of New York, not Massachusetts
where the deposition took place. In pertinent part, 37 CFR §
1.674(a) states: "(a) A deposition shall be taken before an
officer authorized to administer oaths by the laws of the United
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Interference No. 104,482
Tseng v. Doroodian-Shoja
States or of the place where the examination is held."
Because the cross-examination testimony of Colin J.
Clipstone was not relied upon by either party in connection with
Doroodian's preliminary motion 1 for no interference-in-fact,
insofar as the motion to suppress is directed to the crossexamination
testimony of Colin J. Clipstone is concerned, the
motion is dismissed.
With regard to the cross-examination testimony of Messrs.
Kwiecien, Williams, and Thomas, the motion to suppress is denied.
The first deposition of these witnesses taken by Mr. DePew, a New
York Notary, in the state of Massachusetts occurred on August 2,
2000 with the examination of Dr. Edwin L. Thomas. Dr. Michael J.
Kwiecien was deposed on August 2, 2000, and Dr. Edwin L. Thomas
was deposed on August 10, 11, and 23, 2000. Tseng's objection on
the ground of 37 CFR § 1.674(a) was not made until September 22,
2000. Tseng was aware of the qualification of Mr. DePew at least
by August 16, 2000, when it retained Mr. DePew to take the crossexamination
testimony of Doroodian's witness Dr. Anthony R. Booth
in New York. Tseng's objection was served more than one month
after Tseng had retained the services of Mr. DePew as a notary of
the state of New York. We find, under these circumstances, that
Tseng had either waived the issue on the respective dates of the
depositions of Messrs. Kwiecien, Williams, and Thomas by not
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Interference No. 104,482
Tseng v. Doroodian-Shoja
making an objection at the time the testimony was taken, or made
an untimely objection on September 22, 2000. The procedure for
making an objection when an exhibit is served is not applicable
to live depositions or cross-examinations where objections of
this sort relating to testimony being produced live should be
made at the time the testimony is taken. Tseng has offered no
excuse for not inquiring into the qualification of the notary
public at the commencement of each deposition.
Tseng's motion seeks to suppress the affidavit and
declaration testimony of Dr. Anthony R. Booth on the alleged
ground that Dr. Booth's testimony contains mischaracterizations
and misstatements of various items of evidence about which he has
made a statement. We regard this ground of the motion to
suppress as frivolous and a wasting of the time and resources of
the opposing party and the Board.
Mischaracterizations and misstatements, if they exist,
simply go to the weight of the testimony. If in the view of
Tseng the testimony of Dr. Booth contains mischaracterizations
and/or misstatements, the proper action to take is to point out
the alleged mischaracterizations and/or misstatements during
cross-examination of Dr. Booth and either in an opposition to
Doroodian's motion relying on such testimony, in a reply to
Doroodian's opposition relying on such testimony, or in an
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Interference No. 104,482
Tseng v. Doroodian-Shoja
observation with respect to cross-examination subsequent to
Doroodian's reply relying on such testimony. In a proper
instance where a genuine need exists, Tseng may even seek
permission to file a surreply to respond to a Doroodian reply
relying on such testimony. Tseng's disagreement with the
statements or opinions of Dr. Booth constitutes no basis to
suppress the testimony of Dr. Booth. To the extent that the
motion to suppress is based on Tseng's assertion that the
testimony of Dr. Booth contains mischaracterizations or
misstatements, the motion is denied.
Tseng's motion also seeks to suppress portions of the crossexamination
testimony of Michael J. Kwiecien, and Edwin L.
Thomas, on the basis that Doroodian's citation to their testimony
does not bring out the full story and thus mischaracterizes their
testimony. This ground of suppression based on alleged
incomplete citation is just as frivolous as the attempt to
suppress Dr. Booth's testimony on the ground that it contains
what Tseng regards as mischaracterizations or misstatements. If,
in the opinion of Tseng, Doroodian's citation to transcripts of
testimony does not bring out the full story, Tseng was free to
identify the other parts which in its opinion should also be
considered. Accordingly, insofar as the motion to suppress is
based on alleged incomplete citation to the transcript of Drs.
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Interference No. 104,482
Tseng v. Doroodian-Shoja
Kwiecien and Thomas, the motion is denied.
The motion to suppress further seeks to suppress the
affidavits and declaration of Dr. Anthony R. Booth, on the ground
that Dr. Booth quoted various passages of Doroodian's patent and
then simply stated that the quoted passages constitute an
accurate teaching without any explanation. The failure to
explain only affects the persuasiveness or believability of the
statement and does not constitute an adequate ground for
suppressing Dr. Booth's testimony in that regard. Accordingly,
insofar as the motion to suppress is based on this ground for
suppression, the motion is denied.
Tseng's motion seeks to suppress Paragraph Nos. 9 and 11-12
of Booth's Affidavit I and Paragraph Nos. 9 and 11-12 of Booth's
declaration on the ground that Doroodian's involved patent
constitutes hearsay and those paragraphs of the testimony relies
on such hearsay as proof for such testimony. Tseng's argument is
misplaced. We have reviewed Paragraph Nos. 9 and 11-12 of
Booth's Affidavit I and Paragraph Nos. 30, 39 and 43 of Booth's
declaration but do not find them as presenting opinions on
inventions, technology in general, or state of the art, whose
support lies in the presumed truth of any matter asserted in
Doroodian's involved patent. Rather, with regard to the
specification of Doroodian's involved patent, Dr. Booth's
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Interference No. 104,482
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testimony is about what Tseng's disclosure says, describes, and
teaches. The focal point is the disclosure of Doroodian's
involved patent, which Dr. Booth discusses, not any separate
opinion of Dr. Booth which derives support from the content of
Doroodian's patent specification. Accordingly, insofar as the
motion to suppress is based on alleged reliance of Booth's
testimony on hearsay, the motion is denied.
Tseng's motion seeks to suppress Doroodian's Exhibit 1002
which is simply a clean copy of Doroodian's involved patent
claims. Tseng has failed to demonstrate how Doroodian has relied
on that exhibit to prove the truth of any matter asserted in the
exhibit. In our view, Doroodian has simply relied on that
exhibit as an indication of what the claims say. The motion to
suppress Exhibit 1002 on the ground of hearsay is denied.
Tseng's motion seeks to suppress Doroodian's Exhibit 1004
which a copy of Doroodian's specification as filed. Tseng
asserts that Doroodian has relied on the exhibit as prove of the
matter asserted in the exhibit, citing to pages 3-4 and Paragraph
Nos. 5-9 of Doroodian's preliminary motion 1. However, Tseng has
failed to persuade us that the assertion has merit. Tseng has
not explained why the truth of anything asserted in Doroodian's
specification is even an issue, as compared to just what the
specification says, describes, and teaches. Paragraph Nos. 5-9
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Interference No. 104,482
Tseng v. Doroodian-Shoja
of Doroodian's preliminary motion 1 is under the descriptive
heading "The Involved Doroodian '331 Patent Specification and
Claims," and appear to only set forth a picture of the world as
seen through the eyes of Doroodian's specification and claims.
Insofar as Tseng's motion seeks to suppress Exhibit 1004 as
hearsay, the motion is denied.
Tseng's motion seeks to suppress Doroodian's Exhibit 1018
which is Doroodian's first drawing and written description of the
invention of the count. Because the exhibit has not been relied
on by either party in connection with any preliminary motion, the
motion to suppress this exhibit is dismissed.
Tseng's motion on page 10 makes the plain assertion that
Doroodian's Exhibit 1024 constitutes inadmissible hearsay.
However, no explanation has been provided to demonstrate the
assertion. Tseng does not even inform the Board where that
exhibit has been relied upon by Doroodian to prove anything.
Insofar as the motion to suppress is directed to this exhibit,
the motion is denied.
Tseng's motion to suppress seeks to suppress the testimony
of Dr. Anthony R. Booth on the ground that he is not qualified
under Fed. R. Evid. 702 as an expert to give an opinion on the
subject matter of the invention at issue in this interference.
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Interference No. 104,482
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We are not persuaded and thus the motion to suppress in that
regard is denied.
Not all persons qualified as an expert to give a technical
opinion necessarily have the same background in either education
or specific experience. It is also not necessary that a
qualified expert must have worked on the same goals of research
that produced an item with respect to which he or she would
provide testimony. Fed. R. Evid. 702 is not that narrow, or else
only colleagues working on the same project, having identical
responsibilities, education, and employment history can qualify
as an expert with respect to an issue relating to the project.
Dr. Booth received a Bachelor's degree in Metallurgy in 1963
and a Doctorate degree in Natural Science in 1967. His "years in
the shaving industry" spans from 1970 to 1999 and involved
various aspects of the industry including technical design,
marketing, business management, licensing and evaluation of new
technology. See Paragraph No. 3 of Booth's Affidavit I. Dr.
Booth is a named inventor on at least three U.S. Patents in the
technical field of razor cartridges: U.S. Patent No. 5,692,302
filed on May 22, 1995 and entitled "Razor Cartridges Comprising
Wound Healing Compositions And Methods For Preparing And Using
Same"; U.S. Patent No. 4,247,982 filed April 2, 1979 and entitled
"Skin-flow Control Razor"; and U.S. Patent No. 4,170,821 filed
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Interference No. 104,482
Tseng v. Doroodian-Shoja
December 2, 1977 and entitled "Razor Cartridges."
We are satisfied that Dr. Booth's background passes the
threshold necessary for qualifying as an expert witness under
Fed. R. Evid. 702, for the subject matter of the invention
involved in this interference, generally identifiable as razor
cartridges comprising a wear indicating strip which gives a
visual indication of the relative wear of the shaving blade. The
technology is not rocket science or extremely complicated. Dr.
Booth may not be among the most qualified of all experts to
testify about the invention, but he nonetheless qualifies.
Tseng's argument about the lack of publications authored by Dr.
Booth and his lack of awareness of recent razor cartridges on the
market may diminish the persuasiveness of Dr. Booth's testimony
but do not disqualify him as an expert witness under Fed. R.
Evid. 702, in light of Dr. Booth's other qualifications. Note
especially Dr. Booth's statement that "Up until the early 1990's,
I kept abreast of Schick's razor products and patents directed to
razor products, as well as products and patents of competitors,
as part of my ongoing assignment to assist Warner Lambert in
various activities regarding the litigation concerning U.S.
Patent No. 4,170,821 entitled 'Razor cartridges.'"
Similarly, lack of citation to scholarly work is not a basis
to suppress Dr. Booth's testimony. Dr. Booth may testify based
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Interference No. 104,482
Tseng v. Doroodian-Shoja
on his own background and experience. We also reject Tseng's
apparent position that any time the word "could" is used in Dr.
Booth's testimony that testimony is by definition speculative.
Whether an opinion is speculative depends on the basis for
forming that opinion, and is not determined by whether the
opinion is that something "could" happen.
Tseng's motion to suppress seeks to suppress those portions
of Dr. Anthony R. Booth's Affidavit I and declaration which
simply makes legal conclusions. However, the vast majority of
the portions of Dr. Booth's testimony objected to by Tseng are
not legal conclusions. Tseng appears to believe, erroneously,
that any factual testimony whose purpose is to support an
ultimate conclusion of law constitutes an improper legal
conclusion. For instance, on page 16 of Tseng's motion to
suppress, it is stated:
Booth's statements are not confined to technical
factual issues over which Booth claims expertise.
Rather, Booth's technical factual assertions are made
to support ultimate conclusions of law. (Emphasis
added.)
While the ultimate question of claim scope is indisputably a
conclusion of law, claim construction as a legal conclusion is
based on numerous underlying factual inquiries, e.g., what do the
claims say, what do the words mean to one with ordinary skill in
the art, and what does the specification reveal, etc. Indeed,
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Interference No. 104,482
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almost the entire exercise of claim construction is based on
underlying factual inquiries until the very last step to make the
ultimate conclusion of claim scope. An analogy can be drawn to
the issue of obviousness. While obviousness is a question of
law, it is based on four underlying factual inquiries (1) scope
and content of the prior art; (2) differences between the claimed
invention and the prior art; (3) level of ordinary skill in the
art; and (4) secondary considerations of objective evidence of
nonobviousness. The underlying factual inquiries are no less
factual just because they are relied upon to make a legal
determination on an ultimate issue of law.
Tseng mistakenly views Dr. Booth's testimony on what the
Tseng claims and the Doroodian claims say, describe, disclose, or
teach as testimony on an ultimate legal conclusion. What the
claims say, describe, disclose, or teach is not the end of the
game insofar as the ultimate question of claim construction is
concerned. For instance, because of possible application of the
principles of prosecution history estoppel, claim
differentiation, or an unduly narrow or inconsistent
specification, a claim's scope may not be the same as what the
words of the claim say or teach to one with ordinary skill in the
art. While a technical expert should not testify on the ultimate
legal question of claim scope, his or her testimony with regard
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Interference No. 104,482
Tseng v. Doroodian-Shoja
to how the words of a claim or specification would be understood
or what they would describe, disclose, or teach, is appropriate.
To the extent that Dr. Booth gave mere conclusions on an
ultimate legal question, Tseng's motion has not sufficiently
identified them apart from proper testimony on underlying factual
matters. In essence, Tseng's motion has lumped them all together
as one. We decline to undertake the exercise on Tseng's behalf
to separate out the true ultimate legal conclusions which may
exist from the abundance of factual testimony by Dr. Booth. It
suffices to say here only that to the extent that there is any
testimony by Dr. Booth directly on the ultimate legal conclusion
of claim scope or obviousness, we have given no weight to such
testimony. Dr. Booth's testimony has been considered only
insofar as it concerns the underlying factual issues on which
claim construction or a determination of obviousness is based.
Tseng's motion states that Dr. Booth impermissibly opines on the
enablement and definiteness of Doroodian's claims. We have,
however, not addressed the merits of Tseng's preliminary motions
for judgment against Doroodian's claims.
For the foregoing reasons, insofar as the motion to suppress
seeks to suppress the testimony of Dr. Anthony R. Booth on the
ground that they improperly contain conclusions on questions of
law, the motion is denied. To the extent that there is any such
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Interference No. 104,482
Tseng v. Doroodian-Shoja
testimony from Dr. Anthony R. Booth, however, which gives an
opinion on what is purely a legal conclusion or an ultimate
question of law, we have given it no weight. With or without the
testimony of Dr. Anthony R. Booth, we would have made the same
legal conclusions. Note also Fed. R. Evid. 704(a) which states:
Except as provided in subdivision(b) [concerning the
mental state of a defendant in a criminal case],
testimony in the form of an opinion or inference
otherwise admissible is not objectionable because it
embraces an ultimate issue to be decided by the trier
of fact.
Conclusion
Doroodian's preliminary motion 1 alleging no interferencein-fact
is granted.
Tseng's preliminary motion 1 to add claims is denied.
Tseng's claim 134 is unpatentable under 35 U.S.C. § 112,
first and/or second paragraphs.
The principal brief requested in Section D of this opinion
shall be filed no later than fourteen (14) days of the date of
this communication, and the responsive brief within seven (7)
days of the filing of the opposing party's principal brief.
Notwithstanding the request in Section D for further
briefing, any request for reconsideration of the decision on
Doroodian's preliminary motion 1, Tseng's preliminary motion 1,
and the unpatentability holding of Tseng's claim 134 must be
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Interference No. 104,482
Tseng v. Doroodian-Shoja
filed within the applicable time period specified in 37 CFR
§ 1.640(c), i.e., 14 days.
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
)
JAMESON LEE
) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
Counsel for the Junior Party: Richard A. Inz, Fish & Neave
Counsel for the Senior party: Israel Blum, Morgan & Finnegan,
L.L.P.
- 76 -

THE OPINION ENTERED TODAY IS NOT
BINDING PRECEDENT OF THE BOARD
Filed by: Merits Panel Paper No. 91
Interference Trial Section
Box Interference
Washington, D.C. 20231
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
MINGCHIH M. TSENG
Junior Party
(Application 08/461,318) 8 ,
v.
SIAMAK DOROODIAN-SHOJA
Senior Party
(Patent No. 5,388,331). 9
_______________
Patent Interference No. 104,482
_______________
Before SCHAFER, LEE and TORCZON, Administrative Patent Judges.
LEE, Administrative Patent Judge.
MEMORANDUM OPINION AND JUDGMENT
Introduction
On October 16, 2001, we issued a decision (Paper No. 85)
8
Filed on June 20, 1995. Accorded the benefit of
application 08/269,495, filed July 1, 1994. The real party in
interest is The Gillette Company.
9
Based on application 08/188,244, filed January 28, 1994.
The real party in interest is Arthur D. Little Enterprises, Inc.

Interference No. 104,482
Tseng v. Doroodian-Shoja
granting senior party Doroodian's preliminary motion 1 asserting
no interference-in-fact and denying junior party Tseng's
preliminary motion 1 to add more claims to its involved
application. On the subject of interference-in-fact, we found
that Doroodian had shown that its involved claims are patentably
distinct from the involved claims of Tseng. Thus, parties
Doroodian and Tseng do not claim the same patentable invention.
Neither party has requested reconsideration of our
decision of October 16, 2001.
In our decision, we also ordered parties Doroodian and Tseng
to brief the issue of whether, in light of our holding of no
interference-in-fact, we should reach Tseng's preliminary motions
2-5 for judgment against Doroodian's involved patent claims. The
parties have each filed a principal brief and a reply brief.
Findings of Fact
Numbered findings 1-22 are contained in our decision of
October 16, 2001. In this opinion, we begin with numbered
finding 23.
23. Tseng's preliminary motion 2 is for judgment against
Doroodian's patent claims 1-6 under 35 U.S.C. § 112, first
paragraph, for lack of an enabling disclosure.
24. Tseng's preliminary motion 3 is for judgment against
Doroodian's patent claims 1-6 for indefiniteness under 35 U.S.C.
- 2 -

Interference No. 104,482
Tseng v. Doroodian-Shoja
§ 112, second paragraph.
25. Tseng's preliminary motion 4 is for judgment against
Doroodian's patent claims 1-6 under 35 U.S.C. § 112, first
paragraph, for lack of written description in the specification.
26. Tseng's preliminary motion 5 for judgment against
claims 1-6 of Doroodian's patent claims 1-6 as being unpatentable
over prior art.
27. The prior art asserted by Tseng against Doroodian for
anticipation under 35 U.S.C. § 102 are: (1) U.S. Patent No.
4,170,821 to Booth (against Doroodian's claim 1); (2) U.S. Patent
No. 4,562,644 to Hitchens (against Doroodian's claims 1-4 and 6);
(3) U.S. Patent No. 5,113,585 to Rogers et al. (against
Doroodian's claims 1 and 2); and (4) Sensor ® For Women cartridge
(a commercial product, against Doroodian's claims 1 and 2).
28. The prior art asserted by Tseng against Doroodian for
obviousness under 35 U.S.C. § 103 are: (1) U.S. Patent No.
3,879,844 to Griffith in view of U.S. Patent No. 2,703,451 to
Hensel (against Doroodian's claims 1-6); (2) U.S. Patent No.
4,170,821 to Booth in view of U.S. Patent No. 2,703,451 to Hensel
(against Doroodian's claims 1-6); (3) U.S. Patent No. 4,562,644
to Hitchens in view of U.S. Patent No. 2,703,451 to Hensel
(against Doroodian's claims 1-6); (4) U.S. Patent No. 5,113,585
to Rogers et al. in view of U.S. patent No. 2,703,451 to Hensel
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Interference No. 104,482
Tseng v. Doroodian-Shoja
(against Doroodian's claims 1-6); and (5) Sensor ® For Women in
view of U.S. Patent No. 2,703,451 to Hensel (against Doroodian's
claims 1-6).
29. Tseng's preliminary motion 5 is entitled: "TSENG
CONTINGENT PRELIMINARY MOTION 5" and states the following:
This motion only need be considered if Doroodian's
anticipated motions based on no interference-in-fact
and 35 U.S.C. § 135(b), as well as Tseng Preliminary
Motions 2, 3 and 4 (based on invalidity under 35 U.S.C.
§ 112, first and second paragraphs), are all denied.
In that event, Tseng requests consideration of this
motion.
30. In its principal brief (Paper No. 86), party Tseng
withdrew its still pending preliminary motions 2-4.
31. The only preliminary motion of party Tseng which still
remains pending is Tseng's contingent preliminary motion 5.
Discussion
Party Tseng's preliminary motion 5 is contingent on a number
of circumstances including the denial of Doroodian's preliminary
motion 1 asserting no interference-in-fact. In Paper No. 85,
however, we granted Doroodian's preliminary motion 1 asserting no
interference-in-fact. Therefore, the condition triggering
consideration of Tseng's preliminary motion 5 did not occur.
Accordingly, Tseng's preliminary motion 5 is hereby dismissed.
The parties should note that if our holding of no
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Interference No. 104,482
Tseng v. Doroodian-Shoja
interference-in-fact is reversed upon judicial review, then the
contingencies triggering consideration of Tseng's preliminary
motion 5 will have to be reassessed upon return of the case to
the board subsequent to judicial review.
Party Tseng has withdrawn its preliminary motions 2-4
(Finding 30). Consequently, those preliminary motions are no
longer before us for consideration.
It is no longer necessary to decide whether, given our
conclusion of no interference-in-fact, Tseng's preliminary
motions 2-5 should be decided. Because any final hearing on
issues decided by a 3-judge panel would be in the nature of a
request for reconsideration, Charlton v. Rosenstein, No. 104,148,
2000 Pat. App. Lexis 4 (Bd. Pat. App. & Int. (Trial Section)
2000), and because neither party has requested reconsideration of
our decision of October 16, 2001, we designate the panel decision
of October 16, 2001 as final for purposes of judicial review. 10
Judgment
10
We recognize that Doroodian had filed a preliminary
motion 2 for judgment against Tseng's claims based on late
claiming under 35 U.S.C. § 135(b). The basis for relief under
35 U.S.C. § 135(b) is premised upon the same subject matter being
claimed by both parties Doroodian and Tseng. Our decision
granting Doroodian's preliminary motion 1 asserting no
interference-in-fact implicitly disposed of the preliminary
motion under 35 U.S.C. § 135(b). For the sake of clarity,
Doroodian's preliminary motion 2 is herein dismissed.
- 5 -

Interference No. 104,482
Tseng v. Doroodian-Shoja
It is
ORDERED that judgment as to the subject matter of the count
is herein entered in favor of both junior party MINGCHIH M. TSENG
and senior party SIAMAK DOROODIAN-SHOJA;
FURTHER ORDERED that on this record, junior party MINGCHIH
M. TSENG is entitled to a patent containing its application
claims 113, 117-123, 130-133, 135 and 136, but not application
claim 134, which correspond to the count;
FURTHER ORDERED that on this record, senior party SIAMAK
DOROODIAN-SHOJA is entitled to a patent containing its claims 1-6
which correspond to the count;
FURTHER ORDERED that if there is a settlement agreement,
attention is directed to 35 U.S.C. § 135(c) and 37 CFR § 1.661;
and
FURTHER ORDERED that a copy of this judgment will be entered
as a paper in each party's involved application or patent.
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
)
JAMESON LEE
) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
- 6 -

Interference No. 104,482
Tseng v. Doroodian-Shoja
Counsel for the Junior Party: Richard A. Inz, Esq., Fish & Neave.
Counsel for the senior party: Israel Blum, Esq., Morgan &
Finnegan, L.L.P.
- 7 -

9 F.3d 948 Page 1
9 F.3d 948, 28 U.S.P.Q.2d 1936
(Cite as: 9 F.3d 948)
Briefs and Other Related Documents
United States Court of Appeals,Federal Circuit.
HOGANAS AB, Plaintiff-Appellant,
v.
DRESSER INDUSTRIES, INC., Defendant-
Appellee.
No. 92-1526.
Nov. 10, 1993.
Rehearing Denied; Suggestion for Rehearing In
Banc Declined Jan. 7, 1994.
Patent holder brought action against competitor for
infringement of patent for composition of materials
used for monolithic refractory linings for industrial
furnaces. The United States District Court for the
Western District of Pennsylvania, Timothy K. Lewis,
J., entered summary judgment for competitor, and
patent holder appealed. The Court of Appeals,
Plager, Circuit Judge, held that patent was not
infringed either literally or under doctrine of
equivalents.
Affirmed.
West Headnotes
[1] Federal Courts 170B 766
170B Federal Courts
170BVIII Courts of Appeals
170BVIII(K) Scope, Standards, and Extent
170BVIII(K)1 In General
170Bk763 Extent of Review Dependent
on Nature of Decision Appealed from
170Bk766 k. Summary Judgment.
Most Cited Cases
On appeal of grant of summary judgment, Court of
Appeals independently reviews record to determine
whether any errors of law were made or whether
there are any material issues of fact that remain.
[2] Patents 291 250
291 Patents
291XII Infringement
291XII(A) What Constitutes Infringement
291k249 Patents for Compositions of
Matter
291k250 k. Identity in General. Most
Cited Cases
Patent for composition of materials used for
monolithic refractory linings for industrial furnaces
was not literally infringed by accused composition
using vinyl chloride acetate fibers; “straw-shaped”
limitation in patent imposed requirement that
channel-forming elements of patented product be
hollow, but acetate fibers in accused product were
solid.
[3] Patents 291 165(4)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k165 Operation and Effect of Claims in
General
291k165(4) k. Reading Limitations or
Elements Into Claims, or Disregarding Limitations or
Elements. Most Cited Cases
It is improper for court to add extraneous limitations
to patent claim, that is, limitations added wholly apart
from any need to interpret what patentee meant by
particular words or phrases in claim.
[4] Patents 291 165(3)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k165 Operation and Effect of Claims in
General
291k165(3) k. Construction of Language
of Claims in General. Most Cited Cases
Although patentee can be his own lexicographer,
words of claim will be given their ordinary meaning,
unless it appears that inventor used them differently.
[5] Patents 291 251
291 Patents
291XII Infringement
291XII(A) What Constitutes Infringement
291k249 Patents for Compositions of
Matter
291k251 k. Substitution of Ingredients.
Most Cited Cases
Patent for composition of materials used for
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9 F.3d 948 Page 2
9 F.3d 948, 28 U.S.P.Q.2d 1936
(Cite as: 9 F.3d 948)
monolithic refractory linings for industrial furnaces
was not infringed under doctrine of equivalents by
accused composition using vinyl chloride acetate
fibers; patent holder, through prosecution history
estoppel, relinquished coverage of compositions
employing capillary-sized fibers, and accused fiber
indisputably functioned, in part, through capillary
action.
[6] Patents 291 168(2.1)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k168 Proceedings in Patent Office in
General
291k168(2) Rejection and Amendment
of Claims
291k168(2.1) k. In General. Most
Cited Cases
Essence of “prosecution history estoppel” is that
patentee should not be able to obtain, through
doctrine of equivalents, coverage of subject matter
that was relinquished during prosecution to procure
issuance of patent.
[7] Patents 291 168(2.1)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k168 Proceedings in Patent Office in
General
291k168(2) Rejection and Amendment
of Claims
291k168(2.1) k. In General. Most
Cited Cases
For purposes of prosecution history estoppel, legal
standard for determining what subject matter was
relinquished is objective one, measured from vantage
point of what competitor was reasonably entitled to
conclude, from prosecution history, that applicant
gave up to procure issuance of patent.
[8] Patents 291 324.5
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k324 Appeal
291k324.5 k. Scope and Extent of
Review in General. Most Cited Cases
Because prosecution history estoppel is question of
law, Court of Appeals is free to undertake complete
and independent analysis of this issue whether patent
holder relinquished certain subject matter during
prosecution to procure issuance of patent.
[9] Patents 291 226.7
291 Patents
291XII Infringement
291XII(A) What Constitutes Infringement
291k226.5 Substantial Identity of Subject
Matter
291k226.7 k. Function, Means,
Operation, and Result. Most Cited Cases
Patent for composition of materials used for
monolithic refractory linings for industrial furnaces
was not infringed by accused composition using vinyl
chloride acetate fibers; patent holder failed to show
that solid acetate fibers in accused product were
equivalent of hollow “straw-shaped” elements of
patented composition so as to satisfy
function/way/result test which required patent holder
to show that each limitation of claim was met by
literal or equivalent element of accused product.
*949 Richard Linn, Marks & Murase, Washington,
DC, argued for plaintiff-appellant. Of counsel was
Peter A. Dankin.
Roy W. Hardin, Richards, Medlock & Andrews,
Dallas, TX, argued for defendant-appellee. With
him on the brief was V. Bryan Medlock, Jr. Thomas
R. Felger, Baker & Botts, L.L.P., Dallas, TX,
represented defendant-appellee.
Before PLAGER, Circuit Judge, SMITH, Senior
Circuit Judge, and CLEVENGER, Circuit Judge.
PLAGER, Circuit Judge.
This is a patent infringement case which comes to us
by way of appellant Hoganas AB's (Hoganas) appeal
of the decision of the District Court for the Western
District of Pennsylvania, Civil Action No. 89-304,
granting appellee Dresser Industries, Inc.'s (Dresser)
motion for summary judgment of non-infringement
of U.S. Patent No. 3,982,953 (the '953 patent), both
literally and under the doctrine of equivalents. We
affirm.
I. BACKGROUND
Hoganas is the owner of the '953 patent. FN1 That
patent is directed to a particular composition of
materials used to form monolithic refractory linings
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9 F.3d 948 Page 3
9 F.3d 948, 28 U.S.P.Q.2d 1936
(Cite as: 9 F.3d 948)
for industrial furnaces. FN2 The composition is
configured to minimize the time required for drying
when such a lining is first applied to the furnace in a
wet and pasty state. Attempts had been made to
speed up the drying process, and thus minimize the
required down-time, through the application of heat.
However, these attempts were not entirely successful
because, with the available compositions, there was
no means of relieving the pressure that built up as the
water evaporated into steam. The result was that the
lining might explode during the drying process.
FN1. The patent issued on September 28,
1976, and thus expired on September 28,
1993.
FN2. Refractory linings are linings capable
of withstanding high temperatures, i.e., 1000
°F or more.
With the claimed composition, this problem is solved
through the addition of “straw-shaped, channelforming
elements.” These elements function to form
channels which release the steam that builds up as
heat is applied in the drying process. Accordingly,
they prevent the explosions that occurred with prior
compositions and thus allow the drying process to
progress more quickly.
That patent contains 7 claims, of which claim 1 is the
broadest:
1. In a refractory mass of the type used for casting,
ramming or stamping refractory linings and for
metallurgical ladles or tapping channels and
composed of 60 to 95% by weight of refractory grog
and 40 to 5% by weight of binder, the improvement
which comprises said mass further containing 0.05 to
0.35% by weight, based on the solids content of the
mass without any additive, of straw-shaped, channelforming
elements equally distributed throughout the
mass, whereby rapid drying of the mass is made
possible.
On June 6, 1988, Hoganas filed suit against Dresser
in the District Court for the Central District of
California (where Dresser apparently had an
established place of business), alleging that a
refractory composition manufactured by Dresser
(bearing the “Adtech” trade name), infringed the '953
patent. That action was subsequently transferred to
the District Court for the Western District of
Pennsylvania, the location of the specific Dresser
division which manufactured the Adtech product.
On April 30, 1989, Dresser filed a motion for
summary judgment of non-infringement. In support
of that motion, Dresser submitted relevant excerpts of
the '953 prosecution history, the affidavit of Thomas
R. Kleeb, one of its employees, and an excerpt from
the deposition of James F. Benzel, apparently
Hoganas' expert. In opposition to that motion,
Hoganas submitted Mr. Benzel's affidavit.
*950 On December 17, 1991, the court appointed,
with the consent of the parties, a special master to
decide the motion. On March 20, 1992, the special
master issued a report recommending that the motion
be granted. The special master focused on the
“straw-shaped, channel-forming elements” limitation.
He concluded it was not literally met by the
corresponding element in the Adtech product, vinyl
chloride acetate fibers, because these fibers “are so
fine as to be barely visible by the unaided eye,” and
thus “bear no resemblance to straw.” He also
concluded this limitation was not met under the
doctrine of equivalents because Hoganas, through
prosecution history estoppel, had relinquished
coverage of compositions employing “capillary-size”
fibers, including the acetate fibers in the accused
product. FN3
FN3. According to the Benzel deposition
excerpt, which is unchallenged, a capillarysized
fiber is one having a diameter of 100
microns or less. The Kleeb affidavit, which
is also unchallenged, establishes that the
acetate fibers in the Adtech product have a
diameter of 15 microns. Thus, they are
capillary-sized.
On April 19, 1992, the district court adopted the
special master's report as the opinion of the court FN4 ,
and entered judgment of non-infringement. This
appeal followed.
FN4. Therefore, the special master's
conclusions are the district court's
conclusions.
II. DISCUSSION
A.
[1] On appeal of a grant of summary judgment, we
independently review the record to determine
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9 F.3d 948 Page 4
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(Cite as: 9 F.3d 948)
whether any errors of law were made or whether
there are any material issues of disputed fact that
remain. E.g., London v. Carson Pirie Scott & Co.,
946 F.2d 1534, 1537, 20 U.S.P.Q.2d 1456, 1458
(Fed.Cir.1991). If neither is the case, we must
affirm.
B.
[2] Hoganas argues that the district court erred in its
literal infringement analysis. According to Hoganas,
the court erroneously interpreted the “straw-shaped,
channel-forming elements” limitation to mean
“straw-sized.” FN5 This was error, argues Hoganas,
because that limitation, when properly interpreted,
does not impose any requirement as to size.
FN5. It is undisputed that the acetate fibers
in the accused product are much smaller
than straw.
[3] We agree. It is improper for a court to add
“extraneous” limitations to a claim, that is,
limitations added “wholly apart from any need to
interpret what the patentee meant by particular words
or phrases in the claim.” E.I. Du Pont de Nemours &
Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433,
7 U.S.P.Q.2d 1129, 1131 (Fed.Cir.), cert. denied, 488
U.S. 986, 109 S.Ct. 542, 102 L.Ed.2d 572 (1988).
That appears to be what the district court did,
however, by emphasizing the smallness of the fibers.
The phrase “straw-shaped” unambiguously relates to
shape not size. Thus, it was improper for the court
to use that phrase as the vehicle for incorporating a
size limitation into the claim. FN6
FN6. There is no inconsistency between this
conclusion and our conclusion, discussed
later in this opinion, that Hoganas
relinquished coverage of capillary-sized
elements for purposes of assessing
infringement under the doctrine of
equivalents. By its very nature, the doctrine
of equivalents operates outside the literal
language of claims. Accordingly, through
prosecution history estoppel, an applicant
can be estopped from obtaining coverage of
a particular range of equivalents even
though the estoppel does not find expression
in one of the claim terms.
Nevertheless, we have concluded that any error
committed by the district court in this regard is
harmless. Based on our independent review of the
record, we have concluded the “straw-shaped”
limitation imposes the requirement that the channelforming
elements be hollow. FN7 Because the acetate
fibers in the Adtech product are solid, that product
does not literally infringe any claim of the '953
patent.
FN7. We note that this is the interpretation
adopted by the trial court in Hoganas, A.B.
v. A.P. Green Indus., Inc., 806 F.Supp. 998
at 1003, 26 U.S.P.Q.2d 1795
(W.D.Ga.1992), after a full bench trial.
*951 [4] Our interpretation is fully supported by the
ordinary meaning of the term “straw.” FN8 Although
a patentee can be his own lexicographer, as we have
repeatedly said, the words of a claim “will be given
their ordinary meaning, unless it appears that the
inventor used them differently.” ZMI Corp. v.
Cardiac Resuscitator Corp., 844 F.2d 1576, 1579, 6
U.S.P.Q.2d 1557, 1560 (Fed.Cir.1988) (citing
Envirotech Corp. v. Al George, Inc., 730 F.2d 753,
759, 221 U.S.P.Q. 473, 477 (Fed.Cir.1984)). Based
on our review of the '953 specification and
prosecution history, we are not convinced the '953
inventors used this term differently from its ordinary
meaning. For example, the specification provides
several examples of channel-forming elements, viz.,
“straw or stalks of common cereals, grass, reed or
similar natural materials,” FN9 or “[s]traw-shaped
synthetic elements, e.g., made from paper, plastic or
other organic materials,” FN10 such as “cut pieces of
plastics [sic] sipper straw.” FN11 None of these
examples are identified as being solid, and most if
not all, are unquestionably hollow. FN12 Although
the documentation does not expressly identify the
hollowness characteristic as contributing to the
inventive concept, it is not inconsistent with that
concept either. Moreover, a significant and possibly
critical contribution for this feature can be readily
inferred: it permits the release of steam before the
elements are burned away, and, by reducing the
amount of ash which is formed as the elements burn
out, it reduces the risk that the channels will become
clogged.
FN8. According to Webster's New World
Dictionary, Third Edition, the term “straw”
means “hollow stalks or stems of grain after
threshing” or “a tube of waxed paper,
plastic, etc., used for sucking beverages.”
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9 F.3d 948 Page 5
9 F.3d 948, 28 U.S.P.Q.2d 1936
(Cite as: 9 F.3d 948)
(Emphasis added).
FN9. Col. 1, 11. 65-66.
FN10. Col. 1, 11. 66-68.
FN11. Col. 3, 11. 13-14.
FN12. For example, plastic “sipper” straw is
unquestionably hollow.
For all the foregoing reasons, we conclude one of
skill in the art, the vantage point from which the
proper interpretation of the claim is ultimately
determined FN13 , would not have been put on notice
that the term meant other than what it says. Such a
one would be perfectly justified in giving the term its
ordinary meaning. If Hoganas, who was responsible
for drafting and prosecuting the patent, intended
something different, it could have prevented this
result through clearer drafting. For example, as
discussed at the hearing, the phrases “cylindricallyshaped”
or “rod-shaped” could have been used. It
would not be appropriate for us now to interpret the
claim differently just to cure a drafting error made by
Hoganas. That would unduly interfere with the
function of claims in putting competitors on notice of
the scope of the claimed invention.
C.
[5] Hoganas next argues that the district court erred
in its analysis of the doctrine of equivalents issue.
According to Hoganas, the court erred in concluding
that Hoganas, through prosecution history estoppel,
had relinquished coverage of capillary-sized fibers.
[6][7] The essence of prosecution history estoppel is
that a patentee should not be able to obtain, through
the doctrine of equivalents,*952 coverage of subject
matter that was relinquished during prosecution to
procure issuance of the patent. See Loctite Corp. v.
Ultraseal Ltd., 781 F.2d 861, 870, 228 U.S.P.Q. 90,
96 (Fed.Cir.1985). The legal standard for
determining what subject matter was relinquished is
an objective one, measured from the vantage point of
what a competitor was reasonably entitled to
conclude, from the prosecution history, that the
applicant gave up to procure issuance of the patent.
See Prodyne Enters., Inc. v. Julie Pomerantz, Inc.,
743 F.2d 1581, 1583, 223 U.S.P.Q. 477, 478
(Fed.Cir.1984); Kinzenbaw v. Deere & Co., 741 F.2d
383, 389, 222 U.S.P.Q. 929, 933 (Fed.Cir.1984), cert.
denied, 470 U.S. 1004, 105 S.Ct. 1357, 84 L.Ed.2d
379 (1985). FN15
FN13. See Smithkline Diagnostics Inc. v.
Helena Lab. Corp., 859 F.2d 878, 882, 8
U.S.P.Q.2d 1468, 1471 (Fed.Cir.1988).
Hoganas argues that this interpretation is not
supportable because the phrase “straw-shaped” refers
to the general “elongated and thin” silhouette of the
elements, and thus includes hollow and solid
elements. We disagree. According to a dictionary
definition provided by Hoganas, the term “shape”
means the “external surface” of an object. Since the
hollowness of straw is part of its external surface (in
the sense it is exposed to the external environment
and thus visible to an observer), that characteristic is
part of its shape and thus included within the phrase
“straw-shaped.” FN14 Thus, Hoganas' interpretation is
the one that is insupportable.
FN14. A hollow sphere might present a
different case because its hollowness is not
part of its external surface.
Accordingly, we affirm the district court on the literal
infringement issue.
FN15. Ordinarily, the test for determining
the meaning of a claim term is from the
vantage point of one skilled in the art. See
Smithkline Diagnostics, 859 F.2d at 882, 8
U.S.P.Q.2d at 1471. This test would seem
equally appropriate for determining what
subject matter was relinquished in the
context of prosecution history estoppel.
Our precedent dealing with this specific
question recites that the test is measured
from the vantage point of a reasonable
competitor. See, e.g., Prodyne, 743 F.2d at
1583, 223 U.S.P.Q. at 478. We do not see
these formulations as necessarily
inconsistent-the point is the knowledge of
one reasonably skilled in the art who views
the question from the perspective of a
competitor in the marketplace.
[8] Because prosecution history estoppel is a question
of law, FN16 we are free to undertake a complete and
independent analysis of this issue. FN17
FN16. See Loctite Corp., 781 F.2d at 870,
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9 F.3d 948 Page 6
9 F.3d 948, 28 U.S.P.Q.2d 1936
(Cite as: 9 F.3d 948)
228 U.S.P.Q. at 96.
FN17. See Trayco, Inc. v. United States, 994
F.2d 832, 835 (Fed.Cir.1993).
The examiner during prosecution issued an office
action finally rejecting the claims for obviousness on
the basis of Matheny, U.S. Patent No. 2,224,459.
That patent discloses a composition for making
porous, light-weight refractory insulating bricks
which includes 1-50% FN18 “shredded or comminuted
paper.” One purpose of the paper is to promote
through capillary action FN19 uniform drying of newly
formed bricks prior to firing. FN20 Another is to form
channels for the release of steam caused during firing
by the burn-out of other materials added to the
composition used to make the bricks. FN21
FN18. Matheny does not specify whether
the percentages are by weight or by volume.
FN19. According to the McGraw-Hill
Dictionary of Scientific and Technical
Terms, Second Edition, the phrase
“capillarity,” which is synonymous with
“capillary action,” means a phenomenon that
occurs with respect to liquids : “[t]he action
by which the surface of a liquid where it
contacts a solid is elevated or depressed,
because of the relative attraction of the
molecules of the liquid for each other and
for those of the solid.” This is consistent
with the definition agreed to by the parties at
oral argument.
FN20. Col. 1, 11. 18-21.
FN21. Col. 1, 11. 34-39.
In a subsequent response, Hoganas, without
amending the claims (except to correct a
typographical error), distinguished the Matheny
reference on two principal grounds. The first was
that the claimed composition called for only a small
amount of channel-forming elements-0.05 to 0.35%
by weight-in order to avoid unnecessary porosity
which could impair the strength of the resultant
lining. FN22 Matheny, by contrast, argued Hoganas,
called for a significantly greater amount, i.e. at least
1%, of paper. The second was that, unlike the
comminuted paper in Matheny, the function of the
claimed channel-forming elements was not to achieve
capillary action, a phenomenon which involves liquid
not steam. Consequently, argued Hoganas, “the
thickness of the channel-forming elements would
generally be 100 or more times the thickness of a
material which would provide a capillary action.” FN23
The examiner subsequently allowed the claims.
FN22. This is repeated in the specification.
Col. 2, 11. 34-36.
FN23. The full paragraph of the response in
which this statement was made reads:
[I]t is further clear that [Matheny] is directed
to a method for producing capillary action in
the material. A capillary action is
completely different from the type of action
obtained with the channel-forming elements
of the present invention. Thus, the
thickness of the channel-forming elements
would generally be of a magnitude of 100 or
more times the thickness of a material which
would provide a capillary action.
Moreover, the action of the capillary is
primarily to retain liquid which is opposite
from the purpose of the channels utilized in
the present invention. (Emphasis added).
*953 The district court focused solely on this latter
distinction to conclude that Hoganas had relinquished
coverage of capillary-sized fibers. We see no error
in this conclusion. In our view, a reasonable
competitor could have concluded, from a reading of
the prosecution history, that the examiner relied on
this distinction in allowing the claims, and thus, that
Hoganas had given up coverage of subject matter
incorporating this distinction.
Hoganas argues such a conclusion ignores the rule
that any estoppel created by an applicant's argument
“encompasses all of [the] combined distinctions”
over the cited references. See Read Corp. v. Portec,
Inc., 970 F.2d 816, 824, 23 U.S.P.Q.2d 1426, 1433
(Fed.Cir.1992). According to Hoganas, had the
court properly applied this rule, it would have
concluded that Hoganas gave up at most subject
matter incorporating both of the two principal
distinctions made by Hoganas over Matheny, i.e.,
compositions (1) containing capillary-sized fibers (2)
in percentages greater than 1%, the minimum
percentage specified in Matheny. Since there is no
evidence in the record of the percentage of acetate
fibers that are present in the Adtech product,
according to Hoganas, summary judgment on the
doctrine of equivalents issue was inappropriate.
We cannot agree. The distinction made by Hoganas
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9 F.3d 948, 28 U.S.P.Q.2d 1936
(Cite as: 9 F.3d 948)
based on the percentage of fibers or elements added
to the composition is of questionable validity in terms
of distinguishing over Matheny. As noted, Matheny
did not expressly indicate whether the percentages
disclosed in that reference were by weight or by
volume. However, in the prosecution history,
Hoganas stated that these percentages were by
volume. Thus, a reasonable competitor was entitled
to conclude, from the '953 prosecution history, that
Hoganas' characterization of Matheny was correct,
and thus that the claimed percentages could
substantially overlap the percentages disclosed in
Matheny (for example, a percentage of 1% by volume
could, depending on the circumstances, be the same
as a percentage of 0.35% by weight ). Consequently,
such a one would not be justified in concluding the
examiner relied on this distinction in allowing the
claims, or in concluding the relinquished subject
matter incorporated this distinction. The rule
espoused in Read has no applicability in such a case.
Hoganas next argues that even if an estoppel was
created on the basis of the one distinction, Hoganas
only relinquished coverage of compositions having
elements employing capillary action not capillarysized
elements. This argument, however, is
unpersuasive. As noted earlier, in its response to the
examiner's rejection, Hoganas specifically mentioned
capillary size and indicated that the ability to perform
capillary action was determined by size. A
competitor would thus have been perfectly justified
in concluding that Hoganas gave up coverage of
capillary-sized fibers.
Moreover, considering that the accused fiber
indisputably functions, in part, through capillary
action FN24 , the distinction being argued by Hoganas
would seem to have no significance. The accused
product would still be within the class of relinquished
subject matter, and thus avoid infringement under the
doctrine of equivalents.
FN24. At oral argument Dresser asserted,
and Hoganas did not dispute, that the fiber
shrinks well before the point at which water
turns to steam, and thus forms capillarysized
channels which help distribute the
water more evenly throughout the lining.
As a result, pockets of water are eliminated,
and the risk of explosion is further reduced.
Perhaps Hoganas' point is that the accused fiber does
not operate solely or principally through capillary
action. FN25 But neither does the comminuted paper in
Matheny. According to that reference, the
comminuted paper performs several significant
functions besides distributing water through capillary
action. Consequently, the subject matter that
Hoganas relinquished is not limited to compositions
containing fibers or elements which *954 function
solely or principally through capillary action.
FN25. It is undisputed that the channels
formed by the accused fibers perform the
additional function of releasing the steam
formed as the water evaporates.
For all the foregoing reasons, the district court did
not err in its judgment of non-infringement under the
doctrine of equivalents.
D.
[9] Our conclusion is fully supported through
consideration of the function/way/result test set forth
in Graver Tank & Mfg. Co. v. Linde Air Prods. Co.,
339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097,
reh'g denied, 340 U.S. 845, 71 S.Ct. 12, 95 L.Ed. 620
(1950). To satisfy this test, Hoganas bore the burden
of showing that each limitation of the claim is met by
a literal or equivalent element in the accused product.
See Corning Glass Works v. Sumitomo Elec. U.S.A.,
Inc., 868 F.2d 1251, 1259, 9 U.S.P.Q.2d 1962, 1967
(Fed.Cir.1989). Thus, it bore the burden of showing
that the solid acetate fibers in the accused product
were the equivalent of the hollow “straw-shaped”
elements of the patented composition. In opposition
to the summary judgment motion, Hoganas had to
show that there was a genuine factual dispute on this
issue requiring resolution at trial. See Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 254-55, 106 S.Ct.
2505, 2513-14, 91 L.Ed.2d 202 (1986).
We have concluded that Hoganas did not do so.
Although the acetate fibers in the Adtech product and
the claimed channel-forming elements perform the
same overall function-promoting the rapid drying of
refractory linings by reducing the risk of explosionsthe
two do so in a different way.
The claimed channel-forming elements, being
hollow, provide in their natural state channels for the
release of steam, and during the process of drying the
refractory lining, they are at least partly burned away
FN26 to form channels of expanded diameter. The
acetate fibers in the accused product, by contrast,
function in two steps. First, they shrink well below
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9 F.3d 948 Page 8
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(Cite as: 9 F.3d 948)
the temperature at which water turns to steam, and
thus leave channels which distribute, through
capillary action, the water more evenly throughout
the lining. Second, as the temperature increases and
the liquid turns to steam, the fibers melt and the
channels perform the additional function of releasing
the steam.
FN26. Col. 2, 11. 1-3.
The evidence Hoganas has submitted on this point,
consisting entirely of the Benzel affidavit, is both
incomplete and conclusory. As a matter of law, the
accused fiber does not function in substantially the
same way as the claimed “straw-shaped” element,
and thus is not the equivalent of that element. A
contrary conclusion would be error.
In support of our conclusion, we note that the Patent
& Trademark Office (PTO) granted to Dresser a
patent (U.S. Patent No. 4,430,439) covering the
Adtech product with knowledge of the '953 patent,
which is listed as art of record. FN27 Thus, the PTO
must have considered the accused product to be
nonobvious with respect to the patented composition.
Accordingly, the issuance of that patent is relevant to
the equivalence issue. FN28
FN27. Although that patent is not part of the
record on appeal, it was referred to at the
argument, and is publicly accessible.
Accordingly, we have taken judicial notice
of it. See Fed.R.Evid. 201(b)(2); see also
Standard Havens Prods., Inc. v. Gencor
Indus., Inc., 897 F.2d 511, 514 n. 3, 13
U.S.P.Q.2d 2029, 2031 n. 3 (Fed.Cir.1990)
(appropriate to take judicial notice of PTO
correspondence which is part of the public
record).
FN28. In Atlas Powder Co. v. E.I. Du Pont
De Nemours & Co., 750 F.2d 1569, 1580 n.
3, 224 U.S.P.Q. 409, 417 n. 3
(Fed.Cir.1984), we said that the issuance of
a patent on an accused product or process
was relevant to the equivalence issue if that
patent was issued on the basis of
“unexpected results” over the prior art.
Understanding a finding of “unexpected
results” to be tantamount to a finding of
nonobviousness, we conclude the issuance
of Dresser's patent is relevant to the
equivalence issue in this case.
In further support of our conclusion, we note that
Hoganas' invention is only a modest advance over
Matheny, and thus is not entitled to pioneering status
or the broad range of equivalents which normally
accompanies that status. Moreover, Hoganas is not
entitled to a range of equivalents which would erase
“meaningful structural and functional limitations of
the claim on which the public is entitled to rely in
avoiding infringement.” *955Perkin-Elmer Corp. v.
Westinghouse Elec. Corp., 822 F.2d 1528, 1532, 3
U.S.P.Q.2d 1321, 1324 (Fed.Cir.1987). But that
would be the effect of concluding that the accused
product infringes under the doctrine of equivalents.
As we noted earlier in this opinion, the phrase
“straw-shaped” means that the claimed elements are
hollow, while the accused fiber is solid. A
conclusion that a solid fiber is equivalent to a hollow
“straw-shaped” element would eviscerate the plain
meaning of that phrase. Our conclusion on the
doctrine of equivalents issue is thus fully supported.
III. CONCLUSION
We have considered all the remaining arguments
made by the parties, and find them to be either
unpersuasive or not dispositive. Therefore, we
affirm the judgment of non-infringement by the
district court.
AFFIRMED.
C.A.Fed. (Pa.),1993.
Hoganas AB v. Dresser Industries, Inc.
9 F.3d 948, 28 U.S.P.Q.2d 1936
Briefs and Other Related Documents (Back to top)
• 1993 WL 13013078 (Appellate Brief) Reply Brief
for Plaintiff-Appellant Hoganas AB (Jan. 11, 1993)
Original Image of this Document with Appendix
(PDF)
• 1992 WL 12013759 (Appellate Brief) Brief for
Plaintiff-Appellant Hoganas AB (Nov. 10, 1992)
Original Image of this Document with Appendix
(PDF)
• 1992 WL 12013760 (Appellate Brief) Brief for
Defendant-Appellee Dresser Industries, Inc. (1992)
Original Image of this Document (PDF)
END OF DOCUMENT
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383 F.3d 1337 Page 1
383 F.3d 1337, 65 Fed. R. Evid. Serv. 365, 72 U.S.P.Q.2d 1560
(Cite as: 383 F.3d 1337)
Briefs and Other Related Documents
United States Court of Appeals,Federal Circuit.
KNORR-BREMSE SYSTEME FUER
NUTZFAHRZEUGE GMBH, Plaintiff-Cross
Appellant,
v.
DANA CORPORATION, Defendant-Appellant,
andHaldex Brake Products Corporation, and Haldex
Brake Products AB, Defendants-Appellants.
Nos. 01-1357, 01-1376, 02-1221, 02-1256.
Sept. 13, 2004.
Background: Owner of patent for air disk brake
sued competitors for infringement. The United States
District Court for the Eastern District of Virginia, T.
S. Ellis, III, J., 133 F.Supp.2d 843, found willful
infringement, but declined to order destruction of
data related to infringing brake. Cross-appeals were
taken.
Holdings: The Court of Appeals, Newman, Circuit
Judge, held that:
(1) adverse inference that legal opinion was or would
have been unfavorable should not be drawn from
patent infringement defendant's invocation of
attorney-client and/or work product privileges or
from such defendant's failure to consult with counsel,
overruling Kloster Speedsteel AB v. Crucible Inc.,
793 F.2d 1565, and Fromson v. Western Litho Plate
& Supply Co., 853 F.2d 1568, and
(2) refusal to order destruction of data was
reasonable.
Vacated and remanded.
Dyk, Circuit Judge, concurred in part, dissented in
part, and filed opinion.
West Headnotes
[1] Patents 291 319(3)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k319 Damages
291k319(3) k. Right to Increase
Damages Awarded. Most Cited Cases
Patents 291 325.11(3)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k325 Costs
291k325.11 Disbursements in General
291k325.11(2) Attorney Fees
291k325.11(3) k. Award to
Plaintiff. Most Cited Cases
Determination of whether patent infringement was
“willful,” for purpose of enhancing damages or
awarding attorney fees, is made on consideration of
totality of circumstances. 35 U.S.C.A. § § 284, 285.
[2] Patents 291 227
291 Patents
291XII Infringement
291XII(A) What Constitutes Infringement
291k227 k. Intent or Purpose, and
Knowledge. Most Cited Cases
Adverse inference that legal opinion was or would
have been unfavorable should not be drawn from
patent infringement defendant's invocation of
attorney-client or work product privileges, or from
such defendant's failure to consult with counsel, for
purpose of determining whether infringement was
“willful.” 35 U.S.C.A. § § 284, 285.
[3] Patents 291 325.11(2.1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k325 Costs
291k325.11 Disbursements in General
291k325.11(2) Attorney Fees
291k325.11(2.1) k. In General.
Most Cited Cases
Award of attorney fees in exceptional patent case is
not improperly punitive, even if no actual damages
are awarded. 35 U.S.C.A. § 285.
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

383 F.3d 1337 Page 2
383 F.3d 1337, 65 Fed. R. Evid. Serv. 365, 72 U.S.P.Q.2d 1560
(Cite as: 383 F.3d 1337)
[4] Patents 291 227
291 Patents
291XII Infringement
291XII(A) What Constitutes Infringement
291k227 k. Intent or Purpose, and
Knowledge. Most Cited Cases
Existence of substantial defense to patent
infringement is not per se sufficient to defeat liability
for willful infringement. 35 U.S.C.A. § § 284, 285.
[5] Patents 291 324.56
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k324 Appeal
291k324.56 k. Harmless Error. Most
Cited Cases
District court's refusal to require destruction of
technical data that were obtained by patent
infringement defendants for infringing device was
not reversible error; parts of data were obtained
before issuance of patent, and some data related to
non-infringing aspects including design-around
efforts and safety studies.
Patents 291 328(2)
291 Patents
291XIII Decisions on the Validity, Construction,
and Infringement of Particular Patents
291k328 Patents Enumerated
291k328(2) k. Original Utility. Most Cited
Cases
5,927,445. Cited.
*1338 Jeffrey D. Sanok, Crowell & Moring L.L.P.,
of Washington, DC, argued for plaintiff-cross
appellant. With him on the brief were Michael I.
Coe, Herbert I. Cantor and Karen Canaan. Of
counsel were John C. Lenahan, Edward R. Murray
and Clifton Elgarten.
Ellen A. Efros, Rader, Fishman & Grauer, PLLC, of
Washington, DC, for defendant-appellant Dana
Corporation, joined in the brief of Haldex Brake
Products AB, et al.
Stanley H. Lieberstein, St. Onge Steward Johnston &
Reens, LLC, of Stamford, CT, argued for defendantsappellants
Haldex Brake Products AB and Haldex
Brake Products Corporation; and defendantappellant
Dana Corporation. With him on the brief
for Haldex were Wesley W. Whitmyer, Jr. and
Richard J. Basile. Of counsel were James P. Jeffry,
Michael G. Gabriel, and David W. Aldrich.
*1339 Ralph P. Albrecht, Venable LLP, of
Washington, DC, for amicus curiae Bar Association
of the District of Columbia-Patent, Trademark &
Copyright Section. With him on the brief was Lynn
E. Eccleston, The Eccleston Law Firm, of
Washington, DC.
Norman L. Balmer, Washington & Lee University
School of Law, of Lexington, VA, for amicus curiae
Lexington Patent Policy Group.
Nicholas M. Cannella, Fitzpatrick, Cella, Harper &
Scinto, of New York, NY, for amicus curiae New
York Intellectual Property Law Association. With
him on the brief was F. Christopher Mizzo. Of
counsel on the brief was Melvin C. Garner, Darby &
Darby P.C., of New York, NY.
Donald S. Chisum, Morrison & Foerster LLP, of Palo
Alto, California, for amici curiae BEA Systems, Inc.
and Novell, Inc. With him on the brief was Emily A.
Evans. Of counsel were Michael A. Jacobs and
Alison M. Tucher, of San Francisco, CA.
Donald R. Dunner, Finnegan, Henderson, Farabow,
Garrett & Dunner, L.L.P., of Washington, DC, for
amicus curiae American Intellectual Property Law
Association. With him on the brief was Jeffrey I.D.
Lewis, Patterson, Belknap, Webb & Tyler, LLP, of
New York, NY. Also on the brief was David G.
Conlin, Edwards & Angell, LLP, of Boston, MA.
George E. Hutchinson, Executive Director, Federal
Circuit Bar Association, of Washington, DC, for
amicus curiae Federal Circuit Bar Association. With
him on the brief was Robert L. Baechtold,
Fitzpatrick, Cella, Harper & Scinto, of New York,
NY.
Jerold A. Jacover, Brinks Hofer Gilson & Lione, of
Chicago, IL, for amicus curiae The City of Chicago.
With him on the brief were Roy E. Hofer, Thomas J.
Filarski, Meredith Martin Addy and Janet A. Pioli.
Kelly L. Morron, Chadbourne & Parke LLP, of New
York, NY, for amicus curiae The Association of the
Bar of the City of New York. With him on the brief
was Peter A. Sullivan, Hughes Hubbard & Reed LLP,
of New York, NY.
Steven L. Friedman, Dilworth Paxson LLP, of
Philadelphia, PA, for amicus curiae Securities
Industry Association.
Ronald E. Myrick, Chair, Amicus Brief Committee,
Intellectual Property Owners Association, of
Washington, DC, for amicus curiae Intellectual
Property Owners Association. With him on the brief
were Paul H. Berghoff and Joshua R. Rich,
McDonnell Boehnen Hulbert & Berghoff, of
Chicago, IL. Of counsel was Herbert C. Wamsley,
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Intellectual Property Owners Association, of
Washington, DC.
Frank E. Scherkenbach, Fish & Richardson P.C., of
Boston, MA, for amicus curiae Microsoft
Corporation. With him on the brief were John A.
Dragseth, of Minneapolis, MN; and Jennifer K.
Bush, of San Diego, CA.
Steven C. Sereboff, SoCal IP Law Group, of
Westlake Village, CA, for amicus curiae Conejo
Valley Bar Association. With him on the brief was
Karol M. Pessin.
Edward R. Reines, Weil, Gotshal & Manges LLP, of
Redwood Shores, CA, for amici curiae United States
Council for International Business, et al. With him
on the brief were Matthew D. Powers and Steven C.
Carlson.
Elizabeth H. Rader, Center for Internet & Society,
Stanford Law School, of Stanford, CA, for amicus
curiae Public Patent Foundation. With her on the
brief was Daniel B. Ravicher, Executive Director,
Public Patent Foundation, of New York, NY.
*1340 Philip T. Petti, Fitch, Even, Tabin & Flannery,
of Chicago, IL, for amicus curiae The Association of
Patent Law Firms. With him on the brief was G.
Paul Edgell.
Mitchell G. Stockwell, Kilpatrick Stockton LLP, of
Atlanta, GA, for amicus curiae Association of
Corporate Counsel. With him on the brief was
Cynthia B. Rothschild, of Winston-Salem, NC.
Joshua D. Sarnoff, Glushko-Samuelson Intellectual
Property Law Clinic, Washington College of Law,
American University, of Washington, DC, for amicus
curiae Public Knowledge.
Brian P. Barrett, Eli Lilly and Company, of
Indianapolis, IN, for amicus curiae Biotechnology
Industry Organization. With him on the brief was
Thomas S. Borecki, Baxter Healthcare Corporation,
of Deerfield, IL.
Joel W. Nomkin, Brown & Bain, P.A., of Phoenix,
AZ, for amicus curiae Semiconductor Industry
Association.
William A. Rakoczy, Lord, Bissell & Brook LLP, of
Chicago, IL, for amicus curiae Generic
Pharmaceutical Association. With him on the brief
was Hugh S. Balsam.
L.J. Chris Martiniak, Heller Ehrman White &
McAuliffe LLP, of San Francisco, CA, for amici
curiae Computer Associates International, Inc., et al.
Dennis W. Archer, President, American Bar
Association, of Chicago, IL, for amicus curiae
American Bar Association. With him on the brief
were Richard P. Beem and Joseph N Welch II.
L. Gene Spears, Baker Botts, L.L.P., of Houston, TX,
for amicus curiae Houston Intellectual Property Law
Association.
John E. Peterson, Paul, Hastings, Janofsky & Walker,
LLP, of San Diego, CA, for amicus curiae San Diego
Intellectual Property Law Association. With him on
the brief were Douglas E. Olson and Howard N.
Wisnia.
Before MAYER, Chief Judge, NEWMAN, LOURIE,
CLEVENGER, RADER, SCHALL, BRYSON,
GAJARSA, LINN, DYK, and PROST, Circuit
Judges. FN* FN* MICHEL, Circuit Judge, took no part
in the consideration or decision of this case.
NEWMAN, Circuit Judge.
Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH is
the owner of United States Patent No. 5,927,445 (the
445 patent) entitled “Disk Brake For Vehicles Having
Insertable Actuator,” is sued on July 27, 1999. At
trial to the United States District Court for the
Eastern District of Virginia, the appellants Dana
Corporation, Haldex Brake Products Corporation,
and Haldex Brake Products AB were found liable for
infringement and willful infringement. FN1 No
damages were awarded, for there were no sales of the
infringing brakes. Based on the finding of willful
infringement the court awarded partial attorney fees
under 35 U.S.C. § 285.
FN1. Knorr-Bremse Systeme Fuer
Nutzfahrzeuge GmbH v. Dana Corp., 133
F.Supp.2d 833 (E.D.Va.2001) (partial
summary judgment) (“Knorr-Bremse I ”);
133 F.Supp.2d 843 (E.D.Va.2001) (findings
of fact and conclusions of law) (“Knorr-
Bremse II ”); Civ. A. No. 00-803-A
(E.D.Va. Mar. 7, 2001) (final judgment);
No. 00-803-A (E.D.Va. Apr. 9, 2001)
(amended final judgment) (“Knorr-Bremse
III ”).
The appellants seek reversal of the finding of willful
infringement, arguing that an adverse inference
should not have been drawn from the withholding by
Haldex of an opinion of counsel concerning the
patent issues, and from the failure of Dana to obtain
its own opinion of counsel. Applying*1341 our
precedent, the district court inferred that the opinion
of counsel withheld by Haldex was unfavorable to
the defendants. After argument of the appeal we
took this case en banc in order to reconsider our
precedent with respect to these aspects. The parties
were asked to submit additional briefing on four
questions, and amicus curiae briefs were invited. FN2
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383 F.3d 1337 Page 4
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(Cite as: 383 F.3d 1337)
Knorr-Bremse, 344 F.3d 1336 (Fed.Cir.2003) (En
banc Order).
FN2. Amicus curiae briefs were filed by the
American Bar Association; American
Intellectual Property Law Association;
Association of the Bar of the City of New
York; Association of Corporate Counsel;
Association of Patent Law Firms; Bar
Association of the District of Columbia;
BEA Systems, Inc. and Novell, Inc.;
Biotechnology Industry Organization; The
City of Chicago; Computer Associates
International, Inc. et al.; Conejo Valley Bar
Association; Federal Circuit Bar
Association; Generic Pharmaceutical
Association; Houston Intellectual Property
Law Association; Intellectual Property
Owners Association; Lexington Patent
Policy Group; Microsoft Corporation; New
York Intellectual Property Law Association;
Public Knowledge; Public Patent
Foundation; San Diego Intellectual Property
Law Association; Securities Industry
Association; Semiconductor Industry
Association; and the United States Council
for International Business, Center for
Advanced Study & Research on Intellectual
Property et al.
We now hold that no adverse inference that an
opinion of counsel was or would have been
unfavorable flows from an alleged infringer's failure
to obtain or produce an exculpatory opinion of
counsel. Precedent to the contrary is overruled. We
therefore vacate the judgment of willful infringement
and remand for re-determination, on consideration of
the totality of the circumstances but without the
evidentiary contribution or presumptive weight of an
adverse inference that any opinion of counsel was or
would have been unfavorable.
BACKGROUND
Knorr-Bremse, a German corporation, manufactures
air disk brakes for use in heavy commercial vehicles,
primarily Class 6-8 trucks known as eighteen
wheelers, semis, or tractor-trailers. Knorr-Bremse
states that air disk brake technology is superior to the
previously dominant technology of hydraulically or
pneumatically actuated drum brakes, and that air disk
brakes have widely supplanted drum brakes for
trucks in the European market.
Dana, an American corporation, and the Swedish
company Haldex Brake Products AB and its United
States affiliate, agreed to collaborate to sell in the
United States an air disk brake manufactured by
Haldex in Sweden. The appellants imported into the
United States about 100 units of a Haldex brake
designated the Mark II model. Between 1997 and
1999 the Mark II brake was installed in
approximately eighteen trucks of Dana and various
potential customers. The trucks were used in
transport, and brake performance records were
required to be kept and provided to Dana. Dana and
Haldex advertised these brakes at trade shows and in
industry media in the United States.
Knorr-Bremse in December 1998 orally notified
Dana of patent disputes with Haldex in Europe
involving the Mark II brake, and told the appellants
that patent applications were pending in the United
States. On August 31, 1999 Knorr-Bremse notified
Dana in writing of infringement litigation against
Haldex in Europe, and that Knorr-Bremse's United
States 445 patent had issued on July 27, 1999.
Knorr-Bremse filed this infringement suit on May 15,
2000. In September 2000 Haldex presented to the
district court a modified brake design designated the
Mark III, and moved for a summary declaration of
non-infringement by the Mark *1342 III brake.
Knorr-Bremse in turn moved for summary judgment
of literal infringement by the Mark II brake, and
infringement by the Mark III either literally or under
the doctrine of equivalents. After a hearing in
November 2000 the district court granted Knorr-
Bremse's motion for summary judgment of literal
infringement by the Mark II brake, and set for trial
the issues with respect to the Mark III. Before and
after the judgment of infringement by the Mark II,
Dana and others continued to operate trucks in the
United States containing the Mark II brake.
Following a bench trial in January 2001, the district
court found literal infringement by the Mark III
brake.
On the issue of willful infringement, Haldex told the
court that it had consulted European and United
States counsel concerning Knorr-Bremse's patents,
but declined to produce any legal opinion or to
disclose the advice received, asserting the attorneyclient
privilege. Dana stated that it did not itself
consult counsel, but relied on Haldex. Applying
Federal Circuit precedent, the district court found:
“It is reasonable to conclude that such opinions were
unfavorable.” The court discussed the evidence for
and against willful infringement and concluded that
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“the totality of the circumstances compels the
conclusion that defendants' use of the Mark II air disk
brake, and indeed Dana's continued use of the Mark
II air disk brake on various of its vehicles [after the
judgment of infringement] amounts to willful
infringement of the 445 patent.” Knorr-Bremse II,
133 F.Supp.2d at 863. Based on the finding of
willful infringement the court found that the case was
“exceptional” under 35 U.S.C. § 285, and awarded
Knorr-Bremse its attorney fees for the portion of the
litigation that related to the Mark II brake, but not the
Mark III.
The appellants appeal only the issue of willfulness of
the infringement and the ensuing award of attorney
fees. Knorr-Bremse cross-appeals, seeking to enjoin
the appellants from retaining and using the brake
performance records and test data obtained through
use of the Mark II brake.
I
WILLFUL INFRINGEMENT
In discussing “willful” behavior and its
consequences, the Supreme Court has observed that
“[t]he word ‘willful’ is widely used in the law, and,
although it has not by any means been given a
perfectly consistent interpretation, it is generally
understood to refer to conduct that is not merely
negligent,” McLaughlin v. Richland Shoe Co., 486
U.S. 128, 133, 108 S.Ct. 1677, 100 L.Ed.2d 115
(1988), the Court citing conventional definitions such
as “voluntary,” “deliberate,” and “intentional.” Id.
The concept of “willful infringement” is not simply a
conduit for enhancement of damages; it is a
statement that patent infringement, like other civil
wrongs, is disfavored, and intentional disregard of
legal rights warrants deterrence. Remedy for willful
infringement is founded on 35 U.S.C. § 284 (“the
court may increase the damages up to three times the
amount found or assessed”) and 35 U.S.C. § 285
(“the court in exceptional cases may award
reasonable attorney fees to the prevailing party”).
See generally Aro Mfg. Co. v. Convertible Top
Replacement Co., 377 U.S. 476, 508, 84 S.Ct. 1526,
12 L.Ed.2d 457 (1964) (the patentee “could in a case
of willful or bad-faith infringement recover punitive
or ‘increased’ damages under the statute's trebling
provision”).
[1] Determination of willfulness is made on
consideration of the totality of the circumstances, see
*1343Gustafson, Inc. v. Intersystems Indus. Prods.,
Inc., 897 F.2d 508, 510 (Fed.Cir.1990), and may
include contributions of several factors, as compiled,
e.g., in Rolls-Royce Ltd. v. GTE Valeron Corp., 800
F.2d 1101, 1110 (Fed.Cir.1986) and Read Corp. v.
Portec, Inc., 970 F.2d 816, 826-27 (Fed.Cir.1992).
These contributions are evaluated and weighed by the
trier of fact, for, as this court remarked in Rite-Hite
Corp. v. Kelley Co., 819 F.2d 1120, 1125-26
(Fed.Cir.1987), “ ‘[w]illfulness' in infringement, as in
life, is not an all-or-nothing trait, but one of degree.
It recognizes that infringement may range from
unknowing, or accidental, to deliberate, or reckless,
disregard of a patentee's legal rights.”
Fundamental to determination of willful infringement
is the duty to act in accordance with law.
Reinforcement of this duty was a foundation of the
formation of the Federal Circuit court, at a time when
widespread disregard of patent rights was
undermining the national innovation incentive. See
Advisory Committee On Industrial Innovation Final
Report, Dep't of Commerce (Sep.1979). Thus in
Underwater Devices, Inc. v. Morrison-Knudsen Co.,
717 F.2d 1380 (Fed.Cir.1983) the court stressed the
legal obligation to respect valid patent rights. The
court's opinion quoted the infringer's attorney who,
without obtaining review by patent counsel of the
patents at issue, advised the client to “continue to
refuse to even discuss the payment of a royalty.” Id.
at 1385. The attorney advised that “[c]ourts, in
recent years, have-in patent infringement cases-found
the patents claimed to be infringed upon invalid in
approximately 80% of the cases,” and that for this
reason the patentee would probably not risk filing
suit. Id. On this record of flagrant disregard of
presumptively valid patents without analysis, the
Federal Circuit ruled that “where, as here, a potential
infringer has actual notice of another's patent rights,
he has an affirmative duty to exercise due care to
determine whether or not he is infringing,” including
“the duty to seek and obtain competent legal advice
from counsel before the initiation of any possible
infringing activity.” Id. at 1389-90.
Underwater Devices did not raise any issue of
attorney-client privilege, while applying precedent
that a finding of willfulness requires the factfinder to
find by clear and convincing evidence “that the
infringer acted in disregard of the patent,” citing
Stickle v. Heublein, Inc., 716 F.2d 1550, 1565
(Fed.Cir.1983). The aspect of privilege arose in
Kloster Speedsteel AB v. Crucible Inc., 793 F.2d
1565 (Fed.Cir.1986), where the Federal Circuit
observed that the infringer “has not even asserted that
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it sought advice of counsel when notified of the
allowed claims and [the patentee's] warning, or at any
time before it began this litigation,” and held that the
infringer's “silence on the subject, in alleged reliance
on the attorney-client privilege, would warrant the
conclusion that it either obtained no advice of
counsel or did so and was advised that its importation
and sale of the accused products would be an
infringement of valid U.S. patents.” Id. at 1580.
Thus arose the adverse inference, reinforced in
Fromson v. Western Litho Plate & Supply Co., 853
F.2d 1568 (Fed.Cir.1988), and establishing the
general rule that “a court must be free to infer that
either no opinion was obtained or, if an opinion were
obtained, it was contrary to the infringer's desire to
initiate or continue its use of the patentee's
invention.” Id. at 1572-73. Throughout this
evolution the focus was not on attorney-client
relationships, but on disrespect for law. However,
implementation of this precedent has resulted in
inappropriate burdens on the attorney-client
relationship.
We took this case en banc to review this precedent.
While judicial departure from *1344 stare decisis
always requires “special justification,” Arizona v.
Rumsey, 467 U.S. 203, 212, 104 S.Ct. 2305, 81
L.Ed.2d 164 (1984), the “conceptual underpinnings”
of this precedent, see id., have significantly
diminished in force. The adverse inference that an
opinion was or would have been unfavorable,
flowing from the infringer's failure to obtain or
produce an exculpatory opinion of counsel, is no
longer warranted. Precedent authorizing such
inference is overruled.
We answer the four questions presented for en banc
review, as follows:
QUESTION 1
When the attorney-client privilege and/or workproduct
privilege is invoked by a defendant in an
infringement suit, is it appropriate for the trier of fact
to draw an adverse inference with respect to willful
infringement
[2] The answer is “no.” Although the duty to respect
the law is undiminished, no adverse inference shall
arise from invocation of the attorney-client and/or
work product privilege.
The Supreme Court describes the attorney-client
privilege as “the oldest of the privileges for
confidential communications known to common
law,” and has stressed the public purpose
to encourage full and frank communication between
attorneys and their clients and thereby promote
broader public interests in the observance of law and
administration of justice. The privilege recognizes
that sound legal advice or advocacy serves public
ends and that such advice or advocacy depends upon
the lawyer's being fully informed by the client.
Upjohn Co. v. United States, 449 U.S. 383, 389, 101
S.Ct. 677, 66 L.Ed.2d 584 (1981). Professor
Wigmore has elaborated:The lawyer must have the
whole of his client's case, or he cannot pretend to
give any useful advice.... That the whole will not be
told to counsel unless the privilege is confidential, is
perfectly clear. A man who seeks advice, seeks it
because he believes that he may do so safely; he will
rarely make disclosure which may be used against
him; rather than create an adverse witness in his
lawyer, he will refuse all private arbitration, and take
the chance of a trial.
8 J. Wigmore, Evidence in Trials at Common Law §
2291 at 548 (McNaughton rev.1961). See Hunt v.
Blackburn, 128 U.S. 464, 470, 9 S.Ct. 125, 32 L.Ed.
488 (1888) (the attorney-client privilege is designed
to encourage candid exchange of information).
Although this court has never suggested that opinions
of counsel concerning patents are not privileged, the
inference that withheld opinions are adverse to the
client's actions can distort the attorney-client
relationship, in derogation of the foundations of that
relationship. We conclude that a special rule
affecting attorney-client relationships in patent cases
is not warranted. See Swidler & Berlin v. United
States, 524 U.S. 399, 410, 118 S.Ct. 2081, 141
L.Ed.2d 379 (1998) (ad hoc exceptions to privilege
may cause “general erosion”). There should be no
risk of liability in disclosures to and from counsel in
patent matters; such risk can intrude upon full
communication and ultimately the public interest in
encouraging open and confident relationships
between client and attorney. As Professor
McCormick has explained, the attorney-client
privilege protects “interests and relationships which
... are regarded as of sufficient social importance to
justify some sacrifice of availability of evidence
relevant to the administration of justice.” 1
McCormick on Evidence § 72, 299 (5th ed.1999).
*1345 There is precedent for the drawing of adverse
inferences in circumstances other than those
involving attorney-client relationships; for example
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when a party's refusal to testify or produce evidence
in civil suits creates a presumption of an intent to
withhold damaging information that is material to the
litigation. FN3 However, the courts have declined to
impose adverse inferences on invocation of the
attorney-client privilege. See, e.g., Nabisco, Inc. v.
PF Brands, Inc., 191 F.3d 208, 225-26 (2nd
Cir.1999) (no adverse inference from the defendant's
refusal to produce an opinion letter of counsel in a
trademark dilution case), overruled on other grounds
sub nom. Moseley v. Secret Catalogue, 537 U.S. 418,
123 S.Ct. 1115, 155 L.Ed.2d 1 (2003); Parker v.
Prudential Insurance Co., 900 F.2d 772, 775 (4th
Cir.1990) (no negative inference from assertion of
attorney-client privilege). We now hold that this
rule applies to the same extent in patent cases as in
other areas of law. A defendant may of course
choose to waive the privilege and produce the advice
of counsel. However, the assertion of attorney-client
and/or work-product privilege and the withholding of
the advice of counsel shall no longer entail an
adverse inference as to the nature of the advice.
FN3. For example, in Baxter v. Palmigiano,
425 U.S. 308, 318, 96 S.Ct. 1551, 47
L.Ed.2d 810 (1976) the Court confirmed that
in civil proceedings fact finders may draw
adverse inferences against a party who
refuses to testify. See also, e.g.,
International Chemical Workers Union v.
Columbian Chemicals Co., 331 F.3d 491,
497 (5th Cir.2003) (“when a subpoena is
ignored, a party can draw an adverse
inference”); Penalty Kick Management, Ltd.
v. Coca Cola Co., 318 F.3d 1284, 1294
(11th Cir.2003) (adverse inference drawn
from a party's failure to preserve evidence
when predicated on bad faith);
MacNaughton v. United States, 888 F.2d
418, 423 (6th Cir.1989) (permitting adverse
inference from failure to call witnesses
peculiarly within the party's power to
produce).
QUESTION 2
When the defendant had not obtained legal advice, is
it appropriate to draw an adverse inference with
respect to willful infringement
The answer, again, is “no.” The issue here is not of
privilege, but whether there is a legal duty upon a
potential infringer to consult with counsel, such that
failure to do so will provide an inference or
evidentiary presumption that such opinion would
have been negative.
Dana Corporation did not seek independent legal
advice, upon notice by Knorr-Bremse of the
pendency of the 445 application in the United States
and of the issuance of the 445 patent, followed by
the charge of infringement. In tandem with our
holding that it is inappropriate to draw an adverse
inference that undisclosed legal advice for which
attorney-client privilege is claimed was unfavorable,
we also hold that it is inappropriate to draw a similar
adverse inference from failure to consult counsel.
The amici curiae describe the burdens and costs of
the requirement, as pressed in litigation, for early and
full study by counsel of every potentially adverse
patent of which the defendant had knowledge, citing
cases such as Johns Hopkins Univ. v. Cellpro, Inc.,
152 F.3d 1342, 1364 (Fed.Cir.1998), wherein the
court held that to avoid liability for willful
infringement in that case, an exculpatory opinion of
counsel must fully address all potential infringement
and validity issues. Although other cases have
imposed less rigorous criteria, the issue has
occasioned extensive satellite litigation, distorting the
“conceptual underpinnings” of Underwater Devices
and Kloster Speedsteel. Although there continues to
be “an affirmative duty of due care to avoid
infringement of the known patent rights of others,”
*1346L.A. Gear Inc. v. Thom McAn Shoe Co., 988
F.2d 1117, 1127 (Fed.Cir.1993), the failure to obtain
an exculpatory opinion of counsel shall no longer
provide an adverse inference or evidentiary
presumption that such an opinion would have been
unfavorable.
QUESTION 3
If the court concludes that the law should be changed,
and the adverse inference withdrawn as applied to
this case, what are the consequences for this case
A
The district court based its willfulness determination
on several factors in addition to the adverse inference
arising from the assertion of attorney-client privilege
by Haldex and the failure of Dana to obtain legal
advice. This court has explained that “there are no
hard and fast per se rules” with respect to willfulness
of infringement. Rolls-Royce, 800 F.2d at 1110.
Precedent illustrates various factors, some weighing
on the side of culpability and some that are mitigating
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or ameliorating. See Read v. Portec, supra.
The district court found, on the evidence presented,
that literal infringement by the Mark II brake was
reasonably clear and did not present close legal or
factual questions. As for the validity of the 445
patent, the court found that “given the quantity and
quality of the evidence presented by defendants at
trial on the issues of obviousness and indefiniteness,
it cannot fairly be said that defendants, throughout
the litigation, had a good faith belief that the 445
patent would ultimately be found invalid on these
grounds.” Knorr-Bremse II, 133 F.Supp.2d at 863.
The court also found that the appellants failed to take
prompt remedial action to terminate infringement
after the judgment of literal infringement by the Mark
II, stating that “Dana deliberately yielded to market
pressures in deciding to continue using the infringing
Mark II air disk brakes on test vehicles pending
future receipt of replacement Mark III air disk
brakes.” Id. The court also found that “although
Haldex indeed developed the Mark III air disk brake
in a good faith effort to design around the 445
patent, Haldex nonetheless continued to use the Mark
II air disk brake throughout the redesign effort,
including displaying Mark II air disk brakes at
various automotive conferences in the United States
and distributing Mark II promotional literature to
potential customers at these conferences,” id.; the
court also noted that infringement was not then
enjoined. Knorr-Bremse III, at 2.
The district court also considered Haldex's invocation
of the attorney-client privilege in order to withhold
its opinions of counsel, and Dana's failure to obtain
an independent legal opinion despite the warning and
notice of infringement. The appellants argue that but
for the adverse inference of unfavorable opinions
drawn from these actions, the finding of willfulness
of infringement is not supported. Knorr-Bremse
responds that willful infringement is well supported
by the remaining findings. Because elimination of
the adverse inference as drawn by the district court is
a material change in the totality of the circumstances,
a fresh weighing of the evidence is required to
determine whether the defendants committed willful
infringement. This determination is the primary
responsibility and authority of the district court. We
therefore vacate the finding of willful infringement
and remand for redetermination of the issue.
Several amici curiae raised the question of whether
the trier of fact, particularly a jury, can or should be
told whether or not counsel was consulted (albeit
without any *1347 inference as to the nature of the
advice received) as part of the totality of the
circumstances relevant to the question of willful
infringement. The amici pointed to various
hypothetical circumstances in which such
information could be relevant, even when there was
no issue of attorney-client privilege. That aspect is
not raised by this case, was not before the district
court, and has not been briefed on this appeal.
Today we resolve only the question of whether
adverse inferences of unfavorable opinions can be
drawn, and hold that they can not.
B
[3] The appellants also argue that the award of
attorney fees is a matter of punitive damages, and is
therefore improper. Precedent and statute do not
support this position. 35 U.S.C. § 285 provides that
“the court in exceptional cases may award reasonable
attorney fees to the prevailing party”; and the court
has confirmed that a finding of willful infringement
may qualify a case as exceptional under § 285. See,
e.g., Modine Mfg. Co. v. The Allen Group, Inc., 917
F.2d 538, 543 (Fed.Cir.1990). That there were not
actual damages does not render the award of attorney
fees punitive. Attorney fees are compensatory, and
may provide a fair remedy in appropriate cases.
Upon a finding of willful infringement, the award of
attorney fees is within the district court's sound
discretion.
In view of our vacatur of the finding of willful
infringement, the award of attorney fees is also
vacated. On remand the award may be reconsidered,
should the judgment of willful infringement be
restored.
QUESTION 4
Should the existence of a substantial defense to
infringement be sufficient to defeat liability for
willful infringement even if no legal advice has been
secured
[4] The answer is “no.” Precedent includes this
factor with others to be considered among the totality
of circumstances, stressing the “theme of whether a
prudent person would have sound reason to believe
that the patent was not infringed or was invalid or
unenforceable, and would be so held if litigated,” SRI
Int'l, Inc. v. Advanced Tech. Labs. Inc., 127 F.3d
1462, 1465 (Fed.Cir.1997). However, precedent
also authorizes the trier of fact to accord each factor
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the weight warranted by its strength in the particular
case. We deem this approach preferable to
abstracting any factor for per se treatment, for this
greater flexibility enables the trier of fact to fit the
decision to all of the circumstances. We thus decline
to adopt a per se rule.
II
THE CROSS APPEAL
[5] The district court rejected Knorr-Bremse's request
for destruction of the technical data that were
obtained by the appellants for the Haldex air disk
brakes. The court found that much of the data were
obtained before issuance of the patent, and that some
of the data relate to non-infringing aspects including
design-around efforts and safety studies. Knorr-
Bremse III, at 2. We do not discern reversible error in
the court's decision of this issue. That decision is
affirmed.
SUMMARY
An adverse inference that a legal opinion was or
would have been unfavorable shall not be drawn
from invocation of the attorney-client and/or work
product privileges or from failure to consult with
counsel. Contrary holdings and suggestions of
precedent are overruled.
*1348 This case is remanded for redetermination of
the issue of willful infringement and any remedy
therefor.
Costs
Each party shall bear its costs.
VACATED AND REMANDED; CROSS-APPEAL
AFFIRMED
DYK, Circuit Judge, concurring-in-part and
dissenting-in-part.
I join the majority opinion insofar as it eliminates an
adverse inference (that an opinion of counsel would
be unfavorable) from the infringer's failure to
disclose or obtain an opinion of counsel. I do not
join the majority opinion to the extent that it may be
read as reaffirming that “where, as here, a potential
infringer has actual notice of another's patent rights,
he has an affirmative duty to exercise due care to
determine whether or not he is infringing.” Maj.
Op., ante, at 1343 (quoting Underwater Devices, Inc.
v. Morrison-Knudsen Co., 717 F.2d 1380, 1389
(Fed.Cir.1983)).
There is a substantial question as to whether the due
care requirement is consistent with the Supreme
Court cases holding that punitive damages can only
be awarded in situations where the conduct is
reprehensible. See, e.g., State Farm Mut. Auto. Ins.
Co. v. Campbell, 538 U.S. 408, 123 S.Ct. 1513, 155
L.Ed.2d 585 (2003); BMW of N. Am., Inc. v. Gore,
517 U.S. 559, 116 S.Ct. 1589, 134 L.Ed.2d 809
(1996) (“Gore ”). While the majority properly
refrains from addressing this constitutional issue, as it
has not been briefed or argued by the parties or amici
in this case, I write separately to note my view that
enhancing damages for failure to comply with the
due care requirement cannot be squared with those
recent Supreme Court cases.
I
We have often recognized that enhanced damages
awarded pursuant to 35 U.S.C. § 284 are a form of
punitive damages. See, e.g., Sensonics, Inc. v.
Aerosonic Corp., 81 F.3d 1566, 1574 (Fed.Cir.1996)
(“[E]nhanced damages are punitive, not
compensatory.”). FN4 Punitive damages are awarded
to punish reprehensible behavior, referred to in this
context as willful infringement. “Enhancement ...
depends on a showing of willful infringement or
other indicium of bad faith warranting punitive
damages.” Id.; see also Nat'l Presto Indus., Inc. v.
West Bend Co., 76 F.3d 1185, 1192 (Fed.Cir.1996)
(“Liability for willfulness of infringement turns on
considerations of intent, state of mind, and
culpability.”); Beatrice Foods Co. v. New Eng.
Printing & Lithographing Co., 923 F.2d 1576, 1579
(Fed.Cir.1991) (“Under our cases, enhanced damages
may be awarded only as a penalty for an infringer's
increased culpability, namely willful infringement or
bad faith.”).
FN4. This case, of course, does not involve
an award of enhanced damages, but rather
an award of attorney fees based on a
willfulness finding. The majority correctly
rejects the contention that an award of
attorney fees pursuant to 35 U.S.C. § 285 is
a form of punitive damages. See Maj. Op.,
ante, at 1346 - 47. While attorney fees are
not punitive damages, our case law makes
clear that, where attorney fees are awarded
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based on a willfulness finding, the same
standard for willfulness applies to both
enhancement and attorney fees. See, e.g.,
Golight, Inc. v. Wal-Mart Stores, Inc., 355
F.3d 1327, 1340 (Fed.Cir.2004). Thus,
while it might not be unconstitutional to
award attorney fees on a due care theory, if
we were to restrict the award of enhanced
damages, an award of attorney fees on a
willfulness theory would also be restricted
because the same standard applies to both.
There are many circumstances that may create an
appropriate predicate for a finding of willful
infringement, and hence punitive damages, including
deliberate*1349 copying, concealing infringing
activity, infringement where the infringer knows that
it is infringing or where it knows it has only frivolous
defenses, infringement designed to injure a
competitor, etc. We have appropriately held that
such activity is reprehensible and that enhanced
damages may be awarded in such circumstances.
See, e.g., Hoechst Celanese Corp. v. BP Chems.
Ltd., 78 F.3d 1575, 1583 (Fed.Cir.1996) (“Willful
infringement is ... a measure of reasonable
commercial behavior in the context of the tort of
patent infringement. The extent to which the
infringer disregarded the property rights of the
patentee, the deliberateness of the tortious acts, or
other manifestations of unethical or injurious
commercial conduct, may provide grounds for a
finding of willful infringement and the enhancement
of damages.”); L.A. Gear, Inc. v. Thom McAn Shoe
Co., 988 F.2d 1117, 1127 (Fed.Cir.1993) (reversing
the district court's ruling that infringement was not
willful because the infringer's “deliberate copying
was strong evidence of willful infringement, without
any exculpatory evidence to balance the weight”);
Read Corp. v. Portec, Inc., 970 F.2d 816, 827
(Fed.Cir.1992) (including “[w]hether defendant
attempted to conceal its misconduct” as a factor to be
considered in enhancing damages); Kaufman Co. v.
Lantech, Inc., 807 F.2d 970, 978-79 (Fed.Cir.1986)
(affirming the district court's finding of willfulness
based on the district court's findings that the infringer
“faithfully copied the claimed invention, took an
untenable position regarding validity of the patent,
and presented a frivolous defense of noninfringement
” (emphasis added)).
But a potential infringer's mere failure to engage in
due care is not itself reprehensible conduct. To hold
that it is effectively shifts the burden of proof on the
issue of willfulness from the patentee to the infringer,
which must show that its infringement is not willful
by showing that it exercised due care. While the
duty of care is only one factor in the determination of
enhanced damages, no one can seriously doubt that,
both in the minds of the jurors (in determining
willfulness) and in the decision of the district court
(concerning enhancement), the duty of care is by far
the preeminent factor in the vast majority of cases.
II
The duty of care requirement finds no support in the
patent damages statute, the legislative history, or
Supreme Court opinions. The enhancement statute
merely provides that “the court may increase the
damages up to three times the amount found [by the
jury] or assessed [by the court].” 35 U.S.C. § 284
(2000). No other mention is made of enhancement,
willful infringement, or a duty of care. The present
statute, which was enacted in 1952, simply
“consolidates the provisions relating to damages”
from the previous version of the patent law. S.Rep.
No. 82-1979, at 29 (1952); H.R.Rep. No. 82-1923, at
29 (1952). The previous version of the statute-in
effect since 1836-provided that courts can enhance
damages “according to the circumstances of the
case.” FN5 Our attention*1350 has been directed to
no meaningful legislative history for the current
statute or the earlier statutes.
FN5. The Patent Act of 1870 provided:
[W]henever in any [patent infringement]
action a verdict shall be rendered for the
plaintiff, the court may enter judgment
thereon for any sum above the amount found
by the verdict as the actual damages
sustained, according to the circumstances of
the case, not exceeding three times the
amount of such verdict, together with the
costs.
Ch. 230, § 59, 16 Stat. 198, 207 (1870).
The Patent Act of 1836 likewise provided:
[I]t shall be in the power of the court to
render judgment for any sum above the
amount found by such verdict as the actual
damages sustained by the plaintiff, not
exceeding three times the amount thereof,
according to the circumstances of the case,
with costs....
Ch. 357, § 14, 5 Stat. 117, 123 (1836).
Nor does any of the few Supreme Court cases
interpreting section 284 provide any basis for a duty
of care. Indeed, they appear to limit enhanced
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damages to cases of “willful or bad-faith
infringement,” Aro Mfg. Co. v. Convertible Top
Replacement Co., 377 U.S. 476, 508, 84 S.Ct. 1526,
12 L.Ed.2d 457 (1964) (stating that the patentee
“could in a case of willful or bad-faith infringement
recover punitive or ‘increased’ damages under the
statute's trebling provision”), or “wanton or
malicious” injury, Seymour v. McCormick, 57 U.S.
480, 489, 16 How. 480, 14 L.Ed. 1024 (1853) (“It is
true, where the injury is wanton or malicious, a jury
may inflict vindictive or exemplary damages, not to
recompense the plaintiff, but to punish the
defendant.”). Furthermore, the entire provenance of
the due care requirement is dictum in earlier regional
circuit cases. See Milgo Elec. Corp. v. United Bus.
Communications, Inc., 623 F.2d 645, 666 (10th Cir.),
cert. denied, 449 U.S. 1066, 101 S.Ct. 794, 66
L.Ed.2d 611 (1980); Coleman Co. v. Holly Mfg. Co.,
269 F.2d 660, 666 (9th Cir.1959).
III
Whatever justification there may have been for the
due care approach in the past, that doctrine has been
undermined by the decisions of the Supreme Court
beginning in 1996, which have limited the award of
punitive damages on due process grounds. See, e.g.,
State Farm, 538 U.S. at 416-18, 123 S.Ct. 1513;
Gore, 517 U.S. at 568, 116 S.Ct. 1589. The
Supreme Court first held in Gore that an award of
punitive damages can violate the Due Process
Clause, FN6 stating that “[p]erhaps the most important
indicium of the reasonableness of a punitive damages
award is the degree of reprehensibility of the
defendant's conduct.” 517 U.S. at 575, 116 S.Ct.
1589. The Court stated:
FN6. The Court had previously held in
Pacific Mutual Life Insurance Co. v. Haslip,
499 U.S. 1, 111 S.Ct. 1032, 113 L.Ed.2d 1
(1991), that punitive damage awards can
violate the Due Process Clause, but the
particular damage award in Haslip did not
violate that clause. Id. at 18-19, 111 S.Ct.
1032.
There is no evidence that BMW acted in bad faith
when it sought to establish the appropriate line
between presumptively minor damage and damage
requiring disclosure to purchasers.... In this regard, it
is also significant that there is no evidence that BMW
persisted in a course of conduct after it had been
adjudged unlawful on even one occasion, let alone
repeated occasions.
Finally, the record in this case discloses no deliberate
false statements, acts of affirmative misconduct, or
concealment of evidence of improper motive....
Id. at 579, 116 S.Ct. 1589. The Court further
explained the importance of reprehensibility to an
award of punitive damages in State Farm, making
clear that reprehensibility is indispensable to a
punitive damages award:[P]unitive damages should
only be awarded if the defendant's culpability, after
having paid compensatory damages, is so
reprehensible as to warrant the imposition of further
sanctions to achieve punishment or deterrence.
Id. at 419, 123 S.Ct. 1513. Thus, even where the
damages multiple is within accepted*1351 bounds,
the Court has required a finding of reprehensibility as
a predicate to an award of punitive damages. Patent
law is not an island separated from the main body of
American jurisprudence. The same requirement of
reprehensibility restricts an award of enhanced
damages in patent cases as in other cases. When an
infringer merely fails to exercise his supposed duty of
care, there are “none of the circumstances ordinarily
associated with egregiously improper conduct” that
could be sufficiently reprehensible to warrant
imposition of punitive damages, as in Gore. 517 U.S.
at 580, 116 S.Ct. 1589. FN7
FN7. The imposition of treble damages by a
court based on a lack of due care by an
infringer is unlike such an imposition for
violations of the Sherman Act or for
intentional use of a counterfeit mark in
violation of the Lanham Act, where
damages are automatically trebled pursuant
to statute, based on a congressional
judgment that the conduct is per se
reprehensible. See 15 U.S.C. § 15(a)
(2000); 15 U.S.C. § 1117(b) (2000). Here,
significantly and unlike in those situations,
there is no judgment by Congress that
infringement is per se reprehensible conduct
requiring automatic trebling.
V
Finally, in my view, the imposition of the due care
requirement has produced nothing of benefit to the
patent system. In cases where the potential infringer
has been guilty of deliberate copying, concealment of
infringement, or other reprehensible conduct,
enhanced damages serve a useful purpose. But
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where such reprehensible conduct is absent, it is
unnecessary to stretch the law of punitive damages to
protect the patentee because the patentee can secure a
preliminary injunction once he has learned of
infringement. If the patentee is unable to secure a
preliminary injunction because he cannot make a
clear showing of likelihood of success on the merits
(the accused infringer having a substantial defense,
see, e.g., Nat'l Steel Car, Ltd. v. Canadian Pac. Ry.,
Ltd., 357 F.3d 1319, 1325 (Fed.Cir.2004);
Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239
F.3d 1343, 1350-51 (Fed.Cir.2001)), there is no
reason the patentee should be able to secure punitive
damages based merely on a showing of lack of “due
care” by the accused infringer during the pendency of
the litigation.
Second, the due care requirement exists in the context
of patent law that is complex, where ultimate
outcomes are difficult to predict, and, as the majority
holds, the existence of a substantial defense on the
merits will not bar a finding of willfulness. See Maj.
Op., ante, at 1357. As the amici point out, the due
care requirement has fostered a reluctance to review
patents for fear that the mere knowledge of a patent
will lead to a finding of lack of due care, see, e.g.,
Amici Curiae Br. of U.S. Council for Int'l Bus. et al.
at 9 n.4; a cottage industry of window-dressing legal
opinions by third party counsel designed to protect
the real decision-making process between litigating
counsel and the company's executives, see, e.g., id. at
9; the imposition of substantial legal costs on
companies seeking to introduce innovative products,
see, e.g., Amicus Curiae Br. of Sec. Indus. Ass'n at
9-11; and an enhanced ability of holders of dubious
patents to force competitors' products off of the
market through the threat of enhanced damages, see,
e.g., id. at 5-6. These concerns have led amici, FN8
the Federal Trade Commission working group, FN9
and a committee of the *1352 National Academies,
FN10
to urge us to reconsider our willfulness
jurisprudence.
FN8. See, e.g., Br. for Amicus Curiae Am.
Intellectual Prop. Law Ass'n at 6-8; Br. for
Amicus Curiae N.Y. Intellectual Prop. Law
Ass'n at 9-11.
FN9. See, e.g., Federal Trade Comm'n, To
Promote Innovation: The Proper Balance of
Competition and Patent Law and Policy, ch.
5, at 31 (2003), available at
http://www.ftc.gov/os/2003/10/innovationrpt
.pdf (“The Commission recommends that
legislation be enacted requiring either actual,
written notice of infringement from the
patentee or deliberate copying of the
patentee's invention, knowing it to be
patented, as a predicate for willful
infringement.”). See generally id. at 28-31.
FN10. See, e.g., Comm. on Intellectual Prop.
Rights in the Knowledge-Based Economy,
The National Academies, A Patent System
for the 21st Century 119 (Stephen A. Merrill
et al. eds., 2004), available at http://
www.nap.edu/html/patentsystem/
0309089107.pdf (“Lacking evidence of its
beneficial deterrent effect but with evidence
of its perverse anti-disclosure consequences,
the committee recommends elimination of
the provision for enhanced damages based
on a subjective finding of willful
infringement.”). See generally id. at 118-
20.
The majority opinion here ameliorates these concerns
to some very limited extent by eliminating the
inference that an undisclosed or unobtained opinion
of counsel was or would have been adverse. But the
majority opinion does not address whether a potential
infringer can satisfy the requirement of due care
without securing and disclosing an opinion of
counsel, or, if such an opinion is not absolutely
required, whether an adverse inference can be drawn
from the accused infringer's failure to obtain and
disclose such an opinion. More fundamentally, the
opinion does not address whether the due care
requirement, whatever its parameters, is consistent
with the Supreme Court's punitive damages
jurisprudence.
I would recognize that the due care requirement is a
relic of the past and eliminate it as a factor in the
willfulness and enhancement analysis.
C.A.Fed. (Va.),2004.
Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH
v. Dana Corp.
383 F.3d 1337, 65 Fed. R. Evid. Serv. 365, 72
U.S.P.Q.2d 1560
Briefs and Other Related Documents (Back to top)
• 2004 WL 188813 (Appellate Brief) Corrected Brief
for Amicus Curiae Microsoft Corporation in Support
of Defendants-Appellants (No View Expressed on
Affirmance or Reversal) (Nov. 04, 2004)
• 2003 WL 23200567 (Appellate Brief) Corrected
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

383 F.3d 1337 Page 13
383 F.3d 1337, 65 Fed. R. Evid. Serv. 365, 72 U.S.P.Q.2d 1560
(Cite as: 383 F.3d 1337)
Brief of the American Bar Association as Amicus
Curiae Supporting Neither Party (Dec. 15, 2003)
Original Image of this Document (PDF)
• 2003 WL 24305252 (Appellate Brief) Corrected
Brief of the American Bar Association as Amicus
Curiae Supporting Neither Party (Dec. 10, 2003)
Original Image of this Document (PDF)
• 2003 WL 23200560 (Appellate Brief) Brief for the
Association of Patent Law Firms as Amicus Curiae
(Nov. 25, 2003) Original Image of this Document
(PDF)
• 2003 WL 24305260 (Appellate Brief) Brief for the
Association of Patent Law Firms as Amicus Curiae
(Nov. 20, 2003) Original Image of this Document
(PDF)
• 2003 WL 24305273 (Appellate Brief) Brief for
Amicus Curiae New York Intellectual Property Law
Association in Support of Eliminating the Adverse
Inference Arising from the Assertion of Attorney-
Client Privilege in Defense of Willful Infringement
(Nov. 16, 2003) Original Image of this Document
(PDF)
• 2003 WL 23200554 (Appellate Brief) Brief for
Amicus Curiae New York Intellectual Property Law
Association in Support of Eliminating the Adverse
Inference Arising from the Assertion of Attorney-
Client Privilege in Defense of Willful Infringement
(Nov. 14, 2003) Original Image of this Document
(PDF)
• 2003 WL 23200559 (Appellate Brief) Brief for
Amicus Curiae San Diego Intellectual Property Law
Association (Nov. 14, 2003) Original Image of this
Document (PDF)
• 2003 WL 23204254 (Appellate Brief) Brief of
Amicus Curiae, the Federal Circuit Bar Association,
in Response to the Court's Order Inviting Briefs
(Nov. 14, 2003) Original Image of this Document
(PDF)
• 2003 WL 24305250 (Appellate Brief) Brief for
Amicus Curiae San Diego Intellectual Property Law
Association (Nov. 14, 2003) Original Image of this
Document (PDF)
• 2003 WL 24305264 (Appellate Brief) Brief of
Amicus Curiae, the Federal Circuit Bar Association,
in Response to the Court's Order Inviting Briefs
(Nov. 14, 2003) Original Image of this Document
with Appendix (PDF)
• 2003 WL 23200570 (Appellate Brief) Brief of
Amici Curiae Bea Systems, Inc. and Novell, Inc. in
Support of Neither Party (Nov. 06, 2003) Original
Image of this Document (PDF)
• 2003 WL 23200568 (Appellate Brief) Motion for
Leave to File Briee, and Brief of Amicus Curiae
Conejo Valley Bar Association (Nov. 05, 2003)
Original Image of this Document (PDF)
• 2003 WL 23200569 (Appellate Brief) Brief of
Amicus Curiae Public Patent Foundation (Nov. 05,
2003) Original Image of this Document (PDF)
• 2003 WL 23208764 (Appellate Brief) Brief of
Amicus Curiae in Support of Defendant-Appellants
(Nov. 05, 2003) Original Image of this Document
(PDF)
• 2003 WL 24305251 (Appellate Brief) Brief for
Amicus Curiae, Houston Intellectual Property Law
Association, in Support of Defendant-Appellants
(Nov. 5, 2003) Original Image of this Document
(PDF)
• 2003 WL 24305253 (Appellate Brief) Brief of
Amicus Curiae in Support of Defendant-Appellants
(Nov. 5, 2003) Original Image of this Document
(PDF)
• 2003 WL 24305270 (Appellate Brief) Motion for
Leave to File Brief, and Brief of Amicus Curiae
Conejo Valley Bar Association (Nov. 5, 2003)
Original Image of this Document with Appendix
(PDF)
• 2003 WL 23200571 (Appellate Brief) Brief for
Amicus Curiae, Houston Intellectual Property Law
Association, in Support of Defendant-Appeallants
(Nov. 04, 2003) Original Image of this Document
(PDF)
• 2003 WL 23208762 (Appellate Brief) Brief of
Lexington Patent Policy Group as Amicus Curiae in
Support of Reversal and Remand (Nov. 04, 2003)
Original Image of this Document (PDF)
• 2003 WL 24305262 (Appellate Brief) Brief of
Amici Curiae Bea Systems, Inc. and Novell, Inc. in
Support of Neither Party (Nov. 4, 2003) Original
Image of this Document with Appendix (PDF)
• 2003 WL 24305269 (Appellate Brief) Corrected
Brief for Amicus Curiae Microsoft Corporation In
Support of Defendants-Appellants (No View
Expressed on Affirmance or Reversal) (Nov. 4, 2003)
Original Image of this Document (PDF)
• 2003 WL 24305272 (Appellate Brief) Brief of
Lexington Patent Policy Group as Amicus Curiae in
Support of Reversal and Remand (Nov. 4, 2003)
Original Image of this Document (PDF)
• 2003 WL 23200556 (Appellate Brief) Brief for
Amicus Curiae American Intellectual Property Law
Association (Nov. 03, 2003) Original Image of this
Document (PDF)
• 2003 WL 23200558 (Appellate Brief) Brief for
Amicus Curiae the Association of the Bar of the City
of New York in Support of Neither Party (Nov. 03,
2003) Original Image of this Document (PDF)
• 2003 WL 23200562 (Appellate Brief) Amicus
Curiae Brief of Securities Industry Association in
Support of Defendants-Appellants (Nov. 03, 2003)
Original Image of this Document (PDF)
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

383 F.3d 1337 Page 14
383 F.3d 1337, 65 Fed. R. Evid. Serv. 365, 72 U.S.P.Q.2d 1560
(Cite as: 383 F.3d 1337)
• 2003 WL 23200563 (Appellate Brief) Amici Curiae
Brief of United States Council for International
Business, Center for Advanced Study & Research on
Intellectual Property, Federation Internationale des
Conseils En Propriete Industrielle, Applera
Corporation, Applied Materials, Inc., Cis co Systems,
Inc. and Cisco Technologies, Inc.; Oracle
Corporation; Sony Computer Entertainment America
Inc., in Support of Defendants-Appellants (Nov. 03,
2003) Original Image of this Document (PDF)
• 2003 WL 23200564 (Appellate Brief) Brief of
Amicus Curiae Generic Pharmaceutical Association
in Support of Defendants-Appellants (Nov. 03, 2003)
Original Image of this Document (PDF)
• 2003 WL 23208464 (Appellate Brief) Brief of
Amicus Curiae Public Knowledge in Support of
Defendant-Appellants (Nov. 03, 2003) Original
Image of this Document (PDF)
• 2003 WL 23208763 (Appellate Brief) Brief of
Amicus Curiae Intellectual Property Owners
Association (Nov. 03, 2003) Original Image of this
Document with Appendix (PDF)
• 2003 WL 23208765 (Appellate Brief) Brief for
Amicus Curiae Association of Corporate Counsel
against Finding an Adverse Inference upon Assertion
of Attorney-Client Privilege (Nov. 03, 2003) Original
Image of this Document (PDF)
• 2003 WL 24305254 (Appellate Brief) Brief of
Amicus Curiae Generic Pharmaceutical Association
in Support of Defendants-Appellants (Nov. 3, 2003)
Original Image of this Document (PDF)
• 2003 WL 24305255 (Appellate Brief) Brief for
Amicus Curiae Association of Corporate Counsel
Against Finding an Adverse Inference Upon
Assertion of Attorney-Client Privilege (Nov. 3, 2003)
Original Image of this Document (PDF)
• 2003 WL 24305256 (Appellate Brief) Brief of
Amicus Curiae Public Knowledge In Support of
Defendant-Appellants (Nov. 3, 2003) Original Image
of this Document (PDF)
• 2003 WL 24305258 (Appellate Brief) Amici Curiae
Brief of United States Council for International
Business, Center for Advanced Study & Research On
Intellectual Property, F%21ed%21eration
Internationale Des Conseils En Propri%21et%21e
Industrielle, Applera Corporation, Applied Material
s, Inc., Cisco Systems, Inc. and Cisco Technologies,
Inc.; Oracle Corporation; Sony Computer
Entertainment America Inc., In Support of
Defendants-Appellants (Nov. 3, 2003) Original
Image of this Document (PDF)
• 2003 WL 24305259 (Appellate Brief) Brief of
Amicus Curiae Public Patent Foundation (Nov. 3,
2003) Original Image of this Document (PDF)
• 2003 WL 24305263 (Appellate Brief) Brief for
Amicus Curiae American Intellectual Property Law
Association (Nov. 3, 2003) Original Image of this
Document (PDF)
• 2003 WL 24305266 (Appellate Brief) Brief for
Amicus Curiae the Association of the Bar of the City
of New York In Support of Neither Party (Nov. 3,
2003) Original Image of this Document (PDF)
• 2003 WL 24305267 (Appellate Brief) Amicus
Curiae Brief of Securities Industry Association In
Support of Defendants-Appellants (Nov. 3, 2003)
Original Image of this Document (PDF)
• 2003 WL 24305268 (Appellate Brief) Brief of
Amicus Curiae Intellectual Property Owners
Association (Nov. 3, 2003) Original Image of this
Document with Appendix (PDF)
• 2003 WL 23200565 (Appellate Brief) Brief of the
Semiconductor Industry Associations as Amicus
Curiae in Support of Defendants-Appellants, and for
Reversal on Willfulness (Nov. 01, 2003) Original
Image of this Document (PDF)
• 2003 WL 24305261 (Appellate Brief) Brief of the
Semiconductor Industry Association as Amicus
curiae in Support of Defendants-Appellants, and for
Reversal on Willfulness (Nov. 1, 2003) Original
Image of this Document (PDF)
• 2003 WL 23200555 (Appellate Brief) Brief of
Amicus Curiae Biotechnology Industry Organization
in Support of Neither Party (Oct. 31, 2003) Original
Image of this Document (PDF)
• 2003 WL 23200557 (Appellate Brief) Brief Amicus
Curiae of the City of Chicago (Oct. 31, 2003)
Original Image of this Document (PDF)
• 2003 WL 23200561 (Appellate Brief) Brief of
Amicus Curiae Bar Association of the District of
Columbia - Patent, Trademark & Copyright Section
(Oct. 31, 2003) Original Image of this Document
(PDF)
• 2003 WL 24305257 (Appellate Brief) Brief of
Amicus Curiae Biotechnology Industry Organization
In Support of Neither Party (Oct. 31, 2003) Original
Image of this Document (PDF)
• 2003 WL 24305265 (Appellate Brief) Brief Amicus
Curiae of the City of Chicago (Oct. 31, 2003)
Original Image of this Document (PDF)
• 2003 WL 24305271 (Appellate Brief) Brief of
Amicus Curiae Bar Association of the District of
Columbia - Patent, Trademark & Copyright Section
(Oct. 31, 2003) Original Image of this Document
(PDF)
• 2003 WL 23200566 (Appellate Brief) Brief of
Defendants-Appellants (Oct. 27, 2003) Original
Image of this Document (PDF)
• 2001 WL 34378624 (Appellate Brief) Reply Brief
for Plaintiff-Cross Appellant Knorr-Bremse Systeme
Fuer Nutzfagrzeuge Gmbh (Oct. 26, 2001) Original
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

383 F.3d 1337 Page 15
383 F.3d 1337, 65 Fed. R. Evid. Serv. 365, 72 U.S.P.Q.2d 1560
(Cite as: 383 F.3d 1337)
Image of this Document (PDF)
• 2001 WL 34901641 (Appellate Brief) Reply Brief
for Plaintiff-Cross Appellant Knorr-Bremse Systeme
Fuer Nutzfahrzeuge Gmbh (Oct. 26, 2001) Original
Image of this Document (PDF)
• 2001 WL 34378623 (Appellate Brief) Reply Brief
or Defendants-Appellants & Brief for Defendants-
Cross Appellants (Oct. 09, 2001) Original Image of
this Document (PDF)
• 2001 WL 34901642 (Appellate Brief) Reply Brief
of Defendants-Appellants & Brief for Defendants-
Cross Appellants (Oct. 9, 2001) Original Image of
this Document (PDF)
• 2001 WL 34378622 (Appellate Brief) Brief for
Plaintiff-Cross Appellant Knorr-Bremse System Fuer
Nutzfahrzeuge Gmbh (Aug. 27, 2001) Original
Image of this Document (PDF)
• 2001 WL 34901640 (Appellate Brief) Brief for
Plaintiff-Cross Appellant Knorr-Bremse Systeme
Fuer Nutzfahrzeuge Gmbh (Aug. 27, 2001) Original
Image of this Document (PDF)
• 2001 WL 34378621 (Appellate Brief) Opening
Brief of Defendants-Appellants (Jul. 16, 2001)
Original Image of this Document (PDF)
• 2001 WL 34901639 (Appellate Brief) Opening
Brief of Defendants-Appellants (Jul. 16, 2001)
Original Image of this Document with Appendix
(PDF)
END OF DOCUMENT
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

448 F.3d 1294 Page 1
448 F.3d 1294, 78 U.S.P.Q.2d 1676
(Cite as: 448 F.3d 1294)
Briefs and Other Related Documents
United States Court of Appeals,Federal Circuit.
In re ECHOSTAR COMMUNICATIONS
CORPORATION, Echostar DBS Corporation,
Echostar Technologies Corporation, and Echosphere
Limited Liability Company, and Merchant & Gould
P.C., Petitioners.
Misc. Nos. 803, 805.
May 1, 2006.
Rehearing and Rehearing En Banc Denied July 5,
2006.
Background: In patent infringement action in which
defendant asserted defense of reliance on advice of
in-house counsel, plaintiff sought production of
relevant documents, including documents relating to
outside counsel whose advice was not relied on. The
District Court determined that defendant waived its
attorney-client privilege, and that waiver extended to
work-product not communicated to defendant.
Defendant petitioned for writ of mandamus, and
outside counsel moved to intervene and petitioned for
a writ of mandamus.
Holdings: The Court of Appeals, Gajarsa, Circuit
Judge, held that
(1) defendant waived its attorney-client privilege
with regard to any attorney-client communications
relating to the same subject matter, including
communications with counsel other than in-house
counsel, but
(2) outside counsel's work product that was not
communicated to defendant and did not reflect a
communication, was not within the scope of
defendant's waiver of work product immunity.
Petitions granted in part.
West Headnotes
[1] Mandamus 250 26
250 Mandamus
250II Subjects and Purposes of Relief
250II(A) Acts and Proceedings of Courts,
Judges, and Judicial Officers
250k26 k. Exercise of Judicial Powers and
Functions in General. Most Cited Cases
Mandamus 250 28
250 Mandamus
250II Subjects and Purposes of Relief
250II(A) Acts and Proceedings of Courts,
Judges, and Judicial Officers
250k28 k. Matters of Discretion. Most Cited
Cases
Remedy of mandamus is available in extraordinary
situations to correct a clear abuse of discretion or
usurpation of judicial power.
[2] Mandamus 250 168(2)
250 Mandamus
250III Jurisdiction, Proceedings, and Relief
250k168 Evidence
250k168(2) k. Presumptions and Burden of
Proof. Most Cited Cases
A party seeking a writ of mandamus bears burden of
proving that it has no other means of obtaining the
relief desired, and that the right to issuance of the
writ is clear and indisputable.
[3] Mandamus 250 32
250 Mandamus
250II Subjects and Purposes of Relief
250II(A) Acts and Proceedings of Courts,
Judges, and Judicial Officers
250k32 k. Proceedings in Civil Actions in
General. Most Cited Cases
A writ of mandamus may be sought when the
challenged order turns on questions of privilege.
[4] Mandamus 250 32
250 Mandamus
250II Subjects and Purposes of Relief
250II(A) Acts and Proceedings of Courts,
Judges, and Judicial Officers
250k32 k. Proceedings in Civil Actions in
General. Most Cited Cases
Fact that defendant in patent infringement case had
complied in large part with discovery order did not
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

448 F.3d 1294 Page 2
448 F.3d 1294, 78 U.S.P.Q.2d 1676
(Cite as: 448 F.3d 1294)
mean that it could not challenge a part of the order in
a petition for a writ of mandamus.
[5] Courts 106 96(7)
106 Courts
106II Establishment, Organization, and Procedure
106II(G) Rules of Decision
106k88 Previous Decisions as Controlling
or as Precedents
106k96 Decisions of United States
Courts as Authority in Other United States Courts
106k96(7) k. Particular Questions or
Subject Matter. Most Cited Cases
Federal Circuit law applies when deciding whether
particular written or other materials are discoverable
in a patent case, if those materials relate to an issue of
substantive patent law.
[6] Courts 106 96(7)
106 Courts
106II Establishment, Organization, and Procedure
106II(G) Rules of Decision
106k88 Previous Decisions as Controlling
or as Precedents
106k96 Decisions of United States
Courts as Authority in Other United States Courts
106k96(7) k. Particular Questions or
Subject Matter. Most Cited Cases
Questions of privilege and discoverability that arise
from assertion of the advice-of-counsel defense in a
patent infringement case necessarily involve issues of
substantive patent law, so that Federal Circuit law
applies. 35 U.S.C.A. § § 284-285.
[7] Witnesses 410 198(1)
410 Witnesses
410II Competency
410II(D) Confidential Relations and Privileged
Communications
410k197 Communications to or Advice by
Attorney or Counsel
410k198 In General
410k198(1) k. In General. Most Cited
Cases
The attorney-client privilege protects disclosure of
communications between a client and his attorney.
[8] Witnesses 410 219(3)
410 Witnesses
410II Competency
410II(D) Confidential Relations and Privileged
Communications
410k219 Waiver of Privilege
410k219(3) k. Communications to or
Advice by Attorney or Counsel. Most Cited Cases
Defendant which chose, in patent infringement case,
to rely on the advice of in-house counsel, thus waived
its attorney-client privilege with regard to any
attorney-client communications relating to the same
subject matter, including communications with
counsel other than in-house counsel.
[9] Witnesses 410 219(3)
410 Witnesses
410II Competency
410II(D) Confidential Relations and Privileged
Communications
410k219 Waiver of Privilege
410k219(3) k. Communications to or
Advice by Attorney or Counsel. Most Cited Cases
Once a party announces that it will rely on the advice
of counsel defense in response to an assertion of
willful patent infringement, the attorney-client
privilege is waived, and the waiver applies to all
other communications relating to the same subject
matter.
[10] Witnesses 410 219(3)
410 Witnesses
410II Competency
410II(D) Confidential Relations and Privileged
Communications
410k219 Waiver of Privilege
410k219(3) k. Communications to or
Advice by Attorney or Counsel. Most Cited Cases
The opinion formed in a patent infringement case by
defendant's in-house counsel and conveyed to
defendant's executives constituted a legal opinion, for
purposes of determination of the scope of defendant's
waiver of attorney-client privilege, even though it
was not a traditional opinion of counsel.
[11] Federal Courts 170B 824
170B Federal Courts
170BVIII Courts of Appeals
170BVIII(K) Scope, Standards, and Extent
170BVIII(K)4 Discretion of Lower Court
170Bk824 k. Witnesses, Qualification
and Examination Of. Most Cited Cases
Court of Appeals reviews a district court's
determination as to the scope of a waiver of attorney-
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

448 F.3d 1294 Page 3
448 F.3d 1294, 78 U.S.P.Q.2d 1676
(Cite as: 448 F.3d 1294)
client privilege for an abuse of discretion.
[12] Federal Civil Procedure 170A 1272.1
170A Federal Civil Procedure
170AX Depositions and Discovery
170AX(A) In General
170Ak1272 Scope
170Ak1272.1 k. In General. Most Cited
Cases
In general, a party may obtain discovery of any
matter that (1) is not privileged and (2) is relevant to
the claim or defense of any party. Fed.Rules
Civ.Proc.Rule 26(b)(1), 28 U.S.C.A.
[13] Witnesses 410 200
410 Witnesses
410II Competency
410II(D) Confidential Relations and Privileged
Communications
410k197 Communications to or Advice by
Attorney or Counsel
410k200 k. Professional Character of
Employment or Transaction. Most Cited Cases
Attorney-client privilege protects the confidentiality
of communications between attorney and client made
for the purpose of obtaining legal advice.
[14] Witnesses 410 219(3)
410 Witnesses
410II Competency
410II(D) Confidential Relations and Privileged
Communications
410k219 Waiver of Privilege
410k219(3) k. Communications to or
Advice by Attorney or Counsel. Most Cited Cases
Attorney-client privilege is at the discretion of the
client.
[15] Witnesses 410 219(3)
410 Witnesses
410II Competency
410II(D) Confidential Relations and Privileged
Communications
410k219 Waiver of Privilege
410k219(3) k. Communications to or
Advice by Attorney or Counsel. Most Cited Cases
Client can waive the attorney-client privilege when it
uses the advice to establish a defense.
[16] Federal Civil Procedure 170A 1600(3)
170A Federal Civil Procedure
170AX Depositions and Discovery
170AX(E) Discovery and Production of
Documents and Other Tangible Things
170AX(E)3 Particular Subject Matters
170Ak1600 Privileged Matters in
General
170Ak1600(3) k. Work Product of
Attorney. Most Cited Cases
Work-product doctrine, or work-product immunity,
can protect documents and tangible things prepared
in anticipation of litigation that are both nonprivileged
and relevant. Fed.Rules Civ.Proc.Rule
26(b)(3), 28 U.S.C.A.
[17] Federal Civil Procedure 170A 1600(3)
170A Federal Civil Procedure
170AX Depositions and Discovery
170AX(E) Discovery and Production of
Documents and Other Tangible Things
170AX(E)3 Particular Subject Matters
170Ak1600 Privileged Matters in
General
170Ak1600(3) k. Work Product of
Attorney. Most Cited Cases
Work-product doctrine is not absolute, and a party
may discover certain types of work product if they
have substantial need of the materials in the
preparation of the party's case and are unable without
undue hardship to obtain the substantial equivalent by
other means. Fed.Rules Civ.Proc.Rule 26(b)(3), 28
U.S.C.A.
[18] Federal Civil Procedure 170A 1600(3)
170A Federal Civil Procedure
170AX Depositions and Discovery
170AX(E) Discovery and Production of
Documents and Other Tangible Things
170AX(E)3 Particular Subject Matters
170Ak1600 Privileged Matters in
General
170Ak1600(3) k. Work Product of
Attorney. Most Cited Cases
Rule allowing discovery of certain types of work
product only allows discovery of factual or nonopinion
work product and requires the court to
protect against the disclosure of the mental
impressions, conclusions, opinions, or legal theories
of an attorney or other representative. Fed.Rules
Civ.Proc.Rule 26(b)(3), 28 U.S.C.A.
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

448 F.3d 1294 Page 4
448 F.3d 1294, 78 U.S.P.Q.2d 1676
(Cite as: 448 F.3d 1294)
[19] Federal Civil Procedure 170A 1600(5)
170A Federal Civil Procedure
170AX Depositions and Discovery
170AX(E) Discovery and Production of
Documents and Other Tangible Things
170AX(E)3 Particular Subject Matters
170Ak1600 Privileged Matters in
General
170Ak1600(5) k. Waiver. Most Cited
Cases
A party may discover work product if the party
waives its immunity.
[20] Federal Civil Procedure 170A 1600(5)
170A Federal Civil Procedure
170AX Depositions and Discovery
170AX(E) Discovery and Production of
Documents and Other Tangible Things
170AX(E)3 Particular Subject Matters
170Ak1600 Privileged Matters in
General
170Ak1600(5) k. Waiver. Most Cited
Cases
Work product waiver is not a broad waiver of all
work product related to the same subject matter, but
only extends to factual or non-opinion work product
concerning the same subject matter as the disclosed
work product.
[21] Federal Civil Procedure 170A 1600(5)
170A Federal Civil Procedure
170AX Depositions and Discovery
170AX(E) Discovery and Production of
Documents and Other Tangible Things
170AX(E)3 Particular Subject Matters
170Ak1600 Privileged Matters in
General
170Ak1600(5) k. Waiver. Most Cited
Cases
Waiver of work product opinions extends to advice
and work product given after litigation began when
the advice is relevant to ongoing willful
infringement, so long as that ongoing infringement is
at issue in the litigation.
[22] Patents 291 292.3(1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k292 Discovery
291k292.3 Production of Documents and
Other Matters
291k292.3(1) k. In General. Most
Cited Cases
Work-product waiver in a patent infringement case
extends only so far as to inform the court of the
infringer's state of mind.
[23] Federal Civil Procedure 170A 1600(5)
170A Federal Civil Procedure
170AX Depositions and Discovery
170AX(E) Discovery and Production of
Documents and Other Tangible Things
170AX(E)3 Particular Subject Matters
170Ak1600 Privileged Matters in
General
170Ak1600(5) k. Waiver. Most Cited
Cases
Work product reflecting counsel's opinions and
mental impressions, which is never communicated to
the client, is not within the scope of a defendant's
waiver of work-product immunity. Fed.Rules
Civ.Proc.Rule 26(b)(3), 28 U.S.C.A.
[24] Patents 291 292.3(1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k292 Discovery
291k292.3 Production of Documents and
Other Matters
291k292.3(1) k. In General. Most
Cited Cases
When an alleged patent infringer asserts an adviceof-counsel
defense regarding willful infringement, it
waives its attorney-client privilege and work-product
immunity for any document or opinion that embodies
or discusses a communication to or from it
concerning whether that patent is valid, enforceable,
and infringed by the accused; waiver includes not
only any letters, memorandum, conversation, or the
like between the attorney and his or her client, but,
when appropriate, any documents referencing a
communication between attorney and client.
[25] Patents 291 292.3(1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k292 Discovery
291k292.3 Production of Documents and
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

448 F.3d 1294 Page 5
448 F.3d 1294, 78 U.S.P.Q.2d 1676
(Cite as: 448 F.3d 1294)
Other Matters
291k292.3(1) k. In General. Most
Cited Cases
Outside counsel's work product in patent
infringement case, that was not communicated to
defendant and did not reflect a communication, was
not within the scope of defendant's waiver of workproduct
immunity based on its assertion of an adviceof-counsel
defense; any relevant value of such work
product was outweighed by the policies of the workproduct
doctrine.
*1296 Harold J. McElhinny, Rachel Krevans, Alison
M. Tucher, Morrison & Foerster LLP, San Francisco,
CA, Jon R. Trembath, Merchant & Gould P.C.,
Denver, CO, for Petitioners.
Morgan Chu, Perry M. Goldberg, Christine Byrd,
Irell & Manella LLP, Los Angeles, CA, for
Respondent.
Before SCHALL, GAJARSA, and PROST, Circuit
Judges.
ORDER
GAJARSA, Circuit Judge.
EchoStar Communications Corporation, EchoStar
DBS Corporation, EchoStar Technologies
Corporation, and Echosphere Limited Liability
Company (collectively “EchoStar”) petition for a writ
of mandamus, in Miscellaneous Docket No. 803, to
direct the United States District Court for the Eastern
District of Texas, in case 2:04-CV-1, to vacate its
September 26, 2005 and October 6, 2005 orders that
compelled EchoStar to produce documents created by
the law firm Merchant & Gould P.C. that EchoStar
asserts are protected from discovery by the workproduct
doctrine. Merchant & Gould moves for
leave to intervene in Miscellaneous Docket No. 803
and submits its own petition for a writ of mandamus,
filed as Miscellaneous Docket No. 805. TiVo, Inc.
opposes the petitions and responds to the motion for
leave to intervene. EchoStar and Merchant & Gould
reply. We grant Merchant & Gould's unopposed
motion for leave to intervene*1297 in Miscellaneous
Docket No. 803. The motions for leave to file the
replies are also granted. To the extent set forth
below, we grant the petition for mandamus.
I
TiVo sued EchoStar for infringement of its U.S.
Patent No. 6,233,389 (“the '389 patent”). In
response to the allegation of willful infringement,
EchoStar asserted the defense of reliance on advice
of counsel. Prior to the filing of the action, EchoStar
relied on advice of in-house counsel. After the
action was filed, EchoStar obtained additional legal
advice from Merchant & Gould but elected not to
rely on it. Presumably to explore further EchoStar's
state of mind in determining that it did not infringe
the patent, TiVo sought production of documents in
the possession of EchoStar and Merchant & Gould.
The district court held that by relying on advice of inhouse
counsel EchoStar waived its attorney-client
privilege and attorney work-product immunity
relating to advice of any counsel regarding
infringement, including Merchant & Gould. The
district court indicated that the scope of the waiver
included communications made either before or after
the filing of the complaint and any work product,
whether or not the product was communicated to
EchoStar. The district court also held that EchoStar
could redact information related only to trial
preparation or information unrelated to infringement.
EchoStar produced communications, including two
infringement opinions from Merchant & Gould, but
did not produce any work product related to the
Merchant & Gould opinions. FN1
FN1. EchoStar also provided notes and
communications relating to infringement
prepared by another firm.
Thereafter, the parties sought clarification of the
district court's order. TiVo argued that the district
court should order EchoStar to produce all Merchant
& Gould documents that relate to the advice-ofcounsel
defense, even if EchoStar was not in
possession of the documents because they were never
communicated to EchoStar. EchoStar argued that it
should only be required to produce documents that
were provided to it by Merchant & Gould.
On October 5, 2005, the district court issued an order
that clarified its previous order and stated that the
waiver of immunity extended to all work product of
Merchant & Gould, whether or not communicated to
EchoStar. The district court determined that the
documents could be relevant or lead to the discovery
of admissible evidence because they might contain
information that was conveyed to EchoStar, even if
the documents were not themselves conveyed to
EchoStar. EchoStar petitions this court for a writ of
mandamus with respect to the Merchant & Gould
documents not provided to EchoStar, FN2 challenging
the district court's rulings. Merchant & Gould
moves for leave to intervene in EchoStar's petition
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and submits its own petition for a writ of mandamus.
FN2. No in-house counsel documents are at
issue in the petition.
II
[1][2][3] The remedy of mandamus is available in
extraordinary situations to correct a clear abuse of
discretion or usurpation of judicial power. In re
Calmar, Inc., 854 F.2d 461, 464 (Fed.Cir.1988). A
party seeking a writ bears the burden of proving that
it has no other means of obtaining the relief desired,
Mallard v. U.S. Dist. Court, 490 U.S. 296, 309, 109
S.Ct. 1814, 104 L.Ed.2d 318 (1989), and that the
right to issuance of the writ is “clear and
indisputable,” Allied Chem. Corp. v. Daiflon, Inc.,
449 U.S. 33, 35, 101 S.Ct. 188, 66 L.Ed.2d 193
(1980). A writ of mandamus may be *1298 sought
when the challenged order turns on questions of
privilege. In re Regents of Univ. of Cal., 101 F.3d
1386, 1387 (Fed.Cir.1996); In re Pioneer Hi-Bred
Int'l, Inc., 238 F.3d 1370, 1374 (Fed.Cir.2001).
EchoStar argues that a writ of mandamus should
issue, among other reasons, because the district court
erred in determining that (1) the attorney-client
privilege had been waived and (2) the waiver of any
privilege extended to work-product that was not
communicated to EchoStar because, inter alia, the
documents are not relevant to whether EchoStar had
a good faith belief that it did not infringe. Merchant
& Gould also argues that the district court erred in
requiring the production of documents that Merchant
& Gould did not provide to EchoStar because any
such documents could not be relevant to whether
EchoStar reasonably had a good faith belief that it did
not infringe, based upon advice from counsel.
In response, TiVo argues, inter alia, that (1) EchoStar
is not entitled to a writ of mandamus because it has
complied, in large part, with the district court orders
it now challenges, (2) the attorney-client privilege
was waived when EchoStar asserted a defense of
reliance on advice of in-house counsel, (3) the
relevance of the Merchant & Gould documents can
be determined when they are offered as evidence, and
(4) even though the Merchant & Gould documents
may not have been provided to EchoStar, they may
contain information that was otherwise conveyed to
EchoStar.
[4] Regarding TiVo's first argument, that EchoStar is
not entitled to mandamus because it has complied in
large part with the order, we do not believe it is a
requirement that a party refuse to comply at all with
an order, if it seeks to challenge only a part of the
order. Such a rule would encourage parties not to
comply with district court orders that, in large part,
they do not challenge, so that they could preserve a
challenge only to the portions that they believe are
erroneous. EchoStar cannot undo the disclosures it
has made to TiVo, but it can challenge the portions of
the order that require additional disclosures.
We now turn to the more substantive arguments
underlying this petition.
III
[5][6] In this petition, we apply our own law, rather
than the law of the regional circuit. This case
involves the extent to which a party waives its
attorney-client privilege and work-product immunity
when it asserts the advice-of-counsel defense in
response to a charge of willful patent infringement.
“Federal Circuit law applies when deciding whether
particular written or other materials are discoverable
in a patent case, if those materials relate to an issue of
substantive patent law.” Advanced Cardiovascular
Sys. v. Medtronic, Inc., 265 F.3d 1294, 1307
(Fed.Cir.2001). A remedy for willful patent
infringement is specifically provided for in the Patent
Act, see 35 U.S.C. § § 284-285; therefore, questions
of privilege and discoverability that arise from
assertion of the advice-of-counsel defense necessarily
involve issues of substantive patent law, see In re
Spalding Sports Worldwide, Inc., 203 F.3d 800, 803-
04 (Fed.Cir.2000) (applying Federal Circuit law to
question of attorney-client privilege between patent
attorney and patentee).
A
[7] EchoStar first challenges the district court's
holding that EchoStar waived the attorney-client
privilege when it asserted its defense in response to
the charge of willful infringement. The attorneyclient
privilege protects disclosure of
communications between a client and his *1299
attorney. United States v. Zolin, 491 U.S. 554, 562,
109 S.Ct. 2619, 105 L.Ed.2d 469 (1989); Upjohn Co.
v. United States, 449 U.S. 383, 389, 101 S.Ct. 677, 66
L.Ed.2d 584 (1981).
[8][9] Once a party announces that it will rely on
advice of counsel, for example, in response to an
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assertion of willful infringement, the attorney-client
privilege is waived. “The widely applied standard for
determining the scope of a waiver of attorney-client
privilege is that the waiver applies to all other
communications relating to the same subject matter.”
Fort James Corp. v. Solo Cup Co., 412 F.3d 1340,
1349 (Fed.Cir.2005).
[10] EchoStar argues that it did not assert the adviceof-counsel
defense because it intended to rely only on
an “in-house investigation supervised by in-house
counsel.” The district court held that the opinion
formed by in-house counsel and conveyed to
EchoStar executives, although not a traditional
opinion of counsel, constituted a legal opinion. We
see no error in the district court's determination.
EchoStar summarily asserts that “an internal
investigation involving in-house engineers and inhouse
counsel is simply a different subject matter
from legal opinions commissioned at a later date
from outside lawyers.” This argument is without
merit. Whether counsel is employed by the client or
hired by outside contract, the offered advice or
opinion is advice of counsel or an opinion of counsel.
Use of in-house counsel may affect the strength of
the defense, but it does not affect the legal nature of
the advice. See Underwater Devices, Inc. v.
Morrison-Knudsen Co., 717 F.2d 1380, 1390
(Fed.Cir.1983) (overruled in part on other grounds
by Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH
v. Dana Corp., 383 F.3d 1337 (Fed.Cir.2004) (en
banc )).
Thus, when EchoStar chose to rely on the advice of
in-house counsel, it waived the attorney-client
privilege with regard to any attorney-client
communications relating to the same subject matter,
including communications with counsel other than
in-house counsel, which would include
communications with Merchant & Gould. See Akeva
LLC v. Mizuno Corp., 243 F.Supp.2d 418, 423
(M.D.N.C.2003).
B
EchoStar next asserts that the district court's order
cast too wide a net by including within the waiver's
scope documents that were never communicated
from Merchant & Gould (the attorney) to EchoStar
(the client). The district court stated:
EchoStar had the benefit of choice, as explained by
the Federal Circuit in Knorr-Bremse Systeme Fuer
Nutzfahrzeuge GmbH v. Dana Corp., of whether to
introduce [in-house counsel's] opinion. But once
EchoStar chose to introduce the opinion, it opened to
inspection all related advice sought and developed
regarding EchoStar's potential infringement of the
'389 patent. Regardless of when the opinions or
materials were transcribed or communicated to
EchoStar, such information necessarily relates to the
opinion being offered by [in-house counsel] and goes
to show EchoStar's state of mind with respect to
willful infringement. This is particularly true where,
as is the case here, EchoStar's willfulness witness was
privy to the substance of the willfulness opinions
developed by outside counsel both pre- and postfiling....
TiVo, Inc. v. EchoStar Comm. Corp., No. 2:04-CV-1,
at 13 (E.D.Tex. Sept. 26, 2005) (“September Order”).
Noting that district courts had ruled differently on
whether the waiver of work-product protection
covered documents that were not disclosed to the
client, the district court discussed the *1300 reasons
for requiring production of uncommunicated work
product:Still, other courts have mandated production
of all material regardless of whether they were
disclosed, maintaining that the discovery of such
information is necessary to uncover what the client
was actually told by opinion counsel. See Aspex
Eyewear Inc. v. E'Lite Optik Inc., 276 F.Supp.2d
1084, 1092-93 (D.Nev.2003); Novartis Pharms.
Corp. v. EON Labs Mfg., Inc., 206 F.R.D. 396
(D.Del.2002). In Novartis, the court stated, “it is
critical for the patentee to have a full opportunity to
probe, not only the state of mind of the infringer, but
also the mind of the infringer's lawyer upon which
the infringer so firmly relied.” Id. at 399. The
rationale behind this approach is that, by imposing
broad waiver, the advice of counsel defense will only
be invoked by “infringers who prudently and
sincerely sought competent advice from competent
counsel ...” and “[m]oreover, focusing on the
infringer's waiver rather than state of mind may
reduce the chances of legal gamesmanship creeping
into the practice of rendering infringement and
validity opinions.” Id. “[I]f negative information was
important enough to reduce to a memorandum, there
is a reasonable possibility that the information was
conveyed in some form or fashion to the client.”
Beneficial Franchise Co. Inc. v. Bank One N.A., 205
F.R.D. 212, 218 (N.D.Ill.2001).
September Order at 11-12.
In a subsequent order, the district court further
explained why the scope of the waiver should include
work product that was not disclosed to EchoStar:
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Were discovery of “uncommunicated” materials not
allowed, accused infringers could easily shield
themselves from any unfavorable analysis by simply
requesting that their opinion counsel not send it.
This would be unfair.
TiVo, Inc. v. EchoStar Comm. Corp., No. 2:04-CV-1,
2005 WL 3024701 at 3 (E.D.Tex. Oct. 7, 2005)
(“October Order”).
[11] We review the district court's determination as to
the scope of the waiver for an abuse of discretion. In
re Pioneer, 238 F.3d at 1373 n. 2 (“[I]t appears that
virtually all the circuits review the decision of a
district court [regarding waiver of privilege]
underlying a petition for writ of mandamus for abuse
of discretion.”). EchoStar asserts that to apply the
broad scope employed by the district court to the
waiver of both attorney-client privilege and workproduct
doctrine was an abuse of discretion. We
agree.
[12][13][14][15] The attorney-client privilege and the
work-product doctrine, though related, are two
distinct concepts and waiver of one does not
necessarily waive the other. See Carter v. Gibbs,
909 F.2d 1450, 1451 (Fed.Cir.1990) (en banc ),
superseded in non-relevant part, Pub.L. No. 103-424,
§ 9(c), 108 Stat. 4361 (1994), as recognized in
Mudge v. United States, 308 F.3d 1220, 1223
(Fed.Cir.2002); see also United States v. Nobles, 422
U.S. 225, 238 n. 11, 95 S.Ct. 2160, 45 L.Ed.2d 141
(1975). In general, a party may obtain discovery of
any matter that (1) is “not privileged” and (2) “is
relevant to the claim or defense of any party.”
Fed.R.Civ.P. 26(b)(1). Among other things,
attorney-client communications are designated as
“privileged.” See Upjohn, 449 U.S. at 389, 101 S.Ct.
677; Genentech, Inc. v. Int'l Trade Comm'n, 122
F.3d 1409, 1415 (Fed.Cir.1997). “The attorney-client
privilege protects the confidentiality of
communications between attorney and client made
for the purpose of obtaining legal advice.” Id. We
recognize the privilege in order to promote full and
frank communication between a client and his
attorney so that the client can make *1301 wellinformed
legal decisions and conform his activities to
the law. See Upjohn, 449 U.S. at 389, 101 S.Ct. 677;
XYZ Corp. v. United States, 348 F.3d 16, 22 (1st
Cir.2003). This privilege is at the discretion of the
client. Knorr-Bremse, 383 F.3d at 1345; Carter, 909
F.2d at 1451. The client can waive the attorneyclient
privilege when, for instance, it uses the advice
to establish a defense. See id. However, selective
waiver of the privilege may lead to the inequitable
result that the waiving party could waive its privilege
for favorable advice while asserting its privilege on
unfavorable advice. XYZ Corp., 348 F.3d at 24. In
such a case, the party uses the attorney-client
privilege as both a sword and a shield. Id.; Fort
James Corp., 412 F.3d at 1349. To prevent such
abuses, we recognize that when a party defends its
actions by disclosing an attorney-client
communication, it waives the attorney-client
privilege as to all such communications regarding the
same subject matter. Id.
[16] In contrast to the attorney-client privilege, the
work-product doctrine, or work-product immunity as
it is also called, can protect “documents and tangible
things” prepared in anticipation of litigation that are
both non-privileged and relevant. Fed.R.Civ.P.
26(b)(3). Unlike the attorney-client privilege, which
protects all communication whether written or oral,
work-product immunity protects documents and
tangible things, such as memorandums, letters, and e-
mails. See generally Judicial Watch, Inc. v. Dep't of
Justice, 432 F.3d 366 (D.C.Cir.2005). We recognize
work-product immunity because it promotes a fair
and efficient adversarial system by protecting “the
attorney's thought processes and legal
recommendations” from the prying eyes of his or her
opponent. Genentech, 122 F.3d at 1415 (citations
omitted); accord Hickman v. Taylor, 329 U.S. 495,
511-14, 67 S.Ct. 385, 91 L.Ed. 451 (1947) (“Proper
preparation of a client's case demands that he
assemble information, sift what he considers to be the
relevant from the irrelevant facts, prepare his legal
theories and plan his strategy without undue and
needless interference.... Were such materials open to
opposing counsel on mere demand, much of what is
now put down in writing would remain unwritten....
Inefficiency, unfairness and sharp practices would
inevitably develop in the giving of legal advice and in
the preparation of cases for trial. The effect on the
legal profession would be demoralizing. And the
interests of the clients and the cause of justice would
be poorly served.”); see also Nobles, 422 U.S. at
237; Coastal States Gas Corp. v. Dep't of Energy,
617 F.2d 854, 864 (D.C.Cir.1980). Essentially, the
work-product doctrine encourages attorneys to write
down their thoughts and opinions with the knowledge
that their opponents will not rob them of the fruits of
their labor. Hickman, 329 U.S. at 511, 67 S.Ct. 385;
Id. at 516, 67 S.Ct. 385 (Jackson, J. concurring )
(“[A] common law trial is and always should be an
adversary proceeding. Discovery was hardly
intended to enable a learned profession to perform its
functions either without wits or on wits borrowed
from the adversary.”); United States v. Adlman, 68
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F.3d 1495, 1501 (2d Cir.1995) (“The purpose of the
doctrine is to establish a zone of privacy for strategic
litigation planning and to prevent one party from
piggybacking on the adversary's preparation.”);
Coastal States, 617 F.2d at 864 (noting that the effect
of no immunity would mean “less work-product
would be committed to paper, which might harm the
quality of trial preparation”).
[17][18] Like the attorney-client privilege, however,
the work-product doctrine is not absolute. See In re
Martin Marietta Corp., 856 F.2d 619, 626 (4th
Cir.1988). *1302 First, a party may discover certain
types of work product if they have “substantial need
of the materials in the preparation of the party's case
and that the party is unable without undue hardship to
obtain the substantial equivalent ... by other means.”
Rule 26(b)(3). This rule, however, only allows
discovery of “factual” or “non-opinion” work product
and requires a court to “protect against the disclosure
of the mental impressions, conclusions, opinions, or
legal theories of an attorney or other representative.”
Id.; accord United States v. Adlman, 134 F.3d 1194,
1197 (2d Cir.1998); Martin Marietta Corp., 856
F.2d at 626.
[19][20] Second, a party may discover work product
if the party waives its immunity. See id. at 622-23;
Thorn EMI N. Am. v. Micron Tech., 837 F.Supp. 616,
621 (D.Del.1993). However, work product waiver is
not a broad waiver of all work product related to the
same subject matter like the attorney-client privilege.
Martin Marietta Corp., 856 F.2d at 626. Instead,
work-product waiver only extends to “factual” or
“non-opinion” work product concerning the same
subject matter as the disclosed work product. See id.
at 625 (noting that a party “impliedly waived the
work-product privilege as to all non-opinion workproduct
on the same subject matter as that
disclosed.”) (citing Nobles, 422 U.S. at 239, 95 S.Ct.
2160).
We recognize that the line between “factual” work
product and “opinion” work product is not always
distinct, especially when, as here, an attorney's
opinion may itself be “factual” work product. When
faced with the distinction between where that line
lies, however, a district court should balance the
policies to prevent sword-and-shield litigation tactics
with the policy to protect work product.
[21] That being said, we recognize at least three
categories of work product that are potentially
relevant to the advice-of-counsel defense here. They
include: (1) documents that embody a
communication between the attorney and client
concerning the subject matter of the case, such as a
traditional opinion letter; (2) documents analyzing
the law, facts, trial strategy, and so forth that reflect
the attorney's mental impressions but were not given
to the client; and (3) documents that discuss a
communication between attorney and client
concerning the subject matter of the case but are not
themselves communications to or from the client.
See Thorn EMI, 837 F.Supp. at 622-623. FN3 As to the
first category, we already noted in section A that
when a party relies on the advice-of-counsel as a
defense to willful infringement the party waives its
attorney-client privilege for all communications
between the attorney and client, including any
documentary communications such as opinion letters
and memoranda. See also Akeva LLC, 243
F.Supp.2d at 423. FN4 As to the other two categories,
scholars have noted that our prior opinions do not
clearly define*1303 the scope of the work-product
waiver. FN5 As a result, the district courts that have
addressed this issue are split on just how far to extend
that scope. Compare Thorn EMI, 837 F.Supp. at
621-623 and Steelcase, Inc. v. Haworth, Inc., 954
F.Supp. 1195, 1198-99 (W.D.Mich.1997) with
Mushroom Assoc. v. Monterey Mushrooms, Inc., 24
U.S.P.Q.2d 1767 (N.D.Cal.1992); FMT Corp. v.
Nissei ASB Co., 24 U.S.P.Q.2d 1073 (N.D.Ga.1992);
and Handgards, Inc. v. Johnson & Johnson, 413
F.Supp. 926 (N.D.Cal.1976). As we discuss in more
detail below, we conclude that waiver extends to the
third category but does not extend so far as the
second.
FN3. We by no means anticipate that all
work product in every case will fit into one
of these three categories.
FN4. EchoStar contends that waiver of
opinions does not extend to advice and work
product given after litigation began. While
this may be true when the work product is
never communicated to the client, it is not
the case when the advice is relevant to
ongoing willful infringement, so long as that
ongoing infringement is at issue in the
litigation. See Akeva LLC, 243 F.Supp.2d
at 423 (“[O]nce a party asserts the defense
of advice of counsel, this opens to inspection
the advice received during the entire course
of the alleged infringement.”); see also
Crystal Semiconductor Corp. v. TriTech
Microelectronics Int'l, Inc., 246 F.3d 1336,
1351-1353 (Fed.Cir.2001) (noting that an
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infringer may continue its infringement after
notification of the patent by filing suit and
that the infringer has a duty of due care to
avoid infringement after such notification).
FN5. See David O. Taylor, Wasting
Resources: Reinventing the Scope of Waiver
Resulting from the Advice-of-Counsel
Defense to a Charge of Willful Patent
Infringement, 12 Tex. Intell. Prop. L.J. 319,
320-21 (2004); William F. Lee & Lawrence
P. Cogswell, III, Understanding and
Addressing the Unfair Dilemma Created by
the Doctrine of Willful Patent Infringement,
41 Hous. L.Rev. 393, 436-37 (2004).
[22] By asserting the advice-of-counsel defense to a
charge of willful infringement, the accused infringer
and his or her attorney do not give their opponent
unfettered discretion to rummage through all of their
files and pillage all of their litigation strategies. See
Thorn EMI, 837 F.Supp. at 621-623 (“[C]ourts
generally find a [work-product] waiver only if facts
relevant to a particular, narrow subject matter are at
issue and have been disclosed under circumstances
where it would be unfair to deny the other party an
opportunity to discover other facts relevant to that
subject matter.”). Work-product waiver extends
only so far as to inform the court of the infringer's
state of mind. Counsel's opinion is not important for
its legal correctness. It is important to the inquiry
whether it is “thorough enough, as combined with
other factors, to instill a belief in the infringer that a
court might reasonably hold the patent is invalid, not
infringed, or unenforceable.” Ortho Pharm. Corp. v.
Smith, 959 F.2d 936, 944 (Fed.Cir.1992). It is what
the alleged infringer knew or believed, and by
contradistinction not what other items counsel may
have prepared but did not communicate to the client,
that informs the court of an infringer's willfulness.
The overarching goal of waiver in such a case is to
prevent a party from using the advice he received as
both a sword, by waiving privilege to favorable
advice, and a shield, by asserting privilege to
unfavorable advice. See Fort James Corp., 412 F.3d
at 1349; Martin Marietta Corp., 856 F.2d at 626; In
re Sealed Case, 676 F.2d 793, 818 (D.C.Cir.1982)
(“[W]hen a party seeks greater advantage from its
control over work product than the law must provide
to maintain a healthy adversary system[,] then the
balance of interests recognized in Hickman ...
shifts.”). To the extent the work-product immunity
could have such an effect, it is waived.
[23] The second category of work product, which is
never communicated to the client, is not discoverable.
Under Rule 26(b)(3), this so-called “opinion” work
product deserves the highest protection from
disclosure. See Adlman, 134 F.3d at 1197. While
an accused infringer may waive the immunity for
work product that embodies an opinion in letters and
memorandum communicated to the client, he does
not waive the attorney's own analysis and debate over
what advice will be given. See Ortho Pharm., 959
F.2d at 944. Upon waiver of attorney-client
privilege, communicative documents, such as opinion
letters, become evidence of a non-privileged, relevant
fact, namely what was communicated to the client,
see Nobles, 422 U.S. at 239 n. 14, 95 S.Ct. 2160
(“[W]here ... counsel attempts to make a testimonial
use of [work-product] materials the normal rules
*1304 of evidence come into play with respect to ...
production of documents.”); however, counsel's
legal opinions and mental impressions that were not
communicated do not acquire such factual
characteristics and are, therefore, not within the scope
of the waiver. As the Martin Marietta Corp. court
noted,
There is relatively little danger that a litigant will
attempt to use a pure mental impression or legal
theory as a sword and as a shield in the trial of a case
so as to distort the factfinding process. Thus, the
protection of lawyers from the broad repercussions of
subject matter waiver in this context strengthens the
adversary process, and, unlike the selective
disclosure of evidence, may ultimately and ideally
further the search for the truth.
856 F.2d at 626. Thus, if a legal opinion or mental
impression was never communicated to the client,
then it provides little if any assistance to the court in
determining whether the accused knew it was
infringing, and any relative value is outweighed by
the policies supporting the work-product doctrine.
The third category of work product material falls
admittedly somewhere interstitially between the first
and second. In some instances there may be
documents in the attorney's file that reference and/or
describe a communication between the attorney and
client, but were not themselves actually
communicated to the client. For example, if an
attorney writes a memorandum or an e-mail to his
associate referencing a phone call with the client, in
which he indicates that he discussed the client's
potential infringement, then such a memorandum is
discoverable. Unlike work product that was
uncommunicated, this work product references a
specific communication to the client. Though it is
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448 F.3d 1294 Page 11
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(Cite as: 448 F.3d 1294)
not a communication to the client directly nor does it
contain a substantive reference to what was
communicated, it will aid the parties in determining
what communications were made to the client and
protect against intentional or unintentional
withholding of attorney-client communications from
the court.
Still, we must emphasize that such communications
may contain work product of the second kind-legal
analysis that was not communicated. In those
situations, the parties should take special care to
redact such information, and if necessary the district
court may review such material in camera. See Rule
26(b)(3); see also id. advisory committee's note
(1970) (“[T]he courts will sometimes find it
necessary to order disclosure of a document but with
portions deleted.”); Martin Marietta Corp., 856 F.2d
at 626.
[24] Therefore, when an alleged infringer asserts its
advice-of-counsel defense regarding willful
infringement of a particular patent, it waives its
immunity for any document or opinion that embodies
or discusses a communication to or from it
concerning whether that patent is valid, enforceable,
and infringed by the accused. This waiver of both
the attorney-client privilege and the work-product
immunity includes not only any letters,
memorandum, conversation, or the like between the
attorney and his or her client, but also includes, when
appropriate, any documents referencing a
communication between attorney and client. FN6
FN6. Merchant & Gould contends that it
alone retains the right to deny a party access
to work product not communicated to a
client. While we do not answer this
question directly; here, the client, EchoStar,
holds the right to waive privilege for
attorney-client communications, Carter, 909
F.2d at 1451, and therefore the right to
waive privilege to evidence of those
communications contained in Merchant &
Gould's files. As we stated before, there
may be a redaction of information which
reflects legal opinions and mental
impressions of Merchant & Gould attorneys
that were not communicated to EchoStar.
Rule 26(b)(3).
EchoStar's waiver because it obviously played no part
in EchoStar's belief as to infringement of the '389
patent. See Steelcase, 954 F.Supp. at 1198-99. It
may very well be true, as TiVo suggests, that at times
some parties would communicate draft opinion letters
or the contents thereof to the client confidentially in
order to avoid disclosing that communication during
potential discovery if and when the attorney-client
privilege is waived, but we cannot eviscerate the
legitimate policies of the work-product doctrine and
chill the principles of our adversary system as a
whole on account of the possibility that, from time to
time, there may be occurrences of ethical
transgressions.
In sum, the advice-of-counsel defense to willfulness
requires the court to decide, inter alia, whether
counsel's opinion was thorough enough to “instill a
belief in the infringer that a court might reasonably
hold the patent is invalid, not infringed, or
unenforceable.” Ortho Pharm., 959 F.2d at 944. If
a Merchant & Gould document was not
communicated to EchoStar or if a Merchant & Gould
document does not reference a communication
between Merchant & Gould and EchoStar, its
relevant value is outweighed by the policies of the
work-product doctrine. Thus, it was an abuse of
discretion for the district court to determine that the
scope of the waiver of privilege extended to such
documents.
Accordingly,
IT IS ORDERED THAT:
The petitions are granted. The district court is
directed to vacate its orders, to the extent noted
above. TiVo is entitled to discovery of Merchant &
Gould documents consistent with, and in the manner
set forth in, this opinion.
C.A.Fed.,2006.
In re EchoStar Communications Corp.
448 F.3d 1294, 78 U.S.P.Q.2d 1676
Briefs and Other Related Documents (Back to top)
• 06-M805 (Docket) (Oct. 25, 2005)
• 06-M803 (Docket) (Oct. 11, 2005)
END OF DOCUMENT
*1305 [25] Here, Merchant & Gould work product
that was not communicated to EchoStar or does not
reflect a communication is not within the scope of
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448 F.3d 1294 Page 1
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(Cite as: 448 F.3d 1294)
Briefs and Other Related Documents
United States Court of Appeals,Federal Circuit.
In re ECHOSTAR COMMUNICATIONS
CORPORATION, Echostar DBS Corporation,
Echostar Technologies Corporation, and Echosphere
Limited Liability Company, and Merchant & Gould
P.C., Petitioners.
Misc. Nos. 803, 805.
May 1, 2006.
Rehearing and Rehearing En Banc Denied July 5,
2006.
Background: In patent infringement action in which
defendant asserted defense of reliance on advice of
in-house counsel, plaintiff sought production of
relevant documents, including documents relating to
outside counsel whose advice was not relied on. The
District Court determined that defendant waived its
attorney-client privilege, and that waiver extended to
work-product not communicated to defendant.
Defendant petitioned for writ of mandamus, and
outside counsel moved to intervene and petitioned for
a writ of mandamus.
Holdings: The Court of Appeals, Gajarsa, Circuit
Judge, held that
(1) defendant waived its attorney-client privilege
with regard to any attorney-client communications
relating to the same subject matter, including
communications with counsel other than in-house
counsel, but
(2) outside counsel's work product that was not
communicated to defendant and did not reflect a
communication, was not within the scope of
defendant's waiver of work product immunity.
Petitions granted in part.
West Headnotes
[1] Mandamus 250 26
250 Mandamus
250II Subjects and Purposes of Relief
250II(A) Acts and Proceedings of Courts,
Judges, and Judicial Officers
250k26 k. Exercise of Judicial Powers and
Functions in General. Most Cited Cases
Mandamus 250 28
250 Mandamus
250II Subjects and Purposes of Relief
250II(A) Acts and Proceedings of Courts,
Judges, and Judicial Officers
250k28 k. Matters of Discretion. Most Cited
Cases
Remedy of mandamus is available in extraordinary
situations to correct a clear abuse of discretion or
usurpation of judicial power.
[2] Mandamus 250 168(2)
250 Mandamus
250III Jurisdiction, Proceedings, and Relief
250k168 Evidence
250k168(2) k. Presumptions and Burden of
Proof. Most Cited Cases
A party seeking a writ of mandamus bears burden of
proving that it has no other means of obtaining the
relief desired, and that the right to issuance of the
writ is clear and indisputable.
[3] Mandamus 250 32
250 Mandamus
250II Subjects and Purposes of Relief
250II(A) Acts and Proceedings of Courts,
Judges, and Judicial Officers
250k32 k. Proceedings in Civil Actions in
General. Most Cited Cases
A writ of mandamus may be sought when the
challenged order turns on questions of privilege.
[4] Mandamus 250 32
250 Mandamus
250II Subjects and Purposes of Relief
250II(A) Acts and Proceedings of Courts,
Judges, and Judicial Officers
250k32 k. Proceedings in Civil Actions in
General. Most Cited Cases
Fact that defendant in patent infringement case had
complied in large part with discovery order did not
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448 F.3d 1294 Page 2
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(Cite as: 448 F.3d 1294)
mean that it could not challenge a part of the order in
a petition for a writ of mandamus.
[5] Courts 106 96(7)
106 Courts
106II Establishment, Organization, and Procedure
106II(G) Rules of Decision
106k88 Previous Decisions as Controlling
or as Precedents
106k96 Decisions of United States
Courts as Authority in Other United States Courts
106k96(7) k. Particular Questions or
Subject Matter. Most Cited Cases
Federal Circuit law applies when deciding whether
particular written or other materials are discoverable
in a patent case, if those materials relate to an issue of
substantive patent law.
[6] Courts 106 96(7)
106 Courts
106II Establishment, Organization, and Procedure
106II(G) Rules of Decision
106k88 Previous Decisions as Controlling
or as Precedents
106k96 Decisions of United States
Courts as Authority in Other United States Courts
106k96(7) k. Particular Questions or
Subject Matter. Most Cited Cases
Questions of privilege and discoverability that arise
from assertion of the advice-of-counsel defense in a
patent infringement case necessarily involve issues of
substantive patent law, so that Federal Circuit law
applies. 35 U.S.C.A. § § 284-285.
[7] Witnesses 410 198(1)
410 Witnesses
410II Competency
410II(D) Confidential Relations and Privileged
Communications
410k197 Communications to or Advice by
Attorney or Counsel
410k198 In General
410k198(1) k. In General. Most Cited
Cases
The attorney-client privilege protects disclosure of
communications between a client and his attorney.
[8] Witnesses 410 219(3)
410 Witnesses
410II Competency
410II(D) Confidential Relations and Privileged
Communications
410k219 Waiver of Privilege
410k219(3) k. Communications to or
Advice by Attorney or Counsel. Most Cited Cases
Defendant which chose, in patent infringement case,
to rely on the advice of in-house counsel, thus waived
its attorney-client privilege with regard to any
attorney-client communications relating to the same
subject matter, including communications with
counsel other than in-house counsel.
[9] Witnesses 410 219(3)
410 Witnesses
410II Competency
410II(D) Confidential Relations and Privileged
Communications
410k219 Waiver of Privilege
410k219(3) k. Communications to or
Advice by Attorney or Counsel. Most Cited Cases
Once a party announces that it will rely on the advice
of counsel defense in response to an assertion of
willful patent infringement, the attorney-client
privilege is waived, and the waiver applies to all
other communications relating to the same subject
matter.
[10] Witnesses 410 219(3)
410 Witnesses
410II Competency
410II(D) Confidential Relations and Privileged
Communications
410k219 Waiver of Privilege
410k219(3) k. Communications to or
Advice by Attorney or Counsel. Most Cited Cases
The opinion formed in a patent infringement case by
defendant's in-house counsel and conveyed to
defendant's executives constituted a legal opinion, for
purposes of determination of the scope of defendant's
waiver of attorney-client privilege, even though it
was not a traditional opinion of counsel.
[11] Federal Courts 170B 824
170B Federal Courts
170BVIII Courts of Appeals
170BVIII(K) Scope, Standards, and Extent
170BVIII(K)4 Discretion of Lower Court
170Bk824 k. Witnesses, Qualification
and Examination Of. Most Cited Cases
Court of Appeals reviews a district court's
determination as to the scope of a waiver of attorney-
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448 F.3d 1294 Page 3
448 F.3d 1294, 78 U.S.P.Q.2d 1676
(Cite as: 448 F.3d 1294)
client privilege for an abuse of discretion.
[12] Federal Civil Procedure 170A 1272.1
170A Federal Civil Procedure
170AX Depositions and Discovery
170AX(A) In General
170Ak1272 Scope
170Ak1272.1 k. In General. Most Cited
Cases
In general, a party may obtain discovery of any
matter that (1) is not privileged and (2) is relevant to
the claim or defense of any party. Fed.Rules
Civ.Proc.Rule 26(b)(1), 28 U.S.C.A.
[13] Witnesses 410 200
410 Witnesses
410II Competency
410II(D) Confidential Relations and Privileged
Communications
410k197 Communications to or Advice by
Attorney or Counsel
410k200 k. Professional Character of
Employment or Transaction. Most Cited Cases
Attorney-client privilege protects the confidentiality
of communications between attorney and client made
for the purpose of obtaining legal advice.
[14] Witnesses 410 219(3)
410 Witnesses
410II Competency
410II(D) Confidential Relations and Privileged
Communications
410k219 Waiver of Privilege
410k219(3) k. Communications to or
Advice by Attorney or Counsel. Most Cited Cases
Attorney-client privilege is at the discretion of the
client.
[15] Witnesses 410 219(3)
410 Witnesses
410II Competency
410II(D) Confidential Relations and Privileged
Communications
410k219 Waiver of Privilege
410k219(3) k. Communications to or
Advice by Attorney or Counsel. Most Cited Cases
Client can waive the attorney-client privilege when it
uses the advice to establish a defense.
[16] Federal Civil Procedure 170A 1600(3)
170A Federal Civil Procedure
170AX Depositions and Discovery
170AX(E) Discovery and Production of
Documents and Other Tangible Things
170AX(E)3 Particular Subject Matters
170Ak1600 Privileged Matters in
General
170Ak1600(3) k. Work Product of
Attorney. Most Cited Cases
Work-product doctrine, or work-product immunity,
can protect documents and tangible things prepared
in anticipation of litigation that are both nonprivileged
and relevant. Fed.Rules Civ.Proc.Rule
26(b)(3), 28 U.S.C.A.
[17] Federal Civil Procedure 170A 1600(3)
170A Federal Civil Procedure
170AX Depositions and Discovery
170AX(E) Discovery and Production of
Documents and Other Tangible Things
170AX(E)3 Particular Subject Matters
170Ak1600 Privileged Matters in
General
170Ak1600(3) k. Work Product of
Attorney. Most Cited Cases
Work-product doctrine is not absolute, and a party
may discover certain types of work product if they
have substantial need of the materials in the
preparation of the party's case and are unable without
undue hardship to obtain the substantial equivalent by
other means. Fed.Rules Civ.Proc.Rule 26(b)(3), 28
U.S.C.A.
[18] Federal Civil Procedure 170A 1600(3)
170A Federal Civil Procedure
170AX Depositions and Discovery
170AX(E) Discovery and Production of
Documents and Other Tangible Things
170AX(E)3 Particular Subject Matters
170Ak1600 Privileged Matters in
General
170Ak1600(3) k. Work Product of
Attorney. Most Cited Cases
Rule allowing discovery of certain types of work
product only allows discovery of factual or nonopinion
work product and requires the court to
protect against the disclosure of the mental
impressions, conclusions, opinions, or legal theories
of an attorney or other representative. Fed.Rules
Civ.Proc.Rule 26(b)(3), 28 U.S.C.A.
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448 F.3d 1294 Page 4
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(Cite as: 448 F.3d 1294)
[19] Federal Civil Procedure 170A 1600(5)
170A Federal Civil Procedure
170AX Depositions and Discovery
170AX(E) Discovery and Production of
Documents and Other Tangible Things
170AX(E)3 Particular Subject Matters
170Ak1600 Privileged Matters in
General
170Ak1600(5) k. Waiver. Most Cited
Cases
A party may discover work product if the party
waives its immunity.
[20] Federal Civil Procedure 170A 1600(5)
170A Federal Civil Procedure
170AX Depositions and Discovery
170AX(E) Discovery and Production of
Documents and Other Tangible Things
170AX(E)3 Particular Subject Matters
170Ak1600 Privileged Matters in
General
170Ak1600(5) k. Waiver. Most Cited
Cases
Work product waiver is not a broad waiver of all
work product related to the same subject matter, but
only extends to factual or non-opinion work product
concerning the same subject matter as the disclosed
work product.
[21] Federal Civil Procedure 170A 1600(5)
170A Federal Civil Procedure
170AX Depositions and Discovery
170AX(E) Discovery and Production of
Documents and Other Tangible Things
170AX(E)3 Particular Subject Matters
170Ak1600 Privileged Matters in
General
170Ak1600(5) k. Waiver. Most Cited
Cases
Waiver of work product opinions extends to advice
and work product given after litigation began when
the advice is relevant to ongoing willful
infringement, so long as that ongoing infringement is
at issue in the litigation.
[22] Patents 291 292.3(1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k292 Discovery
291k292.3 Production of Documents and
Other Matters
291k292.3(1) k. In General. Most
Cited Cases
Work-product waiver in a patent infringement case
extends only so far as to inform the court of the
infringer's state of mind.
[23] Federal Civil Procedure 170A 1600(5)
170A Federal Civil Procedure
170AX Depositions and Discovery
170AX(E) Discovery and Production of
Documents and Other Tangible Things
170AX(E)3 Particular Subject Matters
170Ak1600 Privileged Matters in
General
170Ak1600(5) k. Waiver. Most Cited
Cases
Work product reflecting counsel's opinions and
mental impressions, which is never communicated to
the client, is not within the scope of a defendant's
waiver of work-product immunity. Fed.Rules
Civ.Proc.Rule 26(b)(3), 28 U.S.C.A.
[24] Patents 291 292.3(1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k292 Discovery
291k292.3 Production of Documents and
Other Matters
291k292.3(1) k. In General. Most
Cited Cases
When an alleged patent infringer asserts an adviceof-counsel
defense regarding willful infringement, it
waives its attorney-client privilege and work-product
immunity for any document or opinion that embodies
or discusses a communication to or from it
concerning whether that patent is valid, enforceable,
and infringed by the accused; waiver includes not
only any letters, memorandum, conversation, or the
like between the attorney and his or her client, but,
when appropriate, any documents referencing a
communication between attorney and client.
[25] Patents 291 292.3(1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k292 Discovery
291k292.3 Production of Documents and
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448 F.3d 1294 Page 5
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(Cite as: 448 F.3d 1294)
Other Matters
291k292.3(1) k. In General. Most
Cited Cases
Outside counsel's work product in patent
infringement case, that was not communicated to
defendant and did not reflect a communication, was
not within the scope of defendant's waiver of workproduct
immunity based on its assertion of an adviceof-counsel
defense; any relevant value of such work
product was outweighed by the policies of the workproduct
doctrine.
*1296 Harold J. McElhinny, Rachel Krevans, Alison
M. Tucher, Morrison & Foerster LLP, San Francisco,
CA, Jon R. Trembath, Merchant & Gould P.C.,
Denver, CO, for Petitioners.
Morgan Chu, Perry M. Goldberg, Christine Byrd,
Irell & Manella LLP, Los Angeles, CA, for
Respondent.
Before SCHALL, GAJARSA, and PROST, Circuit
Judges.
ORDER
GAJARSA, Circuit Judge.
EchoStar Communications Corporation, EchoStar
DBS Corporation, EchoStar Technologies
Corporation, and Echosphere Limited Liability
Company (collectively “EchoStar”) petition for a writ
of mandamus, in Miscellaneous Docket No. 803, to
direct the United States District Court for the Eastern
District of Texas, in case 2:04-CV-1, to vacate its
September 26, 2005 and October 6, 2005 orders that
compelled EchoStar to produce documents created by
the law firm Merchant & Gould P.C. that EchoStar
asserts are protected from discovery by the workproduct
doctrine. Merchant & Gould moves for
leave to intervene in Miscellaneous Docket No. 803
and submits its own petition for a writ of mandamus,
filed as Miscellaneous Docket No. 805. TiVo, Inc.
opposes the petitions and responds to the motion for
leave to intervene. EchoStar and Merchant & Gould
reply. We grant Merchant & Gould's unopposed
motion for leave to intervene*1297 in Miscellaneous
Docket No. 803. The motions for leave to file the
replies are also granted. To the extent set forth
below, we grant the petition for mandamus.
I
TiVo sued EchoStar for infringement of its U.S.
Patent No. 6,233,389 (“the '389 patent”). In
response to the allegation of willful infringement,
EchoStar asserted the defense of reliance on advice
of counsel. Prior to the filing of the action, EchoStar
relied on advice of in-house counsel. After the
action was filed, EchoStar obtained additional legal
advice from Merchant & Gould but elected not to
rely on it. Presumably to explore further EchoStar's
state of mind in determining that it did not infringe
the patent, TiVo sought production of documents in
the possession of EchoStar and Merchant & Gould.
The district court held that by relying on advice of inhouse
counsel EchoStar waived its attorney-client
privilege and attorney work-product immunity
relating to advice of any counsel regarding
infringement, including Merchant & Gould. The
district court indicated that the scope of the waiver
included communications made either before or after
the filing of the complaint and any work product,
whether or not the product was communicated to
EchoStar. The district court also held that EchoStar
could redact information related only to trial
preparation or information unrelated to infringement.
EchoStar produced communications, including two
infringement opinions from Merchant & Gould, but
did not produce any work product related to the
Merchant & Gould opinions. FN1
FN1. EchoStar also provided notes and
communications relating to infringement
prepared by another firm.
Thereafter, the parties sought clarification of the
district court's order. TiVo argued that the district
court should order EchoStar to produce all Merchant
& Gould documents that relate to the advice-ofcounsel
defense, even if EchoStar was not in
possession of the documents because they were never
communicated to EchoStar. EchoStar argued that it
should only be required to produce documents that
were provided to it by Merchant & Gould.
On October 5, 2005, the district court issued an order
that clarified its previous order and stated that the
waiver of immunity extended to all work product of
Merchant & Gould, whether or not communicated to
EchoStar. The district court determined that the
documents could be relevant or lead to the discovery
of admissible evidence because they might contain
information that was conveyed to EchoStar, even if
the documents were not themselves conveyed to
EchoStar. EchoStar petitions this court for a writ of
mandamus with respect to the Merchant & Gould
documents not provided to EchoStar, FN2 challenging
the district court's rulings. Merchant & Gould
moves for leave to intervene in EchoStar's petition
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448 F.3d 1294 Page 6
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(Cite as: 448 F.3d 1294)
and submits its own petition for a writ of mandamus.
FN2. No in-house counsel documents are at
issue in the petition.
II
[1][2][3] The remedy of mandamus is available in
extraordinary situations to correct a clear abuse of
discretion or usurpation of judicial power. In re
Calmar, Inc., 854 F.2d 461, 464 (Fed.Cir.1988). A
party seeking a writ bears the burden of proving that
it has no other means of obtaining the relief desired,
Mallard v. U.S. Dist. Court, 490 U.S. 296, 309, 109
S.Ct. 1814, 104 L.Ed.2d 318 (1989), and that the
right to issuance of the writ is “clear and
indisputable,” Allied Chem. Corp. v. Daiflon, Inc.,
449 U.S. 33, 35, 101 S.Ct. 188, 66 L.Ed.2d 193
(1980). A writ of mandamus may be *1298 sought
when the challenged order turns on questions of
privilege. In re Regents of Univ. of Cal., 101 F.3d
1386, 1387 (Fed.Cir.1996); In re Pioneer Hi-Bred
Int'l, Inc., 238 F.3d 1370, 1374 (Fed.Cir.2001).
EchoStar argues that a writ of mandamus should
issue, among other reasons, because the district court
erred in determining that (1) the attorney-client
privilege had been waived and (2) the waiver of any
privilege extended to work-product that was not
communicated to EchoStar because, inter alia, the
documents are not relevant to whether EchoStar had
a good faith belief that it did not infringe. Merchant
& Gould also argues that the district court erred in
requiring the production of documents that Merchant
& Gould did not provide to EchoStar because any
such documents could not be relevant to whether
EchoStar reasonably had a good faith belief that it did
not infringe, based upon advice from counsel.
In response, TiVo argues, inter alia, that (1) EchoStar
is not entitled to a writ of mandamus because it has
complied, in large part, with the district court orders
it now challenges, (2) the attorney-client privilege
was waived when EchoStar asserted a defense of
reliance on advice of in-house counsel, (3) the
relevance of the Merchant & Gould documents can
be determined when they are offered as evidence, and
(4) even though the Merchant & Gould documents
may not have been provided to EchoStar, they may
contain information that was otherwise conveyed to
EchoStar.
[4] Regarding TiVo's first argument, that EchoStar is
not entitled to mandamus because it has complied in
large part with the order, we do not believe it is a
requirement that a party refuse to comply at all with
an order, if it seeks to challenge only a part of the
order. Such a rule would encourage parties not to
comply with district court orders that, in large part,
they do not challenge, so that they could preserve a
challenge only to the portions that they believe are
erroneous. EchoStar cannot undo the disclosures it
has made to TiVo, but it can challenge the portions of
the order that require additional disclosures.
We now turn to the more substantive arguments
underlying this petition.
III
[5][6] In this petition, we apply our own law, rather
than the law of the regional circuit. This case
involves the extent to which a party waives its
attorney-client privilege and work-product immunity
when it asserts the advice-of-counsel defense in
response to a charge of willful patent infringement.
“Federal Circuit law applies when deciding whether
particular written or other materials are discoverable
in a patent case, if those materials relate to an issue of
substantive patent law.” Advanced Cardiovascular
Sys. v. Medtronic, Inc., 265 F.3d 1294, 1307
(Fed.Cir.2001). A remedy for willful patent
infringement is specifically provided for in the Patent
Act, see 35 U.S.C. § § 284-285; therefore, questions
of privilege and discoverability that arise from
assertion of the advice-of-counsel defense necessarily
involve issues of substantive patent law, see In re
Spalding Sports Worldwide, Inc., 203 F.3d 800, 803-
04 (Fed.Cir.2000) (applying Federal Circuit law to
question of attorney-client privilege between patent
attorney and patentee).
A
[7] EchoStar first challenges the district court's
holding that EchoStar waived the attorney-client
privilege when it asserted its defense in response to
the charge of willful infringement. The attorneyclient
privilege protects disclosure of
communications between a client and his *1299
attorney. United States v. Zolin, 491 U.S. 554, 562,
109 S.Ct. 2619, 105 L.Ed.2d 469 (1989); Upjohn Co.
v. United States, 449 U.S. 383, 389, 101 S.Ct. 677, 66
L.Ed.2d 584 (1981).
[8][9] Once a party announces that it will rely on
advice of counsel, for example, in response to an
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448 F.3d 1294 Page 7
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(Cite as: 448 F.3d 1294)
assertion of willful infringement, the attorney-client
privilege is waived. “The widely applied standard for
determining the scope of a waiver of attorney-client
privilege is that the waiver applies to all other
communications relating to the same subject matter.”
Fort James Corp. v. Solo Cup Co., 412 F.3d 1340,
1349 (Fed.Cir.2005).
[10] EchoStar argues that it did not assert the adviceof-counsel
defense because it intended to rely only on
an “in-house investigation supervised by in-house
counsel.” The district court held that the opinion
formed by in-house counsel and conveyed to
EchoStar executives, although not a traditional
opinion of counsel, constituted a legal opinion. We
see no error in the district court's determination.
EchoStar summarily asserts that “an internal
investigation involving in-house engineers and inhouse
counsel is simply a different subject matter
from legal opinions commissioned at a later date
from outside lawyers.” This argument is without
merit. Whether counsel is employed by the client or
hired by outside contract, the offered advice or
opinion is advice of counsel or an opinion of counsel.
Use of in-house counsel may affect the strength of
the defense, but it does not affect the legal nature of
the advice. See Underwater Devices, Inc. v.
Morrison-Knudsen Co., 717 F.2d 1380, 1390
(Fed.Cir.1983) (overruled in part on other grounds
by Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH
v. Dana Corp., 383 F.3d 1337 (Fed.Cir.2004) (en
banc )).
Thus, when EchoStar chose to rely on the advice of
in-house counsel, it waived the attorney-client
privilege with regard to any attorney-client
communications relating to the same subject matter,
including communications with counsel other than
in-house counsel, which would include
communications with Merchant & Gould. See Akeva
LLC v. Mizuno Corp., 243 F.Supp.2d 418, 423
(M.D.N.C.2003).
B
EchoStar next asserts that the district court's order
cast too wide a net by including within the waiver's
scope documents that were never communicated
from Merchant & Gould (the attorney) to EchoStar
(the client). The district court stated:
EchoStar had the benefit of choice, as explained by
the Federal Circuit in Knorr-Bremse Systeme Fuer
Nutzfahrzeuge GmbH v. Dana Corp., of whether to
introduce [in-house counsel's] opinion. But once
EchoStar chose to introduce the opinion, it opened to
inspection all related advice sought and developed
regarding EchoStar's potential infringement of the
'389 patent. Regardless of when the opinions or
materials were transcribed or communicated to
EchoStar, such information necessarily relates to the
opinion being offered by [in-house counsel] and goes
to show EchoStar's state of mind with respect to
willful infringement. This is particularly true where,
as is the case here, EchoStar's willfulness witness was
privy to the substance of the willfulness opinions
developed by outside counsel both pre- and postfiling....
TiVo, Inc. v. EchoStar Comm. Corp., No. 2:04-CV-1,
at 13 (E.D.Tex. Sept. 26, 2005) (“September Order”).
Noting that district courts had ruled differently on
whether the waiver of work-product protection
covered documents that were not disclosed to the
client, the district court discussed the *1300 reasons
for requiring production of uncommunicated work
product:Still, other courts have mandated production
of all material regardless of whether they were
disclosed, maintaining that the discovery of such
information is necessary to uncover what the client
was actually told by opinion counsel. See Aspex
Eyewear Inc. v. E'Lite Optik Inc., 276 F.Supp.2d
1084, 1092-93 (D.Nev.2003); Novartis Pharms.
Corp. v. EON Labs Mfg., Inc., 206 F.R.D. 396
(D.Del.2002). In Novartis, the court stated, “it is
critical for the patentee to have a full opportunity to
probe, not only the state of mind of the infringer, but
also the mind of the infringer's lawyer upon which
the infringer so firmly relied.” Id. at 399. The
rationale behind this approach is that, by imposing
broad waiver, the advice of counsel defense will only
be invoked by “infringers who prudently and
sincerely sought competent advice from competent
counsel ...” and “[m]oreover, focusing on the
infringer's waiver rather than state of mind may
reduce the chances of legal gamesmanship creeping
into the practice of rendering infringement and
validity opinions.” Id. “[I]f negative information was
important enough to reduce to a memorandum, there
is a reasonable possibility that the information was
conveyed in some form or fashion to the client.”
Beneficial Franchise Co. Inc. v. Bank One N.A., 205
F.R.D. 212, 218 (N.D.Ill.2001).
September Order at 11-12.
In a subsequent order, the district court further
explained why the scope of the waiver should include
work product that was not disclosed to EchoStar:
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Were discovery of “uncommunicated” materials not
allowed, accused infringers could easily shield
themselves from any unfavorable analysis by simply
requesting that their opinion counsel not send it.
This would be unfair.
TiVo, Inc. v. EchoStar Comm. Corp., No. 2:04-CV-1,
2005 WL 3024701 at 3 (E.D.Tex. Oct. 7, 2005)
(“October Order”).
[11] We review the district court's determination as to
the scope of the waiver for an abuse of discretion. In
re Pioneer, 238 F.3d at 1373 n. 2 (“[I]t appears that
virtually all the circuits review the decision of a
district court [regarding waiver of privilege]
underlying a petition for writ of mandamus for abuse
of discretion.”). EchoStar asserts that to apply the
broad scope employed by the district court to the
waiver of both attorney-client privilege and workproduct
doctrine was an abuse of discretion. We
agree.
[12][13][14][15] The attorney-client privilege and the
work-product doctrine, though related, are two
distinct concepts and waiver of one does not
necessarily waive the other. See Carter v. Gibbs,
909 F.2d 1450, 1451 (Fed.Cir.1990) (en banc ),
superseded in non-relevant part, Pub.L. No. 103-424,
§ 9(c), 108 Stat. 4361 (1994), as recognized in
Mudge v. United States, 308 F.3d 1220, 1223
(Fed.Cir.2002); see also United States v. Nobles, 422
U.S. 225, 238 n. 11, 95 S.Ct. 2160, 45 L.Ed.2d 141
(1975). In general, a party may obtain discovery of
any matter that (1) is “not privileged” and (2) “is
relevant to the claim or defense of any party.”
Fed.R.Civ.P. 26(b)(1). Among other things,
attorney-client communications are designated as
“privileged.” See Upjohn, 449 U.S. at 389, 101 S.Ct.
677; Genentech, Inc. v. Int'l Trade Comm'n, 122
F.3d 1409, 1415 (Fed.Cir.1997). “The attorney-client
privilege protects the confidentiality of
communications between attorney and client made
for the purpose of obtaining legal advice.” Id. We
recognize the privilege in order to promote full and
frank communication between a client and his
attorney so that the client can make *1301 wellinformed
legal decisions and conform his activities to
the law. See Upjohn, 449 U.S. at 389, 101 S.Ct. 677;
XYZ Corp. v. United States, 348 F.3d 16, 22 (1st
Cir.2003). This privilege is at the discretion of the
client. Knorr-Bremse, 383 F.3d at 1345; Carter, 909
F.2d at 1451. The client can waive the attorneyclient
privilege when, for instance, it uses the advice
to establish a defense. See id. However, selective
waiver of the privilege may lead to the inequitable
result that the waiving party could waive its privilege
for favorable advice while asserting its privilege on
unfavorable advice. XYZ Corp., 348 F.3d at 24. In
such a case, the party uses the attorney-client
privilege as both a sword and a shield. Id.; Fort
James Corp., 412 F.3d at 1349. To prevent such
abuses, we recognize that when a party defends its
actions by disclosing an attorney-client
communication, it waives the attorney-client
privilege as to all such communications regarding the
same subject matter. Id.
[16] In contrast to the attorney-client privilege, the
work-product doctrine, or work-product immunity as
it is also called, can protect “documents and tangible
things” prepared in anticipation of litigation that are
both non-privileged and relevant. Fed.R.Civ.P.
26(b)(3). Unlike the attorney-client privilege, which
protects all communication whether written or oral,
work-product immunity protects documents and
tangible things, such as memorandums, letters, and e-
mails. See generally Judicial Watch, Inc. v. Dep't of
Justice, 432 F.3d 366 (D.C.Cir.2005). We recognize
work-product immunity because it promotes a fair
and efficient adversarial system by protecting “the
attorney's thought processes and legal
recommendations” from the prying eyes of his or her
opponent. Genentech, 122 F.3d at 1415 (citations
omitted); accord Hickman v. Taylor, 329 U.S. 495,
511-14, 67 S.Ct. 385, 91 L.Ed. 451 (1947) (“Proper
preparation of a client's case demands that he
assemble information, sift what he considers to be the
relevant from the irrelevant facts, prepare his legal
theories and plan his strategy without undue and
needless interference.... Were such materials open to
opposing counsel on mere demand, much of what is
now put down in writing would remain unwritten....
Inefficiency, unfairness and sharp practices would
inevitably develop in the giving of legal advice and in
the preparation of cases for trial. The effect on the
legal profession would be demoralizing. And the
interests of the clients and the cause of justice would
be poorly served.”); see also Nobles, 422 U.S. at
237; Coastal States Gas Corp. v. Dep't of Energy,
617 F.2d 854, 864 (D.C.Cir.1980). Essentially, the
work-product doctrine encourages attorneys to write
down their thoughts and opinions with the knowledge
that their opponents will not rob them of the fruits of
their labor. Hickman, 329 U.S. at 511, 67 S.Ct. 385;
Id. at 516, 67 S.Ct. 385 (Jackson, J. concurring )
(“[A] common law trial is and always should be an
adversary proceeding. Discovery was hardly
intended to enable a learned profession to perform its
functions either without wits or on wits borrowed
from the adversary.”); United States v. Adlman, 68
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448 F.3d 1294 Page 9
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(Cite as: 448 F.3d 1294)
F.3d 1495, 1501 (2d Cir.1995) (“The purpose of the
doctrine is to establish a zone of privacy for strategic
litigation planning and to prevent one party from
piggybacking on the adversary's preparation.”);
Coastal States, 617 F.2d at 864 (noting that the effect
of no immunity would mean “less work-product
would be committed to paper, which might harm the
quality of trial preparation”).
[17][18] Like the attorney-client privilege, however,
the work-product doctrine is not absolute. See In re
Martin Marietta Corp., 856 F.2d 619, 626 (4th
Cir.1988). *1302 First, a party may discover certain
types of work product if they have “substantial need
of the materials in the preparation of the party's case
and that the party is unable without undue hardship to
obtain the substantial equivalent ... by other means.”
Rule 26(b)(3). This rule, however, only allows
discovery of “factual” or “non-opinion” work product
and requires a court to “protect against the disclosure
of the mental impressions, conclusions, opinions, or
legal theories of an attorney or other representative.”
Id.; accord United States v. Adlman, 134 F.3d 1194,
1197 (2d Cir.1998); Martin Marietta Corp., 856
F.2d at 626.
[19][20] Second, a party may discover work product
if the party waives its immunity. See id. at 622-23;
Thorn EMI N. Am. v. Micron Tech., 837 F.Supp. 616,
621 (D.Del.1993). However, work product waiver is
not a broad waiver of all work product related to the
same subject matter like the attorney-client privilege.
Martin Marietta Corp., 856 F.2d at 626. Instead,
work-product waiver only extends to “factual” or
“non-opinion” work product concerning the same
subject matter as the disclosed work product. See id.
at 625 (noting that a party “impliedly waived the
work-product privilege as to all non-opinion workproduct
on the same subject matter as that
disclosed.”) (citing Nobles, 422 U.S. at 239, 95 S.Ct.
2160).
We recognize that the line between “factual” work
product and “opinion” work product is not always
distinct, especially when, as here, an attorney's
opinion may itself be “factual” work product. When
faced with the distinction between where that line
lies, however, a district court should balance the
policies to prevent sword-and-shield litigation tactics
with the policy to protect work product.
[21] That being said, we recognize at least three
categories of work product that are potentially
relevant to the advice-of-counsel defense here. They
include: (1) documents that embody a
communication between the attorney and client
concerning the subject matter of the case, such as a
traditional opinion letter; (2) documents analyzing
the law, facts, trial strategy, and so forth that reflect
the attorney's mental impressions but were not given
to the client; and (3) documents that discuss a
communication between attorney and client
concerning the subject matter of the case but are not
themselves communications to or from the client.
See Thorn EMI, 837 F.Supp. at 622-623. FN3 As to the
first category, we already noted in section A that
when a party relies on the advice-of-counsel as a
defense to willful infringement the party waives its
attorney-client privilege for all communications
between the attorney and client, including any
documentary communications such as opinion letters
and memoranda. See also Akeva LLC, 243
F.Supp.2d at 423. FN4 As to the other two categories,
scholars have noted that our prior opinions do not
clearly define*1303 the scope of the work-product
waiver. FN5 As a result, the district courts that have
addressed this issue are split on just how far to extend
that scope. Compare Thorn EMI, 837 F.Supp. at
621-623 and Steelcase, Inc. v. Haworth, Inc., 954
F.Supp. 1195, 1198-99 (W.D.Mich.1997) with
Mushroom Assoc. v. Monterey Mushrooms, Inc., 24
U.S.P.Q.2d 1767 (N.D.Cal.1992); FMT Corp. v.
Nissei ASB Co., 24 U.S.P.Q.2d 1073 (N.D.Ga.1992);
and Handgards, Inc. v. Johnson & Johnson, 413
F.Supp. 926 (N.D.Cal.1976). As we discuss in more
detail below, we conclude that waiver extends to the
third category but does not extend so far as the
second.
FN3. We by no means anticipate that all
work product in every case will fit into one
of these three categories.
FN4. EchoStar contends that waiver of
opinions does not extend to advice and work
product given after litigation began. While
this may be true when the work product is
never communicated to the client, it is not
the case when the advice is relevant to
ongoing willful infringement, so long as that
ongoing infringement is at issue in the
litigation. See Akeva LLC, 243 F.Supp.2d
at 423 (“[O]nce a party asserts the defense
of advice of counsel, this opens to inspection
the advice received during the entire course
of the alleged infringement.”); see also
Crystal Semiconductor Corp. v. TriTech
Microelectronics Int'l, Inc., 246 F.3d 1336,
1351-1353 (Fed.Cir.2001) (noting that an
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448 F.3d 1294 Page 10
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(Cite as: 448 F.3d 1294)
infringer may continue its infringement after
notification of the patent by filing suit and
that the infringer has a duty of due care to
avoid infringement after such notification).
FN5. See David O. Taylor, Wasting
Resources: Reinventing the Scope of Waiver
Resulting from the Advice-of-Counsel
Defense to a Charge of Willful Patent
Infringement, 12 Tex. Intell. Prop. L.J. 319,
320-21 (2004); William F. Lee & Lawrence
P. Cogswell, III, Understanding and
Addressing the Unfair Dilemma Created by
the Doctrine of Willful Patent Infringement,
41 Hous. L.Rev. 393, 436-37 (2004).
[22] By asserting the advice-of-counsel defense to a
charge of willful infringement, the accused infringer
and his or her attorney do not give their opponent
unfettered discretion to rummage through all of their
files and pillage all of their litigation strategies. See
Thorn EMI, 837 F.Supp. at 621-623 (“[C]ourts
generally find a [work-product] waiver only if facts
relevant to a particular, narrow subject matter are at
issue and have been disclosed under circumstances
where it would be unfair to deny the other party an
opportunity to discover other facts relevant to that
subject matter.”). Work-product waiver extends
only so far as to inform the court of the infringer's
state of mind. Counsel's opinion is not important for
its legal correctness. It is important to the inquiry
whether it is “thorough enough, as combined with
other factors, to instill a belief in the infringer that a
court might reasonably hold the patent is invalid, not
infringed, or unenforceable.” Ortho Pharm. Corp. v.
Smith, 959 F.2d 936, 944 (Fed.Cir.1992). It is what
the alleged infringer knew or believed, and by
contradistinction not what other items counsel may
have prepared but did not communicate to the client,
that informs the court of an infringer's willfulness.
The overarching goal of waiver in such a case is to
prevent a party from using the advice he received as
both a sword, by waiving privilege to favorable
advice, and a shield, by asserting privilege to
unfavorable advice. See Fort James Corp., 412 F.3d
at 1349; Martin Marietta Corp., 856 F.2d at 626; In
re Sealed Case, 676 F.2d 793, 818 (D.C.Cir.1982)
(“[W]hen a party seeks greater advantage from its
control over work product than the law must provide
to maintain a healthy adversary system[,] then the
balance of interests recognized in Hickman ...
shifts.”). To the extent the work-product immunity
could have such an effect, it is waived.
[23] The second category of work product, which is
never communicated to the client, is not discoverable.
Under Rule 26(b)(3), this so-called “opinion” work
product deserves the highest protection from
disclosure. See Adlman, 134 F.3d at 1197. While
an accused infringer may waive the immunity for
work product that embodies an opinion in letters and
memorandum communicated to the client, he does
not waive the attorney's own analysis and debate over
what advice will be given. See Ortho Pharm., 959
F.2d at 944. Upon waiver of attorney-client
privilege, communicative documents, such as opinion
letters, become evidence of a non-privileged, relevant
fact, namely what was communicated to the client,
see Nobles, 422 U.S. at 239 n. 14, 95 S.Ct. 2160
(“[W]here ... counsel attempts to make a testimonial
use of [work-product] materials the normal rules
*1304 of evidence come into play with respect to ...
production of documents.”); however, counsel's
legal opinions and mental impressions that were not
communicated do not acquire such factual
characteristics and are, therefore, not within the scope
of the waiver. As the Martin Marietta Corp. court
noted,
There is relatively little danger that a litigant will
attempt to use a pure mental impression or legal
theory as a sword and as a shield in the trial of a case
so as to distort the factfinding process. Thus, the
protection of lawyers from the broad repercussions of
subject matter waiver in this context strengthens the
adversary process, and, unlike the selective
disclosure of evidence, may ultimately and ideally
further the search for the truth.
856 F.2d at 626. Thus, if a legal opinion or mental
impression was never communicated to the client,
then it provides little if any assistance to the court in
determining whether the accused knew it was
infringing, and any relative value is outweighed by
the policies supporting the work-product doctrine.
The third category of work product material falls
admittedly somewhere interstitially between the first
and second. In some instances there may be
documents in the attorney's file that reference and/or
describe a communication between the attorney and
client, but were not themselves actually
communicated to the client. For example, if an
attorney writes a memorandum or an e-mail to his
associate referencing a phone call with the client, in
which he indicates that he discussed the client's
potential infringement, then such a memorandum is
discoverable. Unlike work product that was
uncommunicated, this work product references a
specific communication to the client. Though it is
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448 F.3d 1294 Page 11
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(Cite as: 448 F.3d 1294)
not a communication to the client directly nor does it
contain a substantive reference to what was
communicated, it will aid the parties in determining
what communications were made to the client and
protect against intentional or unintentional
withholding of attorney-client communications from
the court.
Still, we must emphasize that such communications
may contain work product of the second kind-legal
analysis that was not communicated. In those
situations, the parties should take special care to
redact such information, and if necessary the district
court may review such material in camera. See Rule
26(b)(3); see also id. advisory committee's note
(1970) (“[T]he courts will sometimes find it
necessary to order disclosure of a document but with
portions deleted.”); Martin Marietta Corp., 856 F.2d
at 626.
[24] Therefore, when an alleged infringer asserts its
advice-of-counsel defense regarding willful
infringement of a particular patent, it waives its
immunity for any document or opinion that embodies
or discusses a communication to or from it
concerning whether that patent is valid, enforceable,
and infringed by the accused. This waiver of both
the attorney-client privilege and the work-product
immunity includes not only any letters,
memorandum, conversation, or the like between the
attorney and his or her client, but also includes, when
appropriate, any documents referencing a
communication between attorney and client. FN6
FN6. Merchant & Gould contends that it
alone retains the right to deny a party access
to work product not communicated to a
client. While we do not answer this
question directly; here, the client, EchoStar,
holds the right to waive privilege for
attorney-client communications, Carter, 909
F.2d at 1451, and therefore the right to
waive privilege to evidence of those
communications contained in Merchant &
Gould's files. As we stated before, there
may be a redaction of information which
reflects legal opinions and mental
impressions of Merchant & Gould attorneys
that were not communicated to EchoStar.
Rule 26(b)(3).
EchoStar's waiver because it obviously played no part
in EchoStar's belief as to infringement of the '389
patent. See Steelcase, 954 F.Supp. at 1198-99. It
may very well be true, as TiVo suggests, that at times
some parties would communicate draft opinion letters
or the contents thereof to the client confidentially in
order to avoid disclosing that communication during
potential discovery if and when the attorney-client
privilege is waived, but we cannot eviscerate the
legitimate policies of the work-product doctrine and
chill the principles of our adversary system as a
whole on account of the possibility that, from time to
time, there may be occurrences of ethical
transgressions.
In sum, the advice-of-counsel defense to willfulness
requires the court to decide, inter alia, whether
counsel's opinion was thorough enough to “instill a
belief in the infringer that a court might reasonably
hold the patent is invalid, not infringed, or
unenforceable.” Ortho Pharm., 959 F.2d at 944. If
a Merchant & Gould document was not
communicated to EchoStar or if a Merchant & Gould
document does not reference a communication
between Merchant & Gould and EchoStar, its
relevant value is outweighed by the policies of the
work-product doctrine. Thus, it was an abuse of
discretion for the district court to determine that the
scope of the waiver of privilege extended to such
documents.
Accordingly,
IT IS ORDERED THAT:
The petitions are granted. The district court is
directed to vacate its orders, to the extent noted
above. TiVo is entitled to discovery of Merchant &
Gould documents consistent with, and in the manner
set forth in, this opinion.
C.A.Fed.,2006.
In re EchoStar Communications Corp.
448 F.3d 1294, 78 U.S.P.Q.2d 1676
Briefs and Other Related Documents (Back to top)
• 06-M805 (Docket) (Oct. 25, 2005)
• 06-M803 (Docket) (Oct. 11, 2005)
END OF DOCUMENT
*1305 [25] Here, Merchant & Gould work product
that was not communicated to EchoStar or does not
reflect a communication is not within the scope of
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

NOTE: This order is nonprecedential.
United States Court of Appeals for the Federal Circuit
MISCELLANEOUS DOCKET NO. 830
IN RE SEAGATE TECHNOLOGY, LLC,
ON PETITION FOR WRIT OF MANDAMUS
Petitioner.
Before MICHEL, Chief Judge, NEWMAN, MAYER, LOURIE, RADER, SCHALL,
BRYSON, GAJARSA, LINN, DYK, PROST, and MOORE, Circuit Judges.
PER CURIAM.
O R D E R
This petition for writ of mandamus, having been reviewed by the Motions Panel,
was thereafter referred to the circuit judges who are in regular active service and
authorized to request a poll on whether to hear this matter en banc. A poll was
requested, taken, and the court has decided sua sponte that the petition is appropriate
for en banc consideration,
IT IS ORDERED THAT:
The parties are invited to address the following questions:
(1) Should a party's assertion of the advice of counsel defense to willful
infringement extend waiver of the attorney-client privilege to communications
with that party's trial counsel See In re EchoStar Commc'n Corp., 448 F.3d
1294 (Fed. Cir. 2006).
(2) What is the effect of any such waiver on work-product immunity
(3) Given the impact of the statutory duty of care standard announced in
Underwater Devices, Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir.

1983), on the issue of waiver of attorney-client privilege, should this court
reconsider the decision in Underwater Devices and the duty of care standard
itself
This petition will be heard en banc on the basis of the new briefs addressing,
inter alia, the issues set forth above. An original and thirty copies of all briefs shall be
filed, and two copies served on opposing counsel. The Petitioner shall file a brief within
thirty days from the date of the filing of this order. The brief from the Respondent is due
thirty days thereafter; and any reply brief from the Petitioner is due ten days thereafter.
Briefs shall adhere to the type-volume limitations set forth in Federal Rule of Appellate
Procedure 32 and Federal Circuit Rule 32.
Motions to file an amicus brief and to file a reply brief are denied as moot. The
motion to vacate the temporary stay issued by this court is denied. MAYER, Circuit
Judge, would grant the motion.
Briefs of amici curiae will be entertained in accordance with Federal Rule of
Appellate Procedure 29 and Federal Circuit Rule 29. Scheduling of oral argument, if
any, will be resolved at a later date.
FOR THE COURT
_January 26, 2007_
Date
_____/s/ Jan Horbaly________
Jan Horbaly
Clerk
cc:
Brian E. Ferguson, Esq.
Debra Brown Steinberg, Esq.
Alison M. Tucher, Esq.
U.S.D.C. SD/NY, Clerk
U.S.D.C. SD/NY, Judge
M.830 2

401 F.3d 1323 Page 1
401 F.3d 1323, 74 U.S.P.Q.2d 1225
(Cite as: 401 F.3d 1323)
Briefs and Other Related Documents
United States Court of Appeals,Federal Circuit.
MERCEXCHANGE, L.L.C., Plaintiff-Cross
Appellant,
v.
eBAY, INC. and Half.Com, Inc., Defendants-
Appellants.
Nos. 03-1600, 03-1616.
March 16, 2005.
Rehearing and Rehearing En Banc Denied April 26,
2005.
Background: Owner of patents for method of
conducting on-line sales sued auction website
operators for infringement. The United States District
Court for the Eastern District of Virginia, Jerome B.
Friedman, J., 275 F.Supp.2d 695, found that one
patent was invalid but that other two were infringed.
Cross-appeals were taken.
Holdings: The Court of Appeals, Bryson, Circuit
Judge, held that:
(1) evidence supported finding that first patent was
infringed;
(2) evidence did not support finding that auction site
operator induced product seller's infringement of first
patent;
(3) second patent was invalid as anticipated;
(4) fact issue existed as to whether third patent was
invalid; and
(5) denial of permanent injunction was abuse of
discretion.
Affirmed in part, reversed in part, vacated in part,
and remanded.
See also 271 F.Supp.2d 789.
West Headnotes
[1] Patents 291 101(2)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(2) k. Construction in General.
Most Cited Cases
“Transaction processor,” claimed in patent for
method of conducting on-line sales, did not require
transference of ownership of purchased good by
conveyance of title; unlike prior claim which clearly
called for transfer of ownership, instant claim made
no reference to transfer.
[2] Patents 291 101(2)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(2) k. Construction in General.
Most Cited Cases
“Transfer of ownership” step, called for in patent for
method of conducting on-line sales, required only
modification of ownership entry in data record of
good to reflect that purchasing participant was new
owner of good; transfer of legal title pursuant to
Uniform Commercial Code (UCC) was not required.
[3] Patents 291 314(6)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k314 Hearing
291k314(6) k. Findings and
Determination. Most Cited Cases
District court's Markman order is explanation to
parties of reasoning behind its patent claim
construction; court's analysis need not also be
included in its jury instructions.
[4] Patents 291 312(5)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k312 Evidence
291k312(3) Weight and Sufficiency
291k312(5) k. Particular Patents.
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401 F.3d 1323 Page 2
401 F.3d 1323, 74 U.S.P.Q.2d 1225
(Cite as: 401 F.3d 1323)
Most Cited Cases
Evidence supported finding that online auction
system infringed patent for method of conducting
online sales; system transferred ownership of
purchased goods through modification of data
records to reflect fact that payment had been made, as
called for in patent.
[5] Patents 291 312(6)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k312 Evidence
291k312(3) Weight and Sufficiency
291k312(6) k. Particular Matters,
Sufficiency as To. Most Cited Cases
Evidence supported finding that online auction
system was “trusted,” within meaning of patent for
method of conducting online sales; system provided
escrow services, conflict resolution services,
insurance, payment intermediaries, authentication
services, feedback forum, and policing of system.
[6] Patents 291 324.1
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k324 Appeal
291k324.1 k. In General. Most Cited
Cases
Fact that defendant's patent invalidity arguments at
trial were based solely on obviousness did not
constitute waiver of right to make invalidity
argument on appeal based on anticipation;
anticipation was form of obviousness. 35 U.S.C.A. §
§ 102, 103.
[7] Patents 291 66(1.24)
291 Patents
291II Patentability
291II(D) Anticipation
291k63 Prior Patents
291k66 Operation and Effect
291k66(1.24) k. Process, Method, and
Apparatus Claims in General. Most Cited Cases
Patent for method of conducting online sales was not
anticipated by prior art patent which did not call for
receipt of electronic payments, for post-sale
modification of data records, or for nondealerspecific
identification codes. 35 U.S.C.A. § 102.
[8] Patents 291 16.14
291 Patents
291II Patentability
291II(A) Invention; Obviousness
291k16.14 k. Miscellaneous Inventions.
Most Cited Cases
Patent for method of conducting online sales was not
invalid as obvious in light of prior art patent; prior
patent called for different type of user identification
codes, and evidence that person of skill in the art
would not have been motivated to change code types.
35 U.S.C.A. § 103.
[9] Patents 291 259(1)
291 Patents
291XII Infringement
291XII(A) What Constitutes Infringement
291k259 Contributory Infringement;
Inducement
291k259(1) k. In General. Most Cited
Cases
To prove intent element of claim for inducement of
patent infringement, there must be evidence that
alleged inducer had knowledge of infringing acts. 35
U.S.C.A. § 271(b).
[10] Patents 291 312(8)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k312 Evidence
291k312(3) Weight and Sufficiency
291k312(8) k. Participation, Intent,
and Contributory Infringement. Most Cited Cases
Evidence did not support finding that operator of
website for online auctions induced seller's
infringement of patent for method of presenting data
records of goods for sale; though operator had
financial interest in seller and encouraged it to post
goods for sale on website, there was no evidence that
operator knew of or induced seller's use of patented
method. 35 U.S.C.A. § 271(b).
[11] Patents 291 101(2)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(2) k. Construction in General.
Most Cited Cases
“Electronic markets” to be searched, in patent for
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401 F.3d 1323 Page 3
401 F.3d 1323, 74 U.S.P.Q.2d 1225
(Cite as: 401 F.3d 1323)
method of locating goods online, were trusted
networks or systems where participants could buy,
sell, search, or browse goods online; searched places
did not have to be able to perform all four functions
in order to constitute relevant “markets.”
[12] Patents 291 70
291 Patents
291II Patentability
291II(D) Anticipation
291k67 Prior Description in Printed
Publication
291k70 k. Operation and Effect. Most
Cited Cases
Patent for method of searching multiple electronic
markets in order to locate goods online was invalid as
anticipated by prior art article for searching multiple
online catalogs; article disclosed each claimed
limitation and was enabling. 35 U.S.C.A. § 102.
[13] Patents 291 101(3)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(3) k. Limitations in General. Most
Cited Cases
Requirement in patent for method of locating goods
online, that “electronic markets” and “market
apparatus” be used, did not exclude person-to-person
systems.
[14] Patents 291 323.2(3)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k323 Final Judgment or Decree
291k323.2 Summary Judgment
291k323.2(3) k. Particular Cases.
Most Cited Cases
Issue of material fact as to whether “debiting seller's
account” limitation in patent for method of
conducting on-line auctions was adequately
supported by written description precluded summary
judgment of invalidity. 35 U.S.C.A. § 112, par. 1.
[15] Federal Courts 170B 932.1
170B Federal Courts
170BVIII Courts of Appeals
170BVIII(L) Determination and Disposition of
Cause
170Bk932 Reversal or Vacation of
Judgment in General
170Bk932.1 k. In General. Most Cited
Cases
Federal Courts 170B 943.1
170B Federal Courts
170BVIII Courts of Appeals
170BVIII(L) Determination and Disposition of
Cause
170Bk943 Ordering New Trial or Other
Proceeding
170Bk943.1 k. In General. Most Cited
Cases
Appellate court, when vacating judgment and
remanding, has jurisdiction to address issues that
might arise on remand. 28 U.S.C.A. § 2106.
[16] Patents 291 101(2)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(2) k. Construction in General.
Most Cited Cases
“Auction,” referred to in patent for method of
conducting on-line auctions, was process over trusted
network, or with trusted intermediary.
[17] Patents 291 101(2)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(2) k. Construction in General.
Most Cited Cases
“Seller's account,” called for in patent for method of
conducting on-line auctions, had to be based at least
on seller's identity and financial instrument
associated with seller; claim's use of comma to
separate call for account from list of its requirements
did not make requirements merely optional.
[18] Patents 291 165(4)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k165 Operation and Effect of Claims in
General
291k165(4) k. Reading Limitations or
Elements Into Claims, or Disregarding Limitations or
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401 F.3d 1323 Page 4
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(Cite as: 401 F.3d 1323)
Elements. Most Cited Cases
Use of term “automated process” in preamble to
patent claim for method of conducting on-line
auctions did not mean that all steps in claim had to be
performed automatically.
[19] Patents 291 317
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k317 k. Permanent Injunction. Most
Cited Cases
Mere fact that patent was business-method patent did
not justify denial of permanent injunction following
determination of validity and infringement.
[20] Patents 291 317
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k317 k. Permanent Injunction. Most
Cited Cases
Court's concern about likelihood of continuing
disputes over whether patent infringer's subsequent
design-around attempts also infringed patent did not
justify denial of permanent injunction following
determination of validity and infringement.
[21] Patents 291 317
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k317 k. Permanent Injunction. Most
Cited Cases
Prevailing patent infringement plaintiff's statements
regarding its willingness to license patents did not
justify denial of permanent injunction.
[22] Patents 291 317
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k317 k. Permanent Injunction. Most
Cited Cases
Patent infringement plaintiff's failure to move for
preliminary injunction did not justify denial of
permanent injunction following determination of
validity and infringement.
Patents 291 328(2)
291 Patents
291XIII Decisions on the Validity, Construction,
and Infringement of Particular Patents
291k328 Patents Enumerated
291k328(2) k. Original Utility. Most Cited
Cases
5,664,111. Cited as Prior Art.
Patents 291 328(2)
291 Patents
291XIII Decisions on the Validity, Construction,
and Infringement of Particular Patents
291k328 Patents Enumerated
291k328(2) k. Original Utility. Most Cited
Cases
5,845,265. Valid and Infringed.
Patents 291 328(2)
291 Patents
291XIII Decisions on the Validity, Construction,
and Infringement of Particular Patents
291k328 Patents Enumerated
291k328(2) k. Original Utility. Most Cited
Cases
6,085,176. Invalid.
Patents 291 328(2)
291 Patents
291XIII Decisions on the Validity, Construction,
and Infringement of Particular Patents
291k328 Patents Enumerated
291k328(2) k. Original Utility. Most Cited
Cases
6,202,051. Cited.
*1325 Scott L. Robertson, Hunton & Williams LLP,
of Washington, DC, argued for plaintiff-cross
appellant. With him on the brief were Jennifer A.
Albert and Brian M. Buroker. Also on the brief were
Gregory N. Stillman, of Norfolk, Virginia, and David
M. Young, of McLean, Virginia.
Jeffrey G. Randall, Skadden, Arps, Slate, Meagher &
Flom LLP, of Palo Alto, California, and Donald R.
Dunner, Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P., of Washington, DC, argued for
defendants-appellants. On the brief were Timothy S.
Teter and Lori Ploeger, Cooley Godward LLP, of
Palo Alto, California. Also on the brief was Allan
M. Soobert, Skadden, Arps, Slate, Meagher & Flom
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401 F.3d 1323 Page 5
401 F.3d 1323, 74 U.S.P.Q.2d 1225
(Cite as: 401 F.3d 1323)
LLP, of Washington, DC.
Before MICHEL, FN* Chief Judge, CLEVENGER,
and BRYSON, Circuit Judges.
FN* Paul R. Michel assumed the position of
Chief Judge on December 25, 2004.
BRYSON, Circuit Judge.
MercExchange, L.L.C., is the assignee of three
patents, U.S. Patent Nos. 5,845,265 (“the '265
patent”), 6,085,176 (“the '176 patent”), and 6,202,051
(“the '051 patent”). MercExchange filed suit against
eBay, Inc.; Half.com, Inc.; and ReturnBuy, Inc., in
the United States District Court for the Eastern
District of Virginia, alleging willful infringement of
the '265 patent by all three defendants, willful
infringement of the '176 patent by eBay and
Half.com, and willful infringement of the '051 patent
by eBay.
eBay owns and operates a website on the Internet that
allows buyers and sellers to search for goods and to
purchase them by participating in live auctions or by
buying them at a fixed price. At issue in this case is
the fixed-price purchasing feature of eBay's website,
which allows customers to purchase items that are
listed on eBay's website for a fixed, listed price.
Half.com, a wholly owned subsidiary of eBay, owns
and operates an Internet website that allows users to
search for goods posted on other Internet websites
and to purchase those goods. At the time this action
was brought, ReturnBuy owned and operated an
Internet website that was hosted by the *1326 eBay
website. Customers interested in purchasing goods
from ReturnBuy would be directed from the
ReturnBuy website to the eBay website, where items
available for sale by ReturnBuy were displayed in an
eBay listing.
Prior to trial, ReturnBuy filed for bankruptcy and
entered into a settlement agreement with
MercExchange. On motions for summary judgment
by the other defendants, the district court granted in
part and denied in part the motions for summary
judgment that the claims of the '051 patent were
invalid for an inadequate written description. The
remainder of the case went to trial before a jury. At
the conclusion of the trial, the jury found that eBay
had willfully infringed claims 8, 10-11, 13-15, 17-18,
20-22, and 26 of the '265 patent and had induced
ReturnBuy to infringe claims 1, 4, 7, and 23 of the
'265 patent; that Half.com had willfully infringed
claims 8, 10, 11, 13, 15, 17-18, 20, 22, and 26-29 of
the '265 patent and claims 1, 5-6, 29, 31-32, and 34-
39 of the '176 patent; and that neither the '265 patent
nor the '176 patent was invalid. With respect to
damages, the jury found eBay liable for $ 10.5
million for infringing the '265 patent and $ 5.5
million for inducing ReturnBuy to infringe the '265
patent. The jury also held Half.com liable for $ 19
million for infringing the '176 patent and the '265
patent.
Following the verdict, eBay and Half.com moved for
judgment as a matter of law (“JMOL”) that the
asserted claims of the '265 patent were not infringed
and were invalid. In the alternative, eBay and
Half.com moved for a new trial on the '265 patent.
Half.com moved for JMOL that the asserted claims
of the '176 patent were not infringed and were
invalid. In the alternative, Half.com moved for a
new trial on the '176 patent. In addition, eBay
moved to set aside the $5.5 million award for
inducing ReturnBuy to infringe the '265 patent. The
district court denied the defendants' motions
regarding infringement and validity, but granted
eBay's motion to set aside the damages award for
inducement of infringement. The court also denied
MercExchange's motion for a permanent injunction,
for enhanced damages, and for attorney fees.
The defendants appeal the denial of their motions for
JMOL and for a new trial on the '265 and '176
patents. Because substantial evidence supports the
jury's verdict regarding infringement and validity of
the '265 patent, we affirm those aspects of the
judgment. Because there is no substantial evidence to
support the jury's verdict that eBay induced
ReturnBuy to infringe the '265 patent, we reverse that
aspect of the judgment. We also hold that the claims
of the '176 patent are invalid for anticipation, and we
therefore reverse the judgment in that regard and
direct entry of judgment for Half.com on the '176
patent.
MercExchange cross-appeals, seeking reversal of the
summary judgment of invalidity of the '051 patent
and reversal of the district court's denial of a
permanent injunction, enhanced damages, and
attorney fees. MercExchange also cross-appeals the
district court's order vacating the award of damages
for inducement of infringement. Because the district
court resolved a dispute of material fact on summary
judgment and improperly denied a permanent
injunction, we reverse the denial of the permanent
injunction, vacate the summary judgment order, and
remand for further proceedings. However, we hold
that the district court did not abuse its discretion in
denying enhanced damages and attorney fees.
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401 F.3d 1323 Page 6
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(Cite as: 401 F.3d 1323)
I
A
We turn first to the district court's denial of the
defendants' motion for JMOL of *1327
noninfringement with respect to the '265 patent. The
'265 patent pertains to a system for selling goods
through an “electronic network of consignment
stores.” '265 patent, col. 1, line 8. To participate in
the electronic network, a consignment store must
obtain a “consignment node,” which uses a computer
to upload and save digital images and written
information about goods to be sold over the network.
A prospective buyer can electronically browse and
search for goods stored in the databases of
consignment nodes in the electronic network. After
browsing and searching, the prospective buyer can
purchase any good listed on the electronic network.
Upon purchasing the good, the buyer can decide
either to have the good shipped or to resell the good
to another buyer over the electronic network. The
patent refers to the decision to buy and resell as
“speculating,” because the system does not require
the buyer to take possession of the good before
reselling it and thereby allows the buyer to resell at a
price that does not take into consideration the delays
and costs associated with delivery.
The asserted claims each include a “transaction
processor” that is used to complete the financial
transaction accompanying the sale of a good. The
transaction processor limitation of claim 8 reads as
follows:
a transaction processor operably connected to said
wide area communication network and said storage
device, said transaction processor adapted to receive
a purchase request and payment means from said
participant, clear said purchase request and payment
means and if said payment means clears then transfer
the ownership of said good for sale by modifying said
data record of said good for sale to reflect the new
ownership of said good for sale by said participant.
The defendants contend that the district court erred in
denying their motion for a JMOL of noninfringement
because there was no substantial evidence from
which a reasonable jury could conclude that eBay's
system “transfer[red] the ownership” of a good for
sale, as required by the transaction processor
limitation.
[1] As an initial matter, the defendants' arguments do
not apply to claim 26 and dependent claims 27-29.
The transaction processor limitation of claim 26 reads
as follows:
a transaction processor operably connected to said
wide area communication network and said storage
device, said transaction processor adapted to receive
a purchase request and electronic payment from said
participant, transfer said purchase request to said
posting terminal, and verify electronic payment
information from said participant and if said
electronic payment verifies then notify owner of said
good for sale by modifying said data record indexed
to said data record for sale to reflect said purchase
request of said good for sale by said participant.
This claim language differs from the language of
claim 8 in a significant way. While the transaction
processor portion of claim 8 culminates in a step
requiring the transaction processor to “transfer the
ownership of said good for sale,” the transaction
processor portion of claim 26 culminates in a step
requiring the transaction processor to “notify [the]
owner of said good for sale ....” Claim 26 nowhere
requires transfer of ownership of a good and does not
even contain the term “ownership” or the term
“transfer.” The defendants argue that the transaction
processor of claim 26 must be construed as limited to
a transaction processor that transfers ownership by
conveyance of title, but nothing in claim 26 supports
that argument, and *1328 we reject it. Accordingly,
we hold that the district court did not err in denying
defendants' motion for JMOL with regard to
noninfringement of claims 26-29. The remainder of
our analysis is focused on the construction of claim 8
and its related claims.
[2] In its instructions to the jury, the district court
provided the following interpretation of the “transfer
the ownership” limitation:
If the payment made by a participant for a good for
sale clears, then the legal ownership is transferred by
modifying the ownership entry in the data record of
the good to reflect that the purchasing participant is
the new owner of the good.
The defendants do not challenge the accuracy of that
instruction, but they assert that the district court erred
by failing to give two additional instructions. First,
they contend that because the transaction processor
limitation transfers the ownership of a “good for
sale,” the transaction processor must be capable of
transferring legal title, and that the district court
should have instructed the jury on the requirements
for title transfer under the Uniform Commercial Code
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401 F.3d 1323 Page 7
401 F.3d 1323, 74 U.S.P.Q.2d 1225
(Cite as: 401 F.3d 1323)
(“UCC”). Second, they contend that the district
court failed to include in its jury instructions a
statement from the court's pretrial claim construction
order (the “Markman order”) that transfer of
ownership is “not limited to merely modifying the
record-legal ownership must be transferred.” The
defendants argue that without that statement the jury
was not informed of the requirement that legal title to
the good must pass to the purchaser.
In its post-trial order, the district court addressed and
rejected both of those arguments. The court ruled
that the defendants were not entitled to an instruction
on title transfer under the UCC, because the transfer
of ownership limitation did not require the transfer of
legal title pursuant to the UCC. With respect to the
statements from the court's Markman order, the court
stated that it had already provided the jury with a
sufficient claim construction and was under no
obligation to include additional language that it used
in its claim construction opinion.
We uphold the district court's interpretation of the
transfer of ownership limitation and its decision not
to provide the jury with additional instructions
regarding that limitation. The district court's
interpretation is consistent with the language of the
claims and the specification of the '265 patent.
Claim 8 states that a transaction processor
accomplishes the “transfer [of] ownership of said
good for sale by modifying said data record of said
good for sale to reflect the new ownership of said
good for sale by said participant.” '265 patent, col.
21, II. 51-54. The specification contains similar
language, stating that the consignment node
“transfers legal ownership of the good by changing
the ownership entry in the data record in the
consignment node of the good.” Id., col. 12, II. 46-
48.
The claim and specification do not suggest that the
modification of a data record in isolation is sufficient
to transfer ownership under the patent. Rather, the
specification makes clear that the modification of the
data record reflects that a buyer has paid for the good
and that it is the payment for the good, accompanied
by the data record modification, that accomplishes
the transfer of legal ownership. '265 patent, col. 19,
II. 11-13.
It is also important to understand that the patented
system accomplishes a transfer of ownership in the
context of a “trusted network,” in which the owner of
the patented system “may police the network to give
quality control, detect fraud and revoke the users,”
id., col. 4, II. 56-57, so *1329 that the network
maintains a certain “quality and performance
structure,” id., col. 4, line 60, to guarantee payment
and delivery of the good. The specification indicates
that the “trusted network” of the invention is part of
what allows ownership to pass upon modification of
the data record. In light of the specification, we
agree with the district court that within the context of
the patent, transferring legal ownership is
accomplished once the data record is modified.
The defendants argue that the modification of the
data record by itself is not sufficient to transfer
ownership, but rather that a “legal predicate” such as
the UCC must be satisfied in order for the
modification of the data record to have the effect of
transferring ownership. In so arguing, the
defendants rely on the use of the term “legal title” in
the specification. The use of that term, however,
does not mean that transfer of ownership must be
equated with a formal transfer of title. Rather, the
specification treats the term “legal title” as
synonymous with the general concept of “ownership”
as used in the patent. See, e.g., '265 patent, col. 19,
II. 11-13 (“[W]hen a bona fide purchase price is
tendered by a participant ... or another retailer ... the
legal title to a good as represented by the record will
transfer to the buyer with an immediate or nearly
immediate finality to the transaction.”). The use of
the term “legal title” in the specification therefore
does not add any legal requirements to the transfer of
ownership referred to in the claims, and does not
negate the statements in the specification and in the
claim language that the transfer of ownership is
accomplished upon the modification of the data and
the clearing of payment in a trusted network.
[3] We also agree with the district court that it was
not necessary for the court to include excerpts from
its Markman order in the jury instructions. A district
court's Markman order is an explanation to the parties
of the reasoning behind its claim construction. The
court's analysis need not be part of the jury
instructions. The defendants focus on the district
court's statement in its Markman order that transfer of
ownership is “not limited to merely modifying the
record-legal ownership must be transferred,” and they
assert that the court's failure to convey the substance
of that statement prejudiced them because it left room
for MercExchange to assert in its closing argument
that “[t]here is no requirement that legal title in that
formal sense be transferred.” The claims, however,
do not require that title be transferred pursuant to any
particular steps or legal formalities, and the district
court's statement in its Markman order does not say
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401 F.3d 1323 Page 8
401 F.3d 1323, 74 U.S.P.Q.2d 1225
(Cite as: 401 F.3d 1323)
so. It was therefore not error for the court to omit
the requested instruction.
[4][5] In light of the district court's claim
construction, we find that MercExchange introduced
sufficient evidence to permit the jury to find that
eBay's system infringed the '265 patent.
MercExchange's expert, Dr. Alfred Weaver, testified
that “eBay has to transfer ownership by modifying
the data record.” He also made clear that the
modification of the data record reflected the fact that
payment had been made, as he stated that “when [ ]
payment comes through, [eBay and Half.com] are
authorized to transfer ownership by modifying [the]
data record.” Moreover, while eBay asserts that its
system is not “trusted,” we agree with the district
court's statement in its post-trial order that there was
substantial evidence from which the jury could find
that eBay's system was trusted, given the evidence in
the record that the system provided “escrow services,
conflict resolution services, insurance, payment
intermediaries, authentication*1330 services,
feedback forum, and the policing of the system.”
We therefore affirm the district court's denial of the
defendants' motion for JMOL of noninfringement of
the '265 patent.
B
In reviewing the defendants' motion to invalidate the
'265 patent as a matter of law, the district court
focused exclusively on obviousness and found that
MercExchange “did indeed attack the merits of the
defendants' prior art references and the failure of the
defendants' witnesses to show how the prior art
invalidated each of the claims of the '265 patent,
despite the fact that the defendants argue otherwise.”
On appeal, the defendants argue that a reasonable
jury would necessarily have found the asserted claims
to be invalid because they are anticipated or rendered
obvious by a prior art reference, U.S. Patent No.
5,664,111 (“the '111 patent”). The '111 patent
pertains to a system for art dealers to sell artwork by
using a network of computers. The system enables
users to store and retrieve images and data pertaining
to the artwork and to purchase artwork corresponding
to the images.
[6] As an initial matter, MercExchange argues that
because the defendants' invalidity arguments were
based solely on obviousness, they have waived their
right to make an invalidity argument on appeal based
on anticipation. We disagree. Because
“anticipation is the epitome of obviousness,” Connell
v. Sears, Roebuck & Co., 722 F.2d 1542, 1548
(Fed.Cir.1983), the defendants' obviousness
arguments preserved their right to argue invalidity
based on anticipation, Johns Hopkins Univ. v.
CellPro, Inc., 152 F.3d 1342, 1357 n. 21
(Fed.Cir.1998).
[7] On the merits, the defendants argue that the '111
patent anticipates all of the asserted claims of the '265
patent and that MercExchange's expert, Dr. Weaver,
failed to distinguish the system of the '111 patent
from the system of the '265 patent. First, they assert
that Dr. Weaver conceded on cross-examination that
the '111 patent discloses the same transaction
processor that is claimed in the '265 patent, because
he admitted that the Patent and Trademark Office
(“PTO”) found that the '111 patent discloses a
transaction processor and he did not contest the
PTO's finding on that issue. However, while Dr.
Weaver agreed that the PTO “would understand that
[the '111 patent] discloses, among other things,
transferring an ownership interest in an item,” that
testimony does not contradict his testimony that
nothing in the '111 patent described a modification of
the data record subsequent to payment verification.
Thus, Dr. Weaver did not concede that the '111 patent
disclosed the same transaction processor that is
claimed in the '265 patent.
The defendants fail to address another distinction
regarding the transaction processor limitation. In the
'265 patent, a transaction processor is designed to
receive payments by “entering a credit card number
and expiration date or other forms of electronic
payment.” '265 patent, col. 5, II. 6-8. The system
claimed by the '111 patent, however, does not receive
payments electronically. Rather, the system
“requests that the buying dealer wire transfer funds to
pay for the purchased work.” '111 patent, col. 14, II.
62-64. Instead of being able to complete a
transaction on the electronic network, a buyer using
the invention of the '111 patent must temporarily
leave the system to make a payment before the
transaction can be completed.
The defendants also contend that Dr. Weaver failed
to distinguish the '265 patent from the '111 patent
with regard to the posting terminal apparatus
limitation and *1331 in particular the use of an
identification code to prevent certain dealers from
logging on to the system. The defendants argue that
Dr. Weaver conceded that the '111 patent discloses
the same identification code as the '265 patent. They
cite Dr. Weaver's testimony on cross-examination, in
which he stated that the system claimed by the '111
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patent “used the terminal identification code to limit
the access of certain dealers to certain pieces of art.”
Dr. Weaver stated on redirect examination, however,
that the identification code used in the '111 system is
not the same as the identification code used for
terminal authorization in the posting terminal
apparatus claimed in the '265 patent: “All that's
happening in [the '111 patent] is that a person is
identifying himself with a code. And in my mind
that's not at all consistent with the way the Court
defined the posting terminal apparatus code,” i.e., as
a code that “identifies the hardware and/or software
of the posting terminal apparatus.” From that
testimony, a reasonable jury could infer that while the
identification code in the '111 patent is directed to
preventing access by a specific dealer, the
identification code in the '265 patent is not dealerspecific,
but serves instead to screen out terminal
apparatuses that lack particular technical
requirements. The evidence thus provided a
sufficient basis for the jury to conclude that the '111
patent did not anticipate the asserted claims of the
'265 patent.
[8] We also reject the defendants' argument that the
'111 patent renders the asserted claims of the '265
patent obvious. Dr. Weaver testified that the
patented invention differs from the '111 patent in
both structure and method and that a person of
ordinary skill in the art would not be motivated to
modify the system covered by the '111 patent to
create the system claimed in the '265 patent. For
example, with regard to the posting terminal
apparatus of the '265 patent, Dr. Weaver testified that
one of ordinary skill in the art would not be
motivated “to change or modify the dealer ID code in
[the '111 patent system] to conform to the user ID
protocols of the '265 patent's posting terminal
apparatus,” as the two are “dramatically different
operations” that are used for different purposes. In
light of Dr. Weaver's testimony, we agree with the
district court that there was substantial evidence to
support the jury's finding of nonobviousness.
C
The defendants contend that they are entitled to
JMOL on the theory that eBay was not shown to have
induced ReturnBuy to infringe four of the claims of
the '265 patent. Claim 1 is representative of three of
the asserted claims-claims 1, 4, and 7. It provides:
1. A system for presenting a data record of a good
for sale to a market for goods, said market for goods
having an interface to a wide area communication
network for presenting and offering goods for sale to
a purchaser, a payment clearing means for processing
a purchase request from said purchaser, a database
means for storing and tracking said data record of
said good for sale, a communications means for
communicating with said system to accept said data
record of said good and a payment means for
transferring funds to a user of said system, said
system comprising:
a digital image means for creating a digital image of
a good for sale;
a user interface for receiving textual information
from a user;
a bar code scanner;
a bar code printer;
a storage device;
a communications means for communicating with the
market; and
*1332 a computer locally connected to said digital
image means, said user interface, said bar code
scanner, said bar code printer, said storage device
digital image of said good for sale from said digital
image means, generate a data record of said good for
sale, incorporate said digital image of said good for
sale into said data record, receive a textual
description of said good for sale from said user
interface, store said data record on said storage
device, transfer said data record to the market for
goods via said communications means and receive a
tracking number for said good for sale from the
market for goods via said communications means,
store said tracking number from the market for goods
in said data record on said storage device and printing
a bar code from said tracking number on said bar
code printer.
The only other asserted claim, claim 23, differs from
claim 1 in that claim 23 recites a “digital camera for
creating an image,” instead of a “digital image means
for creating a digital image,” and it recites a “printer
for printing said digital image of said good for sale.”
[9] According to 35 U.S.C. § 271(b), “whoever
actively induces infringement of a patent shall be
liable as an infringer.” We have construed that
statute to require proof of intent, although there is a
“lack of clarity concerning whether the required
intent must be merely to induce the specific acts [of
infringement] or additionally to cause an
infringement.” Insituform Techs., Inc. v. CAT
Contracting, Inc., 385 F.3d 1360, 1378
(Fed.Cir.2004), citing Manville Sales Corp. v.
Paramount Sys., Inc., 917 F.2d 544, 553
(Fed.Cir.1990), and Hewlett-Packard Co. v. Bausch
& Lomb, Inc., 909 F.2d 1464, 1469 (Fed.Cir.1990).
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Nevertheless, a patentee must be able to demonstrate
at least that the alleged inducer had knowledge of the
infringing acts in order to demonstrate either level of
intent.
[10] MercExchange asserts that the evidence was
sufficient for the jury to find that eBay had induced
infringement based on the testimony of ReturnBuy's
former CEO and its former CTO. MercExchange
points to testimony that eBay had invested $2 million
in ReturnBuy and had an “observer” on ReturnBuy's
board of directors; that eBay granted ReturnBuy the
right to post goods in volume on the eBay system;
that eBay was the “primary venue” for ReturnBuy's
sales; and that eBay supplied engineers to work with
ReturnBuy to facilitate the posting of goods for sale
through eBay. That evidence, however, does not
establish that eBay induced ReturnBuy to infringe the
asserted claims.
First, the testimony regarding eBay's investment in
ReturnBuy's business and its presence on
ReturnBuy's board of directors does not demonstrate
an intent to induce infringement, or even show that
eBay had knowledge of any acts of infringement by
ReturnBuy. Rather, investment and board presence
merely indicate that there was a business relationship
between the two companies and that eBay had a
financial interest in ReturnBuy's business.
Other testimony presented by ReturnBuy's CEO and
its CTO demonstrates, at best, that eBay encouraged
ReturnBuy to post goods for sale on eBay's website.
Posting goods for sale, however, is relevant to only
one limitation of the claims, i.e., “a communications
means for communicating with the market.” There
is no testimony or other record evidence that eBay
intended to induce ReturnBuy to incorporate the
other limitations of the asserted claims. For
example, claim 1 requires the use of a bar code
scanner and a bar code printer. The specification
explains and the record shows that the bar *1333
code scanner and printer are used for tracking goods.
There is nothing in the record to show that eBay had
any intention to induce ReturnBuy to use bar code
scanners and printers to keep track of its inventory.
Likewise, claim 23 contains limitations requiring the
use of a digital camera and printer, but there is
nothing in the record to demonstrate that eBay
intended to induce ReturnBuy to use those devices to
create the digital image used for posting. While
eBay required ReturnBuy to provide a digital image
and an accompanying data record for the goods that
ReturnBuy wanted to sell on its website, nothing in
the record shows that eBay induced ReturnBuy to use
a digital camera or a printer to create either the digital
image or the accompanying data record, since digital
images may be created by other means, such as by
scanning developed photographs. Therefore, the
evidence is insufficient to demonstrate that eBay
intended to induce ReturnBuy to infringe claim 23.
Accordingly, we reverse the portion of the judgment
holding eBay liable for inducing ReturnBuy to
infringe the '265 patent. In light of our disposition of
that issue, it is unnecessary for us to address
MercExchange's argument that the district court erred
when it vacated the jury's award of damages on the
inducement claim as duplicative.
II
We turn next to issues pertaining to the '176 patent.
Each of the asserted claims of the '176 patent recites
a method for searching “a plurality of electronic
markets” to locate an item. That method uses a
network of computers to accomplish each search.
One computer receives and processes a search
request from a participant and transmits that request
to other computers through a software search agent.
After search results are obtained, they are sent back
to the participant's computer.
Following trial, the district court denied Half.com's
motion for JMOL that the '176 patent was not
infringed and is invalid. We reverse that ruling.
Because we base our reversal on invalidity, we need
not reach the issue of infringement.
A
[11] Half.com's invalidity argument turns on the
construction of the claim term “electronic market.”
At trial, the district court instructed the jury that the
term electronic market means a “trusted network or
system where participants can buy, sell, search or
browse goods online.” Half.com asserts that the
district court's construction of electronic market
requires that each of the searched websites be capable
of performing four functions: buying, selling,
searching, and browsing. As the basis for its
interpretation of the district court's construction of
that term, Half.com relies heavily on the use of the
word “and” to connect the four functions in a
statement from the district court's Markman order, in
which the court said, “Based on the inventor's clear
intent to allow users to buy, sell, search and browse
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for items in the electronic market, the court finds that
the completion of a transaction between buyer and
seller is not required.”
In its post-trial order, the district court rejected
Half.com's interpretation of the court's claim
construction. The court stated that “[t]here was
nothing in [the] claim construction that required the
electronic market to do all four functions cited.”
We agree with the district court that the patent does
not require the electronic market to perform all four
functions. The '176 patent is designed in part to
provide a system that allows participants to speculate,
i.e., to buy an item and then promptly *1334 sell it at
a higher price. That is the purpose to which
Half.com alludes in contending that the patent
requires the electronic market to be able to handle not
only buying but also selling. The specification
makes clear, however, that speculation is not the only
use for the system, and that there are other purposes
for the system in the context of “the two-tiered
market of dealer-to-dealer and retail markets. ” '176
patent, col. 16, II. 28-29. One of the main purposes
of the patented system is to create a double-tiered
market for goods, “where the first tier is a retail price
and the second tier is a wholesale or dealer to dealer
price [,] and an authorized dealer has pre-approved
access to the dealer-to-dealer price and may charge
and display the retail price to a local store customer.”
Id., col. 1, II. 49-51. The specification provides that
“[t]he price and reserve price fields may be used to
structure the two-tiered market of dealer-to-dealer
and retail markets.” Id., col. 16, II. 27-29. It further
provides that “[a] dealer may be provided with
special logon identifications and passwords to view
the reserve price ... and reserve price indicator” that
is not accessible to retail purchasers. Id., col. 16, II.
31-33. However, if a retail dealer purchases an item,
he may choose to sell to other retail dealers or to
retail customers. In that situation, the retail dealer
may enter a retail price and a wholesale price into the
system. Id., col. 16, II. 40-41. The retail price may
then be displayed to the retail customer. Id., col. 16,
II. 41-42.
Importantly, when a retail customer decides to
participate in the system, the retail customer, after
browsing and searching, has only the option of
purchasing goods. The customer is not allowed to
sell goods to the retail dealer. That is, while dealers
are able to act as participants in the dealer-to-dealer
market by buying from and selling to other dealers,
customers in the retailer-to-customer market are not
allowed the same freedom. The description of the
retail-to-retail market discloses two types of
electronic markets-those in which a participant can
buy, browse, and search, and those in which a
participant can sell, browse, and search. The
description of the use of the invention for speculation
discloses a third type of electronic market-one in
which a participant can buy and sell as well as
browse and search. Accordingly, we agree with the
district court's definition of electronic markets as
markets in which the participants, in addition to
browsing and searching, may either buy or sell or do
both.
B
[12] At trial, Half.com argued that the district court
should enter a JMOL of invalidity because there was
clear and convincing evidence that the asserted
claims were rendered obvious in view of expert
testimony and several publications, including an
article by Arthur Keller. The district court rejected
Half.com's argument, stating that “[w]hen the
evidence on invalidity is viewed in the light most
favorable to the plaintiff, the court cannot find that
there was a complete absence of evidence supporting
the verdict that the jury's findings could only be the
result of sheer surmise and conjecture.”
On appeal, Half.com again contends that the asserted
claims of the '176 patent were anticipated or obvious
in light of the prior art. In response, MercExchange
first asserts that Half.com waived its right to make
any argument on appeal based on anticipation
because it failed to do so at trial. As we noted
earlier, however, making an invalidity argument
based on obviousness preserves the right to argue
anticipation on appeal. Because Half.com argued
invalidity based on obviousness at trial, it has
preserved its right to make an argument regarding
anticipation on appeal.
*1335 On the merits, we agree with Half.com that no
reasonable jury could have found the asserted claims
of the '176 patent to be valid. The Keller article
discloses each of the limitations of the asserted
claims, and the article is enabling. The article
describes a system to conduct a “cross-search of
multiple catalogs” by using a network of computers
hosting online catalogs. The article recognizes the
problem of an online buyer's having to search
multiple online catalogs, and it solves that problem
by presenting a system for searching multiple online
catalogs using search agents.
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In addition to disclosing each of the limitations of the
asserted claims, the Keller article enables a person of
ordinary skill to practice its system by disclosing the
communication language of the search agents, i.e.,
KQML and KIF ontologies. It also provides a flow
chart that describes how the system operates,
including how the user interfaces with the system,
i.e., by using HTML/HTTP protocols, and how a
search agent retrieves product data, i.e., by using
SQL. Contrary to MercExchange's assertion, the
Keller article that describes how to make the system
is not a mere laundry list of factors.
MercExchange argues that the Keller article fails to
disclose all the limitations of the '176 patent because
it fails to disclose a method for searching “electronic
markets” but instead searches for “catalogs.”
MercExchange asserts that, unlike the electronic
market claimed in the '176 patent, a catalog
guarantees a participant the right to browse and
search, but does not guarantee the ability either to
buy or to sell a particular good. However, the Keller
article clearly describes a system that searches
catalogs that are serviced by what the article calls
“vendors,” who offer products for sale.
Accordingly, the Keller article contemplates a system
in which a participant is able to search, browse, and
buy. Because a participant is able to buy goods in
the market, that is sufficient to satisfy the “buy or
sell” requirement of the asserted claims. In sum, we
conclude that the Keller article discloses each
limitation of the asserted claims of the '176 patent,
and for that reason we hold that those claims are
anticipated.
III
The defendants contend that they are entitled to a
new trial because the district court erred in
instructing the jury on the definition of several terms
used in the '265 patent. With respect to the term
“transaction processor,” the defendants repeat the
same argument they made in addressing the district
court's denial of their motion for JMOL of
noninfringement and invalidity, i.e., that they were
prejudiced because the instruction on that term
differed from the court's Markman order. As we
have explained, we agree with the district court's jury
instruction on that claim term, and the court was not
required to instruct the jury in strict conformity with
the language of its pretrial Markman order.
[13] With regard to the terms “electronic markets”
and “market apparatus,” the defendants assert that the
district court erred by failing to give jury instructions
that those terms do not encompass “person-toperson”
systems, but instead include only trusted
networks that could transfer ownership. The
defendants contend that the district court should have
instructed the jury that electronic markets do not
include “person-to-person” contacts. If it had done
so, they argue, no reasonable jury could have found
that eBay infringes, because eBay uses a “person-toperson”
system.
The defendants' contention that the '265 patent
prohibits buyers and sellers from having direct
contact finds no support in *1336 the '265 patent.
The court was therefore correct not to include that
interpretation in the jury instructions. Moreover, to
the extent that the defendants contend that the district
court's Markman order embraced their theory that the
patent excluded person-to-person systems, they are
incorrect. In its Markman order, the district court
stated that “the patent teaches away from person-toperson
auctions, favoring a system with a trusted
intermediary.” However, the court never defined
what a “person-to-person” system entails. Rather, it
merely determined that an electronic market must be
a “trusted network or system,” which is the correct
interpretation.
IV
In its cross-appeal, MercExchange contests the
summary judgment of invalidity as to the asserted
claims of the '051 patent, and it asserts that the
district court erred in construing certain terms used in
that patent. MercExchange also challenges the
district court's post-trial order denying
MercExchange's request for a permanent injunction,
enhanced damages, and attorney fees, and reducing
the amount of the damages award by eliminating the
$5.5 million in damages for eBay's inducement to
infringe.
A
[14] Prior to trial, the defendants asserted that the
claims of the '051 patent were invalid because the
written description is inadequate to support either
“establish[ing] a seller's account” or “debiting [or
charging] a seller's account” for a fee. Claim 12
contains both terms and is representative of the
independent claims at issue with regard to the '051
patent:
A computer-implemented method for facilitating
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Internet-based auctions, the method comprising:
Requiring a seller to establish a seller's account, the
seller's account being based at least on the seller's
identity and a financial instrument associated with the
seller;
Initiating an Internet-based auction for an item
offered by the seller; and
Debiting the seller's account for a fee amount
corresponding to a result of the auction.
The district court concluded, on summary judgment,
that the reference to “establish[ing] a seller's account”
was adequately supported by the written description,
but that the process of “debiting the seller's account
for a fee” was not. The court therefore held the
asserted claims of the '051 patent invalid.
The district court construed the term “debiting a
seller's account” to mean “record[ing] a debt (or
charge) against a person's name or account.” The
court held that the written description of the patent
provided support for recording a credit to a seller's
account, but not for recording a debit against the
seller's account. In so ruling, the court relied heavily
on a statement from the written description that
“[a]fter the transaction clears the charge ..., the
consignment node credits the consignment node
user's commission account ... to extract the
consignment node transaction fee.” '051 patent, col.
12, II. 52-55. The court interpreted that statement as
describing a process in which the consignment node
takes the proceeds of a sale from the buyer, takes a
commission or fee, credits the seller's account with
the balance, and transfers that amount to the seller.
Because the seller never owes money to the node, the
court concluded that debiting never occurs in the
disclosed process.
MercExchange argues that the joint declaration of its
experts created a genuine issue of material fact as to
the adequacy of the written description. The
declaration explained that a person of ordinary skill
in *1337 the art would understand the process of
extracting a fee or commission, as described in the
written description, to involve “debiting a seller's
account.” We agree. The written description refers
to the seller's agreement to allow the consignment
node user to extract a consignment fee or commission
following the sale. See '051 patent, col. 4, II. 30-34;
col. 5, II. 37-39. It also refers to the consignment
node user's creating a credit or deposit account for the
participant and crediting the consignment node user's
commission account to extract the commission. See
id., col. 12, II. 44-46, 52-55. According to
MercExchange's experts, a person of ordinary skill in
the art would understand that creating a credit, as
described in the specification, would require creating
a corresponding debit against the proceeds due to the
seller. Hence, MercExchange provided evidence
that the specification would be understood by a
person of skill in the art to describe a process that
includes debiting the seller's account.
We thus conclude that MercExchange introduced
sufficient evidence that the '051 patent was not
invalid for lack of written description to create a
genuine issue of material fact on that issue.
Accordingly, we vacate that aspect of the judgment
and remand for further proceedings.
B
[15] In connection with its challenge to the court's
order invalidating the '051 patent, MercExchange
argues that the district court made three errors in
construing the claims of that patent. As an initial
matter, the defendants assert that this court lacks
jurisdiction to hear MercExchange's appeal regarding
those errors because the construction of those terms
was not relevant to the final judgment. Specifically,
the defendants argue that this court should address
only claim construction issues pertaining to the term
“debiting,” because that term was the sole basis for
the district court's summary judgment determination.
Because we are vacating and remanding with respect
to the '051 patent, we have jurisdiction to address
issues that may arise on remand, as part of our
statutory authority to “require such further
proceedings to be had as may be just under the
circumstances.” 28 U.S.C. § 2106. It is likely that
the district court will be required to deal not only
with the application of the term “debiting,” but also
with the application of other terms used in the '051
claims. Accordingly, we elect to address
MercExchange's challenges to other claim
construction issues at this juncture.
[16] First, MercExchange challenges the construction
of the term “auction,” asserting that the district court
erred in construing the term as “a process over a
trusted network, or with a trusted intermediary.”
MercExchange argues that the district court should
not have required a “trusted” element. We disagree.
The district court's construction is supported by the
language of the specification, which states that the
purpose of the patented system is “to provide a
trusted network of consignment nodes that act as
brokers to provide a means to electronically present a
used good or collectable to an electronic market.”
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'051 patent, col. 2, II. 12-14.
[17] Second, MercExchange challenges the district
court's construction of the following claim limitation,
which appears in claims 10 and 12:
Requiring a seller to establish a seller's account, the
seller's account being based at least on the seller's
identity and a financial instrument associated with the
seller.
In its Markman order, the district court ruled that “a
seller's account must be established based at least on
the seller's identity and a financial instrument
associated with the seller.” MercExchange *1338
disagrees with the district court's construction on the
ground that the comma between the words “account”
and “the” in the claim makes the “identity” and
“financial instrument” features optional. If the
patentee had intended the two to be mandatory,
MercExchange argues, the limitation would not have
used a comma and would have read: “requiring the
seller to establish a seller's account based at least on
the seller's identity and a financial instrument
associated with the seller.”
MercExchange's textual argument is unconvincing.
The claim states that a seller must establish “a seller's
account,” and then, after the comma, the word
“seller's account” is used a second time and is
directly preceded by the article “the.” The use of the
definite article indicates that the second use of the
term “seller's account” refers to the term directly
preceding the comma. We uphold the district court's
construction.
[18] Finally, MercExchange asserts that the district
court erred in construing the preamble phrases
“automated method, performed by a computer-based
auction system,” and “computer-implemented
method of conducting Internet-based auctions” in
various claims of the '051 patent. The district court
held that those phrases do not require that all steps
following the preamble be performed by an
automated process, as argued by MercExchange.
Rather, only the steps that are claimed to occur
automatically are required to be performed in that
manner. MercExchange contends that the court's
interpretation is inconsistent with the portion of the
specification entitled “Computer Implementation,”
which provides different operating systems and
platforms for use in a preferred embodiment of the
invention. '051 patent, col. 7, line 59 through col. 8,
line 9. That portion of the specification does not
support MercExchange's argument, however.
Various limitations of the relevant claims require
actions by participants and cannot be “automatically
performed via an automated process.” For example,
as the district court stated in its Markman order,
claim 1 contains a limitation requiring that the
computer system “receiv [e] bids on the item from
participants.” That step requires that participants
enter their bids manually and cannot occur
automatically. Likewise, one step of claim 12
requires that a seller “establish a seller's account.”
That step also requires that a seller manually enter
relevant information into the system. Accordingly,
the district court was correct in holding that not all
steps had to be performed by way of an automated
process.
C
MercExchange challenges the district court's refusal
to enter a permanent injunction. Because the “right
to exclude recognized in a patent is but the essence of
the concept of property,” the general rule is that a
permanent injunction will issue once infringement
and validity have been adjudged. Richardson v.
Suzuki Motor Co., 868 F.2d 1226, 1246-47
(Fed.Cir.1989). To be sure, “courts have in rare
instances exercised their discretion to deny injunctive
relief in order to protect the public interest.” Rite-
Hite Corp. v. Kelley, Inc., 56 F.3d 1538, 1547
(Fed.Cir.1995); see Roche Prods., Inc. v. Bolar
Pharm. Co., 733 F.2d 858, 865-66 (Fed.Cir.1984)
(“standards of the public interest, not the
requirements of private litigation, measure the
propriety and need for injunctive relief”). Thus, we
have stated that a court may decline to enter an
injunction when “a patentee's failure to practice the
patented invention frustrates an important public
need for the invention,” such as the need to use an
invention to protect public health. Rite-Hite Corp.,
56 F.3d at 1547.
*1339 [19] In this case, the district court did not
provide any persuasive reason to believe this case is
sufficiently exceptional to justify the denial of a
permanent injunction. In its post-trial order, the
district court stated that the public interest favors
denial of a permanent injunction in view of “a
growing concern over the issuance of businessmethod
patents, which forced the PTO to implement
a second level review policy and cause legislation to
be introduced in Congress to eliminate the
presumption of validity for such patents.” A general
concern regarding business-method patents, however,
is not the type of important public need that justifies
the unusual step of denying injunctive relief.
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401 F.3d 1323 Page 15
401 F.3d 1323, 74 U.S.P.Q.2d 1225
(Cite as: 401 F.3d 1323)
Another reason the court gave for denying a
permanent injunction was that the litigation in this
case had been contentious and that if a permanent
injunction were granted, the defendants would
attempt to design around it. That strategy, in turn,
would result in “contempt hearing after contempt
hearing requiring the court to essentially conduct
separate infringement trials to determine if the
changes to the defendants' systems violates the
injunction” and in “extraordinary costs to the parties,
as well as considerable judicial resources.”
[20] The court's concern about the likelihood of
continuing disputes over whether the defendants'
subsequent actions would violate MercExchange's
rights is not a sufficient basis for denying a
permanent injunction. A continuing dispute of that
sort is not unusual in a patent case, and even absent
an injunction, such a dispute would be likely to
continue in the form of successive infringement
actions if the patentee believed the defendants'
conduct continued to violate its rights.
[21] The trial court also noted that MercExchange
had made public statements regarding its willingness
to license its patents, and the court justified its denial
of a permanent injunction based in part on those
statements. The fact that MercExchange may have
expressed willingness to license its patents should
not, however, deprive it of the right to an injunction
to which it would otherwise be entitled. Injunctions
are not reserved for patentees who intend to practice
their patents, as opposed to those who choose to
license. The statutory right to exclude is equally
available to both groups, and the right to an adequate
remedy to enforce that right should be equally
available to both as well. If the injunction gives the
patentee additional leverage in licensing, that is a
natural consequence of the right to exclude and not
an inappropriate reward to a party that does not
intend to compete in the marketplace with potential
infringers.
[22] Finally, we do not agree with the court that
MercExchange's failure to move for a preliminary
injunction militates against its right to a permanent
injunction. A preliminary injunction is extraordinary
relief that is available only on a special showing of
need for relief pendente lite; a preliminary injunction
and a permanent injunction “are distinct forms of
equitable relief that have different prerequisites and
serve entirely different purposes.” Lermer Germany
GmbH v. Lermer Corp., 94 F.3d 1575, 1577
(Fed.Cir.1996). We therefore see no reason to
depart from the general rule that courts will issue
permanent injunctions against patent infringement
absent exceptional circumstances. Accordingly, we
reverse the district court's denial of MercExchange's
motion for a permanent injunction.
D
MercExchange argues that the district court abused
its discretion by refusing to enhance damages and
award attorney fees. MercExchange asserts that the
district *1340 court erred in its analysis of the factors
set forth in Read Corp. v. Portec, Inc., 970 F.2d 816,
826-27 (Fed.Cir.1992). The defendants respond that
the district court properly considered each of the
Read factors. We agree with the defendants. In
determining that MercExchange was not entitled to
enhanced damages, the district court carefully
analyzed each of the Read factors and based its
conclusions on the jury's factual findings and
evidence in the record. In analyzing those factors,
the court did not abuse its discretion.
The court also addressed the relevant factors that bear
on whether to award attorney fees, including “the
degree of culpability of the infringer,” “the closeness
of the question,” and “litigation behavior.” Superior
Fireplace Co. v. Majestic Prods. Co., 270 F.3d 1358,
1378 (Fed.Cir.2001), quoting Nat'l Presto Indus., Inc.
v. W. Bend Co., 76 F.3d 1185, 1197 (Fed.Cir.1996).
Again, the court did not abuse its discretion in
applying those factors in the factual context of this
case. We therefore affirm the portion of the
judgment denying an award of enhanced damages or
attorney fees.
Each party shall bear its own costs for this appeal.
AFFIRMED IN PART, REVERSED IN PART,
VACATED IN PART, and REMANDED.
C.A.Fed. (Va.),2005.
MercExchange, LLC v. eBay, Inc.
401 F.3d 1323, 74 U.S.P.Q.2d 1225
Briefs and Other Related Documents (Back to top)
• 03-1616 (Docket) (Sep. 08, 2003)
• 03-1600 (Docket) (Aug. 25, 2003)
END OF DOCUMENT
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126 S.Ct. 1837 Page 1
126 S.Ct. 1837, 78 U.S.P.Q.2d 1577, 2006 Daily Journal D.A.R. 5756, 74 USLW 4248, 06 Cal. Daily Op. Serv.
3935, 19 Fla. L. Weekly Fed. S 197, 164 L.Ed.2d 641
(Cite as: 126 S.Ct. 1837)
Briefs and Other Related Documents
Supreme Court of the United States
EBAY INC. et al., Petitioners,
v.
MERCEXCHANGE, L.L.C.
No. 05-130.
Argued March 29, 2006.
Decided May 15, 2006.
Background: Owner of patent for method of
conducting on-line sales sued auction website
operators for infringement. The United States District
Court for the Eastern District of Virginia, Jerome B.
Friedman, J., 275 F.Supp.2d 695, entered judgment
on jury's finding that patent was valid and had been
infringed, and awarded damages, but denied
permanent injunctive relief sought by owner. The
United States Court of Appeals for the Federal
Circuit, 401 F.3d 1323, reversed in part, finding that
District Court had abused its discretion by denying
permanent injunction. Certiorari was granted.
Holdings: The United States Supreme Court, Justice
Thomas, held that:
(1) generally applicable four-factor test for
permanent injunctive relief applies to disputes arising
under Patent Act, and
(2) in successful patent infringement action, patent
holder's willingness to license its patents and lack of
commercial activity in practicing patents do not
preclude permanent injunction.
Vacated and remanded.
The Chief Justice filed a concurring opinion joined
by Justices Scalia and Ginsburg.
Justice Kennedy filed a concurring opinion joined by
Justices Stevens, Souter, and Breyer.
[1] Injunction 212 9
West Headnotes
212 Injunction
212I Nature and Grounds in General
212I(B) Grounds of Relief
212k9 k. Nature and Existence of Right
Requiring Protection. Most Cited Cases
Plaintiff seeking permanent injunction must
demonstrate that: (1) it has suffered irreparable
injury; (2) remedies available at law, such as
monetary damages, are inadequate to compensate for
that injury; (3) considering balance of hardships
between plaintiff and defendant, remedy in equity is
warranted; and (4) public interest would not be
disserved by permanent injunction.
[2] Federal Courts 170B 814.1
170B Federal Courts
170BVIII Courts of Appeals
170BVIII(K) Scope, Standards, and Extent
170BVIII(K)4 Discretion of Lower Court
170Bk814 Injunction
170Bk814.1 k. In General. Most
Cited Cases
District court's decision to grant or deny permanent
injunctive relief is act of equitable discretion
reviewable for abuse of discretion.
[3] Patents 291 317
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k317 k. Permanent Injunction. Most
Cited Cases
General equitable principles governing grant of
permanent injunction, and consequent four-factor test
for such relief, i.e. irreparable injury, inadequacy of
remedies at law, balance of hardships favoring party
seeking injunction, and public interest, apply in
context of disputes arising under Patent Act; fact that
Act confers upon patent holder right to exclude
others does not render permanent injunction
appropriate any time infringement and validity have
been adjudged. 35 U.S.C.A. § § 154(a)(1), 261, 283.
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

126 S.Ct. 1837 Page 2
126 S.Ct. 1837, 78 U.S.P.Q.2d 1577, 2006 Daily Journal D.A.R. 5756, 74 USLW 4248, 06 Cal. Daily Op. Serv.
3935, 19 Fla. L. Weekly Fed. S 197, 164 L.Ed.2d 641
(Cite as: 126 S.Ct. 1837)
[4] Patents 291 317
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k317 k. Permanent Injunction. Most
Cited Cases
In successful patent infringement action, patent
holder's willingness to license its patents, and lack of
commercial activity in practicing patents, do not, by
themselves, establish that holder would not suffer
irreparable harm if permanent injunction against
infringing party did not issue; thus, those facts by
themselves do not preclude injunctive relief. 35
U.S.C.A. § 1 et seq.
*1837 Syllabus FN*
FN* The syllabus constitutes no part of the
opinion of the Court but has been prepared
by the Reporter of Decisions for the
convenience of the reader. See United
States v. Detroit Timber & Lumber Co., 200
U.S. 321, 337, 26 S.Ct. 282, 50 L.Ed. 499.
Petitioners operate popular Internet Web sites that
allow private sellers to list *1838 goods they wish to
sell. Respondent sought to license its business
method patent to petitioners, but no agreement was
reached. In respondent's subsequent patent
infringement suit, a jury found that its patent was
valid, that petitioners had infringed the patent, and
that damages were appropriate. However, the
District Court denied respondent's motion for
permanent injunctive relief. In reversing, the
Federal Circuit applied its “general rule that courts
will issue permanent injunctions against patent
infringement absent exceptional circumstances.” 401
F.3d 1323, 1339.
Held: The traditional four-factor test applied by
courts of equity when considering whether to award
permanent injunctive relief to a prevailing plaintiff
applies to disputes arising under the Patent Act. That
test requires a plaintiff to demonstrate: (1) that it has
suffered an irreparable injury; (2) that remedies
available at law are inadequate to compensate for that
injury; (3) that considering the balance of hardships
between the plaintiff and defendant, a remedy in
equity is warranted; and (4) that the public interest
would not be disserved by a permanent injunction.
The decision to grant or deny such relief is an act of
equitable discretion by the district court, reviewable
on appeal for abuse of discretion. These principles
apply with equal force to Patent Act disputes. “[A]
major departure from the long tradition of equity
practice should not be lightly implied.” Weinberger
v. Romero-Barcelo, 456 U.S. 305, 320, 102 S.Ct.
1798, 72 L.Ed.2d 91. Nothing in the Act indicates
such a departure. Pp. 1838 - 1841.
401 F.3d 1323, vacated and remanded.
THOMAS, J., delivered the opinion for a unanimous
Court. ROBERTS, C.J., filed a concurring opinion,
in which SCALIA and GINSBURG, JJ., joined.
KENNEDY, J., filed a concurring opinion, in which
STEVENS, SOUTER, and BREYER, JJ., joined.
Jeffrey P. Minear for the United States as amicus
curiae, by special leave of the Court, supporting the
respondent.
Jeffrey G. Randall, Skadden, Arps, Slate, Meagher &
Flom LLP, Palo Alto, California, Allan M. Soobert,
Skadden, Arps, Slate, Meagher & Flom LLP,
Washington, D.C., Carter G. Phillips, Counsel of
Record, Richard D. Bernstein, Virginia Seitz Sidley
Austin LLP, Washington, D.C., Jay Monahan eBay
Inc., San Jose, California, for Petitioners.
Scott L. Robertson, Gregory N. Stillman, Jennifer A.
Albert, David M. Young, Brian M. Buroker, Hunton
& Williams LLP, Washington, DC, Seth P. Waxman,
Counsel of Record, William G. McElwain, Paul R.Q.
Wolfson, John M. Golden, Shirley Cassin
Woodward, Wilmer Cutler Pickering Hale and Door
LLP, Washington, DC, for respondent.For U.S.
Supreme Court briefs, see:2006 WL 927236
(Pet.Brief)2006 WL 622506 (Resp.Brief)2006 WL
690255 (Reply.Brief)
Justice THOMAS delivered the opinion of the Court.
Ordinarily, a federal court considering whether to
award permanent injunctive relief to a prevailing
plaintiff applies the four-factor test historically
employed by courts of equity. Petitioners eBay Inc.
and Half.com, Inc., argue that this traditional test
applies to disputes arising under *1839 the Patent
Act. We agree and, accordingly, vacate the judgment
of the Court of Appeals.
I
Petitioner eBay operates a popular Internet Web site
that allows private sellers to list goods they wish to
sell, either through an auction or at a fixed price.
Petitioner Half.com, now a wholly owned subsidiary
of eBay, operates a similar Web site. Respondent
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126 S.Ct. 1837 Page 3
126 S.Ct. 1837, 78 U.S.P.Q.2d 1577, 2006 Daily Journal D.A.R. 5756, 74 USLW 4248, 06 Cal. Daily Op. Serv.
3935, 19 Fla. L. Weekly Fed. S 197, 164 L.Ed.2d 641
(Cite as: 126 S.Ct. 1837)
MercExchange, L.L.C., holds a number of patents,
including a business method patent for an electronic
market designed to facilitate the sale of goods
between private individuals by establishing a central
authority to promote trust among participants. See
U.S. Patent No. 5,845,265. MercExchange sought to
license its patent to eBay and Half.com, as it had
previously done with other companies, but the parties
failed to reach an agreement. MercExchange
subsequently filed a patent infringement suit against
eBay and Half.com in the United States District
Court for the Eastern District of Virginia. A jury
found that MercExchange's patent was valid, that
eBay and Half.com had infringed that patent, and that
an award of damages was appropriate. FN1
FN1. EBay and Half.com continue to
challenge the validity of MercExchange's
patent in proceedings pending before the
United States Patent and Trademark Office.
Following the jury verdict, the District Court denied
MercExchange's motion for permanent injunctive
relief. 275 F.Supp.2d 695 (2003). The Court of
Appeals for the Federal Circuit reversed, applying its
“general rule that courts will issue permanent
injunctions against patent infringement absent
exceptional circumstances.” 401 F.3d 1323, 1339
(2005). We granted certiorari to determine the
appropriateness of this general rule. 546 U.S. ----,
126 S.Ct. 733, 163 L.Ed.2d 567 (2005).
II
[1][2] According to well-established principles of
equity, a plaintiff seeking a permanent injunction
must satisfy a four-factor test before a court may
grant such relief. A plaintiff must demonstrate: (1)
that it has suffered an irreparable injury; (2) that
remedies available at law, such as monetary damages,
are inadequate to compensate for that injury; (3) that,
considering the balance of hardships between the
plaintiff and defendant, a remedy in equity is
warranted; and (4) that the public interest would not
be disserved by a permanent injunction. See, e.g.,
Weinberger v. Romero-Barcelo, 456 U.S. 305, 311-
313, 102 S.Ct. 1798, 72 L.Ed.2d 91 (1982); Amoco
Production Co. v. Gambell, 480 U.S. 531, 542, 107
S.Ct. 1396, 94 L.Ed.2d 542 (1987). The decision to
grant or deny permanent injunctive relief is an act of
equitable discretion by the district court, reviewable
on appeal for abuse of discretion. See, e.g., Romero-
Barcelo, 456 U.S., at 320, 102 S.Ct. 1798.
[3] These familiar principles apply with equal force
to disputes arising under the Patent Act. As this Court
has long recognized, “a major departure from the
long tradition of equity practice should not be lightly
implied.” Ibid.; see also Amoco, supra, at 542, 107
S.Ct. 1396. Nothing in the Patent Act indicates that
Congress intended such a departure. To the
contrary, the Patent Act expressly provides that
injunctions “may” issue “in accordance with the
principles of equity.” 35 U.S.C. § 283. FN2
FN2. Section 283 provides that “[t]he
several courts having jurisdiction of cases
under this title may grant injunctions in
accordance with the principles of equity to
prevent the violation of any right secured by
patent, on such terms as the court deems
reasonable.”
*1840 To be sure, the Patent Act also declares that
“patents shall have the attributes of personal
property,” § 261, including “the right to exclude
others from making, using, offering for sale, or
selling the invention,” § 154(a)(1). According to
the Court of Appeals, this statutory right to exclude
alone justifies its general rule in favor of permanent
injunctive relief. 401 F.3d, at 1338. But the creation
of a right is distinct from the provision of remedies
for violations of that right. Indeed, the Patent Act
itself indicates that patents shall have the attributes of
personal property “[s]ubject to the provisions of this
title,” 35 U.S.C. § 261, including, presumably, the
provision that injunctive relief “may” issue only “in
accordance with the principles of equity,” § 283.
This approach is consistent with our treatment of
injunctions under the Copyright Act. Like a patent
owner, a copyright holder possesses “the right to
exclude others from using his property.” Fox Film
Corp. v. Doyal, 286 U.S. 123, 127, 52 S.Ct. 546, 76
L.Ed. 1010 (1932); see also id., at 127-128, 52 S.Ct.
546 (“A copyright, like a patent, is at once the
equivalent given by the public for benefits bestowed
by the genius and meditations and skill of
individuals, and the incentive to further efforts for the
same important objects” (internal quotation marks
omitted)). Like the Patent Act, the Copyright Act
provides that courts “may” grant injunctive relief “on
such terms as it may deem reasonable to prevent or
restrain infringement of a copyright.” 17 U.S.C. §
502(a). And as in our decision today, this Court has
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126 S.Ct. 1837 Page 4
126 S.Ct. 1837, 78 U.S.P.Q.2d 1577, 2006 Daily Journal D.A.R. 5756, 74 USLW 4248, 06 Cal. Daily Op. Serv.
3935, 19 Fla. L. Weekly Fed. S 197, 164 L.Ed.2d 641
(Cite as: 126 S.Ct. 1837)
consistently rejected invitations to replace traditional
equitable considerations with a rule that an injunction
automatically follows a determination that a
copyright has been infringed. See, e.g., New York
Times Co. v. Tasini, 533 U.S. 483, 505, 121 S.Ct.
2381, 150 L.Ed.2d 500 (2001) (citing Campbell v.
Acuff-Rose Music, Inc., 510 U.S. 569, 578, n. 10, 114
S.Ct. 1164, 127 L.Ed.2d 500 (1994)); Dun v.
Lumbermen's Credit Assn., 209 U.S. 20, 23-24, 28
S.Ct. 335, 52 L.Ed. 663 (1908).
[4] Neither the District Court nor the Court of
Appeals below fairly applied these traditional
equitable principles in deciding respondent's motion
for a permanent injunction. Although the District
Court recited the traditional four-factor test, 275
F.Supp.2d, at 711, it appeared to adopt certain
expansive principles suggesting that injunctive relief
could not issue in a broad swath of cases. Most
notably, it concluded that a “plaintiff's willingness to
license its patents” and “its lack of commercial
activity in practicing the patents” would be sufficient
to establish that the patent holder would not suffer
irreparable harm if an injunction did not issue. Id., at
712. But traditional equitable principles do not
permit such broad classifications. For example,
some patent holders, such as university researchers or
self-made inventors, might reasonably prefer to
license their patents, rather than undertake efforts to
secure the financing necessary to bring their works to
market themselves. Such patent holders may be able
to satisfy the traditional four-factor test, and we see
no basis for categorically denying them the
opportunity to do so. To the extent that the District
Court adopted such a categorical rule, then, its
analysis cannot be squared with the principles of
equity adopted by Congress. The court's categorical
rule is also in tension with Continental Paper Bag
Co. v. Eastern Paper Bag Co., 210 U.S. 405, 422-
430, 28 S.Ct. 748, 52 L.Ed. 1122 (1908), which
rejected the contention that a court of equity has no
jurisdiction to grant injunctive relief to a *1841
patent holder who has unreasonably declined to use
the patent.
In reversing the District Court, the Court of Appeals
departed in the opposite direction from the fourfactor
test. The court articulated a “general rule,”
unique to patent disputes, “that a permanent
injunction will issue once infringement and validity
have been adjudged.” 401 F.3d, at 1338. The court
further indicated that injunctions should be denied
only in the “unusual” case, under “exceptional
circumstances” and “ ‘in rare instances ... to protect
the public interest.’ ” Id., at 1338-1339. Just as the
District Court erred in its categorical denial of
injunctive relief, the Court of Appeals erred in its
categorical grant of such relief. Cf. Roche Products
v. Bolar Pharmaceutical Co., 733 F.2d 858, 865
(C.A.Fed.1984) (recognizing the “considerable
discretion” district courts have “in determining
whether the facts of a situation require it to issue an
injunction”).
Because we conclude that neither court below
correctly applied the traditional four-factor
framework that governs the award of injunctive
relief, we vacate the judgment of the Court of
Appeals, so that the District Court may apply that
framework in the first instance. In doing so, we take
no position on whether permanent injunctive relief
should or should not issue in this particular case, or
indeed in any number of other disputes arising under
the Patent Act. We hold only that the decision
whether to grant or deny injunctive relief rests within
the equitable discretion of the district courts, and that
such discretion must be exercised consistent with
traditional principles of equity, in patent disputes no
less than in other cases governed by such standards.
Accordingly, we vacate the judgment of the Court of
Appeals, and remand for further proceedings
consistent with this opinion.
It is so ordered.
Chief Justice ROBERTS, with whom Justice
SCALIA and Justice GINSBURG join, concurring.
I agree with the Court's holding that “the decision
whether to grant or deny injunctive relief rests within
the equitable discretion of the district courts, and that
such discretion must be exercised consistent with
traditional principles of equity, in patent disputes no
less than in other cases governed by such standards,”
ante, at 1841, and I join the opinion of the Court.
That opinion rightly rests on the proposition that “a
major departure from the long tradition of equity
practice should not be lightly implied.” Weinberger
v. Romero-Barcelo, 456 U.S. 305, 320, 102 S.Ct.
1798, 72 L.Ed.2d 91 (1982); see ante, at 1839.
From at least the early 19th century, courts have
granted injunctive relief upon a finding of
infringement in the vast majority of patent cases.
This “long tradition of equity practice” is not
surprising, given the difficulty of protecting a right to
exclude through monetary remedies that allow an
infringer to use an invention against the patentee's
wishes-a difficulty that often implicates the first two
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126 S.Ct. 1837, 78 U.S.P.Q.2d 1577, 2006 Daily Journal D.A.R. 5756, 74 USLW 4248, 06 Cal. Daily Op. Serv.
3935, 19 Fla. L. Weekly Fed. S 197, 164 L.Ed.2d 641
(Cite as: 126 S.Ct. 1837)
factors of the traditional four-factor test. This
historical practice, as the Court holds, does not entitle
a patentee to a permanent injunction or justify a
general rule that such injunctions should issue. The
Federal Circuit itself so recognized in Roche
Products, Inc. v. Bolar Pharmaceutical Co., 733 F.2d
858, 865-867 (1984). At the same time, there is a
difference between exercising equitable discretion
pursuant to the established four-factor test and
writing on an entirely clean slate. “Discretion is not
whim, and limiting discretion according to legal
standards helps promote the basic *1842 principle of
justice that like cases should be decided alike.”
Martin v. Franklin Capital Corp., 546 U.S. ----, ----,
126 S.Ct. 704, 710, 163 L.Ed.2d 547 (2005). When
it comes to discerning and applying those standards,
in this area as others, “a page of history is worth a
volume of logic.” New York Trust Co. v. Eisner, 256
U.S. 345, 349, 41 S.Ct. 506, 65 L.Ed. 963 (1921)
(opinion for the Court by Holmes, J.).
Justice KENNEDY, with whom Justice STEVENS,
Justice SOUTER, and Justice BREYER join,
concurring.
The Court is correct, in my view, to hold that courts
should apply the well-established, four-factor testwithout
resort to categorical rules-in deciding
whether to grant injunctive relief in patent cases.
THE CHIEF JUSTICE is also correct that history
may be instructive in applying this test. Ante, at
1841 - 1842 (concurring opinion). The traditional
practice of issuing injunctions against patent
infringers, however, does not seem to rest on “the
difficulty of protecting a right to exclude through
monetary remedies that allow an infringer to use an
invention against the patentee's wishes.” Ante, at
1841 (ROBERTS, C.J., concurring). Both the terms
of the Patent Act and the traditional view of
injunctive relief accept that the existence of a right to
exclude does not dictate the remedy for a violation of
that right. Ante, at 1839 - 1840 (opinion of the
Court). To the extent earlier cases establish a pattern
of granting an injunction against patent infringers
almost as a matter of course, this pattern simply
illustrates the result of the four-factor test in the
contexts then prevalent. The lesson of the historical
practice, therefore, is most helpful and instructive
when the circumstances of a case bear substantial
parallels to litigation the courts have confronted
before.
In cases now arising trial courts should bear in mind
that in many instances the nature of the patent being
enforced and the economic function of the patent
holder present considerations quite unlike earlier
cases. An industry has developed in which firms use
patents not as a basis for producing and selling goods
but, instead, primarily for obtaining licensing fees.
See FTC, To Promote Innovation: The Proper
Balance of Competition and Patent Law and Policy,
ch. 3, pp. 38-39 (Oct.2003), available at
http://www.ftc.gov/os/2003/ 10/innovationrpt.pdf (as
visited May 11, 2006, and available in Clerk of
Court's case file). For these firms, an injunction, and
the potentially serious sanctions arising from its
violation, can be employed as a bargaining tool to
charge exorbitant fees to companies that seek to buy
licenses to practice the patent. See ibid. When the
patented invention is but a small component of the
product the companies seek to produce and the threat
of an injunction is employed simply for undue
leverage in negotiations, legal damages may well be
sufficient to compensate for the infringement and an
injunction may not serve the public interest. In
addition injunctive relief may have different
consequences for the burgeoning number of patents
over business methods, which were not of much
economic and legal significance in earlier times.
The potential vagueness and suspect validity of some
of these patents may affect the calculus under the
four-factor test.
The equitable discretion over injunctions, granted by
the Patent Act, is well suited to allow courts to adapt
to the rapid technological and legal developments in
the patent system. For these reasons it should be
recognized that district courts must determine
whether past practice fits the circumstances of the
cases before *1843 them. With these observations, I
join the opinion of the Court.
U.S.,2006.
eBay Inc. v. MercExchange, L.L.C.
126 S.Ct. 1837, 78 U.S.P.Q.2d 1577, 2006 Daily
Journal D.A.R. 5756, 74 USLW 4248, 06 Cal. Daily
Op. Serv. 3935, 19 Fla. L. Weekly Fed. S 197, 164
L.Ed.2d 641
Briefs and Other Related Documents (Back to top)
• 2006 WL 1785363 (Appellate Brief) Brief Amici
Curiae of 52 Intellectual Property Professors in
Support of Petitioners (Jun. 26, 2006) Original Image
of this Document (PDF)
• 2006 WL 927236 (Appellate Brief) Brief of
Petitioners (Mar. 29, 2006) Original Image of this
Document (PDF)
• 2006 WL 690255 (Appellate Brief) Reply Brief
(Mar. 17, 2006) Original Image of this Document
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126 S.Ct. 1837 Page 6
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3935, 19 Fla. L. Weekly Fed. S 197, 164 L.Ed.2d 641
(Cite as: 126 S.Ct. 1837)
(PDF)
• 2006 WL 615158 (Appellate Brief) Brief for
General Electric Company, 3M Company, The
Procter & Gamble Company, E.I. Du Pont De
Nemours and Company, and Johnson & Johnson as
Amici Curiae Suggesting Affirmance (Mar. 10, 2006)
Original Image of this Document (PDF)
• 2006 WL 622120 (Appellate Brief) Brief for the
United States as Amicus Curiae Supporting
Respondent (Mar. 10, 2006) Original Image of this
Document (PDF)
• 2006 WL 622122 (Appellate Brief) Brief of Amicus
Curiae Pharmaceutical Research and Manufacturing
of America in Support of Respondent (Mar. 10,
2006) Original Image of this Document (PDF)
• 2006 WL 622506 (Appellate Brief) Brief for
Respondent (Mar. 10, 2006) Original Image of this
Document (PDF)
• 2006 WL 639161 (Appellate Brief) Brief Amici
Curiae of Martin Cooper, Raymond Damadian, Leroy
Hood, Nathan Myhrvold, Robert Rines, Burt Rutan,
James West, 14 Other Investors, and Intellectual
Ventures in Support of Respondent (Mar. 10, 2006)
Original Image of this Document (PDF)
• 2006 WL 639162 (Appellate Brief) Brief of
Biotechnology Industry Organization as Amici
Curiae in Support of Respondent (Mar. 10, 2006)
Original Image of this Document (PDF)
• 2006 WL 639163 (Appellate Brief) Brief of
Rembrandt IP Management, LLC as Amicus Curiae
in Support of Respondent (Mar. 10, 2006) Original
Image of this Document (PDF)
• 2006 WL 639164 (Appellate Brief) Brief of Various
Law & Economics Professors as Amici Curiae in
Support of Respondent (Mar. 10, 2006) Original
Image of this Document (PDF)
• 2006 WL 639165 (Appellate Brief) Brief of
Wisconsin Alumni Research Foundation, American
Council on Education, Association of University
Technology Managers, Board of Trustees of the
University of Illinois, California Institute of
Technology, NDSU Research Foundation, Regents of
the University of California, Research Corporation
Technologies, Texas A&M University System's
Office of Technology Commercialization, University
of Virginia Patent Foundation and Washington
Research Foundation as Amici Curiae in Support of
Respondent%t (Mar. 10, 2006) Original Image of this
Document (PDF)
• 2006 WL 639166 (Appellate Brief) Brief For
Amicus Curiae Steven M. Hoffberg Supporting
Respondent (Mar. 10, 2006) Original Image of this
Document (PDF)
• 2006 WL 639167 (Appellate Brief) Brief of the
American Bar Association as Amicus Curiae
Supporting Respondent (Mar. 10, 2006) Original
Image of this Document (PDF)
• 2006 WL 639168 (Appellate Brief) Brief of the
Association of American Universities and the
National Association of State Universities and Land-
Grant Colleges as Amici Curiae in Support of
Respondent (Mar. 10, 2006) Original Image of this
Document (PDF)
• 2006 WL 639169 (Appellate Brief) Brief for
Technology Patents & Licensing, Inc., Expanse
Networks, Inc., And Charles A. Eldering As Amici
Curiae Supporting Respondent (Mar. 10, 2006)
Original Image of this Document (PDF)
• 2006 WL 639170 (Appellate Brief) Brief of Amici
Curiae to Qualcomm Incorporated and Tessera, Inc.
in Support of Respondent (Mar. 10, 2006) Original
Image of this Document (PDF)
• 2006 WL 622121 (Appellate Brief) Brief of the
United Inventors Association and Technology
Licensing Corporation As Amici Curiae In Support
Of MercExchange, L.L.C., on the Merits (Mar. 9,
2006)
• 2006 WL 207729 (Appellate Brief) Brief for
Amicus Curiae Bar Association of the District of
Columbia - Patent, Trademark & Copyright Section
in Support of Neither Party (Jan. 26, 2006) Original
Image of this Document (PDF)
• 2006 WL 207730 (Appellate Brief) Brief of
Business Software Alliance, Software and
Information Industry Association, Information
Technology Industry Council, and Information
Technology Association of America as Amici Curiae
in Support of Petitioners (Jan. 26, 2006) Original
Image of this Document (PDF)
• 2006 WL 218966 (Appellate Brief) Amicus Curiae
Brief of Teva Pharmaceuticals USA, Inc. in Support
of Neither Party (Jan. 26, 2006) Original Image of
this Document (PDF)
• 2006 WL 218967 (Appellate Brief) Brief of
American Innovators' Alliance as Amicus Curiae in
Support of Petitioners (Jan. 26, 2006) Original Image
of this Document (PDF)
• 2006 WL 218988 (Appellate Brief) Brief of Amicus
Curiae Yahoo! Inc. in Support of Petitioner (Jan. 26,
2006) Original Image of this Document (PDF)
• 2006 WL 235005 (Appellate Brief) Brief of Amicus
Curiae Nokia Corporation in Support of Petitioners
(Jan. 26, 2006) Original Image of this Document
(PDF)
• 2006 WL 235006 (Appellate Brief) Brief of
International Business Machines Corporation as
Amicus Curiae in Support of Neither Party (Jan. 26,
2006) Original Image of this Document (PDF)
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126 S.Ct. 1837 Page 7
126 S.Ct. 1837, 78 U.S.P.Q.2d 1577, 2006 Daily Journal D.A.R. 5756, 74 USLW 4248, 06 Cal. Daily Op. Serv.
3935, 19 Fla. L. Weekly Fed. S 197, 164 L.Ed.2d 641
(Cite as: 126 S.Ct. 1837)
• 2006 WL 235007 (Appellate Brief) Brief of
Research in Motion, Ltd. as Amicus Curiae in
Support of Petitioners (Jan. 26, 2006) Original Image
of this Document (PDF)
• 2006 WL 235008 (Appellate Brief) Brief of
Electronic Frontier Foundation, Public Patent
Foundation, American Association of Law Libraries,
American Library Association and Special Libraries
Association as Amici Curiae in Support of Petitioners
(Jan. 26, 2006) Original Image of this Document
(PDF)
• 2006 WL 235009 (Appellate Brief) Brief for the
Association of the Bar of the City of New York as
Amicus Curiae in Support of Petitioners (Jan. 26,
2006) Original Image of this Document (PDF)
• 2006 WL 235010 (Appellate Brief) Brief of Time
Warner Inc., Amazon.com, Inc., Chevron Corp.,
Cisco Systems, Inc., Google Inc., IAC/Interactive
Corp., Infineon Technologies AG, Shell Oil
Company, Visa U.S.A., Inc., and Xerox Corporation
as Amici Curiae in Support of Petitioners (Jan. 26,
2006) Original Image of this Document (PDF)
• 2006 WL 235011 (Appellate Brief) Brief for
Amicus Curiae Computer & Communications
Industry Association in Support of Petitioners (Jan.
26, 2006) Original Image of this Document (PDF)
• 2006 WL 236066 (Appellate Brief) Brief of Amici
Curiae Securities Industry Association, the Financial
Services Roundtable, Bond Market Association, and
Futures Industry Association in Support of
Petitioners (Jan. 26, 2006) Original Image of this
Document (PDF)
• 2006 WL 236430 (Joint Appendix) JOINT
APPENDIX, VOL. I (Jan. 26, 2006)
• 2006 WL 236431 (Joint Appendix) JOINT
APPENDIX, VOL. III (Jan. 26, 2006)
• 2006 WL 236770 (Joint Appendix) JOINT
APPENDIX, VOL. II (Jan. 26, 2006)
• 2006 WL 226066 (Appellate Brief) Amicus Brief of
Malla Pollack and Other Legal Scholars Supporting
eBay Inc., et al. (Jan. 25, 2006) Original Image of
this Document (PDF)
• 2006 WL 236068 (Appellate Brief) Brief of Law
Professors as Amicus Curiae in Support of
Respondent (Jan. 24, 2006)
• 2006 WL 148639 (Appellate Brief) Brief of
American Intellectual Property Law Association and
Federal Circuit Bar Association as Amici Curiae in
Support of Neither Party (Jan. 17, 2006) Original
Image of this Document (PDF)
• 2005 WL 2600844 (Appellate Petition, Motion and
Filing) Reply Brief of Petitioner (Oct. 11, 2005)
• 2005 WL 2381065 (Appellate Petition, Motion and
Filing) Amicus Curiae Brief of the Business Software
Alliance, Software & Information Industry
Association, Information Technology Industry
Council, and Information Technology Association of
America in Support of Petitioner (Sep. 26, 2005)
• 2005 WL 2381066 (Appellate Petition, Motion and
Filing) Brief Amicus Curiae of Computer &
Communications Industry Association in Support of
Petitioners (Sep. 26, 2005)
• 2005 WL 2381067 (Appellate Petition, Motion and
Filing) Brief Amicus Curiae of Electronic Frontier
Foundation in Support of Petitioners (Sep. 26, 2005)
• 2005 WL 2381070 (Appellate Petition, Motion and
Filing) Brief Amici Curiae of 35 Intellectual Property
Professors in Support of the Petition for Certiorari
(Sep. 26, 2005)
• 2005 WL 2396812 (Appellate Petition, Motion and
Filing) Brief in Opposition (Sep. 26, 2005)
• 2005 WL 2381068 (Appellate Petition, Motion and
Filing) Brief of Amici Curiae Qualcomm
Incorporated, Tessera, Inc. and Biogen Idec Inc. in
Support of Respondent (Sep. 23, 2005)
• 2005 WL 2381069 (Appellate Petition, Motion and
Filing) Brief of America Online, Inc., Applied
Materials, Inc., Chevron Corporation, Cisco Systems,
Inc., Google Inc., Shell Oil Company, and Visa
U.S.A. Inc. as Amici Curiae in Support of Petitioner
(Sep. 22, 2005)
• 05-130 (Docket) (Jul. 27, 2005)
• 2005 WL 1801263 (Appellate Petition, Motion and
Filing) Petition for a Writ of Certiorari (Jul. 25, 2005)
END OF DOCUMENT
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434 F.Supp.2d 437 Page 1
434 F.Supp.2d 437
(Cite as: 434 F.Supp.2d 437)
Briefs and Other Related Documents
United States District Court,E.D. Texas,Tyler
Division.
z4 TECHNOLOGIES, INC., Plaintiff
v.
MICROSOFT CORPORATION, and Autodesk, Inc.,
Defendants.
No. 6:06-CV-142.
June 14, 2006.
Background: Patentee brought infringement action
against software manufacturer, alleging that
manufacturer's products infringed its patented
software activation technology. After jury returned
verdict in its favor, patentee moved for permanent
injunction.
Holdings: The District Court, Davis, J., held that:
(1) patentee failed to show that it would suffer
irreparable harm by continuing infringement;
(2) monetary damages for future infringement was
adequate remedy at law;
(3) harm that manufacturer would suffer if it were
enjoined from selling software products that
contained infringing technology and required to
deactivate its product activation servers outweighed
hardships that patentee would suffer in absence of
injunction; and
(4) negative effects on public weighed against
permanent injunctive relief.
Motion denied.
[1] Patents 291 317
West Headnotes
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k317 k. Permanent Injunction. Most
Cited Cases
When considering whether to award permanent
injunctive relief to a prevailing plaintiff in a patent
infringement dispute, courts should apply the
traditional four-factor test used by courts of equity.
[2] Injunction 212 9
212 Injunction
212I Nature and Grounds in General
212I(B) Grounds of Relief
212k9 k. Nature and Existence of Right
Requiring Protection. Most Cited Cases
To be entitled to permanent injunctive relief, a
prevailing plaintiff must demonstrate: (1) that it has
suffered an irreparable injury; (2) that remedies
available at law, such as monetary damages, are
inadequate to compensate for that injury; (3) that,
considering the balance of hardships between the
plaintiff and defendant, a remedy in equity is
warranted; and (4) that the public interest would not
be disserved by a permanent injunction.
[3] Patents 291 317
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k317 k. Permanent Injunction. Most
Cited Cases
Finding that patents were valid and infringed did not
raise a presumption of irreparable harm necessary for
permanent injunctive relief.
[4] Patents 291 317
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k317 k. Permanent Injunction. Most
Cited Cases
Patentee failed to show that it would suffer
irreparable harm by continuing infringement of its
software activation technology, as required to support
permanent injunction; there was no reason that a
potential consumer or licensee of the patentee's
technology would have been dissuaded from
purchasing or licensing its product activation
technology for use in its own software due to the
presence of infringing technology in infringer's
software, and continued infringement did not inhibit
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434 F.Supp.2d 437 Page 2
434 F.Supp.2d 437
(Cite as: 434 F.Supp.2d 437)
patentee's ability to market, sell, or license its
patented technology.
[5] Patents 291 317
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k317 k. Permanent Injunction. Most
Cited Cases
Violation of the right to exclude does not inevitably
lead to the conclusion that a patent holder cannot be
adequately compensated by remedies at law such as
monetary damages without first applying the
principles of equity.
[6] Patents 291 317
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k317 k. Permanent Injunction. Most
Cited Cases
Monetary damages for future infringement of
software activation patents was adequate remedy at
law, in determining whether patentee was entitled to
permanent injunctive relief; infringement did not
exclude patentee from selling or licensing its product
to any sector of the market or threaten its brand name
recognition or good will in any way, and infringing
product activation component of infringer's software
was unrelated to the core functionality for which the
software was purchased by consumers.
[7] Patents 291 317
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k317 k. Permanent Injunction. Most
Cited Cases
Harm that software manufacturer would suffer if it
were enjoined from selling software products that
contained infringing product activation technology
and required to deactivate its product activation
servers outweighed hardships that patentee would
suffer in absence of injunction, in determining if
patentee was entitled to permanent injunctive relief in
connection with infringement of its software
activation patents; redesigning its software products
to remove product activation component would have
created a significant hardship on manufacturer, and
turning off activation servers would have flooded
market with pirated software.
[8] Patents 291 317
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k317 k. Permanent Injunction. Most
Cited Cases
Negative effects on public weighed against
permanent injunctive relief after it was determined
that software manufacturer's products infringed
patentee's software activation patents; redesign and
re-release manufacturer's products could potentially
disrupt their distribution and have an effect on the
public due to the public's enormous reliance on those
products, and deactivation of manufacturer's
activation servers could result in increase in pirated
versions of the software.
Patents 291 328(2)
291 Patents
291XIII Decisions on the Validity, Construction,
and Infringement of Particular Patents
291k328 Patents Enumerated
291k328(2) k. Original Utility. Most Cited
Cases
6,044,471, 6,785,825. Cited.
*438 Elton Joe Kendall, Provost Umphrey, Dallas,
TX, Thomas John Ward, Jr., Law Office of T. John
Ward Jr., PC, Longview, TX, Ernie L. Brooks, Frank
A. Angileri, John S. Leroy, John E. Nemazi, Robert
C.J. Tuttle, Thomas A. Lewry, Brooks & Kushman
PC, Southfield, MI, for Plaintiff.
Isabella Fu, Katherine Ford Horvath, Microsoft
Corporation, Redmond, WA, John Marcus
Bustamante, Fish & Richardson, Austin, TX, John A.
Dragseth, Fish & Richardson, Minneapolis, MN,
John E. Gartman, Matthew C. Bernstein, Seth M.
Sproul, Fish & Richardson, San Diego, CA, Jennifer
Parker Ainsworth, Wilson, Sheehy, Knowles,
Robertson & Cornelius PC, Allen Franklin Gardner,
Michael Edwin Jones, Cindy Marie Allen, Potter
Minton PC, Tyler, TX, for Defendants.
MEMORANDUM OPINION AND ORDER
DAVIS, District Judge.
Before the Court is Plaintiff z4 Technologies, Inc.'s
(“z4”) Motion and Brief for Entry of Permanent
Injunction (Docket No. 333). For the reasons
discussed below, z4's motion is DENIED.
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434 F.Supp.2d 437
(Cite as: 434 F.Supp.2d 437)
BACKGROUND
z4 brought suit against Microsoft Corporation
(“Microsoft”) and Autodesk (“Autodesk”), Inc.
alleging infringement of U.S. Patent Nos. 6,044,471
(“the 471 patent”) and 6,785,825 (“the 825 patent”).
The patents disclose methods for limiting the
unauthorized use of computer software, referred to as
product activation. The case was tried to a jury on
April 10 through April 19, 2006. At trial, z4
asserted one claim of the 471 patent and two claims
of the 825 patent. The jury found that Microsoft
and Autodesk infringed all three claims and that
Microsoft's infringement was willful. The jury also
found that neither Microsoft nor Autodesk proved by
clear and convincing evidence that any of the listed
claims of the patents in the lawsuit were invalid.
The jury awarded *439 $115 million in damages
against Microsoft and $18 million against Autodesk.
Specifically, the jury found that Microsoft's Office
and Windows software products infringed the
asserted claims of the two patents-in-suit. z4 asks the
Court to enjoin Microsoft from making, using,
selling, offering for sale, and/or importing its current
software products that use product activation, i.e.
Windows XP products since 2001 and Office
products since 2000. z4's motion proposes that the
Court order Microsoft to deactivate the servers that
control product activation for Microsoft's infringing
products and to re-design its Windows and Office
software products to eliminate the infringing
technology. Microsoft will release the next
generation of its Windows and Office software-
Windows Vista (2007) and Office (2007)-in January
of 2007, and both products plan to eliminate the
infringing product activation technology.
APPLICABLE LAW
[1][2] When considering whether to award permanent
injunctive relief to a prevailing plaintiff in a patent
infringement dispute, courts should apply the
traditional four-factor test used by courts of equity.
See eBay, Inc. v. MercExchange, LLC, --- U.S. ----, --
--, 126 S.Ct. 1837, 1839, 164 L.Ed.2d 641 (2006).
The prevailing plaintiff must demonstrate: “(1) that
it has suffered an irreparable injury; (2) that
remedies available at law, such as monetary damages,
are inadequate to compensate for that injury; (3) that,
considering the balance of hardships between the
plaintiff and defendant, a remedy in equity is
warranted; and (4) that the public interest would not
be disserved by a permanent injunction.” Id. The
Court held “the decision whether to grant or deny
injunctive relief rests within the equitable discretion
of the district courts, and that such discretion must be
exercised consistent with traditional principles of
equity, in patent disputes no less than in other cases
governed by such standards.” Id. at 1841.
ANALYSIS
Irreparable Harm Suffered by z4
[3] z4 contends that a finding of infringement and
validity raises a rebuttable presumption of irreparable
harm. z4 argues this presumption applies to the
irreparable harm element of the test laid out by the
Supreme Court in eBay for two reasons. First, z4
argues that the presumption arises because the
Supreme Court cited Amoco Production Co. v.
Village of Gambell, Alaska, 480 U.S. 531, 542, 107
S.Ct. 1396, 94 L.Ed.2d 542 (1987) in its eBay
decision. z4 suggests that the Supreme Court's citing
of Amoco Production is significant because in that
case the Supreme Court indicated that the standard
for a preliminary injunction is essentially the same as
that for a permanent injunction. z4 then concludes
that because the Federal Circuit has held that a strong
showing of infringement and validity raises a
presumption of irreparable harm in the context of a
preliminary injunction, such a presumption must
apply to permanent injunctions.
Next, z4 contends that the Supreme Court's
comparison of patent injunctions to copyright
injunctions in the eBay decision supports the
application of a presumption of irreparable harm. z4
first concludes that the Federal Circuit derived its
presumption of irreparable harm in preliminary
injunction cases from the copyright law based on
language from a footnote in Smith International Inc.
v. Hughes Tool Co., that states, “this is the rule in
copyright cases.” See 718 F.2d 1573, 1581 n. 7
(Fed.Cir.1983). z4 then contends that this mention of
copyright law by the Federal Circuit leads to the
application of a rebuttable presumption with regard to
permanent injunctions because the Supreme *440
Court draws a parallel between the copyright act and
the patent act in eBay.
z4's arguments for the application of a presumption
of irreparable harm are creative, but z4 cannot cite to
any Supreme Court or Federal Circuit case that
requires the application of a rebuttable presumption
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434 F.Supp.2d 437 Page 4
434 F.Supp.2d 437
(Cite as: 434 F.Supp.2d 437)
of irreparable harm with regard to a permanent
injunction. In Amoco Production, the Supreme
Court stated that applying a presumption of
irreparable harm in the context of an injunction “is
contrary to traditional equitable principles.” See
Amoco Prod. Co., 480 U.S. at 545, 107 S.Ct. 1396.
Furthermore, in eBay, the Supreme Court indicated
that an injunction may only issue “in accordance with
the principles of equity” under both the patent and the
copyright acts but does not in any way imply that a
rebuttable presumption of irreparable harm should
apply to permanent injunctions under either act. See
eBay, 126 S.Ct. at 1840. Rather, the Supreme Court
stated, “[A] plaintiff seeking a permanent injunction
must satisfy a four-factor test before a court may
grant such relief. A plaintiff must demonstrate: (1)
that it has suffered an irreparable injury....” Id. at
1839. This language does not imply a presumption,
but places the burden of proving irreparable injury on
the plaintiff. Moreover, in eBay, the Supreme Court
warned against the application of categorical rules
when applying the traditional principles of equity.
See id. at 1840-41. z4's suggestion, that the right to
exclude creates a presumption of irreparable harm, is
not in line with the Supreme Court's holding, which
mandates that courts balance the traditional principles
of equity when considering the remedy of a
permanent injunction in patent cases. Accordingly,
the Court does not apply a presumption of irreparable
harm.
[4] z4 argues that it will suffer irreparable harm if
Microsoft is not enjoined from infringing the patentsin-suit.
z4 contends that it made tremendous efforts to
commercialize its invention prior to the suit and that
its failure to succeed was partly due to Microsoft's
infringement. z4 implies that it was, and will
continue to be, irreparably harmed by Microsoft's
infringement because there is no way to calculate the
economic success z4 might have enjoyed but for
Microsoft's infringement.
There is no logical reason that a potential consumer
or licensee of z4's technology would have been
dissuaded from purchasing or licensing z4's product
activation technology for use in its own software due
to Microsoft's infringement. Similarly, Microsoft's
continued infringement does not inhibit z4's ability to
market, sell, or license its patented technology to
other entities in the market. Microsoft does not
produce product activation software that it then
individually sells, distributes, or licenses to other
software manufacturers or consumers. If it did, then
z4 might suffer irreparable harm in that Microsoft
would be excluding z4 from selling or licensing its
technology to those software manufacturers or
consumers. However, Microsoft only uses the
infringing technology as a small component of its
own software, and it is not likely that any consumer
of Microsoft's Windows or Office software purchases
these products for their product activation
functionality.
In the absence of a permanent injunction against
Microsoft, z4 will not suffer lost profits, the loss of
brand name recognition or the loss of market share
because of Microsoft's continued sale of the
infringing products. These are the type of injuries
that are often incalculable and irreparable. The only
entity z4 is possibly prevented from marketing,
selling or licensing its technology to absent an
injunction is Microsoft. As discussed in the next
*441 section, z4 can be compensated for any harm it
suffers in the way of future infringement at the hands
of Microsoft by calculating a reasonable royalty for
Microsoft's continued use of the product activation
technology. Accordingly, z4 has not demonstrated
that it will suffer irreparable harm absent a permanent
injunction.
Adequacy of Remedies Available at Law
[5][6] z4 argues that monetary damages for future
infringement are not an adequate remedy because
they cannot compensate z4 for the loss of its right to
exclude Microsoft from making, using, offering for
sale, or selling its invention in the absence of an
injunction. z4's argument implies that a violation of
the right to exclude under the patent act can never be
remedied through money and that because any future
infringement by Microsoft would violate z4's right to
exclude such a violation could also not be remedied
through monetary damages. However, in eBay, the
Supreme Court indicated that the right to exclude
alone is not sufficient to support a finding of
injunctive relief and that such relief “ ‘may’ issue
only ‘in accordance with the principles of equity’ ”
under § 283 of the patent act. See eBay, 126 S.Ct. at
1840. Accordingly, a violation of the right to
exclude does not inevitably lead to the conclusion
that a patent holder cannot be adequately
compensated by remedies at law such as monetary
damages without first applying the principles of
equity.
The violation of a patent owner's right to exclude can
present a situation where monetary damages cannot
adequately compensate the patent holder for that
injury. For example, when an infringer saturates the
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434 F.Supp.2d 437 Page 5
434 F.Supp.2d 437
(Cite as: 434 F.Supp.2d 437)
market for a patented invention with an infringing
product or damages the patent holder's good will or
brand name recognition by selling infringing
products that infringer violates the patent holder's
exclusionary right in a manner that cannot be
compensated through monetary damages. This is
because it is impossible to determine the portions of
the market the patent owner would have secured but
for the infringer or how much damage was done to
the patent owner's brand recognition or good will due
to the infringement. However, this is not the
scenario in the present case. Microsoft's use of z4's
intellectual property does not exclude z4 from selling
or licensing its product to any sector of the market or
threaten z4's brand name recognition or good will in
any way. z4 is only excluded from selling or
licensing its technology to Microsoft. Accordingly,
z4 is not excluded from the use of its intellectual
property in a way that cannot be calculated with
reasonable certainty in the form of monetary
damages, just as the past damages for infringement
were calculated at trial.
In his concurrence, Justice Kennedy instructed courts
to be cognizant of the nature of the patent being
enforced and the economic function of the patent
holder when applying the equitable factors. Id. at
1842 (Kennedy, J., concurring). Justice Kennedy
specifically mentioned the situation where a
“patented invention is but a small component of the
product the companies seek to produce” and states
that in such a situation, “legal damages may well be
sufficient to compensate for the infringement and an
injunction may not serve the public interest.” Id.
(Kennedy, J., concurring). Here, product activation
is a very small component of the Microsoft Windows
and Office software products that the jury found to
infringe z4's patents. The infringing product
activation component of the software is in no way
related to the core functionality for which the
software is purchased by consumers. Accordingly,
Justice Kennedy's comments support the conclusion
that monetary damages would be sufficient to
compensate z4 for any future infringement by
Microsoft.
*442 Microsoft indicated that it is phasing out all
infringing products beginning with the release of its
2007 versions of Windows and Office in January of
2007. Microsoft calculates that it will then require
two to three years after the release of these new
products for all infringing products to be phased out
of its product line. FN1 Calculating the appropriate
royalty rate for any future infringement based on the
sale of the older Microsoft products should not be too
indefinite or difficult. Such future damages will not
be based on injuries that are difficult to measure such
as the loss of market share or damage to brand name
recognition and good will, but will be based on a
reasonable royalty for each of the infringing products
sold by Microsoft. This calculation can be made
based on the same reasonable royalty calculation
used by the jury at trial and by referring to
Microsoft's internal records showing the number of
sales for the infringing copies of software during the
time period. Furthermore, it is not a legitimate
concern that Microsoft would be unable to pay
damages incurred by z4 through any future
infringement.
FN1. Microsoft informed the Court that
although it is releasing new non-infringing
versions of its Windows and Office software
in January 2007, the older infringing
versions will not be completely phased out
of the market for several years because
many older computer systems in the
marketplace will not be able to support the
newer products for that period of time.
For the reasons stated above, z4 has not demonstrated
that monetary damages are insufficient to compensate
it for any future infringement by Microsoft.
The Balance of Hardships
[7] z4's proposed permanent injunction includes two
components. The first component involves
enjoining Microsoft from making or selling its
Windows and Office software products, after a
reasonable time has been provided to allow Microsoft
to redesign the products without the infringing
product activation technology. The second
component involves Microsoft immediately “turning
off” or deactivating its current product activation
servers and leaving them “off” until such time as
Microsoft can restart them without infringing the
patents-in-suit. The Court will consider the
hardships related to these two components in turn.
Microsoft argues that the resources, time, and
expense required to redesign its Windows and Office
software products would create a significant hardship
on Microsoft. Redesigning Microsoft Windows and
Office software products, even to remove a small
component such as product activation, is undoubtably
an enormous task. Microsoft argues that such an
undertaking would require enormous resources and
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434 F.Supp.2d 437 Page 6
434 F.Supp.2d 437
(Cite as: 434 F.Supp.2d 437)
expense. Microsoft submitted the declarations of
Alexandra B. Rector, a Business Manager of
Microsoft Office Sustaining Engineering, and Laura
Joseph, a Program Manager on the Windows Release
Management Team, as evidence of the hardship
Microsoft would suffer if a permanent injunction
requiring a redesign of the Office and Windows
software products were granted. The declarations
indicate that Microsoft would have to re-release its
current versions of Office, with 450 separate
variations in thirty-seven different languages, and
Windows, with 600 separate variations in over forty
languages. Microsoft contends that both products
would have to be re-engineered, tested, repackaged,
and then placed into the appropriate distribution
channels. According to Microsoft, such an
undertaking would require excessive resources and
be exceedingly expensive. Furthermore, Microsoft
claims that the scheduled release of its 2007
Windows and Office products would likely be
delayed if resources were *443 pulled from its
development team to work on the re-release of the
previous infringing Office and Windows products.
Similarly, Microsoft argues that the repercussions of
“turning off” its product activation system are
incalculable, particularly in the likely event that the
public became aware of the fact that the activation
servers were deactivated. Microsoft argues that in
such an event the market would be flooded with
pirated software resulting in incalculable losses.
Microsoft contends that without the deactivation
servers it has no way of deactivating software that
has been pirated and installed on multiple computers.
Furthermore, Microsoft contends that when the
product activation servers are “restarted” it would
have no way of determining which copies of the
programs installed over that period of time were
legitimate legal copies of the product and which were
illegal pirated versions. Microsoft claims this would
inhibit it from servicing the legitimate copies with
product updates and patches.
z4 argues that it will suffer hardship because
Microsoft will be using its intellectual property. As
discussed above, Microsoft's use of z4's intellectual
property is not to the exclusion of z4 in any major
sense and, to the extent it is, can be remedied in the
form of monetary damages. z4 argues that Microsoft
is merely presenting an unlikely and purely
hypothetical chain of events that would not in fact
occur if its proposed injunction were granted.
Although the arguments presented by Microsoft may
be hypothetical, the scenarios Microsoft describes are
not out of the realm of possibility and are in some
instances quite likely. Importantly, the potential
hardships Microsoft could suffer if the injunction
were granted outweigh any limited and reparable
hardships that z4 would suffer in the absence of an
injunction.
The Public Interest
[8] Microsoft's Windows and Office software
products are likely the most popular software
products in the world. The vast majority of
computers sold, whether to individuals, businesses,
governments, or educational institutions, run on the
Microsoft Windows operating system and employ the
Microsoft Office suite of software.
Microsoft argues that the redesign of its Windows
and Office products would undoubtedly effect certain
sectors of the public. Microsoft suggests that
smaller computer manufacturers (called system
builders), retail sellers, and the consumers of both
would be effected if z4's proposed injunction were
granted.
Microsoft contends that the system builders would be
harmed because of the time, testing, and expense
required for these manufacturers to integrate a new
release or re-release of Windows and Office products
to be used with their computer systems. Although it
is likely that changes to Windows or Office would
not be significant enough to have as dramatic of an
effect on the system builders as Microsoft proposes,
such a re-release of the Microsoft products would
likely create a burden for these manufacturers.
Furthermore, Microsoft contends that a redesign of
its products could result in the products being taken
off the market for a short period of time. Microsoft
urges that such an absence from the market, even if
for only a week, would have a detrimental effect on
the retail sellers of its products as well as the retail
consumers.
It is impossible to determine the actual effect that the
implementation of such a re-design might have on the
availability of Microsoft's products and the
accessibility of those products to the public.
However, it is likely that any minor disruption to the
distribution of the products in question *444 could
occur and would have an effect on the public due to
the public's undisputed and enormous reliance on
these products.
Microsoft also proposes a host of repercussions to the
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434 F.Supp.2d 437 Page 7
434 F.Supp.2d 437
(Cite as: 434 F.Supp.2d 437)
public resulting from the deactivation of the
activation servers. Microsoft contends that, in the
event the servers were deactivated, the market would
be flooded with illegal, pirated copies of Windows
and Office software, leaving unsuspecting customers
with no way of determining the genuineness of their
software. Microsoft argues that these unsuspecting
purchasers of pirated software would be very
susceptible to contracting computer viruses and other
security breaches to their computer systems by
installing pirated software. Furthermore, Microsoft
contends that because it would be impossible for
Microsoft to determine genuine versions from pirated
versions once the system was reactivated, some
legitimate users of Microsoft software might be
unable to download product patches and updates.
Again, although it is impossible to determine the
actual events that would follow the deactivation of
Microsoft's product activation servers, it is likely that
the market would see an increase in pirated versions
of the software. As a result, unsuspecting public
consumers would undoubtably suffer some negative
consequences.
Under both aspects of z4's proposed permanent
injunction, there is a risk that certain sectors of the
public might suffer some negative effects. However,
the Court is unaware of any negative effects that
might befall the public in the absence of an
injunction. Although these negative effects are
somewhat speculative, such potential negative effects
on the public weigh, even if only slightly, against
granting an injunction. Accordingly, the public
interest is likely to be disserved if a permanent
injunction were entered against Microsoft.
CONCLUSION
z4 has not demonstrated that it will suffer irreparable
harm in the absence of a permanent injunction. Any
harm z4 might suffer can be adequately remedied
through the recovery of monetary damages. The
balance of the hardships, although speculative,
weighs in favor of Microsoft. And certain sectors of
the public could suffer some negative effects if the
Court were to grant z4's proposed permanent
injunction. Accordingly, a permanent injunction
should not issue, and z4's motion is DENIED.
In light of denying z4's proposed permanent
injunction, an efficient method for z4's recovery of
future monetary damages post-verdict is needed.
The Court crafts such a remedy by severing z4's
continuing causes of action for monetary damages
due to Microsoft's continuing post-verdict
infringement of z4's patents. Therefore, the Court
SEVERS z4's causes of action for post-verdict
infringement under cause number 6:06cv258 and
ORDERS z4 to file an appropriate complaint within
ten days of the issuance of this Memorandum
Opinion and Order. The Court ORDERS Microsoft
to file an answer to z4's complaint within the normal
time allotted under the Federal Rules of Civil
Procedure. Furthermore, the Court ORDERS
Microsoft to file quarterly reports in the new action
beginning on July 1, 2006 indicating the number of
units sold with regard to all Microsoft products found
to infringe z4's patents in this case. This will
preserve z4's rights to future monetary damages in an
efficient manner, while relieving Microsoft of the
hardship and expense that would be occasioned by
the issuance of a permanent injunction. This case
will proceed*445 on to entry of final judgment and
whatever resolution may follow.
E.D.Tex.,2006.
z4 Technologies, Inc. v. Microsoft Corp.
434 F.Supp.2d 437
Briefs and Other Related Documents (Back to top)
• 2006 WL 2068051 (Trial Motion, Memorandum
and Affidavit) z4's Motion and Brief for an Order
Compelling Defendants to Give A Good Faith
Estimate of Fees, Expenses and Hours Incurred (Jun.
5, 2006) Original Image of this Document (PDF)
• 2006 WL 2068045 (Trial Motion, Memorandum
and Affidavit) Autodesk's Reply in Support of
Motion for Judgment as a Matter of Law Regarding
Damages (May 17, 2006) Original Image of this
Document (PDF)
• 2006 WL 2068046 (Trial Motion, Memorandum
and Affidavit) Autodesk's Reply in Support of
Motion for Judgment as A Matter of Law of
Noninfringement (May 17, 2006) Original Image of
this Document (PDF)
• 2006 WL 2068047 (Trial Motion, Memorandum
and Affidavit) Microsoft's Reply in Support of
Motion for Judgment As A Matter of Law Regarding
Damages, Non-Retail Products, and Willfulness
(May 17, 2006) Original Image of this Document
(PDF)
• 2006 WL 2068048 (Trial Motion, Memorandum
and Affidavit) Microsoft's Reply in Support of
Motion for Judgment as A Matter of Law of
Noninfringement (May 17, 2006) Original Image of
this Document (PDF)
• 2006 WL 2068049 (Trial Motion, Memorandum
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

434 F.Supp.2d 437 Page 8
434 F.Supp.2d 437
(Cite as: 434 F.Supp.2d 437)
and Affidavit) Microsoft's and Autodesk's Reply in
Support of Motion for Judgment as a Matter of Law
On Invalidity (May 17, 2006) Original Image of this
Document (PDF)
• 2006 WL 2068050 (Trial Motion, Memorandum
and Affidavit) Microsoft's and Autodesk's Reply in
Support of Motion for A New Trial (May 17, 2006)
Original Image of this Document (PDF)
• 2006 WL 2068043 (Trial Motion, Memorandum
and Affidavit) Autodesk's and Microsoft's Amended
Opposition to z4's Proposed Findings of Fact and
Conclusions of Law Regarding Inequitable Conduct
(May 16, 2006) Original Image of this Document
(PDF)
• 2006 WL 2068044 (Trial Motion, Memorandum
and Affidavit) z4 Technologies, Inc.'s Amended
Response to Defendants' ÝRenewed¨ Motion for
Judgment as a Matter of Law of Patent Invalidity
(May 16, 2006) Original Image of this Document
(PDF)
• 2006 WL 2068036 (Trial Motion, Memorandum
and Affidavit) Microsoft's and Autodesk's Opposition
to z4's Motion and Brief in Support for Prejudgment
Interest (May 11, 2006) Original Image of this
Document (PDF)
• 2006 WL 2068037 (Trial Motion, Memorandum
and Affidavit) z4 Technologies, Inc.'s Response to
Autodesk's ÝRenewed¨ Motion for Judgment as a
Matter of Law Regarding Damages (May 11, 2006)
Original Image of this Document (PDF)
• 2006 WL 2068038 (Trial Motion, Memorandum
and Affidavit) z4 Technologies, Inc.'s Response to
Microsoft's ÝRenewed¨ Motion for Judgment as a
Matter of Law Regarding Damages, Non-Retail
Products, and Willfulness (May 11, 2006) Original
Image of this Document (PDF)
• 2006 WL 2068039 (Trial Motion, Memorandum
and Affidavit) z4 Technologies, Inc.'s Combined
Response in Opposition to Autodesk's Motion and
Microsoft's Motion for Judgment as a Matter of Law
of Non-Infringement (May 11, 2006) Original Image
of this Document (PDF)
• 2006 WL 2068040 (Trial Motion, Memorandum
and Affidavit) z4 Technologies, Inc.'s Response to
Defendants' Motion for a New Trial (May 11, 2006)
Original Image of this Document (PDF)
• 2006 WL 2068041 (Trial Motion, Memorandum
and Affidavit) Microsoft's and Autodesk's Opposition
to z4's Proposed Findings of Fact and Conclusions of
Law Regarding Inequitable Conduct (May 11, 2006)
Original Image of this Document (PDF)
• 2006 WL 2068042 (Trial Motion, Memorandum
and Affidavit) z4 Technologies, Inc.'s Response to
Defendants' ÝRenewed¨ Motion for Judgment as a
Matter of Law of Patent Invalidity (May 11, 2006)
Original Image of this Document (PDF)
• 2006 WL 1288485 (Trial Motion, Memorandum
and Affidavit) Autodesk's Motion for Judgment As A
Matter of Law of Noninfringement (May 1, 2006)
Original Image of this Document (PDF)
• 2006 WL 1288488 (Trial Motion, Memorandum
and Affidavit) Microsofi's Motion for Judgment as a
Matter of Law of Noninfringement (May 1, 2006)
Original Image of this Document (PDF)
• 2006 WL 1288511 (Trial Motion, Memorandum
and Affidavit) Microsoft's Motion for Judgment as a
Matter of Law Regarding Damages, Non-Retail
Products, and Willfulness (May 1, 2006) Original
Image of this Document (PDF)
• 2006 WL 1288512 (Trial Motion, Memorandum
and Affidavit) Microsoft's and Autodesk's Motion for
a New Trial (May 1, 2006) Original Image of this
Document (PDF)
• 2006 WL 2068033 (Trial Motion, Memorandum
and Affidavit) Microsoft's and Autodesk's Motion for
Judgment as A Matter of Law of Invalidity (May 1,
2006) Original Image of this Document (PDF)
• 2006 WL 2068034 (Trial Motion, Memorandum
and Affidavit) Autodesk's Motion for Judgment as A
matter of Law Regarding Damages (May 1, 2006)
Original Image of this Document (PDF)
• 2006 WL 2068035 (Trial Motion, Memorandum
and Affidavit) z4 Technologies, Inc.'s Motion and
Brief for Entry of Permanent Injunction (May 1,
2006) Original Image of this Document (PDF)
• 2006 WL 1294615 () Transcript of Trial (Apr. 18,
2006) Original Image of this Document (PDF)
• 2006 WL 1294621 () Transcript of Trial (Apr. 18,
2006) Original Image of this Document (PDF)
• 2006 WL 1294625 () Transcript of Trial (Apr. 18,
2006) Original Image of this Document (PDF)
• 2006 WL 1294630 () Transcript of Trial (Apr. 18,
2006) Original Image of this Document (PDF)
• 2006 WL 1294633 () Transcript of Trial (Apr. 17,
2006) Original Image of this Document (PDF)
• 2006 WL 1071247 (Trial Motion, Memorandum
and Affidavit) Motion in Limine No. 14: Regarding
z4's Untimely April 2006 ""DRM'' License Discovery
(Apr. 15, 2006) Original Image of this Document
(PDF)
• 2006 WL 1294610 () Transcript of Trial (Apr. 12,
2006) Original Image of this Document (PDF)
• 2006 WL 1294618 () Transcript of Trial (Apr. 12,
2006) Original Image of this Document (PDF)
• 2006 WL 1294627 () Transcript of Trial (Apr. 12,
2006) Original Image of this Document (PDF)
• 2006 WL 1294634 () Transcript of Trial (Apr. 12,
2006) Original Image of this Document (PDF)
• 2006 WL 2068032 (Trial Motion, Memorandum
and Affidavit) z4's Motion and Brief in Support to
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434 F.Supp.2d 437 Page 9
434 F.Supp.2d 437
(Cite as: 434 F.Supp.2d 437)
Exclude Testimony Relating to Brazilian Publisher
98 Registration Data (Apr. 12, 2006) Original Image
of this Document (PDF)
• 2006 WL 2068031 (Trial Motion, Memorandum
and Affidavit) z4's Motion in Limine to Exclude
""Derivation'' Evidence That Violates This Court's
Bifurcation Order (Apr. 10, 2006) Original Image of
this Document (PDF)
• 2006 WL 2068030 (Trial Motion, Memorandum
and Affidavit) Defendant Microsoft Corporation's
Motion in Limine No. 13 Relating to the Testimony
of Microsoft's Corporate Representative (Apr. 9,
2006) Original Image of this Document (PDF)
• 2006 WL 2068029 (Trial Motion, Memorandum
and Affidavit) Defendants' Opposition to z4
Technologies' Motion in Limine to Exclude
Disparaging Characterizations of z4, David Colvin
and the Asserted Patent (Mar. 22, 2006) Original
Image of this Document (PDF)
• 2006 WL 1071244 (Trial Motion, Memorandum
and Affidavit) Plaintiff z4 Technologies, Inc.'s
Motion in Limine and Brief in Support Regarding
Documents from the Patent Attorney's File for the
'825 Patent (Mar. 20, 2006) Original Image of this
Document (PDF)
• 2006 WL 1071246 (Trial Motion, Memorandum
and Affidavit) Plaintiff z4 Technologies, Inc.'s
Motion in Limine and Brief in Support Regarding
Defendants' Allegations of Spoliation (Mar. 20,
2006) Original Image of this Document (PDF)
• 2006 WL 2068025 (Trial Motion, Memorandum
and Affidavit) Plaintiff z4 Technologies, Inc.'s
Motion in Limine and Brief in Support From the
Hearing of the Jury the Engagement Terms of
Plaintiff's Counsel (Mar. 20, 2006) Original Image of
this Document (PDF)
• 2006 WL 2068026 (Trial Motion, Memorandum
and Affidavit) Plaintiff z4 Technologies, Inc.'s
Motion in Limine and Brief in Support to Exclude
Microsoft Employees from Testifying on Topics 3-8
of z4's Rule 30(b)(6) Deposition Notice of Defendant
Microsoft Corporation (Mar. 20, 2006) Original
Image of this Document (PDF)
• 2006 WL 2068027 (Trial Motion, Memorandum
and Affidavit) Plaintiff z4 Technologies, Inc.'s
Motion in Limine and Brief in Support to Exclude
Disparaging Characterizations of z4, David Colvin
and the Asserted Patents (Mar. 20, 2006) Original
Image of this Document (PDF)
• 2006 WL 2068028 (Trial Motion, Memorandum
and Affidavit) Plaintiff z4 Technologies, Inc.'s
Motion in Limine and Brief in Support Regarding
Admissibility of Conception and Development
Documents (Mar. 20, 2006) Original Image of this
Document (PDF)
• 2006 WL 1068564 () Declaration of David S.
Colvin in Support of z4's Motion for Partial
Summary Judgment on Inequitable Conduct (Mar. 3,
2006) Original Image of this Document (PDF)
• 2006 WL 1071241 (Trial Motion, Memorandum
and Affidavit) z4's Reply Brief on Its Motion to
Exclude the Testimony of Albert B. Kimball, Jr.
(Mar. 3, 2006) Original Image of this Document
(PDF)
• 2006 WL 1071243 (Trial Motion, Memorandum
and Affidavit) Z4's Reply in Support of Its Motion
for Partial Summary Judgment Regarding Inequitable
Conduct (Mar. 3, 2006) Original Image of this
Document (PDF)
• 2006 WL 1071239 (Trial Motion, Memorandum
and Affidavit) z4's Motion for Partial Summary
Judgment on Inequitable Conduct (Jan. 20, 2006)
Original Image of this Document (PDF)
• 2006 WL 1071240 (Trial Motion, Memorandum
and Affidavit) z4's Motion and Brief to Exclude the
Testimony of Albert B. Kimball, Jr. (Jan. 20, 2006)
Original Image of this Document (PDF)
• 2006 WL 2068023 (Trial Motion, Memorandum
and Affidavit) Reply to Second Amended
Counterclaims of Autodesk, Inc. (Jan. 6, 2006)
Original Image of this Document (PDF)
• 2006 WL 2068024 (Trial Motion, Memorandum
and Affidavit) Reply to Second Amended
Counterclaims of Microsoft Corporation (Jan. 6,
2006) Original Image of this Document (PDF)
• 2006 WL 2066676 () Preliminary Expert Report of
Walter Bratic (2006) Original Image of this
Document (PDF)
• 2005 WL 4428918 (Trial Motion, Memorandum
and Affidavit) Defendant Microsoft Corporation's
Sur-Reply to Plaintiff's Fed. R. Civ. P. 37(d) Motion
and Brief for Sanctions for Failure to Produce Rule
30(b)(6) Witnesses (Oct. 7, 2005) Original Image of
this Document (PDF)
• 2005 WL 4427571 () Expert Report of Aviel David
Rubin Re Validity of z4 Technologies, Inc. Patents
(Oct. 6, 2005) Original Image of this Document
(PDF)
• 2005 WL 3970643 (Trial Motion, Memorandum
and Affidavit) Plaintiff z4 Technologies, Inc.'s Brief
in Opposition to Defendant Autodesk, Inc.'s Motion
for Protective Order (Aug. 29, 2005) Original Image
of this Document (PDF)
• 2005 WL 3970658 (Trial Motion, Memorandum
and Affidavit) Defendant Autodesk, Inc.'s Opposed
Motion for Protective Order (Aug. 22, 2005) Original
Image of this Document (PDF)
• 2005 WL 3970657 (Trial Pleading) Defendants'
Sur-Reply to z4's Reply Claim Construction Brief
(Aug. 2, 2005) Original Image of this Document
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434 F.Supp.2d 437 Page 10
434 F.Supp.2d 437
(Cite as: 434 F.Supp.2d 437)
(PDF)
• 2005 WL 3970656 (Trial Pleading) Plaintiff's
Corrected Reply Brief on Claim Construction (Jul.
27, 2005) Original Image of this Document (PDF)
• 2005 WL 3970655 (Trial Pleading) Plaintiff's Reply
Brief on Claim Construction (Jul. 26, 2005) Original
Image of this Document (PDF)
• 2005 WL 4428924 (Trial Motion, Memorandum
and Affidavit) Plaintiff z4 Technologies, Inc.'s Sur-
Reply Brief in Opposition to Defendants' Motion to
Supplement Joint Preliminary Invalidity Contentions
(Jul. 7, 2005) Original Image of this Document
(PDF)
• 2005 WL 3970654 (Trial Pleading) Plaintiff z4
Technologies, Inc.'s Opening Brief on Claim
Construction (Jul. 5, 2005) Original Image of this
Document (PDF)
• 2005 WL 4428923 (Trial Motion, Memorandum
and Affidavit) Defendant Microsoft Corporation's
and Autodesk, Inc.'s Reply to z4'S Opposition to
Motion to Supplement Joint Preliminary Invalidity
Contentions (Jul. 5, 2005) Original Image of this
Document (PDF)
• 2005 WL 4428922 (Trial Motion, Memorandum
and Affidavit) Plaintiff z4 Technologies, Inc.'s Brief
in Opposition to Defendants' Motion to Supplement
Joint Preliminary Invalidity Contentions (Jun. 23,
2005) Original Image of this Document (PDF)
• 2005 WL 3970653 (Trial Motion, Memorandum
and Affidavit) Defendants Microsoft Corporation's
and Autodesk, Inc.'s Surreply in Support of their
Opposition to Z4 Technologies, Inc.'s Rule 37
Motion to Compel (Jun. 17, 2005) Original Image of
this Document (PDF)
• 2005 WL 3970652 (Trial Motion, Memorandum
and Affidavit) Plaintiff z4 Technologies, Inc.'s Reply
Brief on Its Rule 37 Motion to Compel Defendants
Microsoft Corporation and Autodesk, Inc. to Comply
with Rule 33(d) and Rule 34(b) in Production of
Documents (Jun. 10, 2005) Original Image of this
Document (PDF)
• 2005 WL 3970651 (Trial Motion, Memorandum
and Affidavit) Defendant Microsoft Corporation's
and Autodesk, Inc.'s Reply in Support of Their
Motion to Compel Continuation of the Deposition of
David Colvin and the Production of Documents (Jun.
9, 2005) Original Image of this Document (PDF)
• 2005 WL 3970577 () Declaration of David S.
Colvin in Support of Plaintiff's Opposition to
Defendants' Motion to Compel Continuation of the
Deposition of David Colvin and Production of
Documents (Jun. 3, 2005) Original Image of this
Document (PDF)
• 2005 WL 3970650 (Trial Motion, Memorandum
and Affidavit) Plaintiff z4 Technologies, Inc's Brief
in Opposition to Defendants' Motion to Compel
Continuation of the Deposition of David Colvin and
the Production of Documents (Jun. 3, 2005) Original
Image of this Document (PDF)
• 2005 WL 3970649 (Trial Motion, Memorandum
and Affidavit) Defendants Microsoft Corporation and
Autodesk, Inc.'s Opposed Motion to Compel
Continuation of the Deposition of David Colvin and
the Production of Documents (May 19, 2005)
Original Image of this Document (PDF)
• 2005 WL 3970648 (Trial Motion, Memorandum
and Affidavit) Plaintiff z4 Technologies, Inc's Rule
37 Motion to Compel Defendants Microsoft
Corporation and Autodesk, Inc. to Comply with Rule
33(d) and Rule 34(b) in Production of Documents
and Brief in Support (May 17, 2005) Original Image
of this Document (PDF)
• 2005 WL 3970646 (Trial Pleading) Reply to
Amended Counterclaims of Autodesk, Inc. (Apr. 25,
2005) Original Image of this Document (PDF)
• 2005 WL 3970647 (Trial Pleading) Reply to
Amended Counterclaims of Microsoft Corporation
(Apr. 25, 2005) Original Image of this Document
(PDF)
• 2005 WL 3970642 (Trial Pleading) Defendant
Microsoft Corporation's First Amended Answer and
Counterclaims (Apr. 11, 2005) Original Image of this
Document (PDF)
• 2005 WL 3970644 (Trial Pleading) Defendant
Microsoft Corporation's First Amended Answer and
Counterclaims (Apr. 11, 2005) Original Image of this
Document (PDF)
• 2005 WL 3970645 (Trial Pleading) Defendant
Autodesk, Inc.'s First Amended Answer and
Counterclaims (Apr. 11, 2005) Original Image of this
Document (PDF)
• 2005 WL 4428921 (Trial Motion, Memorandum
and Affidavit) Reply to z4 Technologies, Inc.'s Brief
in Opposition to Microsoft Corporation and
Autodesk, Inc.'s Opposed Motion to Modify the
Protective Order (Mar. 21, 2005) Original Image of
this Document (PDF)
• 2005 WL 4428920 (Trial Motion, Memorandum
and Affidavit) z4 Technologies, Inc.'s Brief in
Opposition to Microsoft Corporation and Autodesk,
Inc.'s Opposed Motion to Modify the Protective
Order (Mar. 11, 2005) Original Image of this
Document (PDF)
• 2005 WL 4428919 (Trial Motion, Memorandum
and Affidavit) Microsoft Corporation and Autodesk,
Inc.'s Opposed motion to Modify The Protective
Order (Mar. 1, 2005) Original Image of this
Document (PDF)
• 2004 WL 3770563 (Trial Pleading) Defendant
Microsoft Corporation's Answer and Counterclaims
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434 F.Supp.2d 437 Page 11
434 F.Supp.2d 437
(Cite as: 434 F.Supp.2d 437)
(Nov. 16, 2004) Original Image of this Document
(PDF)
• 2004 WL 3770564 (Trial Pleading) Defendant
Autodesk, Inc.'s Answer and Counterclaims (Nov.
16, 2004) Original Image of this Document (PDF)
• 2004 WL 4443232 (Trial Motion, Memorandum
and Affidavit) Plaintiff's Original Complaint for
Patent Infringement (Sep. 22, 2004) Original Image
of this Document (PDF)
• 2004 WL 4443235 (Trial Pleading) Plaintiff's
Original Complaint for Patent Infringement (Sep. 22,
2004) Original Image of this Document (PDF)
• 6:06cv00142 (Docket) (Sep. 22, 2004)
END OF DOCUMENT
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

Page 1
FINISAR CORP., Plaintiff, v. THE DIRECTV GROUP, INC., ET AL., Defendants.
Civil Action No. 1:05-CV-264
UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF
TEXAS, BEAUMONT DIVISION
2006 U.S. Dist. LEXIS 76380
July 7, 2006, Filed
SUBSEQUENT HISTORY: Costs and fees proceeding
at Finisar Corp. v. DirecTV Group, 2006 U.S. Dist.
LEXIS 71138 (E.D. Tex., Aug. 3, 2006)
PRIOR HISTORY: Finisar Corp. v. DirecTV Group,
Inc., 2006 U.S. Dist. LEXIS 25268 (E.D. Tex., May 2,
2006)
COUNSEL: [*1] For Finisar Corporation, A Delaware
Corporation, Plaintiff: Lawrence Louis Germer, LEAD
ATTORNEY, Germer Bersen & Gertz, Beaumont, TX;
C J Veverka, David R Todd, David R Wright, Eric L
Maschoff, Kirk R Harris, Larry R Laycock, Mark W
Ford,R Parrish Freeman, Workman Nydegger & Seeley,
Salt Lake City, UT; H. Craig Hall, Law Office of H.
Craig Hall, Jr., West Valley, UT.
For DirecTV Group INC The, A Delaware Corporation,
Defendant: J Thad Heartfield, LEAD ATTORNEY, Law
Offices of J. Thad Heartfield, Beaumont, TX; Maria K
Nelson, LEAD ATTORNEY,Charles A Kertell, Giam M
Nguyen, Kevin G McBride, Marsha E Mullin, Steven J
Corr, Victor George Savikas, Jones Day -California, Los
Angeles, CA; Gregory A Castanias, Jones Day Reavis &
Pogue, Washington, DC;Louis Touton, Yolanda Orozco,
Jones Day- Los Angeles, Los Angeles, CA; Michael J
Newton, Jones Day, Dallas, TX; Patrick Connell
McGinnis, Pat McGinnis, Attorney at Law, Beaumont,
TX.
For DirecTV Holdings LLC, A Delaware Limited Liability
Company, DirecTV Enterprises LLC, A Delaware
Limited Liability Company, DirectTV Operations LLC,
A California Corporation, Defendants: J Thad Heartfield,
LEAD ATTORNEY, Law Offices of J. Thad Heartfield,
[*2] Beaumont, TX; Giam M Nguyen, Kevin G
McBride, Marsha E Mullin, Steven J Corr, Victor
George Savikas, Jones Day -California, Los Angeles,
CA; Gregory A Castanias, Jones Day Reavis & Pogue,
Washington, DC; Louis Touton, Yolanda Orozco, Jones
Day- Los Angeles, Los Angeles, CA; Michael J Newton,
Jones Day, Dallas, TX; Patrick Connell McGinnis, Pat
McGinnis, Attorney at Law, Beaumont, TX.
For Hughes Network Systems Inc, A Delaware Corporation,
Defendant:J Thad Heartfield, LEAD ATTORNEY,
Law Offices of J. Thad Heartfield, Beaumont, TX; Giam
M Nguyen, Kevin G McBride, Marsha E Mullin, Steven
J Corr, Victor George Savikas, Jones Day -California,
Los Angeles, CA; Louis Touton, Jones Day- Los Angeles,
Los Angeles, CA;Michael J Newton, Jones Day,
Dallas, TX; Patrick Connell McGinnis, Pat McGinnis,
Attorney at Law, Beaumont, TX.
For DirecTV Inc, A California Corporation, Defendant:
Allan W Janes, LEAD ATTORNEY, Jones Day - Irvine,
Irvine, CA; J Thad Heartfield, LEAD ATTORNEY, Law
Offices of J. Thad Heartfield, Beaumont, TX; Giam M
Nguyen, Kevin G McBride, Marsha E Mullin, Steven J
Corr, Victor George Savikas, Jones Day -California, Los
Angeles, CA; Gregory A Castanias, Jones Day Reavis
[*3] & Pogue, Washington, DC; Louis Touton, Yolanda
Orozco, Jones Day- Los Angeles, Los Angeles, CA; Michael
J Newton, Jones Day, Dallas, TX; Patrick Connell
McGinnis, Pat McGinnis, Attorney at Law, Beaumont,
TX.
For Hughes Network Systems Inc, A Delaware Corporation,
DirecTV Inc, A California Corporation, DirecTV
Group Inc The, A Delaware Corporation, DirecTV Holdings
LLC, A Delaware Limited Liability Company,
DirecTV Enterprises LLC, A Delaware Limited Liability
Company, DirecTV Operations LLC, A California Corporation,
Counter Claimants: J Thad Heartfield, LEAD
ATTORNEY, Law Offices of J. Thad Heartfield, Beaumont,
TX; Marsha E Mullin, Victor George Savikas,
Jones Day -California, Los Angeles, CA; Michael J
Newton, Jones Day, Dallas, TX.
Finisar Corporation, A Delaware Corporation, Counter
Defendant: H. Craig Hall, Law Office of H. Craig Hall,
Jr., West Valley, UT.

2006 U.S. Dist. LEXIS 76380, *
Page 2
JUDGES: JUDGE RON CLARK.
OPINION BY: RON CLARK
OPINION:
FINAL JUDGMENT
Pursuant to Rule 58 of the Federal Rules of Civil
Procedure and in accordance with the jury verdict delivered
on June 23, 2006 and the Court's oral findings and
conclusions entered on the record July 6, 2006, the [*4]
Court hereby enters judgment for Plaintiff Finisar Corp.
and against Defendants The DirecTV Group, Inc.,
DirecTV Holdings, LLC, DirecTV Enterprises, LLC,
DirecTV Operations, LLC, DirecTV, Inc., and Hughes
Network Systems, Inc. for infringement of U.S. Patent
No. 5,404,505, claims 16, 17, 22, 24, 26, 39, and 44. IT
IS THEREFORE ORDERED that Plaintiff Finisar
Corp. shall have and recover from Defendants The
DirecTV Group, Inc., DirecTV Holdings, LLC, DirecTV
Enterprises, LLC, DirecTV Operations, LLC, DirecTV,
Inc., and Hughes Network Systems, Inc., jointly and severally,
the total sum of $ 103,920,250.25, plus prejudgment
interest at the agreed rate of 6%, calculated as
stated on the record at the July 6, 2006 hearing, on the
damages found by the jury, said prejudgment interest
totaling $ 13,359,276.00, together with post judgment
interest on the entire sum calculated pursuant to 28
U.S.C. § 1961.
For the reasons stated at the July 6, 2006 hearing,
the Court denied Plaintiff's motion for injunctive relief
and granted a compulsory license. Defendants are hereby
ORDERED, for the remaining life of the ' 505 patent, to
pay Plaintiff an ongoing royalty [*5] of $ 1.60 per Integrated
Receiver Decoder, commonly referred to as a set
top box, activated by or on behalf of or for any of the
named Defendants or their present or future affiliates or
subsidiaries after June 16, 2006. Royalties shall be paid
quarterly accompanied by a statement in accordance with
the provisions of paragraph 3.8 of the MPEG-2 Patent
Portfolio License, dated February 22, 2001, granted to
Hughes Network Systems, Inc. Payments shall begin
three months after the date of signing of this judgment
and shall be made quarterly thereafter. Payments not
made within 14 days of the date due shall accrue interest
at the rate of 10%, compounded monthly. Finisar shall
have the right to request audits in accordance with the
provisions of paragraph 3.9 of said MPEG-2 Patent Portfolio
License. It is anticipated that, as sophisticated entities
with experience in licensing agreements, the parties
may wish to agree to more comprehensive or convenient
terms. The parties shall promptly notify the court of any
such agreement. The court maintains jurisdiction to enforce
this portion of the Final Judgment.
Costs are taxed against Defendants The DirecTV
Group, Inc., DirecTV Holdings, LLC, [*6] DirecTV
Enterprises, LLC, DirecTV Operations, LLC, DirecTV,
Inc., and Hughes Network Systems, Inc. jointly and severally.
All relief not specifically granted herein is denied.
All pending motions not previously ruled on are denied.
This is a Final Judgment and is appealable.

Page 1
LEXSEE 2006 US DIST. LEXIS 61600
PAICE LLC, Plaintiff, v. TOYOTA MOTOR CORP., et al., Defendants.
2:04-CV-211-DF
UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF
TEXAS, MARSHALL DIVISION
2006 U.S. Dist. LEXIS 61600
August 16, 2006, Decided
August 16, 2006, Filed
SUBSEQUENT HISTORY: Motion for new trial denied
by Paice LLC v. Toyota Motor Corp., 2006 U.S.
Dist. LEXIS 61598 (E.D. Tex., Aug. 16, 2006)
COUNSEL: [*1] For Paice LLP, Plaintiff: Samuel
Franklin Baxter, Attorney at Law, Marshall, TX; Ahmed
J Davis, Ruffin B Cordell, Fish & Richardson PC -
Washington DC, Washington, DC; Robert E Hillman,
Fish & Richardson PC, Bostan, MA.
For Toyota Motors Corp, a Japanese Corporation, Toyota
Motor North America Inc, Toyota Motor Sales USA Inc,
Defendants: Fred Grasso, Jeffrey Gerchick, Thomas R
Makin, George E Badenoch, Kenyon &Kenyon DC,
Washington DC; Nicholas H Patton, Patton & Tidwell,
Texarkana, TX; John Flock, T Cy Walker, Kenyon &
Kenyon - New York, New York, NY; Justin Kurt Truelove,
Patton & Tidwell, Texarkana, TX.
For Toyota Motor North America Inc, Toyota Motor
Sales USA Inc, Toyota Motors Corp, a Japanese Corporation,
Counter Claimants: Fred Grasso, Jeffrey Gerchick,
Thomas R Makin, Kenyon &Kenyon DC, Washington
DC; Justin Kurt Truelove, Patton & Tidwell, Texarkana,
TX.
JUDGES: DAVID FOLSOM, UNITED STATES
DISTRICT JUDGE.
OPINION BY: DAVID FOLSOM
OPINION:
ORDER
Before the Court is Plaintiff Paice LLC's ("Paice")
Motion for Entry of an Injunction. Dkt. No. 207. Also
before the Court is Defendants' Combined (1) Opposition
to Paice LLC's Motion for Entry of an Injunction and (2)
In the [*2] Alternative, Motion for a Stay of Any Injunction
Entered and Plaintiff's Combined Response to Toyota's
Motion for Stay and Reply in Support of Its Motion
for Injunction. Dkt. Nos. 212 and 219, respectively. On
April 25, 2006 the Court heard the parties on these motions.
Subsequent to the hearing, the parties submitted
letter briefing to the Court. 6/23/06 Letter from G. Badenoch,
6/30/06 Letter from R. Cordell, and 7/13/06 Letter
from G. Badenoch. Having considered the motions, all
other relevant briefing, and the applicable law, the Court
finds that Plaintiff's Motion for Injunction should be
DENIED.
I. BACKGROUND
In this patent infringement action, Plaintiff claimed
three of Defendants' hybrid vehicles infringe three of
Plaintiff's patents, U.S. Patent Nos. 5,343,970 ("the '970
patent"), 6,209,672 ("the '672 patent"), and 6,554,088
("the '088 patent") (collectively, the "patents-in-suit"). n1
Plaintiff alleged that nine claims among three patents
were literally infringed by Defendants' accused vehicles
and that ten claims were infringed under the doctrine of
equivalents. Plaintiff also argued that Defendants' alleged
infringement was willful.
[*3]
n1 A detailed explanation of each of the asserted
patents and the underlying technology can
be found in the Court's Claim Construction Order.
Dkt. No. 91. The present Order assumes familiarity
with the patents-in-suit.
In December 2005, the case was tried to a jury. The
jury found that Defendants' accused vehicles infringed
claims 11 and 39 of the '970 patent under the doctrine of
equivalents, but found no further infringement. The jury

2006 U.S. Dist. LEXIS 61600, *
Page 2
did not find Defendants' infringement was willful. Plaintiff
now moves for entry of a permanent injunction.
II. LEGAL PRINCIPLES
Recently the Supreme Court revisited the propriety
of issuing permanent injunctions as a matter of course
after a finding of infringement in patent cases. eBay Inc.
v. MercExchange, L.L.C., 126 S. Ct. 1837, 1839-1841,
164 L. Ed. 2d 641 (U.S. 2006) (hereinafter "eBay"). Observing
the existence of a "'general rule,' unique to patent
disputes" that mandated the issuance of a permanent injunction
once infringement and validity were decided,
the Supreme Court explored the origins of this general
rule and compared it to other instances in which courts
are faced with deciding whether or not to issue equitable
relief. Id. The Supreme Court determined that equitable
relief is not mandatory in patent cases, but instead should
be decided in accordance with traditional equitable considerations.
Id.
To this end, a plaintiff seeking [*4] a permanent injunction
must satisfy a four-factor test before a court may
grant such relief:
A plaintiff must demonstrate: (1) that it
has suffered an irreparable injury; (2) that
remedies available at law, such as monetary
damages, are inadequate to compensate
for that injury; (3) that, considering
the balance of hardships between the
plaintiff and defendant, a remedy in equity
is warranted; and (4) that the public
interest would not be disserved by a permanent
injunction.
Id. Further, the Supreme Court held that:
[T]he decision whether to grant or deny
injunctive relief rests within the equitable
discretion of the district courts, and that
such discretion must be exercised consistent
with traditional principles of equity,
in patent disputes no less than in other
cases governed by such standards.
Id. It is clear that the Supreme Court by its decision did
not intend to part with long-standing decisions in equity.
As noted by Chief Justice Roberts, "there is a difference
between exercising equitable discretion pursuant to the
established four-factor test and writing on an entirely
clean slate." Id. at 1841 (Roberts, C.J. concurring). [*5]
And, as Justice Kennedy notes in his concurrence, "the
existence of a right to exclude does not dictate the remedy
for a violation of that right," which aligns equitable
decisions in patent cases with other cases. Id. at 1842
(Kennedy, J. concurring).
III. THE PARTIES' POSITIONS
Plaintiff, seeking entry of a permanent injunction,
principally argued that it is entitled to an injunction pursuant
to 35 U.S.C. § 283 because the Defendants are
adjudged infringers of its valid patent claims. Dkt. No.
207 at 2. Plaintiff additionally argued that no exceptional
circumstances exist for which an injunction should be
denied. Id. Defendants responded in opposition to Plaintiff's
motion but spent the majority of their pre-hearing
brief arguing that any injunction that issues should be
stayed pending the outcome of an appeal or the issuance
of a decision in eBay. Dkt. No. 212. Less than a month
after the hearing, the eBay opinion issued.
Following the traditional four-factor test for equitable
relief, Defendants argue no injunction should issue as
Plaintiff cannot meet its burden of demonstrating each of
the factors, let alone any of the [*6] factors. Dkt. No.
222. According to Defendants, Plaintiff failed to demonstrate
irreparable harm. Id. at 3. Defendants argue that,
following from the Supreme Court's decision, irreparable
harm cannot be presumed. Further, citing a decision in z4
Technologies, Inc. v. Microsoft Corporation, Defendants
argue that the inability to license Plaintiff's patents to
others without an injunction in hand is not a viable reason
for issuing an injunction. Dkt. No. 222 at 3, citing z4
Technologies, Inc. v. Microsoft Corp., 434 F. Supp. 2d
437 (E.D. Tex. 2006). Defendants also point to evidence
demonstrating that there are reasons unrelated to Defendants'
conduct that explain why Plaintiff's efforts to license
its patents have been refused. Id. citing evidence at
Dkt. No. 212, 5-6. Defendants argue there is no evidence
supporting Plaintiff's contention that Defendants' sales of
the accused vehicles have resulted in the harm Plaintiff
alleges as Plaintiff does not sell vehicles. Dkt. No. 222 at
3-4.
Defendants argue that monetary damages are sufficient
to compensate Plaintiff. Because Plaintiff does not
manufacture competing vehicles, but rather is geared
toward licensing [*7] its technology, Defendants argue
that there is "no question" that monetary damages are
sufficient. Dkt. No. 222 at 4. Defendants further argue
that the claims found to be infringed make up only a
"small component" of the overall accused vehicles. Id.
The two claims found to be infringed by
equivalents are not to the entirety of the
hybrid transmission, let alone the entire

2006 U.S. Dist. LEXIS 61600, *
Page 3
car. For there to be an entire working vehicle
that meets [Defendants'] standards,
there are many tens of thousands of separate
parts that make up the various essential
parts of the car . . . Any contribution
of [Plaintiff's] technology to the accused
vehicles is relatively minor when compared
to the value of the overall vehicles
sought to be enjoined. . . .
Dkt. No. 222 at 4. Defendants further cite the jury's reasonable
royalty verdict as demonstrative of the relatively
small contribution of that Plaintiff's invention to the accused
vehicles as a whole:
Id.
Any contribution of [Plaintiff's] technology
to the accused vehicles is relatively
minor when compared to the value of the
overall vehicle sought to be enjoined, as
confirmed by the jury's verdict awarding
reasonable royalty damages [*8] of only
$ 25 per vehicle -- or 1/8th of one percent
of the $ 20,000 price of a Prius and even
less of a percentage of the price of the
Highlander ($ 33,000) and the RX400h ($
42,000).
Defendants argue that the third and fourth factors
weigh against issuing a permanent injunction. According
to Defendants, implementation of an injunction would
cause substantial economic injury to it, its dealers, and its
suppliers. An injunction would also severely damages its
"reputation as the industry leader in bringing hybrid and
other vehicles to market," argue Defendants. Id. at 4.
And, Defendants argue, significant time and money have
been invested in designing the accused devices while a
redesign would be "extraordinarily expensive and a great
hardship." Id. Defendants argue that there is "no discernable
hardship" to Plaintiff in the absence of an injunction
because Plaintiff seeks only licensing fees for the use of
its patents. Id. Defendants also argue that an injunction
would be contrary to the public interest as hybrid vehicles
play an important role in "reducing harmful automobile
emissions and American reliance on foreign oil." Id.
Lastly, Defendants remind [*9] the Court that, although
accused, the jury did not find that Defendants'
infringement was willful. Nor were they found to literally
infringe Plaintiff's patents -- only two often asserted
claims from one of three patents were found infringed
under the doctrine of equivalents. Defendants argue that
these facts should also be considered in determining
whether an injunction should issue. Dkt. No. 222 at 4-5.
In response, Plaintiff argues that, even under the traditional
four-factor test for equitable relief, they are entitled
to a permanent injunction. Plaintiff argues it has
proved it will suffer irreparable harm because, unless
Defendants are enjoined from selling the infringing vehicles,
it cannot succeed in its efforts to license its technology.
Dkt. No. 223 at 2. Plaintiff argues that Defendants'
infringement has had a "devastating effect" on its business
resulting in great harm. Dkt. No. 207 at 6. During
the hearing on this motion, Plaintiff's counsel related that
Plaintiff was recently "sidelined" as potential parties to a
joint venture chose to put the deal on hold while they
await the outcome of this motion. 4/25/06 Hr. Tr. at 99.
Plaintiff also cites testimony from Dr. Severinsky, [*10]
the inventor of the '970 patent and Paice employee, that
potential licensees have refused to license Plaintiff's patents
pending the outcome of this case. Id. at 2-3. Plaintiff
argues that even if potential licensees refused licenses in
the past for reasons unrelated to the current lawsuit, they
are today refusing to license as they await the outcome of
this suit. Id. at 3. Thus, Plaintiff argues, it is suffering
harm from what amounts to a de facto stop work injunction.
4/25/06 Hr. Tr. at 106.
Addressing the second factor, Plaintiff argues that
although it does not manufacture products utilizing the
patented invention, this alone does not end the inquiry as
to whether there is an adequate remedy at law for Defendants'
infringement. Dkt. No. 223 at 3. Instead, Plaintiff
argues, because it suffers irreparable harm, there is no
adequate remedy at law. According to Plaintiff, without
an injunction, Plaintiff will continue to loose licensing
opportunities to other potential licensees. Dkt. No. 223 at
3. Further, regarding the relative import of the infringed
claims to the accused vehicles, Plaintiff argues that the
infringed claims "cover . . . the heart of what the Prius
[*11] is all about." 4/25/06 Hr. Tr. at 105; see also Dkt.
No. 223 at 4.
Plaintiff argues that the balance of hardships tips in
favor of an injunction. According to Plaintiff, the infringing
products that would be enjoined can be sold in other
parts of the world. Further, Plaintiff argues, the infringing
vehicles account for less than 2% of Defendants'
worldwide revenue. Id.; see also 4/25/06 Hr. Tr. at 108.
On the other hand, without an injunction, Plaintiff argues
that it faces extinction. Dkt. No. 223 at 4.
Regarding the public interest, Plaintiff argues the
that public interest in strong patent rights is better served
by enforcing those rights through an injunction, particularly
where a small company's patents are infringed.
4/25/06 Hr. Tr. at 111; Dkt. No. 223 at 5. Plaintiff also
argues that enjoining sales of the accused vehicles would

2006 U.S. Dist. LEXIS 61600, *
Page 4
not leave the public without options -- in fact, there are
other hybrid alternatives on the market as well as vehicles
that are more fuel efficient than the accused vehicles.
4/25/06 Hr. Tr. at 110.
IV. DISCUSSION
Following the traditional four-factor test for equitable
relief, the Court concludes that no injunction is warranted
[*12] in this case. n2
n2 As Plaintiff's motion for an injunction is
denied, Defendant's cross-motion for a stay is
moot and will not be addressed herein.
Plaintiff fails to establish that it will be irreparably
harmed absent an injunction. The eBay decision demonstrates
that no presumption of irreparable harm should
automatically follow from a finding of infringement. See,
e.g., 126 S. Ct. at 1840; see also 6:06-CV-142, Docket
No. 394, at 4. Plaintiff argues that, because no injunction
has issued, it has been unsuccessful in its efforts to license
its technology. Plaintiff's evidence, however, does
not prove that the current litigation or the absence of an
injunction have resulted in its inability to successfully
license its technology.
Dr. Severinsky's testimony, cited by Plaintiff, addressed
only his belief as to why potential licensees were
reluctant to take licensees. Plaintiff's counsel's statements
that the company was "sidelined" pending the outcome
of this litigation are not evidence. [*13] There is evidence
in the record, however, that potential licensees
may have declined business deals because of Plaintiff's
misrepresentations and improper business tactics. See
12/7/05 PM Trial Tr. at 46:25-49:1; DTX 745.
Irreparable harm lies only where injury cannot be
undone by monetary damages. See Deerfield Med. Ctr. v.
City of Deerfield Beach, 661 F.2d 328, 338 (5th Cir.
1981). Plaintiff's losses from Defendant's sales of infringing
products can be remedied via monetary damages
in accordance with the reasonable royalty set by the jury.
As for Plaintiff's allegations of irreparable harm in the
form of a failed licensing program, Plaintiff has not
demonstrated Defendants' infringement is to blame for
this failure. As the evidence demonstrates, there were
other reasons Plaintiff may not have succeeded in licensing
its technology.
Additionally, Plaintiff has not demonstrated that
monetary relief will not aid its licensing efforts. As is
discussed below, the entry of a judgment for monetary
relief in conjunction with the jury's infringement and
validity findings will affirm Plaintiff's patent rights, as
would the issuance of an injunction. Although potential
[*14] licensees will likely consider the outcome of this
case in their licensing decisions, Plaintiff has not been
prevented from continuing its licensing efforts. It is
should also be noted that because Plaintiff does not compete
for market share with the accused vehicles, concerns
regarding loss of brand name recognition and market
share similarly are not implicated.
For these reasons, Plaintiff has not demonstrated that
it will suffer irreparable harm in the absence of an injunction.
Second, Plaintiff has not demonstrated that monetary
damages are inadequate. According to Plaintiff,
monetary damages paid by Defendants will not prevent
further lost opportunities to license its technology to potential
licensees. Plaintiff further argues that the infringed
claims form the "heart" of the accused products.
Infringing one's right to exclude alone, however, is insufficient
to warrant injunctive relief. 126 S.Ct. at 1840.
Plaintiff does not demonstrate why other potential licensees
would be less likely to take a license if this case
ends with monetary damages instead of equitable relief.
n3 In either case, the Plaintiff's patent rights are vindicated.
The appropriateness of an [*15] injunction is determined
after considering the traditional four factors
addressed here.
n3 The Court notes that monetary relief
could result in lower licensing rates than Plaintiff
would desire. The Court also recognizes that, if
an injunction were to issue, Plaintiff would have
a more impressive bargaining tool. This consideration,
however, doe not replace the four-factor
test that must be satisfied for equitable relief.
Further, the Court disagrees with Plaintiff regarding
the import of the two claims found infringed to the accused
vehicles as a whole. The infringed claims relate to
the hybrid transmissions of the accused vehicles, but
form only a small aspect of the overall vehicles. The
jury's damages award also indicates that the infringed
claims constitute a very small part of the value of the
overall vehicles. The jury, based on the entire record,
determined an appropriate reasonable royalty rate that
can be easily calculated on future sales of the accused
devices thereby removing uncertainty from future [*16]
damages calculations.
It is also of note that Plaintiff, throughout post-trial
motions, has extended Defendants an offer to license its
technology. 4/25/06 Hr. Tr. at 108. This offer further
demonstrates the adequacy of monetary relief from
Plaintiff's point of view. Thus, the Court finds that Plaintiff
has not demonstrated monetary damages are an in-

2006 U.S. Dist. LEXIS 61600, *
Page 5
adequate remedy to compensate for Defendants' infringement.
Third, the Court finds that the hardships balance
against enjoining Defendants. Plaintiff again argues that
this factor tips in its favor because it faces extinction
absent an injunction while Defendants will experience
only minor economic losses. This ignores the reality that
two of the accused vehicles were introduced to the market
during the 2006 model year and enjoining their sales
will likely interrupt not only Defendants' business but
that of related businesses, such as dealers and suppliers.
The burgeoning hybrid market could also be stifled as
the research and expense of bringing its product line to
market would be frustrated. And the Court finds that
enjoining Defendants will damage their reputation. Defendants
face significant hardships if enjoined. Plaintiff's
argument [*17] that it may go out of business unless
Defendants are enjoined is again premised upon their
contention that only injunctive relief will lead to a successful
licensing program. As discussed above, the Court
does not agree with this contention. Thus, the balance of
hardships tips decidedly in favor of Defendants.
Lastly, the Court concludes that the public interest
does not weigh heavily in either party's favor. As Plaintiff
argues, there is a long recognized public interest in
enforcing patent rights. The grant of injunctive relief for
such enforcement, as the eBay case directs, should be
determined using the traditional four-factor test. Relief in
non-injunctive form also serves this public interest. Insofar
as Defendants argue that an injunction would be contrary
to the public interest in reducing dependence of
foreign oil, the Court finds this argument unavailing.
Defendants' hybrid vehicles are not the only hybrid alternatives
on the market, and there has been no evidence
demonstrating the demand for hybrid vehicles could not
be met by such alternatives. Thus, Defendants have not
demonstrated that enjoining the sale of their hybrid vehicles
will disserve the public interest. [*18]
Having found that Plaintiff has failed to demonstrate
that injunctive relief is warranted under any of the four
relevant factors, the Court will deny Plaintiff's request.
V. CONCLUSION
For all the above reasons, Plaintiff's Motion for Entry
of an Injunction, Dkt. No. 207, is hereby DENIED
and Defendants' Motion for a Stay of Any Injunction
Entered, Dkt. No. 212, is DENIED as moot.
SIGNED this 16th day of August, 2006.
DAVID FOLSOM
UNITED STATES DISTRICT JUDGE
FINAL JUDGMENT
Pursuant to Rule 58 of the Federal Rules of Civil
Procedure and in accordance with the jury verdict delivered
on December 20, 2005 and with the Court's contemporaneously
filed Orders regarding Plaintiff's Motion
for Judgment as a Matter of Law or, in the Alternative,
for a New Trial (Dkt. No. 209), Plaintiff's Motion for
Entry of an Injunction (Dkt. No. 207), and Defendants'
Motion for Judgment as a Matter of Law or in the Alternative,
for a New Trial (Dkt. No. 208), the Court thereby
enters judgment for Plaintiff Paice LLP and against Toyota
Motor Corp., a Japanese Corporation, Toyota Motor
North America Inc., and Toyota Motor [*19] Sales
USA, Inc. (collectively "Defendants") for infringement
of U.S. Patent No. 5,343,970 ("the '970 patent"), claims
11 and 39. IT IS THEREFORE ORDERED THAT
Plaintiff shall have and recover from Defendants, jointly
and severally, the total sum of $ 4,269,950.00, together
with pre-judgment interest calculated at the prime rate,
compounded annually, together with post-judgment interest
on the entire sum calculated pursuant to 28 U.S.C.
§ 1961. The parties shall meet and confer in an attempt
to reach agreement as to the calculation of pre-judgment
interest at the prime rate and, within 14 days of the entry
of this order, shall jointly submit such calculation to the
Court. This Court retains jurisdiction to award Plaintiff
amounts for pre-judgment interest.
For the reasons stated in this Court's contemporaneously
filed order, Plaintiff's motion for injunctive relief
was denied. Defendants are hereby ORDERED, for the
remaining life of the '970 patent, to pay Plaintiff an ongoing
royalty of $ 25.00 per infringing Prius II, Toyota
Highlander, or Lexus RX400H (the "infringing vehicles").
Royalties shall be paid quarterly and shall be accompanied
by an [*20] accounting of the sales of infringing
vehicles. Payments shall begin three months
after the date of signing of this judgment and shall be
made quarterly thereafter. The first payment shall include
royalties for all infringing vehicles sold that were
not accounted for in the jury's verdict. Payments not
made within 14 days of the due date shall accrue interest
at the rate of 10%, compounded monthly. Plaintiff shall
have the right to request audits. It is anticipated that the
parties may wish to agree to more comprehensive or
convenient terms. The parties shall promptly notify the
Court of any such agreement. The Court maintains jurisdiction
to enforce this portion of the Final Judgment.
All relief not specifically granted herein is denied.
All pending motions not previously ruled on are denied.
This is a Final Judgment and is appealable.
SIGNED this 16th day of August, 2006.
DAVID FOLSOM
UNITED STATES DISTRICT JUDGE

Page 1
LEXSEE 2006 U.S. DIST. LEXIS 63623
JAN K. VODA, M.D., Plaintiff and Counterclaim Defendant, v. CORDIS
CORPORATION, Defendant and Counterclaim Plaintiff.
No. CIV-03-1512-L
UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF
OKLAHOMA
2006 U.S. Dist. LEXIS 63623
September 5, 2006, Decided
PRIOR HISTORY: Voda v. Cordis Corp., 2006 U.S.
Dist. LEXIS 37961 (W.D. Okla., June 8, 2006)
LexisNexis(R) Headnotes
Civil Procedure > Remedies > Judgment Interest > Prejudgment
Interest
Patent Law > Remedies > Collateral Assessments >
Prejudgment Interest
[HN1] Prejudgment interest should ordinarily be
awarded in patent infringement actions. In the typical
case an award of prejudgment interest is necessary to
ensure that the patent owner is placed in as good a position
as he would have been in had the infringer entered
into a reasonable royalty agreement. An award of interest
from the time that the royalty payments would have been
received merely serves to make the patent owner whole,
since his damages consist not only of the value of the
royalty payments but also of the forgone use of the
money between the time of infringement and the date of
the judgment.
Civil Procedure > Remedies > Judgment Interest > Prejudgment
Interest
[HN2] The rate of interest and whether to compound it
are matters for the court's discretion.
Civil Procedure > Remedies > Judgment Interest > Prejudgment
Interest
[HN3] The purpose of prejudgment interest is to make
the plaintiff whole by compensating him for the loss of
use of the money owed him.
Patent Law > Remedies > Collateral Assessments >
Increased Damages
[HN4] The Patent Act permits the court to award enhanced
damages of up to three times the amount found or
assessed. 35 U.S.C.S. § 284. Whether to award such
damages is two-step process. First, the fact-finder must
determine whether an infringer is guilty of conduct upon
which increased damages may be based. If so, the court
then determines, exercising its sound discretion, whether,
and to what extent, to increase the damages award given
the totality of the circumstances. A jury's determination
that the defendant's infringement was willful satisfies the
first requirement. A finding that infringement was willful
does not, however, mandate an award of enhanced damages.
Whether to increase damages, and to what extent,
is left to the sound discretion of the court.
Patent Law > Remedies > Collateral Assessments >
Increased Damages
[HN5] Courts consider several factors when determining
whether an infringer has acted in bad faith and whether
damages should be increased. They include (1) whether
the infringer deliberately copied the ideas or design of
another; (2) whether the infringer, when he knew of the
other's patent protection, investigated the scope of the
patent and formed a good-faith belief that it was invalid
or that it was not infringed; (3) the infringer's behavior as
a party to the litigation; (4) the defendant's size and financial
condition; (5) closeness of the case; (6) duration
of the defendant's misconduct; (7) remedial action by the
defendant; (8) the defendant's motivation for harm; and
(9) whether the defendant attempted to conceal its misconduct.
Patent Law > Remedies > Collateral Assessments >
Increased Damages

2006 U.S. Dist. LEXIS 63623, *
Page 2
[HN6] In the patent context, a court may not disregard
the jury's willfulness finding and the findings implicit
therein.
Patent Law > Remedies > Collateral Assessments >
Attorney Fees
Patent Law > Remedies > Collateral Assessments >
Increased Damages
[HN7] 35 U.S.C.S. § 285 provides the court in exceptional
cases may award reasonable attorney fees to the
prevailing party. 35 U.S.C.S. § 285. As with enhanced
damages, the decision to award attorney's fees involves
two steps. First, the court must determine whether the
action constitutes an exceptional case. As a general rule,
attorneys fees under § 285 may be justified by any valid
basis for awarding increased damages under 35 U.S.C.S.
§ 284.
Patent Law > Remedies > Collateral Assessments >
Attorney Fees
[HN8] In the context of 35 U.S.C.S. § 285, a case may
be deemed exceptional when there has been some material
inappropriate conduct related to the matter in litigation,
such as willful infringement.
Civil Procedure > Remedies > Injunctions > Elements
> General Overview
Patent Law > Remedies > Equitable Relief > Injunctions
[HN9] The Patent Act permits the court to grant injunctions
in accordance with principles of equity to prevent
the violation of any right secured by patent, on such
terms as the court deems reasonable. 35 U.S.C.S. § 283.
The United States Supreme Court recently has confirmed
that permanent injunctions in patent cases should not
automatically follow a finding of infringement; rather,
requests for permanent injunctions in such cases are governed
by the same four-factor test that applies to injunctive
relief in general. According to well-established principles
of equity, a plaintiff seeking a permanent injunction
must satisfy a four-factor test before a court may
grant such relief. A plaintiff must demonstrate (1) that it
has suffered an irreparable injury; (2) that remedies
available at law, such as monetary damages, are inadequate
to compensate for that injury; (3) that, considering
the balance of hardships between the plaintiff and defendant,
a remedy in equity is warranted; and (4) that the
public interest would not be disserved by a permanent
injunction.
Patent Law > Remedies > Equitable Relief > Injunctions
[HN10] In the patent context, the United States Supreme
Court clearly has held the right to exclude does not,
standing alone, justify a general rule in favor of injunctive
relief.
Patent Law > Remedies > Equitable Relief > Injunctions
[HN11] As patents have the attributes of personal property,
the person seeking a permanent injunction must
demonstrate harm from infringement of those rights that
is personal as well.
COUNSEL: [*1] For Jan Voda, MD, Plaintiff: Aleta
Angelina Mills, Jonathan Keith Waldrop, Mitchell G
Stockwell, Kilpatrick Stockton LLP, Atlanta, GA.; John
A Kenney, Spencer F Smith, McAfee & Taft, Oklahoma
City, OK.
For Cordis Corporation, Defendant: Adam R Steinert,
Diane C Ragosa, John M DiMatteo, Kelsey I Nix, Willkie
Farr & Gallagher LLP, New York, NY.; Amanda
Leigh Maxfield, Clyde A Muchmore, Crowe & Dunlevy-
OKC, Oklahoma City, OK.
For Cordis Corporation, Counter Claimant: Adam R
Steinert, Kelsey I Nix, Willkie Farr & Gallagher LLP,
New York, NY.; Amanda Leigh Maxfield, Crowe &
Dunlevy-OKC, Oklahoma City, OK.
For Jan Voda, MD, Counter Defendant: John A Kenney,
Spencer F Smith, McAfee & Taft, Oklahoma City, OK.;
Mitchell G Stockwell, Jonathan Keith Waldrop,
Kilpatrick Stockton LLP, Atlanta, GA.
JUDGES: TIM LEONARD, United States District
Judge.
OPINION BY: TIM LEONARD
OPINION:
ORDER
This action concerns three patents that were issued
by the United States Patent and Trademark Office to
plaintiff, Dr. Jan K. Voda. All of the patents concern an
angioplasty guide catheter. Patent No. 5,445,625 ("the
'625 patent") reflects the catheter "in a relaxed state prior
to insertion in the cardiovascular [*2] system." The two
remaining patents (the '213 and the '195 patents) cover
plaintiff's inventive technique for using the catheter to
perform angioplasty. In addition to method claims, the
'195 patent also includes claims that focus on the catheter

2006 U.S. Dist. LEXIS 63623, *
Page 3
as it appears in the aorta. Plaintiff filed this action on
October 30, 2003, seeking damages for alleged infringement
of the three patents by defendant, Cordis Corporation.
Beginning May 15, 2006, the case was tried to a
jury, which returned a verdict in favor of plaintiff on
May 25, 2006. The jury specifically held defendant infringed
each of the patents in suit and that claims 1, 2,
and 3 of the '213 patent were not invalid due to anticipation
or obviousness. n1 Verdict Form at 1-7. The jury
determined that plaintiff was entitled to a reasonable
royalty of 7.5% of defendant's gross sales of the infringing
catheters. Id. at 8. In addition, the jury found defendant's
infringement was willful. Id. at 3.
n1 At the conclusion of the trial, defendant
conceded it was no longer seeking a declaration
as to the validity of the '625 patent, the '195 patent,
or claims 4 and 5 of the '213 patent ("the apparatus
claims"). The court thus granted judgment
as a matter of law in favor of plaintiff on
that portion of defendant's counterclaim.
[*3]
Although the parties were able to stipulate to the
amount of compensatory damages based on the jury's
verdict, n2 they were unable to agree on whether plaintiff
should be awarded prejudgment interest and, if so, the
rate of interest. Likewise, the parties dispute whether
plaintiff is entitled to enhanced damages based on the
jury's willfulness finding. In addition, the court must
decide whether plaintiff is entitled to injunctive relief
and attorney's fees.
n2 Joint Stipulation Regarding Compensatory
Damages (Doc. No. 341).
Prejudgment Interest
As a general rule, [HN1] prejudgment interest
should ordinarily be awarded in patent infringement actions.
General Motors Corp. v. Devex Corp., 461 U.S.
648, 655, 103 S. Ct. 2058, 76 L. Ed. 2d 211 (1983).
In the typical case an award of prejudgment
interest is necessary to ensure that
the patent owner is placed in as good a
position as he would have been in had the
infringer entered into a reasonable royalty
agreement. An award of interest from the
time that the royalty payments [*4]
would have been received merely serves
to make the patent owner whole, since his
damages consist not only of the value of
the royalty payments but also of the forgone
use of the money between the time
of infringement and the date of the judgment.
Id. at 655-56 (footnote omitted). Although defendant
recognizes this general rule, it argues prejudgment interest
should be denied "[d]ue to Dr. Voda's eight-year delay
in bringing suit, and the resultant prejudice". Cordis'
Opposition to Dr. Voda' Motions for (1) a Permanent
Injunction, (2) Enhanced Damages and (3) Prejudgment
Interest at 19 (Doc. No. 362). In support of this contention,
defendant identifies the same economic and evidentiary
prejudice the court found to be insufficient to support
its laches defense. n3 The court likewise finds the
prejudice identified by defendant insufficient to warrant
deviating from the general rule regarding prejudgment
interest. Plaintiff's request for prejudgment interest is
therefore granted.
[*5]
n3 Cordis' Post-Trial Brief Regarding Injunctive
Relief, Enhanced Damages and Prejudgment
Interest at 23. See also Order at 4-5 (Doc. No.
339).
[HN2] The rate of interest and whether to compound
it are matters for the court's discretion. Bio-Rad Laboratories,
Inc. v. Nicolet Instrument Corp., 807 F.2d 964,
969 (Fed. Ci. 1986), cert. denied, 482 U.S. 915, 107 S.
Ct. 3187, 96 L. Ed. 2d 675 (1987). Plaintiff contends the
appropriate rate is the prime rate plus two percent, compounded
annually. In contrast, defendant proposes using
the three-month or one-year United States Treasury Bill
rate. See Declaration of Kathleen M. Kedrowski at P 5,
Exhibit 30 to Declaration of Kelsey I. Nix in Support of
Cordis' Opposition to Dr. Voda's Motions (Doc. No.
359). Defendant argues this rate "is the proper rate . . .
because the damage award is not subject to any investment
risk during the waiting period." Id. Defendant's
argument is based on a misapprehension of the economic
policy for prejudgment interest. It is not, as defendant
argues, to compensate plaintiff for the risk of default by
defendant; rather, [HN3] the purpose of prejudgment
interest is to make plaintiff whole by compensating him
for the loss of use of the money owed him. Bio-Rad
Laboratories, Inc., 807 F.2d at 969. The court finds that
neither rate suggested by [*6] the parties fulfills this
purpose; plaintiff's suggested rate is too high and defendant's
too low. The court concludes the appropriate rate

2006 U.S. Dist. LEXIS 63623, *
Page 4
is the prime rate, compounded annually. This results in a
total prejudgment interest award of $ 489,375. n4
n4 This represents the total prejudgment interest
for the '213 patent for the period July 4,
2000 through May 15, 2006. The court's calculation
of the yearly totals for the '213 patent are:
2000 -0; 2001 - $ 19,388.29; 2002 - $ 35,865.66;
2003 - $ 55,085.63; 2004 - $ 89,068.63; 2005 -$
176,334.73; 2006 - $ 113,631.94. The total prejudgment
interest for the '625 patent is $
185,323.91 (2002 - 0; 2003 - $ 11,988.58; 2004 -
$ 32,459.54; 2005 - $ 82,440.35; 2006 - $
58,435.44). The total prejudgment interest for the
'195 patent is $ 80,477.98 (2003 - 0; 2004 - $
3,302.96; 2005 -$ 39,844.47; 2006 - $
37,330.55).
Enhanced Damages
[HN4] The Patent Act permits the court to award
enhanced damages of "up to three times the amount
found or assessed." 35 U.S.C. § 284 [*7] . Whether to
award such damages is two-step process. "First, the factfinder
must determine whether an infringer is guilty of
conduct upon which increased damages may be based. If
so, the court then determines, exercising its sound discretion,
whether, and to what extent, to increase the damages
award given the totality of the circumstances." Jurgens
v. CBK, Ltd., 80 F.3d 1566, 1570 (Fed. Cir. 1996).
The jury's determination that defendant's infringement
was willful satisfies the first requirement. A finding that
infringement was willful does not, however, mandate an
award of enhanced damages. Id. at 1573. Whether to
increase damages, and to what extent, is left to the sound
discretion of the court. In exercising that discretion, the
court is guided by the factors enunciated by the Federal
Circuit in Read Corp. v. Portec, Inc., 970 F.2d 816
(Fed. Cir. 1992).
[HN5] Courts consider several factors
when determining whether an infringer
has acted in bad faith and whether damages
should be increased. They include:
"(1) whether the infringer deliberately
copied the ideas or design of another; (2)
whether the infringer, when he knew of
the [*8] other's patent protection, investigated
the scope of the patent and formed a
good-faith belief that it was invalid or that
it was not infringed; . . . (3) the infringer's
behavior as a party to the litigation;" (4)
"defendant's size and financial condition;"
(5) "closeness of the case;" (6) "duration
of defendant's misconduct;" (7) "remedial
action by the defendant;" (8) "defendant's
motivation for harm;" and (9) "whether
defendant attempted to conceal its misconduct."
Liquid Dynamics Corp. v. Vaughan Co., Inc., 449 F.3d
1209, 1225 (Fed. Cir. 2006) (quoting Read Corp., 970
F.2d at 826-27).
Based on the totality of the circumstances, the court
concludes plaintiff's damages should be increased, but
not trebled. In reaching this conclusion, the court finds
factors 1, 2, 4, and 7 weigh in favor of increasing damages.
First, plaintiff presented evidence that defendant
consciously copied his design and ideas. Although defendant
vigorously disputed this notion, a finding of conscious
copying is inherent in the jury's finding of willfulness.
At trial the jury was specifically instructed:
Other factors you may consider in determining
wilfulness [*9] are whether, in
designing the product accused of infringement,
Cordis copies the disclosures
of Dr. Voda's patents, or whether Cordis
instead tried to "design around" the patents
by designing a product that Cordis
believed did not infringe the patent
claims. Evidence of copying a patent is
evidence of willful infringement. On the
other hand, evidence that Cordis attempted
to avoid infringement by designing
around the patent claims, even if that
attempt was unsuccessful, is evidence that
the infringement was not willful.
Court's Instructions to the Jury at 47 (Doc. No. 335).
Also implicit in this finding is a rejection of defendant's
argument that it attempted to design around plaintiff's
claims. Thus, the court finds defendant did not take any
remedial actions; moreover, defendant has indicated it
will continue to produce and market the infringing devices
without change even after the jury verdict. n5
Likewise, in making its willfulness finding, the jury rejected
defendant's advice of counsel defense. At trial,
defendant presented evidence that it sought and obtained
opinion letters from both in-house and outside counsel
with respect to the patents-in-suit. Plaintiff countered
[*10] this evidence by questioning the timing of the requests,
the thoroughness of the information defendant
provided to counsel, and the independence of counsel.
The jury was then instructed:

2006 U.S. Dist. LEXIS 63623, *
Page 5
In evaluating Cordis' reliance on the advice
of a lawyer, you should consider
when Cordis obtained the advice, the
quality of the information Cordis provided
to the lawyer, the competence of the lawyer's
opinion, and whether Cordis relied
upon the advice. Advice is competent if it
was based upon a reasonable examination
of the facts and law relating to validity,
enforceability and/or infringement issues,
consistent with the standards and practices
generally followed by competent lawyers.
Id. Defendant's lengthy post-trial argument that it did in
fact rely on competent legal advice is misplaced, as it
asks the court to reweigh an issue decided by the jury.
The court, however, does not have discretion to do so at
this time; [HN6] it may not disregard the jury's willfulness
finding and the findings implicit therein. See Jurgens,
80 F.3d at 1572. Finally, the fact that defendant is
"a large company with extensive financial means" n6 is
another factor that justifies increasing [*11] the damages
award.
n5 See Exhibit PX400 to Consolidated Appendix
in Support of Dr. Voda's (1) Brief in Support
of Plaintiff's Motion for Enhanced Damages
(2) Brief in Support of Plaintiff's Request for
Permanent Injunction (3) Brief in Support of
Plaintiff's Request for Prejudgment Interest.
n6 Metabolite Laboratories, Inc. v. Laboratory
Corp. of America Holdings, 370 F.3d 1354,
1371 (Fed. Cir. 2004).
On the other hand, the other Read factors are either
neutral or do not support an award of enhanced damages.
For example, factor 6, the duration of defendant's misconduct,
cuts both ways. Although defendant has been
manufacturing infringing devices for years, plaintiff also
waited years to challenge defendant's infringement.
While the court found plaintiff's delay was not sufficient
to establish laches or to prevent plaintiff from receiving
prejudgment interest, it is a factor the court considers in
determining the amount any enhancement. Factor 5 also
is neutral. Although the jury's [*12] relatively quick
deliberation might indicate the issues that remained for
decision were not close, other issues -- including literal
infringement -- were decided adversely to plaintiff prior
to trial. Contrary to plaintiff's assertions, factors 3, 8, and
9 do not support enhancement. The court finds there is
no evidence of litigation misconduct by defendant, nor
has plaintiff demonstrated any intent by defendant to
harm him. Hyperbole in marketing documents does not
indicate intent to harm; moreover, any harm would have
been directed at plaintiff's licensee, Scimed, not plaintiff.
Also, there is no evidence defendant sought to conceal its
activities. These factors, however, do not outweigh defendant's
conscious copying, lack of good-faith belief
that it was not infringing, and failure to take remedial
action.
Based on the totality of the circumstances, the court
finds trebling plaintiff's damages is not warranted. The
court, however, exercises its discretion to double the
infringement damages. Plaintiff is thus awarded compensatory
damages of $ 3,803,094 through May 15, 2006, n7
together with prejudgment interest in the amount of $
489,375, and enhanced damages of $ 3,803,094, for
[*13] a total award of $ 8,095,563.
n7 See Joint Stipulation Regarding Compensatory
Damages at 1.
Attorney's Fees
[HN7] Section 285 provides the court "in exceptional
cases may award reasonable attorney fees to the
prevailing party." 35 U.S.C. § 285. As with enhanced
damages, the decision to award attorney's fees involves
two steps. Cybor Corp. v. FAS Techs., Inc., 138 F.3d
1448, 1460 (Fed. Cir. 1998). First, the court must determine
whether the action constitutes an exceptional case.
"As a general rule, attorneys fees under section 285 may
be justified by any valid basis for awarding increased
damages under section 284." Jurgens, 80 F.3d at 1573
n.4. Based on the analysis enunciated above, the court
finds this is an exceptional case warranting an award of
attorney's fees. Specifically, the jury's implicit findings
that defendant consciously copied plaintiff's design and
did not have a good faith belief as to infringement and
validity provide the requisite [*14] degree of bad faith
necessary to support finding this case exceptional. n8
n8 [HN8] "A case may be deemed exceptional
when there has been some material inappropriate
conduct related to the matter in litigation,
such as willful infringement . . . ." Brooks
Furniture Mfg., Inc. v. Dutailier Intern., Inc., 393
F.3d 1378, 1381 (Fed. Cir. 2005).
Having concluded the case is exceptional, the court
also determines that an award of fees is appropriate. Defendant
does not dispute the hours expended by plain-

2006 U.S. Dist. LEXIS 63623, *
Page 6
tiff's attorneys or the reasonableness of the rates charged
by plaintiff's attorneys. Defendant does, however, ask the
court to impose two limits on any fee award. First, it
argues plaintiff's contingent fee contract with his attorneys
"sets the maximum amount the court can award."
Cordis' Opposition to Voda's Motion for Attorneys' Fees
at 15 (Doc. No. 380). Second, it contends local attorney
billing rates should be used to calculate the lodestar figure.
Id. at 17-18.
Defendant's first argument is not [*15] only without
merit, given the court's award of enhanced damages, it is
moot. n9 The cases cited by defendant in support of this
contention are inapposite as they concern fees sought
pursuant to Florida's fee-shifting statute. The court also
rejects defendant's second argument. Although local
hourly rates should be used to calculate fees in the normal
case, patent litigation is a specialized practice with a
national bar. Defendant does not contest that "the rates
usually charged by Voda's national counsel may be reasonable
for the Atlanta market". Cordis' Opposition to
Voda's Motion for Attorneys' Fees at 17. The court's independent
examination of those rates confirms they are
objectively reasonable for the national patent bar. Therefore,
the court calculates the lodestar figure by multiplying
the rates normally charged by plaintiff's Atlanta and
Oklahoma City attorneys by the hours expended. This
results in an attorney's fee award of $ 2,133,086.25. n10
The court finds no reason to increase this award based on
any of the factors enunciated in Hensley v. Eckerhart,
461 U.S. 424, 433-34, 103 S. Ct. 1933, 76 L. Ed. 2d 40
(1983). As defendant does not contest plaintiff's request
for litigation expenses, [*16] the court awards plaintiff
litigation expenses of $ 68,053.21, making the total fee
award $ 2,201,139.46.
n9 In response to Cordis' Motion to Compel
Dr. Voda to Produce his Contingency Fee
Agreement (Doc. No. 367), plaintiff provided a
copy of the contingency fee contract for the court
to review in camera. The court denied defendant's
motion to compel, finding the contract was
not relevant since defendant did not challenge the
reasonableness of either the rates charged by
plaintiff's attorneys or the hours expended. Order
at 2 (Doc. No. 377). Nonetheless, in the interest
of full disclosure, the court notes plaintiff's contingent
fee contract provided plaintiff would pay
45 percent of the recovery received after trial or
after the filing of a notice of appeal. Forty-five
percent of the damages awarded by the court, including
prejudgment interest, equals $
3,643,003.35, a sum that is significantly larger
than the amount sought by plaintiff in his Motion
for Attorneys' Fees.
n10 Plaintiff's motion sought an award of $
2,133,086.20. The supporting documentation,
however, reflects a fee request of $ 2,133,086.25
($ 1,708,842.25 + $ 424,244.00). Exhibits PX
427 and PX 428 to Supplemental Appendix to Dr.
Voda's (1) Brief in Support of Plaintiff's Motion
for Enhanced Damages (2) Brief in Support of
Plaintiff's Request for Permanent Injunction (3)
Brief in Support of Plaintiff's Request for Prejudgment
Interest (4) Plaintiff's Motion for Attorneys'
Fees (Doc. No. 366).
[*17]
Injunctive Relief
Plaintiff requests a permanent injunction barring defendant,
"its officers, agents servants, directors, employees
and all those in active concert or participation with
them . . . from infringing, inducing the infringement of,
and contributorily infringing any one or more claims" of
the patents-in-suit. Attachment to Brief in Support of
Plaintiff's Request for Permanent Injunction at 1 (Doc.
No. 350). [HN9] The Patent Act permits the court to
"grant injunctions in accordance with principles of equity
to prevent the violation of any right secured by patent, on
such terms as the court deems reasonable." 35 U.S.C. §
283. The United States Supreme Court recently confirmed
that permanent injunctions in patent cases should
not automatically follow a finding of infringement;
rather, requests for permanent injunctions in such cases
are governed by the same four-factor test that applies to
injunctive relief in general. eBay Inc. v. MercExchange,
L.L.C., 126 S. Ct. 1837, 1839-40, 164 L. Ed. 2d 641
(2006).
Id. at 1839.
According to well-established principles
of equity, a plaintiff seeking a permanent
injunction must satisfy a four-factor test
before a court may [*18] grant such relief.
A plaintiff must demonstrate: (1) that
it has suffered an irreparable injury; (2)
that remedies available at law, such as
monetary damages, are inadequate to
compensate for that injury; (3) that, considering
the balance of hardships between
the plaintiff and defendant, a remedy in
equity is warranted; and (4) that the public
interest would not be disserved by a permanent
injunction.

2006 U.S. Dist. LEXIS 63623, *
Page 7
As plaintiff has failed to demonstrate either irreparable
injury or that monetary damages are inadequate, the
court denies his request for a permanent injunction. n11
Plaintiff argues irreparable harm is presumed whenever
validity and continuing infringement have been established.
Brief in Support of Plaintiff's Request for Permanent
Injunction at 5 (Doc. No. 350). This argument,
however, runs afoul of the court's reasoning in eBay
where [HN10] the Court clearly held the right to exclude
does not, standing alone, justify a general rule in favor of
injunctive relief. eBay Inc., 126 S. Ct. at 1840. Moreover,
other than the presumption of irreparable harm,
plaintiff identifies no harm to himself; rather, he relies on
alleged harm to a [*19] non-party, Scimed. n12 See
Brief in Support of Plaintiff's Request for Permanent
Injunction at 6-12. The court concurs with defendant that
such harm is irrelevant because Scimed elected not to sue
to enforce the patent rights. [HN11] As patents have "the
attributes of personal property" n13, the person seeking a
permanent injunction must demonstrate harm from infringement
of those rights that is personal as well.
n11 The court therefore need not address defendant's
assertions that plaintiff did not timely
seek injunctive relief or that the relief requested
is not sufficiently limited or specific to comply
with Fed. R. Civ. P. 65(d).
n12 Cordis' Motion to Strike the Lundeen
Declaration and Dr. Voda's Arguments Relying
on that Declaration in his Post-trial Brief (Doc.
No. 363) is denied. In accordance with defendant's
request, the court reserved the issue of injunctive
relief until after the jury returned its verdict.
Order at 3 (Doc. No. 311). Plaintiff's posttrial
submission of the Lundeen Declaration is in
accord with that ruling.
n13 eBay Inc., 126 S. Ct. at 1840.
[*20]
The court also finds plaintiff has not established that
monetary damages are inadequate to compensate him.
Plaintiff argues he granted Scimed an exclusive license
to his patented inventions and defendant's continuing
infringement will damage his relationship with Scimed.
This argument, however, is simply the other side of the
right-to-exclude coin and is not sufficient to justify
granting injunctive relief. Plaintiff's request for a permanent
injunction is therefore denied.
Post-Verdict Infringement
As the court has declined to issue a permanent injunction
and defendant has indicated it will continue to
infringe the patents-in-suit, the court must fashion a remedy
for the continuing harm to plaintiff. Plaintiff suggests
severing his action for monetary damages for postverdict
infringement. In addition, plaintiff asks the court
to order defendant to file quarterly reports of sales and to
establish an interest-bearing escrow account into which
defendant would pay the royalty rate assessed by the
jury. The court sees no reason for severance of a cause of
action for the post-verdict damages as there would be no
issues for decision except simple mathematical calculations
based on [*21] defendant's sales. The court therefore
denies plaintiff's motion for severance. The court,
however, concludes that quarterly reporting by defendant
is reasonable. The reports shall be filed beginning September
15, 2006 and every three months thereafter until
final resolution of this action. Defendant may file the
reports under seal without seeking leave of court to do
so. Given defendant's size and financial stability, the
court will not order defendant to pay the royalty funds
into an interest-bearing escrow account. Defendant is
cautioned, however, that absent establishment of an escrow
account, prejudgment interest will accrue on any
post-verdict infringement damages.
Conclusion
In sum, plaintiff's requests for prejudgment interest
and enhanced damages are GRANTED to the extent
noted above. Plaintiff's request for a permanent injunction
is DENIED. Plaintiff's Motion for Entry of Judgment,
Severance of Continuing Causes of Action for
Post-Verdict Infringement, and Establishment of Reporting
and Escrow Requirement (Doc. No. 353) is
GRANTED in part and DENIED in part. Cordis' Motion
to Strike the Lundeen Declaration and Dr. Voda's Arguments
Relying on that Declaration in his [*22] Post-trial
Briefs (Doc. No. 363) is DENIED. Plaintiff's Motion for
Attorneys' Fees (Doc. No. 365) is GRANTED. Judgment
in accordance with this Order, the parties' stipulation,
and the jury's verdict will issue according.
It is so ordered this 5th day of September, 2006.
TIM LEONARD
United States District Judge

Slip Copy Page 1
Slip Copy, 2007 WL 37742 (E.D.Mich.)
(Cite as: Slip Copy)
Briefs and Other Related Documents
Sundance, Inc. v. DeMonte Fabricating
Ltd.E.D.Mich.,2007.Only the Westlaw citation is
currently available.
United States District Court,E.D. Michigan,Southern
Division.
SUNDANCE, INC. and Merlot Tarpaulin and Sidekit
Manufacturing Co., Inc., Plaintiffs,
v.
DeMONTE FABRICATING LTD. and Quick Draw
Tarpaulin Systems, Inc., Defendants.
No. 02-73543.
Jan. 4, 2007.
John A. Monocello, III, Thomas E. Wettach, Cohen
& Grigsby, Pittsburgh, PA, Kevin J. Heinl, Robert C.
Brandenburg, Brooks & Kushman, Southfield, MI,
for Plaintiffs.
Donald C. Darnell, Nik Lulgjuraj, Darnell &
Lulgjuraj, Chelsea, MI, Irving M. Weiner, Joseph P.
Carrier, Carrier, Blackman, Novi, MI, for
Defendants.
MEMORANDUM AND ORDER DENYING
PLAINTIFFS' MOTION FOR PERMANENT
INJUNCTION FN1
FN1. The Court originally scheduled this
matter for hearing. Upon review of the
parties' papers, however, the Court finds that
oral argument is not necessary. See E.D.
Mich. LR 7.1(e)(2).AVERN COHN, United
States District Judge.
I. Introduction
*1 This is a patent case. Plaintiffs Sundance, Inc. and
Merlot Tarpaulin and Sidekit Manufacturing
Company, Inc. (collectively, Sundance), holder of
U.S. Patent No. 5,026,109 (the 109 patent) covering
a Segmented Cover System, sued DeMonte
Fabricating, Ltd. and Quick Draw Tarpaulin Systems
Inc. (collectively, DeMonte) for infringement of the
109 patent.
The case was tried to a jury. The jury found the
patent invalid and infringed. The Court set aside the
jury's verdict on invalidity. Before the Court is
Sundance's Motion for Permanent Injunction. For the
reasons that follow, the motion is DENIED.
II. Background
The background of the patent and the case is well
known to the parties and will not be repeated. See
Decision on Claim Construction, filed November 18,
2003, Joint Pretrial Statement, filed April 4, 2006,
Memorandum and Order Granting Plaintiffs' Motion
for Judgment as a Matter of Law or For a New Trial,
filed September 20, 2006.
Background facts relevant to the instant motion
follow.
The 109 patent issued in 1991. Also in 1991,
DeMonte began manufacturing and marketing rolling
tarp systems for use on flatbed trailers which used a
one-piece tarp. In 1993, DeMonte switched to a
segmented tarp systems. In 1997, DeMonte began
manufacturing and marketing the Quick Draw
system.
In 2001, Sundance filed suit against DeMonte
claiming that the Quick Draw system infringes the
109 patent.
Sundance seeks a permanent injunction against
DeMonte which prevents it, and all persons in active
concert with it, from:
1. making, using, selling, offering for sale, and/or
importing retractable segmented cover systems used
with a truck trailer, defined as: (1) the Quick Draw
system found infringing by the jury in Verdict
Question 1; and/or (2) insubstantially different
retractable segmented cover systems used with a
truck trailer; or
2. otherwise infringing, inducing infringement of, or
contributorily infringing U.S. Patent No. 5,026,109.
The 109 patent expires in three years.
Sundance has licensed the 109 patent to companies
that compete with DeMonte.
III. Analysis
© 2007 Thomson/West. No Claim to Orig. U.S. Govt. Works.

Slip Copy Page 2
Slip Copy, 2007 WL 37742 (E.D.Mich.)
(Cite as: Slip Copy)
A. Legal Standard
The Supreme Court recently made clear that when
considering whether to award permanent injunctive
relief to a prevailing plaintiff in a patent infringement
dispute, courts should apply the traditional fourfactor
test used by courts of equity. See eBay, Inc. v.
MercExchange, LLC, --- U.S. ----, ----, 126 S.Ct.
1837, 1839, 164 L.Ed.2d 641 (2006). The prevailing
plaintiff must demonstrate: “(1) that it has suffered an
irreparable injury; (2) that remedies available at law,
such as monetary damages, are inadequate to
compensate for that injury; (3) that, considering the
balance of hardships between the plaintiff and
defendant, a remedy in equity is warranted; and (4)
that the public interest would not be disserved by a
permanent injunction.” Id. The Supreme Court held
“the decision whether to grant or deny injunctive
relief rests within the equitable discretion of the
district courts, and that such discretion must be
exercised consistent with traditional principles of
equity, in patent disputes no less than in other cases
governed by such standards.” Id. at 1841. For a
further discussion of eBay, see Wendy R. Stein, The
Supreme Court eBay Decision: Eliminating Special
Rules in Patent Cases, 13 Intell. Prop. Today 18
(Oct.2006).
B. Application
1. Irreparable harm
*2 Sundance says that it will suffer irreparable harm
in the absence of issuance of an injunction because
DeMonte competes with Sundance's licensees who
have been placed at a competitive disadvantage due
to DeMonte's infringing sales. Essentially, Sundance
says that the nature of the marketplace for tarp
systems for trucks is such that an injunction is
required. This argument is not persuasive. Not only
did Sundance delay in filing suit and seeking
injunctive relief, the market for tarp systems contains
many other competitors and non-segmented cover
systems have a larger percentage over segmented
systems. Moreover, as DeMonte points out, the
segmented cover is but one feature of its Quick Draw
system. Thus, it cannot be said that Sundance's
licensees are losing sales to DeMonte expressly
because of its infringement of the segmented cover. It
is possible that lost sales are due to a desire for other
features of the Quick Draw system or are sales lost to
other competitors in the marketplace. Sundance
simply cannot tie alleged lost sales to the nature of
DeMonte's infringement. FN2
FN2. The question of DeMonte's
infringement is still open. First, damages
have yet to be determined and are the
subject of another trial and cross motions for
partial summary judgment on the issue of
laches Second, DeMonte has filed a motion
for judgment as a matter of law seeking to
set aside the jury's verdict. Although
Sundance has yet to file a response, it
appears that the motion is not without its
difficulties.
2. Adequacy of Remedies Available at Law
Sundance says that money damages are not adequate
again because of the nature of the competition
between DeMonte and Sundance's licensees. This
fact does not establish an inadequate remedy at law.
Indeed, Sundance licenses the 109 patent to others,
and offered to license it to DeMonte prior to filing
suit against it, thus demonstrating that money
damages are adequate. Their conduct against
DeMonte and others (Aero) indicates an interest only
in obtaining money damages against accused
infringers.
3. Balance of Hardships
Sundance says that the hardships weigh in its favor
because it has endured a trial and protracted
reexamination proceedings and now has a verdict in
their favor. DeMonte, however, says that it will suffer
hardship if an injunction is entered, which would
affect it ability to compete with other tarp
manufacturers and could force it out of business.
Under these circumstances, the balance of harms
favors DeMonte.
4. Public Interest
Although the public has an interest in redressing
infringement, due to the fact that a injunction would
harm third parties (DeMonte's employees and
customers) and given the nature of the marketplace,
this factor does not weigh in Sundance's favor.
SO ORDERED.
© 2007 Thomson/West. No Claim to Orig. U.S. Govt. Works.

Slip Copy Page 3
Slip Copy, 2007 WL 37742 (E.D.Mich.)
(Cite as: Slip Copy)
E.D.Mich.,2007.
Sundance, Inc. v. DeMonte Fabricating Ltd.
Slip Copy, 2007 WL 37742 (E.D.Mich.)
Briefs and Other Related Documents (Back to top)
• 2006 WL 2032803 (Trial Motion, Memorandum
and Affidavit) Defendants' Motion for Partial
Summary Judgment (Jun. 30, 2006) Original Image
of this Document (PDF)
• 2006 WL 1733271 (Trial Motion, Memorandum
and Affidavit) Plaintiffs' Objections to Order Staying
Proceedings (May 9, 2006) Original Image of this
Document (PDF)
• 2006 WL 1355649 (Trial Motion, Memorandum
and Affidavit) Plaintiffs' reply in support of their
motion in limine for an order to preclude testimony at
trial by defendants' designated expert, attorney daniel
h. Bliss (Apr. 14, 2006) Original Image of this
Document (PDF)
• 2006 WL 1355650 (Trial Motion, Memorandum
and Affidavit) Plaintiffs' Brief in Response
Defendants' Motion Regarding what Examples of
their Products the Parties Can Bring to a View in this
Matter (Apr. 14, 2006) Original Image of this
Document (PDF)
• 2006 WL 1327920 (Trial Motion, Memorandum
and Affidavit) Defendant's Response to Plaintiffs'
Motion in Limine for an Order to Preclude
Testimony at Trial by Dennis Pedder, PTO Examiner
(Apr. 10, 2006) Original Image of this Document
(PDF)
• 2006 WL 1355645 (Trial Motion, Memorandum
and Affidavit) Defendants' Brief in Reply in
Opposition to Plaintiffs' Motion in Limine to
Preclude Reference to Inequitable Conduct Claims in
the Presence of the Jury (Apr. 10, 2006) Original
Image of this Document (PDF)
• 2006 WL 1355646 (Trial Motion, Memorandum
and Affidavit) Plaintiffs' Response to Defendants'
Motion for Partial Summary Judgment (Apr. 10,
2006) Original Image of this Document (PDF)
• 2006 WL 1355647 (Trial Motion, Memorandum
and Affidavit) Defendants' Reply in Opposition to
Plaintiffs' Brief in Support of Plaintiffs' Motion in
Limine re Testimony at Trial by Humphrey Mosley
(Apr. 10, 2006) Original Image of this Document
(PDF)
• 2006 WL 1355648 (Trial Motion, Memorandum
and Affidavit) Defendant's Response to Plaintiff's
Motion in Limine for an Order to Preclude
Testimony at Trial by Defendant's Designated Expert.
Attorney Daniel H. Bliss (Apr. 10, 2006) Original
Image of this Document (PDF)
• 2006 WL 1035533 (Trial Motion, Memorandum
and Affidavit) Brief in Support of Plaintiffs' Motion
in Limine to Preclude Reference to Inequitable
Conduct Claims in the Presence of the Jury (Mar. 28,
2006) Original Image of this Document (PDF)
• 2006 WL 1035534 (Trial Motion, Memorandum
and Affidavit) Plaintiffs' Motion in Limine re
Testimony at Trial of Market Share or Power (Mar.
28, 2006) Original Image of this Document (PDF)
• 2006 WL 1035535 (Trial Motion, Memorandum
and Affidavit) Plaintiffs' Motion in Limine re
Testimony at Trial by Humphrey Mosley (Mar. 28,
2006) Original Image of this Document (PDF)
• 2006 WL 1035536 (Trial Motion, Memorandum
and Affidavit) Plaintiffs' Motion in Limine for an
Order to Preclude Testimony at Trial by Defendants'
Designated Expert, Attorney Daniel H. Bliss (Mar.
28, 2006) Original Image of this Document (PDF)
• 2006 WL 1035537 (Trial Motion, Memorandum
and Affidavit) Plaintiffs' Motion in Limine for an
Order to Preclude Testimony at Trial by Dennis
Pedder, PTO Examiner (Mar. 28, 2006) Original
Image of this Document (PDF)
• 2:02cv73543 (Docket) (Sep. 4, 2002)
END OF DOCUMENT
© 2007 Thomson/West. No Claim to Orig. U.S. Govt. Works.

185 F.3d 1341 Page 1
185 F.3d 1341, 51 U.S.P.Q.2d 1556
(Cite as: 185 F.3d 1341)
Briefs and Other Related Documents
United States Court of Appeals,Federal Circuit.
GRAIN PROCESSING CORPORATION, Plaintiff-
Appellant,
v.
AMERICAN MAIZE-PRODUCTS COMPANY,
Defendant-Appellee.
No. 98-1081.
Aug. 4, 1999.
Holder of patent on waxy starch hydrolysate brought
infringement claims against competitor. The United
States District Court for the Northern District of
Indiana, James S. Parsons, J., held some of
defendant's products infringing, and appeal was
taken. The Court of Appeals, 840 F.2d 902, reversed
and remanded. On appeal after remand, the Court of
Appeals vacated order amending injunction, 932 F.2d
981, and again remanded. Following trial on
damages, the District Court, Easterbrook, Circuit
Judge, sitting by designation, awarded patent holder
reasonable royalty, 893 F.Supp. 1386, and holder
appealed. The Court of Appeals, 108 F.3d 1392,
remanded for reconsideration of lost profits issue. On
remand, the District Court, Easterbrook, Circuit
Judge, 979 F.Supp. 1233, again held that holder was
not entitled to lost profit damages and awarded
royalty instead. Holder appealed. The Court of
Appeals, Rader, Circuit Judge, held that: (1) fact that
competitor's product, as made by noninfringing
process, was not sold on the market during
infringement period did not render that product
unavailable, and (2) finding that such product was
available and acceptable to consumers, and thus
precluded award of lost profits, was not clearly
erroneous.
Affirmed.
West Headnotes
[1] Patents 291 319(1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k319 Damages
291k319(1) k. In General. Most Cited
Cases
District court must exercise sound discretion to
determine the amount of damages for patent
infringement, based upon its underlying factual
findings and legal conclusions.
[2] Patents 291 324.55(5)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k324 Appeal
291k324.55 Questions of Fact, Verdicts,
and Findings
291k324.55(5) k. Issues of
Infringement. Most Cited Cases
Court of Appeals reviews the district court's damages
decision, in a patent infringement suit, for an
erroneous conclusion of law, clearly erroneous
factual findings, or a clear error of judgment
amounting to an abuse of discretion.
[3] Patents 291 319(1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k319 Damages
291k319(1) k. In General. Most Cited
Cases
Under statute governing award of damages for patent
infringement, phrase “damages adequate to
compensate” means full compensation for any
damages the patent owner suffered as a result of the
infringement. 35 U.S.C.A. § 284.
[4] Patents 291 318(1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k318 Profits
291k318(1) k. In General. Most Cited
Cases
Under statute governing award of damages for patent
infringement, full compensation includes any
foreseeable lost profits the patent owner can prove.
35 U.S.C.A. § 284.
[5] Patents 291 318(2)
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185 F.3d 1341 Page 2
185 F.3d 1341, 51 U.S.P.Q.2d 1556
(Cite as: 185 F.3d 1341)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k318 Profits
291k318(2) k. Profits in Addition to
Damages. Most Cited Cases
To recover lost profits for patent infringement, the
patent owner must show causation in fact,
establishing that, but for the infringement, he would
have made additional profits. 35 U.S.C.A. § 284.
[6] Patents 291 318(2)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k318 Profits
291k318(2) k. Profits in Addition to
Damages. Most Cited Cases
When basing alleged lost profits on lost sales, patent
owner has an initial burden to show a reasonable
probability that he would have made the asserted
sales but for the infringement; once the patent owner
establishes a reasonable probability of “but for”
causation, the burden then shifts to the accused
infringer to show that the patent owner's “but for”
causation claim is unreasonable for some or all of the
lost sales. 35 U.S.C.A. § 284.
[7] Patents 291 318(3)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k318 Profits
291k318(3) k. Measure of Profits in
General. Most Cited Cases
Fact that competitor's product, as made by
alternative, noninfringing process, was not sold on
the market during period that patent was infringed by
product as it was made by infringing processes did
not render product as made by noninfringing process
unavailable, for purpose of patent holder's claim for
lost profits. 35 U.S.C.A. § 284.
[8] Patents 291 318(1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k318 Profits
291k318(1) k. In General. Most Cited
Cases
To be acceptable noninfringing substitute which
precludes award of lost profits in patent infringement
action, the noninfringing product or process must
have been available or on the market at the time of
infringement. 35 U.S.C.A. § 284.
[9] Patents 291 318(3)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k318 Profits
291k318(3) k. Measure of Profits in
General. Most Cited Cases
In reconstructing the market to determine what
patentee would have made if infringement had not
occurred, for purpose of claim of lost profits,
patentee must project economic results that did not
occur, and, to prevent the hypothetical from lapsing
into pure speculation, there must be sound economic
proof of the nature of the market and likely outcomes
with infringement factored out of the economic
picture. 35 U.S.C.A. § 284.
[10] Patents 291 318(1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k318 Profits
291k318(1) k. In General. Most Cited
Cases
A fair and accurate reconstruction of the market that
would have existed if no patent infringement had
occurred, upon patentee's claim of lost profits, must
take into account, where relevant, alternative actions
the infringer foreseeably would have undertaken had
he not infringed. 35 U.S.C.A. § 284.
[11] Patents 291 318(1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k318 Profits
291k318(1) k. In General. Most Cited
Cases
Findings that competitor's maltodextrin product, as
made by alternative, noninfringing process, was
available during period of patent infringement by
product as it was made by infringing processes, and
that consumers would consider product made by
noninfringing process an acceptable substitute, were
not clearly erroneous, and thus precluded patent
holder's claim for lost profits; competitor had
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185 F.3d 1341 Page 3
185 F.3d 1341, 51 U.S.P.Q.2d 1556
(Cite as: 185 F.3d 1341)
necessary chemical materials, equipment, know-how
and experience, as well as economic incentive, to
produce product made by noninfringing process
during period of infringement, and consumers'
demand was not affected by process used. 35
U.S.C.A. § 284.
[12] Patents 291 318(1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k318 Profits
291k318(1) k. In General. Most Cited
Cases
Critical time period for determining availability of a
noninfringing alternative, which precludes award of
lost profits for patent infringement, is the period of
infringement for which the patent owner claims
damages, that is, the accounting period. 35 U.S.C.A.
§ 284.
[13] Patents 291 318(1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k318 Profits
291k318(1) k. In General. Most Cited
Cases
A patent infringer's act of switching to a
noninfringing substitute after the accounting period
does not alone show availability of the noninfringing
substitute during this critical time, for purpose of
defeating patentee's claim for lost profits. 35
U.S.C.A. § 284.
[14] Patents 291 318(1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k318 Profits
291k318(1) k. In General. Most Cited
Cases
When alleged, noninfringing alternative is not on the
market during accounting period for which patentee
claims damages, trial court may reasonably infer that
it was not available as a noninfringing substitute at
that time, for purpose of patentee's claim for lost
profits; accused infringer then has burden to
overcome inference by showing that substitute was
available during accounting period, and mere
speculation or conclusory assertions will not suffice
to overcome the inference. 35 U.S.C.A. § 284.
[15] Patents 291 318(1)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k318 Profits
291k318(1) k. In General. Most Cited
Cases
Consumer demand defines the relevant market and
relative substitutability among products therein, for
purpose of claim that noninfringing product was
available during period of patent infringement,
thereby precluding award of lost profits; important
factors shaping demand may include consumers'
intended use for patentee's product, similarity of
physical and functional attributes of patentee's
product to alleged competing products, and price,
and, where alleged substitute differs from patentee's
product in one or more of these respects, patentee
often must adduce economic data supporting its
theory of the relevant market in order to show “but
for” causation. 35 U.S.C.A. § 284.
Patents 291 328(2)
291 Patents
291XIII Decisions on the Validity, Construction,
and Infringement of Particular Patents
291k328 Patents Enumerated
291k328(2) k. Original Utility. Most Cited
Cases
3,849,194. Cited.
*1343 Geoffrey G. Gilbert, McBride, Baker & Coles,
of Chicago, Illinois, argued for plaintiff-appellant.
With him on the brief was Marc L. Fogelberg.
Robert L. Baechtold, Fitzpatrick, Cella, Harper &
Scinto, of New York, New York, argued for
defendant-appellee. With him on the brief were
Nicholas N. Kallas and Dominick A. Conde.
Before RADER, Circuit Judge, FRIEDMAN, Senior
Circuit Judge, and BRYSON, Circuit Judge.
RADER, Circuit Judge.
The United States District Court for the Northern
District of Indiana denied Grain Processing
Corporation lost profits for American Maize-
Products' infringement of U.S. Patent No. 3,849,194
(the '194 patent). Grain Processing Corp. v.
American Maize-Products Co., 979 F.Supp. 1233, 44
USPQ2d 1782 (N.D.Ind.1997) (Grain Processing
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185 F.3d 1341 Page 4
185 F.3d 1341, 51 U.S.P.Q.2d 1556
(Cite as: 185 F.3d 1341)
VIII ). The district court instead awarded Grain
Processing a 3% royalty on American Maize's
infringing sales. Id.; see also Grain Processing
Corp. v. American Maize-Products Co., 893 F.Supp.
1386, 1396, 37 USPQ2d 1299, 1307 (N.D.Ind.1995)
(Grain Processing VI ), rev'd, Nos. 95-1506, 95-
1507, 108 F.3d 1392, 1997 WL 71726 (Fed.Cir.
Feb.20, 1997) (nonprecedential) (Grain Processing
VII ).
The district court found that American Maize proved
that a noninfringing substitute was available, though
not on the market or for sale, during the period of
infringement. The court found further that this
substitute was acceptable to all purchasers of the
infringing product and concluded that American
Maize rebutted the inference of “but for” causation
for Grain Processing's alleged lost sales. Upholding
the district court's findings and conclusions, this court
affirms.
I.
This appeal culminates the lengthy and complex
history of this case, spanning more than eighteen
years and eight prior judicial opinions, three by this
court. The patent featured in this infringement suit
involves maltodextrins, a versatile family of food
additives made from starch. Commercial food
manufacturers purchase hundreds of millions of
pounds of maltodextrins annually from producers
such as Grain Processing and American Maize.
Maltodextrins serve well as food additives because
they are bland in taste and clear in solution. They do
not affect the natural taste or color of other
ingredients in food products. Maltodextrins also
improve the structure or behavior of food products.
For instance, they inhibit crystal growth, add body,
improve binding and viscosity, and preserve food
properties in low temperatures. Consequently, food
manufacturers use maltodextrins in a wide variety of
products such as frostings, syrups, drinks, cereals,
and frozen foods.
Maltodextrins belong to a category of chemical
products known as “starch hydrolysates.”*1344
Producers make starch hydrolysates by putting starch
through hydrolysis, a chemical reaction with water.
Hydrolysis breaks down the starch and converts some
of it to dextrose. FN1 With adjustments, this process
yields more dextrose. For instance, additional
enzymes, time extensions, and increases in
temperature or pH enhance the reaction. After
hydrolysis, the producer typically refines, spraydries,
and packages the starch hydrolysate for sale in
powder form.
FN1. More specifically, a starch molecule is
a complex carbohydrate, i.e., it is a chain of
carbohydrate molecules, (C6 H10 O5) n ,
where n is the number of molecules in the
chain. Hydrolysis breaks the bonds
between some of the C6 H10 O5 molecules
and converts them to dextrose, C6 H12 O6.
Maltodextrins are starch hydrolysates that have a
“dextrose equivalence” of less than 20. Dextrose
equivalence (D.E.) is a percentage measurement of
the “reducing sugars content” of the starch
hydrolysate. D.E. reflects the degree to which the
hydrolysis process broke down the starch and
converted it into dextrose. Converting more starch
into dextrose increases the D.E. of the resulting
starch hydrolysate. Hence, pure starch has a D.E. of
zero, pure dextrose a D.E. of 100. The D.E. value
indicates functional properties of a maltodextrin. A
15 D.E. maltodextrin, for example, is slightly sweeter
and more soluble than a 5 D.E. maltodextrin. On the
other hand, the 5 D.E. maltodextrin has more
prevalent binding, bodying, and crystal inhibiting
properties.
Grain Processing is the assignee of the '194 patent,
“Low D.E. Starch Conversion Products,” which
claims maltodextrins with particular attributes, and
processes for producing them. The claimed
invention represents improvements in the “heavily
explored” field of starch hydrolysates. See Grain
Processing Corp. v. American Maize-Products Co.,
No. 81-0237, slip op. at 1 (N.D.Ind. March 16, 1987)
(Grain Processing I ), rev'd, 840 F.2d 902, 5
USPQ2d 1788 (Fed.Cir.1988) (Grain Processing II ).
Claim 12, the sole claim on appeal, reads:
12. A waxy starch hydrolysate having
a dextrose equivalent value between about 5 and
about 25;
a descriptive ratio greater than about 2, said
descriptive ratio being the quotient obtained by
dividing the sum of the percentage of saccharides,
dry basis, having a degree of polymerization of 1 to
6, by the dextrose equivalent value;
a monosaccharide content in the range of from about
0.1 percent by weight, to about 2.4 percent by weight,
dry basis;
a dissaccharide content in the range of from about 1.3
percent to about 9.7 percent, by weight, dry basis;
and
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185 F.3d 1341 Page 5
185 F.3d 1341, 51 U.S.P.Q.2d 1556
(Cite as: 185 F.3d 1341)
being further characterized as capable of producing
an aqueous solution of exceptional clarity and
substantially complete lack of opaqueness when said
hydrolysate is added to water.
(Emphasis added.)
Grain Processing has manufactured and sold a line of
maltodextrins under the “Maltrin” brand name since
1969. The Maltrin line includes “Maltrin M100,” a
10 D.E. maltodextrin. None of the Maltrin products,
including M100, fall within claim 12 because they
are all made from a non-waxy starch. See Grain
Processing I, No. 81-0237, slip op. at 65 (construing
claim 12 to require a waxy starch, as recited in the
preamble).
American Maize began selling maltodextrins in 1974.
It made and sold several types of maltodextrins,
including “Lo-Dex 10,” a 10 D.E. waxy starch
maltodextrin. American Maize sold Lo-Dex 10
(called Fro-Dex 10 before 1982) during the entire
time Grain Processing owned the '194 patent rights,
from 1979 until the patent expired in 1991. During
this time, however, *1345 American Maize used four
different processes for producing Lo-Dex 10. The
changes in American Maize's production processes,
and the slight chemical differences in the Lo-Dex 10
from each process, are central to the lost profits issue
in this appeal.
American Maize used a first process (Process I) from
June 1974 to July 1982. In Process I, American
Maize used a single enzyme (an alpha amylase) to
facilitate starch hydrolysis. American Maize
controlled the reaction to produce a starch
hydrolysate with the desired properties, including
D.E. value.
Grain Processing sued American Maize for
infringement on May 12, 1981, based on American
Maize's Lo-Dex 10 sales as well as sales of two other
maltodextrins - Lo-Dex 5 and ARD 2370. Grain
Processing asserted all fourteen claims of the '194
patent, including product and process claims. The
district court bifurcated the infringement and
damages issues for trial.
In August 1982, while the suit was pending,
American Maize reduced the amount of alpha
amylase enzyme in its process to lower its production
costs. To achieve the same end result with less
enzyme, American Maize continued the reaction
longer. American Maize used this process (Process
II) exclusively to produce Lo-Dex 10 from August
1982 to February 1988. Grain Processing asserted in
its lawsuit that Process II Lo-Dex 10 also infringed
the '194 patent.
American Maize contended that Lo-Dex 10 (by both
Processes I and II) did not infringe claim 12 of the
'194 patent because it did not have a “descriptive
ratio greater than about 2,” as required by the
claim. FN2 Descriptive ratio (D.R.) is a function of the
D.E. measurement. According to the formula in
claim 12, D.R. is inversely proportional to D.E.
Because different scientific tests yield slightly
different D.E. measurements, the resulting D.R.
values derived therefrom also vary slightly.
FN2. The district court later interpreted the
“about 2” limitation to require a minimum
D.R. of 1.9, a finding the parties do not
challenge.
When Grain Processing accused American Maize of
infringement, Grain Processing used the “Schoorl
test” for measuring the D.E. of Lo-Dex 10.
American Maize, on the other hand, used the “Lane-
Eynon test,” which it believed was the “industry
standard,” to measure D.E. The Schoorl test tends to
yield a lower D.E. and therefore a higher D.R. than
Lane-Eynon. Under the Lane-Eynon test, American
Maize's measurements revealed that Lo-Dex 10 did
not infringe claim 12, because all of its Lo-Dex 10
samples had a D.R. of less than 1.9. Grain
Processing's Schoorl tests on the same samples,
however, yielded a D.R. of greater than 2.
Following a bench trial, the district court held that
Lo-Dex 10 did not infringe any of the claims because
it did not meet the “exceptional clarity” limitation.
This court reversed, holding that Lo-Dex 10 met the
“exceptional clarity” limitation and therefore
infringed claim 12 and its dependent claims 13-14.
Grain Processing II, 840 F.2d at 911. This court's
decision, like the district court's, did not resolve the
discrepancy between tests for measuring D.E. value.
The district court subsequently entered an injunction
on October 21, 1988, prohibiting American Maize
from making or selling Lo-Dex 10 or any other waxy
starch hydrolysate that infringed claims 12-14.
In response to the injunction, American Maize
developed yet another process for producing Lo-Dex
10. In this new process (Process III), American
Maize used more alpha amylase, adjusted the
temperature and pH, and reduced the reaction time.
American Maize used Process III exclusively to
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produce Lo-Dex 10 from March 1988 to April 1991.
*1346 American Maize believed Process III would
yield a more uniform, noninfringing output of Lo-
Dex 10. See Grain Processing VI, 893 F.Supp. at
1391. In fact, American Maize was “determined to
avoid shipping a single bag of Lo-Dex 10 with a D.R.
exceeding 1.9.” See id. Process III worked as
American Maize intended. American Maize's
measurements - using the Lane-Eynon test - showed
that Process III Lo-Dex 10 samples all had
descriptive ratios of less than 1.9 and therefore did
not infringe. See id. Moreover, American Maize's
customers did not discern any difference between
Process III Lo-Dex 10 and Lo-Dex 10 from Processes
I or II. See id.
In 1990, Grain Processing tested commercial samples
of American Maize's Process III Lo-Dex 10. Grain
Processing again used the Schoorl test to measure
D.E. Grain Processing's measurements showed that
American Maize's Process III output had a D.R. value
of greater than 1.9 and therefore infringed. Grain
Processing filed a contempt motion in the district
court.
The district court initially held American Maize in
contempt for continuing to sell an infringing product.
Grain Processing Corp. v. American Maize-Products
Co., No. 81-0237 (N.D.Ind. May 15, 1990) (Grain
Processing III ), modified, No. 81-0237, (N.D.Ind.
July 16, 1990) (Grain Processing IV ), rev'd, 932
F.2d 981, 21 USPQ2d 1474 (Fed.Cir.1991)
(nonprecedential) (Grain Processing V ). However,
the district court modified the order in 1991 to allow
American Maize to use any scientifically acceptable
method to show noninfringement. Grain Processing
IV, No. 81-0237. Because American Maize's
Process III output consistently had a D.R. of less than
1.9 using Lane-Eynon, the district court ruled that it
did not infringe. Id. Grain Processing appealed.
This court reversed in a nonprecedential opinion.
Grain Processing V, 21 USPQ2d 1474. Because the
prosecution history of the '194 patent indicates that
the inventor used the Schoorl test to measure D.E. of
his invention, this court held that the Schoorl test, not
Lane-Eynon, determines the relevant values in this
case. Id. at 1477.
American Maize then adopted a fourth process
(Process IV) for producing Lo-Dex 10. In Process
IV, American Maize added a second enzyme,
glucoamylase, to the reaction. Glucoamylase breaks
down starch to a shorter average saccharide length.
This shorter saccharide length yields a smaller D.R.
without affecting D.E.
From the time American Maize began experimenting
with the glucoamylase-alpha amylase combination,
or the “dual enzyme method,” it took only two weeks
to perfect the reaction and begin mass producing Lo-
Dex 10 using Process IV. See Grain Processing VI,
893 F.Supp. at 1391. According to the finding of the
district court, this two-week development and
production time is “practically instantaneous” for
large-scale production. Id. American Maize simply
experimented with different combinations of
glucoamylase and alpha amylase, along with pH,
heat, and time of the reaction. See id. American
Maize did not change any equipment, source
starches, or other ingredients from Process III. See id.
Glucoamylase has been commercially available and
its effect in starch hydrolysis widely known since the
early 1970's, before the '194 patent issued. See id.
American Maize had not used Process IV to produce
Lo-Dex earlier because the high cost of glucoamylase
makes Process IV more expensive than the other
processes. See id. at 1392.
The parties agree that Process IV yielded only
noninfringing Lo-Dex 10 and that consumers
discerned no difference between Process IV Lo-Dex
10 and Lo-Dex 10 made by Processes I-III. American
Maize used Process IV exclusively to produce*1347
Lo-Dex 10 from April 1991 until the '194 patent
expired in November 1991, and then switched back
to the cheaper Process III.
The district court commenced the damages portion of
the trial on July 10, 1995. Grain Processing claimed
lost profits in the form of lost sales of Maltrin M100,
price erosion, and American Maize's accelerated
market entry after the patent expired. Grain
Processing further claimed that, for any of American
Maize's infringing sales not covered by a lost profits
award, Grain Processing should receive a 28%
royalty. After a three day bench trial, the district
court denied lost profits and determined that a 3%
reasonable royalty was adequate to compensate Grain
Processing. Grain Processing VI, 893 F.Supp. at
1392-93. The royalty applies to all of American
Maize's Lo-Dex 10 sales from May 12, 1981 (when
Grain Processing filed suit) FN3 to April 1991 (when
American Maize converted to Process IV, thereby
producing a noninfringing product).
FN3. Grain Processing was not entitled to
damages before this date because neither
Grain Processing nor its predecessor in
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interest had marked the Mor-Rex products
with the patent number pursuant to 35
U.S.C. § 287(a) (1994). See Grain
Processing VI, 893 F.Supp. at 1393-95.
The trial court determined that Grain Processing
could not establish causation for lost profits, because
American Maize “could have produced” a
noninfringing substitute 10 D.E. maltodextrin using
Process IV. Grain Processing VI, 893 F.Supp. at
1391-92. “With infringing Lo-Dex 10 banned, the
customers' substitute is non-infringing Lo-Dex 10.”
Id. at 1392 (emphasis added). American Maize did
not actually produce and sell this noninfringing
substitute until April 1991, seven months before the
'194 patent expired, but the district court nevertheless
found that its availability “scotches [Grain
Processing's] request for lost-profits damages.” Id.
The district court also found that American Maize's
production cost difference between infringing and
noninfringing Lo-Dex 10 effectively capped the
reasonable royalty award. American Maize showed
that it cost only 2.3% more to make noninfringing
Process IV products than it did to make infringing
Process I-III products. See Grain Processing VI, 893
F.Supp. at 1392. The district court also found that
“buyers viewed as equivalent” the Process I-III and
Process IV output: “Lo-Dex 10 made by Process IV
had a lower D.R. [which is what makes it
noninfringing] ... but no one argues that any customer
cared a whit about the product's descriptive ratio.”
Id. at 1390. The district court concluded that under
these facts, American Maize, when faced with a
hypothetical offer to license the '194 patent in 1974
(or to renegotiate the rate in 1979, when Grain
Processing acquired the patent rights and its ability to
collect damages began), would not have paid more
than a 3% royalty rate. The court reasoned that this
rate would reflect the cost difference between
Processes I-III and Process IV, while also taking into
account possible cost fluctuations (due to fluctuating
enzyme prices) and the elimination of American
Maize's risk of producing an infringing product,
despite its best efforts. Id. at 1393. The court
concluded that if Grain Processing had insisted on a
rate greater than 3% in the hypothetical negotiations,
American Maize instead would have chosen to invest
in producing noninfringing Lo-Dex 10 with Process
IV. Id.
Grain Processing appealed the district court's denial
of lost profits, alleging that American Maize cannot
escape liability for lost profits on the basis of “a
noninfringing substitute that did not exist during, and
was not developed until after, the period of
infringement.” Grain Processing VII, 1997 WL
71726, at **1. This court reversed and remanded. Id.
This court observed*1348 that “[t]he [district] court
denied [Grain Processing's] request for lost profits
because [American Maize] developed a new process
of producing Lo-Dex 10 in 1991 [after years of
infringement] that did not infringe the '194 patent.”
Id. This court noted, however, that the mere fact of
“switching to a noninfringing product years after the
period of infringement [does] not establish the
presence of a noninfringing substitute during the
period of infringement.” Id. at **2 (citing State
Indus., Inc. v. Mor-Flo Industries, Inc., 883 F.2d
1573, 1579, 12 USPQ2d 1026, 1030 (Fed.Cir.1989);
Panduit Corp. v. Stahlin Brothers Fibre Works, Inc.,
575 F.2d 1152, 1160-62, 197 USPQ 726, 734-35 (6th
Cir.1978)). This court noted that a product or
process must be “available or on the market at the
time of infringement” to qualify as an acceptable
non-infringing substitute. Grain Processing VII,
1997 WL 71726, at **2 (emphasis added).
On remand, the district court again denied Grain
Processing lost profits. The district court found that
Process IV was “available” throughout the period of
infringement. Grain Processing VIII, 979 F.Supp. at
1235. This factual finding, the district court
explained, was not based merely on “the simple fact
of switching [to Process IV]” but rather on several
subsidiary factual findings regarding the technology
of enzyme-assisted starch hydrolysis and the price
and market structure for the patentee's and accused
infringer's products. Id. at 1234-35. The trial court
found that American Maize could obtain all of the
materials needed for Process IV, including the
glucoamylase enzyme, before 1979, and that the
effects of the enzymes in starch hydrolysis were well
known in the field by that time. Id. American Maize
also had all of the necessary equipment, know-how,
and experience to implement Process IV whenever it
chose to do so during the time of infringement. See
id. “The sole reason [American Maize did not use
Process IV to produce Lo-Dex 10 prior to 1991] was
economic: glucoamalyse is more expensive than the
alpha amylase enzyme that [American Maize] had
been using.” Id. American Maize did not make the
substitution sooner because its test results using the
Lane-Eynon method convinced it that it was not
infringing. See id.
The district court concluded that “the profit lost from
infringement is the cost and market price difference
attributable to using glucoamylase.” Grain
Processing VIII, 979 F.Supp. at 1237. The court did
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not further address the amount of damages, having
already found in Grain Processing VI that the
infringement did not affect the market price of Lo-
Dex 10, and having figured the 2.3% cost increase
into the 3% royalty award.
The district court also went on to explain its denial of
lost profits “from a different angle.” Grain
Processing VIII, 979 F.Supp. at 1237. The district
court stated that Panduit and Rite-Hite Corp. v.
Kelley Co., Inc., 56 F.3d 1538, 35 USPQ2d 1065
(Fed.Cir.1995) (en banc) “identify demand for the
patented product as an essential element of the patent
holder's lost-profits claim.” Grain Processing VIII,
979 F.Supp. at 1237. The district court recognized
that there was “substantial demand for D.E. 10
maltodextrins.” Id. However, the district court stated
the dispositive question as “whether there is
economically significant demand for a product
having all ... attributes [of the claim in suit],” i.e.,
whether consumers demand every claimed feature.
Id. The court found no such demand in this case
because “[t]wo of the essential elements of the claim
- that the starch be ‘waxy’ and that the ‘descriptive
ratio [be] greater than about 2’ - are irrelevant to
consumers.” Id. The court concluded that Grain
Processing “does not have a patent on D.E. 10
maltodextrins, the economically significant product,
and therefore cannot recover lost profits damages on
account of [American Maize's] infringement.” Id. at
1238.
*1349 Grain Processing appeals the district court's
decision.
II.
[1][2] The district court must exercise sound
discretion to determine the amount of damages, based
upon its underlying factual findings and legal
conclusions. See State Indus., 883 F.2d at 1576-77.
This court reviews the district court's damages
decision for “an erroneous conclusion of law, clearly
erroneous factual findings, or a clear error of
judgment amounting to an abuse of discretion.” Id. at
1577; Rite-Hite, 56 F.3d at 1543-44.
[3][4] Upon proof of infringement, Title 35, Section
284 provides that “the court shall award [the patent
owner] damages adequate to compensate for the
infringement but in no event less than a reasonable
royalty for the use made of the invention by the
infringer.” 35 U.S.C. § 284 (1998). The phrase
“damages adequate to compensate” means “full
compensation for ‘any damages' [the patent owner]
suffered as a result of the infringement.” General
Motors Corp. v. Devex Corp., 461 U.S. 648, 654, 103
S.Ct. 2058, 2062, 76 L.Ed.2d 211, 217 USPQ 1185,
1188 (1983). Full compensation includes any
foreseeable lost profits the patent owner can prove.
See Rite-Hite, 56 F.3d at 1545-47.
[5][6] To recover lost profits, the patent owner must
show “causation in fact,” establishing that “but for”
the infringement, he would have made additional
profits. See King Instruments Corp. v. Perego, 65
F.3d 941, 952, 36 USPQ2d 1129, 1137
(Fed.Cir.1995). When basing the alleged lost profits
on lost sales, the patent owner has an initial burden to
show a reasonable probability that he would have
made the asserted sales “but for” the infringement.
See id.; Rite-Hite, 56 F.3d at 1545. Once the patent
owner establishes a reasonable probability of “but
for” causation, “the burden then shifts to the accused
infringer to show that [the patent owner's ‘but for’
causation claim] is unreasonable for some or all of
the lost sales.” Id. at 1544.
[7] At trial, American Maize proved that Grain
Processing's lost sales assertions were unreasonable.
The district court adopted Grain Processing's initial
premise that, because Grain Processing and American
Maize competed head-to-head as the only significant
suppliers of 10 D.E. maltodextrins, consumers
logically would purchase Maltrin 100 if Lo-Dex 10
were not available. See Lam, Inc. v. Johns-Manville
Corp., 718 F.2d 1056, 1065, 219 USPQ 670, 675
(Fed.Cir.1983) (holding that the patent owner may
satisfy his initial burden by inference in a twosupplier
market). However, the district court found
that American Maize proved that Process IV was
available and that Process IV Lo-Dex 10 was an
acceptable substitute for the claimed invention. In
the face of this noninfringing substitute, Grain
Processing could not prove lost profits. See Grain
Processing VIII, 979 F.Supp. at 1234-35.
[8] American Maize concedes that it did not make or
sell Lo-Dex 10 from Process IV until 1991, after the
period of infringement. However, an alleged
substitute not “on the market” or “for sale” during the
infringement can figure prominently in determining
whether a patentee would have made additional
profits “but for” the infringement. As this court
stated in Grain Processing VII, “to be an acceptable
non-infringing substitute, the product or process must
have been available or on the market at the time of
infringement.” Grain Processing VII, 1997 WL
71726, at **2 (emphasis added). This statement is
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an apt summary of this court's precedent, which
permits available alternatives - including but not
limited to products on the market - to preclude lost
profits damages.
*1350 In Aro Manufacturing, the Supreme Court
stated that the statutory measure of “damages” is “the
difference between [the patent owner's] pecuniary
condition after the infringement, and what his
condition would have been if the infringement had
not occurred.” Aro Mfg. Co. v. Convertible Top
Replacement Co., 377 U.S. 476, 507, 84 S.Ct. 1526,
1543, 12 L.Ed.2d 457, 141 USPQ 681, 694 (1964)
(plurality opinion), quoting Yale Lock Mfg. Co. v.
Sargent, 117 U.S. 536, 552, 6 S.Ct. 934, 942, 29
L.Ed. 954 (1886). The determinative question, the
Supreme Court stated, is: “had the Infringer not
infringed, what would the Patent Holder-Licensee
have made” Aro, 377 U.S. at 507, 84 S.Ct. 1526
(quoting Livesay Window Co. v. Livesay Indus., Inc.,
251 F.2d 469, 471, 116 USPQ 167, 168 (5th
Cir.1958)); see also Brooktree Corp. v. Advanced
Micro Devices, Inc., 977 F.2d 1555, 1579, 24
USPQ2d 1401, 1418 (Fed.Cir.1992). The “but for”
inquiry therefore requires a reconstruction of the
market, as it would have developed absent the
infringing product, to determine what the patentee
“would ... have made.” See Grain Processing VIII,
979 F.Supp. at 1236.
[9] Reconstructing the market, by definition a
hypothetical enterprise, requires the patentee to
project economic results that did not occur. To
prevent the hypothetical from lapsing into pure
speculation, this court requires sound economic proof
of the nature of the market and likely outcomes with
infringement factored out of the economic picture.
See Oiness v. Walgreen Co., 88 F.3d 1025, 1029-30,
39 USPQ2d 1304, 1307 (Fed.Cir.1996); Water
Technologies Corp. v. Calco, Ltd., 850 F.2d 660,
673, 7 USPQ2d 1097, 1107-08 (Fed.Cir.1988).
Within this framework, trial courts, with this court's
approval, consistently permit patentees to present
market reconstruction theories showing all of the
ways in which they would have been better off in the
“but for world,” and accordingly to recover lost
profits in a wide variety of forms. See, e.g., King
Instruments, 65 F.3d at 953 (upholding award for lost
sales of patentee's unpatented goods that compete
with the infringing goods); Rite-Hite, 56 F.3d at
1550 (holding that a patentee may recover lost profits
on components that have a functional relationship
with the patented invention); Brooktree Corp., 977
F.2d at 1580 (upholding award for price erosion due
to infringer's marketing activities); Minnesota
Mining & Mfg. Co. v. Johnson & Johnson
Orthopaedics, Inc., 976 F.2d 1559, 1579, 24 USPQ2d
1321, 1337 (Fed.Cir.1992) (upholding award for
price erosion due to infringing sales); State Indus.,
883 F.2d at 1580 (upholding award of lost profits in
proportion to patentee's market share of the relevant
market including acceptable noninfringing
substitutes); Paper Converting Mach. Corp. v.
Magna-Graphics Corp., 745 F.2d 11, 22, 223 USPQ
591, 599 (Fed.Cir.1984) (upholding award
compensating the patentee for its decreasing marginal
cost of producing the good, i.e., its increasing
marginal profit, as its volume of production would
have increased); Lam, 718 F.2d at 1065 (upholding
lost profits award for future lost sales, and for the
patentee's increased promotional expenses); BIC
Leisure Products, Inc. v. Windsurfing Int'l, Inc., 687
F.Supp. 134, 137-38, 9 USPQ2d 1152, 1154
(S.D.N.Y.1988), rev'd in part on other grounds, 1
F.3d 1214, 27 USPQ2d 1671 (Fed.Cir.1993)
(permitting recovery for future depressed prices, i.e.,
“projected price erosion”, and for accelerated market
reentry by the infringer). In sum, courts have given
patentees significant latitude to prove and recover
lost profits for a wide variety of foreseeable
economic effects of the infringement.
[10] By the same token, a fair and accurate
reconstruction of the “but for” market also must take
into account, where relevant, alternative actions the
infringer foreseeably would have undertaken had he
*1351 not infringed. Without the infringing product,
a rational would-be infringer is likely to offer an
acceptable noninfringing alternative, if available, to
compete with the patent owner rather than leave the
market altogether. The competitor in the “but for”
marketplace is hardly likely to surrender its complete
market share when faced with a patent, if it can
compete in some other lawful manner. Moreover,
only by comparing the patented invention to its nextbest
available alternative(s) - regardless of whether
the alternative(s) were actually produced and sold
during the infringement - can the court discern the
market value of the patent owner's exclusive right,
and therefore his expected profit or reward, had the
infringer's activities not prevented him from taking
full economic advantage of this right. Cf.
Westinghouse Elec. & Mfg. Co. v. Wagner Elec. &
Mfg. Co., 225 U.S. 604, 614-15, 32 S.Ct. 691, 694,
56 L.Ed. 1222 (1912); Mowry v. Whitney, 81 U.S.
(14 Wall.) 620, 651, 20 L.Ed. 860 (1871); King
Instrument Corp. v. Otari Corp., 767 F.2d 853, 865,
226 USPQ 402, 410-11 (Fed.Cir.1985). Thus, an
accurate reconstruction of the hypothetical “but for”
market takes into account any alternatives available
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to the infringer. See Aro, 377 U.S. at 507, 84 S.Ct.
1526; Yale Lock, 117 U.S. at 552-53, 6 S.Ct. 934;
see also robert P. Merges, Patent Law 1080 (2d
Ed.1997) (“[T]he infringer should have a chance to
argue what he or she might have done in the absence
of infringement. Obviously, if the defendant is not
permitted to present evidence of this ilk, the analysis
is quite skewed: only the patentee's ‘best case’
scenario is presented, rather than a more realistic
scenario.”); martin J. Adelman, Patent Perspectives
§ 5.2[2] (2d Ed.1998) ( “[w]here an infringer
demonstrates that it could have chosen to market a
noninfringing alternative and that it would have done
so had it known that it was infringing ... the sales that
it made of the infringing products were not sales that
the patentee would otherwise have made....”); john
W. Schlicher, Patent Law: Legal and Economic
Principles § 9.05[2][l] (1997) (“unless the law
wishes to systematically overreward patented
inventions, it is necessary to inquire about the nature
and value of the product that the infringer could have
made had he not infringed.”).
Accordingly, this court in Slimfold Manufacturing
Co. v. Kinkead Industries, Inc. held that an available
technology not on the market during the infringement
can constitute a noninfringing alternative. 932 F.2d
1453, 18 USPQ2d 1842 (Fed.Cir.1991). In Slimfold,
the patent owner (Slimfold) claimed lost profits on its
bi-fold doors with a patented pivot and guide rod
assembly. This court noted, however, that Slimfold
did not show “that the alleged infringer [Kinkead]
would not have made a substantial portion or the
same number of sales had it continued with its old
hardware or with the hardware utilized by any of the
other companies.” Id. at 1458 (emphasis added). On
the basis of this noninfringing substitute, which was
not on the market at the time of infringement, this
court affirmed the district court's denial of lost
profits. This court determined that the record
supported the district court's finding that this
noninfringing “old hardware” was available to
Kinkead at the time of the infringement.
Specifically, Kinkead and others had used the
substitute technology on other doors before the
period of infringement. See id. Furthermore,
consumers considered Kinkead's noninfringing
alternative an acceptable substitute for the infringing
doors. See id. Therefore, this court upheld the
district court's award of a “small” royalty, rather than
lost profits. Id. at 1458-59.
Several opinions of this court have noted that
“market sales” provide significant evidence of
availability as a substitute. See, e.g., Minco Inc. v.
Combustion Eng'g, Inc., 95 F.3d 1109, 1119, 40
USPQ2d 1001, 1008 (Fed.Cir.1996); *1352Zygo
Corp. v. Wyko Corp., 79 F.3d 1563, 38 USPQ2d
1281 (Fed.Cir.1996); Kaufman Co. v. Lantech, Inc.,
926 F.2d 1136, 17 USPQ2d 1828 (Fed.Cir.1991);
State Indus., 883 F.2d at 1579; Central Soya Co. v.
Geo. A. Hormel & Co., 723 F.2d 1573, 220 USPQ
490 (Fed.Cir.1983). These cases illustrate that
market sales of an acceptable noninfringing substitute
often suffice alone to defeat a case for lost profits.
Focusing exclusively on this market sales principle,
these opinions did not address availability without
market sales. See, e.g., Kaufman, 926 F.2d at 1142
(an alleged alternative product “was not an
acceptable purchase option during the infringement”)
(emphasis added); Central Soya, 723 F.2d at 1579
(“[t]he dispositive determination at trial ... was
whether or not there was an acceptable substitute on
the market.”); Panduit, 575 F.2d at 1162 (“[t]hat
Stahlin's customers, no longer able to buy the
patented product from Stahlin, were willing to buy
something else from Stahlin, does not establish that
there was on the market during the period of
infringement a product which customers in general
were ... ‘willing to buy in place of the infringing
product.’ ”) (emphasis added). Because these
previous cases addressed only market sales, they did
not consider that available substitutes, though not
literally on sale, can affect market behavior as in the
present case.
Nor does Zygo support Grain Processing's position
equating availability with offers for sale. In Zygo,
this court reviewed for clear error the district court's
factual finding that the infringer's “SIRIS”
interferometer was not an acceptable noninfringing
substitute. Zygo, 79 F.3d at 1571. Like the accused
infringer in the Slimfold case, the infringer in Zygo
had “stopped marketing” the SIRIS when it began
marketing the infringing interferometer. See id. In
the words of this court, “[t]he central damages issue
on appeal is whether ... Wyko's SIRIS interferometer
was ... an acceptable noninfringing alternative....” Id.
(emphasis added). On that “central” point, this court
noted “the insufficiency of the [district] court's
findings” that the SIRIS interferometer was not
acceptable, and observed that “the record evidence,
while sparse, suggests a contrary conclusion.” Id.
Therefore, this court remanded for additional factual
findings. Id. In addition to holding that the district
court's decision lacked sufficient factual support, this
court also opined: “[i]t is axiomatic ... that if a
device is not available for purchase, a defendant
cannot argue that the device is an acceptable
noninfringing alternative....” Id. This statement
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185 F.3d 1341 Page 11
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(Cite as: 185 F.3d 1341)
beyond the premises necessary to resolve the legal
issues in Zygo did not alter the standards for
availability applied in the earlier Slimfold case and in
subsequent cases. See Gargoyles, Inc. v. United
States, 113 F.3d 1572, 42 USPQ2d 1760
(Fed.Cir.1997) (denying lost profits because a
substitute that was not on sale was “available” to the
relevant consumer, the Army); Minco, 95 F.3d at
1119 (considering allegedly available substitutes that
were not on sale during the infringement);
Minnesota Mining & Mfg. Co., 976 F.2d at 1579
(determining that the infringer had an alternative
available from a supplier in Europe, but that it was
not acceptable). Rather, at most it reflects a finding
on the record in Zygo that availability of the
substitute in that case depended on direct market
sales.
Grain Processing asserts that permitting the infringer
to show substitute availability without market sales,
thereby avoiding lost profits, undercompensates for
infringement. Section 284, however, sets the floor
for “damages adequate to compensate for the
infringement” as “a reasonable royalty.” 35 U.S.C. §
284. Thus, the statute specifically envisions a
reasonable royalty as a form of adequate
compensation. While “damages adequate to
compensate” means “full compensation,” General
Motors, 461 U.S. at 654, 103 S.Ct. 2058, “full *1353
compensation” does not entitle Grain Processing to
lost profits in the absence of “but for” causation.
Rite-Hite, 56 F.3d at 1545. Moreover, although
Grain Processing stresses that American Maize
should not reap the benefit of its “choice” to infringe
rather than use the more expensive Process IV, Grain
Processing does not allege willful infringement and
the record shows none. See, e.g., Grain Processing
VI, 893 F.Supp. at 1391 (noting that American Maize
eliminated the infringing product “practically
instantaneous[ly”] upon becoming aware of
infringement). To the extent that Grain Processing
feels undercompensated, FN4 it must point out a
reversible error in the district court's fact-finding,
reasoning, or legal basis for denying lost profits or in
its reasonable royalty determination. FN5
FN4. The district court's 3% royalty rate
yielded damages of approximately $2.4
million; Grain Processing sought lost profits
of $35 million, which with applicable
interest presently implies an award
approaching $100 million.
FN5. The district court appears to have
conducted a thorough royalty analysis,
challenged by neither party on appeal. The
court candidly stated that the 3% rate is its
“best estimate,” an honest observation that
would apply to most reasonable royalty
analyses, given the difficulty of determining
a hypothetical agreement between parties
which did not actually agree on anything at
all. The determination is perhaps more
difficult when the patentee is not selling the
patented product, as is the case here. See In
re Mahurkar, 831 F.Supp. 1354, 1383, 28
USPQ2d 1801, 1824 (N.D.Ill.1993).
Nevertheless, the district court supported its
royalty amount with sound economic data
and with actual, observed behavior in the
market. Though both parties maintained at
trial that they would not have agreed to a
license including 3% royalties at the time of
infringement, the appropriateness of the rate
is perhaps reflected in the decision of the
parties to forego an appeal on this issue.
III.
[11] This court next turns to the district court's
findings that Process IV was in fact “available” to
American Maize for producing Lo-Dex 10 no later
than October, 1979, and that consumers would
consider Process IV Lo-Dex 10 an acceptable
substitute. This court reviews these factual findings
for clear error. See Gargoyles, 113 F.3d at 1573;
Slimfold, 932 F.2d at 1458.
[12][13][14] The critical time period for determining
availability of an alternative is the period of
infringement for which the patent owner claims
damages, i.e., the “accounting period.” See State
Indus., 883 F.2d at 1579; Panduit, 575 F.2d at 1162.
Switching to a noninfringing substitute after the
accounting period does not alone show availability of
the noninfringing substitute during this critical time.
See Panduit, 575 F.2d at 1152. When an alleged
alternative is not on the market during the accounting
period, a trial court may reasonably infer that it was
not available as a noninfringing substitute at that
time. Cf. Rite-Hite, 56 F.3d at 1545. The accused
infringer then has the burden to overcome this
inference by showing that the substitute was available
during the accounting period. Cf. id. Mere
speculation or conclusory assertions will not suffice
to overcome the inference. After all, the infringer
chose to produce the infringing, rather than
noninfringing, product. Thus, the trial court must
proceed with caution in assessing proof of the
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185 F.3d 1341 Page 12
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(Cite as: 185 F.3d 1341)
availability of substitutes not actually sold during the
period of infringement. Acceptable substitutes that
the infringer proves were available during the
accounting period can preclude or limit lost profits;
substitutes only theoretically possible will not. See
Minco, 95 F.3d at 1119.
In this case, the district court did not base its finding
that Process IV was available no later than October
1979 on speculation or possibilities, but rather on
several specific, concrete factual findings, none of
which Grain Processing challenges on appeal.*1354
The district court found that American Maize could
readily obtain all of the materials needed for Process
IV, including the glucoamylase enzyme, before 1979.
The court also found that the effects of the enzymes
in starch hydrolysis were well known in the field at
that time. Grain Processing VI, 893 F.Supp. at 1391;
Grain Processing VIII, 979 F.Supp. at 1235.
Furthermore, the court found that American Maize
had all of the necessary equipment, know-how, and
experience to use Process IV to make Lo-Dex 10,
whenever it chose to do so during the time it was
instead using Processes I, II or III. Grain Processing
VIII, 979 F.Supp. at 1235. American Maize “did not
have to ‘invent around’ the patent,” the district court
observed; “all it had to do was use a glucoamaylase
enzyme in its production process.” Id.
The trial court also explained that “the sole reason
[American Maize did not use Process IV prior to
1991] was economic: glucoamylase is more
expensive than the alpha amylase enzyme American
Maize had been using,” and American Maize
reasonably believed it had a noninfringing product.
Grain Processing VIII, 979 F.Supp. at 1235. While
the high cost of a necessary material can conceivably
render a substitute “unavailable,” the facts of this
case show that glucoamylase was not prohibitively
expensive to American Maize. The district court
found that American Maize's “substantial profit
margins” on Lo-Dex 10 were sufficient for it to
absorb the 2.3% cost increase using glucoamylase.
Id. at 1239.
Moreover, the district court's unchallenged finding
that there is no “economically significant demand for
a product having all of the [claimed] attributes”
supports its conclusion of availability. Grain
Processing VIII, 979 F.Supp. at 1237. Consumers
demand “low-dextrose maltodextrins of which the
patented product is just one exemplar.” Id. (emphasis
added). Because consumers find the “waxy” and
“descriptive ratio” elements of claim 12 “irrelevant,”
the prospect of an available, acceptable noninfringing
substitute expands because a competitor may be able
to drop or replace the “irrelevant” elements from its
product. Compare Rite-Hite, 56 F.3d 1538
(upholding lost profits award for patentee's vehicle
restraint - not covered by the patent in suit - because
the patentee could exclude alleged substitute products
with another patent) with King Instrument, 72 F.3d
855 (upholding only a partial award of lost profits for
patentee's tape rewinder - not covered by any patent -
due to the availability of alternatives acceptable to
some consumers); see also Panduit, 575 F.2d at
1156, 1160-61 (holding that consumer demand for
the “unique advantages” of the patented invention, as
opposed to substitutes lacking some elements, and
the infringer's “inability to avoid infringement even if
it had wanted to,” established the lack of available,
acceptable noninfringing alternatives). Grain
Processing cannot exclude Process IV Lo-Dex 10
because it does not have a patent on 10 D.E.
maltodextrins, “the economically significant product”
as the district court stated, Grain Processing VIII,
979 F.Supp. at 1238, but rather on a particular variety
of 10 D.E. maltodextrins.
This court therefore does not detect, and the parties
do not suggest, clear error in the district court's
factual findings on the availability of Process IV.
These factual findings support the district court's
conclusion that Process IV was available to American
Maize for making noninfringing Lo-Dex 10, no later
than October 1991. American Maize had the
necessary chemical materials, the equipment, the
know-how and experience, and the economic
incentive to produce Lo-Dex 10 by Process IV
throughout the entire accounting period.
Accordingly, this court holds that the district court
did not clearly err in finding that Process IV Lo-Dex
10 was an available*1355 alternative throughout the
accounting period.
[15] Whether and to what extent American Maize's
alleged alternative prevents Grain Processing from
showing lost sales of Maltrin 100 depends not only
on whether and when the alternative was available,
but also on whether and to what extent it was
acceptable as a substitute in the relevant market. See
King Instruments, 65 F.3d at 952. Consumer
demand defines the relevant market and relative
substitutability among products therein. See BIC, 1
F.3d at 1218; cf. United States v. E.I. du Pont de
Nemours & Co., 351 U.S. 377, 392-95, 76 S.Ct. 994,
1005-07, 100 L.Ed. 1264 (1956). Important factors
shaping demand may include consumers' intended
use for the patentee's product, similarity of physical
and functional attributes of the patentee's product to
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185 F.3d 1341 Page 13
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(Cite as: 185 F.3d 1341)
alleged competing products, and price. See Fonar
Corp. v. General Elec. Co., 107 F.3d 1543, 1553, 41
USPQ2d 1801, 1808-09 (Fed.Cir.1997); BIC, 1 F.3d
at 1218. Where the alleged substitute differs from
the patentee's product in one or more of these
respects, the patentee often must adduce economic
data supporting its theory of the relevant market in
order to show “but for” causation. See BIC, 1 F.3d
at 1218.
In this case, the parties vigorously dispute the precise
scope of the relevant market. See Grain Processing
VIII, 979 F.Supp. at 1235 (stating that, contrary to
Grain Processing's argument that 10 D.E.
maltodextrins comprise their own market, 10 D.E.
maltodextrins compete in a market with other food
additives). The district court's uncontroverted
factual findings, however, render this dispute moot.
In the eyes of consumers, according to the district
court, Process IV Lo-Dex 10 was the same product,
for the same price, from the same supplier as Lo-Dex
10 made by other processes. See Grain Processing
VI, 893 F.Supp. at 1391-92. Process IV Lo-Dex 10
was a perfect substitute for previous versions, and
therefore Grain Processing's efforts to show a distinct
10 D.E. maltodextrin market do not assist its lost
profits case.
Market evidence in the record supports the district
court's uncontroverted findings and conclusions on
acceptability. First, for example, American Maize's
high profit margin on Lo-Dex 10 and the consumers'
sensitivity to price changes support the conclusion
that American Maize would not have raised the price
of Process IV Lo-Dex 10 to offset the cost of
glucoamylase. Further, American Maize's sales
records showed no significant changes when it
introduced Process IV Lo-Dex 10 at the same price as
previous versions, indicating that consumers
considered its important properties to be effectively
identical to previous versions. Witness testimony
supported this market data. Thus, this court discerns
no clear error in the district court's finding that
Process IV Lo-Dex 10 was an acceptable substitute in
the marketplace.
It follows from the district court's findings on
availability and acceptability that Grain Processing's
theory of “but for” causation fails. As the district
court correctly noted, “[a]n [American Maize] using
the dual-enzyme method between 1979 and 1991 ...
would have sold the same product, for the same price,
as the actual [American Maize] did ...” and
consequently would have retained its Lo-Dex 10
sales. Grain Processing VI, 893 F.Supp. at 1392.
Grain Processing did not present any other evidence
of lost profits, such as individual lost transactions as
in Rite-Hite Corp. v. Kelley Co., 774 F.Supp. 1514,
1525-26, 1528-29, 21 USPQ2d 1801 (E.D.Wis.1991),
aff'd in part and vacated on other grounds, 56 F.3d
1538. Thus, the district court properly determined
that, absent infringing Lo-Dex 10, Grain Processing
would have sold no more and no less Maltrin 100
than it actually did.
*1356 IV.
In summary, this court requires reliable economic
proof of the market that establishes an accurate
context to project the likely results “but for” the
infringement. See, e.g., Oiness, 88 F.3d 1025; BIC,
1 F.3d 1214; Water Technologies, 850 F.2d 660.
The availability of substitutes invariably will
influence the market forces defining this “but for”
marketplace, as it did in this case. Moreover, a
substitute need not be openly on sale to exert this
influence. Thus, with proper economic proof of
availability, as American Maize provided the district
court in this case, an acceptable substitute not on the
market during the infringement may nonetheless
become part of the lost profits calculus and therefore
limit or preclude those damages.
This court concludes that the district court did not err
in considering an alternative not on the market during
the period of infringement, nor did it clearly err in
determining that the alternative was available,
acceptable, and precluded any lost profits.
Accordingly, the district court did not abuse its
discretion in denying lost profits. This court affirms
the district court's decision.
COSTS
Each party shall bear its own costs.
AFFIRMED.
C.A.Fed. (Ind.),1999.
Grain Processing Corp. v. American Maize-Products
Co.
185 F.3d 1341, 51 U.S.P.Q.2d 1556
Briefs and Other Related Documents (Back to top)
• 1998 WL 34082314 (Appellate Brief) Corrected
Reply Brief for Plaintiff-Appellant Grain Processing
Corporation (Apr. 01, 1998)
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185 F.3d 1341 Page 14
185 F.3d 1341, 51 U.S.P.Q.2d 1556
(Cite as: 185 F.3d 1341)
• 1998 WL 34082552 (Appellate Brief) Principal
Brief for Appellee American Maize-Products
Company (Mar. 11, 1998)
• 1998 WL 34084151 (Appellate Brief) Brief for
Plaintiff-Appellant Grain Processing Corporation
(Jan. 20, 1998) Original Image of this Document with
Appendix (PDF)
• 98-1081 (Docket) (Nov. 20, 1997)
END OF DOCUMENT
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471 F.3d 1293 Page 1
471 F.3d 1293, 81 U.S.P.Q.2d 1238
(Cite as: 471 F.3d 1293)
Briefs and Other Related Documents
United States Court of Appeals,
Federal Circuit.
DSU MEDICAL CORPORATION and
MEDISYSTEMS CORPORATION, Plaintiffs-
Appellants,
v.
JMS CO., LTD. and JMS NORTH AMERICA
CORPORATION, Defendants-Cross Appellants,
and
ITL Corporation PTY, Ltd., Defendant-Cross
Appellant.
ITL Corporation PTY, Ltd., Plaintiff-Cross
Appellant,
v.
DSU Medical Corporation, Defendant-Appellant.
Nos. 04-1620, 05-1048, 04-1052.
Dec. 13, 2006.
Background: Owner of patents for medical needle
guards sued competitors for infringement. The United
States District Court for the Northern District of
California, D. Lowell Jensen, Senior District Judge,
entered judgment on jury verdict in favor of owner
against two competitors. Competitors appealed, and
patent owner cross-appealed.
Holdings: The Court of Appeals, Rader, Circuit
Judge, held that:
(1) term "guard slidably enclosing a sliding
assembly comprising a needle and a winged needle
hub" required that the guard substantially contain the
needle-assembly at all times;
(2) word "slot" did not incorporate any thickness
limitation;
(3) closed-shell configuration of alleged device
infringed patent;
(4) the en banc Court of Appeals held that to
establish inducement, owner was required to offer
evidence of culpable conduct, directed to
encouraging another's infringement;
(5) the original Court of Appeals panel further held
that jury was well within the law to conclude that
competitor that manufactured alleged device did not
induce importer-competitor to infringe by
purposefully and culpably encouraging importer's
infringement;
(6) exclusion of expert testimony on lost profits
damages was not an abuse of trial court's discretion;
(7) substantial evidence supported jury award for
lost profits due to lost sales to the infringing guard;
(8) substantial evidence supported jury verdict that
certain claims of patent were invalid as obvious; and
(9) trial court's response to a jury question was not
abuse of discretion.
Affirmed.
Michel, Chief Judge, and Mayer, Circuit Judge, filed
a concurring opinion with regard to en banc review.
West Headnotes
[1] Patents 324.5
291k324.5 Most Cited Cases
Court of Appeals reviews patent claim construction
without deference.
[2] Patents 165(2)
291k165(2) Most Cited Cases
The claims of a patent define the invention to which
the patentee is entitled the right to exclude.
[3] Patents 101(2)
291k101(2) Most Cited Cases
Term "guard slidably enclosing a sliding assembly
comprising a needle and a winged needle hub" in
patent for medical needle guards required that the
guard substantially contain the needle-assembly at all
times.
[4] Patents 101(2)
291k101(2) Most Cited Cases
Word "slot" in patent for medical needle guards
meant an opening in the guard capable of receiving a
wing that projects through the opening and having
both an upper edge and a lower edge that are defined
by the sidewall of the guard and did not incorporate
any thickness limitation, as long as it was capable of
receiving a wing.
[5] Patents 235(2)
291k235(2) Most Cited Cases
Closed-shell configuration of alleged device did have
a slot and, thus, infringed patent for medical needle
guards; as applied to alleged device, its slot was an
opening in a needle guard capable of receiving a
wing that projects through the opening, the slot had
© 2007 Thomson/West. No Claim to Orig. U.S. Govt. Works.

471 F.3d 1293 Page 2
471 F.3d 1293, 81 U.S.P.Q.2d 1238
(Cite as: 471 F.3d 1293)
both an upper edge and a lower edge defined by the
sidewall of the guard, and was also sized relative to
the wing and could accommodate the needle wing as
it moved through the length of the slot.
[6] Federal Courts 825.1
170Bk825.1 Most Cited Cases
Court of Appeals reviews a denial of a motion for a
new trial after a jury trial for an abuse of discretion.
[7] Patents 323.3
291k323.3 Most Cited Cases
Mere inferences that units of alleged device sold in
the United States were put into the infringing closedshell
configuration did not warrant new trial on
competitor's contributory infringement of patent for
medical needle guards. 35 U.S.C.A. § 271(c).
[8] Patents 312(1.1)
291k312(1.1) Most Cited Cases
A patentee always has the burden to show direct
infringement for each instance of indirect
infringement. 35 U.S.C.A. § 271(c).
[9] Patents 259(1)
291k259(1) Most Cited Cases
To prevail on contributory infringement, owner of
patent for medical needle guards was required to
show that competitor made and sold the alleged
device, that the device had no substantial noninfringing
uses in its closed-shell configuration, that
competitor made sales within the United States that
contributed to another's direct infringement, and that
competitor's associate engaged in an act of direct
infringement on those sales that competitor made in
the United States. 35 U.S.C.A. § 271(c).
[10] Patents 312(1.1)
291k312(1.1) Most Cited Cases
The plaintiff has the burden of showing that the
alleged infringer's actions induced infringing acts and
that he knew or should have known his actions would
induce actual infringements. 35 U.S.C.A. § 271(b).
[11] Patents 259(1)
291k259(1) Most Cited Cases
The requirement that the alleged infringer knew or
should have known his actions would induce actual
infringement necessarily includes the requirement
that he or she knew of the patent. 35 U.S.C.A. §
271(b).
[12] Patents 324.5
291k324.5 Most Cited Cases
Court of Appeals reviews the legal sufficiency of jury
instructions on an issue of patent law without
deference to the district court.
[13] Federal Courts 763.1
170Bk763.1 Most Cited Cases
[13] Federal Courts 908.1
170Bk908.1 Most Cited Cases
Court of Appeals reviews jury instructions in their
entirety and only orders a new trial when errors in the
instructions as a whole clearly mislead the jury.
[14] Patents 259(1)
291k259(1) Most Cited Cases
To establish liability for inducing infringement of a
patent, a patent holder must prove that once the
defendants knew of the patent, they actively and
knowingly aided and abetted another's direct
infringement; however, knowledge of the acts
alleged to constitute infringement is not enough. 35
U.S.C.A. § 271(b).
[15] Patents 259(1)
291k259(1) Most Cited Cases
The mere knowledge of possible infringement of a
patent by others does not amount to inducement;
specific intent and action to induce infringement must
be proven. 35 U.S.C.A. § 271(b).
[16] Patents 312(8)
291k312(8) Most Cited Cases
To establish inducement, owner of patents for
medical needle guards was required to offer evidence
of culpable conduct, directed to encouraging
another's infringement, not merely that the inducer
had knowledge of the direct infringer's activities. 35
U.S.C.A. § 271(b).
[17] Patents 259(1)
291k259(1) Most Cited Cases
If an entity offers a product with the object of
promoting its use to infringe a patent, as shown by
clear expression or other affirmative steps taken to
foster infringement, it is then liable for the resulting
acts of infringement by third parties; the inducement
rule premises liability on purposeful, culpable
expression and conduct. 35 U.S.C.A. § 271(b).
[18] Patents 312(8)
291k312(8) Most Cited Cases
Inducement requires that the alleged infringer
knowingly induced infringement of a patent and
possessed specific intent to encourage another's
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471 F.3d 1293 Page 3
471 F.3d 1293, 81 U.S.P.Q.2d 1238
(Cite as: 471 F.3d 1293)
infringement; accordingly, inducement requires
evidence of culpable conduct, directed to
encouraging another's infringement, not merely that
the inducer had knowledge of the direct infringer's
activities. 35 U.S.C.A. § 271(b).
[19] Federal Courts 759.1
170Bk759.1 Most Cited Cases
[19] Federal Courts 825.1
170Bk825.1 Most Cited Cases
Court of Appeals reviews a denial of a motion for a
new trial after a jury trial for abuse of discretion,
affirming on any basis that supports the verdict.
[20] Patents 312(8)
291k312(8) Most Cited Cases
In light of evidence that manufacturer of alleged
device contacted an Australian attorney, who
concluded that device would not infringe patents for
medical needle guards, that manufacturer and its
importer obtained letters from American patent
counsel advising that device did not infringe, and
testimony of one of manufacturer's owners who had
participated in design of device that manufacturer had
no intent to infringe patent, jury was well within the
law to conclude that manufacturer did not induce
importer to infringe by purposefully and culpably
encouraging importer's infringement. 35 U.S.C.A. §
271(b).
[21] Federal Courts 827
170Bk827 Most Cited Cases
Court of Appeals reviews a district court's denial of a
motion for a new trial on the amount of damages for
an abuse of discretion.
[22] Patents 324.55(1)
291k324.55(1) Most Cited Cases
Court of Appeals had no basis to speculate that the
jury did not award price erosion damages as part of
its lost profits or reasonable royalty analysis, in
patent infringement action, where verdict form did
not segregate the damages award into categories
beyond lost profits and reasonable royalties, and jury
had before it evidence of price erosion.
[23] Patents 215
291k215 Most Cited Cases
[23] Patents 312(10)
291k312(10) Most Cited Cases
Substantial evidence supported jury decision to reject
any contract between owner of patents for medical
needle guards and licensee and its determination of
date from which licensee was entitled to collect
infringement damages.
[24] Evidence 555.2
157k555.2 Most Cited Cases
Purported damage expert's failure to consider the
effect of the availability of noninfringing device
supported trial court's exclusion of his testimony
about hypothetical contract theory in action alleging
infringement of patents for medical needle guards.
[25] Patents 324.5
291k324.5 Most Cited Cases
Although reviewing a district court's Daubert ruling
to exclude testimony for an abuse of discretion, Court
of Appeals reviews eligibility for lost profits damages
without deference.
[26] Patents 318(4.1)
291k318(4.1) Most Cited Cases
For purpose of claim of lost profits, to prevent the
hypothetical from lapsing into pure speculation,
Court of Appeals requires sound economic proof of
the nature of the market and likely outcomes with
patent infringement out of the picture; the concept of
sound economic proof requires some grounding in
sound economic and factual predicates.
[27] Evidence 555.9
157k555.9 Most Cited Cases
Exclusion of expert testimony on lost profits damages
was not an abuse of trial court's discretion in patent
infringement action; trial court perceived that expert
did not ground his "accelerated market entry" theory
in sound economic principle, that expert relied too
heavily on hypothesized contracts in hypothesized
markets that lacked sound economic grounding, and
that expert's hypothetical reconstruction of a "but for"
marketplace lacked footing in economic principle.
[28] Federal Courts 765
170Bk765 Most Cited Cases
Court of Appeals reviews a trial court's judgment as a
matter of law (JMOL) rulings after a jury verdict by
reapplying the district court's own standard.
[29] Federal Courts 871
170Bk871 Most Cited Cases
Court of Appeals sustains a jury's award of damages
unless the amount is grossly excessive or monstrous,
clearly not supported by the evidence, or based only
on speculation or guesswork.
© 2007 Thomson/West. No Claim to Orig. U.S. Govt. Works.

471 F.3d 1293 Page 4
471 F.3d 1293, 81 U.S.P.Q.2d 1238
(Cite as: 471 F.3d 1293)
[30] Patents 319(1)
291k319(1) Most Cited Cases
Court of Appeals will resolve any doubts about the
amount of damages against the infringer of a patent.
[31] Patents 312(10)
291k312(10) Most Cited Cases
Substantial evidence supported the jury award to
owner of patents for medical needle guards for lost
profits due to lost sales to the infringing guard; even
though competitor attempted to suggest that the
market included numerous other noninfringing
alternatives to its device, patent owner provided
evidence that no other non-infringing alternatives
were acceptable during the necessary time periods.
[32] Patents 36(3)
291k36(3) Most Cited Cases
[32] Patents 36.1(1)
291k36.1(1) Most Cited Cases
Substantial evidence of prior art, together with
evidence of adequate motivation to combine these
references and evidence on the objective indicia of
non-obviousness, supported jury verdict that certain
claims of patent for medical needle guards were
invalid as obvious.
[33] Patents 314(1)
291k314(1) Most Cited Cases
Trial court's response to a jury question, during
deliberations, requesting a clarification on the
hindsight jury instruction, was not abuse of its wide
discretion, in patent infringement action, where trial
court referred jury back to the jury instructions on
invalidity, which both parties had earlier accepted.
Patents 328(2)
291k328(2) Most Cited Cases
3,572,334, 4,170,933, 4,840,619, 4,935,012. Cited as
Prior Art.
Patents 328(2)
291k328(2) Most Cited Cases
5,112,311. Invalid in Part.
Patents 328(2)
291k328(2) Most Cited Cases
5,266,072. Cited.
*1297 William J. O'Brien, Alschuler Grossman Stein
& Kahan LLP, of Santa Monica, California, argued
for plaintiffs-appellants. Of counsel on the brief was
Alan H. Blankenheimer, Heller Ehrman White &
McAuliffe LLP, of San Diego, California.
Richard H. Zaitlen, Pillsbury Winthrop Shaw
Pittman LLP, of Los Angeles, California, argued for
defendants-cross appellants JMS Co., Ltd., et al.
With him on the brief were Julian D. Forman; and
Kevin T. Kramer, of Washington, DC. Of counsel
were Ross R. Barton, of McLean, Virginia; and Blair
M. Jacobs, Sutherland, Asbill & Brennan LLP, of
Washington, DC.
Marc N. Bernstein, The Bernstein Law Group, of
San Francisco, California, argued for defendant-cross
appellant, ITL Corporation PTY, Ltd. With him on
the brief were Ronald P. Flynn and Sarah Botz.
Before RADER, SCHALL, and LINN, Circuit
Judges.
Opinion for the court filed by Circuit Judge RADER.
Concurring opinion filed by Chief Judge MICHEL,
and Circuit Judge MAYER on en banc Section III B.
RADER, Circuit Judge.
DSU Medical Corporation (DSU) and Medisystems
Corporation (MDS) (collectively DSU) sued JMS
Company, Limited (JMS) and JMS North America
(collectively JMS) and ITL Corporation Pty, Limited
(ITL) for patent infringement, inducement to
infringe, and contributory infringement of United
States Patent Nos. 5,112,311 ('311) and 5,266,072
('072). After a six-week jury trial produced a
unanimous verdict, the United States District Court
for the Northern District of California entered a final
judgment finding claims 46-47, and 50-52 of the '311
patent invalid as obvious. The trial court also entered
a final judgment, pursuant to the unanimous verdict,
of infringement against JMS and JMS North
American on claims 49, 53, and 54 of the '311 patent,
and of non-infringement for ITL. DSU Med. Corp. v.
JMS Co., JMS N. Am. Corp., & ITL Corp. PTY, Nos.
C-00-1826-DLJ, C-99-2690-DLJ, slip op. at 3-4
(N.D.Cal. May 7, 2004) (Judgment ). The jury
awarded total damages of $5,055,211 for
infringement against JMS and JMS North America,
and the trial court entered a final judgment holding
both jointly and severally liable for the award.
Finding no reversible error, this court affirms.
I.
The '311 and '072 patents claim a guarded, wingedneedle
assembly. The invention reduces the risk of
accidental needle-stick injuries. Needle puncture
wounds can transmit blood-borne diseases such as
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Hepatitis B and AIDS. The '311 and '072 patented
inventions effectively guard standard winged-needlesets
to prevent needle-stick injuries.
The '311 patent claims a "slotted, locking guard for
shielding a needle, and a winged needle assembly
including a needle, a winged needle hub, and a
slotted, locking guard." '311, col.1, l. 8-11. This
invention includes both "[a] slotted guard for locking
a needle in a shielded position as the needle is
removed from the patient", and "a guarded winged
needle assembly ... slidably mounted within the
guard." Id., abstract. Figures 5-6 illustrate one
embodiment of the patented invention:
*1298
Figure 5 is a side view of a needle, winged needle
hub (3), and slotted needle guard (1). '311 patent, col.
3, ll. 4-6. In this depiction, the needle (5) remains
retracted within the needle guard (1). Id. Figure 6
shows the same needle from above. '311 patent, col.
3, ll. 7-10.
Mr. David Utterberg, a co-inventor of the '311
patent, owns DSU and MDS. DSU owns the '311
patent; MDS has an exclusive license to make and
sell the '311 invention for large-bore needles,
including Arterial-Venous Fistula (AVF) sets used
for dialysis and aphaeresis. MDS markets AVF
needles under the brand names "MasterGuard" and
"PointGuard."
The alleged infringing device, made by ITL (an
Australian company) sells under the name Platypus
TM Needle Guard (Platypus). ITL manufactures the
Platypus in Malaysia and Singapore. The Platypus
needle guard is a "stand-alone" product: a small
configured piece of plastic. This plastic guard
structure is not attached to any other device. In other
words, the Platypus does not include a needle, but
only a sheathing structure. Some claims of the '311
patent recite both a slotted guard and a guarded
winged needle assembly. Before use, the Platypus
resembles an open clamshell (open-shell
configuration). During use, the halves of the clam
shell close to form the needle guard (closed-shell
configuration). The following illustration shows the
Platypus in open-and closed-shell configuration:
*1299
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Transcript of Record at 18685, 18629, DSU Medical
Corp. v. JMS Co., JMS North America Corp., & ITL
Corp. PTY, Nos. 04-1620, 05-1048, 05-1052
(Fed.Cir. Sept. 21, 2004) (Transcript ). The Platypus
has an upper and a lower "jaw." When closed, the
upper jaw extends around and overlaps the inner,
lower jaw. During use, a medical technician closes
the Platypus and locks it around tubing connected to
the winged needle assembly. When the technician
removes the needle from a patient, the worker slides
the guard down the tube until the needle assembly's
wings meet and pry the jaws apart. The wings and
their attached needle assembly slide into and through
the guard, forcing the jaws ever wider as the wings
make their way into a notched opening at the guard's
back. Ultimately the wings slide into the rear
opening. At that point, the jaws close around the
used needle.
JMS is a large Japanese medical supply business that
competes with MDS in the United States market.
Beginning in June 1999, JMS purchased Platypus
needle guards from ITL, entering into an agreement
to distribute the Platypus worldwide (the Supply
Agreement). Under the Supply Agreement, JMS
bought open-shell configuration Platypus guard units
from ITL in Singapore and Malaysia. JMS generally
closed the Platypus guards around needle sets before
distributing them to customers.
DSU alleges that the Platypus infringes the '311
patent. DSU also alleges that JMS and ITL
contributed to and induced each other's infringement.
JMS sought to sell ITL's infringing Platypus until it
could produce its substitute non-infringing product,
the WingEater. ITL offered to supply its infringing
Platypus. DSU additionally seeks damages from
JMS because it "stole" MDS's ability to renew a
MasterGuard exclusive license with a former
customer, Fresenius USA Manufacturing, Inc.
(Fresenius).
II.
[1][2] On February 5, 2001, the trial court entered a
claim construction order. DSU Med. Corp. v. JMS
Co., JMS N. Am. Corp., & ITL Corp. PTY, Nos. C-
00-1826-DLJ, C-99-2690-DLJ (N.D.Cal. Feb. 5,
2001) (Claim Construction Order ). This court
reviews claim construction without deference.
Markman v. Westview Instruments, Inc., 52 F.3d 967
(Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116
S.Ct. 1384, 134 L.Ed.2d 577 (1996). "[T]he claims
of a patent define the invention to which the *1300
patentee is entitled the right to exclude." Phillips v.
AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005)
(citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1582 (Fed.Cir.1996) ("We look to the words of
the claims themselves ... to define the scope of the
patented invention")). This court recently enunciated
predominant claim construction principles in Phillips.
415 F.3d at 1312-24.
[3] The trial court construed "slidably enclosing" in
claim 1 of the ' 311 patent:
1. A guard slidably enclosing a sliding assembly
comprising a needle and a winged needle hub ....
'311 patent, col. 15, ll. 46-47 (emphasis added). The
trial court concluded that this term in claim 1
"requires that the guard substantially contain the
needle-assembly at all times." Claim Construction
Order, slip op. at 9. Because the Platypus is a "standalone
guard" without a needle, the trial court granted
summary judgment of non-infringement to the
defendants on multiple claims. [FN1] Id., slip op. at
15-19.
FN1. The trial court granted a summary
judgment of non-infringement on claims 1,
4-9, 12, 19, 20, 22-23 of the '311 patent, and
on claims 1, 6, and 7 of the '072 patent.
The language and context of the claims support the
trial court's construction of "slidably enclosing a
sliding assembly." Again, the trial court read the
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claim to require that the guard substantially contain
the needle-assembly at all times. Claim Construction
Order, slip op. at 9. In the first place, claim 1
expressly recites the presence of a needle as part of
the sliding assembly. Thus, the claimed "assembly"
would not be complete without a needle. The claim
also uses the term "enclosing." In the context of an
invention "for locking a needle in a shielded position
as the needle is removed from a patient," that
language suggests constant shielding or covering of
the sharp. '311 patent, col. 2, ll. 8-9. The
specification reinforces that suggestion:
[T]he guard is folded about its hinge position and
locked ... into a generally cylindrical, folded
configuration. Alternatively, the guard may be
molded ... to enclose a sliding hub/needle assembly
that has been positioned between the two pieces.
'311 patent, col. 2, ll. 53-58. By emphasizing that
the guard is locked in a protective configuration, or
molded to enclose the needle assembly, the
specification conveys the concept of a permanent
cover for the needle. Indeed, the figures in the
specification show a completely enclosed, and thus
guarded, needle. Figures 15-19 also show the needle
hub as permanently housed in the guard. '311 patent,
figures 15-19. The trial court also methodically
considered and rejected each of DSU's arguments that
the term means only generally surrounding the needle
and hub. Claim Construction Order, slip. op. 8-15.
This court concurs in the district court's analysis.
[4] The court also construed "slot," as used in claims
1, 46, and 52. Claim Construction Order, slip op. at
19-24. The relevant portion of claim 46 is:
46. A guard for slidably enclosing a sliding
assembly ... said guard comprising ...
a hollow member proportioned for receiving said
needle and winged needle hub, said hollow
member defining at least one longitudinal slot
proportioned to receive a wing of said needle hub
projecting outwardly through the slot when the
needle hub resides within the hollow member in
sliding relation thereto, and means, associated with
the hollow member, for engaging said wing *1301
projecting through said slot when the needle and
hub are in a slidingly retracted position in which
the needle is enclosed by the hollow member for
locking said needle hub and needle in said retracted
position.
'311 patent, col. 20, ll. 20-39 (emphases added).
Claim 52 is:
52. The guard of claim 46 in which said slot
extends in a longitudinal direction through one end
of said hollow member, to provide sliding access to
said wing.
'311 patent, col. 20, ll. 63-65 (emphasis added). The
trial court held that the term did not require "a
defined width." Claim Construction Order, slip op.
at 19. Later the district court, at the request of
defendants, clarified that " '[s]lot' shall mean 'an
opening in the guard capable of receiving a wing that
projects through the opening and having both an
upper edge and a lower edge that are defined by the
sidewall of the guard.' " DSU Med. Corp. v. JMS
Co., JMS N. Am. Corp., & ITL Corp. PTY, Nos. C-
00-1826-DLJ, C-99-2690-DLJ (N.D.Cal. Apr. 30,
2001) (Construction Clarification Order I ). In claim
46, because "proportioned to receive" modifies "slot,"
the trial court explained that "slot" "shall mean 'sized
relative to the wing so that the wing extends through
the slot when the hub is within the hollow member
and so said slot can accommodate the wing's
movement as it translates the length of the slot.' "
Id.; see also DSU Med. Corp. v. JMS Co., JMS N.
Am. Corp., & ITL Corp. PTY, Nos. C-00-1826-DLJ,
C-99-2690-DLJ, slip op. at 29 (N.D. Cal. Jan 16,
2002) (Construction Clarification II & SJ Order ).
The trial court identified the crux of the dispute over
"slot" as "whether ... the slots for the wings should
have defined widths closely approximating the wings'
thickness." Construction Clarification Order I, slip
op. at 19. If "slot" limits the size of the opening to
accommodate the "minor" thickness of the '311
patent's wings, the Platypus would not infringe
because its jaws accommodate any thickness. Claim
Construction Order, slip op. at 19. On the other
hand, if "slot" contains no thickness limitation, the
Platypus would infringe because it opens to receive a
wing of any size. Id., at 19.
The claim language recites only "slot." Thus, the
claim itself does not incorporate any thickness
limitation. Moreover, the specification provided no
size limitation on the opening. In a tribute to its
complete analysis, the trial court went beyond those
primary sources to also consult the prosecution
history. Phillips, 415 F.3d at 1317 (a court "should
also consider the patent's prosecution history, if it is
in evidence"). The record before the Patent Office
shows that the patentees amended the claims of
Application Serial Number 252,564, which is the
application from which the '311 patent (and '072
patent) derived, to avoid U.S. Patent No. 4,840,619
(Hughes Patent).
In amending the claims to avoid the Hughes Patent,
however, the applicant did not limit the size of the
slot, as argued by JMS and ITL. The amendments
concerned only the orientation of the needle wings
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that moved back and forth through the slot. To
distinguish the Hughes Patent, the patentee did not
have to, and did not actually, limit the width of the
slot. Thus, the trial court correctly construed "slot"
as not requiring a defined width, as long as it was
capable of receiving a wing. Construction
Clarification Order I, slip op. at 14.
Under this claim construction, the trial court found
that "as a matter of law, every reasonable jury would
find that there is a slot in the [Platypus] closed-shell
configuration." Construction Clarification II & SJ
Order, slip op. at 29. Therefore, the trial court held
that when sold in the United*1302 States in its
"closed-shell" configuration, the Platypus literally
infringed claims 46-47, 49, and 52-53 of '311 patent,
when closed over the tubing of a needle-set. Id.
[5] Viewing the evidence in the light most favorable
to the nonmoving party, this court holds that the trial
court correctly concluded that the closed-shell
configuration of the Platypus does have a slot. As
applied to the Platypus, its slot is an opening in a
needle guard capable of receiving a wing that
projects through the opening. Further, the slot has
both an upper edge and a lower edge defined by the
sidewall of the guard. The Platypus's slot is also
sized relative to the wing and can accommodate the
needle wing as it moves through the length of the
slot. Furthermore, the Platypus contains the other
limitations of claims 46-47, 49, and 52-53 of the '311
patent. Therefore, in its closed-shell configuration,
the Platypus does infringe claims 46-47, 49, and 52-
53 of the '311 patent. This court affirms the trial
court's summary judgment ruling.
III.
[6] The jury found that JMS North America and JMS
directly and contributorily infringed, and that JMS
additionally induced JMS North America to infringe.
Transcript, at 453. However, the jury returned a
verdict of non-infringement in favor of ITL. Id., at
453-54. The jury entered a verdict finding that ITL
did not engage in contributory infringement or
inducement to infringe. Id., at 453. The trial court
denied DSU's motion for new trial on the jury's
verdict that ITL did not contributorily infringe or
induce infringement. This court reviews a denial of a
motion for a new trial after a jury trial for an abuse of
discretion. Chiron Corp. v. Genentech, Inc., 363
F.3d 1247, 1258 (Fed.Cir.2004) (citing De Saracho v.
Custom Food Mach., Inc., 206 F.3d 874, 880 (9th
Cir.2000)).
A.
On appeal, DSU argues that ITL committed
contributory infringement. According to DSU, the
Platypus, which ITL sold to JMS, had no substantial
noninfringing use. Therefore, DSU argues, ITL
committed contributory infringement as a matter of
law. ITL responds that it made and sold "most
Platypus guards" outside of the United States. ITL
also contends that the record contains no evidence
that the Platypus was used in an infringing manner in
the United States.
The Platypus sets that came into the United States
fall within three categories:
(1) JMS imported into the United States
approximately 30 million Platypus guards that,
prior to importation into the United States, it had
already assembled into the closed-shell
configuration, combined with needle sets. These
units accounted for the vast majority of Platypus
sales in the United States.
(2) Fresenius purchased approximately 3.5 million
Platypus guards, in the open-shell configuration
without needle sets. ITL billed JMS for the
shipments and shipped them to Fresenius in the
United States at JMS's request. Fresenius
ultimately decided that guards without needle sets
did not meet FDA regulations, and it returned
about 3 million.
(3) ITL sent approximately 15,000 Platypus in the
open-shell configuration to JMS in San Francisco.
DSU introduced no evidence that those units were
ever put into the closed-shell configuration in the
United States.
Additionally, the record contained evidence that
when instructed to do so by JMS, ITL would ship
Platypus guard units F.O.B. into the United States.
The record also shows, however, that ITL only sold
the Platypus in its open-shell configuration.
[7][8][9] Therefore, this court must determine
whether the jury's verdict is against *1303 the clear
weight of the evidence. Under § 271(c):
[w]hoever offers to sell or sells within the United
States ... a component of a patented machine,
manufacture, combination or composition ...
constituting a material part of the invention,
knowing the same to be especially made or
especially adapted for use in an infringement of
such patent, and not a staple article or commodity
of commerce suitable for substantial noninfringing
use, shall be liable as a contributory infringer.
35 U.S.C. § 271(c) (2000) (emphases added). In
discussing 35 U.S.C. § 271(c), the Supreme Court
stated:
One who makes and sells articles which are only
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adapted to be used in a patented combination will
be presumed to intend the natural consequences of
his acts; he will be presumed to intend that they
shall be used in the combination of the patent.
Metro-Goldwyn-Mayer Studios, Inc. v. Grokster,
Ltd., 545 U.S. 913, 125 S.Ct. 2764, 2777, 162
L.Ed.2d 781 (2005). In addition, the patentee always
has the burden to show direct infringement for each
instance of indirect infringement. Dynacore
Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263,
1272 (Fed.Cir.2004); Joy Techs., Inc. v. Flakt, Inc., 6
F.3d 770, 774 (Fed.Cir.1993) ("Liability for either
active inducement of infringement or contributory
infringement is dependent upon the existence of
direct infringement."). Thus, to prevail on
contributory infringement, DSU must have shown
that ITL made and sold the Platypus, that the
Platypus has no substantial non-infringing uses in its
closed-shell configuration, that ITL engaged in
conduct (made sales) within the United States that
contributed to another's direct infringement, and that
JMS engaged in an act of direct infringement on
those sales that ITL made in the United States.
The trial court properly applied these legal
principles. The trial court determined that the record
showed that ITL supplied the Platypus, that the
Platypus had no substantial non-infringing uses in its
closed-shell configuration, and that ITL intended to
make the Platypus that resulted in the potential for
contributory infringement as a product designed for
use in the patented combination. DSU Med. Corp. v.
JMS Co., JMS N. Am. Corp., & ITL Corp. PTY, Nos.
C-00-1826-DLJ, C-99-2690-DLJ, slip op. at 1-3
(N.D.Cal. Sept. 20, 2004) (Post Trial Motions' Order
). In fact, even beyond the minimal intent
requirement for contributory infringement, ITL acted
with the knowledge of the '311 patent and knowledge
that the component was especially made or adapted
for use in an infringing manner. Id., slip op. at 22-24.
However, the district court denied the motion for a
new trial because the record does not show that "the
alleged contributory act ha[d] a direct nexus to a
specific act of direct infringement." Id., slip op. at
25. In denying the new trial, the court stated:
And while it is true that Plaintiffs introduced
evidence that "ITL sold and shipped millions of
'stand alone' guards directly to United States
customers, including JMS [North America] and
end-users like Fresenius," there was no direct
evidence at trial establishing that these guards were
actually closed and used as an act of direct
infringement in the United States.
Id., slip op. at 26.
Upon review of the record, this court perceives, as
well, an absence of evidence of direct infringement to
which ITL contributed in the United States. Under
the terms of the '311 patent, the Platypus only
infringes in the closed-shell configuration. When
open, the Platypus, for instance, lacks a "slot" as well
as other claimed features. ITL only contributed to
placing the Platypus into the closed-shell
configuration *1304 in Malaysia (category 1, above);
not in the United States. Section 271(c) has a
territorial limitation requiring contributory acts to
occur in the United States. Furthermore, this court
cannot reverse a jury verdict of non-infringement on
mere inferences that the Platypus guard units sold in
the United States (i.e., the open-shell configuration in
categories 2 and 3, above) were put into the
infringing closed-shell configuration. The record
does not show that the Platypus guards ITL shipped
into the United States in the open-shell configuration
were ever put into an infringing configuration, i.e.,
closed-shell. On categories 2 and 3, above, the
record contains no evidence of direct infringement,
i.e., that the open-shell Platypus guards imported by
ITL were sold or used in their closed-shell
configuration. As a result, the trial court did not
abuse its discretion in denying DSU's motion for new
trial on ITL's contributory infringement.
On the issue of induced infringement, DSU argues
that ITL induced infringement by inducing JMS to
sell the closed-shell configuration in the United
States. The district court denied DSU's motion for a
new trial on the ground that, although JMS directly
infringed, ITL did not intend JMS to infringe.
B.
RESOLUTION OF CONFLICTING PRECEDENT
Section III. B., only, is considered en banc.
Opinion for the court filed by Circuit Judge RADER,
with NEWMAN, LOURIE, SCHALL, BRYSON,
GAJARSA, LINN, DYK, PROST, and MOORE,
Circuit Judges, join. Concurring opinion filed by
MICHEL, Chief Judge, and MAYER, Circuit Judge.
[10][11] This court addresses Part III. B., of this
opinion en banc. This section addresses, in the
context of induced infringement, "the required intent
... to induce the specific acts of [infringement] or
additionally to cause an infringement." MEMC Elec.
Materials, Inc. v. Mitsubishi Materials Silicon Corp.,
420 F.3d 1369, 1378 n. 4 (Fed.Cir.2005) (citing
MercExchange, L.L.C. v. eBay, Inc., 401 F.3d 1323,
1332 (Fed.Cir.2005)). This section clarifies that
intent requirement by holding en banc that, as was
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stated in Manville Sales Corp. v. Paramount Systems,
Inc., 917 F.2d 544, 554 (Fed.Cir.1990), "[t]he
plaintiff has the burden of showing that the alleged
infringer's actions induced infringing acts and that he
knew or should have known his actions would induce
actual infringements." The requirement that the
alleged infringer knew or should have known his
actions would induce actual infringement necessarily
includes the requirement that he or she knew of the
patent. See Golden Blount, Inc. v. Robert H.
Peterson Co., 438 F.3d 1354, 1364 n. 4
(Fed.Cir.2006) (citing Manville and explaining that
the inducing infringement standard was satisfied
"because it is undisputed that [the alleged infringer]
had notice of the patent").
[12][13] DSU claims the district court improperly
instructed the jury on the state of mind necessary to
prove inducement to infringe under 35 U.S.C. §
271(b). This court reviews the legal sufficiency of
jury instructions on an issue of patent law without
deference to the district court. Advanced Display
Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282
(Fed.Cir.2000). "This Court reviews jury instructions
in their entirety and 'only orders a new trial when
errors in the instructions as a whole clearly mislead
the jury.' " Chiron, 363 F.3d at 1258 (quoting Delta-X
Corp. v. Baker Hughes Prod. Tools, Inc., 984 F.2d
410, 415 (Fed.Cir.1993)).
*1305 [14][15] Under section 271(b), "[w]hoever
actively induces infringement of a patent shall be
liable as an infringer." 35 U.S.C. § 271(b). To
establish liability under section 271(b), a patent
holder must prove that once the defendants knew of
the patent, they "actively and knowingly aid[ed] and
abett[ed] another's direct infringement." Water
Technologies Corp. v. Calco, Ltd., 850 F.2d 660, 668
(Fed.Cir.1988) (emphasis in original). However,
"knowledge of the acts alleged to constitute
infringement" is not enough. Warner-Lambert Co. v.
Apotex Corp., 316 F.3d 1348, 1363 (Fed.Cir.2003)
(citation omitted). The "mere knowledge of possible
infringement by others does not amount to
inducement; specific intent and action to induce
infringement must be proven." Id. at 1364 (citing
Manville, 917 F.2d at 554).
[16] DSU asked the court to instruct the jury,
purportedly in accordance with Hewlett-Packard Co.
v. Bausch & Lomb, Inc., 909 F.2d 1464
(Fed.Cir.1990), that to induce infringement, the
inducer need only intend to cause the acts of the third
party that constitute direct infringement. The trial
court gave the following instruction to the jury:
In order to induce infringement, there must first be
an act of direct infringement and proof that the
defendant knowingly induced infringement with
the intent to encourage the infringement. The
defendant must have intended to cause the acts that
constitute the direct infringement and must have
known or should have known than[sic] its action
would cause the direct infringement. Unlike direct
infringement, which must take place within the
United States, induced infringement does not
require any activity by the indirect infringer in this
country, as long as the direct infringement occurs
here.
Transcript, at 432. Thus, the court charged the jury
in accordance with Manville. The statute does not
define whether the purported infringer must intend to
induce the infringement or whether the purported
infringer must merely intend to engage in the acts
that induce the infringement regardless of whether it
knows it is causing another to infringe. DSU
complains that the instruction is incorrect because it
requires that the inducer possess specific intent to
encourage another's infringement, and not merely that
the inducer had knowledge of the acts alleged to
constitute infringement. [FN2]
FN2. In Hewlett-Packard Co. v. Bausch &
Lomb, Inc., 909 F.2d 1464, 1469
(Fed.Cir.1990), this court stated that
"[p]roof of actual intent to cause the acts
which constitute infringement is a necessary
prerequisite to finding active infringement."
DSU reads this statement as standing for the
proposition that proof of intent to cause
infringing acts is all that is required in order
to establish inducement of infringement.
[17] In Grokster, which was a copyright case, the
Supreme Court cited with approval this court's
decision in Water Technologies when it discussed
inducement of infringement, stating:
The rule on inducement of infringement as
developed in the early cases is no different today.
Evidence of "active steps ... taken to encourage
direct infringement," such as advertising an
infringing use or instructing how to engage in an
infringing use, show an affirmative intent that the
product be used to infringe, and a showing that
infringement was encouraged overcomes the law's
reluctance to find liability when a defendant merely
sells a commercial product suitable for some lawful
use.
Grokster, 125 S.Ct. at 2779 (citation and footnote
omitted). As a result, if an entity offers a product
with the object of promoting *1306 its use to
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infringe, as shown by clear expression or other
affirmative steps taken to foster infringement, it is
then liable for the resulting acts of infringement by
third parties. Id. at 2780. "The inducement rule ...
premises liability on purposeful, culpable expression
and conduct ...." Id.
[18] Grokster, thus, validates this court's articulation
of the state of mind requirement for inducement. See
Manville, 917 F.2d at 544. In Manville, this court
held that the "alleged infringer must be shown ... to
have knowingly induced infringement," 917 F.2d at
553, not merely knowingly induced the acts that
constitute direct infringement. This court explained
its "knowing" requirement:
It must be established that the defendant possessed
specific intent to encourage another's infringement
and not merely that the defendant had knowledge
of the acts alleged to constitute inducement. The
plaintiff has the burden of showing that the alleged
infringer's actions induced infringing acts and that
he knew or should have known his actions would
induce actual infringements.
Id. at 553. In Water Technologies, also cited with
approval by the Supreme Court, 125 S.Ct. at 2779,
this court clarified: "While proof of intent is
necessary, direct evidence is not required; rather,
circumstantial evidence may suffice." 850 F.2d at
668. [FN3] Although this court stated "that proof of
actual intent to cause the acts which constitute the
infringement is a necessary prerequisite to finding
active inducement," Hewlett-Packard, 909 F.2d at
1469, Grokster has clarified that the intent
requirement for inducement requires more than just
intent to cause the acts that produce direct
infringement. Beyond that threshold knowledge, the
inducer must have an affirmative intent to cause
direct infringement. In the words of a recent
decision, inducement requires " 'that the alleged
infringer knowingly induced infringement and
possessed specific intent to encourage another's
infringement.' " MEMC Elec., 420 F.3d at 1378
(Fed.Cir.2005) (quoting Minn. Mining & Mfg. Co. v.
Chemque, Inc., 303 F.3d 1294, 1304-05
(Fed.Cir.2002)). Accordingly, inducement requires
evidence of culpable conduct, directed to
encouraging another's infringement, not merely that
the inducer had knowledge of the direct infringer's
activities. Grokster, 125 S.Ct. at 2780; Manville,
917 F.2d at 553. Accordingly, the district court
correctly instructed the jury in this case.
FN3. See also nCube Corp. v. Seachange
Int'l, Inc., 436 F.3d 1317, 1325
(Fed.Cir.2006) (This court noted that "at
least ... the alleged inducer had [to have]
knowledge of the infringing acts," which
included evidence of SeaChange's intent that
its customers use the ITV systems it sold
with Scientific-Atlanta equipment to
perform the patented method.)
C.
[19] The district court denied DSU's motion for a
new trial on the issue of inducement to infringe. This
court reviews a denial of a motion for a new trial
after a jury trial for abuse of discretion, affirming on
any basis that supports the verdict. Chiron, 363 F.3d
at 1258. In denying the motion for new trial, the trial
court stated:
Fundamental principles of law hold that it is up to
the jury to make determinations of witness
credibility, to decide the existence of any factual
inferences, and to determine the weight to be
attributed to any direct or indirect evidence.
Although Plaintiffs introduced circumstantial
evidence which permitted inferences of ITL's
intentions, it is up to the Jury to decide whether or
not to draw any inference and to consider the
weight of any such evidence. Assessing *1307
competing evidence is what the law asks juries to
do, and the Court declines to take over this
fundamental role of the Jury.
Post Trial Motions Order, slip op. at 15. The jury
heard evidence about the commercial transactions
between ITL and JMS, including JMS's intention to
sell ITL's Platypus to Fresenius until JMS could get
its own WingEater approved by the Food and Drug
Administration (FDA) and ready for market. The
jury also heard evidence that Mr. Utterberg's lawyer
informed ITL in January 1997 that the Platypus
infringed the '311 patent. Additionally, the jury
learned that ITL contacted an Australian attorney,
who concluded that its Platypus would not infringe.
JMS and ITL then also obtained letters from U.S.
patent counsel advising that the Platypus did not
infringe. Mr. William Mobbs, one of the owners of
ITL who had participated in the design of the
Platypus, testified that ITL had no intent to infringe
the '311 patent. Post Trial Motions Order, slip op. at
15.
[20] Thus, on this record, the jury was well within
the law to conclude that ITL did not induce JMS to
infringe by purposefully and culpably encouraging
JMS's infringement. To the contrary, the record
contains evidence that ITL did not believe its
Platypus infringed. Therefore, it had no intent to
infringe. Accordingly, the record supports the jury's
verdict based on the evidence showing a lack of the
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necessary specific intent. The trial court certainly did
not abuse its discretion.
IV.
Based on a finding that MDS became the exclusive
licensee of the '311 patent on July 17, 2001, the jury
awarded MDS lost profit damages in the amount of
$4,400,000. Transcript, at 455. It also awarded DSU
a reasonably royalty for sales of the Platypus, at a
rate of 5¢ per unit, totaling $655,211. Id. at 456.
[21] DSU appeals the trial court's denial of its
motion for a new trial on price erosion damages and
for three additional months of lost profits damages.
Post Trial Motions Order, slip op. at 67. This court
reviews a district court's denial of a motion for a new
trial on the amount of damages for an abuse of
discretion. Micro Chem., Inc. v. Lextron, Inc., 317
F.3d 1387, 1394 (Fed.Cir.2003); Unisplay, S.A. v.
Am. Elec. Sign Co., 69 F.3d 512, 517 (Fed.Cir.1995).
A.
[22] DSU complains that it was entitled to a new
trial because the jury did not award its requested
price erosion damages. On these points, the verdict
form does not segregate the damages award into
categories beyond lost profits and reasonable
royalties. However, the jury had before it evidence
of price erosion. Accordingly, this court has no basis
to speculate that the jury did not award price erosion
damages as part of its lost profits or reasonable
royalty analysis. Crystal Semiconductor Corp. v.
TriTech Microelecs. Int'l, Inc., 246 F.3d 1336, 1360
(Fed.Cir.2001). The trial court properly denied
DSU's motion for new trial on price erosion damages.
[23] DSU also complains that it deserves a new trial
because the jury should have decided that MDS was
an exclusive licensee on April 5, 2001. The jury
entered a verdict that the date on which MDS became
an exclusive licensee of DSU, and thus, the date on
which it would be entitled to collect infringement
damages, was July 17, 2001. The trial court allowed
the jury to make this determination, instructing it that
MDS became an exclusive licensee of the '311 patent
sometime *1308 between April 5, 2001 and July 17,
2001. Substantial evidence supports the jury's
decision to reject any contract between MDS and
DSU earlier than July 17, 2001. The jury was free to
determine, for instance, that Mr. Utterberg's
testimony on this point was simply not credible. Mr.
Utterberg testified that he "shook hands with himself"
on an earlier date-as president and sole owner of both
contracting parties. Post Trial Motions Order, slip
op. at 56-57. At other times, however, he also
contradicted himself and undermined the suggestion
that a contract was entered into earlier than July 17,
2001. Id. at 57. Thus, the trial court did not abuse its
discretion in denying a new trial on the date of the
contract.
B.
[24] The trial court excluded testimony from DSU's
expert witness, Dr. Stephen A. Degnan, on "the
hypothetical existence or hypothetical terms of a
contract between [MDS] and Fresenius ... [and] as to
any calculation or measure of patent infringement
damages based upon any sale of the WingEater
needle guard." DSU Med. Corp. v. JMS Co., 296
F.Supp.2d 1140, 1159 (N.D.Cal.2003) (In Limine
Order ). According to DSU, JMS's infringement
interfered with MDS's "decade-long" contractual
relationship with Fresenius. Specifically, MDS
contended that JMS used sales of the infringing
Platypus guard to "steal" the contract with Fresenius,
with the intent to later replace the infringing Platypus
with its non-infringing WingEater. Thus, MDS
sought lost profit damages, not only for the award it
received from lost sales to the infringing Platypus,
but also for sales it lost to the non-infringing
WingEater. The trial court disallowed Dr. Degnan's
testimony on this subject because "sales of acceptable
noninfringing substitute products [could not] be the
basis of legally compensable patent damages," and
the WingEater was an acceptable noninfringing
substitute for the patented products. Id.
[25] Although reviewing a district court's "Daubert "
ruling to exclude testimony for an abuse of
discretion, this court reviews eligibility for lost
profits damages without deference. Micro Chem.,
317 F.3d at 1391 (decision to admit expert testimony
reviewed under regional circuit law); Genentech,
Inc. v. Amgen, Inc., 289 F.3d 761, 768 (Fed.Cir.2002)
(Ninth Circuit reviews evidentiary rulings for abuse
of discretion); Rite-Hite Corp. v. Kelley Co., 56 F.3d
1538, 1544 (Fed.Cir.1995) (whether the lost profits
are legally compensable is a question of law this
court reviews de novo).
As noted above, the trial court reasoned that MDS
"cannot be awarded lost profit damages based upon
any sale by the defendant of the noninfringing
WingEater needle guard." In Limine Order, 296
F.Supp.2d at 1156. It also reasoned that Dr. Degnan's
proffered methodology, "requiring inter alia
hypothesized terms in hypothesized contracts, is not
grounded on established legal principle and is far too
remote factually to be within the line drawn for
legally compensable patent injuries." Id.
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Specifically, the trial court faulted Dr. Degnan's
"accelerated market entry" notion that MDS would
have captured the market in advance of the
introduction of the WingEater, but for the infringing
sales of the Platypus. Id. at 1151.
MDS, however, also argues that the foreseeability
principle in Rite-Hite supports its case for lost profits
on the WingEater. While it may be possible for an
infringement to have a foreseeable, and therefore
compensable, effect on future contracts, the trial
court was correct to perceive that it could not occur
when the future contract was itself for a noninfringing
substitute. In *1309Grain Processing
Corp. v. American Maize-Prods. Co., 185 F.3d 1341
(Fed.Cir.1999), this court observed that "[m]arket
sales of an acceptable noninfringing substitute often
suffice alone to defeat a case for lost profits." Id. at
1352. Indeed in Grain Processing, as in this case, the
noninfringing substitute that defeated the claim for
lost profits was not yet offered for sale in the
marketplace. Id. at 1354-55. Here, Dr. Degnan
admitted that the WingEater was available in October
2001, and the FDA approved the WingEater for sale
on June 20, 2001. Thus, Dr. Degnan's failure to
consider the effect of the availability of the
WingEater supports the trial court's exclusion of the
hypothetical contract theory.
[26][27] In addition, Grain Processing stands for
another proposition as well: "To prevent the
hypothetical from lapsing into pure speculation, this
court requires sound economic proof of the nature of
the market and likely outcomes with infringement out
of the picture." 185 F.3d at 1350. Indeed, the
concept of sound economic proof requires some
grounding in "sound economic and factual
predicates." Riles v. Shell Exploration & Prod. Co.,
298 F.3d 1302, 1311 (Fed.Cir.2002). The trial court
perceived that Dr. Degnan did not ground his
"accelerated market entry" theory in sound economic
principle. The trial court perceived that Dr. Degnan
relied too heavily on hypothesized contracts in
hypothesized markets that lacked sound economic
grounding. While damages analysis invariably
involves hypothetical reconstruction of a "but for"
marketplace, that reconstruction must include some
footing in economic principle, which the trial court
found lacking. Thus, this court detects no abuse of
discretion in the trial court's exclusion of Dr.
Degnan's testimony on lost profits damages.
V.
[28] The trial court denied JMS's and ITL's motions
for Judgment as a Matter of Law (JMOL) contesting
the $4.4 million award for lack of support with
substantial evidence. Post Trial Motions Order, slip
op. at 55. This court reviews a trial court's JMOL
rulings after a jury verdict by reapplying the district
court's own standard. Applied Med. Res. Corp. v.
United States Surgical Corp., 147 F.3d 1374, 1376
(Fed.Cir.1998). To prevail on appeal, JMS and ITL
must show that substantial evidence does not support
the jury's factual findings or that the trial court erred
in applying the law on JMOL motions. Perkin-Elmer
Corp. v. Computervision Corp., 732 F.2d 888, 893
(Fed.Cir.1984).
[29][30] This court sustains a jury's award of
damages "unless the amount is grossly excessive or
monstrous, clearly not supported by the evidence, or
based only on speculation or guesswork." Biotec
Biologische Naturverpackungen GmbH & Co. v.
Biocorp, Inc., 249 F.3d 1341, 1355 (Fed.Cir.2001).
The jury was accorded discretion to resolve conflicts
in the evidence of damages. Brooktree Corp. v.
Advanced Micro Devices, Inc., 977 F.2d 1555, 1580
(Fed.Cir.1992). Moreover, this court will resolve
"any doubts about the amount ... against the
infringer." Kalman v. Berlyn Corp., 914 F.2d 1473,
1482 (Fed.Cir.1990) (quoting Ryco, Inc. v. Ag-Bag
Corp., 857 F.2d 1418, 1428 (Fed.Cir.1988)).
[31] In an attempt to question the jury's lost profits
verdict, JMS attempts to suggest that the market
included numerous other noninfringing alternatives to
the Platypus. Nevertheless, the jury awarded MDS
lost profits beginning April 17, 2001. JMS
acknowledged that it could not bring a guarded
needle to the market by that date. JMS
acknowledged that, as a result of its inability to bring
its own guarded needle to market by that date, MDS
could *1310 tie-up customers with multi-year
MasterGuard contracts. Thus, even though the FDA
approved the WingEater for sale in June 2001, it
could not have replaced any sales of the patented
invention, according to JMS's own admission, until
its first commercial sale in October 2001.
Furthermore, DSU provided evidence that no other
non-infringing alternatives were acceptable during
the necessary time periods. Though Nipro Medical
Corporation distributed a guarded needle set called
the "SafeTouch," it had design flaws that led to two
FDA-published recalls, and prior to recall, it had
limited geographical distribution and unsatisfactory
manufacturing capacity. Though Diasol Inc.
distributed, in the United States, a guarded needle set
called the "Shelly," an independent rating agency
(Emergency Care Research Insitute) [FN4] called
Diasol's "Shelly" "unacceptable." In Limine Order,
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471 F.3d 1293 Page 14
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slip op. at 16. The record also shows that the
"Shelly" sold only in very small quantities, and was
not available to distributors like Fresenius.
FN4. Emergency Care Research Institute is
a non-profit health services research agency
that has been providing information and
technical assistance to the healthcare
community to support safe and costeffective
patient care for over 30 years. It
has been called the "Consumer Reports for
medical devices" and the "preeminent
source for healthcare risk management
information and advice."
Thus, substantial evidence supports the jury award
for lost profits due to lost sales to the infringing
Platypus guard. Further, this court does not perceive
that the jury award is grossly excessive or monstrous,
or based only on speculation or guesswork.
VI.
DSU also appeals the denial of all of its motions for
new trial on various of the trial court's evidentiary
rulings. Post Trial Motions' Order, slip op. at 3-4.
DSU based its motions on a variety of alleged errors
in admitting or excluding evidence. For instance,
DSU faults the district court for admitting the
testimony of Mr. Timothy Erskine on the question of
obviousness of the '311 patent, for admitting
evidence about the prosecution history of the related
'072 patent, and for excluding evidence of ITL's
patent infringement insurance from the consideration
of willfulness. The Ninth Circuit reviews "decisions
regarding admission of evidence for abuse of
discretion," Rogers v. Raymark Indus., Inc., 922 F.2d
1426, 1429 (9th Cir.1991) (citing Daily Herald Co. v.
Munro, 838 F.2d 380, 388 (9th Cir.1988)). This
court detects no abuse of discretion in any of these
rulings.
[32] DSU also asserts that the jury's verdict, finding
claims 46-47 and 50- 52 obvious, is against the great
weight of the evidence. However, the lengthy trial
record showed that the prior art contained all
elements of claims 46-47, 50-52 of the '311 patent.
This record includes: the testimony of Mr. Erskine;
United States Patent No. 4,935,012 (Magre patent)
and United States Patent No. 3,572,334, which
disclose every element of '311 patent's claims 46, and
50-51; the Magre patent and United States Patent
No. 3,463,152, which disclose every element of '311
patent's claims 46-47 and 50; the Magre patent and
United States Patent No. 4,170,933, which disclose
every element of claim 46; and the Magre patent and
the Hughes patent, which disclose every element of
claims 46-47 and 52. The record also showed
evidence of adequate motivation to combine these
references to reach a decision of obviousness. In
addition, the jury heard adequate evidence on the
objective indicia of non-obviousness. As a result,
substantial evidence supports the obviousness
verdict. The trial *1311 court properly denied a new
trial on this basis as well.
[33] DSU also appeals the trial court's response to a
question from the jury during jury deliberations.
During deliberations, the jury requested a
clarification on the hindsight jury instruction.
Transcript, at 14984-85, 15019, 15036. The trial
court responded by referring the jury back to the jury
instructions on invalidity. Id. at 14985, 15019. Both
parties had earlier accepted those instructions. Thus,
the trial court did not abuse its "wide discretion" in
responding to a jury question. Arizona v. Johnson,
351 F.3d 988, 994 (9th Cir.2003).
VII.
In conclusion, this court affirms the trial court's grant
of summary judgment of non-infringement on the
combination claims (combination of guard and
needle assembly) and on the open-shell configuration
of the stand-alone claims. This court affirms the trial
court's evidentiary rulings. This court also affirms
the trial court's denial of all of the post-trial motions,
affirming entry of the final judgment in its entirety.
COSTS
Each party shall bear its own costs.
AFFIRMED
MICHEL, Chief Judge, and MAYER, Circuit Judge,
concurring.
Although we agree with the court's analysis in
Section III.B, we do not consider it necessary to
address this issue en banc. DSU misreads Hewlett-
Packard as if we had said "proof of actual intent to
cause the acts which constitute the infringement is a
necessary and sufficient prerequisite to finding active
inducement," but we did not. There is no actual
conflict between Hewlett-Packard and Manville and,
thus, no need for intervention by the full court. Such
rare intervention should be reserved for real conflicts
as well as cases of exceptional importance. See Fed.
R.App. P. 35(a). In our opinion, the panel was free to
conclude that the district court correctly rejected
DSU's proffered jury instruction because,
misunderstanding Hewlett-Packard, DSU did not
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471 F.3d 1293 Page 15
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(Cite as: 471 F.3d 1293)
correctly state the law.
Moreover, we write to make clear that we do not set
forth a new standard here as to what satisfies the
"knowledge of the patent" requirement in cases
brought under 35 U.S.C. § 271(b). See, e.g.,
Insituform Techs., Inc. v. Cat Contr. Inc., 161 F.3d
688, 695 (Fed.Cir.1998) (analyzing section 271(b)
liability under both actual and constructive
knowledge standards). There is no dispute that ITL
Corporation Pty, Ltd., had actual knowledge of
United States Patent No. 5,112,311. Accordingly, the
"knowledge of the patent" issue is not before us.
(PDF)
• 2004 WL 3768198 (Appellate Brief) Brief for
Defendant-Cross Appellant (Feb. 17, 2004)Original
Image of this Document (PDF)
• 2004 WL 3768199 (Appellate Brief) Appellant's
Brief (Jan. 5, 2004)Original Image of this Document
with Appendix (PDF)
• 04-1052 (Docket) (Oct. 27, 2003)
END OF DOCUMENT
471 F.3d 1293, 81 U.S.P.Q.2d 1238
Briefs and Other Related Documents (Back to top)
• 2005 WL 2156844 (Appellate Brief) Non-
Confidential Reply Brief of Cross-Appellants Jms
Co., Ltd. and Jms North America Corporation (Aug.
1, 2005)Original Image of this Document (PDF)
• 2005 WL 1843100 (Appellate Brief) Appellants'
Reply Brief Non-Confidential (Jun. 29,
2005)Original Image of this Document (PDF)
• 2005 WL 2477398 (Appellate Brief) Brief of
Cross-Appellant Itl Corporation Pty, Ltd. (Mar. 7,
2005)Original Image of this Document (PDF)
• 2005 WL 3018503 (Appellate Brief) Corrected
Non-Confidential Brief of Cross-Appellants Jms Co.,
Ltd. and Jms North America Corporation (Mar. 3,
2005)Original Image of this Document with
Appendix (PDF)
• 2004 WL 3551709 (Appellate Brief) Non-
Confidential Brief of Appellants (Dec. 20,
2004)Original Image of this Document with
Appendix (PDF)
• 05-1052 (Docket) (Oct. 28, 2004)
• 05-1048 (Docket) (Oct. 26, 2004)
• 04-1620 (Docket) (Sep. 29, 2004)
• 2004 WL 3768201 (Appellate Brief) Reply Brief
for Defendant-Cross Appellant (Apr. 19,
2004)Original Image of this Document (PDF)
• 2004 WL 3768200 (Appellate Brief) Reply Brief
(Mar. 31, 2004)Original Image of this Document
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116 S.Ct. 1384 Page 1
517 U.S. 370, 116 S.Ct. 1384, 64 USLW 4263, 96 Cal. Daily Op. Serv. 2788, 134 L.Ed.2d 577, 38 U.S.P.Q.2d
1461, 96 Daily Journal D.A.R. 4642
(Cite as: 517 U.S. 370, 116 S.Ct. 1384)
Briefs and Other Related Documents
Supreme Court of the United States
Herbert MARKMAN and Positek, Inc., Petitioners,
v.
WESTVIEW INSTRUMENTS, INC. and Althon
Enterprises, Inc.
No. 95-26.
Argued Jan. 8, 1996.
Decided April 23, 1996.
Holder of patent for inventory control method for use
in dry cleaning business brought patent infringement
action against competitor. The United States District
Court for the Eastern District of Pennsylvania,
Marvin Katz, J., entered judgment as matter of law
for competitor, despite jury's finding of infringement.
The Court of Appeals for the Federal Circuit, 52 F.3d
967, affirmed, ruling that interpretation of patent's
claim terms was exclusive province of court.
Certiorari was granted. The Supreme Court, Justice
Souter, held that: (1) patent infringement actions
descended from actions at law, such that Seventh
Amendment required trial by jury; (2) common-law
practice at time Seventh Amendment was adopted did
not require interpretation of claims, or terms of art,
by jury rather than judge; and (3) construction of
patent, including terms of art within claim, was
exclusively within province of court, in view of
existing precedent, suitability of interpretation issues
for determination by judge, and importance of
uniformity in treatment of given patent.
Affirmed.
West Headnotes
[1] Patents 291 101(1)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(1) k. In General. Most Cited Cases
Patents 291 101(4)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(4) k. Specifications and Drawings,
Construction With. Most Cited Cases
Patent must describe exact scope of invention and its
manufacture to secure to patentee all to which
patentee is entitled, and to apprise public of what is
still open to them; these objectives are served by both
patent specification, which describes invention in
such full, clear, concise, and exact terms as to enable
any person skilled in the art to make and use
invention, and patent's claims, which particularly
point out and distinctly claim subject matter which
applicant regards as invention. 35 U.S.C.A. § 112.
[2] Patents 291 101(1)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(1) k. In General. Most Cited Cases
Patent claim defines scope of patent grant, and
functions to forbid not only exact copies of invention,
but products that go to heart of invention yet avoid
literal language of claim by making noncritical
change.
[3] Patents 291 101(2)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(2) k. Construction in General.
Most Cited Cases
Patents 291 226.6
291 Patents
291XII Infringement
291XII(A) What Constitutes Infringement
291k226.5 Substantial Identity of Subject
Matter
291k226.6 k. Comparison with Claims of
Patent. Most Cited Cases
Victory in patent infringement suit requires finding
that patent claim covers alleged infringer's product or
process, which in turn necessitates determination of
what words in claim mean. 35 U.S.C.A. § 271(a).
[4] Jury 230 12(1)
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116 S.Ct. 1384 Page 2
517 U.S. 370, 116 S.Ct. 1384, 64 USLW 4263, 96 Cal. Daily Op. Serv. 2788, 134 L.Ed.2d 577, 38 U.S.P.Q.2d
1461, 96 Daily Journal D.A.R. 4642
(Cite as: 517 U.S. 370, 116 S.Ct. 1384)
230 Jury
230II Right to Trial by Jury
230k12 Nature of Cause of Action or Issue in
General
230k12(1) k. In General. Most Cited Cases
Jury 230 13(1)
230 Jury
230II Right to Trial by Jury
230k13 Legal or Equitable Actions or Issues
230k13(1) k. In General. Most Cited Cases
Under “historical test” for determining right to jury
trial under Seventh Amendment, court asks first
whether it is dealing with cause of action that either
was tried at law at time amendment was adopted or
was at least analogous to action that was tried at law
at that time; if action in question belongs in law
category, court then asks whether particular trial
decision must fall to jury in order to preserve
substance of common-law right as it existed in 1791.
U.S.C.A. Const.Amend. 7.
[5] Jury 230 13(1)
230 Jury
230II Right to Trial by Jury
230k13 Legal or Equitable Actions or Issues
230k13(1) k. In General. Most Cited Cases
In determining whether party is entitled to jury trial
under Seventh Amendment, statutory action is first
compared to 18th-century actions brought in courts of
England prior to merger of courts of law and equity.
U.S.C.A. Const.Amend. 7.
[6] Jury 230 14(1.1)
230 Jury
230II Right to Trial by Jury
230k14 Particular Actions and Proceedings
230k14(1.1) k. Patent and Copyright Cases.
Most Cited Cases
Patents 291 280
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k280 k. Nature of Remedy. Most Cited
Cases
Modern patent infringement action descended from
infringement actions tried at law in 18th century;
thus, Seventh Amendment requires that patent
infringement cases today be tried to jury, as their
predecessors were more than two centuries ago.
U.S.C.A. Const.Amend. 7.
[7] Jury 230 12(1)
230 Jury
230II Right to Trial by Jury
230k12 Nature of Cause of Action or Issue in
General
230k12(1) k. In General. Most Cited Cases
Whether Seventh Amendment requires that particular
issue in jury trial be determined by jury depends on
whether jury must shoulder this responsibility as
necessary to preserve substance of common-law right
of trial by jury; only those incidents which are
regarded as fundamental, as inherent in and of
essence of system of trial by jury, are placed beyond
reach of legislature. U.S.C.A. Const.Amend. 7.
[8] Jury 230 12(1)
230 Jury
230II Right to Trial by Jury
230k12 Nature of Cause of Action or Issue in
General
230k12(1) k. In General. Most Cited Cases
In evaluating substance of common-law right, for
purpose of determining whether Seventh Amendment
requires that particular issue in jury trial be
determined by jury, court should use historical
method, similar to characterizing suits and actions
within which issue arises; where there is no exact
antecedent, best hope lies in comparing modern
practice to earlier ones whose allocation to court or
jury is known, seeking best analogy that can be
drawn between old and new. U.S.C.A.
Const.Amend. 7.
[9] Jury 230 14(1.1)
230 Jury
230II Right to Trial by Jury
230k14 Particular Actions and Proceedings
230k14(1.1) k. Patent and Copyright Cases.
Most Cited Cases
Seventh Amendment did not require that jury, rather
than judge, construe claims in patent and,
particularly, terms of art, as common-law practice at
time Seventh Amendment was adopted did not
support patentee's assertion that jury interpreted
patent claims at that time; closest historical analogy
was to construction of specifications for which there
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116 S.Ct. 1384 Page 3
517 U.S. 370, 116 S.Ct. 1384, 64 USLW 4263, 96 Cal. Daily Op. Serv. 2788, 134 L.Ed.2d 577, 38 U.S.P.Q.2d
1461, 96 Daily Journal D.A.R. 4642
(Cite as: 517 U.S. 370, 116 S.Ct. 1384)
was no established jury practice, and judges, not jury,
ordinarily construed written documents. U.S.C.A.
Const.Amend. 7.
[10] Patents 291 101(1)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(1) k. In General. Most Cited Cases
Patents 291 165(1)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k165 Operation and Effect of Claims in
General
291k165(1) k. In General. Most Cited
Cases
Patents 291 314(5)
291 Patents
291XII Infringement
291XII(C) Suits in Equity
291k314 Hearing
291k314(5) k. Questions of Law or Fact.
Most Cited Cases
Construction of patent, including terms of art within
claim, is exclusively within province of court, not
jury, in view of existing precedent, suitability of
interpretation issues for determination by judge, and
importance of uniformity in treatment of given
patent.
[11] Patents 291 101(2)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(2) k. Construction in General.
Most Cited Cases
Patent construction is special occupation, requiring,
like all others, special training and practice; judge,
from training and discipline, is more likely to give
proper interpretation to such instruments than jury,
and judge is, therefore, more likely to be right, in
performing such duty, than jury can be expected to
be.
[12] Patents 291 101(2)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(2) k. Construction in General.
Most Cited Cases
Although question of meaning of term of art in patent
claim is subject of testimony requiring credibility
determinations, such meaning is more properly
determined by judge than jury, as any credibility
determinations will be subsumed within necessarily
sophisticated analysis of whole document, required
by standard construction rule that term can be defined
only in way that comports with instrument as whole;
jury's capabilities to evaluate demeanor, to sense
mainsprings of human conduct, or to reflect
community standards, are much less significant than
trained ability to evaluate testimony in relation to
overall structure of patent.
[13] Patents 291 101(2)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(2) k. Construction in General.
Most Cited Cases
Patents 291 165(1)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k165 Operation and Effect of Claims in
General
291k165(1) k. In General. Most Cited
Cases
Importance of uniformity in treatment of given patent
supported allocation of all issues of patent claim
construction, including construction of terms of art,
to court rather than jury; whereas issue preclusion
could not be asserted against new and independent
infringement defendants, treating interpretive issues
as purely legal would promote intrajurisdictional
certainty through application of stare decisis.
Patents 291 328(4)
291 Patents
291XIII Decisions on the Validity, Construction,
and Infringement of Particular Patents
291k328 Patents Enumerated
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116 S.Ct. 1384 Page 4
517 U.S. 370, 116 S.Ct. 1384, 64 USLW 4263, 96 Cal. Daily Op. Serv. 2788, 134 L.Ed.2d 577, 38 U.S.P.Q.2d
1461, 96 Daily Journal D.A.R. 4642
(Cite as: 517 U.S. 370, 116 S.Ct. 1384)
291k328(4) k. Reissue. Most Cited Cases
33,054. Reissue Patent Cited.
**1386 *370 Syllabus FN*
FN* The syllabus constitutes no part of the
opinion of the Court but has been prepared
by the Reporter of Decisions for the
convenience of the reader. See United
States v. Detroit Lumber Co., 200 U.S. 321,
337, 26 S.Ct. 282, 287, 50 L.Ed. 499.
Petitioner Markman owns the patent to a system that
tracks clothing through the dry-cleaning process
using a keyboard and data processor to generate
transaction records, including a bar code readable by
optical detectors. According to the patent's claim,
the portion of the patent document that defines the
patentee's rights, Markman's product can “maintain
an inventory total” and “detect and localize spurious
additions to inventory.” The product of respondent
Westview Instruments, Inc., also uses a keyboard and
processor and lists dry-cleaning charges on bar-coded
tickets that can be read by optical detectors. In this
infringement suit, after hearing an expert witness
testify about the meaning of the claim's language, the
jury found that Westview's product had infringed
Markman's patent. The District Court nevertheless
directed a verdict for Westview on the ground that its
device is unable to track “inventory” as that term is
used in the claim. The Court of Appeals affirmed,
holding the interpretation of claim terms to be the
exclusive province of the court and the Seventh
Amendment to be consistent with that conclusion.
Held: The construction of a patent, including terms
of art within its claim, is exclusively within the
province of the court. Pp. 1389-1396.
(a) The Seventh Amendment right of trial by jury is
the right which existed under the English common
law when the Amendment was adopted. Baltimore &
Carolina Line, Inc. v. Redman, 295 U.S. 654, 657, 55
S.Ct. 890, 891, 79 L.Ed. 1636. Thus, the Court asks,
first, whether infringement cases either were tried at
law at the time of the founding or are at least
analogous to a cause of action that was. There is no
dispute that infringement cases today must be tried
before a jury, as their predecessors were more than
two centuries ago. This conclusion raises a second
question: whether the particular trial issue (here a
patent claim's construction) is necessarily a jury
issue. This question is answered by comparing the
modern practice to historical sources. Where there is
no exact antecedent in the common law, the modern
practice should be compared to earlier practices
whose allocation to court or jury is known, and the
*371 best analogy that can be drawn between an old
and the new must be sought. Pp. 1389-1390.
(b) There is no direct antecedent of modern claim
construction in the historical sources. The closest
18th-century analogue **1387 to modern claim
construction seems to have been the construction of
patent specifications describing the invention. Early
patent cases from England and this Court show that
judges, not juries, construed specification terms. No
authority from this period supports Markman's
contention that even if judges were charged with
construing most patent terms, the art of defining
terms of art in a specification fell within the jury's
province. Pp. 1390-1393.
(c) Since evidence of common-law practice at the
time of the framing does not entail application of the
Seventh Amendment's jury guarantee to the
construction of the claim document, this Court must
look elsewhere to characterize this determination of
meaning in order to allocate it as between judge or
jury. Existing precedent, the relative interpretive
skills of judges and juries, and statutory policy
considerations all favor allocating construction issues
to the court. As the former patent practitioner,
Justice Curtis, explained, the first issue in a patent
case, construing the patent, is a question of law, to be
determined by the court. The second issue, whether
infringement occurred, is a question of fact for a jury.
Winans v. Denmead, 15 How. 330, 338, 14 L.Ed.
717. Contrary to Markman's contention, Bischoff v.
Wethered, 9 Wall. 812, 19 L.Ed. 829, and Tucker v.
Spalding, 13 Wall. 453, 20 L.Ed. 515, neither
indicate that 19th-century juries resolved the meaning
of patent terms of art nor undercut Justice Curtis's
authority. Functional considerations also favor
having judges define patent terms of art. A judge,
from his training and discipline, is more likely to give
proper interpretation to highly technical patents than
a jury and is in a better position to ascertain whether
an expert's proposed definition fully comports with
the instrument as a whole. Finally, the need for
uniformity in the treatment of a given patent favors
allocation of construction issues to the court. Pp.
1393-1396.
52 F.3d 967 (C.A.Fed.1995) , affirmed.
SOUTER, J., delivered the opinion for a unanimous
Court.
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116 S.Ct. 1384 Page 5
517 U.S. 370, 116 S.Ct. 1384, 64 USLW 4263, 96 Cal. Daily Op. Serv. 2788, 134 L.Ed.2d 577, 38 U.S.P.Q.2d
1461, 96 Daily Journal D.A.R. 4642
(Cite as: 517 U.S. 370, 116 S.Ct. 1384)
William B. Mallen, for petitioners.
*372 Frank H. Griffin, III, Media, PA, for
respondents.For U.S. Supreme Court briefs, see:1995
WL 668008 (Pet.Brief)1995 WL 730381
(Resp.Brief)1995 WL 763711 (Reply.Brief)
Justice SOUTER delivered the opinion of the Court.
The question here is whether the interpretation of a
so-called patent claim, the portion of the patent
document that defines the scope of the patentee's
rights, is a matter of law reserved entirely for the
court, or subject to a Seventh Amendment guarantee
that a jury will determine the meaning of any
disputed term of art about which expert testimony is
offered. We hold that the construction of a patent,
including terms of art within its claim, is exclusively
within the province of the court.
*373 I
[1][2] The Constitution empowers Congress “[t]o
promote the Progress of Science and useful Arts, by
securing for limited Times to Authors and Inventors
the exclusive Right to their respective Writings and
Discoveries.” Art. I, § 8, cl. 8. Congress first
exercised this authority in 1790, when it provided for
the issuance of “letters patent,” Act of Apr. 10, 1790,
ch. 7, § 1, 1 Stat. 109, which, like their modern
counterparts, granted inventors “the right to exclude
others from making, using, offering for sale, selling,
or importing the patented invention,” in exchange for
full disclosure of an invention, H. Schwartz, Patent
Law and Practice 1, 33 (2d ed.1995). It has long
been understood that a patent must describe the exact
scope of an invention and its manufacture to “secure
to [the patentee] all to which he is entitled, [and] to
apprise the public of what is still open to them.”
McClain v. Ortmayer, 141 U.S. 419, 424, 12 S.Ct.
76, 77, 35 L.Ed. 800 (1891). Under the modern
American system, these objectives are served by two
distinct elements of a patent document. First, it
contains a specification describing the invention “in
such full, clear, concise, and exact **1388 terms as to
enable any person skilled in the art ... to make and
use the same.” 35 U.S.C. § 112; see also 3 E.
Lipscomb, Walker on Patents § 10:1, pp. 183-184
(3d ed. 1985) (Lipscomb) (listing the requirements
for a specification). Second, a patent includes one or
more “claims,” which “particularly poin[t] out and
distinctly clai[m] the subject matter which the
applicant regards as his invention.” 35 U.S.C. § 112.
“A claim covers and secures a process, a machine, a
manufacture, a composition of matter, or a design,
but never the function or result of either, nor the
scientific explanation of their operation.” 6
Lipscomb § 21:17, at 315-316. The claim
“define[s] the scope of a patent grant,” 3 id., § 11:1,
at 280, and functions to forbid not only exact copies
of an invention, but products that go to “the heart of
an invention but avoids the literal language of the
claim by making a *374 noncritical change,”
Schwartz, supra, at 82. FN1 In this opinion, the word
“claim” is used only in this sense peculiar to patent
law.
FN1. Thus, for example, a claim for a
ceiling fan with three blades attached to a
solid rod connected to a motor would not
only cover fans that take precisely this form,
but would also cover a similar fan that
includes some additional feature, e.g., such a
fan with a cord or switch for turning it on
and off, and may cover a product deviating
from the core design in some noncritical
way, e.g., a three-bladed ceiling fan with
blades attached to a hollow rod connected to
a motor. H. Schwartz, Patent Law and
Practice 81-82 (2d ed.1995).
[3] Characteristically, patent lawsuits charge what is
known as infringement, Schwartz, supra, at 75, and
rest on allegations that the defendant “without
authority ma[de], use[d] or [sold the] patented
invention, within the United States during the term of
the patent therefor....” 35 U.S.C. § 271(a). Victory
in an infringement suit requires a finding that the
patent claim “covers the alleged infringer's product or
process,” which in turn necessitates a determination
of “what the words in the claim mean.” Schwartz,
supra, at 80; see also 3 Lipscomb § 11:2, at 288-
290.
Petitioner in this infringement suit, Markman, owns
United States Reissue Patent No. 33,054 for his
“Inventory Control and Reporting System for
Drycleaning Stores.” The patent describes a system
that can monitor and report the status, location, and
movement of clothing in a dry-cleaning
establishment. The Markman system consists of a
keyboard and data processor to generate written
records for each transaction, including a bar code
readable by optical detectors operated by employees,
who log the progress of clothing through the drycleaning
process. Respondent Westview's product
also includes a keyboard and processor, and it lists
charges for the dry-cleaning services on bar-coded
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116 S.Ct. 1384 Page 6
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1461, 96 Daily Journal D.A.R. 4642
(Cite as: 517 U.S. 370, 116 S.Ct. 1384)
tickets that can be read by portable optical detectors.
Markman brought an infringement suit against
Westview and Althon Enterprises, an operator of drycleaning
establishments*375 using Westview's
products (collectively, Westview). Westview
responded that Markman's patent is not infringed by
its system because the latter functions merely to
record an inventory of receivables by tracking
invoices and transaction totals, rather than to record
and track an inventory of articles of clothing. Part of
the dispute hinged upon the meaning of the word
“inventory,” a term found in Markman's independent
claim 1, which states that Markman's product can
“maintain an inventory total” and “detect and localize
spurious additions to inventory.” The case was tried
before a jury, which heard, among others, a witness
produced by Markman who testified about the
meaning of the claim language.
After the jury compared the patent to Westview's
device, it found an infringement of Markman's
independent claim 1 and dependent claim 10. FN2 The
District Court nevertheless granted Westview's
deferred motion for judgment as a matter of law, one
of its reasons being that the term “inventory” in
Markman's patent encompasses “both cash inventory
and the actual physical inventory of articles of
clothing.” 772 F.Supp. 1535, 1537-1538
(E.D.Pa.1991). Under the trial court's construction
of the patent, the production,**1389 sale, or use of a
tracking system for dry cleaners would not infringe
Markman's patent unless the product was capable of
tracking articles of clothing throughout the cleaning
process and generating reports about their status and
location. Since Westview's system cannot do these
things, the District Court directed a verdict on the
ground that Westview's device does not have the
“means to maintain an inventory total” and thus
cannot “ ‘detect and localize spurious additions to
inventory as well as spurious deletions therefrom,’ ”
as required by claim 1. Id., at 1537.
FN2. Dependent claim 10 specifies that, in
the invention of claim 1, the input device is
an alpha-numeric keyboard in which single
keys may be used to enter the attributes of
the items in question.
*376 Markman appealed, arguing it was error for the
District Court to substitute its construction of the
disputed claim term ‘inventory’ for the construction
the jury had presumably given it. The United States
Court of Appeals for the Federal Circuit affirmed,
holding the interpretation of claim terms to be the
exclusive province of the court and the Seventh
Amendment to be consistent with that conclusion. 52
F.3d 967 (1995). Markman sought our review on
each point, and we granted certiorari. 515 U.S. 1192,
116 S.Ct. 40, 132 L.Ed.2d 921 (1995). We now
affirm.
II
[4] The Seventh Amendment provides that “[i]n Suits
at common law, where the value in controversy shall
exceed twenty dollars, the right of trial by jury shall
be preserved....” U.S. Const., Amdt. 7. Since Justice
Story's day, United States v. Wonson, 28 F. Cas. 745,
750 (No. 16,750) (CC Mass. 1812), we have
understood that “[t]he right of trial by jury thus
preserved is the right which existed under the English
common law when the Amendment was adopted.”
Baltimore & Carolina Line, Inc. v. Redman, 295 U.S.
654, 657, 55 S.Ct. 890, 891, 79 L.Ed. 1636 (1935).
In keeping with our longstanding adherence to this
“historical test,” Wolfram, The Constitutional History
of the Seventh Amendment, 57 Minn. L.Rev. 639,
640-643 (1973), we ask, first, whether we are dealing
with a cause of action that either was tried at law at
the time of the founding or is at least analogous to
one that was, see, e.g., Tull v. United States, 481 U.S.
412, 417, 107 S.Ct. 1831, 1835, 95 L.Ed.2d 365
(1987). If the action in question belongs in the law
category, we then ask whether the particular trial
decision must fall to the jury in order to preserve the
substance of the common-law right as it existed in
1791. See infra, at 1389-1390. FN3
FN3. Our formulations of the historical test
do not deal with the possibility of conflict
between actual English common-law
practice and American assumptions about
what that practice was, or between English
and American practices at the relevant time.
No such complications arise in this case.
*377 A
[5][6] As to the first issue, going to the character of
the cause of action, “[t]he form of our analysis is
familiar. ‘First we compare the statutory action to
18th-century actions brought in the courts of England
prior to the merger of the courts of law and equity.’ ”
Granfinanciera, S.A. v. Nordberg, 492 U.S. 33, 42,
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116 S.Ct. 1384 Page 7
517 U.S. 370, 116 S.Ct. 1384, 64 USLW 4263, 96 Cal. Daily Op. Serv. 2788, 134 L.Ed.2d 577, 38 U.S.P.Q.2d
1461, 96 Daily Journal D.A.R. 4642
(Cite as: 517 U.S. 370, 116 S.Ct. 1384)
109 S.Ct. 2782, 2790, 106 L.Ed.2d 26 (1989)
(citation omitted). Equally familiar is the descent of
today's patent infringement action from the
infringement actions tried at law in the 18th century,
and there is no dispute that infringement cases today
must be tried to a jury, as their predecessors were
more than two centuries ago. See, e.g., Bramah v.
Hardcastle, 1 Carp. P.C. 168 (K.B.1789).
B
This conclusion raises the second question, whether a
particular issue occurring within a jury trial (here the
construction of a patent claim) is itself necessarily a
jury issue, the guarantee being essential to preserve
the right to a jury's resolution of the ultimate dispute.
In some instances the answer to this second question
may be easy because of clear historical evidence that
the very subsidiary question was so regarded under
the English practice of leaving the issue for a jury.
But when, as here, the old practice provides no clear
answer, see infra, at 1390-1391, we are forced to
make a judgment about the scope of the Seventh
Amendment guarantee without the benefit of any
foolproof test.
**1390 [7] The Court has repeatedly said that the
answer to the second question “must depend on
whether the jury must shoulder this responsibility as
necessary to preserve the ‘substance of the commonlaw
right of trial by jury.’ ” Tull v. United States,
supra, at 426, 107 S.Ct., at 1840 (emphasis added)
(quoting Colgrove v. Battin, 413 U.S. 149, 156, 93
S.Ct. 2448, 2452, 37 L.Ed.2d 522 (1973)); see also
Baltimore & Carolina Line, supra, at 657, 55 S.Ct.,
at 891. “ ‘ “Only those incidents which are regarded
as fundamental, as inherent in and of the essence of
the system of trial by jury, are placed beyond*378
the reach of the legislature.” ’ ” Tull v. United
States, supra, at 426, 107 S.Ct., at 1840 (citations
omitted); see also Galloway v. United States, 319
U.S. 372, 392, 63 S.Ct. 1077, 1088, 87 L.Ed. 1458
(1943).
The “substance of the common-law right” is,
however, a pretty blunt instrument for drawing
distinctions. We have tried to sharpen it, to be sure,
by reference to the distinction between substance and
procedure. See Baltimore & Carolina Line, supra,
at 657, 55 S.Ct., at 891; see also Galloway v. United
States, supra, at 390-391, 63 S.Ct., at 1087-1088; Ex
parte Peterson, 253 U.S. 300, 309, 40 S.Ct. 543, 546,
64 L.Ed. 919 (1920); Walker v. New Mexico &
Southern Pacific R. Co., 165 U.S. 593, 596, 17 S.Ct.
421, 422, 41 L.Ed. 837 (1897); but see Sun Oil Co.
v. Wortman, 486 U.S. 717, 727, 108 S.Ct. 2117,
2124, 100 L.Ed.2d 743 (1988). We have also
spoken of the line as one between issues of fact and
law. See Baltimore & Carolina Line, supra, at 657,
55 S.Ct., at 891; see also Ex parte Peterson, supra,
at 310, 40 S.Ct., at 546; Walker v. New Mexico &
Southern Pacific R. Co., supra, at 597, 17 S.Ct., at
422; but see Pullman-Standard v. Swint, 456 U.S.
273, 288, 102 S.Ct. 1781, 1789, 72 L.Ed.2d 66
(1982).
[8] But the sounder course, when available, is to
classify a mongrel practice (like construing a term of
art following receipt of evidence) by using the
historical method, much as we do in characterizing
the suits and actions within which they arise. Where
there is no exact antecedent, the best hope lies in
comparing the modern practice to earlier ones whose
allocation to court or jury we do know, cf. Baltimore
& Carolina Line, supra, at 659, 660, 55 S.Ct., at 892,
893; Dimick v. Schiedt, 293 U.S. 474, 477, 482, 55
S.Ct. 296, 297, 79 L.Ed. 603 (1935), seeking the best
analogy we can draw between an old and the new,
see Tull v. United States, supra, at 420-421, 107
S.Ct., at 1836-1837 (we must search the English
common law for “appropriate analogies” rather than a
“precisely analogous common-law cause of action”).
C
[9] “Prior to 1790 nothing in the nature of a claim
had appeared either in British patent practice or in
that of the *379 American states,” Lutz, Evolution of
the Claims of U.S. Patents, 20 J. Pat. Off. Soc. 134
(1938), and we have accordingly found no direct
antecedent of modern claim construction in the
historical sources. Claim practice did not achieve
statutory recognition until the passage of the Act of
July 4, 1836, ch. 357, § 6, 5 Stat. 119, and inclusion
of a claim did not become a statutory requirement
until 1870, Act of July 8, 1870, ch. 230, § 26, 16
Stat. 201; see 1 A. Deller, Patent Claims § 4, p. 9
(2d ed.1971). Although, as one historian has
observed, as early as 1850 “judges were ... beginning
to express more frequently the idea that in seeking to
ascertain the invention ‘claimed’ in a patent the
inquiry should be limited to interpreting the
summary, or ‘claim,’ ” Lutz, supra, at 145, “[t]he
idea that the claim is just as important if not more
important than the description and drawings did not
develop until the Act of 1870 or thereabouts.”
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1461, 96 Daily Journal D.A.R. 4642
(Cite as: 517 U.S. 370, 116 S.Ct. 1384)
Deller, supra, § 4, at 9.
At the time relevant for Seventh Amendment
analogies, in contrast, it was the specification, itself a
relatively new development, H. Dutton, The Patent
System and Inventive Activity During the Industrial
Revolution, 1750-1852, pp. 75-76 (1984), that
represented the key to the patent. Thus, patent
litigation in that early period was typified by socalled
novelty actions, testing whether “any essential
part of [the patent had been] disclosed to the public
before,” Huddart v. Grimshaw, Dav. Pat. Cas. 265,
298 (K.B.1803), and “enablement”**1391 cases, in
which juries were asked to determine whether the
specification described the invention well enough to
allow members of the appropriate trade to reproduce
it, see, e.g., Arkwright v. Nightingale, Dav. Pat. Cas.
37, 60 (C.P. 1785).
The closest 18th-century analogue of modern claim
construction seems, then, to have been the
construction of specifications, and as to that function
the mere smattering *380 of patent cases that we
have from this period FN4 shows no established jury
practice sufficient to support an argument by analogy
that today's construction of a claim should be a
guaranteed jury issue. Few of the case reports even
touch upon the proper interpretation of disputed
terms in the specifications at issue, see, e.g., Bramah
v. Hardcastle, 1 Carp. P.C. 168 (K.B.1789); King v.
Else, 1 Carp. P.C. 103, Dav. Pat. Cas. 144
(K.B.1785); Dollond's Case, 1 Carp. P.C. 28 (C.P.
1758); Administrators of Calthorp v. Waymans, 3
Keb. 710, 84 Eng. Rep. 966 (K.B.1676), and none
demonstrates that the definition of such a term was
determined by the jury. FN5 This absence of an
established practice should not surprise us, given the
primitive state of jury patent practice at the end of the
18th century, when juries were still new to the field.
Although by 1791 more than a century had passed
since the enactment of the Statute of Monopolies,
which provided*381 that the validity of any
monopoly should be determined in accordance with
the common law, patent litigation had remained
within the jurisdiction of the Privy Council until 1752
and hence without the option of a jury trial. E.
Walterscheid, Early Evolution of the United States
Patent Law: Antecedents (Part 3), 77 J. Pat. & Tm.
Off. Soc. 771, 771-776 (1995). Indeed, the state of
patent law in the common-law courts before 1800 led
one historian to observe that “the reported cases are
destitute of any decision of importance.... At the end
of the eighteenth century, therefore, the Common
Law Judges were left to pick up the threads of the
principles of law without the aid of recent and
reliable precedents.” Hulme, On the Consideration
of the Patent Grant, Past and Present, 13 L.Q. Rev.
313, 318 (1897). Earlier writers expressed similar
discouragement at patent law's amorphous
character, FN6 and, as late as the 1830's, English
commentators were irked by enduring confusion in
the field. See Dutton, supra, at 69-70.
FN4. Before the turn of the century, “no
more than twenty-two [reported] cases came
before the superior courts of London.” H.
Dutton, The Patent System and Inventive
Activity During the Industrial Revolution,
1750-1852, p. 71 (1984).
FN5. Markman relies heavily upon Justice
Buller's notes of Lord Mansfield's
instructions in Liardet v. Johnson
(K.B.1778), in 1 J. Oldham, The Mansfield
Manuscripts and the Growth of English Law
in the Eighteenth Century 748 (1992).
Liardet was an enablement case about the
invention of stucco, in which a defendant
asserted that the patent was invalid because
it did not fully describe the appropriate
method for producing the substance. Even
setting aside concerns about the accuracy of
the summary of the jury instructions
provided for this case from outside the
established reports, see 1 Oldham, supra, at
752, n. 11, it does not show that juries
construed disputed terms in a patent. From
its ambiguous references, e.g., 1 Oldham,
supra, at 756 (“[Lord Mansfield] left to the
jury 1st, on all objections made to exactness,
certainty and propriety of the Specification,
& whether any workman could make it by
[the Specification]”), we cannot infer the
existence of an established practice, cf.
Galloway v. United States, 319 U.S. 372,
392, 63 S.Ct. 1077, 1088, 87 L.Ed. 1458
(1943) (expressing concern regarding the
“uncertainty and the variety of conclusions
which follows from an effort at purely
historical accuracy”), especially when, as
here, the inference is undermined by
evidence that judges, rather than jurors,
ordinarily construed written documents at
the time. See infra, at 1393-1394.
FN6. See, e.g., Boulton and Watt v. Bull, 2
H. Bl. 463, 491, 126 Eng. Rep. 651, 665
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1461, 96 Daily Journal D.A.R. 4642
(Cite as: 517 U.S. 370, 116 S.Ct. 1384)
(C.P. 1795) (Eyre, C.J.) (“Patent rights are
no where that I can find accurately discussed
in our books”); Dutton, supra n. 4, at 70-71
(quoting Abraham Weston as saying “it may
with truth be said that the [Law] Books are
silent on the subject [of patents] and furnish
no clue to go by, in agitating the Question
What is the Law of Patents”).
Markman seeks to supply what the early case reports
lack in so many words by relying on decisions like
Turner v. Winter, 1 T.R. 602, 99 Eng. Rep. 1274
(K.B.1787), and Arkwright v. Nightingale, Dav. Pat.
Cas. 37 (C.P. 1785), to argue that the 18th-century
juries must have acted as definers of patent terms just
to reach the verdicts we know they rendered in patent
cases turning on enablement or novelty. But the
conclusion simply does not follow. There is no more
**1392 reason to infer that juries supplied plenary
interpretation of written instruments in patent
litigation than in other cases implicating the meaning
of documentary terms, and we do know that in other
kinds of cases during this period judges, *382 not
juries, ordinarily construed written documents. FN7
The probability that the judges were doing the same
thing in the patent litigation of the time is confirmed
by the fact that as soon as the English reports did
begin to describe the construction of patent
documents, they show the judges construing the
terms of the specifications. See Bovill v. Moore,
Dav. Pat. Cas. 361, 399, 404 (C.P. 1816) (judge
submits question of novelty to the jury only after
explaining some of the language and “stat[ing] in
what terms the specification runs”); cf. Russell v.
Cowley & Dixon, Webs. Pat. Cas. 457, 467-470
(Exch.1834) (construing the terms of the
specification in reviewing a verdict); Haworth v.
Hardcastle, Webs. Pat. Cas. 480, 484-485 (1834)
(same). This evidence is in fact buttressed by cases
from this Court; when they first reveal actual
practice, the practice revealed is of the judge
construing the patent. See, e.g., Winans v. New York
& Erie R. Co., 21 How. 88, 100, 16 L.Ed. 68 (1859);
Winans v. Denmead, 15 How. 330, 338, 14 L.Ed. 717
(1854); Hogg v. Emerson, 6 How. 437, 484, 12 L.Ed.
505 (1848); cf. Parker v. Hulme, 18 F. Cas. 1138
(No. 10,740) (CC ED Pa. 1849). These indications
of our patent practice are the more impressive for
being all of a piece with what we know about the
analogous contemporary practice of interpreting*383
terms within a land patent, where it fell to the judge,
not the jury, to construe the words. FN8
FN7. See, e.g., Devlin, Jury Trial of
Complex Cases: English Practice at the
Time of the Seventh Amendment, 80
Colum. L.Rev. 43, 75 (1980); Weiner, The
Civil Jury Trial and the Law-Fact
Distinction, 54 Calif.L.Rev. 1867, 1932
(1966). For example, one historian
observed that it was generally the practice of
judges in the late 18th century “to keep the
construction of writings out of the jury's
hands and reserve it for themselves,” a
“safeguard” designed to prevent a jury from
“constru[ing] or refin[ing] it at pleasure.” 9
J. Wigmore, Evidence § 2461, p. 194 (J.
Chadbourn rev. ed.1981) (emphasis in
original; internal quotation marks omitted).
The absence of any established practice
supporting Markman's view is also shown
by the disagreement between Justices Willis
and Buller, reported in Macbeath v.
Haldimand, 1 T.R. 173, 180-182, 99 Eng.
Rep. 1036, 1040-1041 (K.B.1786), as to
whether juries could ever construe written
documents when their meaning was
disputed.
FN8. As we noted in Brown v. Huger, 21
How. 305, 318, 16 L.Ed. 125 (1859):
“With regard to the second part of this
objection, that which claims for the jury the
construction of the patent, we remark that
the patent itself must be taken as evidence of
its meaning; that, like other written
instruments, it must be interpreted as a
whole ... and the legal deductions drawn
therefrom must be conformable with the
scope and purpose of the entire document.
This construction and these deductions we
hold to be within the exclusive province of
the court.”
D
Losing, then, on the contention that juries generally
had interpretive responsibilities during the 18th
century, Markman seeks a different anchor for
analogy in the more modest contention that even if
judges were charged with construing most terms in
the patent, the art of defining terms of art employed
in a specification fell within the province of the jury.
Again, however, Markman has no authority from the
period in question, but relies instead on the later case
of Neilson v. Harford, Webs. Pat. Cas. 328
(Exch.1841). There, an exchange between the judge
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1461, 96 Daily Journal D.A.R. 4642
(Cite as: 517 U.S. 370, 116 S.Ct. 1384)
and the lawyers indicated that although the
construction of a patent was ordinarily for the court,
id., at 349 (Alderson, B.), judges should “leav[e] the
question of words of art to the jury,” id., at 350
(Alderson, B.); see also id., at 370 (judgment of the
court); Hill v. Evans, 4 De. G.F. & J. 288, 293-294,
45 Eng. Rep. 1195, 1197 (Ch. 1862). Without,
however, in any way disparaging the weight to which
Baron Alderson's view is entitled, the most we can
say is that an English report more than 70 years after
the time that concerns us indicates an exception to
what probably had been occurring earlier. FN9 In place
of **1393 *384 Markman's inference that this
exceptional practice existed in 1791 there is at best
only a possibility that it did, and for anything more
than a possibility we have found no scholarly
authority.
FN9. In explaining that judges generally
construed all terms in a written document at
the end of the 18th century, one historian
observed that “[i]nterpretation by local
usage for example (today the plainest case
of legitimate deviation from the normal
standard) was still but making its way.” 9
Wigmore, Evidence § 2461, at 195; see
also id., at 195, and n. 6 (providing
examples of this practice). We need not in
any event consider here whether our
conclusion that the Seventh Amendment
does not require terms of art in patent claims
to be submitted to the jury supports a similar
result in other types of cases.
III
[10] Since evidence of common-law practice at the
time of the framing does not entail application of the
Seventh Amendment's jury guarantee to the
construction of the claim document, we must look
elsewhere to characterize this determination of
meaning in order to allocate it as between court or
jury. We accordingly consult existing precedent FN10
and consider both the relative interpretive skills of
judges and juries and the statutory policies that ought
to be furthered by the allocation.
FN10. Because we conclude that our
precedent supports classifying the question
as one for the court, we need not decide
either the extent to which the Seventh
Amendment can be said to have crystallized
a law/fact distinction, cf. Ex parte Peterson,
253 U.S. 300, 310, 40 S.Ct. 543, 546, 64
L.Ed. 919 (1920); Walker v. New Mexico &
Southern Pacific R. Co., 165 U.S. 593, 597,
17 S.Ct. 421, 422, 41 L.Ed. 837 (1897), or
whether post-1791 precedent classifying an
issue as one of fact would trigger the
protections of the Seventh Amendment if
(unlike this case) there were no more
specific reason for decision.
A
The two elements of a simple patent case, construing
the patent and determining whether infringement
occurred, were characterized by the former patent
practitioner, Justice Curtis. FN11 “The first is a
question of law, to be determined by the court,
construing the letters-patent, and the description of
the invention and specification of claim annexed to
them. The second is a question of fact, to be
submitted to a jury.” Winans v. Denmead, supra, at
338; see *385Winans v. New York & Erie R. Co.,
supra, at 100; Hogg v. Emerson, supra, at 484; cf.
Parker v. Hulme, supra, at 1140.
FN11. See 1 A Memoir of Benjamin
Robbins Curtis, L.L.D., 84 (B. Curtis ed.
1879); cf. O'Reilly v. Morse, 15 How. 62,
63, 14 L.Ed. 601 (1854) (noting his
involvement in a patent case).
In arguing for a different allocation of responsibility
for the first question, Markman relies primarily on
two cases, Bischoff v. Wethered, 9 Wall. 812, 19
L.Ed. 829 (1870), and Tucker v. Spalding, 13 Wall.
453, 20 L.Ed. 515 (1872). These are said to show
that evidence of the meaning of patent terms was
offered to 19th-century juries, and thus to imply that
the meaning of a documentary term was a jury issue
whenever it was subject to evidentiary proof. That is
not what Markman's cases show, however.
In order to resolve the Bischoff suit implicating the
construction of rival patents, we considered “whether
the court below was bound to compare the two
specifications, and to instruct the jury, as a matter of
law, whether the inventions therein described were,
or were not, identical.” 9 Wall., at 813 (statement of
the case). We said it was not bound to do that, on
the ground that investing the court with so dispositive
a role would improperly eliminate the jury's function
in answering the ultimate question of infringement.
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517 U.S. 370, 116 S.Ct. 1384, 64 USLW 4263, 96 Cal. Daily Op. Serv. 2788, 134 L.Ed.2d 577, 38 U.S.P.Q.2d
1461, 96 Daily Journal D.A.R. 4642
(Cite as: 517 U.S. 370, 116 S.Ct. 1384)
FN12. We are also unpersuaded by
On that ultimate issue, expert testimony had been
admitted on “the nature of the various mechanisms or
manufactures described in the different patents
Tucker, supra, at 455. FN12 often becomes necessary that they should avail
produced, and as to the identity or diversity between
them.” Id., at 814. Although the jury's consideration
of that expert testimony in resolving the question of
infringement was said to impinge upon the wellestablished
principle “that it is the province of the
court, and not the jury, to construe the meaning of
documentary evidence,” id., at 815, we decided that it
petitioner's heavy reliance upon the decision
of Justice Story on circuit in Washburn v.
Gould, 29 F. Cas. 312 (No. 17,214) (CC
Mass. 1844). Although he wrote that “[t]he
jury are to judge of the meaning of words of
art, and technical phrases,” id., at 325, he
did so in describing the decision in Neilson
was not so. We said:
v. Harford, Webs. Pat. Cas. 328
“[T]he specifications ... profess to describe
(Exch.1841), which we discuss, supra, at
mechanisms and complicated machinery, chemical
compositions and other manufactured products,
which have their existence in pais, outside of the
1392, and, whether or not he agreed with
Neilson, he stated, “[b]ut I do not proceed
upon this ground.” 29 F. Cas., at 325.
documents themselves; and which are commonly
described by terms of the art or mystery to which *387 If the line drawn in these two opinions is a fine
they respectively belong; and these *386 one, it is one that the Court has drawn repeatedly in
descriptions and terms of art often require peculiar explaining the respective roles of the jury and judge
knowledge and education to understand them in patent cases, FN13 and one understood by
aright.... Indeed, the **1394 whole subject-matter of
a patent is an embodied conception outside of the
commentators writing in the aftermath of the cases
Markman cites. Walker, for example, read Bischoff
patent itself.... This outward embodiment of the as holding that the question of novelty is not decided
terms contained in the patent is the thing invented,
and is to be properly sought, like the explanation of
all latent ambiguities arising from the description of
external things, by evidence in pais.” Ibid.
by a construction of the prior patent, “but depends
rather upon the outward embodiment of the terms
contained in the [prior patent]; and that such outward
embodiment is to be properly sought, like the
explanation of latent ambiguities arising from the
description of external things, by evidence in pais.”
Bischoff does not then, as Markman contends, hold
that the use of expert testimony about the meaning of
terms of art requires the judge to submit the question
of their construction to the jury. It is instead a case
A. Walker, Patent Laws § 75, p. 68 (3d ed. 1895).
He also emphasized in the same treatise that matters
of claim construction, even those aided by expert
testimony, are questions for the court:
in which the Court drew a line between issues of
document interpretation and product identification,
and held that expert testimony was properly
presented to the jury on the latter, ultimate issue,
whether the physical objects produced by the patent
FN13. See, e.g., Coupe v. Royer, 155 U.S.
565, 579-580, 15 S.Ct. 199, 205, 39 L.Ed.
263 (1895); Silsby v. Foote, 14 How. 218,
were identical. The Court did not see the decision as
226, 14 L.Ed. 391 (1853); Hogg v.
bearing upon the appropriate treatment of disputed
terms. As the opinion emphasized, the Court's “view
of the case is not intended to, and does not, trench
upon the doctrine that the construction of written
instruments is the province of the court alone. It is
not the construction of the instrument, but the
character of the thing invented, which is sought in
questions of identity and diversity of inventions.” Id.,
Emerson, 6 How. 437, 484, 12 L.Ed. 505
(1848); cf. Brown v. Piper, 91 U.S. 37, 41,
23 L.Ed. 200 (1875); Winans v. New York
& Erie R. Co., 21 How. 88, 100, 16 L.Ed. 68
(1859); cf. also U.S. Industrial Chemicals,
Inc. v. Carbide & Carbon Chemicals Corp.,
315 U.S. 668, 678, 62 S.Ct. 839, 844, 86
L.Ed. 1105 (1942).
at 816 (emphasis added). Tucker, the second case
proffered by Markman, is to the same effect. Its “Questions of construction are questions of law for
reasoning rested expressly on Bischoff, and it just as the judge, not questions of fact for the jury. As it
clearly noted that in addressing the ultimate issue of
mixed fact and law, it was for the court to “lay down
to the jury the law which should govern them.”
cannot be expected, however, that judges will always
possess the requisite knowledge of the meaning of
the terms of art or science used in letters patent, it
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1461, 96 Daily Journal D.A.R. 4642
(Cite as: 517 U.S. 370, 116 S.Ct. 1384)
themselves of the light furnished by experts relevant
to the significance of such words and phrases. The
judges are not, however, obliged to blindly follow
such testimony.” Id., § 189, at 173 (footnotes
omitted).
Virtually the same description of the court's use of
evidence in its interpretive role was set out in another
contemporary treatise:
*388 “The duty of interpreting letters-patent has
been committed to the courts. A patent is a legal
instrument, to be construed, like other legal
instruments, according to its tenor.... Where
technical terms are used, or where the qualities of
substances or operations mentioned or any similar
data necessary to the comprehension of the language
of the patent are unknown to the judge, the testimony
of **1395 witnesses may be received upon these
subjects, and any other means of information be
employed. But in the actual interpretation of the
patent the court proceeds upon its own responsibility,
as an arbiter of the law, giving to the patent its true
and final character and force.” 2 W. Robinson, Law
of Patents § 732, pp. 481-483 (1890) (emphasis
added; footnotes omitted).
In sum, neither Bischoff nor Tucker indicates that
juries resolved the meaning of terms of art in
construing a patent, and neither case undercuts
Justice Curtis's authority.
B
Where history and precedent provide no clear
answers, functional considerations also play their part
in the choice between judge and jury to define terms
of art. We said in Miller v. Fenton, 474 U.S. 104,
114, 106 S.Ct. 445, 451, 88 L.Ed.2d 405 (1985), that
when an issue “falls somewhere between a pristine
legal standard and a simple historical fact, the
fact/law distinction at times has turned on a
determination that, as a matter of the sound
administration of justice, one judicial actor is better
positioned than another to decide the issue in
question.” So it turns out here, for judges, not juries,
are the better suited to find the acquired meaning of
patent terms.
[11] The construction of written instruments is one of
those things that judges often do and are likely to do
better than jurors unburdened by training in exegesis.
Patent construction in particular “is a special
occupation, requiring, like all others, special training
and practice. The judge, from his training and
discipline, is more likely to give a proper *389
interpretation to such instruments than a jury; and he
is, therefore, more likely to be right, in performing
such a duty, than a jury can be expected to be.”
Parker v. Hulme, 18 F. Cas., at 1140. Such was the
understanding nearly a century and a half ago, and
there is no reason to weigh the respective strengths of
judge and jury differently in relation to the modern
claim; quite the contrary, for “the claims of patents
have become highly technical in many respects as the
result of special doctrines relating to the proper form
and scope of claims that have been developed by the
courts and the Patent Office.” Woodward,
Definiteness and Particularity in Patent Claims, 46
Mich. L.Rev. 755, 765 (1948).
[12] Markman would trump these considerations with
his argument that a jury should decide a question of
meaning peculiar to a trade or profession simply
because the question is a subject of testimony
requiring credibility determinations, which are the
jury's forte. It is, of course, true that credibility
judgments have to be made about the experts who
testify in patent cases, and in theory there could be a
case in which a simple credibility judgment would
suffice to choose between experts whose testimony
was equally consistent with a patent's internal logic.
But our own experience with document construction
leaves us doubtful that trial courts will run into many
cases like that. In the main, we expect, any
credibility determinations will be subsumed within
the necessarily sophisticated analysis of the whole
document, required by the standard construction rule
that a term can be defined only in a way that
comports with the instrument as a whole. See Bates
v. Coe, 98 U.S. 31, 38, 25 L.Ed. 68 (1878); 6
Lipscomb § 21:40, at 393; 2 Robinson, supra, §
734, at 484; Woodward, supra, at 765; cf. U.S.
Industrial Chemicals, Inc. v. Carbide & Carbon
Chemicals Corp., 315 U.S. 668, 678, 62 S.Ct. 839,
844, 86 L.Ed. 1105 (1942); cf. 6 Lipscomb § 21:40,
at 393. Thus, in these cases a jury's capabilities to
evaluate demeanor, cf. Miller, supra, at 114, 117, 106
S.Ct., at 451, 453, to sense the “mainsprings of
human conduct,” Commissioner v. Duberstein, 363
U.S. 278, 289, 80 S.Ct. 1190, 1198, 4 L.Ed.2d 1218
(1960), or to reflect community *390 standards,
United States v. McConney, 728 F.2d 1195, 1204
(C.A.9 1984) (en banc), are much less significant
than a trained ability to evaluate the testimony in
relation to the overall structure of the patent. The
decisionmaker vested with the task of construing the
patent is in the better position to ascertain whether an
expert's proposed definition fully comports with the
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1461, 96 Daily Journal D.A.R. 4642
(Cite as: 517 U.S. 370, 116 S.Ct. 1384)
specification and claims and so will preserve the
patent's internal coherence. We accordingly think
there is sufficient reason to treat construction of
terms of art like **1396 many other responsibilities
that we cede to a judge in the normal course of trial,
notwithstanding its evidentiary underpinnings.
C
[13] Finally, we see the importance of uniformity in
the treatment of a given patent as an independent
reason to allocate all issues of construction to the
court. As we noted in General Elec. Co. v. Wabash
Appliance Corp., 304 U.S. 364, 369, 58 S.Ct. 899,
902, 82 L.Ed. 1402 (1938), “[t]he limits of a patent
must be known for the protection of the patentee, the
encouragement of the inventive genius of others and
the assurance that the subject of the patent will be
dedicated ultimately to the public.” Otherwise, a
“zone of uncertainty which enterprise and
experimentation may enter only at the risk of
infringement claims would discourage invention only
a little less than unequivocal foreclosure of the field,”
United Carbon Co. v. Binney & Smith Co., 317 U.S.
228, 236, 63 S.Ct. 165, 170, 87 L.Ed. 232 (1942), and
“[t]he public [would] be deprived of rights supposed
to belong to it, without being clearly told what it is
that limits these rights.” Merrill v. Yeomans, 94 U.S.
568, 573, 24 L.Ed. 235 (1877). It was just for the
sake of such desirable uniformity that Congress
created the Court of Appeals for the Federal Circuit
as an exclusive appellate court for patent cases,
H.R.Rep. No. 97-312, pp. 20-23 (1981), observing
that increased uniformity would “strengthen the
United States patent system in such a way as to foster
technological growth and industrial innovation.” Id.,
at 20.
*391 Uniformity would, however, be ill served by
submitting issues of document construction to juries.
Making them jury issues would not, to be sure,
necessarily leave evidentiary questions of meaning
wide open in every new court in which a patent might
be litigated, for principles of issue preclusion would
ordinarily foster uniformity. Cf. Blonder-Tongue
Laboratories, Inc. v. University of Ill. Foundation,
402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971).
But whereas issue preclusion could not be asserted
against new and independent infringement defendants
even within a given jurisdiction, treating interpretive
issues as purely legal will promote (though it will not
guarantee) intrajurisdictional certainty through the
application of stare decisis on those questions not yet
subject to interjurisdictional uniformity under the
authority of the single appeals court.
* * *
Accordingly, we hold that the interpretation of the
word “inventory” in this case is an issue for the
judge, not the jury, and affirm the decision of the
Court of Appeals for the Federal Circuit.
It is so ordered.
U.S.Pa.,1996.
Markman v. Westview Instruments, Inc.
517 U.S. 370, 116 S.Ct. 1384, 64 USLW 4263, 96
Cal. Daily Op. Serv. 2788, 134 L.Ed.2d 577, 38
U.S.P.Q.2d 1461, 96 Daily Journal D.A.R. 4642
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RESPONDENTS (Dec. 08, 1995)
• 1995 WL 728483 (Appellate Brief) BRIEF
AMICUS CURIAE OF UNITED STATES
SURGICAL CORPORATION IN SUPPORT OF
RESPONDENTS (Dec. 08, 1995)
• 1995 WL 728484 (Appellate Brief) BRIEF OF
AMICUS CURIAE DOUGLAS W. WYATT IN
SUPPORT OF RESPONDENTS (Dec. 08, 1995)
• 1995 WL 728491 (Appellate Brief) BRIEF OF
AMICUS CURIAE AMERICAN INTELLECTUAL
PROPERTY LAW ASSOCIATION IN SUPPORT
OF RESPONDENTS (Dec. 08, 1995)
• 1995 WL 728493 (Appellate Brief) AMICUS
CURIAE BRIEF OF THE FEDERAL CIRCUIT
BAR ASSOCIATION IN SUPPORT OF
RESPONDENTS (Dec. 08, 1995)
• 1995 WL 728494 (Appellate Brief) BRIEF OF
AMICUS CURIAE AIRTOUCH
COMMUNICATIONS, INC. IN SUPPORT OF
RESPONDENTS (Dec. 08, 1995)
• 1995 WL 728496 (Appellate Brief) BRIEF OF
HONEYWELL, INC. AS AMICUS CURIAE
SUPPORTING RESPONDENTS (Dec. 08, 1995)
• 1995 WL 728537 (Appellate Brief) BRIEF ON
BEHALF OF THE AMERICAN AUTOMOBILE
MANUFACTURERS ASSOCIATION AS AN
AMICUS CURIAE IN SUPPORT OF THE
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

116 S.Ct. 1384 Page 14
517 U.S. 370, 116 S.Ct. 1384, 64 USLW 4263, 96 Cal. Daily Op. Serv. 2788, 134 L.Ed.2d 577, 38 U.S.P.Q.2d
1461, 96 Daily Journal D.A.R. 4642
(Cite as: 517 U.S. 370, 116 S.Ct. 1384)
RESPONDENTS (Dec. 08, 1995)
• 1995 WL 728554 (Appellate Brief) BRIEF OF
MATSUSHITA ELECTRIC CORPORATION OF
AMERICA AND MATSUSHITA ELECTRIC
INDUSTRIAL CO., LTD. AS AMICI CURIAE IN
SUPPORT OF RESPONDENTS (Dec. 08, 1995)
• 1995 WL 728575 (Appellate Brief) BRIEF OF THE
DALLAS-FORT WORTH INTELLECTUAL
PROPERTY LAW ASSOCIATION AS AMICUS
CURIAE URGING AFFIRMANCE (Dec. 08, 1995)
• 1995 WL 730381 (Appellate Brief) BRIEF OF
RESPONDENTS (Dec. 08, 1995)
• 1995 WL 723674 (Appellate Brief) BRIEF FOR
AMICUS CURIA, JOHN T. ROBERTS
SUGGESTING AFFIRMANCE OF JUDGEMENT
(Dec. 07, 1995)
• 1995 WL 668008 (Appellate Brief) BRIEF FOR
PETITIONERS (Nov. 09, 1995)
• 1995 WL 702813 (Appellate Brief) BRIEF FOR
EXXON CORPORATION, EXXON CHEMICAL
PATENTS, INC., AND EXXON RESEARCH AND
ENGINEERING COMPANY AS AMICI CURIAE
IN SUPPORT OF PETITIONERS (Nov. 09, 1995)
• 1995 WL 702824 (Appellate Brief) BRIEF OF
AMICUS CURIAE THE ASSOCIATION OF
TRIAL LAWYERS OF AMERICA IN SUPPORT
OF THE PETITIONERS (Nov. 09, 1995)
• 1995 WL 702829 (Appellate Brief) BRIEF OF
LITTON SYSTEMS, INC., AS AMICUS CURIAE
IN SUPPORT OF PETITIONERS (Nov. 09, 1995)
• 1995 WL 17013370 (Appellate Petition, Motion
and Filing) Respondents' Brief in Opposition to
Petition for Writ of Certiorari (Aug. 07, 1995)
Original Image of this Document with Appendix
(PDF)
• 1995 WL 17063340 (Appellate Petition, Motion
and Filing) Petition for a Writ of Certiorari (Jul. 03,
1995) Original Image of this Document with
Appendix (PDF)
END OF DOCUMENT
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

415 F.3d 1303 Page 1
415 F.3d 1303, 75 U.S.P.Q.2d 1321
(Cite as: 415 F.3d 1303)
Briefs and Other Related Documents
United States Court of Appeals,Federal Circuit.
Edward H. PHILLIPS, Plaintiff-Appellant,
v.
AWH CORPORATION, Hopeman Brothers, Inc.,
and Lofton Corporation, Defendants-Cross
Appellants.
Nos. 03-1269, 03-1286.
July 12, 2005.
Background: Owner of patent for vandalismresistant
wall panels sued former distributor for
infringement. The United States District Court for the
District of Colorado, Marcia S. Krieger, J., granted
summary judgment for former distributor, and owner
appealed. The Court of Appeals, 363 F.3d 1207,
affirmed.
Holding: On rehearing en banc, the Court of
Appeals, Bryson, Circuit Judge, held that “baffles,”
called for in asserted claim, were not limited to nonperpendicular,
projectile-deflecting structures
disclosed in preferred embodiment.
Affirmed in part, reversed in part, dismissed in part,
and remanded.
Lourie, Circuit Judge, concurred in part, dissenting in
part, and filed opinion in which Pauline Newman,
Circuit Judge, joined.
Mayer, Circuit Judge, dissented and filed opinion in
which Pauline Newman, Circuit Judge, joined.
West Headnotes
[1] Patents 291 101(8)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(8) k. Functions, Advantages or
Results of Invention. Most Cited Cases
Limitation in patent claim for vandalism-resistant
wall, calling for “means disposed inside shell for
increasing its load bearing capacity” comprising
“internal steel baffles” extending inwardly from steel
shell walls, recited sufficient structure to avoid
means-plus-function treatment. 35 U.S.C.A. § 112,
par. 6.
[2] Patents 291 165(2)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k165 Operation and Effect of Claims in
General
291k165(2) k. Claims as Measure of
Patentee's Rights. Most Cited Cases
It is bedrock principle of patent law that claims of
patent define invention to which patentee is entitled
the right to exclude.
[3] Patents 291 157(1)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k157 General Rules of Construction
291k157(1) k. In General. Most Cited
Cases
Patents 291 161
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k161 k. State of the Art. Most Cited
Cases
Words of patent claim are generally given their
ordinary and customary meaning, i.e., meaning that
term would have to person of ordinary skill in the art
in question on effective filing date of patent
application.
[4] Patents 291 161
291 Patents
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

415 F.3d 1303 Page 2
415 F.3d 1303, 75 U.S.P.Q.2d 1321
(Cite as: 415 F.3d 1303)
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k161 k. State of the Art. Most Cited
Cases
Patents 291 167(1)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k167 Specifications, Drawings, and
Models
291k167(1) k. In General. Most Cited
Cases
Person of ordinary skill in the art, through whose
eyes patent claim is construed, is deemed to read
claim term not only in context of particular claim in
which disputed term appears, but in context of entire
patent, including specification.
[5] Patents 291 165(5)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k165 Operation and Effect of Claims in
General
291k165(5) k. Construction of Particular
Claims as Affected by Other Claims. Most Cited
Cases
Because claim terms are normally used consistently
throughout patent, usage of term in one claim can
often illuminate meaning of same term in other
claims.
[6] Patents 291 165(5)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k165 Operation and Effect of Claims in
General
291k165(5) k. Construction of Particular
Claims as Affected by Other Claims. Most Cited
Cases
Presence of dependent patent claim that adds
particular limitation gives rise to presumption that
limitation in question is not present in independent
claim.
[7] Patents 291 101(4)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(4) k. Specifications and Drawings,
Construction With. Most Cited Cases
Patent claims must be read in view of specification,
of which they are part.
[8] Patents 291 167(1)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k167 Specifications, Drawings, and
Models
291k167(1) k. In General. Most Cited
Cases
Patent specification is always highly relevant to claim
construction analysis; it is single best guide to
meaning of disputed term, and is usually dispositive.
[9] Patents 291 162
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k162 k. Contemporaneous Construction
of Inventor. Most Cited Cases
Patents 291 167(1.1)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k167 Specifications, Drawings, and
Models
291k167(1.1) k. Specification as
Limiting or Enlarging Claims. Most Cited Cases
When patent specification reveals special definition
given to claim term by patentee that differs from
meaning it would otherwise possess, inventor's
lexicography governs.
[10] Patents 291 167(1.1)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

415 F.3d 1303 Page 3
415 F.3d 1303, 75 U.S.P.Q.2d 1321
(Cite as: 415 F.3d 1303)
291k167 Specifications, Drawings, and
Models
291k167(1.1) k. Specification as
Limiting or Enlarging Claims. Most Cited Cases
Where patent specification reveals intentional
disclaimer, or disavowal, of claim scope by inventor,
such revealed intention is dispositive.
[11] Patents 291 168(1)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k168 Proceedings in Patent Office in
General
291k168(1) k. In General. Most Cited
Cases
“Prosecution history” consists of complete record of
proceedings before Patent and Trademark Office and
includes prior art cited during examination of patent.
[12] Patents 291 168(2.1)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k168 Proceedings in Patent Office in
General
291k168(2) Rejection and Amendment
of Claims
291k168(2.1) k. In General. Most
Cited Cases
Prosecution history can often inform meaning of
patent claim language by demonstrating how inventor
understood invention and whether inventor limited
invention in course of prosecution, making claim
scope narrower than it would otherwise be.
[13] Patents 291 159
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k159 k. Extrinsic Evidence in General.
Most Cited Cases
Although extrinsic evidence can shed useful light on
relevant art, it is less significant than intrinsic record
in determining legally operative meaning of patent
claim language.
[14] Patents 291 159
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k159 k. Extrinsic Evidence in General.
Most Cited Cases
Dictionaries, though extrinsic evidence, are among
tools that can assist patent-construing court in
determining meaning of particular terminology to
those of skill in the art of invention.
[15] Patents 291 159
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k159 k. Extrinsic Evidence in General.
Most Cited Cases
Extrinsic evidence in form of expert testimony can be
useful to patent-construing court for variety of
purposes, such as to provide background on
technology at issue, to explain how invention works,
to ensure that court's understanding of technical
aspects of patent is consistent with that of person of
skill in the art, or to establish that particular term in
patent or prior art has particular meaning in pertinent
field.
[16] Patents 291 159
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k159 k. Extrinsic Evidence in General.
Most Cited Cases
Conclusory, unsupported assertions by experts as to
definition of patent claim term are not useful to
construing court.
[17] Patents 291 159
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k159 k. Extrinsic Evidence in General.
Most Cited Cases
Court, when construing patent, should discount any
expert testimony that is clearly at odds with claim
construction mandated by claims themselves, written
description, and prosecution history.
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

415 F.3d 1303 Page 4
415 F.3d 1303, 75 U.S.P.Q.2d 1321
(Cite as: 415 F.3d 1303)
[18] Patents 291 159
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k159 k. Extrinsic Evidence in General.
Most Cited Cases
Extrinsic evidence may be useful to construing court,
but it is unlikely to result in reliable interpretation of
patent claim scope unless considered in context of
intrinsic evidence.
[19] Patents 291 159
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k159 k. Extrinsic Evidence in General.
Most Cited Cases
It is permissible for patent-construing court, in its
sound discretion, to admit and use extrinsic evidence;
such evidence can help educate court regarding field
of invention and can help court determine what
person of ordinary skill in the art would understand
claim terms to mean.
[20] Patents 291 159
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k159 k. Extrinsic Evidence in General.
Most Cited Cases
Although dictionaries or comparable sources are
often useful to assist in understanding commonly
understood meaning of patent claim terms, construing
court's focus remains on understanding how person of
ordinary skill in the art would understand claim
terms.
[21] Patents 291 157(1)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k157 General Rules of Construction
291k157(1) k. In General. Most Cited
Cases
There is no magic formula or catechism for
conducting patent claim construction; court is not
barred from considering any particular sources or
required to analyze sources in any specific sequence,
so long as those sources are not used to contradict
claim meaning that is unambiguous in light of
intrinsic evidence.
[22] Patents 291 101(3)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(3) k. Limitations in General. Most
Cited Cases
Internal steel “baffles,” called for in patent for
vandalism-resistant wall panels, were not limited to
non-perpendicular, projectile-deflecting structures
disclosed in preferred embodiment; specification did
not require that internal structures always be capable
of performing that function.
[23] Patents 291 101(3)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(3) k. Limitations in General. Most
Cited Cases
Fact that patent asserts that invention achieves
several objectives does not require that each claim be
construed as limited to structures that are capable of
achieving all those objectives.
[24] Patents 291 157(2)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(A) In General
291k157 General Rules of Construction
291k157(2) k. Construction to Give
Validity and Effect to Patent. Most Cited Cases
Application of patent construction maxim, that claims
should be so construed, if possible, as to sustain their
validity, is limited to cases in which court concludes,
after applying all available tools of claim
construction, that claim is still ambiguous.
Patents 291 328(2)
291 Patents
291XIII Decisions on the Validity, Construction,
and Infringement of Particular Patents
291k328 Patents Enumerated
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

415 F.3d 1303 Page 5
415 F.3d 1303, 75 U.S.P.Q.2d 1321
(Cite as: 415 F.3d 1303)
291k328(2) k. Original Utility. Most Cited
Cases
4,677,798. Construed.
*1305 Carl F. Manthei, Attorney at Law, of Boulder,
Colorado, argued for plaintiff-appellant.
Mark W. Fischer, Faegre & Benson LLP, of Boulder,
Colorado, argued for defendants-cross appellants.
With him on the brief were Neal S. Cohen and Peter
J. Kinsella. Of counsel on the brief were Maurice
M. Klee, Law Office of Maurice M. Klee, Ph.D.,
Fairfield, Connecticut, and Kenneth C. Bass, III,
Sterne, Kessler, Goldstein & Fox, of Washington,
DC. Of counsel was Scott E. Holwick, Faegre &
Benson LLP.
*1306 John M. Whealan, Solicitor, United States
Patent and Trademark Office, of Alexandria,
Virginia, argued for amicus curiae United States.
With him on the brief were James A. Toupin, General
Counsel; Cynthia C. Lynch; Linda Moncys Isacson;
and Thomas W. Krause, Associate Solicitors. Of
counsel on the brief were Peter D. Keisler, Assistant
Attorney General; John J. Fargo, Director,
Commercial Litigation Branch, and Anthony J.
Steinmeyer, Attorney, Appellate Staff, Civil
Division, United States Department of Justice, of
Washington, DC; and William E. Kovacic, General
Counsel, and Suzanne T. Michel, Chief Counsel for
Intellectual Property, Federal Trade Commission, of
Washington, DC.
Robert L. Baechtold, Fitzpatrick, Cella, Harper &
Scinto, of New York, New York, for amici curiae
Novartis Pharmaceuticals Corporation, et al. With
him on the brief were Nicholas N. Kallas, Stevan J.
Bosses, and Brian V. Slater.
Paul H. Berghoff, McDonnell Boehnen Hulbert &
Berghoff LLP, of Chicago, Illinois, for amicus curiae
Intellectual Property Owners Association. With him
on the brief was Joshua R. Rich. Of counsel on the
brief was J. Jeffery Hawley, President, Intellectual
Property Owners Association, of Washington, DC.
Of counsel was Herbert C. Wamsley, Intellectual
Property Owners Association.
Charles W. Bradley, Rader, Fishman & Grauer,
PLLC, of Bloomfield Hills, Michigan, for amicus
curiae Charles W. Bradley.
Henry C. Bunsow, Howrey Simon Arnold & White,
LLP, of San Francisco, California, for amicus curiae
AD HOC Committee of Patent Owners in the
Wireless Industry. With him on the brief were
Robert C. Laurenson and David W. Long. Of counsel
on the brief were Robert D. Yeager, Thomas J.
Edgington, and Mark G. Knedeisen, Kirkpatrick &
Lockhart LLP, of Pittsburgh, Pennsylvania.
Alexander C. Johnson, Jr., Marger, Johnson &
McCollom, P.C., of Portland, Oregon, for amicus
curiae Oregon Patent Law Association.
Alice A. Kipel, Steptoe & Johnson, LLP, of
Washington, DC, for amicus curiae International
Trade Commission Trial Lawyers Association.
Stephen P. McNamara, St. Onge Steward Johnston &
Reens LLC, of Stamford, Connecticut, for amicus
curiae Connecticut Intellectual Property Law
Association. With him on the brief was Richard J.
Basile. Of counsel on the brief were William J.
Sapone, Coleman Sudol Sapone, P.C., of Bridgeport,
Connecticut, Michael J. Rye, Cantor Colburn LLP, of
Bloomfield, Connecticut.
Douglas E. Olson, Paul, Hastings, Janofsky &
Walker, LLP, of San Diego, California, for amicus
curiae San Diego Intellectual Property Law
Association. With him on the brief were Kurt M.
Kjelland, John E. Peterson, and April M. Alex. Of
counsel on the brief were Ned A. Israelsen, Knobbe
Martens Olson & Bear, LLP, of San Diego,
California, and William L. Respess, Nanogen, Inc., of
San Diego, California.
John Will Ongman, Barnes & Thornburg LLP, of
Washington, DC, for amicus curiae Biotechnology
Industry Organization. With him on the brief was
Alice O. Martin, of Chicago, Illinois. Of counsel on
the brief was Stephan E. Lawton, Vice President and
General Counsel, Biotechnology Industry
Organization, of Washington, DC.
Steve Z. Szczepanski, Kelley Drye & Warren LLP, of
Chicago, Illinois, for amicus curiae Parus Holdings,
Inc. With him on the brief was Mary Jo Boldingh.
*1307 Frederick A. Tecce, McShea Tecce, P.C., of
Philadelphia, Pennsylvania, for amici curiae McShea
Tecce, P.C., et al.
Michael P. Dougherty, Morgan & Finnegan, L.L.P.,
of New York, New York, for amicus curiae Federal
Circuit Bar Association. Of counsel on the brief was
Charles F. Schill, President, Federal Circuit Bar
Association, of Washington, DC.
Edward D. Manzo, Cook, Alex, McFarron, Manzo,
Cummings & Mehler, Ltd., of Chicago, Illinois, for
amicus curiae The Intellectual Property Law
Association of Chicago. Of counsel with him on the
brief were Patrick G. Burns, Greer, Burns & Crain,
Ltd., of Chicago, Illinois, Dean A. Monco, Wood,
Phillips, Katz, Clark & Mortimer, of Chicago,
Illinois, Bradford P. Lyerla, Marshall, Gerstein &
Borun, of Chicago, Illinois, and Timothy J. Vezeau,
Katten Muchin Zavis Rosenman, of Chicago, Illinois.
Maxim H. Waldbaum, Schiff Hardin LLP, of New
York, New York, for amicus curiae Federation
Internationale Des Conseils En Propriete Industrielle.
Of counsel on the brief was John P. Sutton, of San
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

415 F.3d 1303 Page 6
415 F.3d 1303, 75 U.S.P.Q.2d 1321
(Cite as: 415 F.3d 1303)
Francisco, California.
Michael R. Dzwonczyk, Sughrue Mion, PLLC, of
Washington, DC, for amicus curiae Sughrue Mion,
PLLC. With him on the brief were Frank L. Bernstein
of Mountain View, California, and Brandon M.
White of Washington, DC.
Sharon A. Israel, Jenkens & Gilchrist, P.C., of
Houston, Texas, for amicus curiae Houston
Intellectual Property Law Association. Of counsel
on the brief were Jeremy P. Welch, Jonathan M.
Pierce, and Jeffrey L. Johnson, Conley Rose, P.C., of
Houston, Texas.
George C. Summerfield, Jr., Stadheim & Grear, of
Chicago, Illinois, for amici curiae The Wisconsin
Alumni Research Foundation, et al. With him on the
brief were Joseph A. Grear and Keith A. Vogt.
Bruce M. Wexler, Fitzpatrick, Cella, Harper &
Scinto, of New York, New York, for amicus curiae
New York Intellectual Property Law Association.
With him on the brief were Matthew S. Seidner and
John D. Murnane.
Rick D. Nydegger, Workman Nydegger, of Salt Lake
City, Utah, for amicus curiae American Intellectual
Property Law Association. With him on the brief
was David R. Todd. Of counsel on the brief were
Denise W. DeFranco, Foley Hoag LLP, of Boston,
Massachusetts, and Joseph R. Re and Joseph S.
Cianfrani, Knobbe Martens Olson & Bear, of Irvine,
California.
Christopher Landau, Kirkland & Ellis LLP, of
Washington, DC, for amicus curiae Infineon
Technologies North America Corp. With him on the
brief were John C. O'Quinn, of Washington, DC, and
John M. Desmarais, Gregory S. Arovas, and Michael
P. Stadnick, of New York, New York.
Mark I. Levy, Kilpatrick Stockton, LLP, of
Washington, DC, for amicus curiae Association of
Corporate Counsel. With him on the brief were
Anthony B. Askew and Eugene B. Joswick, of
Atlanta, Georgia. Of counsel on the brief were
Frederick J. Krebs and Susan Hackett of Washington,
DC, Nelson A. Blish, Eastman Kodak, of Rochester,
New York, John W. Hogan, Jr., Wyeth, of Madison,
New Jersey, and Taraneh Maghame, Hewlett
Packard, of Cupertino, California.
Mark A. Lemley, Keker & VanNest, LLP, of San
Francisco, California, for amici curiae Intel
Corporation, et al. With him on the brief were Brian
L. Ferrall and Ryan M. Kent.
Erik Paul Belt, Bromberg and Sunstein LLP, of
Boston, Massachusetts, for amicus curiae Boston
Patent Law Association. Of *1308 counsel on the
brief was Peter Corless, Edwards and Angell LLP, of
Boston, Massachusetts.
Susan M. Dadio, Burns, Doane, Swecker & Mathis,
L.L.P., of Alexandria, Virginia, for amicus curiae Bar
Association of the District of Columbia-Patent,
Trademark & Copyright Section. Of counsel on the
brief was Lynn E. Eccleston, The Eccleston Law
Firm, of Washington, DC.
W. Thomas McGough, Jr., Reed Smith LLP, of
Pittsburgh, Pennsylvania, for amicus curiae Medrad,
Inc. With him on the brief were Frederick H. Colen
and Barry J. Coyne. Of counsel on the brief was
Gregory L. Bradley, Medrad, Inc., of Indianola,
Pennsylvania.
Peter A. Sullivan, Hughes Hubbard & Reed LLP, of
New York, New York, for amicus curiae The
Association of the Bar of the City of New York. Of
counsel on the brief was Catriona M. Collins, Cowan,
Liebowitz & Latman, P.C., of New York, New York.
Anthony R. Zeuli, Merchant & Gould P.C., of
Minneapolis, Minnesota, for amicus curiae
Association of Patent Law Firms. With him on the
brief were Thomas J. Leach, III and Rachel Clark-
Hughey. Of counsel on the brief were Scott P.
McBride and Christopher R. Carroll, McAndrews,
Held & Malloy Ltd., of Chicago, Illinois, and Eric R.
Moran, McDonnell, Boehnen, Hulbert & Berghoff
LLP, of Chicago, Illinois.
Daniel B. Ravicher, Public Patent Foundation, of
New York, New York, for amicus curiae Public
Patent Foundation.
Theodore T. Herhold, Townsend and Townsend and
Crew LLP, of Palo Alto, California, for amici curiae
VISA U.S.A. Inc., et al. With him on the brief were
Daniel J. Furniss, Susan M. Spaeth, Madison C.
Jellins, and Mark G. Sandbaken.
Mark A. Goldstein, SoCal IP Law Group, of
Westlake Village, California, for amicus curiae
Conejo Valley Bar Association. With him on the
brief were Steven C. Sereboff and Joel G. Landau.
Robert J. Grey, Jr., President, American Bar
Association, of Chicago, Illinois, for amicus curiae
American Bar Association. With him on the brief
was William L. LaFuze. Of counsel on the brief
were Donald R. Dunner and Richard L. Rainey,
Finnegan, Henderson, Farabow, Garrett & Dunner,
L.L.P., of Washington, DC.
R. Polk Wagner, University of Pennsylvania Law
School, of Philadelphia, Pennsylvania, for amicus
curiae Patent Law Professors R. Polk Wagner, et al.
Joshua D. Sarnoff, Washington College of Law,
American University, of Washington, DC, for amici
curiae Consumers Union, et al.
Laura M. Slenzak, Siemens Corporation, of Auburn
Hills, Michigan, for amicus curiae The State Bar of
Michigan, Intellectual Property Law Section, joined
in the brief of the New York Intellectual Property
Law Association.
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

415 F.3d 1303 Page 7
415 F.3d 1303, 75 U.S.P.Q.2d 1321
(Cite as: 415 F.3d 1303)
Lea Hall Speed, Baker, Donelson, Bearman &
Caldwell, of Memphis, Tennessee, for amicus curiae
Tennessee Bar Association, joined in the brief of the
New York Intellectual Property Law Association.
Before MICHEL, Chief Judge, NEWMAN, MAYER,
LOURIE, CLEVENGER, RADER, SCHALL,
BRYSON, GAJARSA, LINN, DYK, and PROST,
Circuit Judges.
Opinion for the court filed by Circuit Judge
BRYSON, in which Chief Judge MICHEL and
Circuit Judges CLEVENGER, RADER, SCHALL,
GAJARSA, LINN, DYK, and PROST join; and in
which Circuit Judge LOURIE joins with respect to
parts I, II, III, V, and VI; *1309 and in which Circuit
Judge PAULINE NEWMAN joins with respect to
parts I, II, III, and V. Opinion concurring in part and
dissenting in part filed by Circuit Judge LOURIE, in
which Circuit Judge PAULINE NEWMAN joins.
Dissenting opinion filed by Circuit Judge MAYER,
in which Circuit Judge PAULINE NEWMAN
joins.BRYSON, Circuit Judge.
Edward H. Phillips invented modular, steel-shell
panels that can be welded together to form
vandalism-resistant walls. The panels are especially
useful in building prisons because they are loadbearing
and impact-resistant, while also insulating
against fire and noise. Mr. Phillips obtained a patent
on the invention, U.S. Patent No. 4,677,798 (“the
'798 patent”), and he subsequently entered into an
arrangement with AWH Corporation, Hopeman
Brothers, Inc., and Lofton Corporation (collectively
“AWH”) to market and sell the panels. That
arrangement ended in 1990. In 1991, however, Mr.
Phillips received a sales brochure from AWH that
suggested to him that AWH was continuing to use his
trade secrets and patented technology without his
consent. In a series of letters in 1991 and 1992, Mr.
Phillips accused AWH of patent infringement and
trade secret misappropriation. Correspondence
between the parties regarding the matter ceased after
that time.
In February 1997, Mr. Phillips brought suit in the
United States District Court for the District of
Colorado charging AWH with misappropriation of
trade secrets and infringement of claims 1, 21, 22, 24,
25, and 26 of the '798 patent. Phillips v. AWH Corp.,
No. 97-N-212 (D.Colo.). The district court
dismissed the trade secret misappropriation claim as
barred by Colorado's three-year statute of limitations.
With regard to the patent infringement issue, the
district court focused on the language of claim 1,
which recites “further means disposed inside the shell
for increasing its load bearing capacity comprising
internal steel baffles extending inwardly from the
steel shell walls.” The court interpreted that
language as “a means ... for performing a specified
function,” subject to 35 U.S.C. § 112, paragraph 6,
which provides that such a claim “shall be construed
to cover the corresponding structure, material, or acts
described in the specification and equivalents
thereof.” Looking to the specification of the '798
patent, the court noted that “every textual reference in
the Specification and its diagrams show baffle
deployment at an angle other than 90 to the wall
faces” and that “placement of the baffles at such
angles creates an intermediate interlocking, but not
solid, internal barrier.” The district court therefore
ruled that, for purposes of the '798 patent, a baffle
must “extend inward from the steel shell walls at an
oblique or acute angle to the wall face” and must
form part of an interlocking barrier in the interior of
the wall module. Because Mr. Phillips could not
prove infringement under that claim construction, the
district court granted summary judgment of
noninfringement.
Mr. Phillips appealed with respect to both the trade
secret and patent infringement claims. A panel of
this court affirmed on both issues. Phillips v. AWH
Corp., 363 F.3d 1207 (Fed.Cir.2004). As to the
trade secret claim, the panel unanimously upheld the
district court's ruling that the claim was barred by the
applicable statute of limitations. Id. at 1215. As to
the patent infringement claims, the panel was
divided. The majority sustained the district court's
summary judgment of noninfringement, although on
different grounds. The dissenting judge would have
reversed the summary judgment of noninfringement.
*1310 The panel first determined that because the
asserted claims of the '798 patent contain a sufficient
recitation of structure, the district court erred by
construing the term “baffles” to invoke the “meansplus-function”
claim format authorized by section
112, paragraph 6. Id. at 1212. Nonetheless, the panel
concluded that the patent uses the term “baffles” in a
restrictive manner. Based on the patent's written
description, the panel held that the claim term
“baffles” excludes structures that extend at a 90
degree angle from the walls. The panel noted that
the specification repeatedly refers to the ability of the
claimed baffles to deflect projectiles and that it
describes the baffles as being “disposed at such
angles that bullets which might penetrate the outer
steel panels are deflected.” '798 patent, col. 2, ll. 13-
15; see also id. at col. 5, ll. 17-19 (baffles are
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“disposed at angles which tend to deflect the
bullets”). In addition, the panel observed that
nowhere in the patent is there any disclosure of a
baffle projecting from the wall at a right angle and
that baffles oriented at 90 degrees to the wall were
found in the prior art. Based on “the specification's
explicit descriptions,” the panel concluded “that the
patentee regarded his invention as panels providing
impact or projectile resistance and that the baffles
must be oriented at angles other than 90.” Phillips,
363 F.3d at 1213. The panel added that the patent
specification “is intended to support and inform the
claims, and here it makes it unmistakably clear that
the invention involves baffles angled at other than
90.” Id. at 1214. The panel therefore upheld the
district court's summary judgment of
noninfringement.
The dissenting judge argued that the panel had
improperly limited the claims to the particular
embodiment of the invention disclosed in the
specification, rather than adopting the “plain
meaning” of the term “baffles.” The dissenting
judge noted that the parties had stipulated that
“baffles” are a “means for obstructing, impeding, or
checking the flow of something,” and that the panel
majority had agreed that the ordinary meaning of
baffles is “something for deflecting, checking, or
otherwise regulating flow.” Phillips, 363 F.3d at
1216-17. In the dissent's view, nothing in the
specification redefined the term “baffles” or
constituted a disclaimer specifically limiting the term
to less than the full scope of its ordinary meaning.
Instead, the dissenting judge contended, the
specification “merely identifies impact resistance as
one of several objectives of the invention.” Id. at
1217. In sum, the dissent concluded that “there is no
reason to supplement the plain meaning of the claim
language with a limitation from the preferred
embodiment.” Id. at 1218. Consequently, the
dissenting judge argued that the court should have
adopted the general purpose dictionary definition of
the term baffle, i.e., “something for deflecting,
checking, or otherwise regulating flow,” id., and
therefore should have reversed the summary
judgment of noninfringement.
This court agreed to rehear the appeal en banc and
vacated the judgment of the panel. Phillips v. AWH
Corp., 376 F.3d 1382 (Fed.Cir.2004). We now
affirm the portion of the district court's judgment
addressed to the trade secret misappropriation claims.
However, we reverse the portion of the court's
judgment addressed to the issue of infringement.
I
Claim 1 of the '798 patent is representative of the
asserted claims with respect to the use of the term
“baffles.” It recites:
Building modules adapted to fit together for
construction of fire, sound and impact resistant
security barriers and rooms for use in securing
records and *1311 persons, comprising in
combination, an outer shell ..., sealant means ... and
further means disposed inside the shell for increasing
its load bearing capacity comprising internal steel
baffles extending inwardly from the steel shell walls.
[1] As a preliminary matter, we agree with the panel
that the term “baffles” is not means-plus-function
language that invokes 35 U.S.C. § 112, paragraph 6.
To be sure, the claim refers to “means disposed
inside the shell for increasing its load bearing
capacity,” a formulation that would ordinarily be
regarded as invoking the means-plus-function claim
format. However, the claim specifically identifies
“internal steel baffles” as structure that performs the
recited function of increasing the shell's load-bearing
capacity. In contrast to the “load bearing means”
limitation, the reference to “baffles” does not use the
word “means,” and we have held that the absence of
that term creates a rebuttable presumption that
section 112, paragraph 6, does not apply. See
Personalized Media Communications, LLC v. Int'l
Trade Comm'n, 161 F.3d 696, 703-04 (Fed.Cir.1998).
Means-plus-function claiming applies only to purely
functional limitations that do not provide the
structure that performs the recited function. See
Watts v. XL Sys., Inc., 232 F.3d 877, 880-81
(Fed.Cir.2000). While the baffles in the '798 patent
are clearly intended to perform several functions, the
term “baffles” is nonetheless structural; it is not a
purely functional placeholder in which structure is
filled in by the specification. See TurboCare Div. of
Demag Delaval Turbomachinery Corp. v. Gen. Elec.
Co., 264 F.3d 1111, 1121 (Fed.Cir.2001) (reasoning
that nothing in the specification or prosecution
history suggests that the patentee used the term
“compressed spring” to denote any structure that is
capable of performing the specified function);
Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d
1580, 1583 (Fed.Cir.1996) (construing the term
“detent mechanism” to refer to particular structure,
even though the term has functional connotations).
The claims and the specification unmistakably
establish that the “steel baffles” refer to particular
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physical apparatus. The claim characterizes the
baffles as “extend [ing] inwardly” from the steel shell
walls, which plainly implies that the baffles are
structures. The specification likewise makes clear
that the term “steel baffles” refers to particular
internal wall structures and is not simply a general
description of any structure that will perform a
particular function. See, e.g., '798 patent, col. 4, ll.
25-26 (“the load bearing baffles 16 are optionally
used with longer panels”); id., col. 4, ll. 49-50
(opposing panels are “compressed between the flange
35 and the baffle 26”). Because the term “baffles” is
not subject to section 112, paragraph 6, we agree with
the panel that the district court erred by limiting the
term to corresponding structures disclosed in the
specification and their equivalents. Accordingly, we
must determine the correct construction of the
structural term “baffles,” as used in the '798 patent.
II
The first paragraph of section 112 of the Patent Act,
35 U.S.C. § 112, states that the specification
shall contain a written description of the invention,
and of the manner and process of making and using
it, in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it
pertains ... to make and use the same ....
The second paragraph of section 112 provides that
the specificationshall conclude with one or more
claims particularly pointing out and distinctly *1312
claiming the subject matter which the applicant
regards as his invention.
Those two paragraphs of section 112 frame the issue
of claim interpretation for us. The second paragraph
requires us to look to the language of the claims to
determine what “the applicant regards as his
invention.” On the other hand, the first paragraph
requires that the specification describe the invention
set forth in the claims. The principal question that
this case presents to us is the extent to which we
should resort to and rely on a patent's specification in
seeking to ascertain the proper scope of its claims.
This is hardly a new question. The role of the
specification in claim construction has been an issue
in patent law decisions in this country for nearly two
centuries. We addressed the relationship between
the specification and the claims at some length in our
en banc opinion in Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979-81 (Fed.Cir.1995)
(en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134
L.Ed.2d 577 (1996). We again summarized the
applicable principles in Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576 (Fed.Cir.1996), and
more recently in Innova/Pure Water, Inc. v. Safari
Water Filtration Systems, Inc., 381 F.3d 1111
(Fed.Cir.2004). What we said in those cases bears
restating, for the basic principles of claim
construction outlined there are still applicable, and
we reaffirm them today. We have also previously
considered the use of dictionaries in claim
construction. What we have said in that regard
requires clarification.
A
[2] It is a “bedrock principle” of patent law that “the
claims of a patent define the invention to which the
patentee is entitled the right to exclude.” Innova,
381 F.3d at 1115; see also Vitronics, 90 F.3d at 1582
(“we look to the words of the claims themselves ... to
define the scope of the patented invention”);
Markman, 52 F.3d at 980 (“The written description
part of the specification itself does not delimit the
right to exclude. That is the function and purpose of
claims.”). That principle has been recognized since
at least 1836, when Congress first required that the
specification include a portion in which the inventor
“shall particularly specify and point out the part,
improvement, or combination, which he claims as his
own invention or discovery.” Act of July 4, 1836,
ch. 357, § 6, 5 Stat. 117, 119. In the following
years, the Supreme Court made clear that the claims
are “of primary importance, in the effort to ascertain
precisely what it is that is patented.” Merrill v.
Yeomans, 94 U.S. 568, 570, 24 L.Ed. 235 (1876).
Because the patentee is required to “define precisely
what his invention is,” the Court explained, it is
“unjust to the public, as well as an evasion of the law,
to construe it in a manner different from the plain
import of its terms.” White v. Dunbar, 119 U.S. 47,
52, 7 S.Ct. 72, 30 L.Ed. 303 (1886); see also Cont'l
Paper Bag Co. v. E. Paper Bag Co., 210 U.S. 405,
419, 28 S.Ct. 748, 52 L.Ed. 1122 (1908) (“the claims
measure the invention”); McCarty v. Lehigh Valley
R.R. Co., 160 U.S. 110, 116, 16 S.Ct. 240, 40 L.Ed.
358 (1895) (“if we once begin to include elements
not mentioned in the claim, in order to limit such
claim ..., we should never know where to stop”); Aro
Mfg. Co. v. Convertible Top Replacement Co., 365
U.S. 336, 339, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961)
(“the claims made in the patent are the sole measure
of the grant”).
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[3] We have frequently stated that the words of a
claim “are generally given their ordinary and
customary meaning.” Vitronics, 90 F.3d at 1582; see
also Toro Co. v. White Consol. Indus., Inc., 199 F.3d
1295, 1299 (Fed.Cir.1999); *1313Renishaw PLC v.
Marposs Societa' per Azioni, 158 F.3d 1243, 1249
(Fed.Cir.1998). We have made clear, moreover, that
the ordinary and customary meaning of a claim term
is the meaning that the term would have to a person
of ordinary skill in the art in question at the time of
the invention, i.e., as of the effective filing date of the
patent application. See Innova, 381 F.3d at 1116 (“A
court construing a patent claim seeks to accord a
claim the meaning it would have to a person of
ordinary skill in the art at the time of the invention.”);
Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d
1352, 1358 (Fed.Cir.2004) (“customary meaning”
refers to the “customary meaning in [the] art field”);
Ferguson Beauregard/Logic Controls v. Mega Sys.,
LLC, 350 F.3d 1327, 1338 (Fed.Cir.2003) (claim
terms “are examined through the viewing glass of a
person skilled in the art”); see also PC Connector
Solutions LLC v. SmartDisk Corp., 406 F.3d 1359,
1363 (Fed.Cir.2005) (meaning of claim “must be
interpreted as of [the] effective filing date” of the
patent application); Schering Corp. v. Amgen Inc.,
222 F.3d 1347, 1353 (Fed.Cir.2000) (same).
The inquiry into how a person of ordinary skill in the
art understands a claim term provides an objective
baseline from which to begin claim interpretation.
See Innova, 381 F.3d at 1116. That starting point is
based on the well-settled understanding that inventors
are typically persons skilled in the field of the
invention and that patents are addressed to and
intended to be read by others of skill in the pertinent
art. See Verve, LLC v. Crane Cams, Inc., 311 F.3d
1116, 1119 (Fed.Cir.2002) (patent documents are
meant to be “a concise statement for persons in the
field”); In re Nelson, 47 C.C.P.A. 1031, 280 F.2d
172, 181 (1960) (“The descriptions in patents are not
addressed to the public generally, to lawyers or to
judges, but, as section 112 says, to those skilled in the
art to which the invention pertains or with which it is
most nearly connected.”).
[4] Importantly, the person of ordinary skill in the art
is deemed to read the claim term not only in the
context of the particular claim in which the disputed
term appears, but in the context of the entire patent,
including the specification. This court explained that
point well in Multiform Desiccants, Inc. v. Medzam,
Ltd., 133 F.3d 1473, 1477 (Fed.Cir.1998):
It is the person of ordinary skill in the field of the
invention through whose eyes the claims are
construed. Such person is deemed to read the words
used in the patent documents with an understanding
of their meaning in the field, and to have knowledge
of any special meaning and usage in the field. The
inventor's words that are used to describe the
invention-the inventor's lexicography-must be
understood and interpreted by the court as they would
be understood and interpreted by a person in that
field of technology. Thus the court starts the
decisionmaking process by reviewing the same
resources as would that person, viz., the patent
specification and the prosecution history.
See also Medrad, Inc. v. MRI Devices Corp., 401
F.3d 1313, 1319 (Fed.Cir.2005) (“We cannot look at
the ordinary meaning of the term ... in a vacuum.
Rather, we must look at the ordinary meaning in the
context of the written description and the prosecution
history.”); V-Formation, Inc. v. Benetton Group SpA,
401 F.3d 1307, 1310 (Fed.Cir.2005) (intrinsic record
“usually provides the technological and temporal
context to enable the court to ascertain the meaning
of the claim to one of ordinary skill in the art at the
time of the invention”); *1314Unitherm Food Sys.,
Inc. v. Swift-Eckrich, Inc., 375 F.3d 1341, 1351
(Fed.Cir.2004) (proper definition is the “definition
that one of ordinary skill in the art could ascertain
from the intrinsic evidence in the record”).
B
In some cases, the ordinary meaning of claim
language as understood by a person of skill in the art
may be readily apparent even to lay judges, and claim
construction in such cases involves little more than
the application of the widely accepted meaning of
commonly understood words. See Brown v. 3M, 265
F.3d 1349, 1352 (Fed.Cir.2001) (holding that the
claims did “not require elaborate interpretation”). In
such circumstances, general purpose dictionaries may
be helpful. In many cases that give rise to litigation,
however, determining the ordinary and customary
meaning of the claim requires examination of terms
that have a particular meaning in a field of art.
Because the meaning of a claim term as understood
by persons of skill in the art is often not immediately
apparent, and because patentees frequently use terms
idiosyncratically, the court looks to “those sources
available to the public that show what a person of
skill in the art would have understood disputed claim
language to mean.” Innova, 381 F.3d at 1116.
Those sources include “the words of the claims
themselves, the remainder of the specification, the
prosecution history, and extrinsic evidence
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concerning relevant scientific principles, the meaning
of technical terms, and the state of the art.” Id.; see
also Gemstar-TV Guide Int'l, Inc. v. Int'l Trade
Comm'n, 383 F.3d 1352, 1364 (Fed.Cir.2004);
Vitronics, 90 F.3d at 1582-83; Markman, 52 F.3d at
979-80.
1
Quite apart from the written description and the
prosecution history, the claims themselves provide
substantial guidance as to the meaning of particular
claim terms. See Vitronics, 90 F.3d at 1582; see
also ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082,
1088 (Fed.Cir.2003) (“the context of the surrounding
words of the claim also must be considered in
determining the ordinary and customary meaning of
those terms”).
To begin with, the context in which a term is used in
the asserted claim can be highly instructive. To take
a simple example, the claim in this case refers to
“steel baffles,” which strongly implies that the term
“baffles” does not inherently mean objects made of
steel. This court's cases provide numerous similar
examples in which the use of a term within the claim
provides a firm basis for construing the term. See,
e.g., Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369,
1374 (Fed.Cir.2004) (claim term “ingredients”
construed in light of the use of the term “mixture” in
the same claim phrase); Process Control Corp. v.
HydReclaim Corp., 190 F.3d 1350, 1356
(Fed.Cir.1999) (claim term “discharge rate”
construed in light of the use of the same term in
another limitation of the same claim).
[5][6] Other claims of the patent in question, both
asserted and unasserted, can also be valuable sources
of enlightenment as to the meaning of a claim term.
Vitronics, 90 F.3d at 1582. Because claim terms are
normally used consistently throughout the patent, the
usage of a term in one claim can often illuminate the
meaning of the same term in other claims. See
Rexnord Corp. v. Laitram Corp., 274 F.3d 1336,
1342 (Fed.Cir.2001); CVI/Beta Ventures, Inc. v.
Tura LP, 112 F.3d 1146, 1159 (Fed.Cir.1997).
Differences among claims can also be a useful guide
in understanding the meaning of particular claim
terms. See Laitram Corp. v. Rexnord, Inc., 939 F.2d
1533, 1538 (Fed.Cir.1991). For example,*1315 the
presence of a dependent claim that adds a particular
limitation gives rise to a presumption that the
limitation in question is not present in the
independent claim. See Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 910 (Fed.Cir.2004).
2
[7][8] The claims, of course, do not stand alone.
Rather, they are part of “a fully integrated written
instrument,” Markman, 52 F.3d at 978, consisting
principally of a specification that concludes with the
claims. For that reason, claims “must be read in
view of the specification, of which they are a part.”
Id. at 979. As we stated in Vitronics, the
specification “is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is
the single best guide to the meaning of a disputed
term.” 90 F.3d at 1582.
This court and its predecessors have long emphasized
the importance of the specification in claim
construction. In Autogiro Co. of America v. United
States, 181 Ct.Cl. 55, 384 F.2d 391, 397-98 (1967),
the Court of Claims characterized the specification as
“a concordance for the claims,” based on the
statutory requirement that the specification “describe
the manner and process of making and using” the
patented invention. The Court of Customs and
Patent Appeals made a similar point. See In re Fout,
675 F.2d 297, 300 (CCPA 1982) (“Claims must
always be read in light of the specification. Here,
the specification makes plain what the appellants did
and did not invent ....”).
Shortly after the creation of this court, Judge Rich
wrote that “[t]he descriptive part of the specification
aids in ascertaining the scope and meaning of the
claims inasmuch as the words of the claims must be
based on the description. The specification is, thus,
the primary basis for construing the claims.”
Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d
448, 452 (Fed.Cir.1985). On numerous occasions
since then, we have reaffirmed that point, stating that
“[t]he best source for understanding a technical term
is the specification from which it arose, informed, as
needed, by the prosecution history.” Multiform
Desiccants, 133 F.3d at 1478; Metabolite Labs., Inc.
v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360
(Fed.Cir.2004) (“In most cases, the best source for
discerning the proper context of claim terms is the
patent specification wherein the patent applicant
describes the invention.”); see also, e.g., Kinik Co.
v. Int'l Trade Comm'n, 362 F.3d 1359, 1365
(Fed.Cir.2004) (“The words of patent claims have the
meaning and scope with which they are used in the
specification and the prosecution history.”); Moba,
B.V. v. Diamond Automation, Inc., 325 F.3d 1306,
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1315 (Fed.Cir.2003) (“[T]he best indicator of claim
meaning is its usage in context as understood by one
of skill in the art at the time of invention.”).
That principle has a long pedigree in Supreme Court
decisions as well. See Hogg v. Emerson, 47 U.S. (6
How.) 437, 482, 12 L.Ed. 505 (1848) (the
specification is a “component part of the patent” and
“is as much to be considered with the [letters patent]
in construing them, as any paper referred to in a deed
or other contract”); Bates v. Coe, 98 U.S. 31, 38, 25
L.Ed. 68 (1878) (“in case of doubt or ambiguity it is
proper in all cases to refer back to the descriptive
portions of the specification to aid in solving the
doubt or in ascertaining the true intent and meaning
of the language employed in the claims”); White v.
Dunbar, 119 U.S. 47, 51, 7 S.Ct. 72, 30 L.Ed. 303
(1886) (specification is appropriately resorted to “for
the purpose of better understanding the meaning of
the claim”); *1316 Schriber-Schroth Co. v.
Cleveland Trust Co., 311 U.S. 211, 217, 61 S.Ct.
235, 85 L.Ed. 132 (1940) (“The claims of a patent are
always to be read or interpreted in light of its
specifications.”); United States v. Adams, 383 U.S.
39, 49, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966) (“[I]t is
fundamental that claims are to be construed in the
light of the specifications and both are to be read with
a view to ascertaining the invention.”).
The importance of the specification in claim
construction derives from its statutory role. The
close kinship between the written description and the
claims is enforced by the statutory requirement that
the specification describe the claimed invention in
“full, clear, concise, and exact terms.” 35 U.S.C. §
112, para. 1; see Netword, LLC v. Centraal Corp.,
242 F.3d 1347, 1352 (Fed.Cir.2001) (“The claims are
directed to the invention that is described in the
specification; they do not have meaning removed
from the context from which they arose.”); see also
Markman v. Westview Instruments, Inc., 517 U.S.
370, 389, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996)
(“[A claim] term can be defined only in a way that
comports with the instrument as a whole.”). In light
of the statutory directive that the inventor provide a
“full” and “exact” description of the claimed
invention, the specification necessarily informs the
proper construction of the claims. See Merck & Co.
v. Teva Pharms. USA, Inc., 347 F.3d 1367, 1371
(Fed.Cir.2003) (“A fundamental rule of claim
construction is that terms in a patent document are
construed with the meaning with which they are
presented in the patent document. Thus claims must
be construed so as to be consistent with the
specification, of which they are a part.”) (citations
omitted). In Renishaw, this court summarized that
point succinctly:
Ultimately, the interpretation to be given a term can
only be determined and confirmed with a full
understanding of what the inventors actually invented
and intended to envelop with the claim. The
construction that stays true to the claim language and
most naturally aligns with the patent's description of
the invention will be, in the end, the correct
construction.
158 F.3d at 1250 (citations omitted).
[9][10] Consistent with that general principle, our
cases recognize that the specification may reveal a
special definition given to a claim term by the
patentee that differs from the meaning it would
otherwise possess. In such cases, the inventor's
lexicography governs. See CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366
(Fed.Cir.2002). In other cases, the specification may
reveal an intentional disclaimer, or disavowal, of
claim scope by the inventor. In that instance as well,
the inventor has dictated the correct claim scope, and
the inventor's intention, as expressed in the
specification, is regarded as dispositive. See SciMed
Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
242 F.3d 1337, 1343-44 (Fed.Cir.2001).
The pertinence of the specification to claim
construction is reinforced by the manner in which a
patent is issued. The Patent and Trademark Office
(“PTO”) determines the scope of claims in patent
applications not solely on the basis of the claim
language, but upon giving claims their broadest
reasonable construction “in light of the specification
as it would be interpreted by one of ordinary skill in
the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed.Cir.2004). Indeed, the rules of the
PTO require that application claims must “conform to
the invention as set forth in the remainder of the
specification and the terms and phrases used in the
claims must find clear support or antecedent basis in
the description *1317 so that the meaning of the
terms in the claims may be ascertainable by reference
to the description.” 37 C.F.R. § 1.75(d)(1). It is
therefore entirely appropriate for a court, when
conducting claim construction, to rely heavily on the
written description for guidance as to the meaning of
the claims.
3
[11][12] In addition to consulting the specification,
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we have held that a court “should also consider the
patent's prosecution history, if it is in evidence.”
Markman, 52 F.3d at 980; see also Graham v. John
Deere Co., 383 U.S. 1, 33, 86 S.Ct. 684, 15 L.Ed.2d
545 (1966) (“[A]n invention is construed not only in
the light of the claims, but also with reference to the
file wrapper or prosecution history in the Patent
Office.”). The prosecution history, which we have
designated as part of the “intrinsic evidence,”
consists of the complete record of the proceedings
before the PTO and includes the prior art cited during
the examination of the patent. Autogiro, 384 F.2d at
399. Like the specification, the prosecution history
provides evidence of how the PTO and the inventor
understood the patent. See Lemelson v. Gen. Mills,
Inc., 968 F.2d 1202, 1206 (Fed.Cir.1992).
Furthermore, like the specification, the prosecution
history was created by the patentee in attempting to
explain and obtain the patent. Yet because the
prosecution history represents an ongoing negotiation
between the PTO and the applicant, rather than the
final product of that negotiation, it often lacks the
clarity of the specification and thus is less useful for
claim construction purposes. See Inverness Med.
Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373,
1380-82 (Fed.Cir.2002) (the ambiguity of the
prosecution history made it less relevant to claim
construction); Athletic Alternatives, Inc. v. Prince
Mfg., Inc., 73 F.3d 1573, 1580 (Fed.Cir.1996) (the
ambiguity of the prosecution history made it
“unhelpful as an interpretive resource” for claim
construction). Nonetheless, the prosecution history
can often inform the meaning of the claim language
by demonstrating how the inventor understood the
invention and whether the inventor limited the
invention in the course of prosecution, making the
claim scope narrower than it would otherwise be.
Vitronics, 90 F.3d at 1582-83; see also Chimie v.
PPG Indus., Inc., 402 F.3d 1371, 1384
(Fed.Cir.2005) ( “The purpose of consulting the
prosecution history in construing a claim is to
‘exclude any interpretation that was disclaimed
during prosecution.’ ”), quoting ZMI Corp. v.
Cardiac Resuscitator Corp., 844 F.2d 1576, 1580
(Fed.Cir.1988); Southwall Techs., Inc. v. Cardinal
IG Co., 54 F.3d 1570, 1576 (Fed.Cir.1995).
C
[13] Although we have emphasized the importance of
intrinsic evidence in claim construction, we have also
authorized district courts to rely on extrinsic
evidence, which “consists of all evidence external to
the patent and prosecution history, including expert
and inventor testimony, dictionaries, and learned
treatises.” Markman, 52 F.3d at 980, citing Seymour
v. Osborne, 78 U.S. (11 Wall.) 516, 546, 20 L.Ed. 33
(1870); see also Vitronics, 90 F.3d at 1583.
However, while extrinsic evidence “can shed useful
light on the relevant art,” we have explained that it is
“less significant than the intrinsic record in
determining ‘the legally operative meaning of claim
language.’ ” C.R. Bard, Inc. v. U.S. Surgical Corp.,
388 F.3d 858, 862 (Fed.Cir.2004), quoting
Vanderlande Indus. Nederland BV v. Int'l Trade
Comm'n, 366 F.3d 1311, 1318 (Fed.Cir.2004); see
also Astrazeneca AB v. Mutual Pharm. Co., 384
F.3d 1333, 1337 (Fed.Cir.2004).
*1318 [14] Within the class of extrinsic evidence, the
court has observed that dictionaries and treatises can
be useful in claim construction. See Renishaw, 158
F.3d at 1250; Rexnord, 274 F.3d at 1344. We have
especially noted the help that technical dictionaries
may provide to a court “to better understand the
underlying technology” and the way in which one of
skill in the art might use the claim terms. Vitronics,
90 F.3d at 1584 n. 6. Because dictionaries, and
especially technical dictionaries, endeavor to collect
the accepted meanings of terms used in various fields
of science and technology, those resources have been
properly recognized as among the many tools that
can assist the court in determining the meaning of
particular terminology to those of skill in the art of
the invention. See Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed.Cir.2002). Such
evidence, we have held, may be considered if the
court deems it helpful in determining “the true
meaning of language used in the patent claims.”
Markman, 52 F.3d at 980.
[15][16][17] We have also held that extrinsic
evidence in the form of expert testimony can be
useful to a court for a variety of purposes, such as to
provide background on the technology at issue, to
explain how an invention works, to ensure that the
court's understanding of the technical aspects of the
patent is consistent with that of a person of skill in
the art, or to establish that a particular term in the
patent or the prior art has a particular meaning in the
pertinent field. See Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1308-09
(Fed.Cir.1999); Key Pharms. v. Hercon Labs. Corp.,
161 F.3d 709, 716 (Fed.Cir.1998). However,
conclusory, unsupported assertions by experts as to
the definition of a claim term are not useful to a
court. Similarly, a court should discount any expert
testimony “that is clearly at odds with the claim
construction mandated by the claims themselves, the
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written description, and the prosecution history, in
other words, with the written record of the patent.”
Key Pharms., 161 F.3d at 716.
We have viewed extrinsic evidence in general as less
reliable than the patent and its prosecution history in
determining how to read claim terms, for several
reasons. First, extrinsic evidence by definition is not
part of the patent and does not have the
specification's virtue of being created at the time of
patent prosecution for the purpose of explaining the
patent's scope and meaning. Second, while claims
are construed as they would be understood by a
hypothetical person of skill in the art, extrinsic
publications may not be written by or for skilled
artisans and therefore may not reflect the
understanding of a skilled artisan in the field of the
patent. Third, extrinsic evidence consisting of expert
reports and testimony is generated at the time of and
for the purpose of litigation and thus can suffer from
bias that is not present in intrinsic evidence. The
effect of that bias can be exacerbated if the expert is
not one of skill in the relevant art or if the expert's
opinion is offered in a form that is not subject to
cross-examination. See Senmed, Inc. v. Richard-
Allan Med. Indus., Inc., 888 F.2d 815, 819 n. 8
(Fed.Cir.1989). Fourth, there is a virtually
unbounded universe of potential extrinsic evidence of
some marginal relevance that could be brought to
bear on any claim construction question. In the
course of litigation, each party will naturally choose
the pieces of extrinsic evidence most favorable to its
cause, leaving the court with the considerable task of
filtering the useful extrinsic evidence from the fluff.
See Daubert v. Merrell Dow Pharms., Inc., 509 U.S.
579, 595, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993)
(“Expert evidence can be both powerful and quite
misleading because of the difficulty in evaluating
it.”). Finally, *1319 undue reliance on extrinsic
evidence poses the risk that it will be used to change
the meaning of claims in derogation of the
“indisputable public records consisting of the claims,
the specification and the prosecution history,”
thereby undermining the public notice function of
patents. Southwall Techs., 54 F.3d at 1578.
[18][19] In sum, extrinsic evidence may be useful to
the court, but it is unlikely to result in a reliable
interpretation of patent claim scope unless considered
in the context of the intrinsic evidence. Nonetheless,
because extrinsic evidence can help educate the court
regarding the field of the invention and can help the
court determine what a person of ordinary skill in the
art would understand claim terms to mean, it is
permissible for the district court in its sound
discretion to admit and use such evidence. In
exercising that discretion, and in weighing all the
evidence bearing on claim construction, the court
should keep in mind the flaws inherent in each type
of evidence and assess that evidence accordingly.
III
Although the principles outlined above have been
articulated on numerous occasions, some of this
court's cases have suggested a somewhat different
approach to claim construction, in which the court
has given greater emphasis to dictionary definitions
of claim terms and has assigned a less prominent role
to the specification and the prosecution history. The
leading case in this line is Texas Digital Systems, Inc.
v. Telegenix, Inc., 308 F.3d 1193 (Fed.Cir.2002).
A
In Texas Digital, the court noted that “dictionaries,
encyclopedias and treatises are particularly useful
resources to assist the court in determining the
ordinary and customary meanings of claim terms.”
308 F.3d at 1202. Those texts, the court explained,
are “objective resources that serve as reliable sources
of information on the established meanings that
would have been attributed to the terms of the claims
by those of skill in the art,” and they “deserve no less
fealty in the context of claim construction” than in
any other area of law. Id. at 1203. The court added
that because words often have multiple dictionary
meanings, the intrinsic record must be consulted to
determine which of the different possible dictionary
meanings is most consistent with the use of the term
in question by the inventor. If more than one
dictionary definition is consistent with the use of the
words in the intrinsic record, the court stated, “the
claim terms may be construed to encompass all such
consistent meanings.” Id.
The Texas Digital court further explained that the
patent's specification and prosecution history must be
consulted to determine if the patentee has used “the
words [of the claim] in a manner clearly inconsistent
with the ordinary meaning reflected, for example, in
a dictionary definition.” 308 F.3d at 1204. The
court identified two circumstances in which such an
inconsistency may be found. First, the court stated,
“the presumption in favor of a dictionary definition
will be overcome where the patentee, acting as his or
her own lexicographer, has clearly set forth an
explicit definition of the term different from its
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ordinary meaning.” Id. Second, “the presumption
also will be rebutted if the inventor has disavowed or
disclaimed scope of coverage, by using words or
expressions of manifest exclusion or restriction,
representing a clear disavowal of claim scope.” Id.
The Texas Digital court explained that it advanced
the methodology set forth in *1320 that opinion in an
effort to combat what this court has termed “one of
the cardinal sins of patent law-reading a limitation
from the written description into the claims,” SciMed
Life Sys., 242 F.3d at 1340. The court concluded
that it is improper to consult “the written description
and prosecution history as a threshold step in the
claim construction process, before any effort is made
to discern the ordinary and customary meanings
attributed to the words themselves.” Texas Digital,
308 F.3d at 1204. To do so, the court reasoned,
“invites a violation of our precedent counseling
against importing limitations into the claims.” Id.
Summarizing its analysis, the Texas Digital court
stated:
By examining relevant dictionaries, encyclopedias,
and treatises to ascertain possible meanings that
would have been attributed to the words of the claims
by those skilled in the art, and by further utilizing the
intrinsic record to select from those possible
meanings the one or ones most consistent with the
use of the words by the inventor, the full breadth of
the limitations intended by the inventor will be more
accurately determined and the improper importation
of unintended limitations from the written description
into the claims will be more easily avoided.
Id. at 1205.
B
Although the concern expressed by the court in Texas
Digital was valid, the methodology it adopted placed
too much reliance on extrinsic sources such as
dictionaries, treatises, and encyclopedias and too
little on intrinsic sources, in particular the
specification and prosecution history. While the
court noted that the specification must be consulted
in every case, it suggested a methodology for claim
interpretation in which the specification should be
consulted only after a determination is made, whether
based on a dictionary, treatise, or other source, as to
the ordinary meaning or meanings of the claim term
in dispute. Even then, recourse to the specification
is limited to determining whether the specification
excludes one of the meanings derived from the
dictionary, whether the presumption in favor of the
dictionary definition of the claim term has been
overcome by “an explicit definition of the term
different from its ordinary meaning,” or whether the
inventor “has disavowed or disclaimed scope of
coverage, by using words or expressions of manifest
exclusion or restriction, representing a clear
disavowal of claim scope.” 308 F.3d at 1204. In
effect, the Texas Digital approach limits the role of
the specification in claim construction to serving as a
check on the dictionary meaning of a claim term if
the specification requires the court to conclude that
fewer than all the dictionary definitions apply, or if
the specification contains a sufficiently specific
alternative definition or disavowal. See, e.g., Texas
Digital, 308 F.3d at 1202 (“unless compelled
otherwise, a court will give a claim term the full
range of its ordinary meaning”); Nystrom v. TREX
Co., 374 F.3d 1105, 1111-13 (Fed.Cir.2004)
(ascertaining the “full range” of the ordinary meaning
of the term “board” through a collection of dictionary
definitions, and stating that those candidate
definitions should be removed from consideration
only if they were “disclaimed” in the written
description or prosecution history); Inverness Med.
Switz., 309 F.3d at 1379 (claim should be construed
to encompass multiple dictionary meanings unless
“the specification or prosecution history clearly
demonstrates that only one of the multiple meanings
was intended”). That approach, in our view,
improperly restricts the role of the specification in
claim construction.
Assigning such a limited role to the specification, and
in particular requiring *1321 that any definition of
claim language in the specification be express, is
inconsistent with our rulings that the specification is
“the single best guide to the meaning of a disputed
term,” and that the specification “acts as a dictionary
when it expressly defines terms used in the claims or
when it defines terms by implication.” Vitronics, 90
F.3d at 1582; Irdeto Access, Inc. v. Echostar Satellite
Corp., 383 F.3d 1295, 1300 (Fed.Cir.2004) (“Even
when guidance is not provided in explicit definitional
format, the specification may define claim terms by
implication such that the meaning may be found in or
ascertained by a reading of the patent documents.”)
(citations omitted); Novartis Pharms. Corp. v.
Abbott Labs., 375 F.3d 1328, 1334-35 (Fed.Cir.2004)
(same); Bell Atl. Network Servs., Inc. v. Covad
Communications Group, Inc., 262 F.3d 1258, 1268
(Fed.Cir.2001) (“[A] claim term may be clearly
redefined without an explicit statement of
redefinition.”).
The main problem with elevating the dictionary to
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such prominence is that it focuses the inquiry on the
abstract meaning of words rather than on the meaning
of claim terms within the context of the patent.
Properly viewed, the “ordinary meaning” of a claim
term is its meaning to the ordinary artisan after
reading the entire patent. Yet heavy reliance on the
dictionary divorced from the intrinsic evidence risks
transforming the meaning of the claim term to the
artisan into the meaning of the term in the abstract,
out of its particular context, which is the
specification. The patent system is based on the
proposition that claims cover only the invented
subject matter. As the Supreme Court has stated,
“[i]t seems to us that nothing can be more just and
fair, both to the patentee and the public, than that the
former should understand, and correctly describe, just
what he has invented, and for what he claims a
patent.” Merrill v. Yeomans, 94 U.S. at 573-74. The
use of a dictionary definition can conflict with that
directive because the patent applicant did not create
the dictionary to describe the invention. Thus, there
may be a disconnect between the patentee's
responsibility to describe and claim his invention,
and the dictionary editors' objective of aggregating all
possible definitions for particular words.
Although the Texas Digital line of cases permit the
dictionary definition to be narrowed in some
circumstances even when there is not an explicit
disclaimer or redefinition in the specification, too
often that line of cases has been improperly relied
upon to condone the adoption of a dictionary
definition entirely divorced from the context of the
written description. The problem is that if the
district court starts with the broad dictionary
definition in every case and fails to fully appreciate
how the specification implicitly limits that definition,
the error will systematically cause the construction of
the claim to be unduly expansive. The risk of
systematic overbreadth is greatly reduced if the court
instead focuses at the outset on how the patentee used
the claim term in the claims, specification, and
prosecution history, rather than starting with a broad
definition and whittling it down.
Dictionaries, by their nature, provide an expansive
array of definitions. General dictionaries, in
particular, strive to collect all uses of particular
words, from the common to the obscure. By design,
general dictionaries collect the definitions of a term
as used not only in a particular art field, but in many
different settings. In such circumstances, it is
inevitable that the multiple dictionary definitions for
a term will extend beyond the “construction of the
patent [that] is confirmed by the avowed
understanding of the patentee, expressed by him, or
on his behalf, when his application*1322 for the
original patent was pending.” Goodyear Dental
Vulcanite Co. v. Davis, 102 U.S. 222, 227, 26 L.Ed.
149 (1880). Thus, the use of the dictionary may
extend patent protection beyond what should
properly be afforded by the inventor's patent. See
Smith v. Snow, 294 U.S. 1, 14, 55 S.Ct. 279, 79 L.Ed.
721 (1935) (“if the claim were fairly susceptible of
two constructions, that should be adopted which will
secure to the patentee his actual invention ”)
(emphasis added). For that reason, we have stated
that “a general-usage dictionary cannot overcome artspecific
evidence of the meaning” of a claim term.
Vanderlande Indus. Nederland, 366 F.3d at 1321;
see also Renishaw, 158 F.3d at 1250, quoting
Liebscher v. Boothroyd, 46 C.C.P.A. 701, 258 F.2d
948, 951 (CCPA 1958) (“Indiscriminate reliance on
definitions found in dictionaries can often produce
absurd results.... One need not arbitrarily pick and
choose from the various accepted definitions of a
word to decide which meaning was intended as the
word is used in a given claim. The subject matter,
the context, etc., will more often than not lead to the
correct conclusion.”).
Even technical dictionaries or treatises, under certain
circumstances, may suffer from some of these
deficiencies. There is no guarantee that a term is
used in the same way in a treatise as it would be by
the patentee. In fact, discrepancies between the
patent and treatises are apt to be common because the
patent by its nature describes something novel. See
Autogiro, 384 F.2d at 397 (“Often the invention is
novel and words do not exist to describe it. The
dictionary does not always keep abreast of the
inventor. It cannot.”).
Moreover, different dictionaries may contain
somewhat different sets of definitions for the same
words. A claim should not rise or fall based upon
the preferences of a particular dictionary editor, or
the court's independent decision, uninformed by the
specification, to rely on one dictionary rather than
another. Finally, the authors of dictionaries or
treatises may simplify ideas to communicate them
most effectively to the public and may thus choose a
meaning that is not pertinent to the understanding of
particular claim language. See generally Ellen P.
Aprill, The Law of the Word: Dictionary Shopping in
the Supreme Court, 30 Ariz. St. L.J. 275, 293-314
(1998). The resulting definitions therefore do not
necessarily reflect the inventor's goal of distinctly
setting forth his invention as a person of ordinary
skill in that particular art would understand it.
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[20] As we have noted above, however, we do not
intend to preclude the appropriate use of dictionaries.
Dictionaries or comparable sources are often useful
to assist in understanding the commonly understood
meaning of words and have been used both by our
court and the Supreme Court in claim interpretation.
See Exhibit Supply Co. v. Ace Patents Corp., 315
U.S. 126, 134, 62 S.Ct. 513, 86 L.Ed. 736 (1942)
(relying on dictionaries to construe the claim term
“embedded”); Weber Elec. Co. v. E.H. Freeman
Elec. Co., 256 U.S. 668, 678, 41 S.Ct. 600, 65 L.Ed.
1162 (1921) (approving circuit court's use of
dictionary definitions to define claim terms);
Renishaw, 158 F.3d at 1247-53 (approving the use of
dictionaries with proper respect for the role of
intrinsic evidence). A dictionary definition has the
value of being an unbiased source “accessible to the
public in advance of litigation.” Vitronics, 90 F.3d at
1585. As we said in Vitronics, judges are free to
consult dictionaries and technical treatises
at any time in order to better understand the
underlying technology and may also rely on
dictionary definitions when construing claim terms,
so long as the dictionary definition does not
contradict*1323 any definition found in or
ascertained by a reading of the patent documents.
Id. at 1584 n. 6.
We also acknowledge that the purpose underlying the
Texas Digital line of cases-to avoid the danger of
reading limitations from the specification into the
claim-is sound. Moreover, we recognize that the
distinction between using the specification to
interpret the meaning of a claim and importing
limitations from the specification into the claim can
be a difficult one to apply in practice. See Comark
Communications, Inc. v. Harris Corp., 156 F.3d
1182, 1186-87 (Fed.Cir.1998) (“there is sometimes a
fine line between reading a claim in light of the
specification, and reading a limitation into the claim
from the specification”). However, the line between
construing terms and importing limitations can be
discerned with reasonable certainty and predictability
if the court's focus remains on understanding how a
person of ordinary skill in the art would understand
the claim terms. For instance, although the
specification often describes very specific
embodiments of the invention, we have repeatedly
warned against confining the claims to those
embodiments. See, e.g., Nazomi Communications,
Inc. v. ARM Holdings, PLC, 403 F.3d 1364, 1369
(Fed.Cir.2005) (claims may embrace “different
subject matter than is illustrated in the specific
embodiments in the specification”); Liebel-
Flarsheim, 358 F.3d at 906-08; Teleflex, 299 F.3d at
1327; SRI Int'l v. Matsushita Elec. Corp. of Am., 775
F.2d 1107, 1121 (Fed.Cir.1985). In particular, we
have expressly rejected the contention that if a patent
describes only a single embodiment, the claims of the
patent must be construed as being limited to that
embodiment. Gemstar-TV Guide, 383 F.3d at 1366.
That is not just because section 112 of the Patent Act
requires that the claims themselves set forth the limits
of the patent grant, but also because persons of
ordinary skill in the art rarely would confine their
definitions of terms to the exact representations
depicted in the embodiments.
To avoid importing limitations from the specification
into the claims, it is important to keep in mind that
the purposes of the specification are to teach and
enable those of skill in the art to make and use the
invention and to provide a best mode for doing so.
See Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d
1524, 1533 (Fed.Cir.1987). One of the best ways to
teach a person of ordinary skill in the art how to
make and use the invention is to provide an example
of how to practice the invention in a particular case.
Much of the time, upon reading the specification in
that context, it will become clear whether the
patentee is setting out specific examples of the
invention to accomplish those goals, or whether the
patentee instead intends for the claims and the
embodiments in the specification to be strictly
coextensive. See SciMed Life Sys., 242 F.3d at 1341.
The manner in which the patentee uses a term within
the specification and claims usually will make the
distinction apparent. See Snow v. Lake Shore & M.S.
Ry. Co., 121 U.S. 617, 630, 7 S.Ct. 1343, 30 L.Ed.
1004 (1887) (it was clear from the specification that
there was “nothing in the context to indicate that the
patentee contemplated any alternative” embodiment
to the one presented).
In the end, there will still remain some cases in which
it will be hard to determine whether a person of skill
in the art would understand the embodiments to
define the outer limits of the claim term or merely to
be exemplary in nature. While that task may present
difficulties in some cases, we nonetheless believe that
attempting to resolve that problem in the context of
the *1324 particular patent is likely to capture the
scope of the actual invention more accurately than
either strictly limiting the scope of the claims to the
embodiments disclosed in the specification or
divorcing the claim language from the specification.
[21] In Vitronics, this court grappled with the same
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problem and set forth guidelines for reaching the
correct claim construction and not imposing improper
limitations on claims. 90 F.3d at 1582. The
underlying goal of our decision in Vitronics was to
increase the likelihood that a court will comprehend
how a person of ordinary skill in the art would
understand the claim terms. See id. at 1584. In that
process, we recognized that there is no magic formula
or catechism for conducting claim construction. Nor
is the court barred from considering any particular
sources or required to analyze sources in any specific
sequence, as long as those sources are not used to
contradict claim meaning that is unambiguous in light
of the intrinsic evidence. See id. at 1583-84; Intel
Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1367
(Fed.Cir.2003). For example, a judge who
encounters a claim term while reading a patent might
consult a general purpose or specialized dictionary to
begin to understand the meaning of the term, before
reviewing the remainder of the patent to determine
how the patentee has used the term. The sequence of
steps used by the judge in consulting various sources
is not important; what matters is for the court to
attach the appropriate weight to be assigned to those
sources in light of the statutes and policies that
inform patent law. Vitronics, 90 F.3d at 1582. In
Vitronics, we did not attempt to provide a rigid
algorithm for claim construction, but simply
attempted to explain why, in general, certain types of
evidence are more valuable than others. Today, we
adhere to that approach and reaffirm the approach to
claim construction outlined in that case, in Markman,
and in Innova. We now turn to the application of
those principles to the case at bar.
IV
A
[22] The critical language of claim 1 of the '798
patent-“further means disposed inside the shell for
increasing its load bearing capacity comprising
internal steel baffles extending inwardly from the
steel shell walls”-imposes three clear requirements
with respect to the baffles. First, the baffles must be
made of steel. Second, they must be part of the loadbearing
means for the wall section. Third, they must
be pointed inward from the walls. Both parties,
stipulating to a dictionary definition, also conceded
that the term “baffles” refers to objects that check,
impede, or obstruct the flow of something. The
intrinsic evidence confirms that a person of skill in
the art would understand that the term “baffles,” as
used in the '798 patent, would have that generic
meaning.
The other claims of the '798 patent specify particular
functions to be served by the baffles. For example,
dependent claim 2 states that the baffles may be
“oriented with the panel sections disposed at angles
for deflecting projectiles such as bullets able to
penetrate the steel plates.” The inclusion of such a
specific limitation on the term “baffles” in claim 2
makes it likely that the patentee did not contemplate
that the term “baffles” already contained that
limitation. See Dow Chem. Co. v. United States, 226
F.3d 1334, 1341-42 (Fed.Cir.2000) (concluding that
an independent claim should be given broader scope
than a dependent claim to avoid rendering the
dependent claim redundant). Independent claim 17
further supports that proposition. It states that
baffles are *1325 placed “projecting inwardly from
the outer shell at angles tending to deflect projectiles
that penetrate the outer shell.” That limitation would
be unnecessary if persons of skill in the art
understood that the baffles inherently served such a
function. See TurboCare, 264 F.3d at 1123 (claim
terms should not be read to contain a limitation
“where another claim restricts the invention in
exactly the [same] manner”). Dependent claim 6
provides an additional requirement for the baffles,
stating that “the internal baffles of both outer panel
sections overlap and interlock at angles providing
deflector panels extending from one end of the
module to the other.” If the baffles recited in claim 1
were inherently placed at specific angles, or
interlocked to form an intermediate barrier, claim 6
would be redundant.
The specification further supports the conclusion that
persons of ordinary skill in the art would understand
the baffles recited in the '798 patent to be loadbearing
objects that serve to check, impede, or
obstruct flow. At several points, the specification
discusses positioning the baffles so as to deflect
projectiles. See '798 patent, col. 2, II. 13-15; id.,
col. 5, II. 17-19. The patent states that one
advantage of the invention over the prior art is that
“[t]here have not been effective ways of dealing with
these powerful impact weapons with inexpensive
housing.” Id., col. 3, II. 28-30. While that
statement makes clear the invention envisions baffles
that serve that function, it does not imply that in order
to qualify as baffles within the meaning of the claims,
the internal support structures must serve the
projectile-deflecting function in all the embodiments
of all the claims. The specification must teach and
enable all the claims, and the section of the written
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description discussing the use of baffles to deflect
projectiles serves that purpose for claims 2, 6, 17, and
23, which specifically claim baffles that deflect
projectiles. See In re Wright, 999 F.2d 1557, 1561
(Fed.Cir.1993).
The specification discusses several other purposes
served by the baffles. For example, the baffles are
described as providing structural support. The patent
states that one way to increase load-bearing capacity
is to use “at least in part inwardly directed steel
baffles 15, 16.” '798 patent, col. 4, II. 14-15. The
baffle 16 is described as a “strengthening triangular
baffle.” Id., col. 4, line 37. Importantly, Figures 4
and 6 do not show the baffles as part of an
“intermediate interlocking, but not solid, internal
barrier.” In those figures, the baffle 16 simply
provides structural support for one of the walls, as
depicted below:
*1326
Other uses for the baffles are listed in the
specification as well. In Figure 7, the overlapping
flanges “provide for overlapping and interlocking the
baffles to produce substantially an intermediate
barrier wall between the opposite [wall] faces”:
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'798 patent, col. 5, II. 26-29. Those baffles thus
create small compartments that can be filled with
either sound and thermal insulation or rock and
gravel to stop projectiles. Id., col. 5, II. 29-34. By
separating the interwall area into compartments (see,
e.g., compartment 55 in Figure 7), the user of the
modules can choose different types of material for
each compartment, so that the module can be “easily
custom tailored for the specific needs of each
installation.” Id., col. 5, II. 36-37. When material is
placed into the wall during installation, the baffles
obstruct the flow of material from one compartment
to another so that this “custom tailoring” is possible.
[23] The fact that the written description of the '798
patent sets forth multiple *1327 objectives to be
served by the baffles recited in the claims confirms
that the term “baffles” should not be read restrictively
to require that the baffles in each case serve all of the
recited functions. We have held that “[t]he fact that
a patent asserts that an invention achieves several
objectives does not require that each of the claims be
construed as limited to structures that are capable of
achieving all of the objectives.” Liebel-Flarsheim,
358 F.3d at 908; see also Resonate Inc. v. Alteon
Websystems, Inc., 338 F.3d 1360, 1367
(Fed.Cir.2003). Although deflecting projectiles is
one of the advantages of the baffles of the '798
patent, the patent does not require that the inward
extending structures always be capable of performing
that function. Accordingly, we conclude that a
person of skill in the art would not interpret the
disclosure and claims of the '798 patent to mean that
a structure extending inward from one of the wall
faces is a “baffle” if it is at an acute or obtuse angle,
but is not a “baffle” if it is disposed at a right angle.
B
[24] Invoking the principle that “claims should be so
construed, if possible, as to sustain their validity,”
Rhine v. Casio, Inc., 183 F.3d 1342, 1345
(Fed.Cir.1999), AWH argues that the term “baffles”
should be given a restrictive meaning because if the
term is not construed restrictively, the asserted claims
would be invalid.
While we have acknowledged the maxim that claims
should be construed to preserve their validity, we
have not applied that principle broadly, and we have
certainly not endorsed a regime in which validity
analysis is a regular component of claim
construction. See Nazomi Communications, 403 F.3d
at 1368-69. Instead, we have limited the maxim to
cases in which “the court concludes, after applying
all the available tools of claim construction, that the
claim is still ambiguous.” Liebel-Flarsheim, 358
F.3d at 911; see also Generation II Orthotics Inc. v.
Med. Tech. Inc., 263 F.3d 1356, 1365 (Fed.Cir.2001)
(“[C]laims can only be construed to preserve their
validity where the proposed claim construction is
‘practicable,’ is based on sound claim construction
principles, and does not revise or ignore the explicit
language of the claims.”); Elekta Instrument S.A. v.
O.U.R. Scientific Int'l, Inc., 214 F.3d 1302, 1309
(Fed.Cir.2000) (“having concluded that the amended
claim is susceptible of only one reasonable
construction, we cannot construe the claim differently
from its plain meaning in order to preserve its
validity”); E.I. du Pont de Nemours & Co. v. Phillips
Petroleum Co., 849 F.2d 1430, 1434 (Fed.Cir.1988)
(rejecting argument that limitations should be added
to claims to preserve the validity of the claims). In
such cases, we have looked to whether it is
reasonable to infer that the PTO would not have
issued an invalid patent, and that the ambiguity in the
claim language should therefore be resolved in a
manner that would preserve the patent's validity.
That is the rationale that gave rise to the maxim in the
first place. In Klein v. Russell, 86 U.S. (19 Wall.)
433, 466, 22 L.Ed. 116 (1873), the owner of a
reissued patent argued for a narrow construction of
the patent, while the accused infringer argued for a
broader construction. The Court noted that the law
“required that the reissue should be for the same
invention as the original patent.” Id. Because the
reissue, which was granted under the predecessor to
35 U.S.C. § 251, would have been improper under
the broader construction, the Court “presumed the
Commissioner did his duty” and did not issue an
invalid patent. For that reason, among others, the
Court construed the *1328 disputed claim language
in a manner that “sustain[ed] the patent and the
construction claimed by the patentee,” since that “can
be done consistently with the language which he has
employed.” Id. The applicability of the doctrine in a
particular case therefore depends on the strength of
the inference that the PTO would have recognized
that one claim interpretation would render the claim
invalid, and that the PTO would not have issued the
patent assuming that to be the proper construction of
the term.
In this case, unlike in Klein and other cases in which
the doctrine of construing claims to preserve their
validity has been invoked, the claim term at issue is
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not ambiguous. Thus, it can be construed without
the need to consider whether one possible
construction would render the claim invalid while the
other would not. The doctrine of construing claims
to preserve their validity, a doctrine of limited utility
in any event, therefore has no applicability here.
In sum, we reject AWH's arguments in favor of a
restrictive definition of the term “baffles.” Because
we disagree with the district court's claim
construction, we reverse the summary judgment of
noninfringement. In light of our decision on claim
construction, it is necessary to remand the
infringement claims to the district court for further
proceedings.
V
With respect to Mr. Phillips's allegation of
misappropriation of trade secrets, we agree with the
panel's decision upholding the district court's ruling
on that issue, in which the district court dismissed the
trade secret claim on statute of limitations grounds.
See Phillips, 363 F.3d at 1214-1216. Accordingly,
based on the panel's disposition of that issue, we
affirm the district court's dismissal of the trade secret
claim. With respect to AWH's cross-appeal, we also
agree with the panel's reasoning and its conclusion
that the cross-appeal is improper. See id. at 1216.
We therefore dismiss the cross-appeal.
VI
In our order granting rehearing en banc, we asked the
parties to brief various questions, including the
following: “Consistent with the Supreme Court's
decision in Markman v. Westview Instruments, 517
U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996),
and our en banc decision in Cybor Corp. v. FAS
Technologies, Inc., 138 F.3d 1448 (Fed.Cir.1998), is
it appropriate for this court to accord any deference to
any aspect of trial court claim construction rulings
If so, on what aspects, in what circumstances, and to
what extent” After consideration of the matter, we
have decided not to address that issue at this time.
We therefore leave undisturbed our prior en banc
decision in Cybor.
Each party shall bear its own costs for this appeal.
AFFIRMED IN PART, REVERSED IN PART,
DISMISSED IN PART, and REMANDED.
LOURIE, Circuit Judge, concurring in part and
dissenting in part, with whom PAULINE NEWMAN,
Circuit Judge, joins.
I fully join the portion of the court's opinion resolving
the relative weights of specification and dictionaries
in interpreting patent claims, in favor of the
specification. I could elaborate more expansively on
that topic, but Judge Bryson's opinion for the
majority says it so well, there is little reason for me to
repeat its truths. I also agree with the court that
claims need not necessarily be limited to specific or
preferred embodiments in the specification, although
they are limited to what is *1329 contained in the
overall disclosure of the specification.
However, I do dissent from the court's decision to
reverse and remand the district court's decision. The
original panel decision of this court, which implicitly
decided the case based on the priorities that the en
banc court has now reaffirmed, interpreted the claims
in light of the specification and found that the
defendant did not infringe the claims. We affirmed
the district court, which had arrived at a similar
conclusion. The dissent from the panel decision
relied on the “dictionaries first” procedure, which the
court now has decided not to follow. Thus, while the
claim construction issue had to be decided by the en
banc court, I see no reason for the court, having
reaffirmed the principle on which the district judge
and the panel originally decided the case, to send it
back for further review.
The court premises its reverse-and-remand decision
on the concept of claim differentiation and the
reasoning that the contested term “baffle” need not
fulfill all of the functions set out for it in the
specification. Reasonable people can differ on those
points. However, the court did not take this case en
banc because the full court differed with the panel
majority on those disputable criteria. It did so to
resolve the claim construction issue, which it has now
done so well. Having done so, I believe that it
should simply affirm the district court's decision on
the merits, consistently with that court's rationale and
that of the panel that affirmed the district court,
which it now adopts.
I will not critique in detail particular statements the
majority makes in rationalizing its reversal of the
district court's decision, such as “that a person of skill
in the art would not interpret the disclosure and
claims of the '798 patent to mean that a structure
extending inward from one of the wall faces is a
‘baffle’ if it is at an acute or obtuse angle, but is not a
‘baffle’ if it is disposed at a right angle,” or that “the
patent does not require that the inward extending
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structures always be capable of performing that
function [deflecting projectiles]” in order to be
considered ‘baffles'.
I will simply point out that the specification contains
no disclosure of baffles at right angles. Moreover, as
the majority correctly states, a patent specification is
intended to describe one's invention, and it is
essential to read a specification in order to interpret
the meaning of the claims. This specification makes
clear that the “baffles” in this invention are angled.
There is no reference to baffles that show them to be
other than angled. The abstract refers to “bullet
deflecting ... baffles.” Only angled baffles can
deflect. It then mentions “internal baffles at angles
for deflecting bullets.” That could not be clearer.
The specification then refers several times to baffles,
often to figures in the drawings, all of which are to
angled baffles. A compelling point is that the only
numbered references to baffles (15, 16, 26, 27, 30,
and 31) all show angled baffles.
The specification further states that steel panels
“form the internal baffles at angles for deflecting
bullets.” It states that the baffles are “disposed at
such angles that bullets which might penetrate the
outer steel panels are deflected.” It explains that if
bullets “were to penetrate the outer steel wall, the
baffles are disposed at angles which tend to deflect
the bullets.” There is no specific reference in this
patent to a baffle that is not angled at other than 90.
While, as the majority states, the specification
indicates that multiple objectives are achieved by the
invention, none of the other objectives is dependent
upon whether the baffles are at other than a 90 angle,
whereas the constantly stated objective of *1330
deflection of bullets is dependent upon such an angle.
Finally, even though claim construction is a question
of law, reviewable by this court without formal
deference, I do believe that we ought to lean toward
affirmance of a claim construction in the absence of a
strong conviction of error. I do not have such a
conviction in this case, after considering the district
court's opinion and the patent specification.
For these reasons, while I wholeheartedly join the
majority opinion in its discussion and resolution of
the “specification v. dictionaries” issue, I would
affirm the decision below.
MAYER, Circuit Judge, with whom PAULINE
NEWMAN, Circuit Judge, joins, dissenting.
Now more than ever I am convinced of the futility,
indeed the absurdity, of this court's persistence in
adhering to the falsehood that claim construction is a
matter of law devoid of any factual component.
Because any attempt to fashion a coherent standard
under this regime is pointless, as illustrated by our
many failed attempts to do so, I dissent.
This court was created for the purpose of bringing
consistency to the patent field. See H.R.Rep. No.
312, 97th Cong., 1st Sess. 20-23 (1981). Instead, we
have taken this noble mandate, to reinvigorate the
patent and introduce predictability to the field, and
focused inappropriate power in this court. In our
quest to elevate our importance, we have, however,
disregarded our role as an appellate court; the
resulting mayhem has seriously undermined the
legitimacy of the process, if not the integrity of the
institution.
In the name of uniformity, Cybor Corp. v. FAS
Technologies, Inc., 138 F.3d 1448 (Fed.Cir.1998) (en
banc), held that claim construction does not involve
subsidiary or underlying questions of fact and that we
are, therefore, unbridled by either the expertise or
efforts of the district court. FN1 What we have
wrought, instead, is the substitution of a black box, as
it so pejoratively has been said of the jury, with the
black hole of this court. Out of this void we emit
“legal” pronouncements by way of “interpretive
necromancy” FN2 ; these rulings resemble reality, if at
all, only by chance. Regardless, and with a blind eye
to the consequences, we continue to struggle under
this irrational and reckless regime, trying every
alternative-dictionaries first, dictionaries second,
never dictionaries, etc., etc., etc.
FN1. The Supreme Court did not suggest in
affirming Markman v. Westview
Instruments, Inc., 52 F.3d 967 (1995) (en
banc), that claim construction is a purely
legal question. 517 U.S. 370, 116 S.Ct.
1384, 134 L.Ed.2d 577 (1996). It held only
that, as a policy matter, the judge, as
opposed to the jury, should determine the
meaning of a patent claim. See Cybor, 138
F.3d at 1464 (Mayer, C.J., dissenting)
(explaining that “the [Supreme] Court chose
not to accept our formulation of claim
construction: as a pure question of law to be
decided de novo in all cases on appeal”).
FN2. See The Holmes Group, Inc. v.
Vornado Air Circulation Sys., Inc., 535 U.S.
826, 833, 122 S.Ct. 1889, 153 L.Ed.2d 13
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(2002).
Again today we vainly attempt to establish standards
by which this court will interpret claims. But after
proposing no fewer than seven questions, receiving
more than thirty amici curiae briefs, and whipping
the bar into a frenzy of expectation, we say nothing
new, but merely restate what has become the practice
over the last ten years-that we will decide cases
according to whatever mode or method results in the
outcome we desire, or at least allows us a seemingly
plausible way out of the case. I am not surprised by
this. *1331 Indeed, there can be no workable
standards by which this court will interpret claims so
long as we are blind to the factual component of the
task. See Cooter & Gell v. Hartmarx Corp., 496
U.S. 384, 405, 110 S.Ct. 2447, 110 L.Ed.2d 359
(1990) (“Fact-bound resolutions cannot be made
uniform through appellate review, de novo or
otherwise.” (quoting Mars Steel Corp. v. Cont'l Bank
N.A., 880 F.2d 928, 936 (7th Cir.1989))). FN3
FN3. The question asked but not answered
by the court which might have allowed it to
cure its self-inflicted wound was: “Question
7. Consistent with the Supreme Court's
decision in Markman v. Westview
Instruments, Inc., 517 U.S. 370, 116 S.Ct.
1384, 134 L.Ed.2d 577 (1996) and our en
banc decision in Cybor Corp. v. FAS
Technologies, Inc., 138 F.3d 1448
(Fed.Cir.1998), is it appropriate for this
court to accord any deference to any aspect
of trial court claim construction rulings If
so, on what aspects, in what circumstances,
and to what extent”
Federal Rule of Civil Procedure 52(a) states that
“[f]indings of fact ... shall not be set aside unless
clearly erroneous, and due regard shall be given to
the opportunity of the trial court to judge of the
credibility of witnesses.” According to the Supreme
Court, this “[r]ule means what it says”-that findings
of fact, even “those described as ‘ultimate facts'
because they may determine the outcome of
litigation,” are to be reviewed deferentially on
appeal. FN4 Bose Corp. v. Consumers Union of United
States, 466 U.S. 485, 498 & 501, 104 S.Ct. 1949, 80
L.Ed.2d 502 (1984); see also Anderson v. Bessemer
City, 470 U.S. 564, 575, 105 S.Ct. 1504, 84 L.Ed.2d
518 (1985) ( “[R]eview of factual findings under the
clearly-erroneous standard-with its deference to the
trier of fact-is the rule, not the exception.”);
Pullman-Standard v. Swint, 456 U.S. 273, 287, 102
S.Ct. 1781, 72 L.Ed.2d 66 (1982) ( “Rule 52(a)
broadly requires that findings of fact not be set aside
unless clearly erroneous.”); United States v. United
States Gypsum Co., 333 U.S. 364, 394, 68 S.Ct. 525,
92 L.Ed. 746 (1948). *1332 Even those findings of
fact based entirely on documentary evidence are
entitled to deference. Anderson, 470 U.S. at 574,
105 S.Ct. 1504 (“That [Rule 52(a) ] goes on to
emphasize the special deference to be paid credibility
determinations does not alter its clear command:
Rule 52(a) ‘does not make exceptions or purport to
exclude certain categories of factual findings from
the obligation of a court of appeals to accept a district
court's findings unless clearly erroneous.’ ” (quoting
Pullman-Standard, 456 U.S. at 287, 102 S.Ct. 1781)).
In short, we are obligated by Rule 52(a) to review the
factual findings of the district court that underlie the
determination of claim construction for clear error.
FN4. Because some facts are so intertwined
with a constitutional standard the Supreme
Court has held that de novo review is
appropriate. For example, whether a
defendant has acted with actual malice in a
defamation suit is reviewed de novo
because, among other reasons, the scope of
the First Amendment is shaped and applied
by reference to such factual determinations.
Bose, 466 U.S. at 502, 104 S.Ct. 1949
(“[T]he content of the rule is not revealed
simply by its literal text, but rather is given
meaning through the evolutionary process of
common-law adjudication.”). Similarly,
whether there is reasonable suspicion to
conduct an investigatory stop or probable
cause to perform a search under the Fourth
Amendment are reviewed without
deference. Ornelas v. United States, 517
U.S. 690, 696, 116 S.Ct. 1657, 134 L.Ed.2d
911 (1996) (holding that the protections
afforded by the Fourth Amendment are
“fluid concepts that take their substantive
content from the particular contexts in which
the standards are being assessed”). The
reasoning behind these limited exceptions
surely does not apply to claim construction.
While appearing from the perspective of this
court's limited sphere of influence to be
dreadfully important, claim construction
does not implicate a constitutional value.
Cf. Bose, 466 U.S. at 502, 104 S.Ct. 1949
(“[T]he constitutional values protected by
the rule make it imperative that judges-and
in some cases judges of [the Supreme]
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Court-make sure that it is correctly
applied.”). This is illustrated by the fact
that the outcome of a patent case, unlike a
defamation or illegal search case, has little
impact on how future cases are decided or
on how future parties behave. Cf. id. at 501
n. 17, 104 S.Ct. 1949 (“Regarding certain
largely factual questions in some areas of
the law, the stakes-in terms of impact on
future cases and future conduct-are too great
to entrust them finally to the judgment of the
trier of fact.”). Even if claim construction
did implicate a constitutional value, it,
unlike the decisions underlying the First and
Fourth Amendments, could readily be
reduced, when distinguished from its factual
underpinnings, to “a neat set of legal rules.”
Ornelas, 517 U.S. at 695-96, 116 S.Ct. 1657
(quoting Ill. v. Gates, 462 U.S. 213, 232,
103 S.Ct. 2317, 76 L.Ed.2d 527 (1983)).
While this court may persist in the delusion that
claim construction is a purely legal determination,
unaffected by underlying facts, it is plainly not the
case. Claim construction is, or should be, made in
context: a claim should be interpreted both from the
perspective of one of ordinary skill in the art and in
view of the state of the art at the time of invention.
See Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed.Cir.1998) (“It is the person of
ordinary skill in the field of the invention through
whose eyes the claims are construed.”). These
questions, which are critical to the correct
interpretation of a claim, are inherently factual.
They are hotly contested by the parties, not by resort
to case law as one would expect for legal issues, but
based on testimony and documentary evidence. FN5
During so called Markman “hearings,” which are
often longer than jury trials, parties battle over
experts offering conflicting evidence regarding who
qualifies as one of ordinary skill in the art; the
meaning of patent terms to that person; the state of
the art at the time of the invention; contradictory
dictionary definitions and which would be consulted
by the skilled artisan; the scope of specialized terms;
the problem a patent was solving; what is related or
pertinent art; whether a construction was disallowed
during prosecution; how one of skill in the art would
understand statements during prosecution; and on
and on. In order to reconcile the parties' inconsistent
submissions and arrive at a sound interpretation, the
district court is required to sift through and weigh
volumes of evidence. While this court treats the
district court as an intake clerk, whose only role is to
collect, shuffle and collate evidence, the reality, as
revealed by conventional practice, is far different.
FN5. That most of the cases now appealed
to this court are “summary judgments” is
irrelevant. We have artificially renamed
findings of fact as legal conclusions; the
district courts have dutifully conformed to
our fictional characterization, but this does
not change the inherent nature of the
inquiry. Of course, if the parties do not
dispute the material facts, summary
judgment is appropriate.
Even if the procedures employed by the district court
did not show that it is engaging in factfinding, the
nature of the questions underlying claim construction
illustrate that they are factual and should be reviewed
in accordance with Rule 52(a). For each patent, for
example, who qualifies as one of ordinary skill in the
art will differ, just as the state of the art at the time of
invention will differ. These subsidiary
determinations are specific, multifarious and not
susceptible to generalization; as such their resolution
in one case will bear very little, if at all, on the
resolution of subsequent cases. See Ornelas, 517
U.S. at 703, 116 S.Ct. 1657 (“Law clarification
requires generalization, and some issues lend
themselves to generalization much more than
others.”); Pierce v. Underwood, 487 U.S. 552, 561-
62, 108 S.Ct. 2541, 101 L.Ed.2d 490 (1988) (“Many
questions that arise in litigation are not
amenable*1333 to regulation by rule because they
involve multifarious, fleeting, special, narrow facts
that utterly resist generalization.” (quoting Maurice
Rosenberg, Judicial Discretion of the Trial Court,
Viewed from Above, 22 Syracuse L.Rev. 635, 662
(1971))); Icicle Seafoods, Inc. v. Worthington, 475
U.S. 709, 714, 106 S.Ct. 1527, 89 L.Ed.2d 739
(1986) (rejecting de novo review of factual questions,
even when outcome determinative). That the
determination of the meaning of a particular term in
one patent will not necessarily bear on the
interpretation of the same term in a subsequent patent
illustrates this point; while the term is the same, the
underlying factual context is different. It further
proves that these questions (e.g., who qualifies as one
of ordinary skill in the art and what was the state of
the art at the time of invention, among others) are
implicitly being determined in each case; because we
refuse to acknowledge either their existence or
importance, however, the manner of their resolution
is never elucidated. Finally, that claim construction
is dependent on underlying factual determinations
has been verified by our experience, which shows
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that reviewing these questions de novo has not
clarified the law, but has instead “distort[ed] the
appellate process,” causing confusion among the
district courts and bar. See Cooter, 496 U.S. at 404,
110 S.Ct. 2447 (quoting Pierce, 487 U.S. at 561, 108
S.Ct. 2541); see also Koon v. United States, 518 U.S.
81, 99, 116 S.Ct. 2035, 135 L.Ed.2d 392 (1996).
Our purely de novo review of claim interpretation
also cannot be reconciled with the Supreme Court's
instructions regarding obviousness. While
ultimately a question of law, obviousness depends on
several underlying factual inquiries. Graham v. John
Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d
545 (1966); see also Dennison Mfg. Co. v. Panduit
Corp., 475 U.S. 809, 811, 106 S.Ct. 1578, 89 L.Ed.2d
817 (1986) (holding that Rule 52(a) requires that the
district court's subsidiary factual determinations
should be reviewed for clear error); cf. Graver Tank
& Mfg. Co. v. Linde Air Prods. Co., 336 U.S. 271,
275, 69 S.Ct. 535, 93 L.Ed. 672 (1949) (holding that
validity, while ultimately a question of law, is
founded on factual determinations that are entitled to
deference). “Under [section] 103, the scope and
content of the prior art are to be determined;
differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary
skill in the pertinent art resolved.” Graham, 383 U.S.
at 17, 86 S.Ct. 684.
To a significant degree, each of these factual
inquiries is also necessary to claim construction.
Before beginning claim construction, “the scope and
content of the prior art [should] be determined,” id.,
to establish context. The “differences between the
prior art and the claims at issue [should] be
ascertained,” id., to better define what the inventor
holds out as the invention. And, the foundation for
both the obviousness and claim construction
determinations is “the level of ordinary skill in the
pertinent art.” Id.; see Multiform, 133 F.3d at 1477.
These underlying factual considerations receive the
level of deference due under Rule 52(a) when
considering obviousness, but they are scrutinized de
novo in the claim construction context. As directed
by the Supreme Court, however, it is especially
important in the patent field, “where so much
depends upon familiarity with specific scientific
problems and principles not usually contained in the
general storehouse of knowledge and experience,” to
give deference to the district court's findings of fact.
Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339
U.S. 605, 609-10, 70 S.Ct. 854, 94 L.Ed. 1097
(1950).
*1334 While the court flails about in an attempt to
solve the claim construction “conundrum,” the
solution to our plight is straightforward. We simply
must follow the example of every other appellate
court, which, regarding the vast majority of factual
questions, reviews the trial court for clear error. FN6
This equilibrium did not come about as the result of
chance or permissive appellate personalities, but
because two centuries of experience has shown that
the trial court's factfinding ability is “unchallenged.”
Salve Regina Coll. v. Russell, 499 U.S. 225, 233, 111
S.Ct. 1217, 113 L.Ed.2d 190 (1991); Inwood, 456
U.S. at 856, 102 S.Ct. 2182 (“Determining the weight
and credibility of the evidence is the special province
of the trier of fact.”). Time has similarly revealed
that it is more economical for the district court to find
facts. Pierce, 487 U.S. at 560, 108 S.Ct. 2541
(“Moreover, even where the district judge's full
knowledge of the factual setting can be acquired by
the appellate court, that acquisition will often come at
unusual expense, requiring the court to undertake the
unaccustomed task of reviewing the entire record
....”).
FN6. While jurisprudentially sound, the bar
also supports this proposition, as evident by
the many amici curiae briefs urging
adherence to Rule 52(a).
Therefore, not only is it more efficient for the trial
court to construct the record, the trial court is better,
that is, more accurate, by way of both position and
practice, at finding facts than appellate judges.
Anderson, 470 U.S. at 574, 105 S.Ct. 1504 (“The
rationale for deference to the original finder of fact is
not limited to the superiority of the trial judge's
position to make determinations of credibility. The
trial judge's major role is the determination of fact,
and with experience on fulfilling that role comes
expertise.”); Zenith Radio Corp. v. Hazeltine
Research, Inc., 395 U.S. 100, 123, 89 S.Ct. 1562, 23
L.Ed.2d 129 (1969). Our rejection of this
fundamental premise has resulted, not surprisingly, in
several serious problems, including increased
litigation costs, needless consumption of judicial
resources, and uncertainty, as well as diminished
respect for the court and less “decisional accuracy.”
Salve, 499 U.S. at 233, 111 S.Ct. 1217. We should
abandon this unsound course. FN7
FN7. There are some scenarios where it is
difficult to weed facts from law, see
Pullman-Standard, 456 U.S. at 288, 102
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(Cite as: 415 F.3d 1303)
S.Ct. 1781, but claim construction is not one
of them.
If we persist in deciding the subsidiary factual
components of claim construction without deference,
there is no reason why litigants should be required to
parade their evidence before the district courts or for
district courts to waste time and resources evaluating
such evidence. It is excessive to require parties, who
“have already been forced to concentrate their
energies and resources on persuading the trial judge
that their account of the facts is the correct one,” to
“persuade three more judges at the appellate level.”
Anderson, 470 U.S. at 575, 105 S.Ct. 1504. If the
proceedings before the district court are merely a
“tryout on the road,” id. (quoting Wainwright v.
Sykes, 433 U.S. 72, 90, 97 S.Ct. 2497, 53 L.Ed.2d
594 (1977)), as they are under our current regimen, it
is wasteful to require such proceedings at all.
Instead, all patent cases could be filed in this court;
we would determine whether claim construction is
necessary, and, if so, the meaning of the claims.
Those few cases in which claim construction is not
dispositive can be remanded to the district court for
trial. In this way, we would at least eliminate the
time and expense of the charade currently played out
before the district court.
Eloquent words can mask much mischief. The
court's opinion today is akin to *1335 rearranging the
deck chairs on the Titanic-the orchestra is playing as
if nothing is amiss, but the ship is still heading for
Davey Jones' locker.
C.A.Fed. (Colo.),2005.
Phillips v. AWH Corp.
415 F.3d 1303, 75 U.S.P.Q.2d 1321
Briefs and Other Related Documents (Back to top)
• 03-1286 (Docket) (Mar. 12, 2003)
• 03-1269 (Docket) (Feb. 25, 2003)
END OF DOCUMENT
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405 F.3d 1367 Page 1
405 F.3d 1367, 74 U.S.P.Q.2d 1586
(Cite as: 405 F.3d 1367)
Briefs and Other Related Documents
United States Court of Appeals,Federal Circuit.
The GILLETTE COMPANY, Plaintiff-Appellant,
v.
ENERGIZER HOLDINGS, INC., Defendant-
Appellee.
No. 04-1220.
DECIDED: April 29, 2005.
Rehearing and Rehearing En Banc Denied June 20,
2005.
Background: Patentee filed a patent infringement
suit asserting that the competitor's four-bladed razor
infringed the claims of its patent for wet-shave safety
razors with multiple blades. The United States
District Court for the District of Massachusetts, Patti
B. Saris, J., denied patentee's motion for a
preliminary injunction, and patentee appealed.
Holding: The Court of Appeals, Rader, Circuit
Judge, held that claim language “comprising a group
of first, second, and third blades” in patent
encompassed more than only three-bladed razors.
Vacated and remanded.
“group of blades” as defined by the clear language of
the claim, terms “first, second, and third” were terms
to distinguish different elements of the claim, not
terms supplying a numerical limit, and specification's
reference defining the “invention” as encompassing
“a plurality of blades,” eschewed any numerical limit
on the number of blades.
[2] Patents 291 167(1.1)
291 Patents
291IX Construction and Operation of Letters
Patent
291IX(B) Limitation of Claims
291k167 Specifications, Drawings, and
Models
291k167(1.1) k. Specification as
Limiting or Enlarging Claims. Most Cited Cases
Words or expressions of manifest exclusion or
explicit disclaimers in patent specification are
necessary to disavow claim scope.
Patents 291 328(2)
291 Patents
291XIII Decisions on the Validity, Construction,
and Infringement of Particular Patents
291k328 Patents Enumerated
291k328(2) k. Original Utility. Most Cited
Cases
6,212,777. Construed.
Archer, Senior Circuit Judge, filed dissenting
opinion.
West Headnotes
[1] Patents 291 101(3)
291 Patents
291IV Applications and Proceedings Thereon
291k101 Claims
291k101(3) k. Limitations in General. Most
Cited Cases
Claim language “comprising a group of first, second,
and third blades” in patent for wet-shave safety
razors with multiple blades encompassed more than
only three-bladed razors; any subset of three blades
in a blade unit meeting claim's definitions was a
*1368 John E. Nathan, Paul, Weiss, Rifkind,
Wharton & Garrison LLP, of New York, New York,
argued for plaintiff-appellant. With him on the brief
were Lewis R. Clayton, Daniel J. Leffell, Steven C.
Herzog, and Kerry L. Quinn. Of counsel on the brief
were William L. Patton, Jane E. Willis, Dalila A.
Wendlandt, and Levina Wong, Ropes & Gray LLP,
of Boston, Massachusetts.
Randall G. Litton, Price, Heneveld, Cooper, Dewitt
& Litton, of Grand Rapids, Michigan, argued for
defendant-appellee. With him on the brief was
Matthew J. Gipson. Of counsel on the brief were
Richard D. Rochford, Jr. and Jason C. Kravitz, Nixon
Peabody LLP, of Boston, Massachusetts, and
Michael F. Orman, of Rochester, New York.
Before MICHEL, Chief Judge, FN* ARCHER, Senior
Circuit Judge, and RADER, Circuit Judge.
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(Cite as: 405 F.3d 1367)
FN* Paul R. Michel assumed the position of
Chief Judge on December 25, 2004.
Opinion for the court filed by Circuit Judge RADER.
Dissenting opinion filed by Senior Circuit Judge
ARCHER.RADER, Circuit Judge.
The Gillette Company (Gillette) owns U.S. Patent
No. 6,212,777 (issued April 10, 2001) (the '777
patent) for wet-shave safety razors with multiple
blades. Gillette sued Energizer Holdings, Inc.
(Energizer) in the United States District Court for the
District of Massachusetts alleging Energizer's
QUATTRO® , a four-bladed wet-shave safety razor,
infringes certain claims of the '777 patent. The
district court denied Gillette's motion for a
preliminary injunction because it found that the
claims of the '777 patent covered only a three-bladed
razor, and, consequently, Gillette did not show a
reasonable likelihood of success on its claim of literal
infringement by Energizer's four-bladed razor. The
Gillette Co. v. Energizer Holdings, Inc., No. 03-
11514-PBS, 2004 WL 3366162 (D.Mass. Jan. 15,
2004). Because the district court erred in construing
the claims of the '777 patent to cover only threebladed
safety razors, this court vacates and remands.
I.
The '777 patent claims a disposable safety razor with
a group of blades, each blade placed in a particular
geometric position relative to the other blades of the
group. Prior art razors with multiple blades shaved
closer to the skin than two-bladed razors but had “a
serious detrimental influence*1369 on other blade
unit characteristics, most notably the drag forces
experienced when the blade unit is moved over the
skin, with the consequence that the overall
performance of the blade unit [was] markedly inferior
[compared to two-bladed razors] despite a closer
shave being obtained. ” '777 patent, col. 1, II. 24-29.
The inventive contributions of the '777 patent are
varying progressively the exposure and spacing
parameters of the blades to overcome the undesired
drag forces produced by razors with multiple blades,
not simply limiting the number of blades to three.
“The blade exposure is defined to be the
perpendicular distance or height of the blade edge
measured with respect to a plane tangential to the
skin contacting surfaces of the blade unit elements
next in front of and next behind the edge.” Id. at col.
1, II. 50-59. Specifically, the blade closest to the
guard (leading blade) is positioned with a negative
exposure to (i.e. recessed below) its tangential plane.
Id. The blade closest to the cap (trailing blade) is
positioned with a positive exposure to (i.e., extending
above) its tangential plane. Id. A blade in between
the leading and trailing blades is positioned with an
exposure with respect to its tangential plane in
between the exposures of the leading and trailing
blades with respect to their respective tangential
planes. Id. at col. 2, II. 28-40. The result is a
generally “progressive exposure” of the blades with
each of the identified blades shaving closer to the
skin than the preceding blade. This blade
configuration reduces the drag forces produced by the
blades and equalizes the work performed by each
successive blade. Id. at col. 1, II. 63-66.
Additionally, the span marks the distance between
successive blades. A progressive span would
involve gradually increasing the spacing between the
guard and the leading blade, each successive blade,
and the trailing blade and the cap. See, e.g., id. at
col. 2, II. 16-20. The progression of the blade span
likewise reduces frictional drag, leading to a close
and comfortable shave.
Claim 1 of the '777 patent shows this progressive
exposure innovation in shaving technology:
1. A safety razor blade unit comprising a guard, a
cap, and a group of first, second, and third blades
with parallel sharpened edges located between the
guard and cap, the first blade defining a blade edge
nearest the guard having a negative exposure not less
than -0.2 mm, and the third blade defining a blade
edge nearest the cap having a positive exposure of
not greater than +0.2 mm, said second blade defining
a blade edge having an exposure not less than the
exposure of the first blade and not greater than the
exposure of the third blade.
'777 patent, col. 4, II. 5-14.
The Energizer QUATTRO® razor is the accused
infringing device. The QUATTRO® employs a
cartridge with a guard, a cap, and four blades. The
leading blade has a negative exposure of not less than
-0.2 mm; the trailing blade has a positive exposure of
not greater than +0.2 mm. The QUATTRO®
further has two middle blades with essentially the
same exposure, which is greater than that of the
leading blade and less than that of the trailing blade.
In anticipation of Energizer's launch of the
QUATTRO® , Gillette filed a patent infringement
suit asserting that the QUATTRO® infringed the
claims of the '777 patent. Shortly thereafter, Gillette
moved for a preliminary injunction to enjoin
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Energizer from making and selling the QUATTRO®
.
Following a two-day hearing, the district court denied
Gillette's motion, finding that Gillette had not shown
a reasonable likelihood of success on its claim of
literal infringement. *1370Gillette, 2004 WL
3366162, at *1. The trial court primarily based its
decision on the conclusion that the terms “first,”
“second,” and “third” of claim 1 limited the scope of
that claim to a razor having solely three blades. Id.,
slip op. at 11. Gillette now appeals, and this court
has jurisdiction under 28 U.S.C. § 1292(c)(1).
II
The grant of a preliminary injunction under 35 U.S.C.
§ 283 is within the discretion of the district court.
This court reviews a preliminary injunction decision
for an abuse of discretion. Novo Nordisk of N. Am.,
Inc. v. Genentech, Inc., 77 F.3d 1364, 1367
(Fed.Cir.1996). “An abuse of discretion may be
established by showing that the court made a clear
error of judgment in weighing relevant factors or
exercised its discretion based upon an error of law or
clearly erroneous factual findings.” Id.
As the moving party, Gillette is entitled to a
preliminary injunction if it shows: (1) a reasonable
likelihood of success on the merits of its claims; (2)
irreparable harm if an injunction is not granted; (3) a
balance of hardships tipping in its favor; and (4) the
injunction's favorable impact on the public interest.
Reebok Int'l Ltd. v. J. Baker, Inc., 32 F.3d 1552, 1555
(Fed.Cir.1994). In order to demonstrate a likelihood
of success on the merits, Gillette has to show that, in
light of the presumptions and burdens that will inhere
at trial on the merits, (1) Energizer likely infringes
the '777 patent, and (2) the claims of the '777 patent
will likely withstand Energizer's challenges to
validity. Amazon.com, Inc. v. Barnesandnoble.com,
Inc., 239 F.3d 1343, 1350 (Fed.Cir.2001). While
Energizer raised issues of validity in opposition to
Gillette's motion for a preliminary injunction, the
district court held that Gillette did not demonstrate a
reasonable likelihood of success on the threshold
issue of literal infringement. Therefore, the trial court
did not address the validity issues. Accordingly, the
validity of the '777 patent is not before this court on
appeal.
To review Gillette's likelihood of success on its literal
infringement claim, this court, as the trial court
before it, must first determine the meaning and the
scope of the claims on this preliminary record. See
Oakley, Inc. v. Sunglass Hut Int'l, 316 F.3d 1331,
1339 (Fed.Cir.2003) (“An assessment of the
likelihood of infringement, like a determination of
patent infringement at a later stage in litigation,
requires a two-step analysis. First, the court
determines the scope and meaning of the patent
claims asserted. Second[ ], the properly construed
claims are compared to the allegedly infringing
device.”) (internal quotations, alterations, and
citations omitted). “In construing claims, the
analytical focus must begin and remain centered on
the language of the claims themselves, for it is that
language that the patentee chose to use to particularly
point out and distinctly claim the subject matter
which the patentee regards as his invention.”
Interactive Gift Express, Inc. v. Compuserve, Inc.,
256 F.3d 1323, 1331 (Fed.Cir.2001) (quoting 35
U.S.C. § 112, 2); see also SRI Int'l v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 n. 14
(Fed.Cir.1985) (en banc ) (“Specifications teach.
Claims claim.”).
Claim construction requires this court to place the
claim language in its proper technological and
temporal context. The best tools for this enterprise
are the various forms of intrinsic evidence and, when
appropriate, extrinsic evidence. See Vitronics, Corp.
v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed.Cir.1996). The intrinsic evidence, “i.e., the
patent itself, including the claims, the specification
and, if in evidence, the prosecution history ... is the
most significant source of the legally operative
meaning of disputed claim language.” Id. (internal
citation omitted); see also *1371United States v.
Adams, 383 U.S. 39, 49, 86 S.Ct. 708, 15 L.Ed.2d
572 (1966) (“[I]t is fundamental that claims are to be
construed in the light of the specifications and both
are to be read with a view to ascertaining the
invention.”); Astrazeneca v. Mutual Pharm. Co.,
Inc., 384 F.3d 1333, 1336-37 (Fed.Cir.2004)
(“[E]vidence intrinsic to the patent-particularly the
patent's specification, including the inventors'
statutorily-required written description of the
invention-is the primary source for determining claim
meaning.” (citing Bell Atl. Network Servs., Inc. v.
Covad Communications Group, Inc., 262 F.3d 1258,
1268 (Fed.Cir.2001); Vitronics, 90 F.3d at 1582)).
[1] Applying this case law, this court must determine,
on this preliminary record, whether the language
“comprising ... a group of first, second, and third
blades” in the '777 patent can encompass four-bladed
safety razors (such as the QUATTRO® ) or is limited
to solely three-bladed safety razors. As explained
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below, this court discerns that claim 1 uses the
“open” claim terms “comprising” and “group of,” in
addition to other language, to encompass subject
matter beyond a razor with only three blades.
Moreover, the specification's focus on blade
exposures and express reference to “blade units with
a plurality of blades,” '777 patent, col. 1, II. 3-6,
shows as well that this invention covers razors with
more than three blades.
The objective of the invention of the '777 patent is to
reduce drag forces in safety razors with more than
two blades. See id. at col. 1, II. 24-37. The '777
patent accomplishes this objective by progressively
increasing the blade exposure and the blade span.
Id. at col. 1, II. 37-59. Indeed, the specification
specifically acknowledges that it is not the three
blades themselves which solve the prior art problem
of detrimental drag forces, but instead the
arrangement of three blades in a particular spatial
configuration, stating “the novel aspects of the
present invention residing in the provision of three
blades set in the blade unit set in particular
dispositions with respect to each other and the guard
and the cap.” Id. at col. 3, II. 16-19 (emphasis
added). The written description likewise discusses
these parameters with respect to the relative
positioning of each of the three blades at length at
column 1, line 60 through column 2, line 40. These
principles of progressive blade exposure and
progressive blade span could apply equally to four or
five blades. Such a geometric arrangement of three,
four, or even more blades will achieve a closer shave
and, at the same time, minimize excess drag. It may
be that a four-bladed safety razor is a less preferred
embodiment. A four-bladed razor costs more to
build, requires more parts, and adds more frictional
drag compared to the three-bladed version.
Nevertheless, a patentee typically claims broadly
enough to cover less preferred embodiments as well
as more preferred embodiments, precisely to block
competitors from marketing less than optimal
versions of the claimed invention.
Indeed, the language of claim 1 of the '777 patent
encompasses more than only three-bladed razors. At
the outset, the open language of claim 1 embraces
technology that may add features to devices
otherwise within the claim definition. Moleculon
Research Corp. v. CBS, Inc., 793 F.2d 1261, 1271
(Fed.Cir.1986). The claim uses two terms to show
this open-ended meaning. The word “comprising”
transitioning from the preamble to the body signals
that the entire claim is presumptively open-ended.
Crystal Semiconductor Corp. v. TriTech
Microelectronics Int'l, Inc., 246 F.3d 1336, 1347
(Fed.Cir.2001); Innovad Inc. v. Microsoft Corp., 260
F.3d 1326, 1333 (Fed.Cir.2001). Because the
patentee invoked this open-ended treatment in claim
1 of the '777 patent, the scope of claim 1
encompasses all safety *1372 razors satisfying the
elements set forth in claim 1. The addition of
elements not recited in the claim cannot defeat
infringement. See Crystal Semiconductor, 246 F.3d
at 1348 (“[T]he transition ‘comprising’ creates a
presumption that the recited elements are only a part
of the device, that the claim does not exclude
additional, unrecited elements. KCJ Corp. v. Kinetic
Concepts, Inc., 223 F.3d 1351, 1356
(Fed.Cir.2000).”).
The claim element identifying the blades likewise
uses another presumptively “open” claim term-
“group of.” '777 patent, col. 4, I. 6. At the outset, the
language “group of” does not place any limits or
closed implications on the elements following this
broad designation. Claim drafters often use the term
“group of” to signal a Markush group. A Markush
group lists specified alternatives in a patent claim,
typically in the form: a member selected from the
group consisting of A, B, and C. See Manual of
Patent Examining Procedure § 803.2 (2004). A
Markush group by its nature is closed. If an
applicant tries to claim a Markush group without the
word “consisting,” the PTO will insist upon the
addition of this word to ensure a closed meaning.
Thus, in order to “close” a Markush group, the PTO
insists on the transition phrase “group consisting of.”
See Abbott Labs. v. Baxter Pharm. Prods., Inc., 334
F.3d 1274, 1280 (Fed.Cir.2003). Without the word
“consisting” the simple phrase “group of” is
presumptively open. If intending to limit the
claimed invention to a three-bladed razor, the patent
drafter would not have used the words “group of.”
Rather, the drafter would have used the words “group
consisting of,” or the simple formulation “and first,
second, and third blades.” Because the drafter chose
to use the open term “group of,” additional members
in the element “group of ... blades” will not defeat
infringement. In other words, a razor with two
“second blades,” as in the QUATTRO® , will still
fall within the literal language of the claim.
The element at issue requires:
a group of first, second, and third blades with parallel
sharpened edges located between the guard and cap,
the first blade defining a blade edge nearest the guard
having a negative exposure not less than -0.2 mm,
and the third blade defining a blade edge nearest the
cap having a positive exposure of not greater than
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+0.2 mm, said second blade defining a blade edge
having an exposure not less than the exposure of the
first blade and not greater than the exposure of the
third blade.
'777 patent, col. 4, II. 5-14 (emphases added). This
element clearly defines a “group of blades” as a
subset of the total number of blades in the razor, and
specifically identifies which blades of the razor are
the “first, second, and third” blades of the subset.
The first blade in the group is the blade “nearest the
guard,” or leading blade. The third blade in the
group is the blade “nearest the cap,” or trailing blade.
The second blade is defined by its exposure, and
must “hav[e] an exposure not less than the exposure
of the first blade and not greater than the exposure of
the third blade.” Given that the first and third blades
must be the leading and trailing blades, respectively,
and in light of the specification's discussion of a
progressive blade exposure, the second blade must
also be located between the first and third blades. See
id. col. 1, I. 60-col. 2, I. 40 (discussing a progressive
blade exposure from a first blade to a second and
third blades). Thus, any blade in between the first
and third blades and with an exposure greater than
that of the first blade and less than that of the third
blade is a “second” blade in the claimed subset of
blades. The accused QUATTRO® device, in fact,
has two “second blades” because both of *1373 the
middle blades in the accused device meet the
definition of the “second blade” set forth in the claim.
Any subset of three blades in a blade unit meeting
these definitions is a “group of blades” as defined by
the clear language of the claim. This claim is not
ambiguous. In fact, the patentee underscored this
open-ended claim meaning by using both the openended
transition phrase “comprising” for all elements
of claim 1 as discussed above, and the open-ended
claim term “group of” for each part of this element.
The language of the claims depending from claim 1
also support reading “comprising” and “group of” as
open terms. Claim 2, which depends from claim 1,
adds the limitation that “the span between the first
blade edge and the guard is substantially smaller than
a span between the edges of the first and second
blades and the span between the edges of the second
and third blades.” Id. at col. 4, II. 17-20 (emphases
added). The patent drafter's use of “a span” between
the first and second blades recognizes that more than
one such span may exist. On the other hand, the
drafter's use of “the span” to identify the span
between the guard and first blade recognizes that
only one such span is possible. FN1
FN1. Dependent claims 9 and 10 use “the
span” and “the exposure,” respectively, to
refer to the span and exposure of the second
blade. '777 patent, col. 4, II. 41-45. This
definitive recitation of a single span and
exposure likely limits these dependent
claims to a single second blade, i.e., a threebladed
embodiment of the invention.
The terms “first, second, and third” are terms to
distinguish different elements of the claim, not terms
supplying a numerical limit. Thus, the “first,”
“second,” and “third” blades need not necessarily
appear in that order or necessarily limit the blade unit
to only three blades. Instead, these ordinal terms
designate different blades within the “unit” according
to their location and elevation. The claim itself
makes this distinction. The claim defines both the
“first” and “third” blades in terms of their location
relative to the guard and cap, respectively, and
further specifies their respective elevations. The
second blade is defined solely by its elevation and
location between the leading and trailing blades.
None of the blades in the “group” are defined by their
consecutive order relative to the other blades.
To make it abundantly clear that the reference to
“first,” “second,” and “third” blades was not a serial
or numerical limitation, the claim does not follow a
consecutive order (i.e., it does not discuss the second
blade after the first). The claim is thus clearly not
using the ordinals-first, second, third-to show a
consecutive numerical limit but only to distinguish or
identify the various members of the group. The case
law of this court supports this reading of the claim
language “first, second, and third.” See 3M
Innovative Props. Co. v. Avery Dennison Corp., 350
F.3d 1365, 1371 (Fed.Cir.2003) (“use of the terms
‘first’ and ‘second’ is common patent-law convention
to distinguish between repeated instances of an
element” and should not necessarily be interpreted to
impose a serial limitation on a claim).
The specification provides further support for
interpreting claim 1 to encompass razors with more
than three blades. The first sentence of the written
description of the invention teaches that “the
invention ... relates in particular to safety razors
having blade units with a plurality of blades. ” '777
patent, col. 1, II. 3-5 (emphasis added). This
reference defines the “invention” to encompass “a
plurality of blades,” thus eschewing any numerical
limit on the number of blades. The written
description buttresses this statement of the invention
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through its use of the same *1374 open-ended “group
of” language used in claim 1. Id. at col. 1, II. 37-40
(“Thus, in accordance with the present invention
there is provided a safety razor blade unit comprising
a guard, cap and a group of three blades ....”)
(emphasis added). The specification makes
numerous references to a preferred embodiment of
the invention with three blades, see, e.g., id. at col. 2,
II. 50-53 and col. 4, II. 2-3, but that narrower
embodiment does not impose a limit on the broader
claim language as elucidated by the reference to “the
invention” as embracing a “plurality of blades.” See
Comark Communications v. Harris Corp., 156 F.3d
1182, 1186 (Fed.Cir.1998) (refusing to import
limitations from the specification to the claims);
Sjolund v. Musland, 847 F.2d 1573, 1581
(Fed.Cir.1988) (same); Texas Instruments, Inc. v.
U.S. Int'l Trade Comm'n, 805 F.2d 1558, 1563
(Fed.Cir.1986) (“This court has cautioned against
limiting the claimed invention to preferred
embodiments or specific examples in the
specification.”).
The prosecution of patents related to the '777 patent
also supports reading claim 1 as an open claim. The
defendant itself endorsed an open interpretation of
“comprising” when it argued to the European Patent
Office (EPO) that a virtually identical claim in
Gillette's European counterpart to the '777 patent
would not exclude an arrangement with four or more
blades. This blatant admission by this same
defendant before the EPO clearly supports this court's
holding that those skilled in the art would construe
the claims of the '777 patent to encompass razors
with more than three blades.
[2] The district court adopted Energizer's argument
that the numerous (approximately thirty) references
to “three,” “third” and “tertiary” in the specification
limit the scope of the claims. Gillette, 2004 WL
3366162, at *5. However, “words or expressions of
manifest exclusion” or “explicit” disclaimers in the
specification are necessary to disavow claim scope.
Housey Pharms., Inc. v. Astrazeneca UK Ltd., 366
F.3d 1348, 1352 (Fed.Cir.2004); Liebel-Flarsheim v.
Medrad, Inc., 358 F.3d 898, 906 (Fed.Cir.2004).
Despite the numerous cites to three-bladed razors
plucked from the written description, no statement in
the patent surrenders or excludes a four-bladed razor.
Neither the district court nor Energizer refers to the
“manifest” or “explicit” exclusion test. This patent
and its prosecution record fall far short of any kind of
disclaimer or disavowal. Not only did the patentee
claim the invention with two open-ended terms
(“comprising” and “group of”), but the specification
expressly teaches that the invention encompasses a
“plurality of blades.” This court declines to import
limitations to the claims from the specification absent
a “manifest” or “explicit” exclusion. Id. The patentee
did not disclaim razors with more than three blades at
all, let alone “manifestly,” or “explicitly.” Rather
the patentee opened its teachings of the invention in
the specification with an express statement that the
“invention” covers “blade units with a plurality of
blades.” '777 patent, col. 1, II. 3-6. The applicant did
not “manifestly” or “explicitly” disclaim blade units
with a plurality of blades by expressly defining the
invention in those exact terms. More important, the
language of the claim itself, with its open transition
phrases and use of ordinals to distinguish but not
limit claim elements, shows that the invention
embraces “a plurality of blades.”
III
Based on the preliminary record before this court, the
district court erred in limiting the claims of the '777
patent to encompass safety razors with solely three
blades. Accordingly, this court vacates the district
court's denial of a preliminary injunction on the
grounds of Gillette's failure to show a likelihood of
success on the merits of its *1375 claim. However,
because the claim construction set forth in this
opinion is preliminary and based upon an incomplete
record, the district court will have every opportunity
to review and revisit this claim construction during
development of a full record. Indeed, this court
recognizes the difficulty imposed on a trial court to
construe claim terms based upon a preliminary
“likelihood” record. See, e.g., CVI/Beta Ventures,
Inc. v. Tura, LP, 112 F.3d 1146, 1160 n. 7
(Fed.Cir.1997) (reversing its own earlier “likelihood”
claim construction of terms that were appealed after a
complete record); Bayer AG. v. Biovail Corp., 279
F.3d 1340, 1349 (Fed.Cir.2002) (holding that it was
premature for this court to engage in its own claim
construction where the district court had not
performed a comprehensive claim construction based
on a complete record); Metaullics Sys. Co. v.
Cooper, 100 F.3d 938 (Fed.Cir.1996) (declining to
construe patent claims on appeal from a denial of a
preliminary injunction).
In light of the foregoing analysis, the decision of the
district court is vacated and remanded for further
proceedings consistent with this opinion, including
analysis of Energizer's invalidity defenses raised in
opposition to Gillette's motion for a preliminary
injunction.
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configuration. FN1
COSTS
Each party shall bear its own costs.
VACATED and REMANDED
ARCHER, Senior Circuit Judge, dissenting.
Because the majority exalts form over substance in
reaching its conclusion, specifically elevating
claiming conventions over the clear teachings of the
specification of U.S. Patent No. 6,212,777 (“the '777
patent”), I dissent.
I
In construing a claim, we first look to the words of
the claims, and these words are generally given their
ordinary and customary meaning. See Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed.Cir.1996). Our search for the proper meaning
of claim terms does not stop there, however, because
a patentee may choose to “use terms in a manner
other than their ordinary meaning.” Id. Such a
redefinition or limitation of a claim term need not be
explicit. “In other words, the specification may
define claim terms ‘by implication’ such that the
meaning may be ‘found in or ascertained by a reading
of the patent documents.’ ” Bell Atl. Network Servs.,
Inc. v. Covad Communications Group, Inc., 262 F.3d
1258, 1268 (Fed.Cir.2001) (quoting Vitronics, 90
F.3d at 1582); see Astrazeneca v. Mutual Pharm.
Co., Inc., 384 F.3d 1333, 1340 (Fed.Cir.2004)
(explaining that a patent applicant need not expressly
state “my invention does not include X” to indicate
his exclusion of X from the scope of his patent).
Thus, “the specification is always highly relevant to
the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning
of a disputed term.” Vitronics, 90 F.3d at 1582
(emphasis added). The majority eschews this
teaching in our case law, instead focusing primarily
on the ordinary and customary meaning of the claim
terms.
The construction of claim 1 of the '777 patent hinges
on how the terms “comprising” and “group of” are
construed. The majority follows claiming
conventions and ascribes an open meaning to these
terms. In doing this, the majority ignores the
overwhelming teaching of the specification that the
invention of the '777 patent is a razor limited to three
blades arranged in the described claim
FN1. The blade configuration refers to the
described progressive and variable blade
spans and blade exposures and the three
blades' location relative to each other.
*1376 Claim 1 reads “comprising a guard, a cap, and
a group of first, second, and third blades”; it does not
read “a group of blades comprising first, second, and
third blades.” In this claim, the transition term
“comprising” refers only to the total number of
elements in the complete razor, allowing for a razor
with additional elements besides the guard, the cap,
and the three blade unit. See Spectrum Int'l, Inc. v.
Sterilite Corp., 164 F.3d 1372, 1379 (Fed.Cir.1998);
Moleculon Research Corp. v. CBS. Inc., 793 F.2d
1261, 1271 (Fed.Cir.1986) (holding that a step which
recites engaging “eight cube pieces as a composite
cube” does not read on a step which engages more
than eight cube pieces, despite the use of the
transitional term “comprising”). For example, claim
1 could include a safety razor with an additional
guard or cap or some other element altogether.
Because the transition term “ ‘[c]omprising’ is not a
weasel word with which to abrogate claim
limitations,” Spectrum Int'l, 164 F.3d at 1379-80, or
to impermissibly expand a claim's scope, claim 1
should not be construed as permitting a group with
more than three blades simply because claim 1
contains the open transition term “comprising” in its
preamble when the entire specification points to the
invention as being only a three-bladed razor with
progressive blade exposure and span.
The dependent claims themselves demonstrate that
the blade unit of the invention contains only three
blades-including a single second blade. Specifically,
whenever the second blade is referred to individually,
it is referred to singularly (“the edge of the second
blade,” claim 6, ll. 2-3, claim 7, line 2; “the exposure
of the second blade,” claim 10, line 2). Similarly,
the dependent claims' use of the term “span”
(singular) whenever the distance between the first
and second blades and second and third blades is
mentioned evidences that there can only be a single
second blade: “a span between the edges of the first
and second blades,” claim 5, line 2 (emphasis added);
“a span between the edge of the third blade and the
edge of the second blade,” claim 6, ll. 2-3 (emphasis
added); “a span between the edge of the second
blade and the edge of the first blade,” claim 7, ll. 2-3
(emphasis added); “a span between the edges of the
first and second blades and between the edges of the
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second and third blades,” claim 8, ll. 2-3 (emphasis
added); and “the span between edges of the second
and third blades,” claim 9, line 2 (emphasis added).
A blade unit including more than one second blade
would contain “spans” (plural) between “the second
blade” and the first or third blade-one between the
first or third blade and the first second blade and one
between that same first or third blade and the second
blade. There simply could not be a single span
between a first or third blade and two second blades.
The majority states that the use of “a span” for
describing the distance between the edges of the first
and second blades and that between the edges of the
second and third blades suggests that there can be
more than one span for each. In other words, there
can be a first span between the edge of the first blade
and the edge of the first second blade and a second
span between the edge of the first blade and the edge
of the second second blade. Such an interpretation
of “a span” is not consistent with the remainder of the
claim language, however. Claims 5 and 8 state that
this span is “substantially equal to 1.5 mm.” In a
razor having two second blades as proposed by the
majority, the first and second blades would have to
be virtually in the same spot to satisfy this claim
language (a configuration the majority does not even
*1377 claim the specification supports), as the edge
of each second blade would have to be substantially
1.5 mm from the edge of the first blade. FN2 Thus,
there can only be a single span between the edge of
the first blade and the edge of the second blade and a
single span between the edge of the third blade and
the edge of the second blade. The majority's claim
construction effectively replaces “span” with
“spans”; this is not what is claimed.
FN2. The same analysis applies to the
distance between the edges of the third and
second blades as described in claim 8.
The specification similarly limits the invention to a
blade unit having only three blades. The written
description begins with an explanation of how twobladed
safety razors have dominated the wet shaving
industry. “Safety razors having blade units with two
blades have in recent years been sold in very large
numbers and are generally acknowledged to give a
better quality shave, especially in terms of closeness,
than single bladed razors.” '777 patent, col. 1, ll. 34-
37. The specification then explains that a blade unit
with more than two blades can provide a closer shave
but notes that such a multi-bladed razor is not
desirable for other reasons:
Closeness of a shave obtained is only one parameter
by which razor users judge the performance of a
razor. Adding extra blades can have a serious
detrimental influence on other blade unit
characteristics, most notably the drag forces
experienced when the blade unit is moved over the
skin, with the consequence that the overall
performance of the blade unit can be markedly
inferior despite a closer shave being obtainable.
Id. at col. 1, ll. 24-29. The specification then
discloses that the inventors have discovered a
particular blade geometry for a three-bladed razor so
as to overcome the traditional shortcomings of razors
having more than two blades. Specifically, the
inventors found that adding a third blade positioned
between the other two blades in a particular
configuration improved closeness while adding only
minimal drag:It has been found that with a blade unit
comprising three blades, the frictional drag forces can
be kept at an acceptable level while allowing an
improved shaving efficiency, by setting the blades
relative to each other and to guard and cap surfaces
positioned in front of and behind the blade edges,
according to a particular geometrical disposition.
Id. at col. 1, ll. 32-37. As such, with the exception of
the three-bladed razor having the claimed geometry,
the specification actually discourages, or teaches
away from, razors that have more than two blades.
In this regard, the specification expressly cautions
that “[a]dding extra blades [more than two] can have
a serious detrimental influence on ... blade unit
characteristics.” Id. at col. 1, ll. 25-27. The general
summary or description of the invention thus
describes a three-bladed razor with a certain blade
configuration and criticizes other blade units having
more than two blades.
We have construed claims to be limited to one type
of device where the written description has
emphasized features of that device and criticized
other similar devices. See Astrazeneca, 384 F.3d at
1340 (citing SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1340-45
(Fed.Cir.2001) (construing claims to be limited to
catheters with coaxial lumens where written
description emphasized coaxial lumens as a feature of
the invention and criticized catheters using other
types of lumens)). Here, the inventors expressly
state that using more than two blades in a safety razor
is problematic. '777 patent, col. 1, ll. 24-31. They
then *1378 explain that these problems are overcome
by a three-bladed razor having blades arranged with
progressive blade spans and blade exposures. Id. at
col. 1, ll. 32-37. This discussion, which expressly
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emphasizes certain features of the invention (a threeblade
unit with the blades arranged in the described
geometry) and impliedly criticizes other similar
devices (blade units having more than two blades not
having the same features), suggests the claims should
be narrowly construed.
In my view, therefore, the term “comprising” should
not be read as encompassing a blade unit having
more than three blades. This is made clear by the
claims themselves and by the written description as
described below. The traditional open claiming term
“comprising” thus applies to the limitations of the
razor as a whole, that is, the cap, the guard, and the
blade unit and permits other elements included in the
razor. However, it does not permit the expansion of
the number of blades in the blade unit itself.
Turning to the term “group of,” the written
description makes clear that this term is not used as
an open claiming term as Gillette argues. The term
“group of” occurs only once in the written
description when the patentee is describing the
invention as a whole in the background section of the
patent. The group is specifically described as three
blades:
Thus, in accordance with the present invention there
is provided a safety razor blade unit comprising a
guard, a cap and a group of three blades with parallel
sharpened edges located between the guard and cap,
the first blade defining the edge nearest the guard
having an exposure not greater than zero, and the
third blade defining the blade nearest the cap having
an exposure not less than zero.
'777 patent, col. 1, ll. 37-44 (emphasis added).
While not referring again to the “group of” blades,
the patentee consistently and frequently refers to his
invention as a three-bladed safety razor. FN3 For
example, when the written description speaks of the
“blade unit” of the invention, FN4 the only type of
blade unit identified is one having three blades:
“blade unit comprising ... a group of three blades,”
'777 patent, col. 1, ll. 39-40; “three-bladed blade
unit,” id. at col. 1, line 54; “three bladed safety razor
blade unit,” id. at col. 2, line 50; and “three blades
set in the blade unit,” id. at col. 3, ll. 17-18. When
explaining the basic structure of the invention, the
specification discloses “the novel aspects of the
present invention resid[e] in the provision of three
blades set in the blade unit set in particular
dispositions with respect to each other and the guard
and cap.” (Id. at col. 3, ll. 16-19) (emphasis added).
By stating that the unit (group) of three blades
(disposed in the described manner) confers novelty to
the invention disclosed in the '777 patent, the
patentee clearly shows that he regards the invention
to be a safety razor with a blade unit having exactly
three *1379 blades with progressive exposure and
span.
FN3. It was represented to the district court,
and noted in its opinion, that the word
“three,” “third,” or “tertiary” is used in thirty
different places in the mere three-columnlong
specification of the '777 patent.
Gillette, No. 03-11514-PBS, 2004 WL
3366162, at *5. Additionally, nowhere in
the specification is the possibility of a fourbladed
razor even suggested. This supports
a finding that the claims should be
interpreted as limited to razors having only
three blades. See Microsoft Corp. v. Multi-
Tech Sys., Inc., 357 F.3d 1340, 1348
(Fed.Cir.2004) (noting that the specification
referred to transmitting data over a phone
line roughly two dozen times and never
suggested transmitting data through the use
of a packet switched network).
FN4. The patentee uses the term “blade
unit” to describe the carrier of the blades of
the invention. See '777 patent, col. 2, ll. 63-
64 and representation thereof in Figs. 1 and
2.
The majority contends that a three-bladed razor is
merely a preferred embodiment of the invention of
the '777 patent, as opposed to the invention.
However, the specification is replete with instances
where the patentee described the invention as a razor
having three blades with the described blade
geometry. To this end, the specification states
“[w]ith a three-bladed safety razor blade unit having
the blades disposed as specified herein we have
found an enhanced overall shaving performance in
comparison to a two-bladed razor,” (id. at col. 2, ll.
50-53) (emphasis added) (located immediately prior
to the patentee's statement that “some specific
embodiments of the invention are described below”);
“it is ensured that an enhanced shaving efficiency is
secured due to there being three sharpened blades,”
(id. at col. 4, ll. 2-3) (emphasis added) (the final
sentence of the written description which explains
that “[w]ith the embodiments of the invention” this
result is reached); “in accordance with the present
invention there is provided a safety razor blade unit
comprising a guard, a cap and a group of three
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blades,” id. at col. 1, ll. 37-40 (emphasis added)
(located in the background section of the patent).
These statements are directed to the invention as a
whole and suggest that three blades is a part of the
invention, not merely a preferred embodiment. We
have held that a claim term was properly construed in
accordance with a limitation that was “repeatedly and
consistently” described in the specification where
“[t]hose statements, some of which [were] found in
the ‘Summary of the Invention’ portion of the
specification, [were] not limited to describing a
preferred embodiment, but more broadly describe the
overall inventions of [the] patent[ ].” Microsoft Corp.
v. Multi-Tech Sys., Inc., 357 F.3d at 1346-48 (stating
“the claims must be interpreted in light of the
specification ... which repeatedly and consistently
describes the local and remote systems of the claimed
inventions as communicating directly over a
telephone line” and holding that communications
were restricted to being over a telephone line and
excluded the use of a packet-switched network).
Such is the case here.
That a three-bladed razor is not merely a preferred
embodiment of the invention of the '777 patent is
further evidenced by the fact that the specification
addresses only changes in the blade exposure and
blade span, not the number of blades. Specifically,
the '777 patent states:
A steadily increasing blade exposure has been found
most effective. Therefore, the value of the exposure
of the secondary blade is ideally approximately half
way between the exposure values for the primary and
tertiary blades, and very satisfactory test results have
been obtained with all three blade edges lying in a
common plane. In most embodiments a secondary
blade exposure substantially equal to zero will be
very satisfactory. We recommend that the tertiary
blade exposure be a positive value equal in
magnitude to the negative exposure of the primary
blade.
. . . . .
The span S1 of the primary blade 11 is from 0.5 to
1.5 mm and is preferably substantially equal to 0.70
mm. The span S2 of the secondary blade 12 and the
span S3 of the tertiary blade 13 have the values in the
range of 1.0 to 2.0 mm. They are shown [in FIG. 1]
equal with a value substantially equal to 1.50 mm.
The edge of the tertiary blade is at a distance S4
substantially equal to 1.80 mm in front of the cap.
Id. at col. 2, ll. 30-40, col. 3, ll. 25-32. (emphases
added). Likewise, when describing “the preferred
embodiment of the invention,” id. at col. 2, ll. 61-62,
the specification describes the blade exposures of
*1380 the primary and tertiary blades as being the
variant factor, FN5 with the exposure of the primary
blade being -0.04 mm and the exposure of the tertiary
blade being +0.06 mm:
FN5. In this embodiment the blade spans
may also vary-i.e., within the same range as
that describing the embodiment shown in
FIG. 1 (“The spans S1, S2, S3, and S4 are
the same as those mentioned above for FIG.
1”). Id. at col. 3, ll. 43-44.
A more favourable blade arrangement is shown in
FIG. 2. The spans S1, S2, S3 and S4 are the same as
those mentioned above for FIG. 1. The primary blade
in this embodiment has an exposure of -0.04 mm, the
exposure of the secondary blade 12 is zero, the edges
of all three blades lying in a common plane P as in
FIG. 1, and the exposure of the tertiary blade 13 is
+0.06 mm. Thus, there is a progressive increase in
blade exposure from the leading blade 11 to the
trailing blade 13.
Id. at col. 3, ll. 41-50 (emphases added). The
consistent factor throughout these passages and the
patent's drawings is the presence of three blades
arranged with progressive blade exposures and blade
spans. It is the value of the blade exposure and span
that the inventors intended could vary, not number of
blades in the configuration. Thus, a three-bladed
razor is not merely a preferred embodiment of the
invention; rather, it is the invention. Indeed,
nowhere in the specification is the blade unit of the
invention expressly described as having multiple
blades in excess of three.
The majority discusses at length that the claim terms
“first,” “second,” and “third” do not import a
sequential or finite meaning, thus allowing for two
“second” blades positioned between the first and
third blades, with the blades arranged having the
described blade exposures and blade spans. Such a
premise, however, assumes that a razor with four
blades arranged with one blade configured as the
claimed “first blade,” one blade configured as the
claimed “third” blade, and the remaining two blades
configured as the claimed “second” blade would
achieve the same desirable results as a razor with
only three blades (i.e., one “second blade”) arranged
in the described geometry. Contrary to the
majority's implication, FN6 there is absolutely no
support in the specification for this assumption.
Further, the inclusion of more than three blades is in
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direct conflict with the specification's repeated and
consistent reference to the invention as containing
three blades, e.g., “the three-bladed unit of the
invention,” “a three-bladed safety razor blade unit,”
“three blades,” and “three sharpened blades.” FN7
Finally, the text of the claim itself and the
specification suggest only one second blade (i.e.,
“said second blade,” id. col. 4, line 11 (emphasis
added), “the secondary blade,” col. 3, lines 28, 46
(emphases added)). By using “the” and the singular
form of “blade,” the patentee showed his invention
possessed only one second blade positioned between
the blade closest to the cap and the blade closest to
the guard. The patentee did not state “secondary
blades,” which would be the situation if the invention
included two secondary blades. Further, in the
introductory section of the patent, when the patentee
is defining “blade exposure,” he explains how to
measure it in terms of “the three-bladed unit of the
invention ...,” id. at col. 1, l. 54 (emphasis added). FN8
The specification's prevalent references*1381 to a
three-bladed razor and the claim's use of the singular
“blade” show that there can only be one “first” blade,
one “second” blade, and one “third” blade. Any
other reading of the claim terms “first,” “second,”
and “third” is counter to the very nature of the
invention described and claimed in the '777 patent. FN9
FN6. See majority op. at 1371.
FN7. Indeed, given the majority's claim
construction, which would allow for a
second second blade, the district court on
remand will now have to determine validity
issues including that under 35 U.S.C. § 112
1.
FN8. See also supra at 1378 (quoting the
'777 patent at col. 2, ll. 50-53 and col. 4, ll.
2-3).
FN9. The majority is correct that the use of
the terms “first,” “second,” and “third” in a
claim does not necessarily impart a
sequential meaning to the items being
claimed. However, here the balance of the
language in claim 1 clearly demonstrates
that the inventor intended a sequential
relationship by saying that the second blade
is located between the first and third blades.
'777 patent, col. 4, ll. 7-11 (“[T]he first
blade defining a blade edge nearest the
guard ... and the third blade defining a blade
edge nearest the cap.”).
In sum, the patent specification 1) repeatedly and
consistently teaches that the safety razor of the
invention is one having three blades; 2) teaches
preferred embodiments which vary the configuration
of the blades but in no way changes the number of
blades of the invention; and 3) discourages the use of
more than two blades in a blade unit except for the
three-bladed blade unit having the claimed geometry.
I believe these teachings together clearly demonstrate
that the inventors did not regard a blade unit with
four blades arranged in the described geometry as
their invention. Therefore, “comprising” and “group
of” should not be construed to include a safety razor
having more than three blades.
The only support in the specification for the
majority's position that “comprising” and “group of”
should be given their conventional meaning is the
following sentence: “This invention is concerned
with safety razors, and relates in particular to safety
razors having blade units with a plurality of blades
defining parallel sharpened edges arranged to pass in
turn over a skin surface being shaved.” Id. at col. 1,
ll. 3-6 (emphasis added). This single, broad
statement, not repeated or endorsed elsewhere in the
patent's written description, cannot be read to expand
the invention beyond what is explicitly described
throughout the specification. In particular, it cannot
rewrite the statements that the novelty of the
invention “resid[es] in the provision of three blades
set in the blade unit,” id. at col. 3, ll. 16-18, and that
the goal of “an enhanced shaving efficiency is
secured due to there being three sharpened blades,”
id. at col. 4, ll. 2-3. The majority relies on this one
instance of the use of the word “plurality” and
conveniently ignores the repeated statements in the
specification that the blade unit is composed of three
blades. FN10
FN10. Additionally, the fact that the terms
“several blades,” “many blades,” and “extra
blades” occur in the specification is
irrelevant to the claim construction at issue
here. These phrases are contained in a
discussion of longstanding problems
associated with multiple blades. As noted
above, the specification states that the use of
multiple blades has historically been
problematic. The solution proposed in the
'777 patent is the three-bladed blade unit of
the invention with its three blades set in the
blade unit in particular dispositions with
respect to each other and the guard and the
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

405 F.3d 1367 Page 12
405 F.3d 1367, 74 U.S.P.Q.2d 1586
(Cite as: 405 F.3d 1367)
cap.
Finally, the majority's claim construction ignores the
notice function of the specification. As the Supreme
Court stated almost two hundred years ago, an
object of the specification is, to put the public in
possession of what the party claims as his own
invention, so as to ascertain if he claim[s] any thing
that is in common use, or is already known, and to
guard against prejudice or injury from the use of an
invention which the party may otherwise innocently
suppose not to be patented. It is, therefore, for the
purpose of warning an innocent purchaser or other
person using a machine, of his infringement of the
patent; *1382 and at the same time of taking from
the inventor the means of practising upon the
credulity or the fears of other persons, by pretending
that his invention is more than what it really is, or
different from its ostensible objects, that the patentee
is required to distinguish his invention in his
specification.
Evans v. Eaton, 20 U.S. (7 Wheat.) 356, 434, 5 L.Ed.
472 (1822) (emphases added). Anyone reading the
'777 patent would be left with the indelible
impression that the patentee had invented a threebladed,
and only three-bladed, safety razor with
blades having the described variable blade span and
blade exposure. Only with a crystal ball could a
competitor in the safety-razor industry have
concluded that the '777 patent could cover a fourbladed
razor.
II.
Certainly, claiming conventions demonstrate that
claim terms such as “comprising” and “group of” are
traditionally viewed as open claim terms. However,
here, the specification makes abundantly clear that
the invention of the '777 patent was a razor having
three blades, no more, arranged in the described
geometry. For this reason, I would affirm the district
court's claim construction and its denial of Gillette's
motion for a preliminary injunction.
C.A.Fed. (Mass.),2005.
Gillette Co. v. Energizer Holdings, Inc.
405 F.3d 1367, 74 U.S.P.Q.2d 1586
Briefs and Other Related Documents (Back to top)
• 04-1220 (Docket) (Feb. 9, 2004)
END OF DOCUMENT
© 2006 Thomson/West. No Claim to Orig. U.S. Govt. Works.

John E. Nathan
Partner—Litigation Department, New York Office
1285 Avenue of the Americas, New York, NY 10019-6064
telephone 212.373.3156, facsimile 212.492.0156, email jnathan@paulweiss.com
A partner in the Litigation Department and co-chair of the Intellectual Property
Litigation Practice Group, John E. Nathan concentrates his practice on patent and
trademark litigation. He is registered to practice before the U.S. Patent and Trademark
Office.
Mr. Nathan has been lead counsel in numerous patent and trademark cases for clients
such as Gillette (whom he has represented for 35 years); Gillette’s subsidiaries
Duracell, Braun and Oral-B; Time Warner; HBO and Johnson & Johnson. Many of his
cases have involved jury trials.
Cases representative of Mr. Nathan's practice include the following:
Consumer Product Patent Cases
• Shaving Products: Gillette v. Energizer Holdings (Schick), 405 F.3d 1367
(2005) (infringement decision for Gillette; Gillette's patented "group" of three
blades covers cartridges with four or five blades); counterpart litigations in the
European Patent Office and Germany; Schick v. Gillette, No. 03:04-cv-00260
(D. Conn.); Gillette v. Schick, No. 03 Civ. 12455 (D. Mass.); Gillette
v. Sharper Image, No. 04-10898 (D. Mass.); Syndia v. Gillette, No. 01 C 2485
(N.D. Ill. 2002) (jury trial); Tseng (Gillette) v. Doroodian (Arthur D. Little
Enterprises), Interference No. 104,482 (2001); Wafer Shave v. Gillette, 857
F.Supp. 112 (D. Mass. 1993), affirmed per curiam 26 F.3d 140 (Fed. Cir.
1994) (summary judgment for Gillette on its laches and estoppel
defenses); Arthur D. Little Enterprises and Doroodian v. Gillette, No. 99-399
(D. Del.); Gillette v. American Safety Razor Company, No. 99-11063 (D.
Mass.); Gillette v. American Safety Razor Company, No. 95-10680 (D.
Mass.); Sharper Image v. Gillette, No. 98-4112 (N.D. Cal.); Gillette
v. Warner-Lambert (Schick), No. 87-1567 (D. Mass.); S.C. Johnson
v. Gillette, Nos. 83-2657 and 3201 (D. Mass); BIC v. Gillette, No. 76-375 (D.
Del.); Gillette v. Williams, 360 F. Supp. 1171 (D. Conn. 1973)
• Mascara Products: L’Oreal v. Estee Lauder, No. 04-1660 (D.N.J.) (pending)
• Erasable Ink Pens: Scripto-Tokai v. Gillette, 788 F.Supp. 439 (C.D. Cal.
1992), 1994-2 Trade Cases 70,821 (C.D. Cal. 1994) (jury trial)
• Toothbrushes, Other Dental Products, Hair Dryers, Appliances,
Antiperspirants: numerous cases for Gillette, Braun and Oral-B,
including Philips v. Gillette, No. 04-859 (D. Del.); Dr. Key v. Oral-B, No.
2:00-cv-288 (E.D. Tex.); Gillette v. FTS & Dawia, No. 02 CV 4176
(S.D.N.Y.) and No. 01-7167 (S.D. Fla.); Gillette v. Tella-Tech, No. 02-20946

John E. Nathan
(S.D. Fla.); Gillette v. Conair, No. 01-11190 (D. Mass.); Braun v. Salton, No.
99 CV 11341 (D. Mass.); Braun v. Conair, No. 95-12273 (D. Mass.); Braun
v. Helen of Troy, No. 96-11469 (D. Mass.); Braun v. Remington, No. 96-
10080 (D. Mass.); Gillette v. Westwood Chemical, No. 96-10670 (D.
Mass.); Braun v. Dr. Robinson, No. 96-12454 (D. Mass.); Gillette
v. Thornton, No. 393 CV 01464 (D. Conn.)
• Golf Shoe Cleats: numerous cases for Softspikes, including favorable
decision of U.S. Patent and Trademark Office Board of Patent Appeals and
Interferences resulting in allowance of basic patent on "spikeless" golf cleats
(2001)
• Feminine Products and Pregnancy Test Kits: numerous cases for Tambrands
and Tampax
• Non-Woven Fabrics: Du Pont v. Bloch, No. 77 Civ. 4866 (S.D.N.Y.)
(represented Du Pont)
Medical Device Patent Cases
• Surgical Stapling: U.S. Surgical Corp. v. Hospital Products International &
Alan Blackman, 701 F.Supp. 314 (D. Conn. 1988) (judgment for client USSC
holding all four USSC patents in suit valid and infringed); counterpart
litigations in Australia, Canada, U.K., France and Germany.
• Hip Prostheses: Noiles v. Church, Interference No. 102,732 (1996) (priority
of invention awarded to clients Noiles and Johnson & Johnson); Joint Medical
Products v. DePuy, No. 3:95CV00576 (D. Conn.)
• Knee Prostheses: Joint Medical Products v. Waldemar Link, No. 591CV778
(D. Conn.); counterpart litigations in Germany.
• Laser Cornea Shaping: Trokel v. L’Esperance, Interference No. 102,026
Electrical Patent Cases
• Hearing Aid Batteries: Rayovac v. Duracell and Gillette, No. 99-C-0272-C
(W.D. Wis. 2000) (jury verdict and judgment of patent invalidity for Duracell
and Gillette holding all three Rayovac patents in suit invalid)
• Alkaline Batteries: Eveready v. Duracell and Gillette, No. 1:00CV0475
(N.D. Ohio)
2

John E. Nathan
• Compact Discs: Thomson v. Time Warner, No. 94-83 (D. Del); Justice
Records v. Warner Bros. Records, No. H 96-2069 (S.D. Tex.); Optical
Recording v. Time Warner, No. 90-314 (D. Del); numerous CD and DVD
licensing matters for Time Warner, Warner Music and Warner Home Video.
• Audio Tape Cassette Technology: Duplitronics v. Time Warner, No. 1:93-
cv-04652 (N.D. Ill.)
• Color Correction Equipment: Corporate Communications Consultants
v. HBO, No. 84 Civ. 4178 (S.D.N.Y.)
• Word Processing: IBM v. Xerox, No. CA3-78-0210-G (N.D. Tex.); Bernier
v. DeGeorge, Interference No. 99,564 (represented IBM in both cases)
• Programmable Logic Controller System: Solaia Technology v. Gillette, No.
02 C 4704 (N.D. Ill.)
• Voltage Regulators: Superior Electric v. Raytheon, 306 F. Supp. 960
(D.N.H. 1972)
• Computers: Bunker Ramo v. IBM, No. 74 C 580 (N.D. Ill.) (represented
IBM)
• Stepping Motors: Superior Electric v. Sigma, No. 71 B-310 (D. Conn.);
counterpart litigation in Germany
• TV tuners: Sarkes Tarzian v. Mitsumi Electric and General Electric, No. 75-
504-N (E.D. Va.) and No. 75-1981 (D.N.J.) (represented Mitsumi and GE)
• Modems: Milgo v. Western Electric, No. 76-15-C2 (D. Kan.) (represented
Western Electric)
Chemical Cases
• Red 40 Food Color: Warner-Jenkinson v. Allied Chemical, 567 F. 2d 184 (2
Cir. 1977) (dec ision on declaratory relief); 477 F. Supp. 371 (S.D.N.Y. 1979),
affirmed 633 F. 2d 208 (2 Cir. 1980) (trial and appeal sustaining client Allied
Chemical’s patent)
• Catalytic Cracking: Mobil v. W.R. Grace, 367 F. Supp. 207 (D. Conn. 1973);
other related cases
3

John E. Nathan
Pharmaceutical Cases
• Tetracycline: numerous cases for Bristol-Myers
• Semi-Synthetic Penicillin (Ampicillin): Beecham v. Zenith Laboratories,
No. 526-69 (D.N.J.) (represented Beecham)
• Vitamin B12: Merck v. Chase, 273 F. Supp. 68 (D.N.J. 1967)
Paper Machinery Patent Cases
• Corrugated Paper Machinery: Marquip v. Fosber America and United
Container Machinery, 198 F.3d 1363 (Fed. Cir. 1999) (summary judgment of
non-infringement for client United Container); Mitsubishi Heavy Industries
v. United Container Machinery, No. 97-C-780-C (W.D. Wis.)
• Paper Stock Washers: Sulzer v. Black Clawson, No. 93 Civ. 8721
(S.D.N.Y.) (represented Black Clawson)
Trademark Cases
• Home Box Office v. Showtime/The Movie Channel, 832 F.2d 1311 (2 Cir.
1987) (HBO’s trademark rights upheld; disclaimers used by Showtime ruled
insufficient)
• Brune v. HBO, No. 02 Civ 5703 (S.D.N.Y.) (trial resulted in hung jury; case
subsequently settled)
• Shields Pictures v. Time4 Media, TTAB opposition proceedings on "Popular
Science"
• MasterCard International v. HBO, No. 99-4296 (S.D.N.Y.)
• The Comedy Channel v. Home Box Office, No. 89-3095 (C.D. Cal.)
• Duck Walk Vineyards, Inc. v. St. Helena Wine Co., Inc. d/b/a Duckhorn
Vineyards, No. CV-01-4896 (E.D.N.Y.) (trademark infringement litigation
involving the use of a duck image and the word "Duck" on wine labels)
• Mermaid Seafoods v. Chicken of the Sea, No. 396-cv-02362 (D. Conn. 2000)
(all trademark infringement claims against client Mermaid Seafoods dismissed
with prejudice)
4

John E. Nathan
• Numerous trademark cases for Tambrands and Tampax, both in the U.S. and
Germany
Mr. Nathan is a member of bar associations that focus on patent and trademark
litigation, including the Federal Circuit Bar Association, the New York Intellectual
Property Law Association and the American Intellectual Property Law Association.
He is also a member of the American Bar Association, The Association of the Bar of
the City of New York and Federal Bar Council. He is listed in Euromoney Guide to
the World’s Leading Patent Law Experts and Euromoney Guide to the World’s
Leading Trademark Law Practitioners. He has lectured on patent law at the Columbia
Graduate School of Business Administration (1996-1999) and the Columbia
Department of Mechanical Engineering (1996-2002). He is a member of the Board of
Advisors of The National Gallery for America’s Young Inventors.
Mr. Nathan graduated from Yale Law School, where he was 18th in a class of 192. He
was a member of the Yale Law Journal and was elected to the Order of the Coif. He is
the author of "Novelty and Reduction to Practice: Patent Confusion," 75 Yale L.J.
1194 (1966), which was awarded the 1966 prize of New York Patent Law
Association.
He holds a B.E. with High Honors in Mechanical Engineering (with a concentration in
Electro-Mechanical Systems) from Yale University and was elected to Tau Beta Pi.
5

Catherine Nyarady
Partner—Litigation Department, New York Office
1285 Avenue of the Americas, New York, NY 10019-6064
telephone 212.373.3532, facsimile 212.492.0532, email cnyarady@paulweiss.com
A partner in the Litigation Department, Catherine Nyarady specializes in patent and
trademark litigation and is registered to practice in the United States Patent and
Trademark Office. She has represented major corporate clients in patent litigations
involving chemical catalysts, internet information storage and retrieval systems,
consumer products, paper fabricating machinery, fiber optics technology, bar code and
machine vision technology, semiconductor technology and medical devices.
Representative Patent and Other Technology Cases
• Citron Electronics Co. v. Toshiba Corp., No. 05CV10626 (S.D.N.Y.);
(pending case involving DVD patent license agreement and subject patents)
• L'Oreal v. Estee Lauder, No. 04-1660 (D.N.J.); (pending patent case on
cosmetic products)
• Gillette v. Schick, No. 03-11415 (D. Mass); (infringement decision for client
Gillette; Gillette’s patented “group” of three blades covers cartridges with four
or five blades)
• Gillette v. Schick, No. 03-12455 (D. Mass); (patent case on female shaving
products)
• Schick v. Gillette, No. 304CV00260 (D. Conn.); (patent case on shaving
products)
• Arthur D. Little Enterprises and Doroodian v. Gillette, No. 99-11063 (D.
Del.); (patent case on shaving products)
• Plasma Physics Corp. v. Fujitsu et al., e.g., No. 99-8593; 00-2199; 02-3463,
3473, 3475, 3484 (E.D.N.Y.); (multi-defendant litigations involving plasma
enhanced chemical vapor deposition (PECVD) technology used to
manufacture semiconductor chips and flat panel displays)
• Symbol Technologies, Inc. et. al. v. Lemelson Medical, Education and
Research Foundation, Ltd. Partnership, No. CV-S-01-701, -702, -703 (D.
Nev.); (patent infringement litigation involving bar code and machine vision
technology; judgment for client Symbol Technologies)
• Photonetics, Inc. et al. v. New Focus, Inc., No. 01-493-SLR (D. Del.); (patent
infringement litigation involving fiber optics technology)
• NCR Corp. v. Netscape Communications Corp., No. 99-621-RRM (D. Del.);
(patent infringement litigation involving internet method and information
storage systems)

Catherine Nyarady
• Rayovac Corp. v. Duracell, Inc. and The Gillette Co., No. 99-C-0272-C
(W.D. Wis. 2000); (patent infringement litigation involving hearing aid
batteries; jury verdict and judgment of patent invalidity for clients Duracell
and Gillette holding all three Rayovac patents in suit invalid)
• Marquip, Inc. v. Fosber America, Inc. et al., 198 F.3d 1363 (Fed. Cir. 1999);
(patent infringement litigation involving corrugated cardboard downstackers;
summary judgment of non-infringement for client United Container)
• Compaq Computer Corp. v. eMachines, Inc. et al., No. H-99-2380 (S.D.
Tex.); (patent infringement case involving computer technology)
• Exxon v. Dow, No. M098CA107 (W.D. Tex.); (patent infringement litigation
involving chemical catalysts)
• Sumitomo Electric Lightwave Corp. v. Siecor Corp. et al., No. 1:96 CV 00944
(M.D.N.C.); (patent litigation involving fiber optics technology)
• Joint Medical Products Corp. v. DePuy, Inc. et al, No. 3:95CV00576 (D.
Conn.) ; (patent litigation involving hip replacement technology)
• BCP v. Engelhard, No. 95 Civ. 9219 (S.D.N.Y.); (patent infringement and
trade secret theft litigation regarding air pollution technology)
Representative Trademark Cases
• Shields Pictures v. Time4 Media, Opposition Nos. 91160254, 91160270,
91160271 (TTAB); (defended trademark opposition proceedings involving the
Popular Science mark; oppositions withdrawn with prejudice following
discovery)
• Comedy Partners v. RTV Media Inc., No. 04 CV 00518 (S.D.N.Y.);
(trademark infringement litigation involving television network name)
• Brune v. Time Warner Entertainment Company, L.P. No. 02 Civ 5703
(S.D.N.Y.); (defense of trademark infringement litigation; trial resulted in
hung jury; case subsequently settled)
• Duck Walk Vineyards, Inc. v. St. Helena Wine Co., Inc. d/b/a Duckhorn
Vineyards, No. CV-01-4896 (E.D.N.Y); (trademark infringement litigation
involving the use of a duck image and the word "Duck" on wine labels)
• Mermaid Seafoods, Inc. v. Van Camp Seafoods Company, Inc., No. 396-cv-
02362 (D. Conn. 2000); (trademark infringement case involving use of
mermaid on seafood products; all trademark infringement claims against client
2

Catherine Nyarady
Mermaid Seafoods dismissed with prejudice following settlement during
bench trial)
Ms. Nyarady received her B.S. in Chemical Engineering from the Massachusetts
Institute of Technology in 1993 where she was a T.J. Watson Scholar. She received
her J.D. in 1996 from Cornell Law School where she was an editor of the Cornell
Journal of Law and Public Policy and Chancellor of the Moot Court Board.
Ms. Nyarady is a member of the Bar of New York, the United States District Courts
for the Southern District and Eastern District of New York, the United States Courts
of Appeals for the Second Circuit and Federal Circuit, and the United States Supreme
Court. She is also a member of the Practising Law Institute's Patent Law Advisory
Committee, the American Intellectual Property Law Association and The New York
Intellectual Property Law Association.
3