No. 2011-1204 (Fed. Cir. June 11, 2012)
The existence of substantial non-infringing uses precludes a finding of contributory infringement but not induced infringement, and the plain meaning of claim terms governs their construction.
Patentee of optical disc-writing technology alleged infringement by manufacturers and sellers of recordable blank DVDs. The district court granted summary judgment of non-infringement on both patents at issue. With respect to the first patent, the court held that patentee’s two theories of indirect infringement—contributory and induced infringement—failed in light of alleged infringers’ evidence of substantial, non-infringing uses. With respect to the second patent, the district court granted summary judgment after narrowly construing the claim at issue.
The Federal Circuit, in a majority consisting of Judges Schall and Moore, affirmed the district court’s grant of summary judgment as to contributory infringement of the first patent but vacated the other aspects of its ruling. Summary judgment on the issue of contributory infringement was appropriate because patentee did not present evidence that alleged infringers’ uses of unfinalized DVDs were insubstantial. The lack of evidence on insubstantial uses did not preclude a finding of induced infringement, however. Moreover, patentee’s evidence that alleged infringers designed recordable DVDs for use in an infringing way, and instructed users to use the DVDs in an infringing way, was enough to preclude summary judgment because a reasonable jury could conclude from the evidence that one person somewhere in the United States had more likely used the DVDs in an infringing manner.
The Federal Circuit also vacated the district court’s claim construction and grant of summary judgment on the second patent because the district court improperly read a limitation from one of the patent’s specifications into the broadly worded first claim. The plain meaning of a claim term controls unless the patentee sets forth a definition and acts as his own lexicographer, or disavows the full scope of a claim term either in the specification or during prosecution. Neither of those conditions were present in this case.
Judge Dyk in dissent, rejected the majority’s construction of the claim in the second patent. He also rejected the parties’ and district court’s constructions, arguing that the specifications and prosecution history supported a construction of its own design. Under this construction, he argued that summary judgment of non-infringement was appropriate.
A copy of the opinion can be found here.