Directed verdict of non-infringement of several patents was appropriate where: 1) patentee failed to demonstrate element-by-element equivalence for the patents asserted under DOE infringement, and 2) patentee had put forth no evidence of any instance of direct infringement of the patent asserted under induced infringement.
Post-trial, the district court granted the accused infringer’s JMOL motion of non-infringement on all three asserted patents. For the first two, the court concluded that the patentee had failed to present substantial evidence of infringement under the doctrine of equivalents for claims of two of the asserted patents. For the third, the district court’s non-infringement decision was based upon the patentee’s failure to present evidence that any party performed all of the steps of the claimed methods. The Federal Circuit affirmed the district court’s rulings.
First, the Federal Circuit agreed that, although expert testimony was presented that the accused embodiment as a whole was the equivalent of the claimed invention, the patentee failed to put forth evidence that an equivalent of each claim element in the first two patents was present in the accused product. Since infringement under the doctrine of equivalents requires an element-by-element analysis, the court held that JMOL of non-infringement was proper. This conclusion was further justified by the rule that DOE infringement cannot read out a limitation of the asserted claim.
Second, the Federal Circuit agreed that the patentee had failed to set forth evidence that either the accused infringer or its customers actually performed all the steps of the asserted claims in the third patent. Although the court recognized that circumstantial evidence can justify a finding of infringement, the majority opinion agreed with the district court that merely showing that the accused embodiment was capable of performing the claimed method was insufficient to support a finding of direct infringement. Similarly, where patentee was unable to demonstrate a single customer who performed the claimed method, and thus was unable to demonstrate a single customer who directly infringed the asserted claims, there was a lack of substantial evidence on which a jury could find inducement of infringement.
J. Prost dissented in part with the court’s holding on induced infringement, stating that the record indicated that the claimed method not only could have been performed by a customer using the accused product, but that the evidence was sufficient for a jury to reasonably find that at least one customer more likely than not infringed the asserted claim.
A copy of the opinion can be found here.