Objective reasonableness of non-infringement defense does not preclude indirect infringement
Unwired Planet, LLC v. Apple Inc., No. 2015-1752 (Fed. Cir. July 22, 2016)
The patentee appealed a district court decision granting summary judgment of non-infringement—including for indirect infringement of method claims. The Federal Circuit affirmed in part and vacated in part.
Although the district court denied summary judgment of no direct infringement, it “reasoned that [the accused’s] non-infringement argument … is strong enough that no reasonable juror could conclude that [it] acted with actual knowledge that it was inducing or contributing to infringement.”
In so holding, “[t]he district court erred by basing summary judgment on its own estimation of the objective strength of [the defendant’s] non-infringement defense.” “The Supreme Court’s Global-Tech Appliances and Commil decisions require a showing of the accused infringer’s subjective knowledge,” so any “reliance on the objective strength of [the accused’s] non-infringement arguments as precluding a finding of induced or contributory infringement was erroneous.” In addition, the accused’s “non-infringement defenses were strong at most created a factual question as to [its] own subjective beliefs.” Thus, if a patentee’s “evidence at most creates a question of fact regarding [the accused’s] knowledge of the patent,” “this would be a basis for summary judgment.”
Also, in vacating the district court’s adoption of the defendant’s claim construction, the Federal Circuit found that there was no “clear and unmistakable disclaimer” in the specification or prosecution history to justify the district court’s construction, holding that it is “‘not enough that the only embodiments [disclosed in the specification] … contain a particular limitation’ to limit claims beyond their plain meaning.”