Addressing evidentiary rulings from a lower court, the U. S Court of Appeals for the Federal Circuit reversed a district court’s summary judgment finding of infringement and validity and remanded the case for a new trial on both issues. Meyer Intellectual Properties Ltd. v. Bodum, Inc., Case No. 11-1329 (Fed. Cir., Aug. 15, 2012) (O’Malley, J.) (Dyk, J., concurring).
Frank Brady worked for Bodum, Inc. when he conceived of a milk frother that used simple aeration instead of steam. Brady began selling his frothers through his company BonJour, Inc. and eventually sold BonJour and his patents to Meyer Intellectual Properties Limited. Meyer subsequently sued Bodum for patent infringement. Following a jury trial where the jury found the patents to be valid and willfully infringed and awarded $50,000 in damages, the district court trebled the damages, declared the case exceptional and awarded Meyer its attorneys’ fees of $756,487.56. Bodum appealed.
On appeal, the Federal Circuit concluded that the district court erred in granting summary judgment of infringement because the record was inadequate to support such a conclusion. Meyer’s only evidence of direct infringement was the activities of Meyer’s own expert. In reviewing the evidence, the Federal Circuit found it “troubling” that the district court “based its direct infringement analysis on what it assumed happened, rather than on actual evidence of record.”
The Federal Circuit also found that the district court abused its discretion in three evidentiary rulings. First, the district court improperly limited the scope of prior art to only two references even though additional references were sufficiently disclosed. Second, the district court improperly excluded Bodum’s expert from testifying that the asserted patents were invalid as being obvious even though the expert submitted a sufficiently detailed report. Third, the district court improperly erred in precluding a lay witness from testifying to authenticate one of the prior art references. These evidentiary errors, according the Federal Circuit, had the cumulative effect of preventing Bodum from presenting the substance of its obviousness defense which resulted in a “one-sided” trial.
The Federal Circuit also ruled that the district court improperly dismissed Bodum’s claim of inequitable conduct on a motion in limine, finding that “a motion in limine is not the appropriate vehicle for weighing the sufficiency of the evidence.” The Federal Circuit vacated the willfulness verdict and the award of attorney fees’ in view of the evidentiary and procedural rulings.
In a concurring opinion, Judge Dyk stated “one cannot help but conclude that this case is an example of what is wrong with our patent system.” He believes it would have been reasonable to expect that the claims would have been found obvious on summary judgment by the district court, but instead, the parties spent hundreds of thousands of dollars thus far and are invited by the Federal Circuit to “have another go of it.” Judge Dyk stated that “[s]uch wasteful litigation does not serve the interests of inventorship community, nor does it fulfill the purposes of the patent system.”