The plaintiff-appellee sued for patent infringement in the District of Delaware. Following several bifurcated trials, the jury found that claim 41 of U.S. Patent No. 7,810,144 was valid and also directly and indirectly infringed. The defendant-appellant moved for judgment as a matter of law on infringement and invalidity, which was denied, and then appealed.
On appeal, the Federal Circuit found that while substantial evidence existed to support the finding that the claims were valid, substantial evidence did not support the jury’s verdict that claim 41 of the ’144 patent was directly infringed. “Since a finding of direct of infringement is a predicate to any finding of indirect infringement,” the Federal Circuit reversed all of the infringement findings with respect to the ’144 patent, Kathleen Barry Partner Chicago +1 (312) 558-8046 Email David Enzminger Co-Chair, Intellectual Property SV: +1 (650) 858-6580 L.A.: +1 (213) 615-1780 Email Allan Fanucci Partner New York +1 (212) 294-3311 Email Ivan Poullaos Partner Chicago +1 (213) 615-1848 Email Michael Tomasulo Partner Los Angeles +1 (213) 615-1848 Email Merritt Westcott Partner Houston +1 (713) 651-2675 Email and remanded for further proceedings.
The Federal Circuit held that under its holding in Centillion, “to use a system, a person must control (even if indirectly) and benefit from each claimed component.” Proof of an infringing use of the claimed system, therefore, “requires the patentee to demonstrate that the direct infringer obtained ‘benefit’ from each and every element of the claimed system. In addition, the direct or indirect control required is the ability to place the system as a whole into service.” Id. at 16 (citations omitted). The court then reviewed the evidence in the case and found that Plaintiff-Appellee had “failed to present substantial evidence that the parties accused of direct infringement [the defendant-appellant] benefitted from the limitation of ‘generating a delivery report’ of the claimed system” in claim 41 of the ’144 patent. Because a finding of direct infringement is a predicate to any finding of indirect infringement, none of the jury’s indirect infringement verdicts were supported by substantial evidence.