Meyer Intellectual Props. Ltd. v. Bodum, Inc., No. 2011-1329 (Fed. Cir. Aug. 15, 2012)

The patentee alleged infringement of two method patents for frothing milk.  The alleged infringer counterclaimed for declaratory judgment of noninfringement and invalidity. The district court largely granted the patentee’s motions for partial summary judgment on the issues of induced and direct infringement. Before trial, the district court also granted the patentee’s motions in limine, barring the alleged infringer from introducing expert testimony, relying on certain evidence of prior art, and presenting any evidence regarding its inequitable conduct defense. The jury returned a verdict for the patentee and awarded the requested damages. After denying the alleged infringer’s motion for JMOL, the district court granted the patentee’s motion for treble damages and attorneys’ fees.

The Federal Circuit reversed in part, vacated in part, and remanded for new trial. First, the court reversed the grants of partial summary judgment because the patentee had neither identified specific instances of direct infringement nor offered evidence that the alleged infringer itself used the contested milk frothers. Next, applying the law of the regional circuit, it found that the district court abused its discretion by granting patentee’s motions in limine: the evidentiary errors improperly narrowed the scope of prior art the alleged infringer could introduce, and prejudiced its ability to present its invalidity defense. Specifically, the alleged infringer’s expert report invoking common sense was sufficiently detailed in light of the “simple” nature of the technology involved, and its exclusion was not harmless because it impaired the alleged infringer’s ability to present its obviousness defense. Moreover, any restrictions on the prior art used in the report should have at most limited the expert’s own testimony at trial, not prevented other witnesses from testifying about prior art that had been disclosed during discovery. Precluding the alleged infringer from introducing evidence of inequitable conduct also was improper because it effectively operated as a summary judgment ruling against the alleged infringer’s affirmative defense. Finally, in light of its decision to remand the case for a new trial on infringement and invalidity, the Federal Circuit vacated the jury’s verdict of willfulness and the district court’s decisions denying JMOL on the issues of willfulness, granting treble damages, and awarding attorneys’ fees.

In a brief concurrence, Judge Dyk argued that this case exemplifies the shortcomings of the patent system. He characterized the asserted claims as obvious and criticized the “wasteful” and expensive litigation they prompted.

A copy of the opinion can be found here.