Friday, February 5, 2010

SEB v. Pentalpha

This case involved a patent for deep-fryers with a well insulated skirt. After a trial and a jury verdict for the patentee, several issues were raised on appeal. A few of particular interest are mentioned below.

More on the Knowledge-of-the-Patent Requirement for Inducement. Knowledge of the patent need not be shown if it can be shown that the defendant actively disregarded a known risk. In DSU Medical, the Federal Circuit provided the standard for the intent needed for a showing of inducement, including that such a showing necessarily includes knowledge of the patent. “This court’s opinion [in DSU Medical] did not, however, set out the metes and bounds of the knowledge-of-the-patent requirement.” (p. 22.) The court had stated “knew of the patent” in DSU Medical, not “knew or should have known,” so the defendant argued that lack of knowledge, regardless of whether the lack of knowledge may have been deliberate. “’[S]pecific intent’ in the civil context is not so narrow as to allow an accused wrongdoer to actively disregard a known risk that an element of the offense exists.” (p. 23) In this case, “the record shows no direct evidence that [the defendant] had actual knowledge of the patent before” a certain date. The court concluded that direct evidence of knowledge of the patent is not necessary to establish inducement. “[A] claim for inducement is viable even where the patentee has not produced direct evidence that the accused infringer actually knew of the patent-in-suit. This case shows such an instance. The record contains adequate evidence to support a conclusion that [the defendant] deliberately disregarded a known risk that [the plaintiff] had a protective patent.” (p. 25.) Several factors contributed to this conclusion, including the fact that the defendant failed to inform the attorney it hired to conduct a right-to-use study that it had copied the product at issue. The court also noted that “[t]his opinion does not purport to establish the outer limits of the type of knowledge needed for inducement.” (p. 26.)

Claim Construction for Preliminary Injunction and the Law of the Case. “This court’s prior affirmance of the district court’s preliminary injunction order does not make the district court’s claim construction in its 1999 opinion the law of the case.” (p. 8.)

Claim Construction and the Use of Different Terms in the Specification. “This court often assumes that different terms convey different meanings. That assumption, however, carries less weight when comparing a term in the claim to a term in the specification, especially where, as here, the specification only describes one embodiment.” (p. 10.)

Trial Procedure Note. Defendant sought JMOL after the jury verdict concerning prosecution history estoppel, but had not moved on this ground at the close of evidence. This procedural difference lead to a difference in the standard of review: “If an issue is not raised in a previous motion for a directed verdict, however, this court’s review is highly deferential.” (p. 13.)

General Verdict Rule. “The record therefore does not clearly indicate that the jury found damages based on inducement alone, or based on direct infringement alone, or both. The general verdict rule requires that the only way this court can affirm in such a circumstance is by determining that the jury’s finding of both direct infringement and inducement of infringement was proper.” (p. 19.) In this case, it did find that both findings were proper and upheld the damages award.

Another Procedural Note. “Importantly, [the patentee] does not ask this court to order a new trial on willfulness. Had it asked, this court might have granted the request in light of the district court’s conclusion that the willfulness verdict could have gone either way under the Seagate test.” (p. 32.)