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“While our precedent doesn’t necessarily require an expert’s testimony to be an ipsis verbis recitation of the claim, Dr. Selker’s identified result is also too generalized, unclear, and unconnected to the claimed invention.” – CAFC Majority
The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming a district court’s finding that NextStep, Inc. failed to prove that Comcast Cable Communications infringed its patents. Judge Chen authored the majority opinion and Judge Reyna authored a partial dissent, disagreeing with the majority’s holding that one of the patents was not infringed under the doctrine of equivalents.
NextStep owns U.S. Patent Nos. 8,885,802 (’802 patent) and 8,280,009 (’009 patent), which generally cover voice communications technology. The U.S. District Court for the District of Delaware entered summary judgment of non-infringement on the ‘802 patent based on the adopted claim construction of the term “VoIP” but denied Comcast’s motion for summary judgment of patent eligibility on the ’009 patent. A jury then entered a verdict that the ‘009 patent claims were infringed under the doctrine of equivalents but that they were not literally infringed. However, the district court set aside this verdict, granting judgment as a matter of law (JMOL) of non-infringement on the ‘009 patent due to a lack of evidence to support the jury’s finding.
Chiefly, the district court said that the testimony of NextStep’s expert, Dr. Ted Selker, “was too conclusory to sustain the verdict.” The court referred to portions of the testimony as “word salad” and said that it “lacked the specificity and analysis required by [the CAFC’s] precedent.” The court ultimately entered final judgment of non-infringement on both patents and issued a summary judgment ruling rejecting Comcast’s affirmative defense that the ’009 patent is ineligible under 35 U.S.C. § 101.
Claim Construction
NextStep first appealed the district court’s construction of the term “VoIP” as “protocols and data formats for transmitting voice conversations over a packet-switched network, such as the Internet.” NextStep asked for a broader construction covering any “audio data,” relying on different dictionaries than the court. The CAFC said NextStep forfeited its new argument on appeal that “that the ’802 patent redefined VoIP to differ from its industry standard meaning” and also forefeited its argument that, even if the CAFC agreed with the district court’s construction, NextStep “showed genuine disputes of material fact even under the court’s clarified construction.”
Doctrine of Equivalents
Turning to the ‘009 patent, the CAFC said the district court was also correct to grant summary judgment of non-infringement under the doctrine of equivalents mainly because NextStep failed to comply with the “specific evidentiary requirements necessary to prove infringement under the doctrine of equivalents.” In particular, “both the Supreme Court and this court have made clear that the evidence of equivalents must be from the perspective of someone skilled in the art, for example through testimony of experts or others versed in the technology; by documents, including texts and treatises; and, of course, by the disclosures of the prior art,” said the majority opinion, quoting AquaTex Indus., Inc. v. Techniche Sols., 479 F.3d 1320, 1329 (Fed. Cir. 2007).
Furthermore, NextStep failed to provide the “particularized testimony and linking argument” required under the precedent. Dr. Selker’s brief testimony on the doctrine of equivalents evidence was insufficient, said the majority. First, the testimony failed “to explicitly identify the alleged equivalent”; second, it “failed to provide a ‘meaningful explanation of why’ the element or elements from the accused product or process are equivalent to the claimed limitation for each part of the ‘function-way-result test’”; his testimony amounted to “word salad” when attempting to explain “why several button presses perform the claimed method in the same way as the claimed single action”; and agreed with the district court that Selker’s testimony on the “result” prong of the function-way-result test was “untethered from the claim language” and “amounts to little more than ‘generalized testimony as to the overall similarity between the claims and the accused infringer’s product.’” The opinion explained:
“While our precedent doesn’t necessarily require an expert’s testimony to be an ipsis verbis recitation of the claim, Dr. Selker’s identified result is also too generalized, unclear, and unconnected to the claimed invention.”
NextStep attempted to argue in part that certain types of “easily understandable” technologies should not be subject to the “particularized testimony and linking argument from a skilled artisan” standard, but the CAFC rejected this as “contrary to both our precedent and the policies underlying why we require particularized testimony and linking argument.” Simply put, said the majority, “we have never recognized a technology-specific exception to the evidentiary rules governing the doctrine of equivalents.”
Dissenting in part, Judge Reyna said “[t]he majority concocts a rigid new rule that in all cases a patentee must present expert opinion testimony to prove infringement under the doctrine of equivalents.” But the majority addressed this, calling it incorrect since its discussion of the standard was limited to that articulated in the AquaTex case. However, Reyna said the majority opinion “analyzes NexStep’s evidence of infringement under the doctrine of equivalents in a vacuum and fails to adhere to the substantial evidence standard of review.” Reyna concluded:
“I believe the majority invades the province of the jury by overturning a reasonable verdict that is supported by substantial evidence in this case and by imposing an unnecessary new rule in all future doctrine of equivalents cases to come.”
