Infringement Under the Doctrine of Equivalents Requires Arguments Separate and Distinct from Literal Infringement
January 09, 2006
Last Month at the Federal Circuit - February 2006
Judges: Rader (author), Friedman, and Dyk (dissenting)]
In nCube Corp. v. SeaChange International, Inc., Nos. 03-1341, -1366 (Fed. Cir. Jan. 9, 2006), the Federal Circuit affirmed the trial judge’s denial of SeaChange International, Inc.’s (“SeaChange”) motion for JMOL on literal infringement, willfulness, and indirect infringement and the denial of SeaChange’s motion for a new trial. The Court also affirmed the trial judge’s decision to vacate the jury’s finding of infringement under the DOE and affirmed the trial judge’s award of enhanced damages and attorney fees.
nCube Corporation’s (“nCube”) U.S. Patent No. 5,805,804 claims “a better means and method for providing multi-media data in a structured system” by giving clients access to multimedia resources on different networks, even when those networks use different addressing schemes. The invention uses an upstream manager, a downstream manager, and a media server. The only embodiment discloses creating its own network protocol by superimposing “logical” addresses over the physical addresses of objects in the various networks, relieving the client of keeping track of the physical addresses.
The Federal Circuit agreed with the trial judge’s claim construction and rejected SeaChange’s narrower construction that the upstream manager routes messages using only logical addresses. According to the Court, SeaChange’s proposed construction would impermissibly read thelimitation of a “virtual connection” into the asserted claim and would render a dependent claim redundant. Additionally, the Court noted that the patentee is not limited to the only embodiment disclosed in the specification. Although the jury found that SeaChange willfully infringed nCube’s patent, both literally and under the DOE, the Federal Circuit upheld the trial judge’s holding that only literal infringement occurred. In so doing, the Court took note of the extensive evidence on infringement while SeaChange cited no expert or other testimony to the jury that contradicted nCube’s expert opinion. The Court refused to second guess the jury’s finding that nCube’s expert was credible.
The Federal Circuit also upheld the trial judge’s decision to vacate the jury’s finding of infringement under the DOE. To successfully prove infringement under the DOE, a party must present evidence and arguments concerning each claim element. nCube failed to satisfy that burden.
The Court upheld the trial judge’s holding on willful infringement despite SeaChange’s opinion letter of noninfringement obtained after nCube filed suit. Because SeaChange did not supply an important technical document to counsel, the opinion can no longer serve its “prophylactic purpose” of negating a finding of willfulness.
The Federal Circuit also upheld the trial judge’s holding on indirect infringement because the jury had sufficient evidence to infer that SeaChange intended its customers to use their equipment with the SeaChange device to practice the patented method. In finding willful infringement, the jury determined that SeaChange possessed the requisite intent.
In upholding the trial judge’s award of enhanced damages, the Court emphasized that the case for literal infringement was “not close.” Further, because SeaChange deliberately copied the patented invention without a good-faith excuse, the Court held that the trial judge did not abuse his discretion in finding the case exceptional and awarding enhanced damages and attorney fees.
Judge Dyk dissented on the issue of literal infringement. Judge Dyk agreed with SeaChange that the claim construction erroneously omitted the additional requirement that the upstream manager route messages using logical addresses. Under that narrower claim construction, there would be insufficient evidence to support a finding of infringement.