We will be discussing two recent cases in the coming week’s SoCal IP Institute. The first sets forth the standard for “willful blindness” in situations of induced infringement. The second has to do with the application of 35 U.S.c. 112, paragraph 6 to claims. We will discuss these cases in our weekly SoCal IP Institute meeting on Monday, June 20, 2011. Brief synopses of the cases are presented below.
Global-Tech Appliances, Inc. et al. v. SEB S.A., No. 10-6 (U.S. May 31, 2011) (attached). SEB created a deep fryer and began selling the deep fryer in the U.S. SEB obtained a patent on it’s fryer. Pentalpha purchased an SEB fryer outside of the U.S., removed the cosmetic features of the fryer and asked an attorney to conduct a right-to-use investigation of their derivative fryer. Pentalpha is a wholly-owned subsidiary of Global-Tech. The attorney did not find SEB’s patent during the search and Sunbeam began selling Pentalpha’s fryer in the U.S. The jury found for SEB on an induced infringement theory saying that Pentalpha knew or should have known that their actions would induce actual infringement. There was no evidence that Pentalpha knew of the SEB patent before it received notice of a suit by Sunbeam, there was adequate proof that it deliberately disregarded a known risk and that disregard is sufficient as “actual knowledge”.
The Supreme Court disagreed with the basis of the holding, but affirmed the result. Pentalpha’s intentional avoidance of knowledge of critical facts is sufficient to constitute “actual knowledge” for induced patent infringement. In particular, a defendant that subjectively believes there is a high likelihood that a fact exists and who takes deliberate actions to avoid learning of that fact are sufficient to support a finding of willful blindness surpassing recklessness and negligence. The Federal Circuit’s opinion was not based upon this understanding of “willful blindness”, but the Supreme Court found that the evidence in the record nonetheless supported the the appropriate standard and affirmed.
Inventio AG v. ThyssenKrupp Elevator Americas Corp., No. 0210-1525 (Fed. Cir. June 15, 2011) (attached). Inventio filed a patent suit asserting two patents related to a “modernized elevator system”. In particular, as a user calls an elevator, the patent disclosed a system wherein the user could input the desired destination floor as well. The district court granted ThyssenKrupp’s motion for summary judgment of invalidity on the basis that the limitations “modernizing devices” and “computing unit” in two asserted patents failed the written description requirement because they were means-plus-function limitations without corresponding structure in the specification.
The Federal Circuit disagreed with the characterization of these limitations are means-plus-function and reversed. In particular, the “modernizing device” was disclosed in one of the figures of the patents including a number of elements such as a processor, a signal generator, a converter, memory and a signal receiver. In addition, its capabilities were described in the specification. All of these facts support the conclusion that the “modernizing device” was not merely a functional limitation, but that it was a physical element within the system described. Similarly, the physical structure and function of the “computing unit” were also described. Accordingly, neither limitation was a means-plus-function term. The decision was reversed and remanded to the district court for further proceedings.
All are invited to join us in our discussion of these cases during the SoCal IP Institute meeting on Monday, June 20, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.