Intellectual Property Law

Inducement not shown when accused product can work in an infringing way but doesn't have to

By McKee, Voorhees & Sease, P.L.C.

In a recent decision, the Federal Circuit affirmed the International Trade Commission's finding of noninfringement with respect to one patent but reversed and remanded on another.  At issue was whether the defendant had imported chipsets that infringed five of the plaintiff's patents in violation of 19 U.S.C. § 1337.  The action was dismissed with regard to two of the patents, as any action related to those two patents must occur in Federal Court in California due to a forum selection clause.  Another patent is the subject of a separate appeal after an exclusion order was entered.  The Commission adopted an administrative law judge's determination of noninfringement with respect to the remaining two asserted patents.  

The Federal Circuit affirmed the determination of noninfringement for one patent, holding the patentee had presented insufficient evidence to show the accused devices necessarily infringed, and the patentee did not provide evidence of specific instances of direct infringement.  The court disagreed with the ALJ's claim construction with respect to the second patent.  The administrative law judge misinterpreted expert testimony on whether a control signal was required to be changeable and accordingly the court vacated the noninfringement finding with regard to one of the eight accused chips, but affirmed the finding of noninfringement with regard to the other seven even under the revised construction.

More on Broadcom Corp. v. Int'l Trade Comm'n after the jump.

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Full post as published by FileWrapper on October 07, 2008 (boomark / email).