Docket No. 2010-1049, -1416
LINN, DYK (C/D), PROST
November 14, 2011
Subject matter: claim construction, inequitable conduct, willful infringement
Summary: Home Depot (HD) appealed DC decision that relating to Powell’s radial arm saw patent (claim construction, inequitable conduct, literal / willful infringement, and award of enhanced damages and attorney fees). Powell worked with HD (not as an employee) installing and repairing radial arm saws. In 2004, Powell presented a saw guard prototype to HD (for which he filed a patent application) to prevent an increasing number of injuries that were occurring, which were installed in stores. Unbeknownst to Powell, HD contacted another company, Industriaplex “to build nearly identical copies” for less than Powell was being paid. Powell’s ‘039 patent issued May 16, 2006, sued HD in 2007, and was awarded a total of over $23 million. HD disagreed with the DC construction of the terms “dust collection structure” (“said cutting box interior in fluid communication with dust collection structure for collecting sawdust”) and “table top” (“a work surface mounted to the table top”). The DC had initially concluded the “dust collection structure” was a means plus function term (112, para. 6) but changed its mind; HD argued that this was erroneous. The FC agreed with Powell that the claim “recites sufficiently definite structure” which was supported by the patents’ written description (including patents described in the Background of the Invention as “intrinsic evidence” (Kumar, FC 2003)). HD also argued that the claims required separate “cutting box” and “dust collection” structures but the FC disagreed (e.g., “separately molded pieces” not required, as in Retractable Techs., FC 2011). HD unsuccessfully argued that the “table top” functioned “as a horizontal work surface to support lumber while being cut” but the FC agreed with the DC that the term had its ordinary meaning as confirmed by the specification (again looking to the description of related art). HD had also argued that Powell committed inequitable conduct by failing to update his Petition to Make Special to indicate that HD had hired Industriaplex to make the devices, thus eliminating Powell’s obligation to make and supply the claimed devices. The FC disagreed (as did the DC), because the conduct “obviously fails the but-for materiality standard” (Therasense, FC 2011) (e.g,. “not the type of unequivocal act, ‘such as the filing of an unmistakably false affidavit’ that would rise to the level of ‘affirmative egregious misconduct.'”). The FC also agreed with the DC that HD’s conduct indicated willful infringement under Seagate (FC 2007) (see also Dupuy, FC 2009 and Uniloc, FC 2011). The royalty analysis is interesting, ultimately concluding that the jury correctly calculated the royalty per unit would have been $7,736 per unit (even though Powell had agreed with HD to $2180 per unit; award is ““within the range encompassed by the record as a whole.”) The FC also found no error in the DC award of enhanced damages and attorney fees. Judge Dyk only dissented regarding whether its defense of its proposed claim construction of the term “table top” was objectively unreasonable (“Powell did not prove the objective prong of the willful infringement inquiry by clear and convincing evidence”).