Docket No. 2011-1054
RADER, LOURIE, PROST
November 18, 2011
Subject matter: inducement to infringe, permanent injunction
Brief summary: Inducement to infringe may be proven (preponderance of the evidence) with circumstantial evidence. In a permanent injunction analysis, the grant of a previous license is only a factor to consider in deciding whether monetary damages are adequate.
Summary: BiTEK appealed DC final decision that it infringed (by inducing direct infringement by LG and Samsung (271(b)) O2’s patents relating to fluorescent lamp power supplies and granting O2 a permanent injunction. BiTEK argued that there was no evidence that LG sold any infringing products in the US. The FC disagreed because “[a] patentee may prove infringement by direct or circumstantial evidence” and the standard of proof is preponderance of the evidence (Lucent, FC 2009; Symantec, FC 2008; Moleculon Res., FC 1986). Here, the FC found no clear error in the DC conclusion that “it was more likely than not that LG sold LCD monitors in the United States containing the accused BiTEK controllers.” BiTEK also argued that the DC had improperly imposed a “death penalty” sanction due to the conduct of its counsel, and refused to allow its expert to testify on infringement. However, the FC determined that “the finding that BiTEK was acting through its counsel comports with the well-settled principle that a client is responsible for its attorney’s conduct in the courtroom” (Link, US 1962). The FC also found that the sanction was not a “death penalty” because BiTEK could have introduced other types of evidence. BiTEK also argued that the permanent injunction was improper under eBay (“eBay factors”: irreparable injury, monetary damages inadequate, balance of hardships, public interest). The FC found no abuse of discretion by the DC, agreeing with its position on irreparable harm (past actions may be considered) and the inadequacy of monetary damages (grant of previous licenses only a factor to consider) (the balance of hardships and public interest factors were not at issue). BiTEK also argued that the form of the injunction was improper, in part because it enjoins activities that take place wholly outside the US. But the FC agreed with O2 that BiTEK waived its right to appeal that issue. Judge Prost dissented, believing that “O2 Micro failed to proffer sufficient evidence showing that LG sold an infringing product in the United States—meaning that LG cannot qualify as a direct infringer.”