Docket No. 2011-1191 (etc.)
RADER, LOURIE, DANIEL
March 13, 2013
Brief summary: DC correctly granted SJ on contributory infringement under 35 U.S.C. §§ 271(b) and (c) (e.g., overseas manufacture and sales with knowledge the products would be imported into the US). One of Defendants’ obviousness arguments was unsuccessful, in part, because they “presented no evidence of a reason to combine the elements of” the cited reference.
Summary: The Defendants appealed the summary judgment of infringement for SynQor (contributory infringement under 35 U.S.C. §§ 271(b) and (c), and direct infringement under § 271(a) (overseas manufacture and sales with knowledge the products would be imported into the US)) regarding its several patents relating to power converter systems (conversion of DC from one voltage level to another) used to power large computer systems. The Defendants unsuccessfully argued to the DC that certain claims were anticipated by a doctoral thesis and others were obvious from the thesis and another publication, and the FC panel agreed with the DC (based in part on expert testimony). Regarding another reference (Arduini), the FC disagreed with the Defendants on obviousness because they “presented no evidence of a reason to combine the elements of Arduini in the manner required by claim 9, other than Dr. Mercer’s statement that Arduini teaches ‘putting those building blocks together’ in any manner the circuit designer desires” and SynQor introduced secondary evidence (commercial success, industry recognition, initial skepticism, unexpected results, copying by competitors) linked to the claimed invention (“thus supplying a nexus”). The FC panel also confirmed the trial court claim constructions (“the customary meaning of the contested terms, construed within their proper context in the claim” (e.g., specification and figures), cannot exclude the preferred embodiment (Adams Resp. Ther., FC 2010)). The Defendants also argued that “the jury was incorrectly instructed as to the knowledge requirement for induced infringement” (35 U.S.C. §§ 271(b) and (c)) but the FC panel disagreed (also explaining that SynQor showed that the Defendants had datasheets and products marked with earlier patents to which those in suit claim priority). It also concluded that evidence regarding an ongoing reexamination proceeding would have been prejudicial to SynQor. The damages calculations were also reviewed and affirmed.