Precedential Federal Circuit Opinions

1.  ROCHE DIAGNOSTICS CORPORATION v. MESO SCALE DIAGNOSTICS, LLC [OPINION]  (2021-1609, 2021-1633, April 8, 2022) (NEWMAN, PROST, and TARANTO)

Prost, J.  Affirming in part and reversing in part district court judgment sustaining jury verdict of infringement of three patents. With respect to whether plaintiff-appellee had exclusive rights to one of the patents, the district court’s denial of JMOL was appropriate, in part, because the jury heard evidence that the work that was done in that patent was part of the research program allegedly described in the agreement. With respect to the other two patents, the district court erred in sustaining the jury’s verdict that defendant-appellant induced infringement of those patents. The district court’s findings regarding willfulness and enhancement compelled the conclusion that defendant-appellant lacked the requisite intent for inducement under the proper standard. Additionally, the allegedly inducing acts could not support the jury’s induced-infringement verdict because the evidence indicated that none of those acts occurred within the damages period. Furthermore, plaintiff-appellee put forward no evidence that any customers purchasing the accused products during the damages period, received the pre-damages-period communications and, in reliance on them, used the products in an infringing manner. With respect to the three additional patents that were the subject of the district court’s judgment of non-infringement, that judgment resulted from a misapplication of the compulsory-counterclaim rule. The best understanding of the compulsory-counterclaim rule is that it bars future claims but does not authorize rendering adverse judgment on such claims in the same action.

Bryson, J.  Vacating district court’s claim construction rulings and remanding for further proceedings. The district court erred in concluding that the relevant independent claims covered only a multi-piece apparatus. The recitation of a single-piece apparatus in certain dependent claims was persuasive evidence that the relevant independent claims also covered a single-piece apparatus. The detailed description in the specification did refer to a “fastening stem” only with respect to the “assembled end cap” embodiment, which is a multipiece apparatus. But nothing in the specification stated that a fastening stem cannot be present in a single-piece apparatus.   

3.  GENUINE ENABLING TECHNOLOGY LLC v. NINTENDO CO., LTD. [OPINION]  (2020-2167, April 1, 2022) (NEWMAN, REYNA, and STOLL)  

Reyna, J.  Reversing the district court’s grant of summary judgment of non-infringement. The district court erred in its construction of “input signal,” which should have been construed to mean “a signal having an audio or higher frequency.” The parties agreed that claim scope was disavowed during prosecution of the relevant patent in distinguishing the claimed inventions from a prior art reference. The only disavowal of claim scope that was clear and unmistakable in the record was disavowal of signals below the audio frequency spectrum. The district court erred in relying on expert testimony to extend the disavowal to all signals of frequencies up to 500 Hz, which limited claim scope in a manner not contemplated by the intrinsic record. Nor did the record support a finding of separate and distinct disclaimer of claim scope relating to the particular type or content of signal.