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Federal Circuit Review No. 80-2.
Federal Circuit Reverses District Court on Direct and Induced Infringement
Commil USA, LLC v. Cisco Sys., No. 2012-1042, 2015 U.S. App. LEXIS 22680 (Fed. Cir. Dec. 28, 2015) (Before Newman, O’Malley, and Prost, CJ.) (Opinion for the court, Prost, CJ.). Click Here for a copy of the opinion.
Commil sued Cisco for directly infringing its patent relating to a method of improving mobile device handoffs between base stations, as a device moves through a network area. Commil also alleged that Cisco induced its customers to infringe by selling them infringing equipment. A jury awarded Commil $3.7 million in damages for direct infringement. Commil filed a motion for a new trial on induced infringement, where a second jury found Cisco liable. Cisco appealed, and a split panel remanded for a new trial. Commil sought certiorari, and the Supreme Court reversed and remanded.
On remand, Cisco argued that there was no direct infringement because neither Cisco nor its customers performed the “dividing” and “running” steps required in claim 1. Claim 1 reads, “for each connection of a mobile unit with a Base Station, running an instance of the low-level protocol at the Base Station…” The district court construed this to require running a copy of the low-level protocol for each connection, which supports only that connection, and then running a separate copy of a high level protocol for that connection, supporting only that connection. Cisco argued that its system employs only a single copy of a protocol to support all its connected devices.
The Court agreed, noting testimony from Cisco’s engineer who stated that the system needed only one copy of the protocol to support all devices. Commil’s expert opined that the protocol was a state machine, and since Cisco’s devices tracked separate information regarding their communication states, each communication state represented a copy of the protocol that was unique. The Court disagreed, finding that tracking separate states for each device was not substantial evidence that each device ran a separate copy of the protocol. The Court did not review arguments on the “dividing” step of the claims, since it found the “running step” was not performed by Cisco or its customers. Accordingly, the Court reversed the judgment of the district court on both direct and induced infringement.