Federal Circuit Reverses District Court on Direct and Induced Infringement

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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.

federal-circuit-cafc-335zOn 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.

The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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