Function Media, L.L.C. v. Google, Inc. et al
Filing
146
MOTION for Judgment on the Pleadings Regarding Google's Inequitable Conduct Allegations by Function Media, L.L.C.. (Attachments: # 1 Exhibit, # 2 Exhibit, # 3 Exhibit, # 4 Exhibit, # 5 Text of Proposed Order)(Grinstein, Joseph)
EXHIBIT A
WeÉtLaw
Page
1
---
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HOnty the Westlaw citation is currently available.
West Headnotes
United States Court of Appeals, Federal Circuit. EXERGEN CORPORATION, Plaintiff-Cross Appellant,
f[f
Courts 106
æ96(7)
106 Courts
I
WAL-MART STORES, INC. Hana Microelecfronics Co., Ltd., and CVS Corporation, Defendants,
and
06II Establishment, Organization, and Procedure
106I(G) Rules of Decision
106k88 Previous Decisions as Controlling or as Precedents
S.A.A.T. Systems Application Of Advanced Technology, Ltd. and Daiwa Products, Inc., DefendantsAppellants. Nos. 2006-1491. 2007-1 180.
106k96 Decisions
of United
States
Aug4,2009.
Background: Owner of three patents relating to infrared thermometers for measuring human body temperature brought infringement action against competitor. Competitor asserted affirmative defenses and counterclaims of both noninfringement and invalidiry. After denying competitor's motion to amend, the United States District Court for the District of Massachusetts, Reginald C. Lindsay, J., upon a jury verdict, found willful infringement and awarded lost profit damages to patent owner, and then subsequently denied competitor's motion for judgment as a matter of law (JMOL), and patent owner's motion to alter or amend judgment for an award of enhanced damages and prejudgment interest. Both parties appealed.
Courts as Authority in Other United States Courts 106k96(7\ k. Particular Questions or Subject Matter. Most Cited Cases Court of Appeals for the Federal Circuit reviews the denial of a motion for judgment as a matter of law (JMOL) under the law of the regional circuit.
lll
Federat Courts
l70Bæ776
1708 Federal Courts lT0BVIII Courts of Appeals
lT0BVIII(K) Scope, Standards, and Extent lTOBVIIIß)l In General 170B.k776 k. Trial De Novo. Most
Cited Cases
In the First Circuit, the district court's
decision to
grant or deny a motion for judgment as a matter law (JMOL) is reviewed de novo.
of
lf[
Patents 291
æ314(5)
Holdings: The Court
Judge, held that:
of
Appeals, Linn, Circuit
291 Patents
fl)
first patent was invalid as anticipated by a prior aftpafeît; (2) accused device did not directly infringe second
29lXIl Infringement 29IXII(C) Suits in Equrty
29lk314 Hearing 291k314r5\ k. Questions
Fact. Most Cited Cases
of Law
or
patent;
(1) competitor did not actively induce infringement
of third patent; and Parents conduct
2glæ324.55(4)
(4) competitor failed to plead inequitable
with requisite particularity. Affirmed in part, and reversed in pan.
291 Patents
291XIl Infringement
29IXII(C) Suits in Equity
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291k324 Appeal
291k324.55 Questions
of Fact, Ver-
f6ì Courts 106 ÇÞ96(7)
106 Courts
I
dicts, and Findings 291k324.55(T Issues of ValidifY 29 1k324.55ø) k. Noveþ, Invention, Anticipation, and Obviousness. Most Cited
Cases
06II Establishment, Organization, and Procedure
106II(G) Rules of Decision 106k88 Previous Decisions as Controlling
Patents
29tcæt o.tt t,
or as Precedents
Courts as
29l
Patents
106k96 Decisions of United States Authorþ in Other United States Courts 106k96{Ú\ k. Particular Questions or
29l){If Infringement 29lXIi(C) Suits in Equity
291k324 Appeal
Subiect Matter. Most Cited Cases
291k324.55 Questions
of Fact, Ver-
dicts, and Findings 291k324.55(5\ k. Issues of Infringement. Most Cited Cases Anticipation and infringement of a patent are both questions of fact, which, when found by a jury, are generally reviewed for substantial evidence.
Whether inequitable conduct in a patent infringement action has been pleaded with requisite particularþ is Federal Circuit law. question govemed 9ft). 28 U.S.C.A. Fed.Rules Civ.Proc.Rule
a
by
l7] Patents 29t æ66G.20)
291 Patents
!!l
Courts 106 Cã96(7)
29lII Patentability 29lII(D) Anticipation
29Ik63 Prior Patents
291k66 Operation and Effect 291k66(1.20) k. Measuring, Testing, and Indicating-Devices. Most Cited Cases
Patent relatingto aradiation detector probe for meas-
106 Courts
1
06II Establishment, Organization, and Procedure
l06I(G) Rules of Decision
106k88 Previous Decisions as Controlling or as Precedents
106k96 Decisions of United States Authority in Other United States Courts Courts as
106k96(7) k. Particular Questions or
Subject Matter. Most Cited Cases The denial of a motion to amend a pleading is a pro-
uring human body temperature was invalid as anticipated by prior art patent disclosing a method and apparatus for measuring the internal temperature of a patient's body by sensing infrared emissions in the
external ear canal, despite patent owner's arguments
cedural matter governed by the law of the regional circuit. Fed.Rules Civ.Proc.Rule l5(a). 28 U.S.C.A.
[5ì Federat Courts 17gg
170B Federal Courts
æStZ
170BVIII Courts of Appeals
170BVII(K) Scope, Standards, and Extent 170BVII(K)4 Discretion of Lower Court
1708k817
Cited Cases
k.
Parties; Pleading. Most
that prior art patent detected radiation from probe unit in addition to radiation detected from the patient, and that prior art patent detected radiation only from a single spot, not from "multiple areas"; in reciting its claim limitations, patent relating to the radiation detector probe used the term "comprising," which meant including but not limited to, and thus prior art patent was not required to detect radiation solely from biological tissue, and prior art patent inherently disclosed detection of radiation from "multiple areas," since a user would necessarily detect radiation from the patient's face, outer ear, and ear canal while
probe was inserted into the ear canal.
The First Circuit reviews the denial of a motion to
amend
for a\
abuse
of
discretion. Fed.Rules
lË]Patents
29ræ72{o)
Civ.Proc.Rule 15(a). 28 U.S.C.A.
@
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291 Patents 29lIl Patentabilify
291 Patents
29III(D) Anticipation 291k72 Identþ of Invention 291k72(l\ k. In General. Most Cited
Cases
zglxll
tures
Infringement
29 I XIi(A) What Constitutes Infringement
291k233 Patents for Machines or Manufac291k235 Identity of Principle or Mode of Operation 291k235Q],
Devices. Most Cited Cases
To anticipate a patent claim, a single prior art reference must expressly or inherently disclose each claim
Iimitation.
k. Particular Patents or
llf
Patents 291@226.6
291 Patents 291XIJ Infringement 29 I XII(A) What Constitutes Infringement 291lA265 Substantial Identity of Subject
Matter
291k226.6 k. Comparison with Claims
of Patent. Most Cited Cases Patents
Accused device, which targeted a patient's forehead area for measurement, possessed a display for providing a reading of oral temperature rather than the temperature of the temporal artery beneath the skin of the forehead, and thus the device did not possess "a display for providing an indication of the internal temperature," as required to directly infringe patent relating to a radiation detector measuring tympanic temperature with improved accuracy.
291Ç229
flll
Patenrs 291 q;p314(5)
291 Patents
291 Patents
2glxlf Infringement 29 IXI(A) What Constitutes
291k229 Cited Cases
Infringement
291k228 Patents for Processes
k. Identity in General. Most
291XIl Infringement 29IXII(C) Suits in Equity 29lk314 Hearing 291k314(5) k. Questions of Law or
Fact. Most Cited Cases Once a district court has construed the relevant claim
Direct infringement of a patent requires a parfy to perform each and every step or element of a claimed
method or product.
f
terms of a patent, and unless altered by the district court, then that legal determination governs for purposes of trial; no party may contradict the court's
construction to a jury.
10l Patents 291
æ259(l')
291 Patents
l13ì Patents 291
291 Patents
æ259(l)
29IXII Infringement
29 I XI(A) What Constitutes Infringement
291k259 Contributory Infringement; Inducement
29lXI
29
Infringement
291k259(1\ k. In General. Most Cited
Cases
IXII(A) What Constitutes Infringement 29flA59 Contributory Infringement; In291k259(l\ k. In General. Most Cited
ducement
Cases
Active inducement of a patent requires the patentee to prove first that there has been direct infringement, and second that the alleged infringer knowingly induced infringement and possessed specific intent to
encourage another's infr ingement.
Scanning within an oval pattern in the temple region
fllì
Patents
291æß5Q)
on one side of the forehead, as directed by instructions of accused thermometer, did not meet literal requirement of claim of patent relating to infrared thermometer that detected temperature of the fore-
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head directly over the superficial temporal artery of scanning "across a forehead," so as to support patent owner's claim that manufacturer of accused thermometer actively induced infringement of that patent claim.
291k97
k.
Patent Office and Proceedings
Therein in General. Most Cited Cases The substantive elements of inequitable conduct in a patent case are: (l) an individual associated with the filing and prosecution of a patent application made an
ft[f
Patents
291ÞzSS(t)
affirmative misrepresentation of a material fact, failed to disclose material information, or submitted
291Patents
291XII Infringement
29 I XI(A) What Constitutes Infringement
false material information; and (2) the individual did so with a specific intent to deceive the Patent and Trademark Office (PTO).
291k259 Conhibutory Infringement; Inducement
lll
Federal Civil Procedure 1704
æ636
291k259(l\ k. In General. Most Cited
Cases
Accused thermometer measured the surface temperature of the skin covering the temporal artery, rather than the temperature of the temporal artery beneath the skin, as required by claim of patent relating to infrared thermometer that detected temperature of the forehead directly over the superficial temporal artery, and thus, in the absence of direct infringement, manufacturer of accused thermometer was not liable
for actively inducing infringement of that
claim.
patent
l70A Federal Civil Procedure ITOAVII Pleadings and Motions 17OAVII(A) Pleadings in General 1704k633 Certainty, Defmiteness and Particularity 1704k636 k. Fraud, Mistake and Condition of Mind. Most Cited Cases The relevant "conditions of mind" for pleading inequitable conduct in patent cases with requisite particular include: (l) knowledge of the withheld material information or of the falsity of the material misrepresentation, and (2) specific intent to deceive the Patent
and Trademark Office (PTO).
Civ.Proc.Rule 9G). 28 U.S.C.A.
Fed.Rules
fl5l Federal Civil Procedure 1704 QeSe
1704 Federal Civil Procedure
f!l!l
Federal Civil Procedure 1704
Ç-636
lT0AVII Pleadings and Motions
170AVII(A) Pleadings in General 1704k633 Certainty, Defmiteness and Particularity 1704k636 k. Fraud, Mistake and Condition of Mind. Most Cited Cases Inequitable conduct in patent cases, while a broader concept than fraud, must be pled with particularity
under the Federal Rules of Civil Procedure; a pleading that simply avers the substantive elements of inequitable conduct, without setting forth the particularized factual bases for the allegation, does not satisfu this requirement. Fed.Rules Civ.Proc.Rule 9(b). 28 U.S.C.A.
l70A Federal Civil Procedure 170AVII Pleadings and Motions 17OAVII(ê) Pleadings in General
1704k633 Certainty, Def,miteness and Par-
ticularity
170Ak636 k. Fraud, Mistake and Condition of Mind. Most Cited Cases To plead the "circumstances" of inequitable conduct in patent cases with the requisite particularity under Federal Rules of Civil Procedure, the pleading must
identiff the specific who, what, when, where, and how of the material misrepresentation or omission committed before the Patent and Trademark Office (PTO); moreover, although "knowledge" and "intent''
may be averred generally, the pleading must include sufficient allegations of underlying facts from which a court may reasonably infer that a specific individual (l) knew of the withheld material information or of the falsity of the material misrepresentation, and (2)
lL¡llPatents
291 Patents
29
zgtæ97
and Proceedings Thereon
lMpplications
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withheld or misrepresented this information with a specific intent to deceive the PTO. Fed.Rules
Civ.Proc.Rule 9(b). 28 U.S.C.A.
l70A Federal Civil Procedure
17OAVII Pleadings and Motions
lTOAVII(A) Pleadings in General
1704k633 Certainty, Definiteness and Par-
[!!l
1
Federal Civil Procedure l70A
FO¡O
ticularity 1704k636 k. Fraud, Mistake and Condition of Mind. Most Cited Cases Alleged infringer of patent relating to infrared thermometer that detected temperature of the forehead directly over the superficial temporal artery failed to name a specifrc individual associated with the hling of the patent application, who both knew of material
70A Federal Civil Procedure 17OAVII Pleadings and Motions
lTOAVII(A) Pleadings in General
1704k633 Certainty, Defmiteness and Par-
ticularity
1704k636 k. Fraud, Mistake and Condition of Mind. Most Cited Cases A "reasonable inference" that a specific individual (1) knew of the withheld material information or of the falsity of the material misrepresentation, and (2) withheld or misrepresented this information with a specific intent to deceive the PTO, as required to plead inequitable conduct in a patent case with requisite particularity, is one that is plausible and that flows logically from the facts alleged, including any
information and deliberately withheld or misrepresented it, and identi$z which claims, and which limitations in those claims, the withheld references were
relevant to, and where in those references the material information was found, and the particular claim limitations, or combination of claim limitations, that were supposedly absent from the information of record, as required to plead inequitable conduct with requisite particularþ in patent owner's infringement action. Fed.Rules Civ.Proc.Rule 9(b). 28 U.S.C.A.
objective indications
of
candor and good faith.
Fed.Rules Civ.Proc.Rule 9Lb). 28 U.S.C.A.
l22l Federal Civil Procedure
170.4.
fu636
pQl Federal Civil Procedure 1704 FOSO
l70A Federal Civil Procedure 170AVII Pleadings and Motions IT0AVII(A) Pleadings in General
1704k633 Certainty, Definiteness and Par-
170A Federal Civil Procedure 17OAVII Pleadings and Motions ITOAVII(A) Pleadings in General 1704k633 Certainty, Definiteness and Par-
ticularity 1704k636 k. Fraud, Mistake and Condition of Mind. Most Cited Cases Records
ticularity 1704k636 k. Fraud, Mistake and Condition of Mind. Most Cited Cases In contrast to the pleading stage, to prevail on the merits of an inequitable conduct claim in a paterfi case, the accused infringer must prove both material-
326æ32
326 Records
ity and intent by clear and convincing evidence;
whereas an inference of deceptive intent must be rea-
326II Public Access
326II(A) In General
sonable and drawn from a pleading's allegations of underlying fact to satis$ the Federal Rules of Civil Procedure's heightened pleading requirement, this inference must be the single most reasonable inference able to be drawn from the evidence to meet the
326k32
Cases
k.
Court Records. Most Cited
Because one
of the purposes of the Federal Rule of Civil Procedure's heightened pleading requirements
for fraud is to protect those whose reputation would
clear and convincing standard. Fed.Rules
Civ.Proc.Rule 9(b). 28 U.S.C.A.
be harmed as a result of being subject to fraud
charges, a district court may require that filings be made under seal, require redaction of individuals' names, and impose other safeguards under the Federal Rules of Civil Procedure, or other sources of
f2lì Federal Civil Procedure 1704 @636
protective authority. Fed.Rules Civ.Proc.Rules
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5.2(d)-(e), 9(b), 26(c). 28 U.S.C.A.
inequiøble conduct.
llll
I
Federal Civil Procedure l70A
þ636
Patents
291æ328(2)
704 Federal Civil Procedure lTOAVII Pleadings and Motions ITOAVII(A) Pleadings in General
1704k633 Certainty, Definiteness and Par-
291 Patents
29LXIIf Decisions on the Validity, Construction,
and Infringement of Particular Patents 29 1k328 Patents Enumerated
ticularity
170Ak636 k. Fraud, Mistake and Condition of Mind. Most Cited Cases For purposes ofalleging facts giving rise to a reasonable inference of scienter, as required in pleading inequitable conduct in a patent case with requisite particularity, one cannot assume that an individual, who generally knew that a patent reference existed, also knew of the specific material information contained in that reference. Fed.Rules Civ.Proc.Rule 9(b).28 U.S.C.A.
Cases
291k328Q\ k. Original Utility. Most Cited
Parents
291æ328(2)
291 Patents
291xlll Decisions on the Validity, Construction,
and Infringement of Particular Patents 29 1k328 Patents Enumerated
291k328(2) k. Original Utility. Most Cited
Cases
[24ì Federal Civil Procedure 170A' 1704 Federal Civil Procedure
@636
Patents
291æ325(2)
17OAVII Pleadings and Motions ITOAVII(.A) Pleadings in General 1704k633 Certainty, Defmiteness and Par-
291 Patents
29LXIIJ Decisions on the Validity, Construction,
and Infringement of Particular Patents 29 1k328 Patents Enumerated
ticularþ
170Ak636 k. Fraud, Mistake and Condition of Mind. Most Cited Cases Pleading on "information and belief is permitted under the Federal Rules of Civil Procedure's heightened pleading requirements for fraud when essential information lies uniquely within another party's control, but only if the pleading sets forth the specific
291k328(Ð k. Original Utility. Most Cited
Cases
Patents
291æ328(2)
291 Patents
29lXIII Decisions on the Validity, Construction,
and Infringement of Particular Patents 29 1k328 Patents Enumerated 291k328(.2\ k. Original Utility. Most Cited
Cases 4,3 17,998, 4,566,808. Cited.
facts upon which the belief is reasonably based.
Fed.Rules Civ.Proc.Rule 9(b). 28 U.S.C.A.
p!]Patents
291 Patents
2glæ97
and Proceedings Thereon Patent Office and Proceedings
zglMpplications
291k97
4,602,642.Cited as Prior Art.
5,0 12,813, 6,292,685.
k.
Therein in General. Most Cited Cases The mere fact that a patent applicant disclosed a reference during prosecution of one application, but did not disclose it during prosecution ofa related application, is insufficient to meet the threshold level of de-
Not Infr inged.
6,047,205. Invalid and Not Infringed. Appeals from the United States District Court for the
ceptive intent required
to support an allegation of
District of Massachusetts in case no. 0l-CV-11306.
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Judge Reginald C. Lindsay.Heidi E. Harvey, Fish & Richardson P.C., of Boston, MA, argued for plaintiffcross appellant. With her on the brief were Gregory A. Madera and Thomas A. Brown.
BACKGROUND
Exergen's patents relate to infrared thermometers for measuring humm body temperature. The thermometers first detect infrared radiation emitted from a surface of the human body, such as the tympanic membrane (eardrum) or the skin of the forehead, to obtain the surface temperature. The surface temperature is a function of both the internal (core) temperature within the body and the ambient (air) temperature to which the surface is exposed. From the detected sur-
M. Midgley. Jr., Zarian Midgley & Johnson PLLC, of Boise, ID, argued for defendantsPeter
appellants. With him on the brief was Dana M. Herberholz. Before MICHEL, Chief Judge, LINN, Circuit Judge,
and ST. EVE, District Judge.N
LINN, Circuit Judge. *1 S.A.A.T. Systems Application of Advanced Technology, Ltd. and Daiwa Products, Inc. (collectively "SAAT") appeal the denial of their motion for judgment as a malter of law ("JMOL") after a jury found that SAAT willfully infringed U.S. Patents No. 5.012.813 ("the '813 patent"), No. 6,047,205 ("the '205 patent"), and No. 6,292,685 ("the '685 patent") and awarded lost profit damages to the patentee, Exergen Corporation ("Exergen"). Exergen Corp. v. Wal-Mart Stores, 1nc., No. 01-CV-11306 (D.Mass. Aug. 4, 2005). SAAT fuither appeals the denial of its motion for leave to amend its answer to allege that the '813 and '685 patents are unenforceable due to
inequitable conduct. Exergen cross-appeals the denial of its motion to alter or amend judgment for an award of enhanced damages and prejudgment interest.
face temperature, the thermometers calculate the internal temperature in accordance with equations provided in the patents and then display a digital readout thereof. For example, the '813 and'205 patents disclose a thermometer that detects radiation from the tympanic membrane, but the claims of those patents are directed more broadly to detecting radiation from "biological tissue." The '685 patent, by contrast, is directed to a thermometer that detects radiation from the skin that covers the temporal artery in the temple region near the side ofthe forehead.
SAAT manufactures thermometers that detect radiation from the skin that covers the temporal artery. After detecting this radiation, SAAT's thermometers
convert the measured surface reading to the patient's oral temperature, which is the commonly used temperature measurement in the United States.
We conclude that all claims of the '205 patent are anticipated and that no substantial evidence supports the jury's contrary finding. Furthermore, we conclude that Exergen failed to introduce substantial evidence to support the jury's f,urding that the '813 and '685 patents are infringed. Because our invalidity and noninfringement determinations require that we reverse the damages award, we need not address Exergen's cross-appeal regarding enhanced damages and prejudgment interest. Finally, we conclude that the district court did not abuse its discretion in denying SAAT's motion to amend its pleading because it correctly held that SAAT's proposed allegations of inequitable conduct failed to satisry the heightened pleading requirement of Federal Rule of Civil Procedure 9ß). Thus, we affirm-in-part and reverse-in-part.
*2 Exergen sued SAAT for infringement of the '813 and '205 patents on July 27,2001. The '685 patent
issued on September 18, 2001, and was added to the suit on October 2,2001. SAAT answered by asserting aff,rmative defenses and counterclaims of both
noninfringement and invalidity. On September 6, 2002, SAAT sought leave pursuant to Federal Rule of
Civil Procedure 15(a) to add inequitable conduct
as
an affirmative defense and counterclaim against the '813 and '685 patents. Exergen Corp. v. ílal-Mart
Stores, 1nc., No. 0l-CV-11306 (D.Mass. Sept. 6, 2002) (Dkt. No. 51) ("Answer "). The district court denied SAAT's motion, stating that the proposed pleading failed to allege inequitable conduct with
particularþ under Rule 9(b).
The court then conducted a hearing on claim construction and construed two terms in claim 7 of the
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'813 patent. First, the court construed "biological surface tissue" to mean "a living layer of external
human tissue having a temperature that can be measured." Exergen Corp. v. lVal-Mart Stores, 1nc., No.
dentiary basis' for a reasonable jury to find for that party." Mag Jewelry Co. v. Cherokee. Inc.. 496F.3d
0l-CV-11306, slip op. at 10 (D.Mass. JuIy 14,2004) ("Claim Construction Order "). Second, the court construed "internal temperature" to mean "temperature ofthe region existing beneath the surface ofthe biological tissue targeted for measurement." Id. The parties agreed that these terms were the only terms at issue in the case. Moreover, before trial, Exergen waived any argument that SAAT infringed under the doctrine of equivalents. The case then proceeded to ajury trial on a theory of literal infringement only. The jury found that SAAT
questions of fact, which, when found by a jury, are
108. 117 (1st Cir.200î (quoting Fed.R.Civ.P. 50(a)(l). Anticipation and infringement are both
generally reviewed for substantial evidence. See Cordis Corp. v. Boston Scientilìc Coro.. 561 F.3d
1319. 1330. 1335 lFed.Cir.2009).
[4][5ll-61 The denial of a motion to amend a pleading under Rule 15(a) is a procedural matter governed by the law of the regional circuit. See Cent. Admixture Pharmaq Servs., Inc. v. Advanced Cardiac Solutions. P.C.. 482 F.3d 1347. 1357 (.Fed.Cir.2007). The First Circuit reviews the denial of a Rule 15(a) motion for an abuse of discretion. See Trans-Spec Truck Serv.. Inc. v. Caterpillar Inc., 524 F.3d 315. 326 (lst Cir.2008). Whether inequitable conduct has been pleaded with particularity under Rule 9(b) is a question governed by Federal Circuit law. See Cent. Admixture, 482 F.3d at 1356.
*3
directly infringed claim 7 of the 'E_1_3__patgnt and claims I and 3-5 of the '205 patent, and that SAAT actively induced infringement of claims I and27-30 of the '685 patent. Infringement of each patent was found to be willful. The jury also found in favor of Exergen on SAAT's invalidity defenses. Finally, the jury awarded lost profit damages totaling more than
$2.5 million.
IL Anticipation [7][8] SAAT challenges the jury's finding that claims l-5 of the '205 patent are not anticipated by U.S. Patent No. 4.602.642 ("O'Hara"). "To anticipate a claim, a single prior art reference must expressly or inherently disclose each claim limitation." Finisar Corp. v.
SAAT moved for JMOL on the grounds of noninfringement, invalidity, and absence of lost profits. These motions were denied on March 24,2006. Exergen moved to alter or amend judgment for an award of enhanced damages and prejudgment interest. This motion was denied on January 12.2007.
DirecTV Group.
(Fed.Cir.2008).
lnc.,523 F.3d 1323. 1334
SAAT and Exergen appeal. We have jurisdiction
under23 U.S.C.
{ 1295(aXl).
DISCUSSION
Claim I is the sole independent claim of the '205 patent. It recites:
l. A method of detecting
tissue comprising:
temperature of biological
L Standard ofReview
We review the denial of a motion for JMOL under the law of the regional circuit. See 800 Adept.
lllt2lt3l
providing a radiation detector for sensing infrared radiation from an extemal target;
sensing radiation from multiple areas of the biological tissue with the radiation detector; and electronically detecting the peak radiation from the multiple areas to obtain a peak temperature signal.
'205 patent col.20 11.46-54.
Inc. v. Murex Sec.. Ltd.. 539 F.3d 1354. 1366 (Fed.Cir.2008). In the First Circuit, "[t]he district
court's decision to grant or deny a motion for judgment as a matter of law is reviewed de novo." ,So/oLebron v. Fed. Express Corp., 538 F.3d 45. 56 (lst Cir.2008). JMOL is appropriate if "the presentation of the parfy's case reveals no 'legally sufficient evi-
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O'Hara issued more than two years before the earliest priority date of the ' 205 patent. O'Hara discloses "a method and apparatus for measuring the internal temperature of a patient's body by sensing infrared emissions in the external ear canal." O'Hara col.3 ll.8-10. This apparatus includes a handheld "probe unit" containing "an infrared sensitive thermopile detector," id. col.3 11.37-40, and a base or "chopper unit" that mates with and heats the probe unit to 98oF
open-ended and allows for additional steps."). The fact thal O'Hara detects radiation from the heated probe, in addition to detecting the peak radiation from multiple areas of the biological tissue to obøin a peak temperature signal, does not prevent O'Hara from anticipating claim 1. Moreover, Exergen does not argue that a heated probe is incapable ofdetecting
for calibration immediately prior to use, id.
11.32-36. When a user removes the probe
coI.3
unit from
the chopper unit, the system begins taking radiation
measurements at a rate of seven times per second and
radiation from sources having a lower temperature. To the contrary, Exergen concedes that the detection of radiation is an additive process that allows radiation to be detected from both the heated probe and the biological tissue. Pl.-Cross Appellant's Br. 3l (stating that O'Hara's "own radiation is always ødded
stores the maximum reading.
Id. col.l2 11.37-47.
to the radiation it is detecting from random targets that it encounters along the way" (emphasis added)).
Second, Exergen's contention that O'Hara detects
radiation only from a single spot, not from "multiple areas," is unsupported by substantial evidence. In fact, Exergen's expert, Dr. Pompei, testified that O'Hara inherently discloses this limitation:
From the time that the probe unit is removed from the chopper unit, the user has ten seconds to insert the probe into the external ear canal and press the SCAN
key. Id. col.l2 11.61-65. When the SCAN key is pressed, "[t]he maximum reading from the beginning of the removal of the probe unit from the chopper unit is displayed as the tympanic temperature." Id. col.l3 ll.7-9.
Exergen's expert, Dr. Pompei, admitted at trial that O'Hara discloses all limitations of claim I except the third step, namely, "electronically detecting the peak
Q. While you're moving this probe unit from the
chopper unit, is it-what is it measuring?
A. It's measuring infrared radiation.
radiation from the multiple areas to obtain a peak temperature signal." J.A. 6502-03 (39:14-40:12). On appeal, Exergen also focuses only on this third step
distinguishing O'Hara. First, Exergen argues that O'Hara heats the probe unit to 98oF and detects this radiation in addition to the radiation detected from the patient. Second, Exergen argues that O'Hara detects radiation only from a single spot, not from "multiple areas," in the ear canal after the SCAN key is pressed. Neither of these arguments, however, provides a plausible basis for distinguishing O'Hara.
and presents two arguments for
Q. And yon hove to move it along the side of the patient's face to get to the ear, don't you?
A. Yes.
Q. During the period that you're moving along the side of the patient's face, what's it measuring? What's it doing? A. It's measuring radiation.
*4 First, nothing in claim I of the '205 patent requires the detector to detect radiation solely from the bioIogical tissue. The claim uses the term "comprising," which is well understood in patent law to mean "including but not limited to." CIAS. .lnc. v. Alliance Gaming Corp.. 504 F.3d 1356. 1360 (led.Cir.2007); see Invitrogen Corp. v. Biocrest M-fç., L.P.,327 F.3d 1 3 64. 1 3 68 (Fed.Cir.2003 ) ("The transition' comprising' itr a method claim indicates that the claim is
I.A.
6495-96 (32:25-33:12 (emphasis added)). Beof O'Hara's method would necessarily detect radiation from the patient's face, outer ear, and ear canal at a rate of seven times per second while inserting the probe unit into the ear canal, O'Hara inherently discloses the detection of radiation from "multiple areas" of biological tissue. See
cause a user
Trintec Indus., Inc. v. Top-U.S.A. Corp.,295 F.3d
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1292. 129 5 (F ed.Ctr.2002\ ("Inherent anticipation requires that the missing descriptive material is 'necessarily present,' not merely probably or possibly present, in the prior art." (quotng In re Robertson. 169 F.3d 743. 745 (.Fed.Ctr.l999\)).
Exergen also contends, with respect to the "multiple areas" limitation, that O'Hara's probe unit employs a detector with a wide field of view, which,
once inserted into the ear canal, measures radiation from only one spot of the ear canal after the SCAN key is pressed. Exergen's argument overlooks the
We therefore reverse the jury's finding that all claims of the'205 patent are not invalid. Moreover, because "invalid claim[s] cannot give rise to liability for infringement," Medtronic. Inc. v. Cardiac Pacemakers.
Inc.. 721 F.2d 1563. 1583 Ged.Cir.l983), SAAT
cannot be liable for infringement of this patent.
III.Infringement the jury's ltndings that SAAT directly infringed the '813 patent and actively induced infringement of the '685 patent. "Direct infringement requires a parly to perform each and every step or element of a claimed method or product." BMC Res., Inc. v. Pq¡mentech. L.P.. 498 F3d 1373. 1378 (Fed.Cir.2007). Active inducement requires the patentee to prove "first that there has been direct infringement, and second that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another's infringement." Minn. Mining & Mfg. Co. v. Chemque. Inc.. 303 F.3d 1294. 1304-05 (Fed.Cir.2002\ (cita'
fact that the term "biological tissue" in claim I is not limited to "ear canal," and the fact that O'Hara detects radiation from multiple areas of the body during the entire time that the probe unit is being inserted into the ear canal, even beþre the SCAN
l9l[l0] SAAT challenges
key is pressed. O'Hara unambiguously states that "[t]he maximum readingy'om the beginning of the removal of the probe unit from the chopper unit is displayed as the tympanic temperature." O'Hara col. l3 ll.7-9 (emphasis added). The record also reflects that as the probe unit is moved into position in the ear canal, it necessarily passes over-and detects radiation from-the face, outer ear, and ear canal along the way. Because O'Hara obtains a peak
tions omitted).
temperature signal corresponding to a peak radiation detected over the patient's face, outer eat, and ear canal-i.e., multiple areas of the biological tissue-O'Hara anticipates claim l.
A. The'813 Patent
F ll Claim 7 is the sole claim of the'813 patent found infringed. It recites, with key term emphasized:
7. A radiation detector comprising:
a thermopile mounted to
*5 Exergen presents no separate argument as to the validþ of dependent claims 2-5. The limitations of those claims are readily found in O'Hara. Compare '205 patent claim 2 ("a temperature display for displaying the peak temperature"), with O'Hara col.4 11.25-26 ("The internal body temperature ... is displayed on the LCD."); compare'205 patent claim 3 ("the radiation sensor is a thermopil'), with O'Hara col.3 11.39-40 ("an infrared sensitive thermopile detector"); compare'205 patent claim 4 ("sounding an audible tone from the radiation detector to indicate detection of peak radiation"), with O'Hara coI.l3 ll.l1-13 ("the audio indicator is energized to signal completion of the temperature reading process");
compare'205 patent claim 5 ("the biological tissue is scanned with movement of the radiation detector"), with O'Hara col.12 11.59-61 ("The user then inserts the speculum covered probe into the external ear canal using moderate pressure.").
view atarget of biological
surface tissue; a temperature sensor
ambient temperature;
for
sensing
an electronic circuit coupled to the thermopile and temperature sensor and responsive to the voltage across the thermopile and the temperature sensed by the sensor to provide an indication ofan internal temperature within the biological tissue adjusted for the ambient temperature to which the surface
tissue is exposed; and a dßpløyfor providing an indication of the internal temperature. '813 patent col. 14 11.50-63.
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SAAT argues that its device does not possess "a display for providing an indication of the internal temperature" as recited in the claim. The district court construed "intemal temperature" to mean "temperature of the region existing beneath the surface of the biological tissue targeted for measurement." Claim Construction Order at 10. Neither SAAT nor Exergen challenges the construction of "internal temperature." Moreover, because SAAT's device targets the patient's forehead area for measurement, it is undisputed that the relevant "internal temperature" here is the temperature of the temporal artery beneath the skin of the forehead. SAAT's device, however, measures infrared radiation from the patient's forehead to calculate and display a digital readout of the patient's oral temperafitre, which is different from (and typically lower than) the patient's temporal artery temperature. Although Exergen told thejury that "an oral temperature is an internal temperature," J.A. 188 (ll9:21-22), Exergen now retracts that statement and acknowledges that the "intemal temperature" here is "the temperature of the temporal artery beneafh the skin of the forehead that is targeted," Pl.-Cross Appellant's Br. 35 (emphasis added). For these reasons, SAAT argues that its device does not infringe. *6 Exergen responds that oral temperature, while not itself an internal temperature, is nevertheless an "indication" of internal temperature because the two temperatures can be compared and correlated to one another in a clinical lookup table. Exergen further argues that SAAT did not seek any particular construction of the term "indication" and thus SAAT has waived its attempt to construe "indication" to mean "reading."
arriving at the internal temperature. Id. 6346 (184:8l0 (Dr. Pompei testifring with respect to claim 7 that "[w]hen scanning the surface of the skin, then the temperature that I display here is the temperature
underneath, somewhere inside that tissue")).
We further decline to find waiver against SAAT in view of Exergen's misleading statement to the jury that "an oral temperature is an internal temperature" in the context of a forehead thermometer-a statement that directly contradicts the district court's earlier construction of "internal temperature." See Claim Construction Order at 10. Once a district court has
[l2]
construed the relevant claim terms, and unless altered
by the district court, then that legal determination
governs for purposes of trial. No party may contradict the court's construction to a iurv.
Because it is undisputed that SAAT's device possesses a display for providing a reading of oral temperature rather than the temperature of the temporal artery beneath the skin of the forehead, the device cannot infringe claim 7 of the '813 patent. We therefore reverse the jury's finding that this patent is infringed. B. The'685 Patent
The
jury found that SAAT actively
fringement of claims
We observe that
it is Exergen, not SAAT, which
seeks to change the ordinary meaning of "indication" that was given to the jury. Exergen's own expert and
co-inventor on the '813 patent, Dr. Pompei, testified on direct examination that the phrase "a display for providing an indication" in claim 7 means that "[o]n the display it reads a temperature that is-you know, is
the internal temperature." J.A. 6346 (184:13-14 (em-
phasis added)). His testimony made clear that the number shown on the display must itself be the value of the internal temperature; it cannot be some other value requiring fuither (mental) computation before
Inducement requires a threshold finding of direct infringement. Because Exergen presented no evidence of any "specific instance of direct infringement," Exergen was required to show that "the accused device necessarily infringes the patent in suit." ACCO Brands. Inc. v. ABA Locl
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