Infringement: A term which is very common in patent research and law forms. i.e. the action of breaking the terms of a law, agreement, etc.; violation.

1. Case Studies
Presented by
–Aesan
Prasad Patel

2. PROMEGA CORPORATION
(plaintiff)
Vs
LIFE TECHNOLOGIES
CORPORATION (Defendant)
Case 1

3.  Promega Corp. (Promega) was the exclusive licensee of U.S. Re. No. 37,984
referred by the Court as the “Tautz patent”
 Tautz patent kit contains five components including Taq polymerase
 Petitioner Life Technologies Corp. (Life Technologies) manufactured genetic tests.
The Tautz patent was licensed for the manufacture and sale of kits for use in certain
licensed worldwide
 From 2006 through 2012, Life sold genetic testing kits designed to detect the
presence of “short tandem repeats” (STR), which are repeating sequences of
DNA that are analyzed when profiling an individual’s DNA
 Life’s kits, referred to as “STR kits,” were assembled in the United Kingdom
Background
Source: http://www.cafc.uscourts.gov/sites/default/files/opinions-
orders/13-1011.Opinion.11-9-2017.1.PDF

4.  Pretrial Proceedings: Promega moved for a ruling that Life’s accused products
meet all of the elements of the asserted claims of the Tautz patent. Life did not
challenge this assertion. Therefore, the district court granted Promega’s motion.
 Trial: The case proceeded to a jury trial. Promega described Life’s total worldwide
sales of the accused products during the pertinent time period amounted to
$707,618,247. Promega elicited testimony from Mr. Sandulli
 Post-Trial Proceedings:
1. Life’s JMOL Motion
2. Promega’s Motion for a New Trial
Proceedings in District Court
Source: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/13-
1011.Opinion.11-9-2017.1.PDF

5. Continue….
 Life’s JMOL Motion:
• Life filed a renewed motion for JMOL pursuant to Federal Rule of Civil Procedure
50(b), arguing that Promega “failed to prove the applicable damages for patent
infringement” and was therefore entitled to no damages
• Life contended that Promega was not entitled to any damages award because, inter
alia, the damages verdict could not stand because it was premised on a
misinterpretation of § 271(f)(1),
 Promega’s response focused on preserving the entirety of the damages verdict,
arguing, that all of the accused products infringed under § 271(f)(1) because all of
the products included the Taq polymerase component, which qualified as a
“substantial portion” of each of the accused products

6.  The U.S. Supreme Court framed the key issue for consideration as “whether the
supply of a single component of a multi-component invention is an infringing act
under 35 U.S.C. §271(f)(1).”
 U.S.C. § 271 (f) (1)
Whoever without authority supplies or causes to be supplied in or from the United
States all or a substantial portion of the components of a patented invention,
where such components are uncombined in whole or in part, in such manner as to
actively induce the combination of such components outside of the United States in
a manner that would infringe the patent if such combination occurred within the
United States, shall be liable as an infringer.
The Court’s Analysis
Source: http://www.cafc.uscourts.gov/sites/default/files/opinions-
orders/13-1011.Opinion.11-9-2017.1.PDF

7. • For the reasons above, we affirm the district court’s grant of Life’s motion for
judgment as a matter of law and denial of Promega’s motion for a new trial.
• Damage cost- No cost
AFFIRMED
Source: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/13-
1011.Opinion.11-9-2017.1.PDF
CONCLUSION

8. TWO-WAY MEDIA LTD.(Plaintiff)
Vs
COMCAST CABLE
COMMUNICATIONS, LLC (Defendant)
Case 2

9.  The patents-in-suit are related as a series of continuation applications, and thus
share substantially the same specification.
 U.S. Patent No. 5,778,187 (“’187”) issued first, followed by U.S. Patent Nos.
5,983,005 (“’005 patent”), then 6,119,163 (not at issue here), then 6,434,622 (“’622
patent”), and then 7,266,686 (“’686 patent”).
Background

10. The Claimed Invention
 A method for transmitting message packets over a communications network
comprising the steps of:
 converting a plurality of streams of audio and/or visual information into a plurality
of streams of addressed digital packets complying with the specifications of a
network communication protocol
 for each stream, routing such stream to one or more users, controlling the routing
of the stream of packets in response to selection signals received from the users,
and
 monitoring the reception of packets by the users and accumulating records
that indicate which streams of packets were received by which users, wherein
at least one stream of packets comprises an audio and/or visual selection and
the records that are accumulated indicate the time that a user starts receiving
the audio and/or visual selection and the time that the user stops receiving the
audio and/or visual selection.

11.  The district court granted Appellees’1 motion for judgment on the pleadings and
held that the ’187 patent, ’005 patent, ’622 patent, and ’686 patent were ineligible
under § 101
 Two-Way Media argued before the district court that Appellees’ motion was
premature
 Appellees agreed that the district court should adopt Two-Way Media’s claim
constructions, but argued that the constructions did not alter the § 101 analysis
 The '187 and '005 patents are directed to the abstract idea (T>C>R>M>A)
 The District Court found no evidence that the claims actually recite the
architecture described in the patents' specification. Accordingly, the District
Court found that the claims did not include significantly more than this
abstract idea, and therefore the'187 and '005 patents were ineligible under §
101
District Court Proceedings

12. Federal Circuit Review
 Two-Way Media complained that the District Court had "erred by oversimplifying
the claims down to merely their preamble and failing to recognize the claims solve
technical problems.“
 Two-Way Media asked the Court to look to the specification to further flesh out
the details of the invention that were not actually claimed.
 Court wrote that "[w]e look to whether the claims in the patent focus on a
specific means or method, or are instead directed to a result or effect that
itself is the abstract idea and merely invokes generic processes and machinery.
 Addressing claim 1 of the '187 patent, the Court criticized its "result-based
functional language

13.  As a result, it is still very difficult to predict whether any given set of claims will be
found patent-eligible.
 We have considered Two-Way Media’s other arguments but do not find them
persuasive. For the foregoing reasons, we affirm the district court’s judgment that
the ’187 patent, ’005 patent, ’622 patent, and ’686 patent are ineligible under § 101.
AFFIRMED
Conclusion

14. PRESIDIO COMPONENTS, INC.,
(Plaintiff)
Vs
AMERICAN TECHNICAL CERAMICS
CORP., (Appellee)
Case 3

15.  Presidio’s suit against ATC, filed on September 2,2014, alleged infringement of
U.S. Patent No. 6,816,356 (“the ’356 patent”)
 The ’356 patent claims a multilayer capacitor design and teaches a multilayer
integrated network of capacitors electrically connected in series and in parallel
Background

16. Claim 1.
A capacitor comprising:
 a substantially monolithic dielectric body;
 a conductive first plate disposed within the dielectric body;
 a conductive second plate disposed within the dielectric body and forming a capacitor
with the first plate;
 a conductive first contact disposed externally on the dielectric body and electrically
connected to the first plate; and
 a conductive second contact disposed externally on the dielectric body and
electrically connected to the second plate, and the second contact being located
sufficiently close to the first contact in an edge to edge relationship in such
proximity as to form a first fringe-effect capacitance with the first contact that is
capable of being determined by measurement in terms of a standard unit.

17.  Presidio amended its district court complaint, alleging infringement of the ’356
patent claims 1, 3, 5, 16, 18, and 19 as amended by the reexamination certificate.
Presidio alleged that ATC’s 550 line of capacitors infringed the asserted claims.
 ATC defended by saying that the claims were indefinite
 The jury awarded Presidio $2,166,654 in lost profit damages.
 The district court thereafter rejected ATC’s contention that the asserted claims of
the ‘356 patent are invalid due to indefiniteness and denied ATC’s motion that
Presidio had failed as a matter of law to prove lost profits
 ATC appealed, challenging the district court’s determination that the claims were
not indefinite, the award of lost profits, and the award of a permanent injunction
District court proceedings

18.  The district court then held a jury trial. The jury returned a verdict finding direct
infringement and induced infringement of claims 1, 3, 5, 16, 18, and 19 of the
’356 patent by all of the accused products—ATC’s 550 line of capacitors
 In addition, the jury found that Presidio had proven by clear and convincing
evidence that ATC’s infringement of the asserted claims was willful
 Presidio cross-appeals the district court’s grant of summary judgment of absolute
intervening rights to ATC, which barred damages for the period before December
8, 2015, the date that the reexamination certificate issued.
 Under our post-Nautilus cases, a claim is not indefinite if a person of skill in the art
would know how to utilize a standard measurement method, such as insertion loss,
to make the necessary measurement.
 We affirm the district court’s entry of judgment rejecting ATC’s indefiniteness
challenge
Discussion

19. Continue…….
 On October 21, 2016, we granted a partial stay of the injunction until March 17,
2017 with respect to ATC’s customers that purchased infringing capacitors before
June 17, 2016
 To recover lost profits, the patentee bears the burden of proof to show a “reasonable
probability that, ‘but for’ infringement, it would have made the sales that were
made by the infringer.”
• The four-factor Panduit test requires the patentee to show: (1) demand for the
patented product; (2) an absence of acceptable, non-infringing substitutes; (3)
manufacturing and marketing capability to exploit the demand; and (4) the amount
of profit that would have been made.
• The district court granted ATC’s motion for summary judgment on the affirmative
defense of absolute intervening rights

20.  We affirm the district court’s finding of definiteness, grant of absolute intervening
rights, and denial of enhanced damages. We reverse the award of lost profits
because Presidio failed to show the absence of an acceptable, non-infringing
substitute.
 On remand, the damages award should be limited to a reasonable royalty, and a
new trial should be conducted as necessary to determine the reasonable royalty rate.
AFFIRMED IN PART, REVERSED IN PART,
VACATED IN PART, AND REMANDED
Conclusion