"[W]here the technology involved is easily understandable, expert testimony is not required."
On August 15, 2012, in Meyer Intellectual Props. Ltd. v. Bodum, Inc., the U.S. Court of Appeals for the Federal Circuit (Dyk, Moore, O'Malley*) reversed, inter alia, the district court's summary judgment that Bodum infringed U.S. Patents No. 5,780,087 and No. 5,939,122, which related to frothing milk, vacated the award of $906,487.56 in damages and attorney fees, and remanded. The Federal Circuit stated:
Where, as here, the asserted patent claims are method claims, the sale of a product, without more, does not infringe the patent. Instead, direct infringement of a method claim requires a showing that every step of the claimed method has been practiced. [W]e agree with Bodum that the district court's judgments of infringement as to both the Version 1 and Version 2 frothers suffer from the same deficiency: there was no evidence of direct infringement in the record. . . . In its decision granting Meyer summary judgment with respect to the Version 2 frothers, the district court [found] it unbelievable that "an established company such as Bodum would have placed Version 2 and later Version 3 on the market for public sale, and would have kept those products on the market for substantial periods of time, without having first confirmed for itself that each product would perform its allotted task . . . ." In other words, the court assumed that Bodum must have tested its products. Given this assumption, the court concluded that Bodum's use of the '122 Patent method "has been established as a matter of law." We find it troubling that the district court based its direct infringement analysis on what it assumed happened, rather than on actual evidence of record. This assumption contradicts our well-established law that a patentee must prove infringement by a preponderance of the evidence. And, by assuming testing without any evidence in the record, the court improperly drew an inference in favor of Meyer and against Bodum. Because factual inferences must be drawn in favor of the nonmoving party on summary judgment, we find that the district court's decision cannot stand.
Prior to trial, the district court ruled that Bodum could not introduce testimony from lay witnesses to expand the scope of prior art on which its expert relied. Although Bodum intended to have Jorgen introduce and authenticate a Bodum 3-Cup French Press at trial, the district court ultimately prohibited any such testimony on grounds that it was an impermissible attempt to "back-door" the court's prior orders excluding prior art.
On appeal, Bodum argues that the district court erred in refusing to let Jorgen testify to issues that were within his personal knowledge, including the Bodum 3-Cup French Press and catalogs and drawings depicting the features of that device prior to the filing of the applications that resulted in the patents-in-suit. In response, Meyer argues that the district court acted within its discretion in refusing to let Jorgen testify because uncorroborated testimony from interested parties is insufficient to invalidate a patent under the so-called Barbed Wire doctrine.
The "Barbed Wire doctrine" provides that "[c]orroboration is required of any witness whose testimony alone is asserted to invalidate a patent." [T]his requirement "arose out of a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another's patent." Bodum argues that the Barbed Wire doctrine does not apply here because: (1) the district court did not rely on it in excluding the testimony; and (2) Bodum is not relying on oral testimony alone to prove invalidity. We agree with Bodum on both points.
[G]iven the simplicity of the technology involved, the jury could have considered the Bodum 3-Cup French Press, other documents disclosed during discovery, and lay testimony to reach its decision regarding obviousness. This is not a situation where Bodum sought to have a lay witness give his own opinion regarding invalidity. . . . In these circumstances, we see no problem with having Bodum's CEO of thirty-six years testify to factual matters within his personal knowledge where those facts are supported by corroborating documentation.
Accordingly, we hold that the district court erred in granting Meyer's motion in limine barring Jorgen Bodum from testifying as to the Bodum 3-Cup French Press and the related drawings and catalogs. This error -- coupled with each of the district court's [other] evidentiary errors -- had the cumulative effect of preventing Bodum from presenting the substance of its obviousness defense. The district court's exclusion of Bodum's primary exhibits and related testimony resulted in a one-sided trial and we find that the court's errors were not harmless. On remand, the court should permit Jorgen to testify as to those matters within his personal knowledge with the corroborating documentation Bodum has identified and previously disclosed during discovery.
The jury found in favor of Meyer on the issue of willfulness. After the jury verdict, Bodum filed a renewed motion for JMOL that it did not willfully infringe the patents-in-suit. On March 14, 2011, the district court denied Bodum's motion in an oral ruling on the record and entered a minute entry to that effect. The court later granted Meyer's motion to enhance damages and award Meyer its attorney fees, stating that: (1) "the jury's finding of willfulness implies that Bodum was aware of Meyer's products and, as already indicated, Bodum copied those products in every relevant way"; and (2) there was "serious trial misconduct on Bodum's part" including that "Bodum moved to allow their lay witnesses to testify about asserted prior art that this Court had previously excluded because those items had not been designated as relevant prior art by Bodum's retained expert."
On appeal, Bodum argues both that the court erred in denying its motion for JMOL of no willful infringement, and that enhanced damages and attorney fees are not warranted. Given our decision to remand this case for a new trial to address infringement and invalidity, we vacate the jury's verdict of willfulness and the district court's decision denying Bodum JMOL that it did not willfully infringe the patents-in-suit. . . . Because we vacate the jury's finding of willfulness, we also vacate the district court's decision awarding enhanced damages to Meyer. With respect to attorney fees, the district court based its decision, at least in part, on the willfulness verdict and Bodum's alleged litigation misconduct in its presentation of evidence. Because we have herein reversed the district court's evidentiary rulings and vacated the willfulness verdict, we also vacate the award of attorney fees.
If you have questions about the material presented above, please contact Dr. Lawrence M. Sung (email@example.com or 202.861.1537) or any member of our Intellectual Property Team.
See information regarding Baker Hostetler's Patent Litigation and IP Prosecution and Portfolio Management practices.
Baker & Hostetler LLP publications are intended to inform our clients and other friends of the Firm about current legal developments of general interest. They should not be construed as legal advice, and readers should not act upon the information contained in these publications without professional counsel. The hiring of a lawyer is an important decision that should not be based solely upon advertisements. Before you decide, ask us to send you written information about our qualifications and experience. © 2012 Baker & Hostetler LLP