In our Case of the Week, the Federal Circuit issued a wide-ranging opinion following three previous appeals in the same case and a jury trial on remand.
The patents concern security over digital objects in documents. The claims are method claims. TecSec sued a number of companies, including
The case then proceeded against Adobe and other defendants. The parties stipulated that Adobe did not infringe under the court's claim construction, and the court entered a judgment of noninfringement for Adobe. TecSec then appealed, and the Federal Circuit reversed that claim construction. Sixteen days later, in
On remand, Adobe then moved for summary judgment of noninfringement, which was granted. That triggered a third appeal, and the Federal Circuit reversed again.
Back at the district court a fourth time, the case eventually went to trial. In advance of trial, Adobe stipulated to a single instance of direct infringement by one of its employees using Adobe's software. Adobe moved for a motion in limine to preclude TecSec from raising any allegation of induced infringement or willful infringement between
At trial, TecSec stipulated to a failure to mark its products with the patent, thus precluding any claim of damages prior to 2010. Trial was limited to direct infringement from 2010-2013, induced infringement from 2010 to
Following post-trial motions, the district court reduced the damages award to zero dollars. The district court held that the damages evidence at trial was relevant only to an induced infringement analysis, and that no evidence had been supplied concerning direct infringement by Adobe. TecSec appealed both the decision concerning the decision to preclude its induced infringement claim from 2011-2013 and also the district court's reduction of its damages award.
Induced Infringement and Willfulness
The Federal Circuit reversed on the district court's decision to strike the induced infringement claim between 2011 and 2013. The Court held that, while induced infringement requires intent, which could be overcome based on a prior court decision, that does not foreclose a trial on the issue. Intent is a fact issue, and is for the jury to decide. Relying on Cheek v.
The Court noted that motions in limine are appropriate for excluding evidence. But that is entirely different from striking an entire theory of liability. In terms of the prejudice argument for keeping out the theory of liability, the Federal Circuit put it back on the district court to avoid the prejudice and jury confusion issues the district court cited, through jury instructions or otherwise.
The Court remanded for further proceedings on the issue of induced infringement.
Damages
The Federal Circuit affirmed the district court's damages award, though with a remand on the induced infringement claim, the damages issue will need to be revisited. With a stipulation of direct infringement, TecSec argued that Section 284 entitled it to a non-zero royalty. The Federal Circuit has held as much before. But here, the Court held that there was zero evidence in the record to support any royalty amount, and therefore a zero dollar award was appropriate.
Other Issues
In its 31-page ruling, the Court also addressed issues concerning jury instructions, evidence issues, and issued a lengthy opinion finding the patents not ineligible under Section 101.
The opinion can be found here.
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ALSO THIS WEEK
In this precedential Order, the Federal Circuit denied a stay of its mandate, pending the filing of a certiorari petition, from its controversial decision finding claims directed to a method of manufacturing driveline shafts patent-ineligible under 35 U.S.C. § 101. The Court agreed that patentee
The opinion can be found here.
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