Expert Testimony Must “Connect the Dots” When Presenting Arguments Using Different Language From the Claims
On May 28, 2015, we reported on the Supreme Court’s decision in Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (2015) which reversed the Federal Circuit’s earlier decision and held that, inter alia, a reasonable belief of noninfringement is a defense to a claim of infringement by inducement but that belief of invalidity is not a defense. On remand from the Supreme Court, Cisco requested that the Federal Circuit retain the case (rather than remand to the district court for a new trial) and address Cisco’s remaining non-infringement arguments as to inducement. See Commil USA, LLC v. Cisco Systems, Inc., No. 12-1042, slip op. at 2-3 (Fed. Cir. Dec. 28, 2015). The Federal Circuit acquiesced, held that “substantial evidence does not support the jury’s finding that Cicso’s devices, when used, perform the ‘running’ step of the asserted claims,” and reversed the district court’s judgment of liability for induced infringement. See id. at 2.
At the district court, Commil argued that Cisco’s sales of the device in question induced its customers to infringe the method claims during operation of the device. Id. Initially, a jury found Cisco liable for direct infringement, but not for induced infringement. Id. Then, after a successful motion for a new trial on induced infringement, a second jury found Cisco liable for induced infringement and awarded Commil $63.7 million in damages. Id.
The patent-at-issue, U.S. Patent No. 6,430,395 (“the ‘395 patent”), is directed to “a method of providing faster and more reliable handoffs of mobile devices from one base station to another as a mobile device moves throughout a network area” which requires two steps: (1) “dividing” and (2) “running.” Id. at 4. In assessing whether Cisco was liable for induced infringement, the court adhered to the district court’s construction of the “running” step: “for each connection of a mobile unit with a Base Station, running at the Base Station a copy of the low-level protocol supporting only that connection and running at the Switch a corresponding separate copy of the high level protocol supporting only that connection.” Id. at 4-6.
Cisco argued, and the Federal Circuit agreed, that the “running” step is not performed when Cisco’s system is used “because its system employs a single copy of the protocol to support all the connected devices.” Id. at 5 (emphasis in original). Commil’s expert’s testimony did not convince the court, which noted that the testimony fell “far short of supporting the jury verdict here.” Id. The court found that Commil’s expert’s testimony that Cisco’s devices track “separate state” information for each device “did not provide substantial evidence to satisfy a limitation that requires running a separate protocol copy for each device.” Id. (emphasis in original). The court noted that Commil’s expert’s testimony failed to provide any evidence or reasonable support that tracking “separate state” information is the same as “running . . . a corresponding separate copy of the high level protocol” for each connection. Indeed, Commil’s expert ultimately conceded that Cisco’s device runs only one copy of the protocol for all connected devices.
The Federal Circuit’s recent Commil decision is illustrative of the impact that expert testimony has in patent litigation. Importantly, the inducement issue in Commil was reversed because Commil’s expert’s testimony concerning the term “separate state” was in no way connected to the district court’s construction of “running” which requires a “separate copy of the high level protocol.” The Commil decision is an important reminder that in presenting expert testimony, as well as in contentions, parties must be sure that their expert testimony is in line with the claim language and the claim construction ruling. Any departure therefrom could be detrimental.