Fresh From the Bench: Latest Federal Circuit Court Case

CASE OF THE WEEK

Littelfuse, Inc. v. Mersen USA EP Corp., Appeal No. 2021-2013 (Fed. Cir. Apr. 4, 2022)‎

Our Case of the Week focuses on the issue of claim construction, and, more specifically, the doctrine ‎of claim differentiation. ‎

The patent at issue was directed to a “fuse end cap for providing an electrical connection between a ‎fuse and an electrical conductor.” The patent described three embodiments of end caps: a “machined ‎end cap,” a “stamped end cap,” and an “assembled end cap.” The first two may be made from a single ‎piece of material that is either machined or otherwise formed into the end cap. The last is made from ‎two separate pieces of material.‎

By Nika Aldrich

ALSO THIS WEEK

Roche Diagnostics Corporation v. Meso Scale Diagnostics, LLC, Appeal Nos. 2021-1609, -1633 (Fed. Cir. ‎April 8, 2022)‎

In an appeal from a district court decision, the Court addressed a licensing dispute in a lengthy opinion ‎covering numerous legal and factual issues. Roche filed for declaratory judgement for non-‎infringement of patents, the rights to which Meso claimed to hold via an exclusive license. Meso ‎counterclaimed for infringement. The jury found that Meso held an exclusive license to the asserted ‎patent claims and that Roche directly infringed one claim, induced infringement of three claims, and ‎did so willfully. The district court granted Roche judgement as a matter of law on willfulness, denied ‎Meso’s motions to enhance damages, and granted Roche’s request for a finding of non-infringement ‎on three additional patents, due to their being compulsory counterclaims that Meso failed to bring in ‎its counterclaim. Given insufficient reason to overturn the district court’s finding that the patents-in-‎suit were within the scope of rights licensed exclusively to Meso, the Federal Circuit affirmed on direct ‎infringement. On induced infringement, the Federal Circuit reversed the district court on both the ‎intent and inducing acts prongs. The Federal Circuit agreed with Roche that, because the intent ‎standard for induced infringement is similar to the intent standard for willfulness and enhanced ‎damages, the same facts that led to JMOL on willfulness and denial of enhanced damages should have ‎led to JMOL on induced infringement. The Federal Circuit also agreed that, although the induced ‎infringing acts occurred during the six-year window prior to suit, because the acts that induced the ‎infringing acts occurred before the six-year window, the induced acts prong was not met. Because the ‎Federal Circuit reversed on induced infringement, it vacated for a new trial on damages. The Federal ‎Circuit also vacated the non-infringement finding as to the three additional patents, agreeing with ‎Meso that a counterclaim that is compulsory but not brought is barred in subsequent actions, but not ‎in a present action. The Federal Circuit did not reach the question of whether Roche’s complaint was ‎too generic to trigger the compulsory counterclaim rule, saving that determination for any district court ‎called to hear a subsequent infringement action by Meso concerning the additional patents. In dissent, ‎Judge Newman argued that Roche cannot infringe patents it owns, and, detailing the complicated ‎history of the patents-in-suit, that Roche had owned the patents since 2007.‎

The opinion can be found here.‎

By Tyler Hall

Edited by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt

Contributor: Tyler Hall