August 15, 2012) Before DYK, MOORE, AND O'MALLEY. Appealed ... Meyer filed
suit against Bodum alleging infringement of two patents, both relating to.
CLAIM CONSTRUCTION INFRINGEMENT (PRECEDENTIAL) MEYER INTELLECTUAL PROPERTIES LIMITED v. BODUM, INC. , Appeal No. 2011-1329 (Fed. Cir. August 15, 2012) Before DYK, MOORE, AND O'MALLEY. Appealed from N.D. Ill. (Judge Shadur). Background: Meyer filed suit against Bodum alleging infringement of two patents, both relating to methods for frothing liquids. Generally, the claims of each application recite a first step of "providing a container," followed by subsequent method steps. During claim construction, neither side asked the district court to construe "providing a container." Meyer moved for summary judgment, alleging that because Bodum provided its alleged infringing frothers with instructions for their use, Bodum induced others to infringe. In a second motion, Meyer moved that the sale of certain frothers constituted direct infringement by Bodum. Bodum responded with, among other defenses, that (1) Bodum could not be liable for inducement to infringe because no single party could perform all steps of the patented claims, and (2) Meyer did not offer any evidence that either Bodum itself, or its customers, performed each step of the method. The district court granted Meyer's motions, and Bodum ultimately appealed. Issue/Holding: Did the district court err in granting Meyer's motions for summary judgment? Yes, reversed, vacated and remanded. Discussion: On appeal, Bodum argued that neither it, nor its customers, could be a direct infringer, because direct infringement of a method claim requires a showing that every step of the method has been practiced by a single party, and Bodum only practiced the first step of the claim, while its customers practiced the remaining steps. Bodum argued it could not be liable for inducement to infringe, because inducement first requires a showing of direct infringement. Bodum also argued that there was insufficient evidence in the record to establish direct infringement. The Federal Circuit noted that "providing" had not been construed by the district court, but concluded enough evidence existed in the record to take the unusual step of construing the term for the first time on appeal. The Federal Circuit concluded that "providing" was not limited to supplying, and a customer could "provide" the container by taking it out of storage and preparing it for use. However, the Federal Circuit decided the district court's granting of summary judgment was improper, because the record contained insufficient evidence to support a finding of direct infringement. Specifically, the Federal Circuit argued that Meyer did not introduce any credible evidence that either Bodum or its customers practiced the claimed method in the U.S. In addition, the district court's reliance on an assumption that Bodum must have tested its products in the U.S. was improper, because it was not based on any actual evidence in the record. On another issue, the Federal Circuit held that the district court's refusal to allow certain evidence regarding obviousness at trial was prejudicial. Proper notice was given in the record, and thus it was improper to exclude the evidence.
JVF
