Precedential and Key Federal Circuit Opinions
1. PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. [OPINION] (23-1438, 10/2/24) (Moore, Taranto, Cecchi)
Moore, J. The Court reversed the denial of judgment as a matter of law of noninfringement and willfulness and also reversed the denial of a new trial on damages. Plaintiff’s infringement theory relied on establishing that the accused products could be reprogrammed to operate as claimed. But this was not an infringement scenario where customers could simply activate the infringing configuration. Customers did not have access to the screens plaintiff contended were necessary for the accused product to be reconfigured to operate in an infringing manner, and even with access, the expert only testified that he could have reconfigured the accused products, not that he was able to do so. Such testimony is not substantial evidence demonstrating infringement.
With respect to willfulness, plaintiff’s expert testimony violated 35 U.S.C. § 298 because the expert testified about defendant’s failure to perform a number of evaluation steps, such as a freedom to operate analysis. The remaining evidence—a patent matrix that tracked patents and indicated whether the patent was relevant for further evaluation—at most demonstrated knowledge of the asserted patents but was not sufficient as a matter of law to establish deliberate or intentional infringement.
Finally, the district court erred by permitting plaintiff to rely on conclusory expert testimony to support the entire market value rule. The patented technology was just one small component of one of the machines, and no other evidence supported the notion that this small component of just one portion of such a large system ever drove customer demand.
