American Calcar, Inc. v. American Honda Motor Co., Inc.
651 F.3d 1318
| Fed. Cir. | 2011Background
- ACI asserted fifteen patents against Honda, with nine at issue on appeal.
- District court held '497, '465, and '795 patents unenforceable for inequitable conduct; granted noninfringement on several other patents and found '759 infringed.
- Jury found '497 invalid; '465, '795 not invalid; advisory verdict of no inequitable conduct for some patents.
- Notable Condition ('759) was upheld as valid by jury; Honda cross-appealed on JMOL of invalidity.
- District court found inequitable conduct based on withheld 96RL material and multiple credibility findings; later vacated and remanded some aspects.
- On appeal, Federal Circuit affirmed noninfringement rulings, reversed JMOL on '759 validity, vacated inequitable conduct ruling, and remanded for guidance under Therasense standards.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Inequitable conduct | ACI argues no clear and convincing evidence of materiality or intent. | Honda contends undisclosed 96RL info was material and intent to deceive shown by conduct. | Vacate inequitable conduct finding; remand for specific factual determinations. |
| Infringement of Car-Mail patents | ACI contends district court erred in claim construction narrowing 'messages' to car-mail format. | Honda asserts messages must be car-mail; accused Honda systems do not meet format. | Affirm noninfringement of Car-Mail patents. |
| Infringement of Radio patent | AC I argues 'source' includes multiple sources and doctrine of equivalents may apply to XM. | Honda argues 'source' is fixed broadcast source; single signal from Programming Center. | Affirm noninfringement; no doctrine of equivalents due to vitiation of claim limitation. |
| Infringement/Prosecution history estoppel for Service Provider patents | ACI asserts the district court erred in limiting 'in response to' and allowing equivalents. | Honda relies on cause-and-effect reading and prosecution history estoppel to bar equivalents. | Affirm noninfringement; prosecution history estoppel barred equivalents. |
| Invalidity of Notable Condition ('759) patent | Not applicable; ACI argues low likelihood of anticipation by Nihei/Mitsubishi. | Honda contends Nihei and Mitsubishi anticipate the claimed prompting limitation. | Cross-appeal reversed; Nihei anticipates the '759 claims; verdict invalid. |
Key Cases Cited
- Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (but-for materiality and specific intent required; no sliding scale)
- Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357 (Fed. Cir. 2008) (clear and convincing standard for intent; single most reasonable inference)
- In re Gleave, 560 F.3d 1331 (Fed. Cir. 2009) (anticipation and enablement; test for prior art)
- Graver Tank & Mfg. Co. v. Linde Air Prod. Co., 339 U.S. 605 (1950) (doctrine of equivalents foundations)
- Pavao v. Pagay, 307 F.3d 915 (9th Cir. 2002) (substantial evidence standard for jury verdicts in Ninth Circuit)