Info-Hold, Inc. v. Muzak LLC
783 F.3d 1365
Fed. Cir.2015Background
- Info-Hold owns U.S. Patent No. 5,991,374 and asserts it against Muzak and AMTC in separate SD Ohio cases.
- The district court construed the term 'when a caller is placed on hold' and granted summary judgment to Muzak that no damages were recoverable and no induced infringement.
- Info-Hold amended claims during ex parte reexamination to add 'when a caller is placed on hold' to distinguish prior art.
- Haz enfield Assignment and Trusonic License and related licenses/agreements were argued as sources for reasonable royalty evidence.
- Expert testimony on damages was struck (Info-Hold relied on an expert using the entire market value rule and the 25% rule of thumb).
- The court ultimately granted final judgment for Muzak on damages, dismissed the case, and Info-Hold appealed on damages, claim construction, and induced infringement.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Damages: whether any reasonable royalty must be awarded when evidence exists for a non-zero rate | Info-Hold contends Georgia-Pacific factors must be applied and some damages awarded regardless of amount. | Muzak argues absence of admissible damages evidence supports zero damages. | Reversed: record supports potential non-zero royalty; remanded for damages analysis. |
| Induced infringement: whether there is sufficient knowledge or willful blindness to support summary judgment | Info-Hold shows Muzak had notice and knowledge to induce infringement. | Muzak lacked actual knowledge of infringement pre-suit and evidence of willful blindness was insufficient. | Vacated: issues of knowledge and willful blindness remain; remanded for fact-finding. |
| Construction of 'when a caller is placed on hold' | Should mean 'during the period' or possibly 'at the moment'; Info-Hold argues broader construction. | Construction should be 'at the moment' the caller is placed on hold. | Affirmed: district court's construction 'at the moment' is correct and supported. |
Key Cases Cited
- Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011) (rules for use of 25% rule and damages evidence in reasonable royalty analyses)
- Apple Inc. v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014) (zero royalty only where no genuine issue of material fact; nominal damages otherwise)
- Dow Chemical Co. v. Mee Indus., Inc., 341 F.3d 1370 (Fed. Cir. 2003) (§284 damages must be at least a reasonable royalty; court may consider Georgia-Pacific factors)
- Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011) (willful blindness standard for induced infringement knowledge)
- Microsoft Corp. v. DataTern, Inc., 755 F.3d 899 (Fed. Cir. 2014) (inducement requires knowledge or willful blindness of infringement)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (standard for claim construction and related issues)
- Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362 (Fed. Cir. 2012) (intrinsic record-based claim construction principles)
- Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249 (Fed. Cir. 2010) (claims interpretation requires giving effect to all terms)