Meyer Intellectual Properties Ltd. v. Bodum, Inc.
690 F.3d 1354
| Fed. Cir. | 2012Background
- Meyer owns the '087 and '122 milk-frothing patents derived from Brady's pre-patent work with Bodum in the 1990s.
- Bodum sold Version 1 frothers (with a spring-biased plunger) and later Version 2/3 frothers; Meyer alleged these infringe the method claims.
- The district court granted Meyer partial summary judgment for infringement (Version 1) and for direct and inducement infringement (Version 2), then later found willful infringement and awarded damages.
- Meyer moved in limine to bar certain prior art, and the court restricted evidence, including excluding Anders’ obviousness testimony and limiting prior art.
- At trial, the jury found the patents not invalid and Bodum's infringement willful; Meyer's enhanced damages and attorney fees were awarded.
- On appeal, the Federal Circuit reversed in part, vacated in part, and remanded for a new trial on infringement and invalidity, and for further rulings on evidentiary issues.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Infringement sufficiency for Version 1 and 2 | Meyer contends Bodum's products directly infringed and induced infringement under the providing/conduct steps. | Bodum argues no single party performed all steps; indirect infringement requires direct infringement by a party, and no proof shows Bodum or customers did so. | Infringement reversed; genuine issues exist about direct infringement by a single party and need remand. |
| District court evidentiary rulings on prior art | Limiting prior art to two references was improper given discovery disclosures and Anders’ report. | Prior art scope was appropriately narrowed to relevant references relied on for obviousness. | Evidentiary rulings reversed; remand for new trial on obviousness. |
| Exclusion of Anders' obviousness testimony | Anders' report contained a detailed obviousness theory linking prior art to the claimed invention. | Anders' testimony was conclusory and inadmissible under Rule 26. | Exclusion reversed; Anders' testimony properly admissible; remand for full obviousness defense. |
| Jorgen Bodum lay testimony and Barbed-Wire doctrine | Lay testimony corroborates prior art showing; Barbed-Wire not applicable to corroboration. | Barbed-Wire doctrine requires corroboration for invalidating a patent; lay testimony should be limited. | District court erred by excluding corroborating lay testimony; remand for trial with corroborating evidence. |
| Inequitable conduct defense | Inequitable conduct defense was properly excluded as unsupported. | Exclusion of inequitable conduct evidence prevented full defense. | Procedural error; remand to address inequitable conduct defense. |
Key Cases Cited
- i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010) (direct infringement requires all steps of a method be performed)
- Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (patent infringement facts and method claims require step-by-step proof)
- DSU Med. Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) (inducement requires knowledge and aiding infringement)
- Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363 (Fed. Cir. 2008) (Rule 26 expert disclosure requirements; evidentiary considerations)
- Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010) (simplified technology may render expert testimony unnecessary)