Toshiba Corp. v. Imation Corp.
681 F.3d 1358
Fed. Cir.2012Background
- Toshiba sued Imation for infringing the '751 and '966 patents on DVD data recording technology.
- District court granted summary judgment of non-infringement for both patents, with a de minimis direct infringement claim dismissed.
- Unfinalized multi-session DVDs could be read in the recording device that created them; finalization or disc-at-once mode writes the test pattern and lead-out area.
- '751 focuses on a test pattern in the lead-in area; unfinalized discs lack the test pattern and lead-out area.
- '966 claims require identifying information in the lead-in/management region that represents the number of recording planes and uniquely identifies the recording plane; district court construed this with a “purpose” requirement.
- Majority holds the district court erred in the '966 construction and in granting non-infringement for '751 induced and contributory infringement, and remands for further proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether unfinalized DVDs constitute substantial non-infringing use for '751. | Toshiba argues unfinalized use is substantial and non-infringing. | Imation argues unfinalized use is non-substantial and non-infringing. | Partially remanded; genuine issues remain about substantiality and infringement. |
| Whether substantial non-infringing use bars induced infringement for '751. | Toshiba contends substantial non-infringing use precludes inducement. | Appellees argue distinction between theories; district court erred. | Court held that substantial non-infringing use does not preclude inducement; issues remain. |
| Claim construction of '966 claim 1—whether identifying information must pertain to the entire medium. | Toshiba argues plain-meaning scope reading; no “purpose” limitation. | Appellees argue proper construction includes identifying information for entire medium. | Majority rejects the district court’s purpose-based reading; claims read on single- and double-sided discs. |
| Whether dependent claim 5 narrows claim 1 by addressing number of sides per disc. | N/A | N/A | Dissent argues claim differentiation supports Side/plane interpretation; majority finds claim 1 broader. |
| Whether the district court erred in granting summary judgment of non-infringement for '966 as to single-sided discs. | N/A | N/A | Reversed-in-part; construction aligned with plain language; remand. |
Key Cases Cited
- Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317 (Fed. Cir. 2009) (substantial non-infringing use factors; frequency and practicality)
- i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010) (scope of substantial non-infringing use and claim construction considerations)
- Lucent Technologies v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (circumstantial direct infringement can support liability)
- Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010) (infringing mode must be actually used, not merely capable of)
- ACCO Brands v. ABA Locks Mfr. Co., 501 F.3d 1307 (Fed. Cir. 2007) (evidence of infringing use can be circumstantial; noninfringing use must be demonstrated)
- Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1364 (Fed. Cir. 2012) (plain meaning governs unless lexicography or disclaimer applies)
- CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) (claim interpretation cannot rely solely on embodiments)