Federal Circuit IP
NextStep, Inc. v. Comcast Cable Communications, LLC
Case No. 22-1815, Precedential, (Fed. Cir. Oct. 24, 2024)
Reyna, Taranto, Chen
Facts/Background:
- Nextstep sued Comcast alleging patent infringement of the ’009 patent which is directed to a “concierge device” that offers a streamlined approach for initiating technical customer support. Specifically, a device that initiates technical support in response to only “a single action” of the user.
- NextStep asserted that three different Comcast tools infringed. Each of these three tools requires a user to press a series of buttons on the smartphone’s display.
Issue: Did the expert testimony sufficiently support of infringement under the doctrine of equivalents?
Holding: No. The testimony did not include a particularized identification of what elements in the accused device are equivalent to the claimed limitation.
Analysis:
- Judgment as a matter of law is appropriate if the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue.
- Under the doctrine of equivalents, a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused product or process and the claimed elements of the patented invention.
- Because the test is to determine whether “the elements of the [accused] arrangement [are] substantially the same as the elements of the claimed arrangement,” a patentee must identify what element or elements in the accused device are equivalent to the claimed limitation.
Takeaways:
- Plaintiffs (or defendants pursuing an affirmative defense): Know the legal standard and make sure you tie your evidence to that standard (a good theme is not enough)
- Defendants: always remember to move for JMOL, at the appropriate time