Federal Circuit IP

Provisur v. Weber

By Lawrence R. Furan Published October 16, 2024

Case No. 23-1438, Precedential, (Fed. Cir. Oct. 2, 2024)

Moore, Taranto, Cecchi

Facts/Background:

  • Provisur sued Weber, alleging that Weber’s “SmartLoader” infringed the ’936 patent. Jury trial (W.D. Mo) found willful infringement.  Weber moved for judgment as a matter of law (JMOL) and a new trial, but the district court denied both motions.

Issues:

  • Infringement: if a device can be modified to infringe a patent, but was not actually configured to do so, does the device infringe?
  • Willfulness: can patentees use failure to obtain advice of counsel as an element of proof for willfulness?  
  • Damages: does the “entire market value” rule apply?

Holding:  no, on all counts.

Analysis: 

1. Infringement:

  • “An accused device may be found to infringe if it is reasonably capable of satisfying the claim limitations.” Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343 (Fed. Cir. 2001).
  • “But a device does not infringe simply because it is possible to alter it in a way that would satisfy all the limitations of a patent claim.” High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d 1551, 1555 (Fed. Cir. 1995). Emphasis added.
    • i. Provisur proffered no evidence that Weber’s customers could readily activate the allegedly infringing functionality.
    • ii. An expert testified that it was possible to modify it to infringe.
      • 1.But he had access to certain configuration screens that customers did not. He provided no evidence that it ever was configured in this way, nor that he was ever able to do so.

2. Willfulness: 35 U.S.C. § 298: [t]he failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.

3. Damages:

  • A necessary condition for using “an entire multi-component product” as the base is that the patentee proves the patented feature is the basis for customer demand. LaserDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d 51, 67 (Fed. Cir. 2012).
    • i. Provisur did not provide sufficient evidence that the allegedly infringing feature is the basis for customer demand.

Takeaway:

  • (1) If asserting that a device can be configured to infringe, have the expert actually do it.
  • (2) Lack of an opinion cannot be used to prove willfulness.
  • (3) To get damages on a larger product, the patented feature must drive demand.