美国上诉法院最新专利间接侵权判例 | 大家一起追美剧

大家一起追美剧第5集

2019-04-08：Omega Patents, LLC v. Calamp Corp. (Fed. Cir. 2019)

本案中，美国联邦上诉法院援引了美国关于间接侵权的重要判例，确认被告间接侵权。诱导侵权必须以直接侵权为依据(Liability for inducement must be predicated on direct infringement.)。Omega认为CalAmp的客户直接侵犯了系统权利要求。 使用系统进行侵权，一方必须将发明投入使用，即控制整个系统并从中获益（To use a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it.）。一个人必须控制 （即使间接地）每个权利要求的组件并从中受益（A person must control (even if indirectly) and benefit from each claimed componen）。法院认为有证据表明被告的客户使用专利产品并从中获利，被告的客户可以构成直接侵权。

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Induced Infringement 

We next consider Omega’s claims that CalAmp induced direct infringement by CalAmp’s customers. 

a. Direct Infringement by CalAmp’s Customers 

“[L]iability for inducement must be predicated on direct infringement.” Limelight Networks, Inc. v. Akamai Techs., Inc., 572 U.S. 915, 921 (2014); see Enplas Display Device Corp. v. Seoul Semiconductor Co., 909 F.3d 398, 407 (Fed. Cir. 2018). Omega’s theory here is that CalAmp’s customers directly infringed the systems claims. CalAmp argues three separate theories as to why there were no predicate acts of direct infringement by CalAmp’s customers.

First, CalAmp argues that “Omega failed to identify even one instance of direct infringement” by CalAmp’s customers that could support liability for inducement. CalAmp, Open. Br. at 39. Omega’s theory of infringement was that the customers directly infringed when they used CalAmp’s products. “[T]o use a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it.” Centillion, 631 F.3d at 1284. “[A] person must control (even if indirectly) and benefit from each claimed component.”Intellectual Ventures I v. Motorola Mobility, 870 F.3d 1320, 1329 (Fed. Cir. 2017). Here, there was evidence from which the jury could infer that customers controlled and used the system and received the required benefits. See, e.g., J.A. 8780–87 (identifying customers using CalAmp products); J.A. 15943–45 (Omega’s technical expert testifying the asserted claims would be infringed by customer use of CalAmp’s products). Based on the record, we conclude that this theory does not warrant setting aside the jury verdict.

Second, CalAmp argues that Claim 12 of the ’876 patent and all asserted claims of the ’885 patent require a “device code.” Omega has recognized “[t]he claims . . . require ‘communication’ using a vehicle device code.” Omega Response Br. at 18. The district court defined “device code” to mean a “signal from a vehicle device,” but the court improperly declined to define the term “vehicle device.” J.A. 148–50. CalAmp seeks reversal or, in the alternative, a new trial for the judgment of infringement as to these claims because the district court’s failure to construe the term “vehicle device” in this context allowed Omega to argue infringement under an erroneous theory, namely that the LMU was a “vehicle device” that could send infringing “device codes.”5

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Third, CalAmp argues that there was no infringement of claim 12 of the ’876 patent and all of the asserted ’885 patent claims because its products do not satisfy the claim limitation “determining a match between a read device code and the stored device codes.” See ’876 patent, col. 12, ll. 30–31; ’885 patent, col. 11, ll. 22–24. Neither party sought construction of this term, and the jury was instructed to give the term its plain and ordinary meaning. This claim language refers to the process by which the multi-compatible controller determines which protocol to use in communicating with any particular vehicle and its devices. The controller first sends out a series of signals using different protocols and only signals that correspond to a vehicle device will elicit a response signal, which the controller uses to determine a match (i.e., determine the appropriate protocol to use for further communication).

CalAmp argues that there was insufficient evidence to support the jury’s verdict of infringement because “[n]o reading or matching is required” by CalAmp’s products. CalAmp Reply Br. at 11. Instead, after the LMU sends out signals using different protocols, “merely receiving a response [back from a vehicle device] is sufficient” to determine the appropriate protocol to use for further communication. Id. We conclude that, contrary to CalAmp’s argument, the plain and ordinary meaning of the term “determining a match” does not require any particular order of steps. Omega’s technical expert testified that the LMU operates by first sending out a series of signals based on stored device codes and then determines a match if it receives a response from a vehicle device based on one of those signals. See, e.g., J.A. 16014–18. This capability is consistent with the above claim language, and thus in this respect there was no error in the jury verdict. 

We affirm the jury’s verdict as to predicate acts of direct infringement by CalAmp’s customers for claims 1, 3, 4, 5, 14, and 16 of the ’876 patent. We vacate and remand for a new trial the issue of whether there were predicate acts of direct infringement for claim 12 of the ’876 patent and all of the asserted claims of the ’885 patent.

b. Inducement by CalAmp

We next consider CalAmp’s argument that it was entitled to JMOL of no inducement of all of the asserted claims of the ’876 patent and ’885 patent. CalAmp also argues, in the alternative, for a new trial on inducement for claims 1, 3, 4, 5, 14, and 16 of the ’876 patent as to which we have sustained the jury’s verdict of direct infringement by CalAmp’s customers.

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