Withholding of Information from Opinion Counsel Allows Finding of Willful Infringement

Case: nCube Corp. v. Seachange Int'l, Inc., No. 03-1341, 03-1366 (Fed Cir. 1/9/06)

The One Sentence Summary: A jury verdict of willful infringement was affirmed in light of evidence that defendant withheld information from opinion counsel that had rendered post-suit non-infringement opinion.

What They Were Fighting About: The Federal Circuit panel affirmed claim construction rulings and jury findings of infringement in a patent infringement action involving network communications.

Federal Circuit Holdings:

• The district court properly construed the patent term “upstream manager” by refusing to import limitations from other claims as proposed by defendant. The term was not so amorphous as to require recourse to the specification for interpretation.


• The jury’s infringement verdict was adequately supported by Plaintiff’s presentation of uncontradicted expert witness testimony that defendant’s system included an infringing “upstream manager”


• Jury had adequate evidence to find willful infringement despite post-suit non-infringement opinion when there was evidence that information was withheld from opinion counsel in rendering opinion.


• Jury’s finding of indirect infringement was supported by evidence that defendant knew that its customer would use defendant’s product in an infringing combination.


• Award of attorneys’ fees against defendant was proper where defendant deliberately copied the invention without investigating the scope of the patent.


• Plaintiff failed to establish infringement by the doctrine of equivalents because it failed to proffer evidence and argument regarding the doctrine.