The Pitfalls of Generalized Evidence on Infringement Claims

Case: L & W, Inc. v. Shertech, Inc>., No. 06-1065, 06-1097 (Fed Cir. December 14, 2006)

The One Sentence Summary: The Federal Circuit rejected the parties' over-generalized analysis and evidence in reviewing an award of summary judgment on infringement.

What They Were Fighting About: L&W had filed a declaratory action seeking judgment that its product did not infringe Shertech’s patent for heat shields composed of metal plates separated by a “standoff.” The district court found infringement on summary judgment; the jury then rendered a special verdict finding all but one of the claims in the patent invalid. A bench trial was held on L&W’s claim for inequitable conduct, which the district court rejected.

Federal Circuit Holdings:

• The Federal Circuit first reviewed the finding that L&W’s product contained "standoffs," as described in Shertech’s patent, a term the district court had construed (without objection by the parties) as “a projection that either separates or has the potential to separate.”
  
• The Federal Circuit rejected the finding that L&W had acknowledged that embossments in its product separated the layers in the heat shields, and thus were "standoffs." That finding was partly based on an L&W patent application, but while the application identified some situations where the limitation might be met, it did not admit that the accused products had those characteristics, or would operate under the conditions discussed in the application. The Federal Circuit was unwilling to rule that this was an admission.
  
• It then reviewed evidence from Shertech's expert witness, who had testified in general terms about heat shields, and also about one L&W product. The court held that evidence did not establish infringement as a matter of law because the testimony did not refer to products with the same characteristics of the accused L&W products.
  
• The expert also analyzed an L&W product he claimed was “typical,” but this evidence was of marginal value at best, in part because he did not explain why it was typical. However, L&W had itself relied on a generalized argument to rebut the expert's argument, which the Federal Circuit found unconvincing. Had the parties not taken an all or nothing position, and instead raised claims going to specific products, the Federal Circuit observed that infringement might have been found, but it was unwilling to rule on an argument the parties themselves had not raised.
  
• Reviewing L&W’s attack on the jury verdict, the Federal Circuit, relying on Sixth Circuit precedent, held objection was waived, notwithstanding they claimed to have had only six minutes from the return of the verdict to the jury’s discharge; it also declined to apply a “plain error” exception to the waiver rule.
  
• The Federal Circuit also rejected an argument that the jury’s special verdicts were “fatally inconsistent” because it reached different conclusions on the validity of two claims that L&W argued were indistinguishable. The Federal Circuit distinguished the claims, because one required the edges of the planar sheets to be fixedly joined at the edges before being subjected to in-plane stress, while the other claim did not specify the sequence of steps. Thus the verdicts were not inconsistent.
  
• The Federal Circuit rejected an anticipation argument raised by L&W that was partly based on a patent for a heat shield in Jeeps that was bent after the sheet edges were hemmed, distinguishing that patent, in part, because it described sheets there were scored, so that the bending did not necessarily cause stress. Shertech's patent required that the metal plates be stressed.
  
• Finally, the Federal Circuit rejected L&W’s inequitable conduct argument, finding no persuasive evidence warranting a finding of error in the district court’s conclusion that there was an absence of intent to deceive, a necessary element of inequitable conduct.