United States: Adding Claim Limitations In Response To A Rejection Of Closely Related Claims Without Explanation Creates Estoppel Barring Assertion Of DOE

In Energy Transportation Group, Inc. v. William Demant Holding A/S, Nos. 11-1487, -1488, -1489 (Fed. Cir. Oct. 12, 2012), the Federal Circuit affirmed the district court's denial of a new trial or relief from judgment after a jury found William Demant Holding A/S, WDH Inc., Oticon Inc., Oticon A/S, Bernafon AG, Bernafon LLC, Widex A/S, and Widex USA, Inc. (collectively "Defendants") infringed U.S. Patent No. 4,731,850 ("the '850 patent").  The Federal Circuit also affirmed the district court's denial of Widex A/S and Widex USA, Inc.'s (collectively "Widex") motion for JMOL of no willful infringement of the '850 patent, and affirmed the district court's calculation of damages awarded to Energy Transportation Group, Inc. ("ETG").  The Federal Circuit further affirmed the district court's judgment of noninfringement of U.S. Patent No. 4,879,749 ("the '749 patent") on the basis that prosecution history estoppel barred the jury's finding of infringement under the DOE.   

The patents-in-suit, owned by ETG, are directed to technologies for reducing acoustic feedback in programmable digital hearing aids.  ETG filed suit against Defendants, alleging infringement of both the '850 patent and the '749 patent.  The district court denied Defendants' motions for JMOL of invalidity for lack of written description and anticipation and no infringement under the DOE for the '850 patent, and a jury determined that Defendants infringed the '850 patent and awarded damages to ETG.  The district court also denied Widex's motion for JMOL of no willful infringement of the '850 patent.  The district court granted Defendants' motions for JMOL of noninfringement of the '749 patent under the DOE.  All parties appealed. 

First, the Federal Circuit addressed claim construction of the '850 patent, which recited "a programmable filter," a "programmable delay line filter," or a filter that is "programmed" to reduce acoustic feedback.  The district court construed "programmed" to mean "provided with one or more values so as to produce a response," and Defendants asserted that the district court erred by not limiting "programmed" to require that the values in the claimed invention were "externally calculated" or were "fixed" to impart cancellation of acoustic feedback.  The Court found that nothing in the '850 patent claims indicates that the plain and ordinary meaning of "programmed" should be limited to external or fixed programming, and further, that the specification does not envision a filter with permanently "fixed" coefficients.  Therefore, the Court affirmed the district court's construction of the asserted claims.

"ETG has not overcome the presumption that the narrowing amendment was made to secure the patent[,] . . . [as the] prosecution history in this case shows that the claim limitation at issue was added in response to a rejection of closely related claims, and provides no other explanation for the limitation."  Slip op. at 27 (citation omitted).

Turning to the district court's denial of Defendants' motions for JMOL of invalidity of the '850 patent, on lack of written description, the Court noted that the trial record contained substantial evidence from which the jury could conclude that the '850 patent conveyed to one skilled in the art that the inventors were in possession of a programmable hearing aid that could use adaptive filtering for feedback cancellation at the time of filing.  On anticipation, the Court noted that the jury assessed the credibility of both sides' experts, and was entitled to credit the testimony of ETG's expert that the reference in question did not disclose a substantial reduction of feedback, as required by the claim.  Thus, the Court affirmed the district court's denial of Defendants' motion for JMOL of invalidity.

Next, the Court considered whether the district court erred in denying Defendants' motions for JMOL of no infringement under the DOE.  The Court agreed with the district court's finding that the jury had substantial evidence from which to conclude that Defendants' products met each of the disputed claim limitations of the '850 patent, either literally or under the DOE.  Further, the Court observed that while improvements in technology allowed Defendants' products to constantly recalculate filter coefficients using electronics located on the hearing aid, the accused devices nonetheless performed the same function in substantially the same way, with substantially the same result claimed by the '850 patent.  Thus, because Defendants also failed to demonstrate that the asserted range of equivalents would read on the prior art, the Court affirmed the district court's denial of Defendants' motions for JMOL of no infringement under the DOE.

Then the Court noted that Widex appealed the district court's denial of JMOL of no willful infringement.  But the Court further noted that ETG did not appeal the district court's denial of ETG's motions for enhanced damages and for attorneys' fees due to Widex's willful infringement of the '850 patent.  As no consequences flowed from the district court's decision, the Court declined to address the issue of Widex's willful infringement of the '850 patent.

The Court also examined the damages awarded to ETG due to Defendants' infringement of the '850 patent.  On appeal, Defendants challenged the district court's admission of the report from the German Federal Cartel Office ("Cartel Report") under Federal Rule of Evidence 403, arguing that the report's conclusions regarding the oligopolistic nature of the hearing aid market were unduly prejudicial.  The Court found that ETG relied on the facts presented in the Cartel Report regarding the hearing aid market and industry structure, and not the legal conclusion that the market was an oligopoly, to argue for damages at a higher royalty rate than that suggested by Defendants.  Thus, the Court held that Defendants had not shown that the district court had acted irrationally or arbitrarily in finding that the probative value of the Cartel Report outweighed any potential prejudice.

Defendants also sought a new trial on damages because ETG's expert used the 25 percent rule of thumb in his analysis of a reasonable royalty rate.  Because the jury adopted neither expert's damages analysis wholesale, but awarded lump-sum damages that equated to effective royalty rates in the range of 4-5 percent, the Court concluded that Defendants did not demonstrate that the damages award was outrageous or grossly excessive and that the district court did not err in denying a new trial.

The Court also addressed Defendants' challenge to the amount of the damages awarded to ETG, which Defendants asserted was calculated on a royalty base that included sales under the '749 patent.  Although the district court granted Defendants' motion for JMOL of noninfringement of the '749 patent, Defendants never requested reconsideration of the damages award, and the Court noted that it will not consider arguments raised for the first time on appeal.  Moreover, even if Defendants had not waived this argument, the Court noted that it cannot "correct" a damages figure by extrapolating a royalty rate from the jury's lump-sum damages award and multiplying that royalty rate by a revised sales base.  Moreover, the Court held that the district court did not abuse its discretion in this case by following the standard rule of awarding prejudgment interest.

The Court also addressed the district court's grant of Defendants' motions for JMOL of noninfringement for the '749 patent under the DOE.  Upon review of the prosecution history of the '749 patent, the Court observed that ETG narrowed the claimed method of cancelling feedback from one requiring only modifying frequency gain and unspecified "feedback characteristics" to one specifically requiring measurement of phase and amplitude.  The Court found that ETG had not overcome the presumption that the narrowing amendment was made to secure the '749 patent, as the prosecution history showed that the claim limitation at issue was added in response to a rejection of closely related claims, and provided no other explanation for the limitation.  Moreover, the Court noted that the difference between the phrase "determining the effect of phase and amplitude" and "measuring phase and amplitude" was "clearly foreseeable," as ETG used the "determining" language in the '850 patent.  Slip op. at 28.  Thus, the Court affirmed the district court's application of prosecution history estoppel to bar the assertion of infringement under the DOE by the accused devices.

Accordingly, the Court affirmed the district court's decisions in all respects.

Judges:  Rader (author), Plager, Linn

[Appealed from D. Del., Chief Judge Sleet]

Last Month at the Federal Circuit - November 2012

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions