The U.S. Court of Appeals for the Federal Circuit vacated and remanded summary judgment and held that a patent owner seeking summary judgment of infringement on a group of products (a "family of products") must make a prima facie showing of infringement for each accused product within the family. L&W, Inc., v. Shertech, Inc., Case Nos. 06-1065, -1097 (Fed. Cir., Dec. 14, 2006) (Bryson, J.).
L&W, Inc., a manufacturer of heat shields for automobiles, filed suit against Shertech seeking declaratory judgment of non-infringement. Shertech counterclaimed for infringement. The district court entered summary judgment of infringement based on findings that Shertech had effectually acknowledged infringement by showing that the accused products contained each disputed claim limitation and that L&W had failed to point to a genuine issue of material fact. Shertech appealed.
The Federal Circuit vacated and remanded the case. The Court found that the district court relied on the patent application filed by L&W and evidence from both parties’ expert witnesses. Although L&W had multiple products at issue, both parties approached infringement with an over-generalized "all or nothing" approach to infringement of the family of products and did not specifically analyze infringement as to each product. Shertech presented infringement evidence as to only one of the products and failed to specifically address the remaining products. L&W employees had admitted that the design in the patent application was "our design" and that various L&W products were "covered" by the application. The court, however, noted that these statements "fall short of admission" because "they are not clearly tied" to a specific product to make a prima facie showing of infringement.
In addition, Shertech’s expert witness presented general statements and observations about a heat shield’s structure and performance. Although the expert made some specific observations about one L&W product, this was not enough to justify an award of summary judgment of infringement against a family of products.
Similarly, the Court found that L&W failed to offer specific evidence to rebut Shertech’s expert witness on the few specific measurements he made and instead relied on evidence pertaining to its heat shields generally in an effort to show a genuine issue of material fact. The Court ruled that when a patentee with the burden of proof seeks summary judgment of infringement, it must make a prima facie showing of infringement as to each accused device before the burden shifts to the accused infringer to offer contrary evidence.
In this case, Shertech failed to present specific evidence of infringement as to each accused product within the family of products sufficient to sustain a grant of summary judgment. The court vacated the judgment of infringement and remanded for further proceedings.
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