Patentee Cannot Use Inconsistent Claim Interpretations to Avoid Anticipation and Argue Infringement

CommScope Techs. LLC v. Dali Wireless Inc., Nos. 2020-1817, 2020-1818 (Fed. Cir. Aug. 24, 2021)

The Federal Circuit, considering only one patent on appeal, affirmed the district court’s denial of JMOL of invalidity and reversed the district court’s denial of JMOL of no infringement. The Federal Circuit focused on the patentee’s inconsistent interpretation of a claim limitation for purposes of invalidity and infringement.

The district court construed the claim limitation “switching a controller off” to mean that a controller itself was switched to a “nonoperating state.” A jury rendered a verdict of infringement and no invalidity under this construction. The district court then denied the accused infringer’s motions for JMOL of invalidity and no infringement.

After affirming the district court’s construction, the Federal Circuit held that substantial evidence did not support the jury’s verdict of infringement. Nothing in the record identified a controller switched to a “nonoperating state” in the accused product. Similarly, the prior art at issue did not disclose a controller in a “nonoperating state,” and the Federal Circuit affirmed the district court’s denial of JMOL of invalidity.

Of note to the Federal Circuit were the patentee’s inconsistent positions regarding “switching a controller off.” The patentee argued in its brief that the controller itself need not be in a “nonoperating state” when discussing infringement, but the patentee also argued that the patent-at-issue required the controller to be switched to a “nonoperating state” when defending the jury’s verdict of no invalidity. The Federal Circuit noted that the patentee could not twist the patent one way to avoid anticipation and another to find infringement.

Read the full decision here.