by Dennis Crouch
Synopsis of this decision
Appellee: The argument proposed is hair-splitting and irrelevant to the purpose of the invention.
Federal Circuit: Hair-splitting is what we do best, and also barring wax noses.
Read more below . . .
CommScope Techs. v. Dali Wireless (Fed. Cir. 2021)
CommScope and Dali are competing in the wireless communications infrastructure market. Both of the parties are making distributed antenna systems that allow for seamless wireless communications within a wide area. CommScope has 30,000 employees and is a Goliath. Although Dali’s CEO Albert Lee has no sling+pebble, he does have a potential secret weapon. Lee is a former patent attorney. The two companies have been battling in court and before the PTAB for the past several years.
In 2019, CommScope sued Dali for patent infringement (asserting five different patents); Dali counterclaimed asserting two of its own patents. A jury agreed, and found that both sides were infringing. N.D.Tex. Chief Judge Lynn denied the cross-JMOL motions and entered judgment. Dali gets $9 million and CommScope gets $6 million and a permanent injunction against sales of particular distributed antenna systems. On appeal, the Federal Circuit has reversed in-part – finding no infringement of Dali’s ‘521 patent.
Here, the asserted method claim requires “switching a controller off” as part of a diagnostic training process. The accused device was shown to switch off feedback from the controller, but not the controller itself. Although the accused device achieves the same diagnostic results, it uses an approach that is not literally claimed. Dali called the distinction “hair-splitting” and “irrelevant in light of the purpose of the invention.” On appeal, the Federal Circuit concluded that hair splitting is what we do in the context of literal infringement. If the patentee wanted more nuance then it should have presented its case under the doctrine-of-equivalents.
Before the district court, Dali presented only a literal infringement case, and not a doctrine-of-equivalents alternative. Thus, Dali’s argument that the FlexWave switch/controller is effectively “nonoperating” because it is not passing a feedback signal of the power amplifier of interest is irrelevant because Dali failed to produce evidence below to show that the accused controller is literally nonoperating, as the district court determined was required by the claim.
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Patentees have to thread a narrow needle during infringement litigation. The claims must be broad enough to capture the accused infringing activity, but narrow enough to avoid the prior art. Although infringement and novelty are two separate considerations, they are tightly related. “That which infringes, if later, would anticipate, if earlier.” Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889). Often a defendant will attempt to show that its product is essentially the same as the prior art — and offer the conclusion that either (1) we don’t infringe or (2) the patent is invalid.
Here, the court bolstered its non-infringement conclusion by looking at the patentee’s arguments regarding anticipation. In particular, the patentee argued that the prior art reference (Wright) did not anticipate because it did not disclose turning-off the controller. The failing of the prior art asserted by the patentee lines up neatly with the failing of the infringement evidence asserted by the accused infringer. “Dali cannot simultaneously argue” both infringement and non-anticipation. Slip Op.
“This case falls squarely within the principle that a ‘patent may not, like a nose of wax, be twisted one way to avoid anticipation and another to find infringement.'”
Quoting Amazon (Fed. Cir. 2021). See also White v. Dunbar, 119 U.S. 47, 51 (1886) (“Some persons seem to suppose that a claim in a patent is like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express.”)
Justice Joseph Bradley penned his “nose of wax” metaphor in the 1886 decision of White v. Dunbar. By that time, the phrase was already well known. As an American example, the Connecticut Puritan Gershom Berkeley included the following quip in his 1692 book titled Will and Doom: “I think no man should make arbitrary laws, which, like a nose of wax or leaden rule, may be twisted which way a man will.” An earlier use of the idiom may be in Robert Burton’s 1621 book The Anatomy of Melancholy.
To see so many lawyers, advocates, so many tribunals, so little justice; so many magistrates, so little care of common good; so many laws, yet never more disorders . . . to see a lamb executed, a wolf pronounce sentence . . . Laws altered, misconstrued, interpreted pro and con, as the Judge is made by friend; bribed, or otherwise affected as a nose of wax, good today, none tomorrow …
Burton. The earliest pushed form appears to be a 1532 work by William Tyndale — arguing about the improper use of biblical scripture.