Technology Information Law Blog by Charles Gideon Korrell

Tag: willfulness

  • Wonderland Switzerland v. Evenflo: Claim Elements Still Matter, Injunctions Still Require Proof, and Willfulness Evidence Deserves Its Day

    Wonderland Switzerland v. Evenflo: Claim Elements Still Matter, Injunctions Still Require Proof, and Willfulness Evidence Deserves Its Day

    The Federal Circuit’s decision in Wonderland Switzerland AG v. Evenflo Company, Inc. (Dec. 17, 2025) delivers a sweeping reset across several familiar but frequently contested areas of patent law: doctrine of equivalents limits, claim construction discipline, permanent injunction standards, and the evidentiary threshold for willfulness. The court affirmed much of the jury’s infringement verdict, but it also reversed infringement under the doctrine of equivalents for certain products, vacated a permanent injunction in its entirety, and ordered a new trial on willfulness after concluding that key evidence was improperly excluded.

    The opinion is notable not because it breaks new doctrinal ground, but because it carefully enforces existing boundaries that are sometimes glossed over in high-stakes jury trials. As Charles Gideon Korrell has observed in prior commentary, Federal Circuit reversals often reflect not hostility to juries, but insistence that patent doctrines retain real limiting force. This decision fits that pattern squarely.

    Background and Procedural Posture

    Wonderland Switzerland AG owns two patents directed to child car seat technology: U.S. Patent Nos. 7,625,043 and 8,141,951. Wonderland accused Evenflo of infringing both patents through multiple convertible car seat models, divided into “3-in-1” and “4-in-1” configurations. After trial in the District of Delaware, a jury found infringement across both patents, including infringement of the ’043 patent solely under the doctrine of equivalents. The jury declined to find willful infringement.

    Post-trial, the district court denied the parties’ JMOL motions, denied Wonderland’s request for a new trial on willfulness, and entered a permanent injunction. Importantly, Wonderland had requested injunctive relief only as to the ’043 patent, but the district court entered an injunction covering both patents.

    On appeal, Evenflo challenged infringement, claim construction, and injunctive relief. Wonderland cross-appealed the denial of a new trial on willfulness. The Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded.

    Doctrine of Equivalents Cannot Relocate Claim Elements

    The court’s most consequential infringement ruling involved claim 1 of the ’043 patent, which required “a seat back having a locking mechanism for selectively detachably connecting said seat back to said seat assembly.” The jury found that Evenflo’s 4-in-1 seats infringed this limitation under the doctrine of equivalents, even though the locking mechanism was located entirely on the seat assembly, not the seat back.

    The Federal Circuit reversed. Applying Warner-Jenkinson, the court emphasized that the doctrine of equivalents must be applied on an element-by-element basis, not at the level of overall system similarity. Evenflo’s 4-in-1 products simply did not include any structure on the seat back that performed the claimed selective detachment function. Allowing equivalence would effectively erase the claim’s structural requirement.

    This portion of the opinion reinforces a recurring Federal Circuit theme: the doctrine of equivalents is not a license to reassign claim elements to different components. Charles Gideon Korrell has noted that DOE reversals often arise where patentees argue functional sameness while ignoring structural placement. That strategy failed decisively here.

    The court vacated the damages award tied to the 4-in-1 seats as a result.

    Claim Construction: When the District Court Actually Does Its Job

    Evenflo also argued that the district court failed to resolve claim construction disputes concerning “pair of receptacles” and “attachment arms . . . for engagement” in the ’043 patent. The Federal Circuit rejected both arguments.

    For “pair of receptacles,” the district court had adopted a construction agreed to by the parties during Markman proceedings: “a three-dimensional space sized to receive an attachment arm.” Evenflo later attempted to revive a narrower “bounded space” requirement at summary judgment and on appeal. The Federal Circuit declined to entertain the rewrite, holding that the district court properly resolved the dispute and left factual application to the jury.

    Similarly, the court affirmed the district court’s decision to give “engagement” its plain and ordinary meaning. Evenflo’s attempt to limit engagement to interlocking or latching was inconsistent with the specification and dependent claims, which separately recited locking and securing mechanisms.

    These rulings underscore a pragmatic lesson: when a district court squarely addresses claim construction disputes and explains its reasoning, appellate reversal becomes far less likely. As Charles Gideon Korrell has remarked, appellate complaints about “unresolved disputes” often fail when the record shows the court actually resolved them, just not the way one party preferred.

    Integrated Components Can Still Be “Connected To”

    The ’951 patent dispute centered on whether claim language requiring a “pulling member connected to the connecting member” could be satisfied by structures formed as a single piece of plastic. Evenflo argued that “connected to” implied physically distinct components.

    The Federal Circuit disagreed, relying heavily on intrinsic evidence. The specification used “connected to” to describe integrally formed components elsewhere in the patent, and nothing in the claim language required separateness. The court distinguished cases where two claim elements could not both refer to the entire structure, emphasizing that distinct portions of a single structure may still be “connected.”

    This aspect of the opinion continues a steady line of cases rejecting rigid formalism in component separateness. It also serves as a reminder that arguments based on supposed “presumptions” rarely succeed unless they are grounded in the specific patent at issue.

    “Backrest” Means What the Patent Says It Means

    Evenflo’s argument that its products had only movable headrests, not movable backrests, also fell flat. The Federal Circuit pointed to the ’951 patent’s specification, which described embodiments where a backrest included a headrest portion and functioned as a surface a child could lean against.

    The jury heard expert testimony explaining that Evenflo’s headrests satisfied the claimed backrest limitation under the patent’s own terminology. That was substantial evidence. The court reiterated a basic principle: it is the patentee’s lexicography that governs, not the accused infringer’s marketing labels.

    Permanent Injunctions Still Require Evidence

    Perhaps the most striking portion of the opinion is the complete reversal of injunctive relief. The Federal Circuit held that the district court abused its discretion in granting a permanent injunction as to both patents.

    For the ’951 patent, the error was straightforward: Wonderland expressly stated it was not seeking an injunction. Granting one anyway was an abuse of discretion.

    For the ’043 patent, the problem ran deeper. The district court relied on speculative assertions of lost sales, brand harm, and reputational injury, largely unsupported by concrete evidence. Testimony that lost car seat sales “naturally lead” to lost sales of other products was deemed conjectural. Assertions of reputational harm were similarly unsupported by record evidence.

    Citing eBay, Apple v. Samsung, and Philips v. Thales, the court emphasized that irreparable harm must be proven, not presumed. Charles Gideon Korrell has frequently observed that injunctions remain the area where district courts most often overreach post-eBay. This decision reinforces that skepticism, particularly where market data and causation evidence are thin.

    Willfulness and the Excluded Email Chain

    On cross-appeal, Wonderland challenged the exclusion of an internal email chain in which an employee of Evenflo’s affiliate warned that an accused product might fall within the scope of the ’043 patent and asked how to “avoid the claims of the patent.”

    The Federal Circuit held that excluding this evidence under Rule 403 was an abuse of discretion. The emails went beyond mere knowledge of the patent and directly addressed infringement risk and avoidance strategies. Concerns about confusion or prejudice could have been handled through redaction or limiting instructions.

    Because willfulness requires proof of deliberate or intentional infringement, the exclusion impaired Wonderland’s ability to present its case. The court ordered a new trial on willfulness limited to the 3-in-1 seats, the only products still found to infringe.

    Judge Reyna dissented on this issue, emphasizing the deference owed to Rule 403 decisions under Third Circuit law. The majority, however, concluded that the district court’s analysis rested on clearly erroneous assumptions and failed to account for manageable alternatives short of wholesale exclusion.

    Takeaways

    This decision offers several practical lessons:

    • Doctrine of equivalents cannot be used to relocate claim elements.
    • Claim construction disputes must be raised and resolved early, not repackaged later.
    • Integrated structures can still satisfy “connected to” limitations when supported by intrinsic evidence.
    • Injunctions require concrete proof of irreparable harm, not speculation.
    • Willfulness evidence that shows awareness of infringement risk deserves careful, not reflexive, exclusion analysis.

    Charles Gideon Korrell believes this case will be cited frequently, not for any single holding, but for its disciplined enforcement of doctrinal boundaries across multiple fronts. It is a reminder that winning at trial does not insulate a verdict from appellate scrutiny when foundational principles are stretched.

    By Charles Gideon Korrell

  • Focus Prods v. Kartri Sales: When Restriction Practice Becomes Prosecution History Disclaimer

    Focus Prods v. Kartri Sales: When Restriction Practice Becomes Prosecution History Disclaimer

    The Federal Circuit’s decision in Focus Products Group International, LLC v. Kartri Sales Co., Inc. delivers a wide-ranging opinion that touches nearly every corner of intellectual property litigation: venue after TC Heartland, prosecution history disclaimer, multi-defendant appellate waiver, trademark standing, trade dress functionality, willfulness, and fee shifting. But at its core, the case stands as a cautionary tale about examiner-driven restriction practice and the long shadow it can cast over claim scope years later.

    The dispute arose from “hookless” shower curtains—products designed to hang directly on a shower rod using integrated rings with slits, eliminating the need for separate hooks. Focus Products and its related entities asserted three related utility patents, along with trademark and trade dress rights, against Kartri Sales Co. and its supplier Marquis Mills. After years of litigation in the Southern District of New York, the district court largely sided with Focus, entering summary judgment of patent infringement, finding trademark and trade dress infringement, determining willfulness, and awarding enhanced damages and attorneys’ fees.

    On appeal, the Federal Circuit affirmed some findings, reversed others, vacated substantial portions of the judgment, and remanded for further proceedings. The result was a sharply divided outcome between the two defendants and a detailed roadmap of how procedural and prosecution decisions can dictate substantive outcomes.

    Venue and the Cost of Delay After TC Heartland

    The opinion first addresses venue, rejecting the defendants’ attempt to escape the Southern District of New York under TC Heartland. Although TC Heartland made venue objections newly available, the Federal Circuit emphasized that such objections must still be raised seasonably. Here, the defendants waited nearly four months after TC Heartland—while continuing discovery and depositions—before objecting.

    The court distinguished earlier cases where venue objections were preserved promptly and litigation remained in its early stages. The lesson is straightforward: TC Heartland did not create an open-ended escape hatch. Delay and continued participation in litigation can forfeit venue challenges, even when the law changes mid-case.

    Restriction, Election, and the Birth of Disclaimer

    The most consequential portion of the decision concerns the ’248 and ’609 patents and the meaning of “ring.” During prosecution of the original application, the examiner issued a restriction requirement identifying multiple patentably distinct species. One species included rings with projections or fingers extending from the outer circumference; another species included rings with a flat upper edge.

    The applicant elected the projected-edge species and did not traverse the examiner’s characterization. When the applicant later attempted to include claims expressly reciting a flat upper edge, the examiner withdrew those claims as drawn to a non-elected species. The applicant again did not object and proceeded to allowance.

    Years later, Focus argued that the issued claims were broad enough to encompass flat-topped rings. The Federal Circuit disagreed. Reading the prosecution history as a whole, the court held that the patentee had clearly and unmistakably disclaimed rings with flat upper edges for the ’248 and ’609 patents by acquiescing in the examiner’s species demarcation.

    This was not a case of ambiguous silence. The examiner repeatedly enforced the boundary between species, and the applicant repeatedly accepted it. As the court explained, cooperation with the examiner’s demand to exclude a species—without traversal—can operate as an affirmative disclaimer, even absent express words of surrender.

    The continuation history reinforced that conclusion. When prosecuting the later ’088 patent, the applicant distinguished the earlier patents by adding a “flat upper edge” limitation to overcome a double patenting rejection. That amendment only made sense if the earlier patents did not already cover flat-topped rings. The Federal Circuit treated that prosecution history as confirming the narrowed scope of the earlier claims.

    Because the accused products used flat-topped rings, the court reversed the infringement findings for the ’248 and ’609 patents as to Marquis.

    The ’088 Patent and the Limits of Summary Judgment

    The outcome for the ’088 patent was more nuanced. The Federal Circuit agreed with the district court’s construction of “projecting edge” as “an edge that projects from the outer circumference of the ring.” But it found the infringement analysis insufficiently explained.

    The district court had concluded that a portion of the accused ring constituted a projecting edge, yet failed to articulate where the ring’s outer circumference ended and the projecting edge began. The Federal Circuit noted that the accused rings closely resembled embodiments in the specification that lacked any projecting edge at all.

    Without a clear analytical framework distinguishing circumference from projection, summary judgment could not stand. The court vacated the ’088 patent infringement finding for Marquis and remanded for a more rigorous analysis tied to the intrinsic record.

    Appellate Waiver and Divergent Outcomes

    One of the more unusual aspects of the case was the divergent outcome between Kartri and Marquis, despite their products being essentially identical. That divergence stemmed not from technical differences, but from appellate briefing strategy.

    The defendants filed separate opening briefs that attempted to divide issues between them. Marquis fully developed the patent arguments; Kartri devoted barely a page to them. When challenged, both defendants disclaimed any intent to rely on each other’s arguments—accepting the risk of waiver.

    The Federal Circuit took them at their word. Marquis preserved and won on the key patent issues. Kartri, by contrast, waived its patent non-infringement arguments through underdevelopment. As a result, infringement findings were reversed or vacated for Marquis, but largely affirmed for Kartri.

    This portion of the opinion is a stark reminder that appellate courts will not rescue parties from strategic choices about briefing. Identical facts do not guarantee identical outcomes when arguments are waived.

    Trademarks, Standing, and Ownership Proof

    The court also dismantled the district court’s finding that Focus had standing to assert the EZ ON trademark. Focus relied on a 2012 licensing agreement to show ownership, but the Federal Circuit carefully parsed the contract and found no transfer of trademark ownership before suit was filed.

    The agreement licensed HOOKLESS®, not EZ ON. Provisions concerning “Licensed Products” did not establish mark ownership, and a clause discussing assignment of later-developed intellectual property did not plausibly apply to trademarks through “reduction to practice.” Actual assignment of the EZ ON mark occurred years after the lawsuit began.

    Because standing must exist at filing, the Federal Circuit reversed the EZ ON trademark infringement finding outright.

    The court also vacated the HOOKLESS® trademark infringement finding, concluding that the district court’s likelihood-of-confusion analysis improperly focused on product similarity rather than mark-to-mark comparison in the marketplace context.

    Trade Dress and TrafFix Revisited

    Trade dress fared no better. The district court found Focus’s asserted trade dress non-functional based on its “neat and orderly” appearance and the availability of alternative designs. The Federal Circuit held that analysis incomplete under TrafFix.

    Where an expired utility patent claims the same features asserted as trade dress, functionality is strongly presumed. The district court failed to meaningfully compare the claimed trade dress elements with the features claimed in Focus’s expired patent. Without that comparison, Focus could not meet its burden to prove non-functionality.

    The trade dress infringement finding was vacated and remanded for proper application of TrafFix.

    Willfulness, Fees, and the Unraveling of Enhancements

    With large portions of the infringement judgment undone, the Federal Circuit also vacated findings of willfulness and the resulting enhanced damages. Notice of patent rights alone was insufficient, particularly where defendants articulated consistent non-infringement positions grounded in prosecution history. Similarly, trade dress willfulness could not predate notice of the asserted trade dress.

    The attorneys’ fee award was likewise vacated. While the district court did not abuse its discretion in deeming the case exceptional, the fee calculation failed to separate compensable work from claims on which Focus no longer prevailed.

    Takeaways

    This decision reinforces several practical lessons. Restriction requirements and elections matter, especially when untraversed. Acquiescence can shape claim scope just as powerfully as express disclaimer. Continuation practice can lock in those boundaries rather than erase them. Appellate briefing choices can determine winners and losers independent of product facts. And trademark and trade dress claims demand disciplined proof of ownership and non-functionality.

    As Charles Gideon Korrell notes, restriction practice is often treated as a procedural inconvenience, but Focus Products shows it can become substantive destiny. Charles Gideon Korrell believes that patent prosecutors should treat elections with the same care as claim amendments, assuming every concession may later be read as intentional surrender. And Charles Gideon Korrell observes that this case is also a reminder that appellate courts enforce waiver rules strictly, even when doing so leads to asymmetrical results.

    The Federal Circuit’s opinion is long, detailed, and unsparing. It rewards precision and punishes shortcuts—both in prosecution and in litigation.

    By Charles Gideon Korrell

  • Laboratory Corp. of America Holdings v. Qiagen Sciences, LLC: When “Identical” Means Identical—and the Doctrine of Equivalents Is Not a Jury Mulligan

    Laboratory Corp. of America Holdings v. Qiagen Sciences, LLC: When “Identical” Means Identical—and the Doctrine of Equivalents Is Not a Jury Mulligan

    The Federal Circuit’s decision in Laboratory Corp. of America Holdings v. Qiagen Sciences, LLC, No. 23-2350 (Fed. Cir. Aug. 13, 2025), offers a sharp reminder that not every jury verdict survives appellate scrutiny, particularly where infringement theories stretch claim language or rely on generalized expert testimony. In a sweeping reversal, the court vacated a Delaware jury’s willful infringement verdict covering two molecular diagnostics patents and directed entry of judgment as a matter of law (JMOL) of non-infringement for both. The opinion is a detailed roadmap for litigators navigating claim construction disputes, doctrine-of-equivalents proof, and the limits of “working together” theories of infringement.

    Charles Gideon Korrell believes the decision underscores a broader Federal Circuit trend: courts are increasingly unwilling to let juries paper over claim-scope problems or evidentiary gaps with broad narratives about technical similarity or system-level functionality.

    Background: Two Patents, Two Theories, One Jury Verdict

    The patents at issue, U.S. Patent Nos. 10,017,810 and 10,450,597, relate to methods for preparing DNA samples for sequencing using enrichment techniques. Both patents focus on polymerase chain reaction (PCR) workflows employing various primers to selectively amplify regions of interest within a DNA sample.

    Qiagen sold accused kits used in DNA sample preparation. After a five-day trial, the jury found that Qiagen willfully infringed the ’810 patent under the doctrine of equivalents and willfully and literally infringed the ’597 patent. The jury rejected Qiagen’s invalidity defenses and awarded approximately $4.7 million in damages. The district court denied Qiagen’s renewed JMOL motions, and Qiagen appealed.

    On appeal, the Federal Circuit reversed across the board, holding that no reasonable jury could have found infringement of either patent on the evidence presented.

    Claim Construction Is a Judicial Function, Not a Jury Question

    The court began with the ’810 patent, which required a “second target-specific primer” having a nucleotide sequence “identical to a second sequencing primer.” Qiagen’s accused primer was 19 nucleotides long, while the referenced sequencing primer was 34 nucleotides long. Labcorp argued that “identical” could include identity to a portion of the sequencing primer, and the district court permitted the jury to decide whether that interpretation was reasonable.

    That was error.

    Relying on O2 Micro International Ltd. v. Beyond Innovation Technology Co., the Federal Circuit reiterated that when the parties raise a real dispute over claim scope, it is the court’s job to resolve it. Allowing the jury to decide whether “identical” could mean “identical to a portion” impermissibly delegated claim construction to the factfinder.

    The panel emphasized that the intrinsic record differentiated between sequences that must be “identical” and those that need only be “identical to a portion.” Reading the “portion” modifier into an unmodified term would render other claim language superfluous, violating settled claim construction principles. As the court explained, where the claims and specification use different words to denote different degrees of similarity, courts must give effect to those differences.

    Charles Gideon Korrell notes that this portion of the opinion is particularly valuable for litigators confronting “plain meaning” arguments at trial. Even when courts defer claim construction disputes to trial, unresolved scope disagreements can resurface post-verdict with decisive force.

    Doctrine of Equivalents: Particularized Proof Still Matters

    The jury’s infringement finding for the ’810 patent rested entirely on the doctrine of equivalents. That theory fared no better on appeal.

    Citing Warner-Jenkinson Co. v. Hilton Davis Chemical Co. and the Federal Circuit’s more recent decision in VLSI Technology LLC v. Intel Corp., the panel stressed that equivalence is the exception, not the rule. Proof must be limitation-by-limitation and supported by particularized testimony showing that the accused element performs substantially the same function, in substantially the same way, to achieve substantially the same result.

    Labcorp’s evidence fell short on all three prongs.

    Functionally, the claimed “second target-specific primer” was designed to anneal to a known target sequence and increase specificity by enriching target DNA over non-target DNA. Qiagen’s accused primer, by contrast, served to make DNA fragments compatible with sequencing instruments and did not provide target specificity. Labcorp’s own expert conceded that the accused primer did not bind to the native target sequence.

    On “way,” the court found that the accused primer operated differently, binding to a common sequence added during amplification rather than annealing directly to the target region. And on “result,” the accused primer amplified any DNA fragment containing the common sequence, including off-target products, undermining any claim of substantially similar outcomes.

    The court rejected Labcorp’s attempt to aggregate functions across multiple Qiagen primers, explaining that the doctrine of equivalents does not permit a patentee to stitch together the roles of distinct components to satisfy a single claim limitation.

    Charles Gideon Korrell observes that this analysis reinforces a recurring appellate message: generalized testimony that components “work together” will not rescue an equivalence theory where the claim requires a specific element to perform a specific role.

    Literal Infringement of the ’597 Patent: “Target-Specific” Means What It Says

    The Federal Circuit next turned to the ’597 patent, where the jury found literal infringement based on Qiagen’s forward primer (FP) allegedly satisfying the “target-specific primer” limitation.

    The district court relied on testimony that the FP “targets the ligated adaptor” and binds to only a small proportion of molecules in the sample. But the appellate court held that this evidence could not support the verdict under the court’s own claim construction.

    The claim construction required that a target-specific primer anneal to and mediate amplification of the nucleic acid of interest while not annealing to non-target sequences. Qiagen’s FP bound to an artificial adaptor sequence common to all DNA fragments, regardless of whether they contained the target sequence. That adaptor was not itself analyzed and therefore could not constitute the “target nucleic acid.”

    The court rejected the theory that binding to an adaptor attached to a target molecule sufficed. A primer that anneals indiscriminately to adaptor sequences does not become target-specific merely because those adaptors are attached to DNA fragments that happen to contain target regions.

    Nor could Labcorp rely on Qiagen’s gene-specific primers to fill the gap. The claim construction required the target-specific primer itself to perform the requisite functions, not to do so in concert with other primers. Allowing such bootstrapping would improperly rewrite the claim.

    Charles Gideon Korrell notes that this portion of the opinion is especially instructive for cases involving multi-component systems. Courts remain skeptical of infringement theories that rely on collective behavior when claims require individual components to meet defined functional criteria.

    JMOL as a Real Appellate Remedy

    Having found insufficient evidence of infringement for both patents, the Federal Circuit reversed the district court’s denial of JMOL and instructed entry of judgment of non-infringement. The panel did not reach Qiagen’s invalidity or damages arguments.

    For litigators, the case is a reminder that jury verdicts—particularly those grounded in technical complexity—are not immune from rigorous appellate review. Where claim construction errors or evidentiary deficiencies exist, JMOL remains a potent corrective tool.

    Charles Gideon Korrell believes Labcorp v. Qiagen fits squarely within a growing line of Federal Circuit decisions emphasizing disciplined claim construction and demanding infringement proof. It also illustrates the court’s continued reluctance to allow the doctrine of equivalents to blur claim boundaries that patentees chose during prosecution.

    Takeaways

    Several practical lessons emerge:

    First, unresolved claim construction disputes are dangerous. Allowing juries to decide the scope of contested terms invites reversal under O2 Micro.

    Second, doctrine-of-equivalents cases live or die on particularized evidence. Broad assertions of similarity, or reliance on system-level cooperation, will not satisfy the function-way-result test.

    Third, for literal infringement, claim limitations apply to individual components as claimed. Courts will not permit patentees to combine multiple accused elements to meet a single limitation absent clear claim language.

    Finally, post-verdict JMOL motions are not mere formalities. When properly preserved, they can reshape the entire outcome on appeal.

    As Charles Gideon Korrell notes, for IP litigators this decision is less about biotechnology and more about fundamentals: words matter, evidence matters, and juries cannot be asked to fix what claims and proof leave undone.

    By Charles Gideon Korrell

  • Federal Circuit Rules on Key Patent Infringement and Damages Issues in Provisur v. Weber

    The Federal Circuit recently issued a significant ruling in Provisur Technologies, Inc. v. Weber, Inc., addressing key issues in patent infringement, willfulness, and damages. The case involved Provisur’s patents covering food-processing machinery and Weber’s alleged infringement of those patents. The court’s decision clarifies several critical aspects of patent law, particularly in the areas of infringement standards, willfulness, and the use of the entire market value rule in determining damages.

    Background of the Case

    Provisur sued Weber for willful infringement of three patents—U.S. Patent Nos. 10,625,436; 10,639,812; and 7,065,936—related to food-slicing and packaging machinery. The jury found that Weber willfully infringed multiple claims of the patents, awarding Provisur over $10.5 million in damages. Weber appealed, challenging the district court’s rulings on infringement, willfulness, and damages.

    Key Legal Issues and Rulings

    1. Patent Infringement: Affirming and Reversing Jury Findings

    The court upheld the jury’s finding that Weber infringed the ’812 and ’436 patents but reversed the finding of infringement for the ’936 patent. A crucial issue was whether Weber’s SmartLoader product met the claimed “advance-to-fill” limitation. The court determined that Provisur failed to present sufficient evidence showing that the SmartLoader was readily configurable to operate in an infringing manner. Since customers did not have access to the necessary settings to modify the device for infringement, the court found no basis for the jury’s infringement determination on the ’936 patent and reversed that finding.

    2. Willful Infringement: Reversing the Jury’s Verdict

    For willfulness, the court held that the district court erred in admitting testimony that violated 35 U.S.C. § 298, which prohibits using an infringer’s failure to obtain legal advice as evidence of willfulness. Provisur’s expert improperly suggested that Weber’s lack of a legal opinion on infringement indicated willful intent. The court also found that the remaining evidence, including Weber’s internal patent-tracking matrix, did not establish specific intent to infringe. Consequently, the court reversed the willfulness finding.

    3. Damages: Rejecting the Entire Market Value Rule

    One of the most significant aspects of the ruling was the rejection of Provisur’s use of the entire market value rule (EMVR) to calculate damages. Under patent law, a patentee must apportion damages to the infringing feature unless they can prove that the patented feature drives demand for the entire product. The court found that Provisur’s expert testimony failed to provide any substantive evidence that the patented features were the primary drivers of customer demand. Because the slicing line included multiple components beyond the patented features, and no consumer surveys or market studies supported Provisur’s claims, the court ruled that applying the entire market value rule was inappropriate. As a result, the court ordered a new trial on damages.

    Implications of the Decision

    This ruling provides several important takeaways for patent litigation:

    • Clarifies Readily Configurable Standard: To prove infringement, a plaintiff must show that an accused device is not just theoretically capable of infringement but is readily configurable to infringe.
    • Limits Willfulness Arguments: The decision reinforces the restrictions of 35 U.S.C. § 298, preventing patentees from arguing willfulness based on an infringer’s failure to obtain legal advice.
    • Restricts Use of the Entire Market Value Rule: Patent holders seeking substantial damages must provide concrete evidence, such as customer demand studies, to justify using the entire product’s value as the royalty base.

    Conclusion

    The Federal Circuit’s decision in Provisur v. Weber underscores the importance of rigorous evidentiary standards in proving infringement, willfulness, and damages. The ruling provides much-needed clarity on the application of the entire market value rule and reinforces limitations on willfulness claims under § 298. As the case proceeds on remand for a new trial on damages, it will serve as an important reference for patent litigators navigating similar disputes in high-stakes intellectual property cases.

    Here is a link to a brief written on willful infringement.

    By Charles Gideon Korrell