Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in NexStep, Inc. v. Comcast Cable Commc'ns, LLC, No. 2022-2005 (October 24, 2024), affirming the district court’s grant of a motion for judgment as a matter of law of non-infringement.
NexStep sued Comcast Cable Communications (Comcast) for infringing U.S. Patent Nos. 8,885,802 and 8,280,009. The ’009 patent centers on a “concierge device,” and its main point of novelty is initiating customer service support for household smart appliances through a “single action.” Comcast’s alleged infringing products all required “several button presses” to achieve similar results. At trial, and after the district court granted summary judgment of non-infringement of the ’802 patent, NexStep argued Comcast literally infringed, or alternatively, infringed under the doctrine of equivalents. NexStep alleged that “several button presses” is within the meaning of the claim element “a single action.” The jury found that Comcast did not literally infringe, but returned a verdict that Comcast infringed under the doctrine of equivalents. The district court granted Comcast’s subsequent motion for judgment as a matter of law of non-infringement, holding that NexStep failed to offer particularized testimony and linking argument required for determining infringement under the doctrine of equivalents. NexStep appealed.
The Federal Circuit affirmed. As to the ’009 patent, the Court determined that the sole testimony directed towards the doctrine of equivalents was too generalized and was insufficient to meet the requirement to provide particularized testimony and linking argument to support infringement under the doctrine of equivalents. Specifically, the Court held that the sole expert testimony given on the topic failed to give a meaningful explanation of the functions of “several button presses” and “a single action”, the result of those functions, and why the functions are substantially the same. The Court further stated that there is no technology-specific exception to evidentiary rules governing the doctrine of equivalents. In other words, no matter how simple the technology in a doctrine of equivalent case, there must always be particularized testimony and linking argument such that the jury does not stray beyond the limited role of the doctrine of equivalents.
