‘Word Salad’ Expert Testimony Failed Under Standard of Violation of the Doctrine of Equivalents

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedent-setting decision affirming a district court’s conclusion that NextStep, Inc. failed to prove that Comcast Cable Communications infringed its patents. Judge Chen authored the majority opinion and Judge Reyna authored a partial dissent, disagreeing with the majority opinion that one of the patents was not infringed under the doctrine of equivalents.

NextStep holds U.S. Patent Nos. 8,885,802 (‘802 Patent) and 8,280,009 (‘009 Patent), which generally cover voice communications technology. The U.S. District Court for the District of Delaware issued summary judgment of non-infringement of the ‘802 patent based on the adopted claim construction of the term “VoIP,” but denied Comcast’s motion for summary judgment of patent eligibility on the patent ‘009. A jury then returned a verdict that the claims of the ‘009 patent were infringed under the doctrine of equivalents, but that they were not literally infringed. However, the district court vacated this verdict, granting judgment as a matter of law (JMOL) of non-infringement of the ‘009 patent due to a lack of evidence to support the jury’s conclusion.

Primarily, the district court said that the testimony of NextStep expert Dr. Ted Selker “was too conclusive to sustain the verdict.” The court referred to parts of the testimony as “word salad” and said it “lacked the specificity and analysis required by (CAFC) precedent.” The court ultimately issued a final ruling of non-infringement of both patents and issued a summary ruling rejecting Comcast’s affirmative defense that the ‘009 patent is ineligible under 35 USC § 101.

Claim construction

NextStep first appealed the district court’s construction of the term “VoIP” as “protocols and data formats for transmitting voice conversations over a packet-switched network, such as the Internet.” NextStep requested a broader construction covering any “audio data,” relying on different dictionaries than the court. The CAFC said NextStep lost its new argument on appeal that “that the ‘802 patent redefined VoIP to differ from its industry standard meaning” and also lost its argument that even if the CAFC agreed with the court’s construction district, NextStep “showed genuine disputes of material fact, even under the court’s enlightened interpretation.”

Doctrine of Equivalents

Turning to the ‘009 patent, the CAFC said the district court was also correct in granting summary judgment of non-infringement under the doctrine of equivalents, particularly because NextStep failed to meet the “specific evidentiary requirements necessary to prove infringement under the doctrine of equivalents.” In particular, “both the Supreme Court and this court have made clear that proof of equivalents must be done from the perspective of someone skilled in the art, for example through testimony from experts or others skilled in the technology; by documents, including texts and treaties; and, of course, by disclosures of the state of the art”, said the majority opinion, citing AquaTex Indus., Inc.., 479 F.3d 1320, 1329 (Fed. Cir. 2007).

Furthermore, NextStep did not provide the “specific testimony and linking argument” required by precedent. Dr. Selker’s brief testimony on the doctrine of equivalent evidence was insufficient, the majority said. First, the testimony did not “explicitly identify the alleged equivalent”; second, “failed to provide a ‘meaningful explanation of why’ the element or elements of the accused product or process are equivalent to the alleged limitation for each part of the ‘function-form-result test’”; his testimony amounted to “word salad” in trying to explain “why multiple button presses perform the claimed method in the same manner as the claimed single action”; and agreed with the district court that Selker’s testimony regarding the “outcome” prong of the function-outcome test was “detached from the language of the claim” and “amounts to little more than ‘generalized testimony as to the general similarity between the claims and the proceeds of the accused infringer.’” The opinion explained:

“Although our precedent does not necessarily require that expert testimony be a ipsis verbis recitation of the claim, the result identified by Dr. Selker is also too generalized, unclear, and unrelated to the claimed invention.”

NextStep attempted to argue in part that certain types of “readily understandable” technologies should not be subject to the “private testimony and liaison argument of a skilled craftsman” standard, but the CAFC rejected this as “contrary to our precedent and the underlying policies why we demand particularized testimony and connecting arguments.” Simply put, the majority said, “we have never recognized a technology-specific exception to the evidentiary rules governing the doctrine of equivalents.”

Disagreeing in part, Judge Reyna said that “the majority invents a strict new rule that in all cases the patent owner must present expert testimony to prove infringement under the doctrine of equivalents.” But the majority addressed this, calling it incorrect, since their discussion of the standard was limited to that articulated in the Aquatex case. However, Reyna said the majority opinion “reviews the NexStep infringement evidence under the doctrine of equivalents in a vacuum and fails to adhere to the substantial evidence standard of review.” Reyna concluded:

“I believe the majority invades the jury’s purview by overturning a reasonable verdict that is supported by substantial evidence in this case and by imposing an unnecessary new rule in all future doctrine of equivalents cases to come.”