By James Juo.

In Commscope Techs. LLC v. Dali Wireless Inc., Nos. 2020-1817, 2020-1818 (Fed. Cir. Aug. 24, 2021), the Federal Circuit noted the need for consistent infringement and validity positions.

CommScope and Dali are competitors in the wireless communications infrastructure market. Dali accused CommScope's FlexWave system of patent infringement, and the asserted method claim requires “switching a controller off” as part of a diagnostic training process. The district court construed “switching a controller off” as “[s]witching a controller to an off status.” The accused device was shown to switch off feedback from the controller, but not the controller itself–achieving the same diagnostic results, but using an approach not literally claimed.

The Federal Circuit held that, at trial:

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.

The Federal Circuit also found that Dali's infringement argument conflicted with its validity arguments against anticipation. In particular, having argued that the claimed invention was not anticipated by the Wright prior art reference, there was an “incongruity” where Wright's prior art MUX operated exactly like the selector switch in the accused FlexWave.

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.” Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (cleaned up).

The Federal Circuit reversed the district court's denial of JMOL of non-infringement and affirmed the denial of JMOL of invalidity of Dali's patent.

The patent litigation attorneys at Thomas P. Howard, LLC know how to thread the needle between infringement and validity in patent litigation.