A Blog About Intellectual Property Litigation and the District of Delaware


The good (well, better) kind of salad
The good (well, better) kind of salad Go to Ryan Concepcion's profile Ryan Concepcion, Unsplash

JNOV's (JMOL's after a jury verdict for lawyers of a newer vintage) are always longshots. To prevail on such a motion "a party must show that the jury’s findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied by the jury’s verdict cannot in law be supported by those findings." Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed. Cir. 1998) (cleaned up). It's always noteworthy (or so we bloggers tell ourselves) when one succeeds.

This is especially true in NexStep, Inc. v. Comcast Cable Communications, LLC, C.A. No. 19-1031-RGA, D.I. 371 (D. Del. May 12, 2022), where the plaintiff actually presented expert testimony on the point in question and still lost the JNOV. The issue there was the doctrine of equivalents and whether a process which required several button presses infringed claims that required a single button press under the DOE. the plaintiff's expert walked through the classical function, way, result test with ... mixed results:

Q. It’s the same function – I’ll just help you out here. So it has the same function and it’s a legal doctrine and so we have to go through it. Okay? Can you explain to the jury why it’s done in substantially the same way?
A. Well, it’s done in the same way in that the stuff is all kept up in the cloud for the purpose of doing this and it’s going to go and diagnose it using the home gateway and it’s going to solve my problem without me having to go through and put in my model numbers and all of that stuff. So it’s really literally using – using this Concierge as more of a – somebody to give authorization than to do the actual function. I’m not down there in the machine room, you know, putting instructions into a computer to make it do each of these things.
Q. And can you explain why the single action achieves substantially the same result?
A. Yeah, the result is that this thing is going to be restarted, refreshed, whatever is going to have to happen with it without me having to tangle with understanding all of the issues of being an IT professional or whatever it takes to get this thing up. And so it’s going to come with a result of my modem working, you know.

Id. at 9-10 (quoting D.I. 347 at 383:25–385:9).

Characterizing this testimony as "word salad," Judge Andrews held that it failed to provide the required link between the actual claims of the patent and the allegedly infringing process and left the jury "to its own imagination on the technical issue of equivalency." Id. at 13 (quoting Malta v. Schulmerich Carillons, Inc. 952 F. 2d 1320 (Fed. Cir. 1991)). He ultimately granted the JNOV on no infringement under the DOE granting the defendant a complete victory on this claim.

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