NexStep, Inc. v. Comcast Cable Communications, LLC, Nos. 2022-1815, -2005, -2113 (Fed. Cir. (D. Del.) Oct. 24, 2024). Opinion by Chen, joined by Taranto. Opinion concurring in part and dissenting in part by Reyna.
NexStep sued Comcast for infringement of several patents, including the ’802 patent and ’009 patent. After construing the term “VoIP” in the ’802 patent, the district court granted summary judgment of noninfringement. The ’009 patent proceeded to a jury trial, and the jury found infringement under the doctrine of equivalents. Addressing Comcast’s post-trial motion for judgment as a matter of law, the court found NexStep’s proof of infringement inadequate and thus granted the motion. The court primarily reasoned that the testimony of NexStep’s expert was too conclusory to support the verdict. NexStep appealed.
On appeal, the Federal Circuit explained that because the parties agreed “VoIP” is an industry standard term, the district court relied on extrinsic evidence. The Federal Circuit agreed with that approach, noting that “extrinsic evidence takes on particular importance when construing a term that skilled artisans recognized as a term of art at the relevant time,” and courts “may make factual findings as to what meaning a skilled artisan would ascribe to that term.” Applied here, the court ruled that “NexStep fail[ed] to show that the district court clearly erred by construing VoIP to require capability for two-way voice communications,” as set forth in two technical dictionaries. The Federal Circuit thus affirmed the grant of summary judgment of noninfringement.
As for the ’009 patent, the Federal Circuit ruled that “NexStep failed to offer the particularized testimony and linking argument required by our precedent for a doctrine of equivalents case.” NexStep’s expert never identified the elements in the accused device equivalent to the claimed “single action” limitation, and he failed to provide a “meaningful explanation of why” the elements from the accused device are equivalent to that limitation. The Federal Circuit ruled that the expert’s “conclusory and circular ‘because I said so’ testimony is insufficient.”
Judge Reyna dissented as to the ’009 patent for two reasons. First, in his view substantial evidence supported the jury’s verdict of infringement. Second, he explained that the majority’s opinion set out a “new rule that patentees must always present expert opinion testimony to prove infringement under the doctrine of equivalents,” and such a rule “is incorrect and contrary to existing precedent.”