OPINIONS OF COUNSEL STILL IMPORTANT TO AVODING INDIRECT INFRINGEMENT

Broadcom Corporation v. Qualcomm Incorporated, [2008-1199, -1271, -1272] (September 24, 2008) [LINN, Friedman, Prost] The Fedearl Circuit reversed the finding of infringement of U.S. Patent No. 6,847,686, but affirmed the determination of validity and infringement of U.S. Patent Nos. 5,657,317 and 6,389,010.
DISCUSSION: The technology at issue in this appeal relates to wireless voice and data communications on cellular telephone networks. Regarding the ‘686 patent, the Federal Circuit found that district court improperly imported the requirement of a “global controller into the claims. The Federal Circuit said that while the specification does contemplate the possibility of a global controller, the claims of the ’686 patent are directed solely to the DSP. The Federal Circuit said that each claim does not necessarily cover every feature disclosed in the specification, and that when a claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other, unclaimed features.
With respect to the remaining patents, the Federal Circuit rejected the appellant’s attempt to raise new claim construction arguments, noting “a party may not introduce new claim construction arguments on appeal or alter the scope of the claim construction positions it took below.”
Regarding liability for inducement, the Federal Circuit approved the jury instruction that in determining whether the defendant “knew of should have known that the induced actions would constitute infringement” the jury should consider the totality of the circumstances, including whether or not defendant obtained the advice of a competent lawyer. In response to argument that Seagate eliminated the need to obtain an opinion of counsel, the Federal Circuit instructed that Seagate did not alter the state of mind requirement for inducement. The Federal Circuit said that a lack of culpability for willful infringement does not compel a finding of non-infringement under an inducement theory.
The Federal Circuit held that because opinion-of-counsel evidence, along with other factors, may reflect whether the accused infringer “knew or should have known” that its actions would cause another to directly infringe, such evidence remains relevant to the second prong of the intent analysis.