Issue 155 | February 4, 2004
Ericsson Corp. et al. v. Harris Corp. et al.
 In Ericsson Corp. et al. v. Harris Corp. et al., Nos. 02-1571, -1603 (Fed Cir. Dec. 9, 2003), the Federal Circuit reversed the grant of JMOL of noninfringement and affirmed the denial of a JMOL relating to damages.

Ericsson’s ’222 patent is directed to an apparatus for supplying power to a telephone set in a telecommunications system, particularly an interface circuit that reduces the idling power by switching between an active mode and a low-power standby mode. Each of Harris’ accused infringing devices (the 5513 SLIC, the 5514 SLIC, and the 5518 SLIC) has a low-power standby mode.

Ericsson sued. A jury found that Harris’s devices infringed claims 1 and 2 under the doctrine of equivalents, and awarded Ericsson damages in the amount of $3.5 million for lost profits due to lost sales; $645,000 for lost profits due to price erosion; and $136,000 as a reasonable royalty.

The district court, however, granted Harris’s motion for JMOL of noninfringement, dismissed the case with prejudice, and summarily denied Harris’s motion for JMOL relating to the amount of the damages award.

On appeal, Ericsson argued that substantial evidence supported the jury’s determination that that the “only supply power” limitation was met; that the court erred in holding that the “only supply power” limitation is entitled to no scope of equivalence, and that the fact that the accused devices can optionally be used for caller-ID does not negate infringement. The Federal Circuit agreed, and concluded that the district court erred in determining that a finding of infringement would vitiate the “only supply power” limitation. The Federal Circuit also concluded that substantial evidence supported the jury’s verdict of infringement under the doctrine of equivalents.

The Federal Circuit upheld the jury’s damages award for lost profits due to lost sales, because “Ericsson’s market definitions and allocations were supported by substantial and economically sound evidence. . . Ericsson’s market share analysis adequately compensated for the effects that any noninfringing substitutes would have had on Ericsson’s lost profits.” Similarly, substantial evidence supported the jury’s $645,000 price erosion damages award.

Dissenting, Judge Newman disagreed that no presumption of estoppel arose simply because the words "only supply power" were not amended:
The majority's holding that there is no estoppel or no presumption of estoppel because the three words "only supply power" were not amended, although the words concerning the supply of power were amended, produces a dramatic loophole in the Festo decisions.
Further, she discerned “no support for the court's position that the Festo estoppel does not apply when there is a narrowing amendment to the clause whose equivalency is in dispute, if there are unamended words in the amended clause.”

To discuss this topic further, please feel free to contact the author, Michael R. Dzwonczyk, (mdzwonczyk@sughrue.com), at Sughrue Mion, PLLC in Washington DC., USA.

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