CAFC Delivers Win for LG in Reversal of $14 Million Award and Validity Ruling for Mondis

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday issued a precedential decision, authored by Judge Hughes, reversing a district court’s decision to uphold the claims of a patent owned by Mondis Technology, Ltd.

The underlying decision was issued by the U.S. District Court for the District of New Jersey pursuant to a jury verdict that found LG Electronics had not proven the patent claims invalid and that LG’s accused products infringed. The jury awarded Mondis $45 million in damages.

LG subsequently filed a motion for judgment as a matter of law (JMOL) of invalidity for lack of written description, but the district court denied it. At a retrial on damages, the retrial jury awarded Mondis $14.3 million and denied LG’s post-trial motions related to damages, denied Mondis’ motion for enhanced damages and attorneys’ fees, and granted-in-part Mondis’ motion for pre-judgment and post-judgment interest.

Mondis’ U.S. Patent No. 7,475,180 is titled “Display Unit with Communication Controller and Memory for Storing Identification Number for Identifying Display Unit” and relates to a system for controlling a computer monitor, for example. On appeal, the CAFC agreed with LG’s argument that the patent’s written description did not support the claim limitation “identification number for identifying at least a type of said display unit,” which the court referred to as the “type limitation.”

While Mondis argued it was not required to provide any evidence of adequate written description support due to the presumption of validity enjoyed by granted patents, the CAFC explained that “sometimes the patent itself is clear enough that it establishes inadequacy of support in the written description for the full scope of the claimed invention unless there is contrary evidence…. That is so here, as confirmed by the testimony of Mondis’ own expert on the key point.”

Mondis’ expert testified that the specification “does not expressly recite an identification number for identifying a type of display unit,” said the court, and it was undisputed that the patent itself “does not expressly disclose the type limitation”—a point which Mondis’s counsel conceded during oral argument, according to a footnote in the CAFC opinion.

Mondis tried to argue that the jury was free to dismiss LG’s expert testimony that “the patent does not disclose an identification number to identify a type of display unit” because that expert was impeached, but the CAFC said Mondis’ own expert testimony plus the patent itself were sufficient to  establish that “any reasonable jury performing this objective inquiry into the four corners of the patent would have to find that the inventors only possessed and disclosed identifying a specific display unit.”

While “it would not automatically be fatal that the type limitation was not expressly disclosed as long as substantial evidence showed that the patent disclosed identifying a type of display unit in some less express way,” the CAFC rejected Mondis’ argument that its expert’s testimony provided written description support for a type ID because the testimony in question was about infringement rather than validity, and was also silent on the type limitation. The court further rejected Mondis’ arguments that LG’s expert’s admissions provided substantial evidence because his statements were made in the context of noninfringement and because, when asked whether a “‘serial number would be an identification number for identifying a type of display unit…Dr. Stevenson testified that ‘no one has made that allegation.’”

Mondis finally argued that the prosecution history provided substantial evidence because  the type limitation was added as an amendment to overcome a prior art rejection and “when a claim amendment is allowed without objection, it ‘is entitled to an especially weighty presumption of correctness.’”  Mondis relied on Commonwealth Sci. & Indus. Rsch. Org. v. Buffalo Tech., Inc. (USA), 542 F.3d 1363, 1380 (Fed. Cir. 2008) to support this view, but the CAFC said:

“Commonwealth Science holds that there is a “presumption of validity based on the PTO’s issuance of the patent despite the amendments.” 542 F.3d at 1380. It does not hold that the examiner’s allowance of claims by itself provides substantial evidence that the claims comply with the requirements of § 112…. If it did, there would rarely be a situation where an issued patent could later be invalidated for lack of written description.”

Even accepting Mondis’ argument, however, the claim amendment in question did not support this argument because there was no evidence that the examiner considered whether the specification contained written description support for the amendment.

Ultimately, said the CAFC, the jury only had evidence before it from the patent regarding written description, and the patent does not disclose the type limitation. Mondis also failed to redirect its own expert’s testimony “that the patent does not expressly disclose the type limitation, nor [call] him in rebuttal” and “there was no evidence in the record that would allow a reasonable jury to determine that a person of ordinary skill in the art would understand that the patent disclosed the type limitation.”

The district court’s holding was thus reversed and the claims declared invalid.