In Toshiba Corp. v. Imation Corp., No. 11-1204 (Fed. Cir. June 11, 2012), the Federal Circuit vacated a summary judgment for non-infringement of the asserted claims of U.S. Patent Nos. 5,892,751 (“the ‘751 patent”) and 5,831,966 (“the ‘966 Patent”) because the existence of a substantial non-infringing use did not preclude a finding of inducement and limitations from a specification may not be read into the claims.

Toshiba owns the ‘751 and ‘966 patents related to optical disc technology. DVDs are optical discs used to store data or digital content, and are available in several formats, which are governed by technical standards that allow for compatibility among DVD players and recorders. Imation Corp. manufactures or sells recordable blank DVDs, which meet these standards that organize an optical disk into three areas: (1) a “lead-in area” that contains information about the DVD’s structure and properties; (2) a “data area” where data is recorded and stored; and (3) a “lead-out area” which indicates the functional end of the data area. Toshiba filed suit against Imation in U.S. District Court for the Western District of Wisconsin for infringement of claims of the ‘751 and ‘966 patents. Imation moved for summary judgment that the company did not indirectly infringe the 751 and 966 patents. Judge Crocker granted summary judgment of noninfringement on both patents, holding that using a DVD without finalizing it was a substantial non-infringing use. The Court also construed claim 1 of the ‘966 patent to require that the identifying information in the “lead-in area” have the purpose of identifying information for the entire recording medium.

Please see full alert below for more information.