In a recently published opinion, Judge Lorna G. Schofield (S.D.N.Y.) found that it was appropriate to compare the accused system to a plaintiff’s commercial system embodying the asserted patent claims, rather than the patent claims themselves, to show non-infringement. The court recognized that, as the Federal Circuit held in Zenith Labs. v. Bristol-Myers Squibb Co., 19 F.3d 1418, 1423 (Fed. Cir. 1994), it is ordinarily “error for a court to compare in its infringement analysis the accused product or process with the patentee’s commercial embodiment” because “the only proper comparison is with the claims of the patent.” However, Judge Schofield noted that in Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1289 (Fed. Cir. 2010), the Federal Circuit recognized an exception that applies when “[the patentee’s] commercial product meets all the claim limitations.”
Because Google “present[ed] evidence from which a jury could find the [patentee’s commercial system] fully embodied the claims at issue,” the court permitted Google to introduce evidence regarding the features of that system to support its non-infringement defense. However, to ensure that the jury was not confused regarding the proper infringement analysis, Judge Schofield permitted the parties to propose an appropriate limiting jury instruction.
Kewazinga Corp. v. Google LLC, No. 20 Civ. 1106 (LGS) (S.D.N.Y. Oct. 31, 2024)
