Vita Mix

1317VITA–MIX CORP. v. BASIC HOLDING, INC.Cite as 581 F.3d 1317 (Fed. Cir. 2009)

VITA–MIX CORPORATION,Plaintiff–Appellant,

v.

BASIC HOLDING, INC. (formerlyknown as Back to Basics Products,Inc.), Focus Products Group, LLC,Focus Electrics, LLC, and West BendHousewares, LLC, Defendants–CrossAppellants.

Nos. 2008–1479, 2008–1517.

United States Court of Appeals,Federal Circuit.

Sept. 16, 2009.Background: Owner of patent directed toa method of preventing the formation of anair pocket around the moving blades of aconsumer food blender brought actionagainst competitor alleging patent andtrademark infringement. Competitor fileddeclaratory judgment counterclaims ofnoninfringement, invalidity, inequitableconduct, and several affirmative defenses.The United States District Court for theNorthern District of Ohio, Patricia A. Gau-ghan, J., granted summary judgment infavor of patent owner in part, and in favorof competitor in part. Both parties appeal-ed.Holdings: The Court of Appeals, Prost,Circuit Judge, held that:(1) fact issue precluded summary judg-

ment on direct infringement claim;(2) accused blender did not contributorily

infringe patent;(3) evidence was insufficient to support

claim that competitor induced infringe-ment of patent;

(4) the number ‘‘5000’’ was not entitled totrademark protection as an unregis-tered mark;

(5) fact issue precluded summary judg-ment on competitor’s invalidity claims;

(6) there was no evidence patent ownerhad deceptive intent required to sup-

port competitor’s inequitable conductclaim; and

(7) alleged infringer was not entitled tolaches defense.

Affirmed in part, vacated in part, and re-manded.

Bryson, Circuit Judge, filed an opinionconcurring in part and dissenting in part.

1. Patents O314(5)

Patent claim construction is an issueof law.

2. Patents O226.6

Patent claims are properly construedwithout the objective of capturing or ex-cluding the accused device.

3. Patents O168(2.1)

A patentee may, through a clear andunmistakable disavowal in the prosecutionhistory, surrender certain claim scope towhich he would otherwise have an exclu-sive right by virtue of the claim language.

4. Patents O101(3)

Term ‘‘preventing the formation of anair pocket,’’ in patent directed to a methodof preventing the formation of an air pock-et around the moving blades of a consumerfood blender, excluded breaking up or dis-lodging already formed air pockets, but didnot exclude stirring for other reasons.

5. Patents O323.2(3)

In infringement action brought byowner of patent directed to a method ofpreventing the formation of an air pocketaround the moving blades of a consumerfood blender against competitor, genuineissues of material fact existed as to wheth-er employees of patent owner’s competitorengaged in acts of direct infringement pre-cluding summary judgment on patent own-er’s direct infringement claims.

1318 581 FEDERAL REPORTER, 3d SERIES

6. Patents O312(3.1)Direct infringement of a patent can be

proven by circumstantial evidence.

7. Patents O323.2(4)Testimony of second expert of owner

of patent directed to a method of prevent-ing the formation of an air pocket aroundthe moving blades of a consumer foodblender, that during a double-blind surveyof blender users, he observed a certainpercentage of users insert the stir stick ofthe accused blender into the pitcher butnot stir it, was relevant, and thus admissi-ble for summary judgment purposes relat-ing to patent owner’s direct infringementclaim, where patent owner’s first experthad testified that if the stir stick wasinserted into the pitcher without stirringwhile the blender was on, then the accuseddevice would necessarily infringe the pat-ent.

8. Patents O259(2)Contributory infringement imposes li-

ability on one who embodies in a non-staple device the heart of a patented pro-cess and supplies the device to others tocomplete the process and appropriate thebenefit of the patented invention.

9. Patents O259(1)Non-infringing uses of a patent are

‘‘substantial,’’ for purposes of establishingcontributory infringement, when they arenot unusual, far-fetched, illusory, impracti-cal, occasional, aberrant, or experimental.35 U.S.C.A. § 271(c).

10. Patents O259(1)Use of stir stick in accused blender,

where the stirring operation broke up airpockets or touched the side of the pitcher,was a ‘‘substantial non-infringing use’’ ofthe accused blender, and thus accusedblender did not contributorily infringe pat-ent directed to a method of preventing theformation of an air pocket around the mov-ing blades of a consumer food blender;accused blenders’ ball and socket joint,

interrupted ribbing, and rubber o-ring,which allowed a user to grip the handle ofthe stir stick and move the distal end ofthe stir stick around within the pitcher ofthe blender were defining features of theaccused blender, that were directly relatedto the use of the stir stick, and were usefulonly if the stir stick was used to stir thecontents of the pitcher and push the ingre-dients into the blades. 35 U.S.C.A.§ 271(c).

See publication Words and Phras-es for other judicial constructionsand definitions.

11. Patents O259(1)

There was no evidence that competi-tor of owner of patent directed to a meth-od of preventing the formation of an airpocket around the moving blades of a con-sumer food blender intended users tomaintain stir stick of accused blender inthe ‘‘default’’ vertical position that mayhave lead to infringing use of the patentunder certain circumstances, so as to sup-port patent owner’s inducement claimagainst competitor; it was possible to usethe accused blender as directed withoutever practicing the claimed method, theaccused blender’s product design naturallyencouraged non-infringing use, and thepictures of the accused blender in theproduct instructions, packaging, cata-logues, and competitor’s own patentshowed the stir stick in a non-vertical posi-tion touching the sides of the pitcher. 35U.S.C.A. § 271(b).

12. Patents O259(1)

Inducement of patent infringement re-quires a showing that the alleged inducerknew of the patent, knowingly induced theinfringing acts, and possessed a specificintent to encourage another’s infringementof the patent. 35 U.S.C.A. § 271(b).


13. Patents O259(1), 312(8)The requisite intent for inducing pat-

ent infringement can be shown by circum-stantial evidence, but the mere knowledgeof possible infringement will not suffice.35 U.S.C.A. § 271(b).

14. Patents O312(8)Especially where a product has sub-

stantial non-infringing uses of a patent,intent to induce infringement cannot beinferred even when the defendant has ac-tual knowledge that some users of itsproduct may be infringing the patent. 35U.S.C.A. § 271(b).

15. Courts O96(7)The Court of Appeals for the Federal

Circuit reviews non-patent claims, such asclaims arising under the Lanham Act, inaccordance with the law of the regionalcircuit within which the case arose. Lan-ham Act, § 1 et seq., 15 U.S.C.A. § 1051 etseq.

16. Trademarks O1421Under Sixth Circuit law, a registrant

must meet two criteria to succeed in atrademark infringement case: (1) theplaintiff must possess a protectable mark,and (2) the plaintiff must show a likelihoodof confusion.

17. Trademarks O1136(1), 1422Under Sixth Circuit law, where a

mark is not registered, a trademark in-fringement claimant must show that it hasused the mark at issue as a trademark,and that the defendant has used the ac-cused mark as a trademark.

18. Trademarks O1030Under Sixth Circuit law, an unregis-

tered mark is entitled to protection as atrademark if it is inherently distinctive orhas acquired secondary meaning.

19. Trademarks O1031Under Sixth Circuit law, a mark is

‘‘inherently distinctive,’’ so as to entitle anunregistered mark to protection as a

trademark, if its intrinsic nature serves toidentify a particular source; a mark is not‘‘inherently distinctive’’ if it serves as agrade designation rather than an indica-tion of the source of the goods.

See publication Words and Phras-es for other judicial constructionsand definitions.

20. Trademarks O1056, 1058

Under Sixth Circuit law, the number‘‘5000,’’ which appeared in conjunction withthe trademark ‘‘Vita-Mix’’ within the desig-nation ‘‘Vita-Mix 5000,’’ was not inherentlydistinctive and had no secondary meaning,so as to entitle it to trademark protectionas an unregistered mark; the trademark‘‘Vita-Mix’’ identified the source of thegoods, and the designation ‘‘5000’’ indicat-ed the style or grade of the product.

21. Trademarks O1422

Under Sixth Circuit law, there was noevidence that alleged infringer used thedesignation ‘‘5000’’ as a trademark in itssale of the ‘‘Blender Solutions 5000’’ prod-uct, as required for trademark infringe-ment claimant to establish that allegedinfringer’s use of ‘‘5000’’ constituted trade-mark infringement of an unregisteredmark.

22. Patents O323.2(5)

In a patent infringement action, a dis-trict court cannot rely on its assessment ofone party’s motion for summary judgmentof invalidity when evaluating the otherparty’s motion for summary judgment ofno invalidity.

23. Patents O323.2(3)

In infringement action brought byowner of patent directed to a method ofpreventing the formation of an air pocketaround the moving blades of a consumerfood blender against competitor, genuineissues of material fact existed with respectto anticipation, obviousness, and lack of


enablement of the patent, precluding sum-mary judgment of no invalidity.

24. Patents O323.2(4)To prevail on summary judgment on a

claim for inequitable conduct in a patentinfringement action, an alleged infringerwould have to present evidence of affirma-tive misrepresentations of material fact,failure to disclose material information, orsubmission of false material information,coupled with evidence of an intent to de-ceive.

25. Patents O97Both intent and materiality must ulti-

mately be proven by clear and convincingevidence for an alleged infringer to prevailon a claim for inequitable conduct in apatent infringement action.

26. Patents O97Owner of patent directed to a method

of preventing the formation of an air pock-et around the moving blades of a consumerfood blender did not commit inequitableconduct during patent prosecution, absentevidence of deceptive intent.

27. Federal Courts O813Application of the defense of laches is

an equitable determination that is re-viewed for abuse of discretion, even onsummary judgment.

28. Equity O72(1)To prove an affirmative defense of

laches, a defendant must show that (1) theplaintiff delayed for an unreasonable andinexcusable amount of time in filing suit,and (2) that the defendant was prejudicedas a result of the delay.

29. Patents O289(4)Alleged infringer in patent infringe-

ment action was not entitled to laches de-fense, despite patent owner’s alleged five-year delay in bringing suit, absent evi-dence that alleged infringer was preju-diced by the delay.

Patents O328(2)5,302,021. Construed.

Trademarks O18005000.

Trademarks O1800Blender Solutions{ 5000.

Trademarks O1800VITA–MIX.

Trademarks O1800Vita–Mixb 5000.

David T. Movius, McDonald HopkinsCo., LPA, of Cleveland, OH, argued forplaintiff-appellant. With him on the briefwere Michael L. Snyder and David B.Cupar.

Larry R. Laycock, Workman Nydegger,of Salt Lake City, UT, argued for defen-dants-cross appellants. With him on thebrief were David R. Wright, David R.Todd, Robert E. Aycock and Clinton E.Duke.

Before BRYSON, GAJARSA, andPROST, Circuit Judges.

Opinion for the court filed by CircuitJudge PROST. Opinion concurring-in-part and dissenting-in-part filed by CircuitJudge BRYSON.

PROST, Circuit Judge.

This case involves alleged infringementby Basic Holding (‘‘Basic’’) of a patent andalleged trademark held by Vita–Mix Cor-poration (‘‘Vita–Mix’’). The United StatesDistrict Court for the Northern District ofOhio granted summary judgment of nodirect infringement, no inducement of in-fringement, no contributory infringement,and no trademark infringement in favor ofBasic. The court also granted summary


judgment of no invalidity based on antici-pation, obviousness, or lack of enablement,no inequitable conduct, and no laches infavor of Vita–Mix. For the reasons setforth below, we vacate and remand thedistrict court’s judgment of no direct in-fringement. We affirm the judgments ofno inducement, no contributory infringe-ment, and no trademark infringement.We vacate and remand the judgments ofno invalidity for anticipation, obviousness,or lack of enablement. We affirm thejudgments of no inequitable conduct andno laches.

I

A

The patent at issue in this appeal isdirected to a method of preventing theformation of an air pocket around the mov-ing blades of a consumer food blender.The method involves inserting a plungerinto the body of the blender. The objectof the plunger is to block the air channelthat creates the air pocket when ingredi-ents are blended. The sole claim of theasserted patent, U.S. Patent No. 5,302,021(‘‘the 8021 patent’’) recites:

1. A method of preventing the forma-tion of an air pocket around rotatingblades positioned in a pitcher of ablender, the air pocket being createdfrom an air channel of a cross-sec-tional size defined by a member as-sociated with the blades, comprisingthe steps of supplying a fluid intothe pitcher, and positioning a plung-er, having a cross-sectional size ap-proximating the cross-sectional sizeof the member, adjacent to andabove the rotating blades whilemaintaining the plunger free of con-tact with the pitcher thereby pre-venting the formation of an air pock-et in the fluid around the rotatingblades.

During prosecution, the applicant ex-plained that the claimed method differedfrom the prior art due to its preventativecapability. Prior art methods of combat-ing air pockets involved stirring the con-tents of the blender to break up or dis-lodge the pockets after they have begun toform. Stirring is only a temporary solu-tion, however, and air pockets begin toreform as soon as the stirring stops. Theapplicant stated that the claimed methodprevents air pockets from ever forming byblocking the air channel that creates theair pockets, due to the plunger’s size andposition within the blender.

Vita–Mix markets one embodiment of itsblender and plunger device as the VITA–MIXb 5000, which is the product relevantto Vita–Mix’s trademark infringementclaims. Other Vita–Mix blenders includethe VITA–MIXb 3600, 4500, and 5200.According to the record before the districtcourt, and the representations of Vita–Mixcounsel during oral argument before thiscourt, the numerical designations roughlycorrespond to the different wattages of theblenders. Vita–Mix markets its productsas high-speed liquid food blenders, withemphasis on the plunger device.

Basic markets several accused blenders,including the Smoothie Elite, the SmoothiePlus{, and the Blender Solutions{ 5000.Basic also sells other products under theBlender Solutions{ name, including theBlender Solutions{ 4000 and 5500. Eachof Basic’s accused blenders includes a ‘‘stirstick,’’ which resembles the plunger fromVita–Mix’s patented method. The lids ofBasic’s blenders have an opening whichcan be covered with a flat cap, or canreceive the stir stick. The proximal end ofthe stir stick forms a ball and handle. Theball is seated on the lid opening in a ball-and-socket configuration. This configura-tion allows a user to grip the handle andmove the distal end of the stir stick around


within the pitcher of the blender. A rub-ber o-ring mounted on the distal end of thestir stick prevents the stir stick fromscratching the inner sides of the pitcherduring stirring. The sides of the pitcheralso include a vertical ribbing that is inter-rupted at the points where the o-ring maycontact the sides during stirring.

B

The 8021 patent issued in 1994. Basiclaunched its line of blenders around Marchof 2001. In October of 2006, Vita–Mixfiled suit against Back to Basics, Inc., nowBasic Holdings, its parent company FocusProducts, and two other subsidiaries ofFocus Products; Focus Electrics and WestBend. Vita–Mix alleged infringement ofthe 8021 patent by dozens of Basic’s blen-der models, and trademark infringementby the Blender Solutions{ 5000 model.Basic responded by filing declaratory judg-ment counterclaims of noninfringement, in-validity, inequitable conduct, and severalaffirmative defenses.

The district court conducted a Markmanhearing to construe several disputed claimterms. During the hearing, the court ex-amined the prosecution history and deter-mined that the patentee expressly dis-claimed any stirring operation that breaksup or dislodges air pockets after they havebegun to form, and limited the scope of theclaimed invention to positioning the plung-er such that it prevents air pockets fromforming. The court construed claim 1 toexclude ‘‘stirring to disperse, dislodge, orbreakup an air pocket after it has begun toform.’’ The court also construed the term‘‘plunger’’ as a ‘‘device that can be insertedinto a blender.’’ Basic does not disputethat its stir stick is a plunger as that termwas construed by the district court.

At the close of discovery in the trialphase following the Markman hearing,both parties filed multiple dispositive mo-tions. These included summary judgment

motions and cross-motions on issues of enduser infringement of the patented method,inducement of infringement for Basic’sproduct instructions, contributory infringe-ment for Basic’s products, common lawtrademark infringement for Basic’s use ofthe designation ‘‘5000,’’ invalidity of the8021 patent for anticipation and obvious-ness in light of the cited prior art, lack ofenablement due to the patented method’salleged inability to prevent air pockets,unenforceability for inequitable conduct inmaking false statements to the patent ex-aminer, and laches for delaying five and ahalf years before bringing suit.

On July 2, 2008, the district court en-tered a final order granting Basic’ssummary judgment motions of no directinfringement, no inducement, no contrib-utory infringement, and no trademarkinfringement. The court granted Vita–Mix’s summary judgment motions of noinvalidity for anticipation, obviousness,or lack of enablement. The court alsogranted Vita–Mix’s summary judgmentmotions of no inequitable conduct andno laches. The district court also ruledon several motions not on appeal beforethis court, thereby resolving on sum-mary judgment the entire dispute be-tween the parties.

On July 16, 2008, Vita–Mix timely filed anotice of appeal on the issues of no in-fringement, no inducement of infringe-ment, and no contributory infringement ofthe 8021 patent, and no trademark in-fringement of Vita–Mix’s use of the desig-nation ‘‘5000.’’ On August 1, 2008, Basictimely filed its notice of conditional cross-appeal on the issues of no invalidity foranticipation, obviousness, and lack of en-ablement, and unenforceability for inequi-table conduct and laches. This court hasappellate jurisdiction over the appeal andcross-appeal pursuant to 28 U.S.C.§ 1295(a)(1).


II

The appeal and cross-appeal challengethe district court’s resolution on summaryjudgment of various contested issues.Summary judgment is appropriate whenno genuine of issues of material fact exist,and the moving party is entitled to judg-ment as a matter of law. Celotex Corp. v.Catrett, 477 U.S. 317, 322–23, 106 S.Ct.2548, 91 L.Ed.2d 265 (1986); Fed.R.Civ.P.56(c). The burden of showing the absenceof a genuine issue of material fact restswith the moving party. Id. A fact is mate-rial if its resolution will affect the outcomeof the case. Anderson v. Liberty Lobby,477 U.S. 242, 248, 106 S.Ct. 2505, 91L.Ed.2d 202 (1986). The court must af-ford all reasonable inferences and construethe evidence in the light most favorable tothe non-moving party. See id. at 255, 106S.Ct. 2505. To defeat summary judgment,the evidence as properly construed mustbe sufficient for a reasonable jury to findfor the nonmoving party; a mere scintillaof evidence will not suffice. Id. at 252, 106S.Ct. 2505. We review a grant of sum-mary judgment de novo, reapplying thestandard that the district court employed.Rodime PLC v. Seagate Tech., Inc., 174F.3d 1294, 1301 (Fed.Cir.1999).

As discussed below, numerous issues areraised by Vita–Mix on appeal. These is-sues include direct and indirect patent in-fringement, and trademark infringement.We address each in turn.

A. Claim Construction

Although the district court’s claim con-struction was not actually appealed, Vita–Mix contends that the district court erredin finding no direct infringement based, inpart, on applying to the accused device aclaim construction inconsistent with itsclaim construction order. Direct infringe-ment by Basic’s customers also serves as abasis for Vita–Mix’s claims of inducementand contributory infringement. We must

therefore decide whether the district courtapplied an inconsistent claim construction,and if so, which claim construction shouldhave been applied.

At the Markman hearing, the districtcourt reviewed the prosecution history ofthe 8021 patent and found that the paten-tee distinguished its invention over priorart stirring actions that break up or dis-lodge air pockets after they have formed.In light of this characterization, the courtfound that the preamble of the claim, ‘‘amethod of preventing the formation of anair pocket around the rotating blades posi-tioned in a pitcher of a blender’’ was neces-sary to give life, meaning and vitality tothe body of the claim. See, e.g., MBOLabs., Inc. v. Becton Dickinson & Co., 474F.3d 1323, 1330 (Fed.Cir.2007); In re Cru-ciferous Sprout Litig., 301 F.3d 1343, 1347(Fed.Cir.2002). The court found that theprosecution history statements distinguish-ing the function of the plunger constitutedan express disclaimer of other functions.The court construed the preamble to in-clude the limitation, ‘‘but not including amethod of stirring to disperse, dislodge, orbreak-up an air pocket after it has begunto form.’’

Vita–Mix’s 8021 patent originally includ-ed apparatus claims to its blender andplunger device. These claims were reject-ed for anticipation and obviousness. Theprior art disclosed blenders with structur-ally similar stirring wands that were usedto break up or dislodge air pockets. Theapplicant attempted to distinguish theclaimed device by emphasizing the novelfunction of preventing air pockets, as op-posed to dealing with air pockets that havealready formed. The examiner found thatthis functional limitation did not overcomethe anticipation and obviousness rejectionsof the apparatus claims, where substantial-ly similar structure was disclosed in theprior art. The method claim, however, did


overcome the rejection by the addition ofnovel functional limitations. The districtcourt interpreted this exchange in theprosecution history to indicate that theexaminer understood the invention’s pre-ventative function to be a new use of anexisting structure. The district court thusconstrued ‘‘preventing’’ to exclude methodsthat eliminate an air pocket at any timeafter it has begun to form.

In its cross-motion for summary judg-ment of no infringement, Basic argued thatits accused line of smoothie makers did notinfringe because the stir stick was used tostir the contents of the blender, and thepatentee disclaimed stirring. In its re-sponse, Vita–Mix argued that it was irrele-vant to the infringement analysis whetherBasic’s stir stick was used to stir the in-gredients in the blender. Vita–Mix’s in-fringement theory was that it was thepositioning of the stir stick, and not thestirring action, that prevented air pocketsfrom forming. Vita–Mix contended thatsince the express disclaimer was limited tostirring for a particular purpose—breakingup or dislodging air pockets after theybegin to form—Basic could not avoid in-fringement by just any stirring operation.

In its order granting summary judg-ment of no infringement, the court heldthat Vita–Mix’s position was ‘‘untenable’’and that the patentee disclaimed ‘‘all stir-ring.’’ Vita–Mix argues on appeal that theexclusion of all stirring was a new con-struction, and represents a change in thedistrict court’s position. Vita–Mix arguesthat the original claim construction ordercorrectly construed the term ‘‘preventingthe formation of an air pocket’’ to excludebreaking up or dislodging already formedair pockets, and not to exclude stirring forother reasons. Vita–Mix points out thatthe district court even noted that the 8021patent specification disclosed that theplunger could also be used to stir theingredients of the blender. Vita–Mix

Corp. v. Basic Holdings, Inc., 514f.sUPP.2D 990 (N.D.Ohio 2007) (ClaimConstruction Order at 7).

[1–3] Claim construction is an issue oflaw. Markman v. Westview Instruments,517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d577 (1996). Claims are properly construedwithout the objective of capturing or ex-cluding the accused device. NeoMagicCorp. v. Trident Microsystems, Inc., 287F.3d 1062, 1074 (Fed.Cir.2002); SRI Int’lv. Matsushita Elec. Corp. of Am., 775 F.2d1107, 1118 (Fed.Cir.1985) (en banc). Apatentee may, through a clear and unmis-takable disavowal in the prosecution histo-ry, surrender certain claim scope to whichhe would otherwise have an exclusive rightby virtue of the claim language. See, e.g.,Purdue Pharma L.P. v. Endo Pharms.Inc., 438 F.3d 1123, 1136 (Fed.Cir.2006)(‘‘Under the doctrine of prosecution dis-claimer, a patentee may limit the meaningof a claim term by making a clear andunmistakable disavowal of scope duringprosecution.’’).

[4] We agree with Vita–Mix that thedistrict court’s finding that the patenteedisclaimed all stirring appears to be incon-sistent with its earlier claim construction.We further agree with Vita–Mix that theearlier claim construction is correct for allthe reasons articulated by the districtcourt in its claim construction order. Tofind that the patentee disclaimed all stir-ring, regardless of whether and how thestirring acts on air pockets, ignores thenature of the distinction between a posi-tioning that prevents air pockets fromforming and an operation that breaks upair pockets after they have begun to form.

We will address below what, if any, im-pact the district court’s apparent change inclaim construction had on its grant of sum-mary judgment on the various issuesraised.


B. Direct Infringement

The district court found, and the partiesdo not challenge on appeal, that it is undis-puted that the accused blenders can beused in either an infringing or non-infring-ing manner. Vita–Mix Corp. v. BasicHoldings, Inc., No. 1:06–cv–2622(N.D.Ohio July 2, 2008) (Summary Judg-ment Order at 18). The district court thenfocused its attention on the question ofwhether or not any infringing use actuallyoccurred.

Vita–Mix presented two experts to testi-fy on the issue of infringement. The firstexpert, Dr. Swanger, testified that in hisopinion the accused device necessarily in-fringes when the stir stick is inserted intothe pitcher but not actively stirred. Basicpresented its own expert to dispute thesecontentions. Vita–Mix used Dr. Swanger’stestimony to support its allegations of di-rect infringement against Basic, and itsallegations of inducement and contributoryinfringement based on direct infringementby Basic’s customers.

Vita Mix’s allegations of direct infringe-ment by Basic concern two specific inci-dents involving Basic employees Dale Ol-droyd and Tom Daniels. Vita Mix allegesthat Mr. Oldroyd infringed the assertedpatent during his in-house testing of Ba-sic’s blenders. Mr. Oldroyd testified thatwhen he tested more than one blender at atime, he would allow some blenders to runwith stir sticks inserted, but would not beable to stir all of the blenders simulta-neously. Vita Mix contends that Mr. Ol-droyd infringed the patent when he al-lowed some of his testing blenders to runwithout stirring the stir sticks.

Vita–Mix also alleges that Basic’sspokesman Mr. Daniels infringed the pat-ent when he demonstrated Basic’s smoo-thie maker on a QVC television program.Footage of the demonstration shows atwenty-six second period where one of theaccused blenders is allowed to run with the

stir stick inserted, but where Mr. Danielsdoes not stir the stir stick. Vita–Mix con-tends that Mr. Daniels infringed the as-serted patent during these twenty-six sec-onds.

The district court determined that Mr.Oldroyd could not be shown to infringe thepatent, because Mr. Oldroyd did not testifyas to how he positioned the stir stick. Thecourt concluded that there was no evidencethat he positioned the stir stick as claimedor that the stir sticks prevented air pock-ets from forming during Mr. Oldroyd’stesting. The court also concluded that Mr.Daniels could not be shown to infringebecause there was no evidence in the rec-ord as to whether an air pocket actuallyformed during the twenty-six seconds ofMr. Daniel’s allegedly infringing use of theaccused blender.

Vita–Mix’s second expert, Dr. Traylor,conducted a double-blind survey of blenderusers, and testified that during his surveyhe observed a certain percentage of usersinsert the stir stick into the pitcher but notstir it. Vita–Mix offered this testimony asevidence that some of Basic’s customersuse the accused products in an infringingmanner. The district court struck theTraylor report as irrelevant because Dr.Traylor only testified as to whether andhow the survey participants used the stirstick. He did not observe whether or notan air pocket formed in any particularinstance. Because he was not informed asto the patent at issue or the positions ofthe parties, he had no opinion as to wheth-er any of the disputed claim limitationswere performed during his survey. Thedistrict court concluded that his testimonydid not establish whether any infringingact actually occurred and was thereforenot relevant to the issue of direct infringe-ment on the part of Basic’s customers.The court then found that the only remain-ing piece of evidence, Dr. Swanger’s testi-


mony, was not enough on which to base anunderlying direct infringement claim sup-porting secondary liability because it was‘‘hypothetical’’ in nature.

Having disposed of the two allegationsof direct infringement by Basic, and theallegation of direct infringement by Basic’scustomers, the court concluded that therewas no evidence of infringement, andgranted Basic’s summary judgment motionfor no infringement. The court’s conclu-sion of no direct infringement also servedas a basis for granting summary judgmentof no contributory infringement and noinducement, which we address in sectionsI.C. and I.D. below.

[5, 6] We find that the district courterred as a matter of law in disposing of thedirect infringement claims by requiring di-rect evidence of infringement. The courtdiscounted the accusations against Mr. Ol-droyd and Mr. Daniels because there wasno testimony or footage showing actualinfringement in those cases. Such evi-dence, however, is not required. Directinfringement can be proven by circumstan-tial evidence. Moleculon Research Corp.v. CBS, Inc., 793 F.2d 1261, 1272 (Fed.Cir.1986). Dr. Swanger’s testimony, acceptedas true for summary judgment purposes,establishes that the accused blenders willnecessarily infringe under certain circum-stances. Mr. Oldroyd’s testimony and thefootage to Mr. Daniels’s demonstration evi-dence the occurrence of those circum-stances described by Dr. Swanger.

[7] We also find that the district courterred as a matter of law in striking thetestimony of Dr. Traylor and thereby dis-posing of Vita–Mix’s allegations of directinfringement by Basic’s customers. Dr.Traylor’s testimony need not establish theultimate question of infringement to berelevant. See Daubert v. Merrell DowPharms., 509 U.S. 579, 591, 113 S.Ct. 2786,125 L.Ed.2d 469 (1993) (holding that evi-dence is relevant if it may assist the trier

of fact in resolving a factual dispute); Mo-leculon, 793 F.2d at 1272. Dr. Traylor’stestimony is relevant to the question ofwhether users tend to insert the stir stickinto the pitcher without stirring. See Fed.R.Evid. 402 (evidence is relevant if it hasany tendency to make the existence of anyfact that is of consequence to the determi-nation of the action more probable or lessprobable than it would be without the evi-dence). Dr. Swanger testified that if thestir stick was inserted into the pitcherwithout stirring while the blender was on,then the accused device would necessarilyinfringe. Dr. Traylor presented the re-sults of a survey indicating that Dr. Swan-ger’s proffered conditions were present atleast a small percentage of the time. It isnot too great an analytical leap for thejury to consider both experts’ testimoniesand conclude that infringement actuallyoccurs in at least a small percentage ofcustomer use. The limitations of Dr.Traylor’s survey may impact the persua-siveness of his testimony, but they do notrender the results of the survey whollyinadmissible.

We find that the combination of Mr.Oldroyd’s testimony and Mr. Daniels’s tes-timony with Dr. Swanger’s testimony iscircumstantial evidence that creates genu-ine issues of material fact regardingwhether employees of Basic engaged inacts of direct infringement. We also findthat the combination of Dr. Traylor’s andDr. Swanger’s testimonies is circumstan-tial evidence that creates genuine issues ofmaterial fact regarding whether and whenthe accused device performs the infringingmethod. Accordingly, we vacate the grantof summary judgment of no infringement.We remand the question of direct infringe-ment to the district court for a trial on themerits with instruction to apply the correctclaim construction as discussed in Part I.A.above.


C. Contributory Infringement

In order to reach the question of con-tributory infringement, we will adopt ar-guendo the opinion of Vita–Mix’s expertDr. Swanger and assume that customeruse of the accused device directly infringesunless the stir stick is being used to breakup air pockets or is in contact with thesides of the pitcher. See Aro Mfg. Co. v.Convertible Top Replacement Co., 365 U.S.336, 341, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961)(ruling that a defendant can be held liablefor contributory infringement if its custom-ers directly infringe).

[8] The patent laws provide that who-ever sells an apparatus for use in practic-ing a patented method, knowing it to be‘‘especially made or especially adapted foruse in an infringement of such patent,and not a staple article or commodity ofcommerce suitable for substantial non-infringing use, shall be liable as a con-tributory infringer.’’ 35 U.S.C. § 271(c)(emphases added). Contributory in-fringement imposes liability on one whoembodies in a non-staple device the heartof a patented process and supplies thedevice to others to complete the processand appropriate the benefit of the patent-ed invention. See Ricoh Co. v. QuantaComputer, Inc., 550 F.3d 1325, 1337(Fed.Cir.2008).

[9] District courts have found, and weagree, that non-infringing uses are sub-stantial when they are not unusual, far-fetched, illusory, impractical, occasional,aberrant, or experimental. Cf. HilgraeveCorp. v. Symantec Corp., 265 F.3d 1336,1343 (Fed.Cir.2001) (finding inducementwhere the accused device was capable ofnon-infringing modes of operation in un-usual circumstances); D.O.C.C. Inc. v.Spintech Inc., 36 USPQ2d 1145, 1155,1994 WL 872025 (S.D.N.Y.1994) (‘‘Contrib-utory infringement liability is not meantfor situations where non-infringing usesare common as opposed to farfetched, illu-

sory, impractical or merely experimen-tal.’’); Haworth Inc. v. Herman MillerInc., 37 USPQ2d 1080, 1089, 1994 WL875931 (W.D.Mich.1994) (‘‘The focus is notthe utility or ubiquity of the infringingconfiguration; the focus is the utility,presence, and efficiency of the non-infring-ing configurations.’’).

[10] Since the accused devices are un-disputedly capable of non-infringing use,the question of contributory infringementturns on whether the non-infringing use issubstantial. Vita–Mix did not argue be-low, and the district court did not directlyaddress, the substantiality of the accusedblenders’ non-infringing uses. Vita–Mixfocused only on the frequency of infringinguse, as documented in the survey evidenceof Dr. Traylor, which does not speak to thesubstantiality of the non-infringing use inthis case. On appeal, Vita–Mix arguesthat stirring the stir stick in a non-infring-ing manner or not inserting the stir stickare insubstantial uses, because those usesare based solely on ‘‘additional features’’ ofthe device. We held in Ricoh that aninfringer does not evade liability by bun-dling an infringing device with separateand distinct components that are capableof noninfringing use. See Ricoh, 550 F.3dat 1337. Although Basic points out thatVita–Mix has waived this argument, wewill consider it properly raised for pur-poses of deciding the question of contribu-tory infringement.

Vita–Mix’s argument is correct with re-spect to the clear cap included with theaccused blenders. This cap is an addition-al feature, and Basic cannot escape liabilityby simply including the cap with an other-wise infringing blender. See id. We willtherefore confine our analysis only to useof the accused blender with the stir stick.Vita–Mix’s reliance on Ricoh is unavailing,however, with respect to the use of the stirstick to stir. The accused blenders’ ball


and socket joint, interrupted ribbing, andrubber o-ring are not merely additional,separable features of the device. Cf. id. at1337–38 (finding that a microcontrollerwith no use but to infringe the patent didnot escape infringement when it was im-bedded in a larger product that had a non-infringing use unrelated to the microcon-troller). The undisputed record showsthat these features are defining features ofthe device, are directly related to the useof the stir stick, and are useful only if thestir stick is used to stir the contents of thepitcher and push the ingredients into theblades.

Accordingly, in light of the evidence ofrecord with all reasonable inferencesdrawn in Vita–Mix’s favor, no reasonablejury could find that using the stir stick tostir—where the stirring operation breaksup air pockets or touches the side of thepitcher—is an insubstantial use of the ac-cused device.1 The existence of substan-tial non-infringing uses for the accusedblenders defeats Vita–Mix’s claim for con-tributory infringement as a matter of law.See 35 U.S.C. § 271(c). We therefore af-firm the district court’s grant of summaryjudgment of no contributory infringement.

D. Inducement

[11] Reaching the question of induce-ment also requires adopting arguendo theopinion of Vita–Mix’s expert Dr. Swangerand assuming that customer use of theaccused device infringes unless it is beingused to break up air pockets or is incontact with the sides of the pitcher. SeeC.R. Bard, Inc. v. Advanced Cardiovascu-

lar Sys., Inc., 911 F.2d 670, 673 (Fed.Cir.1990) (ruling that a defendant can be heldliable for inducement of infringement if itscustomers directly infringe).

[12, 13] Patent law provides that who-ever actively induces infringement of apatent shall be liable as an infringer. 35U.S.C. § 271(b). Inducement requires ashowing that the alleged inducer knew ofthe patent, knowingly induced the infring-ing acts, and possessed a specific intent toencourage another’s infringement of thepatent. DSU Med. Corp. v. JMS Co., 471F.3d 1293, 1304 (Fed.Cir.2006) (en banc inrelevant part). Intent can be shown bycircumstantial evidence, but the mereknowledge of possible infringement willnot suffice. Id. at 1305–06.

Vita–Mix establishes that Basic knew ofthe patent, and argues that Basic knew ofits products’ potentially infringing use, butgoes no further. Indeed, the record isdevoid of actual evidence establishing spe-cific intent to encourage customers to in-fringe the 8021 patent. Vita–Mix insteadpoints to the product instructions and thedesign of the device to support an infer-ence of intent.

With respect to the product instructions,Vita–Mix argues that the directions foroperating Basic’s blender teach an infring-ing use of the product, giving rise to aninference of intent to induce infringement.There are two sets of instructions relevantto this point. The original product in-structions teach stirring in a counterclock-wise motion while the blades are moving.After Vita–Mix articulated its infringement

1. The dissent suggests that such non-infring-ing uses of the stir stick are not substantialbecause a user would only rarely use thedevice in a ‘‘solely’’ non-infringing way.Even assuming that the device might inadver-tently infringe the patent for a brief time inthe majority of uses does not mean that thenon-infringing use of the stir stick to stir isnot substantial enough to avoid contributory

liability. The analysis would be different ifthe blender could not be operated in a non-infringing way unless the user infringed atsome point. But where, as here, there is acommon use that neither infringes nor re-quires infringement, the substantiality of thatuse is unaffected by any unrelated infringingoperations.


contentions, but before the filing of suit,Basic amended its instructions to teachstirring in a counterclockwise motion whilescraping the sides of the pitcher with thestir stick while the blades are moving.The original product instructions do notevidence a specific intent to encourage in-fringement, since they teach a stirring ac-tion which Basic could have reasonablybelieved was non-infringing. The amend-ed product instructions teach an undisput-edly non-infringing use, evidencing intentto discourage infringement. Thus, Basic’sproduct instructions provide no basis onwhich Vita–Mix can rely to infer specificintent to encourage infringement.2

[14] Vita–Mix also points to the deviceitself to support an inference of intent,arguing that the ‘‘default’’ vertical positionof the stir stick leads to infringing use.This argument is insufficient as a matterof law. ‘‘Especially where a product hassubstantial non-infringing uses, intent toinduce infringement cannot be inferredeven when the defendant has actual knowl-edge that some users of its product may beinfringing the patent.’’ Warner–LambertCo. v. Apotex Corp., 316 F.3d 1348, 1365(Fed.Cir.2003). As discussed in Part I.C.above, Basic’s blenders are capable of sub-stantial non-infringing use.

Although the ‘‘default’’ vertical positionof the stir stick may lead to infringing useunder certain conditions, there is no evi-dence that Basic intends users to maintainthe stir stick in this position. It is undis-putedly possible to use the accused deviceas directed without ever practicing theclaimed method. Additionally, the productdesign naturally encourages non-infringing

use. The ball and socket joint facilitatesstirring with a full range of motion, theinterrupted ribbing encourages continuouscontact between the stir stick and thesides of the pitcher, and the rubber o-ringencourages contact between the stir stickand the sides of the pitcher. Finally, pic-tures of the device in the product instruc-tions, packaging, catalogues, and Basic’sown patent show the stir stick touching thesides of the pitcher.

In sum, the record is devoid of direct orcircumstantial evidence that Basic intendsto encourage infringement by its custom-ers, and replete with evidence to the con-trary. We therefore affirm the districtcourt’s summary judgment of no induce-ment.

E. Trademark Infringement

[15] Vita–Mix has a federal trademarkregistration for the mark VITA–MIXb.Vita–Mix has not registered the mark‘‘Vita–Mix 5000,’’ or the number ‘‘5000’’itself. Although it has never marked thenumber ‘‘5000{’’ in commerce, Vita–Mixclaims common law trademark protectionfor the number 5000. We review non-patent claims, such as claims arising underthe Lanham Act, in accordance with thelaw of the regional circuit within which thecase arose. See Midwest Indus., Inc. v.Karavan Trailers, Inc., 175 F.3d 1356,1359 (Fed.Cir.1999). Sixth Circuit lawgoverns our review here.

[16, 17] In the Sixth Circuit, a regis-trant must meet two criteria to succeed ina trademark infringement case: (1) theplaintiff must possess a protectable mark,

2. The dissent suggests that Vita–Mix intro-duced enough evidence to show that followingBasic’s product instructions may lead to in-fringing uses of the device. The question isnot, however, whether a user following theinstructions may end up using the device inan infringing way. Rather, it is whether Ba-

sic’s instructions teach an infringing use ofthe device such that we are willing to inferfrom those instructions an affirmative intentto infringe the patent. The district court cor-rectly found that Basic’s directions do noteven disputably indicate such intent.


Leelanau Wine Cellars, Ltd. v. Black &Red, Inc., 502 F.3d 504, 512–13 (6th Cir.2007), and (2) the plaintiff must show alikelihood of confusion, Tumblebus Inc. v.Cranmer, 399 F.3d 754, 763 (6th Cir.2005).Where a mark is not registered, a claimantmust show that it has used the mark atissue as a trademark, and that the defen-dant has used the accused mark as atrademark. Rock & Roll Hall of Fame &Museum, Inc. v. Gentile Prods., 134 F.3d749, 753 (6th Cir.1998).

[18, 19] An unregistered mark is enti-tled to protection as a trademark if it isinherently distinctive or has acquired sec-ondary meaning. Homeowners Group,Inc. v. Home Mktg. Specialists, Inc., 931F.2d 1100, 1105 (6th Cir.1991). A mark isinherently distinctive if its intrinsic natureserves to identify a particular source.Abercrombie & Fitch Stores, Inc. v. Am.Eagle Outfitters, Inc., 280 F.3d 619, 635(6th Cir.2002). A mark is not inherentlydistinctive if it serves as a grade designa-tion rather than an indication of the sourceof the goods. Cf. Eastman Kodak Co. v.Bell & Howell Document Mgmt. Prods.Co., 994 F.2d 1569, 1576 (Fed.Cir.1993);see also Arrow Fastener Co. v. StanleyWorks, 59 F.3d 384, 392 (2d Cir.1995);J.M. Huber Corp. v. Lowery Wellheads,Inc., 778 F.2d 1467, 1469 (10th Cir.1985);In re Armco Steel Corp., 127 USPQ 135,136 (T.T.A.B.1960).

Vita–Mix argues that that the Sixth Cir-cuit test for trademark infringement is nota two part test. Vita–Mix’s brief assertsthat it need not first prove that it holds aprotectable trademark in the number 5000if it can instead establish a likelihood ofconfusion. Vita–Mix’s interpretation ofSixth Circuit law is incorrect. The con-trolling case, Rock & Roll Hall of Fame,states:

a plaintiff must show that it has actuallyused the designation at issue as a trade-mark, and that the defendant has also

used the same or a similar designationas a trademark. In other words, theplaintiff must establish a likelihood thatthe defendant’s designation will be con-fused with the plaintiff’s trademark,such that consumers are mistakenly ledto believe that the defendant’s goods areproduced or sponsored by the plaintiff.

134 F.3d at 753–54 (citations omitted).Vita–Mix may be interpreting the phrase‘‘in other words’’ as signaling that the like-lihood of confusion test is a proxy forproving trademark use. More detailed re-view of the decision in Rock & Roll Hall ofFame reveals that this interpretation isincorrect. The sentence beginning withthe phrase ‘‘in other words’’ merely clari-fies that the proper foci of the likelihood ofconfusion test are the two competingtrademarks as they are used in commerce,as opposed to the products marked orancillary designations not used as trade-marks.

[20] Vita–Mix does not use the number5000 in commerce other than in connectionwith the designation ‘‘Vita–Mixb 5000.’’Vita–Mix concedes that the number 5000functions only to distinguish the blenderfrom previous Vita–Mix products on themarket, namely the Vita–Mixb 3600 andVita–Mixb 4500, and to indicate that the5000 was a higher grade appliance. Thereis no evidence in the record that the num-ber 5000 has any secondary meaning apartfrom its appearance in conjunction withthe trademark Vita–Mixb within the des-ignation ‘‘Vita–Mixb 5000.’’ The districtcourt correctly concluded that the trade-mark Vita–Mixb identifies the source ofthe goods, and the designation 5000 indi-cates the style or grade of product. Noreasonable jury could find from the evi-dence of record that the number 5000 isinherently distinctive or has secondarymeaning and is entitled to trademark pro-tection.


[21] Furthermore, there is no evidenceof record that Basic uses the designation5000 as a trademark in its sale of theBlender Solutions{ 5000 product. Basic’swebsite refers to 5000 as a model number,and Basic’s product packaging does notuse the number 5000 in the product name.‘‘Blender Solutions’’ refers to a line ofproducts that also includes the 4000 andthe 5500. Basic contends that these num-bers corresponded roughly to the suggest-ed retail prices of the products at one time,i.e. the 5000 was suggested to sell forabout $50.00. Similar to Vita–Mix’s num-bering scheme corresponding to the wat-tages of the blenders, Basic’s numberingscheme serves as a grade designation rath-er than an indication of the source of thegoods.

Rather than argue that Basic uses thenumber 5000 as a trademark, Vita–Mixmaintains that it need not show anythingother than likelihood of confusion. Vita–Mix is incorrect as a matter of law. Noreasonable jury could find that eitherVita–Mix’s or Basic’s use of the number5000 is a protectable trademark use.Without a protected trademark use, Vita–Mix cannot make a prima facie case oftrademark infringement as a matter oflaw. The district court correctly grantedsummary judgment of no trademark in-fringement.

III

Basic filed a conditional cross-appealchallenging the district court’s summaryjudgments of no invalidity, no inequitableconduct, and no laches. Because the issueof direct infringement was not properlyresolved on summary judgment for thereasons stated in Part II.B. above and isremanded to the district court, we reachthe conditional cross-appeal. We addresseach issue raised in turn.

A. Invalidity

Basic filed a motion for summary judg-ment of invalidity based on anticipationand obviousness. Basic’s motion cited twoof Vita–Mix’s older blender models andtwo prior art patents, one of which wascited by the examiner and the other ofwhich was cited within the first reference.Vita–Mix filed a competing motion forsummary judgment of no invalidity basedon anticipation, obviousness, or lack of en-ablement. The district court granted sum-mary judgment of no invalidity for antici-pation, obviousness, or lack of enablementin favor of Vita–Mix.

As a preliminary matter, the court madea point of explaining that it was reviewingthe validity issues under ‘‘its own’’ claimconstruction and not Vita–Mix’s profferedclaim construction. While it is not entirelyclear what claim construction the courtrefers to as its own in this explanation, itappears that the court is applying a con-struction that excludes all stirring. Asexplained in Part I.A. above, we find that aconstruction that excludes all stirring isinconsistent with the district court’s origi-nal claim construction order. We find thatthe court’s original claim construction or-der is correct, and that the validity issues,remanded for the reason explained below,should be reconsidered under the properclaim construction.

In reviewing the merits of the crossmotions concerning invalidity, the courtdetermined that Basic did not properlycite any expert testimony in its summaryjudgment motions based on anticipationand obviousness. The court found thatwithout expert testimony, Basic’s motionfor summary judgment provided only at-torney argument and no evidence of inval-idity. For this reason the court grantedsummary judgment of no invalidity for an-ticipation, obviousness, or lack of enable-ment.


[22] While we will not comment onwhether the district court’s assessment ofthe need for expert testimony provides areason to deny Basic’s motion for sum-mary judgment of invalidity, we find itprovides no reason to grant Vita–Mix’ssummary judgment motion of no invalidity.While we are sympathetic to the districtcourt’s plight in dealing with the volume ofbriefing submitted in connection with theparties’ summary judgment motions in thiscase, a district court cannot rely on itsassessment of one party’s motion for sum-mary judgment of invalidity when evaluat-ing the other party’s motion for summaryjudgment of no invalidity. It appears thatthe district court did so here.

[23] Unlike Basic’s motion for sum-mary judgment of invalidity, Basic’s oppo-sition to Vita–Mix’s motion for summaryjudgment of no invalidity contains numer-ous citations to expert testimony. Inconcluding that Basic cited no evidencerelevant to the question of invalidity, thedistrict court appears to have overlookedBasic’s opposition memorandum. We findthat Basic has raised a genuine issue ofmaterial fact with respect to the anticipa-tion, obviousness, and lack of enablementsufficient to defeat Vita–Mix’s motion forsummary judgment of no invalidity. Wetherefore remand the validity issues tothe district court for a decision on themerits with instructions to apply theproper claim construction.

B. Inequitable Conduct

[24, 25] Basic asserted a counterclaimand affirmative defense that the 8021 pat-ent is unenforceable due to inequitableconduct. To prevail on summary judg-ment on a claim for inequitable conduct,Basic would have to present evidence ofaffirmative misrepresentations of materialfact, failure to disclose material informa-tion, or submission of false material infor-mation, coupled with evidence of an intent

to deceive. See Dayco Prods. Inc. v. TotalContainment, Inc., 329 F.3d 1358, 1362(Fed.Cir.2003). Both intent and materiali-ty must ultimately be proven by clear andconvincing evidence. Id.

[26] Basic’s inequitable conduct chargeon appeal is that an inventor of the 8021patent made a false statement in a declara-tion when he distinguished low-poweredprior art blenders as incapable of formingair pockets around the blades. In re-sponse to a prior art rejection, inventorJohn Barnard submitted a declaration tothe patent office that the cited prior artreference was irrelevant because it dis-closed a low-powered blender. Mr. Bar-nard stated that such blenders did notusually form air pockets around theblades, and thus do not bear on theclaimed solution to the air pocket problemin high-power blenders. Basic offers anadditional prior art reference as evidencethat this statement is false. In his deposi-tion, Mr. Barnard explained that, regard-less of whether the statement is actuallyfalse, he believed the statement to be trueat the time that he made it. With no otherevidence in the record, the district courtcorrectly found that Basic made no genu-ine showing of deceptive intent.

C. Laches

Vita–Mix filed for summary judgment onBasic’s affirmative defenses, including pat-ent misuse, waiver, laches, estoppel, andfailure to mitigate. The district courtgranted wholesale Vita–Mix’s motion on allof the defenses listed above, ‘‘for the rea-sons stated in Vita–Mix’s motion.’’ Ofthese rulings, Basic appeals the court’sjudgment only with respect to its lachesdefense.

[27, 28] Application of the defense oflaches is an equitable determination that isreviewed for abuse of discretion, even onsummary judgment. Aukerman, 960 F.2d


at 1039. To prove an affirmative defenseof laches, a defendant must show that (1)the plaintiff delayed for an unreasonableand inexcusable amount of time in filingsuit, and (2) that the defendant was preju-diced as a result of the delay. GasserChair Co. v. Infanti Chair Mfg. Corp., 60F.3d 770, 773 (Fed.Cir.1995). A rebutta-ble presumption of laches arises when apatentee has delayed more than six yearsafter actual or constructive knowledge ofthe defendant’s alleged infringing activity.A.C. Aukerman, Co. v. R.L. ChaidesConstr. Co., 960 F.2d 1020, 1032 (Fed.Cir.1992); 35 U.S.C. § 286.

[29] With respect to the first lachesinquiry, Basic argues that Vita–Mix’s CEOwas aware of Basic’s accused blenders‘‘when they first came out,’’ and that Vita–Mix brought suit over five years afterlearning of the accused infringement.Such a delay does not give rise to a pre-sumption of laches, although ‘‘[t]he lengthof time which may be deemed unreason-able has no fixed boundaries but ratherdepends on the circumstances.’’ Auker-man, 960 F.2d at 1032.

The circumstances of the present casedo not support a finding of laches. Vita–Mix’s motion for summary judgment as-serted that Basic presented no evidencedemonstrating prejudice. In opposition,Basic asserts that it suffered economicprejudice from the delay because it wouldhave changed its product instructions toavoid infringement during the entire peri-od of delay. To support this assertion,Basic notes that it did in fact promptlychange its instructions when it learned ofthe potential infringement. However,while a change to Basic’s product instruc-tions may impact its liability for indirectinfringement, no change to those instruc-tions would affect Basic’s liability for di-rect infringement. In light of our rulingson inducement and contributory infringe-ment, there can be no prejudice arising

from Basic’s lost opportunity to changethose product instructions. We thereforeaffirm the district court’s grant of sum-mary judgment of no laches.

CONCLUSION

For the reasons stated above the districtcourt’s judgment of no direct infringementis vacated and remanded for a decision onthe merits under the proper claim con-struction. The judgments of no induce-ment, no contributory infringement, andno trademark infringement are affirmed.The findings of no invalidity for anticipa-tion, obviousness, or lack of enablementare vacated and remanded for a decisionon the merits under a proper claim con-struction. The judgment of no inequitableconduct is affirmed. The judgment of nolaches is affirmed.

COSTS

Each party shall bear its own costs.

AFFIRMED–IN–PART, VACATED–IN–PART, AND REMANDED

BRYSON, Circuit Judge, concurring inpart and dissenting in part.

I agree with the majority’s analysis anddisposition of most of the issues in thiscase; my disagreement is limited to theportion of the judgment that upholds thedistrict court’s summary judgment rulingson inducement of infringement and con-tributory infringement. In my view, Vita–Mix introduced enough evidence on thoseissues to overcome Basic’s summary judg-ment motion.

1. As to inducement, the majority con-cludes that although there was evidence ofdirect infringement, Vita–Mix introducedno evidence that Basic encouraged or in-structed users of its accused devices tooperate them in an infringing manner.My review of the evidence persuades me


that Vita–Mix has pointed to disputedquestions of material fact with respect toinduced infringement.

In the portion of its opinion dealing withdirect infringement, the majority agreesthat Vita–Mix’s evidence is sufficient tocreate a factual issue as to whether, whenthe stir stick of the accused device is in the‘‘default’’ position during normal opera-tion—i.e., when it is not being used to stirthe contents of the blender—the deviceinfringes. Under those circumstances, afinder of fact could find inducement ofinfringement based on instructions that di-rect the user to operate the device in anormal fashion. That is because the fact-finder could conclude that operating thedevice in the normal fashion entails operat-ing it so that the stir stick is in the defaultposition, even if for a short period at theoutset or for intermittent periods duringthe use of the blender.

In his expert report, Dr. Swanger statedthat in normal operation, the accused de-vices will practice the claimed method. Heexplained that during operation, ‘‘when thestir stick is inserted into the container butnot held by a user, the natural, defaultposition for the stir stick is at or near thecenter of the container without touchingthe sides.’’ With the stir stick in thatdefault position during operation, he ex-plained, the accused products would in-fringe. Dr. Swanger then analyzed Basic’sinstructions for using the blenders andfound that they did not direct users toavoid using the device in the default mode.

The evidence of Basic’s videotaped dem-onstration of the operation of the accuseddevice, which was shown on television, wasto the same effect. The demonstrationshowed the normal operation of the device,depicting periods of time in which the op-erator did not use the stir stick or eventouch it. During those periods, the stirstick appeared to remain in the defaultposition near the center of the container,

not touching the sides. A fact-finder couldregard that advertising demonstration as aform of instruction on the use of the devicethat entailed using it at least in part in aninfringing manner.

The majority relies on Warner–LambertCo. v. Apotex Corp., 316 F.3d 1348 (Fed.Cir.2003), for the proposition that an intentto induce infringement cannot be inferredfrom a defendant’s knowledge that someusers of the product may infringe. Butthis case is quite different from Warner–Lambert. There, the court found no in-ducement because there were many usesfor the accused product and because ‘‘few-er than 1 in 46 sales of that product [were]for infringing uses.’’ Under those circum-stances, the court concluded that ‘‘we arenot in a position to infer or not infer intenton the part of Apotex without any directevidence.’’ Id. at 1365. In contrast, if weaccept Vita–Mix’s evidence as true, in thiscase nearly all users will infringe as soonas they turn on the accused blender.

The difference can be illustrated by asimple example: Suppose a manufacturersells a device that can be made to infringeby removing a set of screws that are inplace when the device is sold. In such acase, the manufacturer would not ordinari-ly be liable for inducing infringement un-less it instructed users to remove thescrews or otherwise encouraged them todo so. But if the manufacturer sold thedevice with the screws removed, so thatthe device would infringe if used in theordinary manner in the ‘‘as-sold’’ configu-ration, the fact that the manufacturer pro-vided screws that would enable a user toconvert the device into a non-infringingform would not shield the manufacturerfrom liability for vicarious infringement.In such a case, the manufacturer could befound liable for inducement even if theinstruction manual taught users how toinsert the screws and pointed out the ad-


vantages of using the device in that al-tered, noninfringing form.

Finally, at least some of Basic’s instruc-tions arguably give specific directions touse the accused device in the default man-ner for some purposes. To begin with, oneof the instruction manuals in the recorddirects the user to turn on the device withthe stir stick in place, to start the blendingprocess, and to turn off the device whenthe blending is complete. The manualcontains no intervening reference to ma-nipulating the stir stick. Elsewhere, theinstructions for making ‘‘smoothies’’ directa sequence of steps, including the use ofthe ‘‘pulse’’ feature and the low and highpower settings sequentially until the con-tents of the blender are smooth. The in-structions add, ‘‘Turn the stir stick coun-ter-clockwise for best mixing results.’’Even assuming that ‘‘turning’’ the stirstick is interpreted to mean rotating itaround the inner edges of the container,the suggested departure from the defaultoperation could be viewed as only an op-tional step, or one to be used from time totime during the blending process, ratherthan throughout the process from begin-ning to end. The ‘‘instruction’’ evidencethus seems to me sufficient to overcomesummary judgment on the issue of wheth-er the instructions evidence the intent toencourage infringement.

2. As applied to this case, a similaranalysis governs the resolution of the issueof contributory infringement and the ques-tion, common to vicarious infringementgenerally, whether the accused device canbe used for substantial noninfringing pur-poses. As the majority notes, this courthas held that a party will not be held liablefor infringement if that party provides adevice that can be used for infringementbut can also be used for substantial nonin-fringing purposes. In this case, the evi-dence proffered by Vita–Mix, summarizedabove, would allow a fact-finder to con-

clude that when the accused device is usedwith the stir stick in place, it will frequent-ly be used in an infringing manner andthat it would be most unusual for an ordi-nary purchaser of the blender to use it in amanner that avoided infringement alto-gether.

Basic makes two arguments as to whythere is no contributory infringement inthis case, neither of which is persuasive.First, it points out that the accused blen-ders are sold not only with a stir stick, butalso with a ‘‘lid cap’’ that can be used inplace of the stir stick, and that when theblenders are used with the lid cap in placeof the stir stick, they do not infringe at all.That, according to Basic, is a ‘‘substantialnon-infringing use’’ that is sufficient toavoid liability for contributory infringe-ment. That argument is entirely uncon-vincing, as the majority correctly pointsout.

Basic’s second argument is based on thetestimony of Vita–Mix’s president, who an-swered ‘‘yes’’ when asked if ‘‘it’s possibleto use a Basics blender in a non-infringingmanner.’’ That answer, however, does notprovide the ‘‘Aha!’’ moment that Basicseems to believe it does. In the context ofthis case, the question was the wrong one:What is important is not whether it ispossible to use the Basic blender in anoninfringing manner, but whether it ispossible (or likely) that a user could (orlikely would) operate it solely in a nonin-fringing manner. There is no dispute thatthe stir stick can be used in a noninfring-ing manner, such as during the time theuser is rotating the stir stick within theblender container, keeping the stir stick incontact with the container’s inner walls.But that does not overcome the evidenceoffered by Vita–Mix that customers whouse the Basic device with the stir stickinserted will infringe in a large percentageof instances and that the device has no


substantial use that does not entail at leastsome period of infringement.

In this regard, I disagree with the ma-jority’s comment that ‘‘the frequency ofinfringing use TTT does not speak to thesubstantiality of the non-infringing use.’’Vita–Mix’s evidence suggests that on thefacts of this case frequency is closely relat-ed to substantiality, and I agree. That isbecause, based on Vita–Mix’s evidence, auser of the accused devices would have totake exceptional measures to avoid in-fringement; i.e., the user would have torotate the stir stick continuously duringthe blending process without letting it restat any point in the default position. Afinder of fact could conclude that, as apractical matter, the continuous rotationprocess would be an infrequent mode ofnoninfringing use, and for that reason, aninsubstantial one.

I would likewise discount the elementsof the structure and packaging of the ac-cused devices, factors on which the majori-ty relies. The majority is correct thatthose features suggest using the stir stickto stir in a manner that results in contactwith the sides of the container. But thefeatures to which the majority points donot support the inference that the stirringwill be continuous and that the stir sticktherefore will never be left in the defaultposition during operation. As to that is-sue, Vita–Mix’s evidence is to the contrary.

In sum, without suggesting how any ofthe above factual issues might ultimatelybe decided, I would hold that the evidencebefore the trial court is sufficient to over-come Basic’s motion for summary judg-ment on both inducement and contributoryinfringement.

,

PROMETHEUS LABORATORIES,INC., Plaintiff–Appellant,

v.

MAYO COLLABORATIVE SERVICES(doing business as Mayo Medical Lab-oratories) and Mayo Clinic Rochester,Defendants–Appellees.

No. 2008–1403.

United States Court of Appeals,Federal Circuit.

Sept. 16, 2009.

Background: Licensee filed infringementsuit regarding patents claiming methodsfor calibrating proper dosage of thiopurinedrugs to treat autoimmune diseases. TheUnited States District Court for the South-ern District of California, John A. Hous-ton, J., 2008 WL 878910, granted summaryjudgment of invalidity of patents. Licenseeappealed.

Holdings: The Court of Appeals, Lourie,Circuit Judge, held that:

(1) method’s claims were drawn to patent-able subject matter based on transfor-mative administering and determiningsteps of process, and

(2) mental step of claimed process did notdetract from patentability.

Reversed and remanded.

1. Patents O324.5

Court of Appeals reviews de novo thedistrict court’s grant of summary judg-ment of invalidity of a patent. Fed.RulesCiv.Proc.Rule 56(c), 28 U.S.C.A.

2. Patents O324.5

Whether a patent claim is directed tostatutory subject matter is a question oflaw reviewed de novo.

Vita Mix

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