Words Matter: “Identical” Does Not Mean “Identical to a Portion Of”

LABORATORY CORPORATION OF AMERICA HOLDINGS v. QIAGEN SCIENCES LLC

Before Lourie, Dyk, and Cunningham.  Appeal from the United States District Court for the District of Delaware.

Summary: The Federal Circuit reversed the district court’s denial of JMOL of non-infringement, which rested on an incorrect construction of “identical” and was not supported by substantial evidence.

Labcorp sued Qiagen, alleging that Qiagen’s DNA sample sequencing kits infringed two Labcorp patents related to methods of preparing DNA samples for sequencing. At trial, the jury found that Qiagen infringed one patent under the doctrine of equivalents and literally infringed the other patent. After trial, the district court denied Qiagen’s motion for judgment as a matter of law (“JMOL”) of non-infringement.  Qiagen appealed.

The Federal Circuit reversed. For one asserted patent, the Federal Circuit first found the district court erred in denying JMOL of non-infringement by allowing the jury to conclude that the claim term “identical” could mean “identical to a portion.”  The court emphasized that such claim construction issues cannot be decided by the jury. The court also found “identical” cannot mean “identical to a portion of” because identical means “the same.” The Federal Circuit also found the accused product did not infringe the patent under the doctrine of equivalents because it failed all three prongs of the function-way-result test. For the other asserted patent, the Federal Circuit agreed there was insufficient evidence to support a verdict of literal infringement. Specifically, the Federal Circuit found the district court relied on evidence that failed to satisfy two requirements of the claim terms as construed by the district court. The court also rejected Labcorp’s argument that two components could in combination infringe the limitation in question, as the district court’s construction required the claimed functions to be performed by one component. Accordingly, the Federal Circuit reversed and remanded to the district court with instructions to grant JMOL of non-infringement on both asserted patents.

Editor: Sean Murray