IP Law Daily, PATENT—Fed. Cir.: Testimony of expert who did not actually examine the accused product was insufficient to create a fact issue of infringement, (Apr 1, 2024)

By Kevin M. Finson

In two separate cases, a patentee failed to create a genuine question of material fact because the patentee’s experts did not actually examine the accused products but merely opined that it was not necessary for the products to have been modified, which would take them outside the scope of the claims.

Experts who do not examine the products about which they are opining cannot establish a genuine issue of material fact over whether the accused devices were “unmodified," for the purpose of summary judgment, the U.S. Court of Appeals for the Federal Circuit has held. This principle had been established in a binding decision concerning the very same patent at issue in the present two cases (Alexsam, Inc. v. Cigna Corp.,Alexsam, Inc. v. Simon Property Group, L.P., April 1, 2024, Hughes, T.).

AlexSam, Inc. (AlexSam) was the owner of U.S. Patent No. 6,000,608 (the ’608 patent) which claimed a “multifunction card system” used for gift cards. During prosecution, the patent was only allowed after adding a limitation that it work with an “unmodified existing standard point-of-sale device." AlexSam brought suit for infringement against numerous defendants in two cases. In prior litigation a claim construction was entered defining this term as meaning “a terminal for making purchases at a retail location of the type in use as of July 10, 1997, that has not been reprogrammed, customized, or otherwise altered with respect to its software or hardware for use in the card system.” This construction was stipulated to in the present cases with minor grammatical changes. After discovery, all defendants moved for summary judgment of non-infringement.

Infringement. In both cases the defendants argued that AlexSam was unable to provide sufficient proof of infringement to generate a jury question. AlexSam’s experts testified that the accused product could be used with a terminal of the sort in use as of July 10, 1997, but at no point did they examine the accused product to determine if any modifications which could be relevant had in fact been made.

The court affirmed the grants of summary judgment.

The Case is No. 22-1598 and No. 22-1599.

Attorneys: Steven Ritcheson (Insight, PLC) for Alexsam, Inc. Ricardo Bonilla (Fish & Richardson PC) for Cigna Corp., Cigna Health and Life Insurance Co. and Connecticut General Life Insurance Co., Elizabeth M. Manno (Venable LLP) for Simon Property Group, L.P., Jason F. Hoffman (Baker & Hostetler LLP) for Blackhawk Network, Inc.

Companies: Alexsam, Inc.; Cigna Corp.; Cigna Health and Life Insurance Co.; Connecticut General Life Insurance Co.; Simon Property Group, L.P.; Blackhawk Network, Inc.

Cases: Patent FedCirNews