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The Federal Circuit on Thursday overturned a jury verdict that lighting manufacturer Opti-Luxx owed $23,000 for allegedly infringing two patents held by Canadian rival Smartrend Manufacturing Group, delivering a major win for the U.S. company.

A three-judge panel reversed the lower court’s judgment on a utility patent and vacated the finding of infringement on a design patent, citing errors in the claim construction that guided the jury.

Design Patent Tossed, Remanded for Clarification

The appellate panel found that the design patent verdict was based on a flawed interpretation of the term “transparency.” The court vacated that portion of the decision and remanded it for further proceedings under the correct understanding of the term.

“While the district court may consider extrinsic evidence, any testimony at odds with the patent’s written record should be given no weight,” the opinion stated. The court added that expert testimony must be backed by objective evidence, such as technical dictionaries or other verifiable materials, and warned against relying on unsupported conclusions.

Utility Patent Reversal

The jury had previously found that Opti-Luxx infringed the utility patent under the doctrine of equivalents, a legal principle that allows for infringement findings even without literal claim violations. The Federal Circuit rejected that finding, concluding that no reasonable jury could have reached it.

The utility patent requires that the sign be customizable without removal. Opti-Luxx’s product does not meet that standard. “The patent indicates the invention can ‘removably receive the sign’ so it can be exchanged, customized, or serviced without removing the installation,” the panel said. “Smartrend’s expert … conceded that the accused product is ‘not capable of doing that.’”

Background

The dispute began in November 2021 after Smartrend accused Opti-Luxx of infringing its U.S. Design Patent No. D932,930 and U.S. Patent No. 11,348,491. Smartrend claimed it notified Opti-Luxx in February 2021 about pending patent applications covering illuminated school bus signs.

A jury in the Western District of Michigan initially found that Opti-Luxx willfully infringed both patents, awarding Smartrend $23,308 in damages.

Gaëtan Gerville-Réache, counsel for Opti-Luxx, hailed the Federal Circuit’s decision. “The opinion instructs district courts not to accept conclusory expert opinions solely because the witness is qualified,” he said. “Expert testimony must be based on actual evidence and cannot contradict the patent or law, including the doctrine of equivalents.”

Smartrend’s counsel did not immediately respond to requests for comment.

Legal Teams

Smartrend is represented by Thomas W. Cunningham, John P. Rondini, and Dustin R. Zak of Brooks Kushman PC.

Opti-Luxx is represented by Gaëtan Gerville-Réache, Vito A. Ciaravino, and Douglas A. Dozeman of Warner Norcross + Judd LLP.

The Federal Circuit panel consisted of Judges Timothy B. Dyk, Richard Linn, and Leonard P. Stark.