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.
