In affirming-in-part, vacating-in-part and remanding a lower court’s ruling, the U.S. Court of Appeals for the Federal Circuit found that a substantial non-infringing use does not preclude a finding of infringement by inducement.  Toshiba Corp. v. Imation Corp. et al., Case No. 11-1204 (Fed. Cir., June 11, 2012) (Moore, J.) (Dyk, J. concurring-in-part and dissenting-in-part).

Toshiba accused Imation of infringing two Toshiba patents.  The first patent was directed to optical disc technology and, more specifically, how data is written to a recordable DVD.  The district court granted summary judgment of no indirect infringement (i.e., no contributory infringement or inducement) after concluding that recording data to a DVD without “finalizing” the DVD was a substantial non-infringing use.  “Finalizing” a DVD allows the DVD to be read by different devices and infringes the first patent, whereas, not “finalizing” a DVD allows the DVD to be read only by the original device and allows a user to add additional information to the DVD. 

The Federal Circuit affirmed the lower court’s ruling as it related to contributory infringement, but vacated the finding of no inducement of infringement.  The Federal Circuit reasoned that the non-infringing use was substantial and supported summary judgment of no contributory infringement.  However, the Federal Circuit found that the lower court erred in determining that a substantial non-infringing use precludes inducement of infringement.  The Federal Circuit found that Toshiba’s arguments and related evidence that Imation designed recordable DVDs for use in an infringing manner and instructed users to use the DVDs in an infringing manner was sufficient to preclude summary judgment because a jury could reasonably conclude that, more likely than not, one person somewhere finalized the DVDs in an infringing manner.

The second patent was directed to a recordable DVD having a “management” region containing information about the structure of the DVD.  The “management information” provides a computer with information about the number of recording planes on the DVD.  The lower court construed the “management information” as “information whose purpose is to identify the number of recording planes on the recording medium.”  Toshiba accused single-sided DVDs of infringement, and the lower court concluded that because single-sided DVDs contain information identifying the number of planes on only that single side, the accused DVDs do not infringe because thepurpose of the information is to only identify the planes on one side of the DVD and not the entire recording medium. 

The Federal Circuit disagreed with the lower court’s reading of embodiments of the specification into the claim.  The Court determined that that the “language of the claim only requires that the information ‘represents’ the number of recording planes.” 

In dissent, Judge Dyk found the “number of recording planes” limitation to require the identification of both the number of DVD sides and the number of layers per side, stating that “the specification and the prosecution history … make clear that the central objective of the patent was to identify whether an optical DVD was a one-sided DVD or a two-sided DVD.”  Applying this construction, Judge Dyk would have affirmed the lower court’s summary judgment of non-infringement.