Anticipate This!™ | Patent and Trademark Law Blog

E-Pass Technologies, Inc. v. 3Com Corporation (also known as 3Com, Inc.), et al.

Posted in Opinion Commentary by Jake Ward on January 17, 2007

When the CAFC Vacates and Remands, It Does Not Indicate or Suggest That the Lower Court’s Decision is Erroneous.

(Fed. Cir. 2007, 06-1356)


To the CAFC for the second time, E-Pass claimed improper the final summary judgment holding that none of the defendants (including 3Com) directly or indirectly infringed E-Pass’s U.S. Patent No. 5,276,311 (“the ’311 patent”).  Specifically, E-Pass challenged the district court’s interpretation of the previous CAFC opinion where the CAFC had vacated and remanded to the district court to address the issue of infringement under the CAFC’s construction (no dimensional limitation) of the term “card.”   

The ‘311 patent at issue relates to a method and device for substituting a single electronic multifunction card for multiple credit cards.  E-Pass accused 3Com of inducing consumers to practice the steps of the patented method on its Palm PDA products, e.g. the Treo cell phone.  

On appeal, E-Pass first argued that the district court disobeyed the mandate of this court by entering summary judgment in favor of 3Com as to the construction of the “electronic multi-function card” limitation.  The CAFC disagreed with this contention.  “Once a case has been decided on appeal, the rule adopted is to be applied, right or wrong, absent exceptional circumstances, in the disposition of the lawsuit.”  By vacating, the court signals that, although the district court’s prior decision rested upon erroneous grounds, a proper claim construction might support a judgment (summary or otherwise) in favor of either party.  Thus, the district court was within its right on remand to grant summary judgement to 3Com, even though E-Pass had won at the CAFC as to the issue of claim construction.

As to the infringement issues, the CAFC further recited that it is hornbook law that to survive the defendants’ motions for summary judgment, a party must “make a showing sufficient to establish the existence of [each] element essential to [its] case.”  E-Pass must show that all of the steps of the ‘311 method claim were performed, and in order. E-pass did not meet this burden.  The evidence shows, at best, that the Palm defendants taught their customers each step of the claimed method in isolation. Nowhere does the evidence teach all of the steps of the claimed method together, much less in the required order.

Accordingly, the district court properly granted summary judgment.  Affirmed.

Leave a Reply

Fill in your details below or click an icon to log in: Logo

You are commenting using your account. Log Out /  Change )

Google+ photo

You are commenting using your Google+ account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )


Connecting to %s

%d bloggers like this: