Both Meso and Roche licensed patents from INGEN relating to immunoassays that exploit electrochemiluminescence (“ECL”). The Roche license included a field restriction that was to be indicated on its packaging. INGEN transferred the patents to BioVeris. Roche purchased BioVeris and, now owning the patents, told customers to ignore the field restriction labels and began selling the products without field restrictions. Roche brought this suit seeking a declaratory judgment that it doesn’t infringe Meso’s rights arising from the INGEN-Meso license agreement, and Meso counterclaimed for patent infringement. The case was tried to a jury who found: 1) that Meso holds an exclusive license to the asserted patent claims; 2) that Roche directly infringed claim 33 of U.S. Patent No. 6,808,939; 3) that Roche induced infringement of claim 1 of U.S. Patent No. 5,935,779 and claims 38 and 44 of U.S. Patent No. 6,165,729; and 4) that Roche’s infringement was willful (however, the district court granted Roche’s motion for judgment as a matter of law (“JMOL”) on willfulness). Roche appealed. After determining that Meso held exclusive rights under the ’939 patent, but not deciding Meso’s rights under the ’779 and ’729 patents, the CAFC finds an absence of intent, and an absence of an inducing act that could support liability during the damages period set forth in 35 U.S.C. § 286. The CAFC agrees with Roche that the same analysis that led the district court to grant JMOL on willfulness should have led to a JMOL on inducement. Thus, the CAFC reverses the induced-infringement judgment (essentially on statute of limitations grounds), vacates the damages award, and remands for a new trial on damages. The CAFC also vacates the district court’s noninfringement judgment as to the three other patents as that judgement resulted from a misapplication of the compulsory-counterclaim rule. Judge Newman dissents because in her view Roche cannot infringe patents it owns.
