## Facts

- Fonar Corporation and Dr. Raymond V. Damadian sued General Electric Company (GE) and an imaging practice for infringement of two patents involving MRI technology.
- One patent, U.S. Patent No. 4,871,966 (the ’966 patent), claimed a method of using an MRI machine to obtain multiple image slices at different angles in a single scan, known as multi-angle oblique (MAO) imaging.
- MAO imaging was presented as an improvement over prior-art MRI techniques that could obtain multiple parallel images in one scan but generally needed multiple scans to obtain images at varying angles.
- GE denied infringement and argued the ’966 patent was invalid for failure to satisfy the best-mode requirement of 35 U.S.C. § 112, focusing on three parts of the disclosed implementation:
  - software routines (GE argued the patent should have disclosed source code for important routines),
  - a gradient multiplier board (GMB) (GE argued the best mode was not disclosed because the patent did not disclose a comparator in connection with the GMB), and
  - a computer chip (GE argued the patent did not sufficiently disclose the chip used to implement certain hardware functions).
- At trial, Fonar acknowledged it had a best mode for these aspects but offered testimony that the patent’s functional descriptions were enough for a person skilled in the art to implement them without needing source code or detailed circuit-level disclosures.
- The jury found GE infringed the ’966 patent and that the asserted claims were not invalid, including not invalid for failure to disclose the best mode. The jury awarded Fonar lost profits and reasonable royalty damages.
- The district court denied GE’s post-trial motions for judgment as a matter of law (JMOL) challenging the jury’s findings on the ’966 patent.
- The second patent, U.S. Patent No. 3,789,832 (the ’832 patent), involved methods using relaxation-time measurements to distinguish cancerous from noncancerous tissue. The jury found infringement of the ’832 patent under the doctrine of equivalents and awarded damages.
- After the verdict, the district court granted JMOL that GE did not infringe the ’832 patent and also granted JMOL that GE did not induce infringement of the ’966 patent.
- GE appealed the adverse rulings tied to the ’966 patent (validity, infringement, and damages). Fonar cross-appealed the JMOL rulings on the ’832 patent (noninfringement) and inducement (’966 patent).

## Issues

1. Whether substantial evidence supported the jury’s finding that the ’966 patent complied with § 112’s best-mode requirement even though it did not disclose software source code and did not spell out additional details about the GMB comparator and the chip’s implementation.
2. Whether substantial evidence supported the jury’s finding that GE infringed the asserted claims of the ’966 patent.
3. Whether the district court erred by granting JMOL that GE did not infringe the ’832 patent, despite the jury’s doctrine-of-equivalents verdict.
4. Whether the district court correctly granted JMOL that GE did not induce infringement of the ’966 patent under 35 U.S.C. § 271(b).
5. Whether the damages awarded for the ’966 patent were supported by legally sufficient evidence, including the use of the entire MRI system’s value as a royalty base.

## Decision

- Affirmed the district court’s denial of JMOL and upheld the jury’s verdict that the ’966 patent was not invalid, including on best-mode grounds.
- Affirmed the jury’s finding that GE infringed the ’966 patent.
- Affirmed the damages award for infringement of the ’966 patent, including the use of the entire market value of the MRI systems based on evidence tying customer demand to the patented MAO feature.
- Reversed the district court’s JMOL of noninfringement of the ’832 patent and reinstated the jury’s doctrine-of-equivalents verdict and associated damages.
- Affirmed the district court’s JMOL that GE did not induce infringement of the ’966 patent.

## Legal Principles

- Best mode under 35 U.S.C. § 112 asks whether the inventor had a preferred mode of practicing the invention and, if so, whether the disclosure was sufficient to inform a person of ordinary skill of that mode without concealment.
- In a software-implemented invention, best mode does not automatically demand disclosure of source code; functional disclosure may be enough when a skilled artisan can write the code from the described functions.
- For complex electronic components, the best-mode inquiry can be satisfied by functional and schematic disclosure when the details omitted are within ordinary skill or otherwise not shown to be withheld to hide the inventor’s preferred implementation.
- JMOL may not displace a jury verdict where substantial evidence supports the verdict; reviewing courts view the evidence in the light most favorable to the verdict winner.
- Doctrine of equivalents infringement is a fact question; a trial court may not set aside a supported jury finding of equivalence simply because it would weigh the evidence differently.
- Inducement under 35 U.S.C. § 271(b) requires proof of acts intended to cause infringement and knowledge that the induced acts constitute infringement; failures tied to marking and notice can limit recovery and may affect proof tied to inducement.
- Under the entire market value rule, use of the entire accused product as a royalty base can be allowed when evidence shows the patented feature drives demand for the overall product.

## Conclusion

The Federal Circuit affirmed the jury’s verdict that GE infringed Fonar’s ’966 MAO-imaging patent and that the patent was not invalid for failure to disclose the best mode, rejecting the argument that source code and added hardware detail were required. It also upheld the damages award for the ’966 patent, including use of the MRI system’s full value where supported by demand evidence. On Fonar’s cross-appeal, the court reversed the district court’s JMOL on the ’832 patent and reinstated the jury’s doctrine-of-equivalents infringement finding and damages, while affirming JMOL that GE did not induce infringement of the ’966 patent.


Fonar Corp. v. General Electric Co., 107 F.3d 1543 (1997)