## Facts

- Ricoh owned patents concerning optical disc drive technology, including method claims directed to disc-rotation control (“Zone CLV”) and buffer-underrun protection for recording.
- Quanta entities manufactured and sold notebook computers and optical disc drives; NU distributed/resold Quanta drives in the United States.
- Ricoh sued in federal district court alleging infringement of multiple patents relating to optical disc recording and control methods.
- The district court granted summary judgment that: (1) asserted claims of one patent were invalid as obvious; (2) accused products did not perform all steps of asserted method claims of another patent; and (3) there was no direct or indirect infringement of two method patents relating to recording.
- As to the recording-method patents, the district court reasoned in part that selling a device capable of performing a patented method is not a “sale” of the method and that the drives had substantial noninfringing uses (e.g., reading discs), defeating contributory infringement; it also rejected inducement.
- Ricoh appealed the invalidity and noninfringement rulings, including the standards applied to contributory and induced infringement.

## Issues

1. Whether summary judgment properly held certain asserted claims invalid as obvious.
2. Whether summary judgment properly held the accused products did not perform every step of asserted method claims, defeating infringement.
3. Whether defendants directly infringed asserted method patents under 35 U.S.C. § 271(a) by making, using, selling, offering to sell, or importing the claimed methods.
4. Whether the district court applied the correct legal standard for “substantial noninfringing use” in granting summary judgment of no contributory infringement under § 271(c).
5. Whether the district court applied the correct legal standard for inducement and intent in granting summary judgment of no induced infringement under § 271(b).

## Decision

- Affirmed summary judgment that asserted claims of the pulse-sequence patent were invalid for obviousness.
- Affirmed summary judgment of noninfringement of the asserted method claims of the other patent because the accused devices did not perform every required step.
- Affirmed summary judgment of no direct infringement under § 271(a) for the recording-method patents; selling devices capable of performing a method did not, on this record, establish making, using, selling, offering to sell, or importing the method.
- Vacated summary judgment of no contributory infringement under § 271(c) for the recording-method patents because the district court used an erroneous legal standard for “substantial noninfringing use.”
- Vacated summary judgment of no induced infringement under § 271(b) as to QSI for the recording-method patents and remanded for application of the correct standards, including proper consideration of evidence of direct infringement by others and intent.

## Legal Principles

- Method claims are directly infringed under § 271(a) only by making, using, selling, offering to sell, or importing the claimed method; selling a device merely capable of performing a method does not alone establish a “sale” of the method.
- Contributory infringement under § 271(c) requires sale of a component especially made or adapted for infringement, knowledge, and the absence of a substantial noninfringing use.
- “Substantial noninfringing use” is not established as a matter of law by pointing to any noninfringing capability; substantiality is a fact-dependent inquiry that may consider practical significance and how the product is actually used.
- Induced infringement under § 271(b) requires proof of direct infringement by a third party, the accused inducer’s knowledge of the patent, and specific intent to encourage the infringing acts; intent may be shown by circumstantial evidence and is often unsuitable for resolution on an erroneous or incomplete legal framework at summary judgment.

## Conclusion

The Federal Circuit affirmed the district court’s rulings on obviousness, noninfringement of certain method claims, and the absence of direct infringement of the asserted recording methods, but vacated and remanded the indirect-infringement rulings because the district court applied incorrect standards for evaluating substantial noninfringing use and inducement.


Ricoh Co., Ltd. v. Quanta Comput. Inc., 550 F.3d 1325 (Fed. Cir. 2008)