## Facts

- Vita-Mix owned U.S. Patent No. 5,302,021, claiming a method to prevent air pockets around blender blades by positioning a plunger of specified cross-sectional size adjacent to and above rotating blades while keeping the plunger free of contact with the pitcher.
- During prosecution, the applicant distinguished prior art “stirring” methods as breaking up air pockets after formation, while the claimed method was directed to prevention.
- Basic sold consumer blenders with a lid opening and a movable “stir stick” (ball-and-socket style) that a user could manipulate during blending; design features (ribbing and an o-ring) constrained movement.
- The accused products could be used in configurations where the stir stick contacted or did not contact the pitcher and could be positioned at various locations relative to the blades.
- Vita-Mix also asserted common-law trademark rights in “5000” based on its use of that designation for a blender model and challenged Basic’s use of “5000” in a model name.
- The district court granted summary judgment: (1) for Basic on noninfringement (direct, inducement, contributory) and no trademark infringement; and (2) for Vita-Mix rejecting Basic’s invalidity, inequitable conduct, and laches defenses.
- Vita-Mix appealed the noninfringement and trademark rulings; Basic conditionally cross-appealed the rulings rejecting invalidity, inequitable conduct, and laches.

## Issues

1. Whether summary judgment of no direct infringement was proper where the method claim required preventing formation of air pockets and the accused device permitted both infringing and noninfringing user configurations.
2. Whether summary judgment of no inducement and no contributory infringement was proper given the accused products’ noninfringing uses and Basic’s instructions and marketing.
3. Whether Basic’s use of “5000” in a blender model designation was likely to cause confusion under common-law trademark principles.
4. Whether summary judgment of no invalidity (anticipation, obviousness, lack of enablement) could stand where the validity analysis depended on claim scope intertwined with the infringement analysis.
5. Whether Basic raised triable issues on inequitable conduct and laches.

## Decision

- Vacated summary judgment of no direct infringement and remanded, holding Vita-Mix presented sufficient circumstantial and expert evidence to create genuine disputes that at least one user performed the claimed method under the proper understanding of the claim.
- Affirmed summary judgment of no inducement, finding insufficient evidence of culpable conduct and specific intent to cause customers to practice the patented method.
- Affirmed summary judgment of no contributory infringement, concluding the accused blenders had substantial noninfringing uses and Vita-Mix did not show those uses were insubstantial.
- Affirmed summary judgment of no trademark infringement, holding no reasonable jury could find likelihood of confusion from Basic’s limited use of “5000.”
- Vacated summary judgment of no invalidity and remanded for reconsideration of anticipation, obviousness, and enablement consistent with the clarified claim scope.
- Affirmed summary judgment rejecting inequitable conduct and laches defenses for lack of evidence sufficient to go to trial.

## Legal Principles

- For method claims, direct infringement may be shown through circumstantial evidence and reasonable inferences; a patentee need not produce direct evidence of each end user’s subjective understanding or intent to practice the method.
- Prosecution history statements distinguishing “after-the-fact” stirring do not necessarily disclaim all movement of the plunger; the claim turns on whether the plunger is positioned so as to prevent air-pocket formation, not on absolute stillness.
- Inducement under 35 U.S.C. § 271(b) requires evidence of culpable conduct and specific intent to encourage infringement; product instructions and advertising must support an inference of intent to cause the infringing use.
- Contributory infringement under 35 U.S.C. § 271(c) is unavailable where the accused component has substantial noninfringing uses.
- Validity determinations for anticipation, obviousness, and enablement must be evaluated under the correctly construed claim scope; where claim-scope errors affect the analysis, summary judgment may require reconsideration.
- Common-law trademark infringement requires likelihood of confusion assessed under a multi-factor test; weak marks and absence of meaningful confusion evidence can support summary judgment for the accused user.

## Conclusion

The Federal Circuit held that disputes of fact precluded summary judgment on direct infringement and required reconsideration of validity, but it affirmed that Basic was not liable for inducement or contributory infringement because the products had substantial noninfringing uses and no sufficient showing of intent, and it also affirmed judgment for Basic on the “5000” trademark claim and for Vita-Mix on inequitable conduct and laches.


Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317 (Fed. Cir. 2009)