NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
ROCHE DIAGNOSTICS OPERATIONS, INC.
AND CORANGE INTERNATIONAL LIMITED,
Plaintiffs-Appellants,
v.
LIFESCAN INCORPORATED,
Defendant-Appellee,
and
NOVA BIOMEDICAL CORPORATION,
Defendant-Cross Appellant.
__________________________
2010-1439, -1539
__________________________
Appeal from the United States District Court for the
District of Delaware in case no. 07-CV-0753, Judge
Joseph J. Farnan, Jr.
__________________________
Decided: January 25, 2012
__________________________
GRANTLAND G. DRUTCHAS, McDonnell, Boehnen, Hul-
bert & Berghoff, LLP, of Chicago, Illinois, argued for
plaintiffs-appellants. With him on the brief were DANIEL
ROCHE DIAGNOSTICS v. LIFESCAN 2
A. BOEHNEN, SEAN M. SULLIVAN, RICHARD A. MACHONKIN,
and PAULA S. FRITSCH. Of counsel on the brief was NANCY
G. TINSLEY, Roche Diagnostics Operations, Inc., of Indi-
anapolis, Indiana.
MARY W. BOURKE, Connolly Bove Lodge & Hutz LLP,
of Wilmington, Delaware, argued for defendant-appellee.
With her on the brief were R. ERIC HUTZ, KRISTEN HEALEY
CRAMER, and GEOFFREY ZELLEY.
BRADFORD J. BADKE, Ropes & Gray LLP, of New York,
New York, argued for defendant-cross appellant. With
him on the brief were SONA DE and MICHAEL P. KAHN. Of
counsel were JEANNE C. CURTIS and MATTHEW A.
TRAUPMAN.
__________________________
Before BRYSON, CLEVENGER, and PROST, Circuit Judges.
PROST, Circuit Judge.
Roche Diagnostics Operations, Inc. and Corange In-
ternational Limited (collectively “Roche”) appeal from a
judgment of non-infringement that the district court
entered in favor of Lifescan Incorporated (“Lifescan”) and
Nova Biomedical Corporation (“Nova”). Only two claim
construction issues are before us with respect to the
judgment of non-infringement: one raised by Roche, the
other raised by Nova. Roche argues that the district court
erred in construing the term “electrode” in the asserted
patent claims and that the judgment of non-infringement
should thus be vacated. Nova disagrees with Roche’s
argument, of course, but it also argues that in the alter-
native, the judgment of non-infringement could be af-
firmed on the ground that the district court’s construction
of the term “detecting” was erroneous. We see no error in
the district court’s construction of “detecting” and thus
3 ROCHE DIAGNOSTICS v. LIFESCAN
reject Nova’s argument. The argument raised by Roche
regarding “electrode,” however, has not been considered
by the district court, and the record is not sufficiently
developed for us to address it for the first time on appeal.
We therefore vacate the judgment of non-infringement
and remand for the district court for further proceedings
consistent with this opinion.
Nova also cross-appeals, arguing that the district
court and the jury erred in resolving Nova’s various non-
patent counterclaims in Roche’s favor. We hold that the
district court did not commit any reversible error, and
that the jury verdict is supported by substantial evidence.
We thus affirm the district court’s and the jury’s resolu-
tion of Nova’s counterclaims.
I. BACKGROUND
A. Roche’s Infringement Suit
Roche is the owner of U.S. Patent No. 7,276,146 (“’146
patent”) and U.S. Patent No. 7,276,147 (“’147 patent”),
(collectively, “patents in suit”). The patents in suit teach
methods of determining the concentration of glucose in a
blood sample. Roche brought suit in the district court,
alleging that Nova’s and Lifescan’s glucose monitoring
products (“accused devices”) infringe the patents in suit.
Although the patents in suit are directed at methods for
measuring glucose, they recite a specific type of electro-
chemical sensor, also referred to as a “test strip.” The
structure and working-mechanism of the glucose sensor
are the focus of the parties’ claim construction dispute.
The sensor comprises a capillary chamber and a pair
of electrodes. The capillary chamber contains certain
enzymes and other chemicals. When blood enters the
ROCHE DIAGNOSTICS v. LIFESCAN 4
capillary chamber, the glucose in the blood mixes and
reacts with the enzymes. As a result of the reaction,
electric charges are released. Meanwhile, using the
electrodes, an electric voltage is applied to the glucose-
enzyme mixture. The electric charges that are released
from the mixture thus flow from one electrode to the
other, resulting in an electric current, which can then be
measured. The more glucose exists in the blood, the
higher the electric current measurement will be. By
comparing the current in the test sample with the current
in control samples (for which the glucose concentration is
already known), the device determines the glucose con-
centration in the test sample. Claim 1 of the ’146 patent
is representative and recites,
1. A method of determining the concentra-
tion of glucose in a blood sample, compris-
ing:
providing a disposable biosensor test strip
including a capillary chamber having
a depth suitable for capillary flow of
blood and holding a volume of between
about 0.1 µl and about 1.0 µl of the
blood sample, a working electrode and
a counter or reference electrode dis-
posed within the capillary chamber,
and a reagent proximal to or in con-
tact with at least the working elec-
trode, the reagent including an
enzyme and a mediator, the reagent
reacting with glucose to produce an
electroactive reaction product;
applying a blood sample containing glu-
cose into the capillary chamber, the
capillary chamber directing capillary
5 ROCHE DIAGNOSTICS v. LIFESCAN
flow of the blood sample into contact
with the reagent to cause the blood
sample to at least partially solubilize
or hydrate the reagent;
detecting the blood sample in the capillary
chamber;
following said detecting, applying or con-
trolling the voltage or current across
the working and counter or reference
electrodes;
electrooxidizing or electroreducing the
electroactive reaction product at the
working electrode; and
within 10 seconds after said detecting, de-
termining and providing a readout of
the glucose concentration in the blood
sample, said determining comprising
correlating the electrooxidized or elec-
troreduced electroactive reaction
product to the concentration of glucose
in the blood sample.
’146 patent col.29 ll.38-67 (emphasis added).
Only two claim construction arguments are raised on
appeal—one by Roche, and the other by Nova. The first
(raised by Roche) concerns the construction of the term
“electrode.” 1 Indeed, the district court’s judgment of non-
1 The asserted independent claims recite a “work-
ing electrode” and a “counter or reference electrode.” ’146
patent col.29 ll.38-67. The claim construction dispute
concerns the working electrode, to which we refer in this
opinion as “the electrode.”
ROCHE DIAGNOSTICS v. LIFESCAN 6
infringement was based solely on the construction of that
term, as the district court found that all the other limita-
tions of the asserted patents exist in the accused devices.
Initially, at the claim construction stage, Roche argued to
the district court that the term “electrode” in the asserted
patent claims includes both “micro” and “macro” elec-
trodes. Roche asserted that micro-electrodes are up to
approximately 100 µm wide, whereas macro-electrodes
are up to 1,000 µm wide. Nova and Lifescan agreed with
Roche’s characterization of “micro” versus “macro” elec-
trodes, but they contended that Roche’s patent claims
only cover micro-electrodes, not macro-electrodes. That
is, they argued that the term “electrode” in the patents in
suit covers widths up to approximately 100 µm, but not
much more. The district court essentially agreed with
Nova and Lifescan and construed the term “electrode” as
“microelectrode having a width of 15 µm up to approxi-
mately 100 µm.” J.A. 3.
The second claim construction dispute pertains to the
term “detecting.” 2 Nova and Lifescan argued to the
district court that the specification of the patents in suit
limits the patent claims by teaching that electric voltage
2 To be precise, we must note that Nova’s claim
construction argument is not entirely based on the con-
struction of the word “detecting” (nor based on any other
express language in the asserted claims, for that matter).
Rather, Nova argues that a delay period “is inherent in
the claimed steps to allow the claimed ‘electroactive
reaction product’ to build up.” Def.-Cross Appellant’s
Br. 45. According to Nova, “[t]he ‘detecting’ step starts
this delay; the ‘electroactive reaction product’ is created
during the delay; and ‘applying or controlling the voltage
or current’ marks the end of the delay.” Id. Our reference
to the word “detecting” is thus simply a short hand for
Nova’s argument.
7 ROCHE DIAGNOSTICS v. LIFESCAN
cannot be applied to the working electrode immediately
after blood enters the capillary chamber. Rather, accord-
ing to Nova and Lifescan, the sensor can only measure the
electric current in the test sample after a small time-
delay (“open circuit delay”), which is necessary to allow
the glucose and the chemicals in the capillary chamber to
mix well together. Nova and Lifescan argued that be-
cause the accused devices do not require an open circuit
delay before measuring the glucose concentration, there
could be no infringement. The district court rejected this
theory, reasoning that it improperly imported a limitation
from the specification into the claim terms, which did not
expressly require an open circuit delay. Nonetheless,
because it was undisputed that the accused devices use
electrodes much wider than 100 µm, the district court’s
claim construction essentially foreclosed Roche’s in-
fringement suit.
Roche moved the district court for reconsideration,
positing a different claim construction theory. This time,
Roche conceded that the asserted claims only read on
micro-electrodes, but it argued that micro-electrodes may
indeed be up to 1,000 µm wide. Roche also submitted new
extrinsic evidence to support its motion for reconsidera-
tion. At the hearing for the motion for reconsideration,
the district court remarked that Roche’s new claim con-
struction argument raised “a great point.” J.A. 35.
Nonetheless, the district court did not address the issue.
Rather, the district court stated that “it will be interest-
ing to see what [the Federal Circuit has to] say [about the
argument],” and then summarily denied the motion for
reconsideration. Id. This appeal ensued.
B. Nova’s Non-Patent Counterclaims
ROCHE DIAGNOSTICS v. LIFESCAN 8
Once sued for infringement, Nova brought multiple
counterclaims against Roche. The counterclaim allega-
tions arise out of failed negotiations between Nova and
Roche for the development of Nova’s glucose-monitoring
technology. To encourage Roche to enter into a join-
venture to develop and market its test-strips, Nova per-
mitted one of Roche’s executives to view Nova’s confiden-
tial information that related to the glucose sensor
technology. In preparation for the negotiations, Nova and
Roche executed a confidentiality agreement (“Agree-
ment”), according to which Roche agreed not to disclose
any information it would learn to third parties or other-
wise use the information to Nova’s detriment. In the
counterclaims, Nova essentially alleges that Roche stole
the idea from Nova during these negotiations and then
declined Nova’s join-venture offer. Instead, according to
Nova, Roche “misused Nova’s information to spur its own
patent filings and redirect its R&D program.” Def.-Cross
Appellant’s Br. 70.
Nova’s counterclaims set out various theories of liabil-
ity: breach of contract, misappropriation of trade secrets,
conversion, and unfair competition. The district court
found that as a matter of law, Swiss law (applied through
a choice of law provision in the Agreement) barred Nova’s
trade secret misappropriation and conversion counter-
claims. A jury trial was held on the remaining counter-
claims, and the jury returned a verdict (of no liability) in
Roche’s favor. Nova now cross-appeals various determi-
nations by the district court as well as the jury’s ultimate
finding of non-liability. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
9 ROCHE DIAGNOSTICS v. LIFESCAN
II. DISCUSSION
As we explain below, Roche’s claim construction ar-
gument regarding the term “electrode” has not been
addressed by the district court, and, in our view, the
particular facts of this case make it inappropriate for us
to consider it for the first time on appeal. We therefore
remand the matter to the district court on that narrow
ground. As to the remaining issues raised by the parties,
we affirm.
A. Roche’s Infringement Suit
1. Electrode
Claim construction is a question of law, and thus we
review de novo a district court’s claim construction.
Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454–55
(Fed. Cir. 1998) (en banc). Nonetheless, this court is a
court of appellate jurisdiction, and “[n]o matter how
independent an appellate court’s review of an issue may
be, it is still no more than that—a review.” Sage Prods.,
Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1426 (Fed. Cir.
1997); see also Metro. Life Ins. Co. v. Bancorp Servs., LLC,
527 F.3d 1330, 1336 (Fed. Cir. 2008) (declining to consider
a claim construction issue that the district court did not
“expressly” address and remanding to the district court
for further proceedings). The procedural posture of this
case, however, deprives us of the district court’s resolu-
tion (and illumination) of the issues that are raised with
respect to the construction of the term “electrode.” Roche
raised its current claim construction argument to the
district court in a motion for reconsideration, which the
district court denied. The district court did not address
whether reconsideration was procedurally appropriate,
and, if so, whether Roche’s argument has merit. Nova
ROCHE DIAGNOSTICS v. LIFESCAN 10
and Lifescan do not dispute on appeal, however, that
Roche’s argument should be addressed on the merits.
Thus, in effect, we are called on to address the substance
of a claim construction issue that has never been consid-
ered by the district court. We do not opine, as a general
matter, whether and under what circumstances this court
may address new claim construction arguments on appeal
if urged to do so by the parties. As we explain below,
however, the specific nature of this case makes it impru-
dent for us to address Roche’s claim construction argu-
ment for the first time on appeal.
As we already stated, the judgment of non-
infringement was entered solely on the basis that the
term “electrode” in the asserted claims does not cover
electrodes that are wider than approximately 100 µm. 3
To properly construe “electrode,” of course, we must first
and foremost look to the words of the asserted claims. See
Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir.
2005) (en banc). But the claim terms are not themselves
helpful here because they do not recite a width for the
electrode. Even Roche agrees, however, that the claims
do not cover all electrodes of all widths. And, Roche now
concedes that the term “electrode” only covers micro-
electrodes, not macro-electrodes. The only issue is
whether the micro-electrodes in the claimed invention
cover widths up to 1,000 µm (as urged by Roche), or
whether they only cover widths less than approximately
100 µm (as argued by Nova and Lifescan).
3 There is no dispute that the width of the elec-
trodes in the accused products is larger than 100 µm but
smaller than 1,000 µm.
11 ROCHE DIAGNOSTICS v. LIFESCAN
To aid in answering that inquiry, the parties direct
our attention to the specification of the asserted claims.
In our view, however, the specification is also unhelpful
by itself because, as the following summary of the parties’
arguments shows, none of the theories advanced by the
parties is in itself complete and convincing. Nova and
Lifescan begin by pointing out that the specification
consistently teaches that the width of the micro-electrode
is less than 100 µm. For example, the specification of the
’146 patent states,
Preferred dimensions for micro-electrodes
can be, e.g., feature size or width of elec-
trodes . . . in the range from 15 or 20 or 25
µm, up to about 100 µm, more preferably
from greater than or about 25 or 30 µm to
about 50 µm.
’146 patent col.3 ll.9-13; see also ’147 patent col.3, ll.9-12.
Roche counters (rather persuasively, in our view) that
this statement, like other similar statements in the
specification, is merely a non-limiting description of a
preferred embodiment of the claimed invention.
Nova and Lifescan next argue that the following pas-
sage in the specification demonstrates that the width of
the electrode in the asserted patents is less than 100 µm:
Micro-electrodes, as distinguished from
other electrodes generally, are understood
in the electronic and biosensor arts. In
analyzing a liquid sample using electrodes
and electronic equipment and techniques,
the size and spacing of electrodes can af-
fect whether diffusion of an analyte
through the sample to an electrode occurs
ROCHE DIAGNOSTICS v. LIFESCAN 12
by a planar or non-planar path. Micro-
electrode arrays are of a size and spacing
such that in detecting chemical species of
a solution, the species will diffuse toward
or approach an electrode of the micro-
electrode array in a non-planar fashion,
e.g., in a curved or hemispherical path of
diffusion. In contrast, non-microclectrodes,
i.e., "macro-electrodes," cause diffusion of
an analyte through a solute according to a
substantially planar path. It is also un-
derstood that some electrode configura-
tions can cause diffusion to take place by a
mix of planar and non-planar paths, in
which case the electrodes can be consid-
ered a micro-electrode array, especially if
the diffusion occurs predominantly (e.g.,
greater than 50%) according to a non-
planar path, or if the size of the electrodes
is less than 100 μm, e.g., less than 50 μm.
’146 patent col.4 ll.29-48; see also ’147 patent col.4 ll.10-29
(same).
This passage is indeed promising at first glance, in
that it sets out to explain the difference between elec-
trodes in general and micro-electrodes, which Roche now
concedes are the only kind of electrode that the asserted
claims cover. It essentially explains that the size of the
electrode affects the diffusion pattern of the glucose-
enzyme mixture. Micro-electrodes facilitate non-planar
diffusion; macro-electrodes enable planar diffusion. These
statements are not helpful on their own, however, because
the district court has not determined what degree of non-
planar diffusion justifies characterizing an electrode as a
micro-electrode, and because the parties have offered us
13 ROCHE DIAGNOSTICS v. LIFESCAN
too little on that point to enable us to make that determi-
nation for the first time on appeal. We leave it to the
discretion of the district court to permit the parties to
supplement the record and their arguments with further
guidance as to how this passage should be interpreted.
Next, Roche points to examples 3, 4, and 5 in the ’146
patent, which teach using micro-electrodes as wide as
1,000 µm. See, e.g., ’146 patent col.26 ll.33-35. 4 It argues
that because the examples expressly teach using elec-
trodes up to 1,000 µm wide, the district court erred in
limiting the asserted claims to electrodes that are nar-
rower than approximately 100 µm. 5 But then Nova and
Lifescan respond that examples 3, 4, and 5 are unclaimed
embodiments that cannot help define the scope of the
asserted claims. They argue that although the asserted
claims are undisputedly limited to blood-testing, the test
conditions described in examples 3, 4, and 5 are not
suitable for blood-testing. The reason is, according to
Nova and Lifescan, that the three examples disclose using
a test strip with specific capillary depths that are not
suitable for fast testing of blood samples.
Again, on the record before us, we decline to deter-
mine whether Nova’s and Lifescan’s arguments should
4 Example 3 teaches using an electrode with “a sur-
face area of 1 mm2 (1 mm x 1 mm).” ’146 patent col.26
l.34. One millimeter (mm) is a thousand micrometers
(µm).
5 The ’147 patent does not include the equivalent of
the three examples in the ’146 patent. We leave it to the
district court to determine whether the claim construction
of the ’146 patent should affect the claim construction of
the ’147.
ROCHE DIAGNOSTICS v. LIFESCAN 14
prevail, or whether the three examples in the ’146 patent
control. Nova and Lifescan correctly point out that the
three examples use capillaries that are less than 100 µm
deep. They also correctly suggest that the specification of
the ’146 patent teaches that a capillary depth of less than
100 µm is not suitable for the “fast fill” of blood:
Capillaries with depths of greater than or
equal to 100 µm have been found to allow
fast fill of blood with hematocrits from 20
to 70% to reliably flow into the chamber.
Capillary depths of less than 100 microns
to 25 microns can be used for other bio-
logical fluids such as serum, plasma, in-
tersticial fluid, and the like.
’146 patent col.19 ll.44-50. There is also no dispute that
the patents in suit generally aim to facilitate faster meas-
urements (compared to the prior art) of glucose concentra-
tions in small blood samples. But it is unclear whether
the asserted claims are limited to the “fast fill” of blood.
The parties have not sufficiently explained what “fast fill”
means, and whether it is simply synonymous with the
concept that the claimed invention is faster than the prior
art, or whether the phrase has some other (perhaps
specific) meaning. There is also another wrinkle: depend-
ent claim 48 in the ’146 patent recites using capillary
depths of 25 to 200 µm for testing a blood sample, indicat-
ing that the asserted claims cover capillary depth ranges
beyond what may be appropriate for the fast-fill of blood.
See ’146 patent col.32 ll.40-41. To avoid this problem,
Nova and Lifescan suggest that claim 48 is also not
enabled. Rather, they suggest that claim 48 is improperly
left-over from the original claims that covered test-
samples other than blood. In our view, the district court
is in a better position to address this argument in the first
15 ROCHE DIAGNOSTICS v. LIFESCAN
instance. Indeed, the parties have not fully developed
their prosecution history arguments. For example, the
parties have not sufficiently answered the following
questions: 1) when did Roche limit the asserted claims of
the ’146 patent from testing serum and blood to blood
only, 2) was this change reflected in the dependent claims
too? (and if not, should it have been?), 3) when did de-
pendent claim 48 first appear in the ’146 patent? 6 In this
light, we deem it imprudent to address the parties’ prose-
cution history arguments for the first time on appeal.
Finally, Roche invites us to review certain extrinsic
evidence that was not even before the district court dur-
ing claim construction. We leave it to the district court to
determine if and to what extent any of the additional
evidence should be admitted into evidence.
In sum, we decline to address the claim construction
issue raised by Roche because it has never been addressed
by the district court. Accordingly, we remand the case to
the district court for the purpose of construing the term
“electrode” and any subsequent proceeding that might be
necessary once the court construes that term. As we
noted, we also leave it to the discretion of the district
6 Nova’s brief cites the prosecution history of the
’147 patent in order to show that dependent claims 48 of
the ’146 patent and claim 53 of the ’147 patent are not
enabled. See Def.-Cross Appellant’s Br. 34 (citing J.A.
1793-96). We leave it to the district court to determine
whether the prosecution history of the ’147 patent is
relevant to the scope of the claim terms in the ’146 patent
at all, and whether the referenced prosecution history—or
any other evidence that the district court may admit into
evidence in its discretion—can establish that examples 3,
4, and 5, as well as independent claim 48 in the ’146
patent are not enabled and thus should not shed light on
the scope of the asserted claims.
ROCHE DIAGNOSTICS v. LIFESCAN 16
court whether and to what extent each party should be
allowed to supplement the record with additional briefing
and evidence to support its claim construction argument
on remand.
2. “Detecting”
Nova argues that regardless of the width of the elec-
trodes, the asserted claims require an open circuit delay.
According to Nova, this limitation is implied in the term
“detecting” and certain other terms in the asserted claims.
There is no dispute that such a limitation does not exist
in the accused products. Nova thus urges us to affirm the
judgment of non-infringement based on that alternative
ground. We have reviewed the parties’ arguments and
the record, however, and we agree with the district court
that the asserted claims do not necessarily require an
open circuit delay. In particular, we agree with the
district court that Nova’s argument amounts to an invita-
tion to inappropriately read a limitation from the specifi-
cation into the claim terms. Therefore, we reject Nova’s
alternative claim construction argument.
B. Nova’s Non-Patent Counterclaims
We also affirm the district court’s resolution of Nova’s
non-patent counterclaims, as well as the jury’s ultimate
verdict of no-liability in Roche’s favor. Nova’s cross-
appeal presents three arguments. First, Nova argues
that the district court erred in finding that a Swiss choice
of law provision in the Agreement barred Nova’s trade
secret misappropriation and conversion counterclaims.
We disagree. The choice of law provision unambiguously
provides that the parties’ relationships under the Agree-
ment “shall be governed in all respects by the laws of
Switzerland.” J.A. 23647, ¶ 6 (emphasis added). Nova’s
17 ROCHE DIAGNOSTICS v. LIFESCAN
breach of contract and tort claims all arise out of the same
transaction—the negotiations between Nova and Roche
regarding a joint-venture to develop Nova’s test-strip
technology. Nova’s argument that Swiss law governs its
breach of contract claim and not its tort claims thus
stands in unacceptable contrast with the clear language of
the Agreement. Since there is no dispute that Swiss law
does not recognize Nova’s trade secret misappropriation
and conversion counterclaims, the district court did not
err in rejecting those claims as a matter of law.
Second, Nova argues that the district court abused its
discretion in not allowing Nova to disclose to the jury that
Roche had sued Nova for infringement and lost. We
disagree. The district court was well within its discretion
to find that the probative value of disclosing the in-
fringement suit to the jury was substantially outweighed
by the risk of prejudice or waste of time. See Fed. R. Evid.
403; United States v. Long, 574 F.2d 761, 767 (3d Cir.
1978) (noting that when reviewing a district court’s Rule
403 analysis, an appellate court ought to be highly defer-
ential). We see no abuse of discretion in the district
court’s evidentiary ruling.
Third, and finally, Nova argues that the jury’s verdict
cannot stand. Again, we disagree. It is true that Nova’s
evidence shows that Roche’s executive, who had learned
of Nova’s technology, discussed some aspects of Nova’s
invention with Roche’s inventors. It is also true that the
evidence shows that Roche decided to patent its invention
almost immediately after learning of Nova’s test-strips,
even though Roche claims that it had invented the tech-
nology long before. Nonetheless, we must review the
record in the light most favorable to the jury’s verdict,
and we cannot disturb the verdict unless we determine
that “’there is insufficient evidence from which a jury
ROCHE DIAGNOSTICS v. LIFESCAN 18
reasonably could find’” for Roche. Cordance Corp. v.
Amazon.com, Inc., 658 F.3d 1330, 1333 (Fed. Cir. 2011)
(quoting Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153,
1166 (3d Cir. 1993)). Nova’s counterclaims are based on
circumstantial evidence, and the jury heard testimony
from both sides on the events that transpired during and
after negotiations between Nova and Roche. We have
reviewed the evidence that the parties presented to the
jury, and we hold that it was within the jury’s purview to
find that Roche was not liable. We thus affirm the jury’s
verdict in Roche’s favor.
CONCLUSION
We affirm the district court’s construction of the term
“detecting,” and its determination that the asserted
claims do not require an open circuit delay. We also
affirm the district court’s resolution of all issues and the
jury’s verdict of no-liability regarding Nova’s counter-
claims. We vacate the judgment of non-infringement,
however, and remand to the district court to consider the
parties’ arguments that pertain to the scope of the term
“electrode.”
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED