United States Court of Appeals for the Federal Circuit 

2006-1570 

ACCO BRANDS, INC. (doing business as Kensington Technology Group), 

 

Plaintiff-Appellee, 

v. 

ABA LOCKS MANUFACTURER CO., LTD., 

 Defendant, 

and 

BELKIN COMPONENTS, 

Defendant-Appellant. 

Richard L. Stanley, Howrey LLP, of Houston, Texas, argued for plaintiff-appellee. 

With him on the brief were Henry C. Bunsow, K.T. Cherian, and Brian A. E. Smith, of 

San Francisco, California. Of counsel was Courtney Towle of Houston, Texas. 

Lawrence G. Kurland, Bryan Cave LLP, of New York, New York, argued for 

defendant-appellant. With him on the brief were Joseph J. Richetti and George C. Chen, 

of Phoenix, Arizonia. 

Appealed from: United States District Court for the Eastern District of Texas 

Judge T. John Ward 
United States Court of Appeals for the Federal Circuit 

 

2006-1570 

ACCO BRANDS, INC. (doing business as Kensington Technology Group), 

 Plaintiff-Appellee, 

v. 

ABA LOCKS MANUFACTURER CO., LTD., 

 

Defendant, 

and 

BELKIN COMPONENTS, 

 Defendant-Appellant. 

_____________________ 

DECIDED: September 12, 2007 

_____________________ 

Before LOURIE, SCHALL, and PROST, Circuit Judges. 

LOURIE, Circuit Judge. 

Belkin Components (“Belkin”) appeals from the judgment of the United States 

District Court for the Eastern District of Texas following a jury verdict in favor of ACCO 

Brands, Inc. d/b/a Kensington Technology Group (“ACCO”) of willful induced 

infringement of U.S. Patent 5,502,989 (the “’989 patent”). Belkin also appeals from the 

court’s grant of enhanced damages and attorney fees, its denial of judgment as a matter 

of law that the patent is invalid and unenforceable, and its claim construction order. 

Because the jury verdict of direct infringement was not supported by substantial 
evidence, we reverse the district court’s judgment with respect to inducement, and 

vacate the court’s judgment with respect to willfulness, enhanced damages, and 

attorney fees. Because we find no grounds for reversible error as to the remaining 

issues, we affirm those aspects of the court’s decision. 

BACKGROUND 

ACCO is the owner of U.S. Patents 5,493,878 (the “’878 patent”), 6,006,557 (the 

“’557 patent”), and the ’989 patent. The patents in suit are entitled “Computer Physical 

Security Device,” and are directed to locking systems that “inhibit[] the theft of 

equipment such as personal computers.” ’878, ’557, and ’989 patents, Abstract. The 

’989 patent was the subject of an appeal that was previously before us. In ACCO 

Brands, Inc. v. Micro Security Devices, Inc., 346 F.3d 1075 (Fed. Cir. 2003), we 

construed a key limitation that is at issue in this appeal. Claim 10 of the ’989 patent, a 

representative claim, reads as follows: 

A locking system comprising: 

a portable electronic device including an exterior wall defining a security 

slot; 

cable means for attaching to a first object other than to the portable 

electronic device; 

a housing, proximate to said electronic device and including a slot 

engagement member having a slot engaging portion provided with a 

locking member having a peripheral profile complementary to preselected 

dimensions of said security slot to thereby permit said locking member to 

extend into said slot, said slot engagement member being rotatable 

between an unlocked position wherein said locking member is removable 

from the slot, and a locked position wherein said locking member is 

retained within the slot; 

a pin, coupled through said housing, for extending into said security slot 

proximate said slot engaging portion when said slot engagement member 

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is in said locked position to thereby inhibit rotation of said slot engagement 

member to said unlocked position; and 

means, coupled to said housing, for attaching said cable to said housing. 

’989 patent Reexamination Certificate col.2 ll.13-37 (emphasis added). In ACCO 

Brands, we upheld the district court’s claim construction with regard to the pin limitation 

of claim 10. The district court concluded, and we agreed, that that limitation requires 

the pin to extend through the security slot after the slot engagement member is rotated 

to its locked position, thus prohibiting rotation into its unlocked position. 346 F.3d 1079-

80. 

ABA Locks Manufacturer Co., Ltd. (“ABA”) is a Taiwan-based manufacturer of 

the accused products in this case, viz., the K100 (“key lock”) and the C100 (“combo 

lock”). Belkin is a California-based distributor of the key lock and combo lock in the 

United States. In May 2002, ACCO sued ABA and Belkin (collectively “defendants”) in 

the United States District Court for the Eastern District of Texas alleging that both the 

key lock and combo lock infringe the asserted claims of the patents in suit. In January 

2004, the district court construed the disputed claim limitations, and defendants moved 

for summary judgment. Aided by our ACCO Brands decision, the court granted 

summary judgment that the combo lock did not infringe either the ’989 or ’878 patents, 

and that the key lock did not infringe the ’878 patent. The court denied the remainder of 

defendants’ motions. 

A trial was held on May 17-20, 2004, in which a jury determined the remaining 

infringement and validity issues with respect to the ’989 and ’557 patents. At trial, the 

jury was informed that, based on the claim construction of the pin limitation, the key lock 

could essentially be operated in two ways, one infringing and the other noninfringing. 

2006-1570 3
The infringing method was demonstrated at trial by ACCO’s expert, Dr. Dornfeld, and 

thus was referred to as the “Dornfeld method.” The noninfringing method, the “press-tolock” method, was the method that Belkin instructed its customers to use in the 

instructions included in its key lock product. The parties agreed that when a user 

employs the press-to-lock method, direct infringement does not occur. 

The jury found that defendants willfully induced infringement of the asserted 

claims of the ’989 and ’557 patents and rejected all invalidity defenses. The jury 

awarded damages against defendants, but did not apportion damages based on the 

type of lock. The defendants then moved for judgment as a matter of law, which the 

court granted in part. The district court granted judgment as a matter of law that the 

claims of the ’557 patent were invalid, which resulted in the combo lock not infringing 

any of the asserted patents as a matter of law, and denied the remainder of defendants’ 

motions. Because the jury’s damages award was not apportioned separately for the 

key lock and the combo lock, and because the court previously determined that the 

combo lock did not infringe the ’989 patent, the court set aside the damages verdict. In 

December 2005, a second jury trial was held to determine damages due to the key 

lock’s infringement of the ’989 patent. The second jury found that all of ABA and 

Belkin’s key lock sales induced infringement and awarded damages against ABA in the 

amount of $1,822,000 and against Belkin in the amount of $253,000. 

A bench trial on inequitable conduct was also held, and on March 28, 2006, the 

district court determined that defendants failed to prove that the patent was 

unenforceable. On that same day, the court also found the case exceptional under 35 

2006-1570 4
U.S.C. § 285, and thus awarded enhanced damages and attorney fees. The court 

awarded treble damages against ABA and doubled the damages award against Belkin. 

Belkin timely appealed.1 We have jurisdiction pursuant to 28 U.S.C. 

§ 1295(a)(1). 

DISCUSSION 

A. Jury Verdict of Induced Infringement

“The grant or denial of a motion for judgment as a matter of law is a procedural 

issue not unique to patent law, reviewed under the law of the regional circuit in which 

the appeal from the district court would usually lie.” Summit Tech. Inc. v. Nidek Co., 

363 F.3d 1219, 1223 (Fed. Cir. 2004). In the Fifth Circuit, the Court of Appeals “uses 

the same standard to review the verdict that the district court used in first passing on the 

motion.” Hiltgen v. Sumrall, 47 F.3d 695, 699 (5th Cir. 1995). “A jury verdict must be 

upheld unless ‘there is no legally sufficient evidentiary basis for a reasonable jury to 

find’ as the jury did.” Id. at 700. 

A determination of infringement is a question of fact that is reviewed for 

substantial evidence when tried to a jury. TI Group Auto. Sys. (N. Am.), Inc. v. VDO N. 

Am., L.L.C., 375 F.3d 1126, 1133 (Fed. Cir. 2004). “Whether infringement is willful is a 

question of fact, and the jury’s determination as to willfulness is therefore reviewable 

under the substantial evidence standard.” Braun Inc. v. Dynamics Corp. of Am., 975 

F.2d 815, 822 (Fed. Cir. 1992) (citation omitted). Willful infringement must be proven by 

clear and convincing evidence and is determined from the totality of circumstances. Id. 

We review a district court’s exceptional case finding for clear error, Pharmacia & Upjohn 

 1

 ABA did not file a notice of appeal and hence we have no basis to review 

the district court’s damages award against it. 

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Co. v. Mylan Pharms., Inc., 182 F.3d 1356, 1358-59 (Fed. Cir. 1999), and an award of 

enhanced damages and attorney fees under an abuse of discretion standard. Electro 

Scientific Indus., Inc. v. Gen. Scanning Inc., 247 F.3d 1341, 1349 (Fed. Cir. 2001). 

On appeal, Belkin argues that the jury’s findings of induced infringement and 

willfulness are not supported by substantial evidence. According to Belkin, the record is 

devoid of any evidence that Belkin’s customers actually used the ABA key lock in an 

infringing manner or that Belkin encouraged any of its customers to use the key lock in 

that way. Instead, Belkin asserts that the record shows that it had no knowledge of the 

infringing mode and that it instructed its customers to use the noninfringing press-to-lock 

method to operate the lock. Belkin further argues that the jury award of damages is 

unsupported by substantial evidence and that the district court abused its discretion by 

awarding enhanced damages and attorney fees. 

ACCO responds that substantial evidence supports the jury’s finding of induced 

infringement. According to ACCO, the record shows that key lock users will use the 

lock in an infringing manner at least some of the time because that configuration is the 

most natural and intuitive way to use the lock, in comparison with the press-to-lock 

method. ACCO contends that the record also supports the jury’s finding of willfulness 

because, inter alia, Belkin had knowledge of the ’989 patent, but failed to obtain its own 

noninfringement opinion. In addition, ACCO argues that the damages verdict was 

supported by substantial evidence and that the district court did not abuse its discretion 

in enhancing damages and awarding attorney fees. 

We agree with Belkin that substantial evidence is lacking in the record to support 

the verdict that Belkin induced infringement of the ’989 patent. Section 271(b) of the 

2006-1570 6
Patent Act provides that “[w]hoever actively induces infringement of a patent shall be 

liable as an infringer.” 35 U.S.C. § 271(b). In order to prevail on an inducement claim, 

the patentee must establish “first that there has been direct infringement, and second 

that the alleged infringer knowingly induced infringement and possessed specific intent 

to encourage another’s infringement.” Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 

F.3d 1294, 1304-05 (Fed. Cir. 2002) (citation omitted). Specific intent requires a 

“showing that the alleged infringer’s actions induced infringing acts and that he knew or 

should have known his actions would induce actual infringements.” DSU Med. Corp. v. 

JMS Co., Ltd., 471 F.3d 1293, 1304 (Fed. Cir. 2006) (en banc in relevant part) (quoting 

Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 554 (Fed. Cir. 1990)). 

The record shows that ACCO failed to prove the threshold requirement of direct 

infringement. In support of its assertion that direct infringement was proven, ACCO 

points to the expert testimony of Dr. Dornfeld, a set of instructions provided in ABA’s 

key lock product that described the infringing method (“the ABA hang card”), and the 

jury’s observations of the lock itself. ACCO contends that such evidence established 

that the key lock was capable of being used in an infringing manner, which Dr. Dornfeld 

testified was the “natural and intuitive way to employ the device.” According to ACCO, 

the jury was entitled to accept Dr. Dornfeld’s testimony and find that, at least some of 

the time, all users of the key lock would use it in an infringing manner. 

ACCO’s argument, however, is unpersuasive. In order to prove direct 

infringement, a patentee must either point to specific instances of direct infringement or 

show that the accused device necessarily infringes the patent in suit. See Dynacore 

Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1275-76 (Fed. Cir. 2004). Here, 

2006-1570 7
the parties do not dispute that the accused device can be operated in either of two 

modes—the infringing Dornfeld method or the noninfringing press-to-lock method. 

Because the accused device can be used at any given time in a noninfringing manner, 

the accused device does not necessarily infringe the ’989 patent. 

The record further shows that ACCO failed to point to specific instances of direct 

infringement. The sole witness at trial who testified to having used the lock in an 

infringing manner was ACCO’s expert, Dr. Dornfeld. However, the record contains no 

evidence of actual users having operated the lock in an infringing manner. ACCO 

proffered no witness testimony of actual Belkin key lock users, or surveys of Belkin’s 

customers, that would indicate that a user, aside from the expert retained for this 

particular litigation, directly infringed the ’989 patent. Moreover, we are not persuaded 

by ACCO’s assertion that Dr. Dornfeld’s testimony combined with the ABA hang card 

provides substantial evidence of direct infringement. The record indicates that Belkin 

key lock users received instructions describing the noninfringing press-to-lock method 

and thus provides no basis for concluding that Belkin key lock users directly infringed 

the patent. Furthermore, Belkin did not provide the ABA hang card to purchasers. 

Indeed, the district court found in its enhanced damages determination that there was 

“no evidence that Belkin knew of the hang card or was involved in its preparation.” 

The lack of evidence of specific instances of direct infringement is further 

buttressed by Dr. Dornfeld’s own testimony. When questioned about whether users 

other than himself used the lock in the infringing mode, Dr. Dornfeld had no opinion on 

that issue: 

2006-1570 8
Q: Okay. Do you have any opinion as you sit here today on whether 

there are users other than yourself who operate the key lock in the 

alternate mode of operation? 

A: I don’t have any opinion on that, no. 

* * * 

Q: Now, it’s true, isn’t it, that you testified earlier in your deposition in 

this case that you are not aware of anyone else using the key lock 

in the alternate mode that you’ve proposed? 

A: I didn’t ask anybody if they did that, no. So I am not personally 

aware of anybody else doing it the way I do it. 

Thus, based on the record before us, we find no evidence of direct infringement. 

We are further unpersuaded by ACCO’s reliance on Hilgraeve Corp. v. Symantec 

Corp., 265 F.3d 1336 (Fed. Cir. 2001), which states that an accused device may be 

found to infringe a product claim “if it is reasonably capable of satisfying the claim 

limitations, even though it may also be capable of non-infringing modes of operation.” 

Id. at 1343. That broad legal statement does not alter the requirement that ACCO must 

prove specific instances of direct infringement or that the accused device necessarily 

infringes the patent in suit, in order to sustain the jury verdict of induced infringement. 

Hypothetical instances of direct infringement are insufficient to establish vicarious 

liability or indirect infringement. See Dynacore, 363 F.3d at 1274. Moreover, as we 

stated in Dynacore, “[t]he mere sale of a product capable of substantial non-infringing 

uses does not constitute indirect infringement of a patent.” Id. at 1275. Thus, ACCO’s 

argument is unavailing. 

Because we find that the record lacks substantial evidence to support the jury’s 

finding of direct infringement, the jury verdict of inducement cannot stand, and the 

district court’s denial of judgment as a matter of law must be reversed. See Linear 

2006-1570 9
Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1326 (Fed. Cir. 2004) (“There can 

be no inducement or contributory infringement without an underlying act of direct 

infringement.”). In light of that conclusion, we further vacate the court’s judgment with 

respect to willfulness, enhanced damages, and attorney fees. 

B. Remaining Issues

Belkin raises numerous other issues in its appeal including unenforceability, 

invalidity based on purported misjoinder, claim construction, and the district court’s 

denial of its motion for leave to file a revised summary judgment motion. On appeal 

from a bench trial on inequitable conduct, we review “the trial court’s findings of 

materiality and intent, the underpinnings of inequitable conduct, for clear error,” and “the 

ultimate determination of inequitable conduct for an abuse of discretion.” Agfa Corp. v. 

Creo Prods. Inc., 451 F.3d 1366, 1371 (Fed. Cir. 2006). A jury verdict on invalidity 

“must be upheld unless ‘there is no legally sufficient evidentiary basis for a reasonable 

jury to find’ as the jury did.” Hiltgen v. Sumrall, 47 F.3d at 700. Claim construction is an 

issue of law, Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 

1995) (en banc), that we review de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 

1448, 1456 (Fed. Cir. 1998) (en banc). A district court’s decision to deny a motion for 

leave is a procedural issue not unique to patent law, and thus the regional law of the 

circuit applies. Madey v. Duke Univ., 307 F.3d 1351, 1358 (Fed. Cir. 2002). In the Fifth 

Circuit, a court’s decision to deny a motion for leave is reviewed for abuse of discretion. 

See Moore v. Cockrell, 144 Fed. Appx. 397, 403 (5th Cir. 2005). 

Based on our review of the record, we find no basis to reverse those findings. 

Accordingly, we affirm those aspects of the district court’s decision. 

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CONCLUSION 

For the foregoing reasons, we reverse the district court’s judgment of induced 

infringement, and vacate the court’s judgment with respect to willfulness, enhanced 

damages, and attorney fees. We affirm all other aspects of the court’s ruling. 

REVERSED IN PART, VACATED IN PART, and AFFIRMED IN PART