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Court Upholds SJ of Noninfringement Where Patentee Did Not Link Its Expert’s Statements Regarding Claimed Structures to Elements in the Accused Device

09-1142
December 15, 2009

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Last Month at the Federal Circuit - January 2010

Judges: Rader (author), Archer, Gajarsa

[Appealed from: E.D. Mich., Senior Judge Cohn]

In Intellectual Science & Technology, Inc. v. Sony Electronics, Inc., No. 09-1142 (Fed. Cir. Dec. 15, 2009), the Federal Circuit affirmed the district court’s SJ of noninfringement in favor of defendants Sony Electronics, Inc. (“Sony”), US JVC Corp., JVC Americas Corp. (collectively “JVC”), and Panasonic Corp. of North America (“Panasonic”). 

Intellectual Science and Technology, Inc. (“Intellectual Science”) owns U.S. Patent No. 5,748,575 (“the ’575 patent”), relating to an apparatus that enhances information processing by reading information simultaneously from multiple locations on one or more optical discs.  The ’575 patent describes using a structure called an intelligent time-division multiplexer (“ITDM”) to transmit multiple information sets in a single data stream.  The disclosed ITDM receives the data stream from a high-speed system control bus and transmits it to a host interface bus, which, with the help of read only and random access memory (“ROM/RAM”), sends the data to a host computer.  The Court noted that this case focused on the disclosed data-transmitting structure and whether such structure was present in the accused devices.

Defendants jointly moved for SJ of noninfringement before claim construction.  In support of their SJ motion, the defendants submitted an expert declaration stating that the means-plus-function claim limitation of “data transmitting means” should be construed to require a structure that includes at least a control system bus, an ITDM, a host interface bus, and ROM/RAM.  The declaration also stated that the accused devices did not have a “data transmitting means” because they lacked both an ITDM and a host interface bus. 

Intellectual Science’s expert did not dispute the defendants’ expert’s construction, but did assert that the required elements were present in the accused devices.  The Court noted that Intellectual Science relied exclusively on only three paragraphs from its expert’s declaration (“Dr. Michalson’s declaration”) and the circuit diagrams cited therein.

The district court appointed a special master to provide a Report and Recommendation (“Report”) on the SJ motion.  The Report indicated that Intellectual Science’s showing was insufficient to survive SJ, because the statements in Dr. Michalson’s declaration were merely conclusory. 

The district court agreed with the special master and granted SJ in favor of defendants.  Intellectual Science appealed with respect to all three defendants, but settled with JVC and Panasonic prior to the appeal.  The Court therefore focused its opinion only on the sufficiency of the evidence supporting Intellectual Science’s evidence of infringement by Sony.

On appeal, the Federal Circuit noted that neither party disputed the district court’s construction of the means-plus-function term “data transmitting means,” and thus focused on a comparison of the allegedly infringing devices with the undisputed claim construction.   

The Court stated that a patentee’s expert must set forth the factual foundation for his infringement allegation in sufficient detail for the Court to be certain that features of the accused product would support a finding of infringement under the adopted claim construction, with all reasonable inferences favoring the nonmovant.  The Court then found that Dr. Michalson’s declaration did not sufficiently identify the structural elements of the claimed “data transmitting means,” and that his unsupported conclusion on the ultimate issue of infringement would not create a genuine issue of material fact.  In particular, the Court held that Dr. Michalson’s statements failed to pinpoint where those elements were found in the accused devices and were insufficient to support Intelligent Science’s SJ argument. 

The Court held that Dr. Michalson’s citation to a page number in Sony’s Service Manual for each representative product provided no specific showing of an infringing structure.  According to the Court, the schematics contained on each page displayed only an unexplained array of electronic symbols.  The Court therefore found that Intellectual Science failed to present a triable issue of fact that a person of skill in the art would recognize that the symbols appearing in these schematics depict an infringing device. 

The Court also found deficient Dr. Michalson’s statement that the signal selection device “perform[s] the same function as the claimed ‘data transmitting means’ (i.e., transmitting to the host computer), in the same way (i.e., through a time division multiplexed structure) to achieve the same result (i.e., transmitted information sets).”  Slip op. at 11.  The Court found this statement was merely conclusory, and it failed to supply “at a minimum some description about the specific features of the accused playback signal selection device’s multiplexing of the audio information stream.”  Id

The Court also found that arguments from counsel for Intelligent Science did not offer any clarity to Dr. Michalson’s declaration.  The Court rejected Intellegent Science’s reliance on Applied Medical Resources Corp. v. United States Surgical Corp., 448 F.3d 1324 (Fed. Cir. 2006), to support the proposition that it was not required to link the expert’s statements to particular structures in an accused device.  According to the Court, this position conflicted directly with the rule it applied in Applied Medical, where it found that the patentee’s expert provided an explanation as to why one of skill in the art would view a particular structure as functioning in substantially the same way to achieve substantially the same result.  The Court noted that, unlike this case, the patentee’s expert in Applied Medical had pinpointed the relevant structure in the accused device.  The Court stated that it has never held that a patentee could survive SJ of noninfringement on an apparatus claim without specifically identifying the allegedly infringing structure in the accused device.  The Court held that to do so would conflict directly with the express language of Fed. R. Civ. P. 56(e)(2), which requires a nonmovant to set out “specific facts” showing a genuine issue for trial.  Slip op. at 14.

Intellectual Science also appealed the district court’s construction of the term “with multitasking function.”  The Court, however, did not address the issue, because the construction of that term did not affect Intellectual Science’s failure to show a genuine issue of material fact on infringement of the
“data transmitting means” limitation in the accused devices.

Summary authored by Sean A. O'Donnell, Ph.D., Esq.