F.3d—-, 2009 U.S. App. LEXIS 27330 (Fed. Cir. 2009) (RADER, Archer & Gajarsa)
MAJOR ISSUES: Summary judgment of noninfringement
Expert declaration by patent owner–conclusory statements not sufficient to survive summary judgment motion
Expert conclusory statements on infringement–failure to link to particular structures in accused device
In an infringement suit, a patent owner must respond to an accused infringer’s motion for summary judgment of non-infringement with great care. In this case, the Federal Circuit broadcasts a warning: a declaration by an expert phrased in generalities will not suffice.
A patent concerned an apparatus that improves reading optical discs (CD-ROMS) in a computer. uspatno5748575 In an infringement suit, the asserted claim included a means-plus-function limitation (data transmitting means). The limitation required four elements, including an ITDM, a type of multiplexer. The Federal Circuit held that a district court properly granted summary judgment that an accused infringer’s device did not infringe. The patent owner presented an expert’s declaration, but the declaration was conclusory and did not identify with sufficient particularity the presence in the accused device of the required elements.
The declaration by the patent owner’s expert (1) did not “sufficiently identify the structural elements of the claimed `data transmitting means,’ (2) set forth only “an unsupported conclusion of infringement,” and (3) was “not sufficient to raise a genuine issue of material fact.
Unexplained Array of Electronic Symbols. The expert stated that “[s]erial input buses receive information from each optical drive to an ITDM for multiplexing subcode data which is then transmitted to the host bus interface.” This statement did not “pinpoint where those elements are found in the accused devices.” The expert cited pages numbers in the accused infringer’s “Service Manual,” but this supplied “no specific showing of an infringing structure.” The schematics were “an unexplained array of electronic symbols.”
”To present a prospect of infringement, [the patent owner] must present a triable issue of fact that a person of skill in the art would recognize that these symbols depict an infringing device. See TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1374-75 (Fed. Cir. 2002) (affirming summary judgment of non-infringement because the record did not support assertion that one of skill in the art would equate the accused element, a multiplexer, with the claimed element, a decoder).”
Off-The-Shelf Components? The patent owner asserted, vaguely, that “the structural elements are `off-the-shelf’ components,” but it did not corroborate that statement or show that “one of skill in the art would recognize the `off-the-shelf’ component as matching the infringing means.” Furthermore, “[e]ven if the elements are common components, the record must specifically identify the infringing features of those components and the reason that one of skill in the art would recognize them as infringing.”
The patent owner argued that its expert “did at least identify the structure that serves as the ITDM ….” The identification was not with sufficient particularity. The expert did refer to an element (IC-109) in the schematic for the accused device as producing “multiplexed” information. However, the reference to the IC-109 multiplexer did “not suffice to show infringement.” The expert’s “opaque” identification required an inference that “the identified playback signal selection device is an ITDM simply because both devices perform multiplexing.” The identification was “not enough to permit any reasonable juror to make that leap.” The record showed that not all multiplexers are ITDMs. An ITDM was more complex, requiring simultaneous transmission of a plurality of information sets, and the expert did not establish that the multiplexer in the accused device met that definition.
Means-Plus-Function Clause. “Stated another way,” there was no “showing that the identified structure accomplishes the same function in the same way as the claimed structure. See Welker Bearing Co., 550 F.3d at 1099.”
The expert provided only an insufficient, conclusory statement, to wit, that that “the structures in the accused devices `perform 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).”
The expert “needed 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.” The expert supplied none of “the details necessary to identify an infringing device.”
TWO OTHER POINTS. “Two other points” support the conclusion that the expert’s declaration was not sufficient.
First, the patent owner’s counsel admitted that the expert’s language on identifying elements was “perhaps not as grammatical as one would wish.” “Asking litigants to provide more than a difficult-to-decipher expert declaration does not impose too high a burden at summary judgment, especially where, as here, the structural elements are allegedly common.”
Second, the attorney’s argument did “not offer any more clarity.”
”[A]ttorney argument might be able to clarify an otherwise ambiguous expert declaration in some circumstances, see Applied Medical Resources Corp. v. United States Surgical Corp., 448 F.3d 1324, 1335 n.5 (Fed. Cir. 2006) (`[T]he expert declaration and Applied’s argument provide particularized testimony and linking argument.’ (emphasis added)) ….”
Here, the attorney’s arguments rendered the expert’s declaration “even less clear.”
The patent owner argued that, to survive a motion for summary judgment of no infringement, it “was not required to link” an expert’s conclusory statements on infringement “to particular structures in the accused devices.” It relied on Applied Medical Resources Corp. v. United States Surgical Corp., 448 F.3d 1324 (Fed. Cir. 2006). The argument lacked merit
On summary judgment and the burden of proving infringement, see Chisum Patent Law Digest § 5321.20, § 5720. On “means-plus-function” clauses, see Chisum Patent Law Digest § 5250; Chisum on Patents 18.03.