Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357 (Fed. Cir. 2010) (LOURIE, Rader & Schall)HearingComponent04012010
MAJOR ISSUES: laches defense; evidentiary prejudice only in regard to defense itself; indefiniteness; subjective terms; guidance from specification; mean-plus-funciton clause; equivalence of patent’s corresponding structure and accused structure; obviousness; secondary considerations; expert testimony; claim limitation missing from prior art; lack of motivation to combine; commerical success; nexus
COMMENT. The appeal resolved four distinct issues: (1) laches, (2) indefiniteness, (3) scope of a means-plus-function clause, and (3) obviousness.
The last issue, laches, a defense based on a patent owner’s delay in suing for infringement, unlike the other three issues, comes comparatively rarely before the Federal Circuit. This is because of the enduring effect of Judge Helen Nies’ comprehensive 1992 opinion for the en banc court, A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1032 (Fed. Cir. 1992) (en banc). Aukerman rather precisely set forth the requirements of the laches defense (and its sibling defense estoppel). Aukerman covered issues such as the burden of proof on the key elements of unreasonable delay and prejudice (either evidentiary or economic) and on the availability of summary judgment.
1. GUARD FOR HEARING AID DEVICE. The patent at issue concerned a disposable wax guard for a hearing aid device in which a tube with a sound outlet port confronts the ear when the device is fitted within a user’s ear canal. U.S. Pat. No. 4,880,076 USPatNo4880076; U.S. Pat. No. 5,002,151 USPatNo5002151.
2. LACHES: SUIT SIX YEARS LESS ONE DAY AFTER PATENT OWNER AWARENESS; NO LACHES. A patent owner sued one day less than six years after the date it should have known of the accused infringer’s infringing activities. A district court did not err in rejecting the accused infringer’s laches defense.
a. The patent owner’s delay in filing suit being less than six years, the district court correctly found that, under Aukerman, a presumption of unreasonable delay and prejudice did not arise. But the district court noted that “as a matter of equity” it should, perhaps, give the accused infringer the benefit of the presumption. Nevertheless, it found that patent owner proved that the accused infringer suffered neither evidentiary prejudice nor economic prejudice.
b. EVIDENTIARY PREJUDICE. The accused infringer asserted that it suffered evidentiary prejudice in the form of possible lost evidence that would show that the patent owner’s delay was longer than six years. That evidence is not relevant evidentiary prejudice. First, proving a longer delay would not aid the accused infringer because the court gave it the benefit of the presumption. Second, evidentiary prejudice must consist of a loss preventing the accused infringing a claim or defense separate from the laches defense.
c. ECONOMIC PREJUDICE. There was no evidence that the accused infringer incurred increased expenditures due to the delay in filing suit.
i. The accused infringer acted in reliance on noninfringement opinions of counsel and “would not have acted differently if it had been sued earlier.” Also, its position was that “its products’ value did not arise from the use of the claimed invention.”
ii. Increased damages based on increased infringing sales is not economic prejudice if the accused infringer is able to respond to the increased damages.
2. DEFINITENESS: “READILY INSTALLED AND REPLACED BY A USER.”. Claims at issue required that the wax guard be “readily installed and replaced by a user.”
a. In an infringement suit, a district court held that the claims were invalid for indefiniteness because the “readily phrase” was subjective and the patent’s specification failed to explain sufficiently what degree of difficulty in removal and replacement would suffice to avoid infringement.
b. PHRASE IN PREAMBLE AS A LIMITATION. Preliminarily, the patent owner argued that the phrase was not a claim limitation because it appeared in a preamble and was duplicative of other language in the claim. The argument lacked merit.
i. First, the patent owner relied on the “readily installed” feature during prosecution to distinguish prior art.
ii. Second, the language was not duplicative of other language. The claims required that a membrane be such as to “permit a user to position” the guard, but the “readily installed” phrase referred to the entire wax guard “and therefore is more limiting.”
c. SUFFICIENT STANDARDS; ABILITY OF LAYPERSON USER TO INSTALL GUARD WITHOUT TOOLS. However, the patent owner’s argument that the specification provided a sufficient standard for the “readily” phrase did have merit. The specification distinguished “the ability of a layperson user to install the wax guard without tools, on the one hand, and the necessity of a professional using tools, on the other hand ….”
i. TWO EXAMPLES. The specification had only two examples that discussed “readily installed and removed” in relation to the wax guard element.
A. FIRST: ADVANTAGE IN BEING SIMPLE TO INSTALL AND NOT REQUIRING TOOLS. First, in a two- sentence passage, the specification implied that a guard that required no tools would be “readily installed and replaced.” The first sentence indicated that the guard was “simple to install” and “easy to remove,” “even for older persons.” The second sentence indicated that the guard required no tools. Presumably, the second sentence was an elaboration of the first, a presumption supported by the use of variations on “install” and “remove” in both sentences, and by the fact that “readily, “simple” and “easy” are synonyms.
B. SECOND: DISPARAGING PRIOR ART; SCREENS AND FILTERS BEYOND OPENING. Second, the specification indicated, by “negative implication,” that a guard mounted beyond the sound delivery tube opening would not be “readily installed.” It disparaged prior art guard that were not “readily installed and replaced.” It indicated that some prior art devices had filters beyond the opening, which were difficult to remove, especially by older persons with limited eye sight and dexterity.
ii. DISTRICT COURT: INDEFINITENESS ON LEVEL OF DISABILITY OF “OLDER PERSONS”; EXAMPLES CLEAR AND APPLY REGARDLESS OF DISABILITY LEVEL. The district court found that the “readily” phrase was indefinite because the specification “did not address the level of physical disability required by the terms `older persons’.” However, the specification’s examples were clear and applied regardless of any level of disability. Age and disability were just possible factors.
d. DISCRETION ON FURTHER CONSTRUCTION. On remand, the district court may, in its discretion, further construe the “readily installed” phrase.
3. INFRINGEMENT; MEANS-PLUS-FUNCTION CLAUSE. Asserted claims required means for fastening (or attaching) an earpiece to a duct. The patent’s structures corresponding to the means were the alternatives of a screw, a ball-and-socket, and an adhesive. Substantial evidence supported a jury’s verdict that two accused designs that used an interference fit (friction) were equivalent.
a. CLAIMS: MEANS FOR ATTACHING (OR FASTENING). The asserted claims required an ear piece component and a “user-disposable” sleeve having a duct and foam. The claims further required a connecting portion with “means … for disposably attaching” or for “fastening” the duct of a sleeve to the connecting portion.
i. SECTION 112/6 CLAUSES. The attaching and fastening means clauses were subject to Section 112/6 and thus were construed as covering the corresponding structure in the specification for performing the attaching (fastening) function and equivalents thereof.
ii. CORRESPONDING STRUCTURE: MATING SCREW THREAD, BALL-AND-SOCKET, AND ADHESIVE. The specification disclosed as the corresponding structure for attaching (or fastening) the ear piece connecting portion to the sleeve duct were (i) a mating screw thread, (ii) a ball-and-socket attachment, and (iii) an adhesive layer.
b. ACCUSED DEVICES; TWO DESIGNS. The patent owner asserted infringement by two products of the accused infringer. The products had different designs: a straight nozzle and a barbed nozzle.
i. STRAIGHT NOZZLE; INTERFERENCE FIT. The first accused design was a straight nozzle with a outer diameter larger than the duct’s inner diameter. When nozzle was inserted into the duct, the duct stretched outward, creating an “interference fit.”
ii. BARBED NOZZLE; INCREASED FRICTION. The second accused design was similar but had a protrusion (barb) on the nozzle to increase the friction of the interference fit.
c. TRIAL. At a jury trial, the patent owner and accused agreed that the accused designs (straight and barbed) were not identical to any of the three corresponding structures (screw, ball-and-socket, adhesive)
i. The jury found infringement by both accused nozzle designs.
ii. The district court found substantial evidence supported the jury’s verdict of equivalent only as to the barbed nozzle. The district court found that there was no evidence that the straight nozzle contained an equivalent of the corresponding structures because it lacked any “positive attachment” keeping the duct and ear piece connected. In contrast, the district court found sufficient the evidence supporting the verdict. The barb was structure performing the claimed function (attaching or fastening).
d. The Federal Circuit agreed that substantial evidence supported the jury’s verdict that both accused designs infringed because their structures were equivalent.
e. NOZZLE’S OUTER SURFACE AS STRUCTURE; NO “POSITIVE ATTACHMENT” REQUIRED; ADHESIVE AS CORRESPONDING STRUCTURE. The nozzle’s outer surface is a structure performing the claimed function. The claimed means did not require any “positive attachment with the duct.” One alternative corresponding structure in the patent is an adhesive, which has no “positive attachment” and operates only by friction as with an interference fit.
f. KNOWN INTERCHANGEABLY. There was evidence that an interference fit was known at the time of the patent owner’s invention to be interchangeable with screw threads or ball-and-socket attachments.
i. Evidence of known interchangeability is a positive factor in determining equivalency. IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1435 (Fed. Cir. 2000).
ii. The accused infringer attempted, impermissibly, to convert interchangeability into a negative factor on equivalency, arguing that “the inventors were aware of alternatives to the disclosed structures but chose not to disclose them.”
g. DOES STRAIGHT NOZZLE PERFORM FUNCTION IN A DIFFERENT WAY BECAUSE IT HAS NO MALE STRUCTURE TO MATE WITH THE FEMALE DUCT STRUCTURE? The accused infringer argued that the accused straight nozzle did not perform the claimed functions in the same way because it had “no male structure on its outer surface that mates with a female structure within the duct to form a positive attachment; instead the nozzle is smooth.” However, as noted above, the claim did not require a “positive attachment” or structure (male). One disclosed corresponding structure, an adhesive, lacked such a positive structure.
h. FRICTIONAL ATTACHMENT NOT DISTINGUISHED IN PATENT OR PROSECUTION. The accused infringer argued that the patent owner “distinguished a frictional attachment in the patent specification and during prosecution.” The argument lacked merit. Neither the specification or the prosecution history contained a specific criticism of a frictional attachment.
i. BARBED NOZZLES. Because evidence supported the jury’s verdict that the straight nozzles infringed, a fortiori, the evidence supported the verdict on barbed nozzles, which do have a “positive attachment” (the barb) in addition to the interference fit.
4. OBVIOUSNESS; JURY VERDICT. An accused infringer contended that the patents’ asserted claims were obvious in view of combinations of four prior art references. At trial, the jury did not agree. The district court denied the accused infringer’s motion for JMOL of invalidity. The Federal Circuit affirmed.
a. EAR PIECE DISPOSABLY ATTACHED TO SLEEVE WITH DUCT AND FOAM; MEANS CLAUSE. The claims required, inter alia, an “ear piece component” for use with a “user-disposable” sleeve having a duct and foam. The component had a connecting portion with “means … for disposably attaching” or for “fastening” the duct of the sleeve to said connecting portion. As Section 112/6 means-plus-function clauses, the means for fastening or attaching covered the corresponding structure in the specification for performing the attaching (fastening function). The specification disclosed as alternative means for attaching the duct and the ear piece connecting means (i) a mating screw thread, (ii) a ball-and-socket attachment, and (iii) an adhesive layer.
b. CONFLICTING EXPERT TESTIMONY ON (1) DID THE PRIOR REFERENCES CONTAIN ALL THE CLAIM LIMITATIONS? (2) WAS THERE A MOTIVATION TO COMBINE? AND (3) SECONDARY CONSIDERATIONS. At trial, the patent owner and accused infringer presented conflicting expert testimony “on whether the prior art references contained all of the claim limitations, on motivation to combine, and on secondary considerations of nonobviousness.” The jury could credit the patent owner’s expert.
c. CLAIM LIMITATIONS MISSING FROM PRIOR ART REFERENCES IN ACCUSED INFRINGER’S ASSERTED COMBINATIONS. The accused infringer relied on combinations of other references with either the Carlisle reference or the Killion reference, but the patent owner’s expert testified as to claim elements missing from the Carlisle and Killion references. Believed, that testimony negated the accused infringer’s asserted combinations including those references.
i. CARLISLE DEVICE: NOT IN THE EAR CANAL. The patent owner’s expert testified that the Carlisle reference’s device was not inserted into the ear canal, as all the asserted claims required. At the time of the Carlisle device’s invention (the 1940s), there would have been no reason to put an earplug in the ear canal.
ii. KILLION DEVICE: NOT “EASILY DISPOSABLE” BY USER. The patent owner’s expert testified that the prior art Killion device did not teach a user-disposable sleeve because the device was designed for an audiologist to test hearing.
d. LACK OF MOTIVATION TO COMBINE; PARTICULAR REASONS. The patent owner’s expert gave “particular reasons why one skilled in the art would not have been motivated to combine the references.” In contrast, the accused infringer’s expert’s testimony was “sparse and lacking in specific details.”
e. SECONDARY CONSIDERATIONS: COMMERCIAL SUCCESS THROUGH LICENSING; NEXUS: LICENSE FEE CUT IN HALF WHEN ONE PATENT EXPIRED. The patent owner presented evidence on secondary considerations of nonobviousness. The patent owner showed “commercial success through its licensing program.” The patent owner showed the necessary nexus between the success and the merits of the patented invention by evidence that “the licensing fee for a covered product was more than cut in half immediately upon the expiration of the ‘151 patent, supporting its contention that the success of the device was related to the patent.”
1. On laches, see Chisum Patent Law Digest 5624; Chisum on Patents 19.05.
2. On indefiniteness, see Chisum Patent Law Digest 2420; Chisum on Patents 8.03.
3. On means clauses and equivalency, see Chisum Patent Law Digest 5254; Chisum on Patents 18.03[c].
4. On reviewing jury verdicts on obviousness, see Chisum Patent Law Digest 1565.