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CAFC Rules Patentee’s Expert Failed to Sufficiently Identify Elements of Claimed Data Transmitting Means


Written by Eric W. Guttag
Eric W. Guttag IP Law Office
Posted: December 16, 2009 @ 11:17 am
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Circuit DiagramA “black letter” rule of patent law is that infringement requires proof that the alleged infringing device includes all elements or limitations recited in the claim.  Known alternatively as the “All Elements Rule” (AER) or “All Limitations Rule” (ALR), it behooves a patentee to make sure that each and every claim element or limitation is clearly shown to be present in the alleged infringing device.  Unfortunately, in Intellectual Science and Technology, Inc. v. Sony Electronics, Inc., the patentee, or at least their expert, glossed over this “black letter” rule.  What’s worse is that the alleged infringers were granted summary judgment of non-infringement because the patentee’s expert hadn’t sufficiently identified the presence of certain elements of a claimed “data transmitting means” in the alleged infringing devices.

In Intellectual Science, the patent (U.S. Patent No. 5,748,575) involved an apparatus for reading optical discs (e.g., CD-ROMs) that reduced the role of magnetic disk drives (e.g., floppy or hard drives) by enhancing “information processing” through reading information simultaneously from multiple locations on one or more of these optical discs.  For example, an embodiment of this apparatus could run Microsoft Word®, Excel®, and PowerPoint® from three different locations on a single disc while simultaneously running Microsoft Windows® 95 from another disc.  Concurrently, the user could also “enjoy digital music by playing disc situated in [another] department.”

What became the focus of the Intellectual Science case was a structure in the claimed apparatus for transmitting the information sets obtained from the optical discs to a host computer.  This data-transmitting structure comprised the following four elements:  (1) an intelligent time-division multiplexer (“ITDM”) to transmit multiple information sets as a single data stream; (2) a high-speed control bus which the ITDM received the information sets from; (3) a host interface bus which the ITDM transmitted the single data stream to; and (4) a read only and random access memory (“ROM/RAM”) which helped the host interface bus send the single data stream to a host computer.

In the language of Claim 1 of the ‘575 patent, this data-transmitting structure was referred to as a “data transmitting means for transmitting a plurality of the information sets converted by a plurality of signal-process systems to a host computer” (or “data transmitting means” for short).  Now I can just see the collective eyebrows being raised by many patent claim drafters at using “means-plus-function” language in any patent claim, much less Claim 1.  But calling this data-transmitting structure a “data transmitting means” wasn’t the key problem in the subsequent patent infringement suit filed Intellectual Science (the patentee) against multiple defendants who included JVC Americas, Panasonic and Sony Electronics.  Instead, what became fatal to the patentee’s case was proving that the allegedly infringing audio player/recorder devices had all four elements/ of this “data transmitting means.”

The district court ordered the alleged infringers to choose representative or “paradigm” products (referred to in the Intellectual Science opinion as the “Sony Paradigm Products” and the “JVC Paradigm Product”) for determining whether the ‘575 patent was infringed.  The alleged infringers then moved for summary judgment of non-infringement.  In support of that motion, the declaration by the expert for the alleged infringers asserted that the alleged infringing devices were missing two elements from the claimed “data transmitting means”:  the ITDM and the host interface bus.

In response, the patentee’s expert submitted a declaration which asserted that all four elements of the “data transmitting means,” including the ITDM and the host interface bus, were present in the accused devices.  In fact, this declaration cited two circuit diagrams from Sony Service Manuals as showing that the “Sony Paradigm Products” contained the ITDM and the host interface bus.

Unfortunately for the patentee, the district court appointed a special master to issue a Report and Recommendation (“Report”) on the alleged infringer’s summary judgment motion.  The special master’s Report concluded that “Intellectual Science did not make a sufficient showing of infringement to survive summary judgment.”  Relying upon that Report, the district court granted the alleged infringers’ motion for summary judgment.

Why did this Report reach this conclusion about the declaration of patentee’s expert?  The answer:  this declaration provided “no indication as to the specific structure in the [Sony] Paradigm products relied upon” by the patentee’s expert which corresponded to “the claim elements,” in particular the ITDM and host interface of the “data transmitting means.”  Ouch!  In fact, the Report pointed out that the patentee’s expert did not “annotate the circuit diagrams upon which he relies to point to any specific structural element,” as well as “explain the specifications of such element.”  The Report additionally stated that the patentee’s expert did not “inter-relate the operation of such element relative to any other elements.”

The Federal Circuit opinion was equally critical of the declaration of the patentee’s expert:  “To satisfy the summary judgment standard, a patentee’s expert must set forth the factual foundation for his infringement opinion in sufficient detail for the court to be certain that features of the accused product would support a finding of infringement under the claim construction adopted by the court.”  The Federal Circuit opinion concluded that this declaration did not “sufficiently identify the structural elements” of the claimed “data transmitting means.”  In particular, the Federal Circuit opinion stated that this declaration did not “pin point” where the ITDM and host bus interface” were to be “found in the accused devices.”

The Federal Circuit opinion was especially scathing about the patentee’s expert simply citing to the Sony Service Manuals:

“[The patentee’s expert’s] citation to a page number in Sony’s Service Manual for each [Paradigm Product] also supplies no specific showing of an infringing structure.  The schematic found at each page, one of which is reproduced below, presents an unexplained array of electronic symbols. ” (Emphasis added.)

Double “Ouch!”

In response, the patentee contended that its expert did at least identify the structure that served as the ITDM, namely an element labeled “IC-109” in the cited circuit diagram which the expert characterized as a “[p]layback signal selection device IC-109 [which] multiplexes audio information stream (CD or CDR) for output from the D/A converter.”  Again, the Federal Circuit opinion found this alleged identification insufficient:

“To accept this identification, this court would have to conclude that it would be reasonable to infer that the identified playback signal selection device is an ITDM simply because both devices perform multiplexing.  [The patentee expert’s] opaque identification is not enough to permit any reasonable juror to make that leap.  The record simply does not allow this court to accept the reasoning that all multiplexers are ITDMs.  Rather, as the record shows, an ITDM’s output is more complex. ” (Emphasis added.)

Triple “Ouch!”

And the Federal Circuit opinion got even worse for the patentee based on the arguments in the briefs and what transpired at oral argument.  First, counsel for the patentee was asked at oral argument “where exactly [the patentee’s expert] identified the structural elements in his declaration.”  The counsel’s answer:  the language in this declaration is “perhaps not as grammatical as one would wish.”  Second, the Federal Circuit opinion concluded that the patentee’s attorney argument “does not offer any more clarity” as to the identity of the host interface bus in the Paradigm Products.  The ultimate in “Ouch!”

In conclusion, the Federal Circuit said:  “Without clear identification of the claimed structure or its equivalent in the accused devices, [the patentee] cannot survive summary judgment.”  In fact, the failure of the patentee’s expert to make clear (e.g., by annotation and factual explanation) where the four elements of the claimed “data transmitting means” were present in the cited circuit diagrams for the Sony Paradigm Products was just begging for the district court, as well as the Federal Circuit, to rule no infringement.  Future patentees should heed this warning in Intellectual Sciences case:  employ the KISS principle and clearly identify where each of the claimed elements/features are present in the alleged infringing product.  Put differently, your infringement case will most likely to go down in flames if your expert fails to make it abundantly clear (with annotations and factual descriptions) where all those claimed elements/features are present in the alleged infringing product.

*© 2009 Eric W. Guttag.


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