The Role of the Patentee’s Expert in Proving Infringement

Intellectual Science and Technology v. Sony Electronics (Fed. Cir. 2009).

This decision follows a long line of cases warning against the use of means-plus-function claim language. The decision should also be seen as guidance to technical experts (to be more technical).

Intellectual Science’s Patent No. 5,748,575 covers a computer configured to simultaneously access multiple optical discs (such as CD-ROMS). According to the description, an “intelligent time-division multiplexer” is used to combine the multiple information sets into a single data stream for the host computer to process. Following the advice of an appointed special master, the district court on summary judgment held the patent not-infringed. On appeal, the Federal Circuit affirmed.

The appeal focused on the claimed “data transmitting means.” The parties agreed that the limitation should be interpreted under 35 U.S.C. 112p6 as a means-plus-function term. The dispute turned on whether the claimed means covers the accused device.

For a means-plus-function claim term, the term literally covers an accused device if the relevant structure in the accused device performs the identical function recited in the claim and that structure is identical or equivalent to the corresponding structure in the specification.

The patentee’s problem was that its technical expert’s report failed to tie the accused device to the claimed means and its corresponding structures found in the patent specification.

[T]he problem . . . is the absence of any showing that the identified structure accomplishes the same function in the same way as the claimed structure. . . . [T]he 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. Without that further identification and explanation, a reasonable juror would not be able to determine that those allegedly infringing components are actually present.

A court can properly find summary judgment of non-infringement if the patentee’s expert fails to provide “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, with all reasonable inferences drawn in favor of the non-movant.” Here, the Federal Circuit held that the patentee’s expert had failed that test.

Judgment of NonInfringement Affirmed.

Notes: There is nothing “wrong” with writing means-plus-function claim language — especially to accompany a well drafted specification. However, an applicant should not expect that its broadest claim is the MPF.

Claim 1 of the patent reads as follows:

1. An information processing apparatus with multitasking function, the information processing apparatus comprising:

   (a) a plurality of turntables, each comprising a disc-setting table for mounting an optical disc;

   (b) a plurality of optical units, each comprising a driving means and an optical read head, wherein said driving means is provided for moving said optical read head in a radial direction of said optical disc to a predetermined disc position on a surface of said optical disc;

   (c) means for simultaneously controlling a plurality of said driving means to move a plurality of said optical read heads to a plurality of predetermined disc positions on at least two optical discs for retrieving information stored thereon;

   (d) a plurality of signal-process systems for converting a plurality of information sets retrieved by said plurality of optical read heads from a compact disc format to the original state of the information; and

   (e) data transmitting means for transmitting a plurality of the information sets converted by said plurality of signal-process systems to a host computer.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

50 thoughts on “The Role of the Patentee’s Expert in Proving Infringement

  1. Gosh Ned, thanks. I didn’t appreciate any of that. I was answering what I thought was a different question much further back in the mists of time, namely, how did 35 USC 112 ever come to have in it, in the first place, a M+F provision. The Founding Fathers didn’t decree it, did they?

  2. When there’s a frivolous case, it’s not surprising that the plaintiff’s expert can’t match the claim elements to the accused device. No surprise here.

    You’re upsetting the trolls.

  3. MaxDrei, not quite. It was intended to “overrule” the Halliburton case. But the way the Feds have interpreted the statute, it is almost as if Congress had “enacted” Halliburton.

    The invention in Halliburton was directed to measuring the depth of an oil well by counting the number of tubing collars. The problem in the prior art was the echoes from the tubing collars from acoustic waves were so small as to be hidden in noise. So the inventors developed a mechanical tuner which, by adjustment, could enhance the echoes from the tubing collars.

    The infringing device counted the tubing collars by tuning, but used an electronic tuner.

    The claim was all MPF. It has at least three different elements. Means for inducing acoustic waves in the well (dynamite), etc. The tuner was just one element.

    As was customary even then, the lower courts had construed the claim to cover the disclosed embodiments and equivalents. They determined the electronic tuner was an equivalent. The Supreme Court overruled on the basis that the claim language was so sweeping that it would include not only equivalents of the mechanical tuner, but “future inventions” of others. From their view, such a putative claim scope would, like in O’Reilly v. Morris, retard, rather than encourage, the progress of the useful Arts.

    So Congress overruled and permitted MPF, but added the language of construction. But perversely, the Feds have limited the equivalents to past equivalents only, which is clearly contrary to the intent of Congress. At the time they did this, the Feds were at war with the DOE and apparently could not stomach a statutory DOE. So they, in their whole cloth hubris, put their rule of construction out of thin air and killed MPF claims, effectively overruling Congress and “enacting” Halliburton.

  4. Answer: ROW knows the given reason. US M+F was put into the Statute in a well-intentioned but uniquely misguided attempt by Congress to curb a perceived abuse of single means claims.

    ROW finds it hard to follow the logic of how the US Congress operates (just as people in the USA find it hard to follow how Europe makes its laws).

    Can we all agree that The Rule of Law is a precious thing, which we voters should cherish like nothing else?

  5. OK, for all this “HARMONIZATION” talk, who makes what move in order to “harmonize” M+F claims ???

    Is the US narrow view of M+F claims even remotely logical to the rest of the world ???

  6. Correct me if I am wrong, but the only real difference between the DOE and MPF equivalents is that the MPF equivalents had to be known at the time of the patent and cannot extend to new developments.

    But the Supremes in Graver Tank said and important aspect of equivalents was that it was important that those skilled in the art would recognize the equivalence of the substitution, the interchangeability of what is in the patent with what is accused of infringement. The Supremes there were saying the determination would be made at the time of infringement. But the same reasoning would apply at the time of the patent.

    If all this is correct, then one could prove MPF equivalence by showing that at the time of the patent those skilled in the art would recognize the interchangeability of what was in the patent with thing accused of infringement.

    Not so?

    So, if I claim a picture frame and one element claims “means for attaching the corners together,” and I disclose a screw, both a nail and a bolt might be equivalent if they were known substitutes even if they performed the attaching function differently.

    Some here have commented on the case in the OP. But, as there is no link, I have not read it.

  7. What is everyone talking about here? The patent is about computers. The plaintiff was trying to cover stereo equipment. IST is another troll with a bogus claim. If you check the district court docket, there is a motion for attorney fees pending for bringing a frivolous case. Don’t over analyze the case. When there’s a frivolous case, it’s not surprising that the plaintiff’s expert can’t match the claim elements to the accused device. No surprise here.

  8. Steve if you’re looking for intelligent lawyers you came to the wrong comments section. It won’t matter how many times you explain to them why MPF is not “broad” compared to other words that could just as well be used, they will never get it.

  9. @C’Mon:
    Respectfully, sir, your thinking is backwards in part and incorrect in the remainder. The notion that a Markush is invalidated by a single member is about how broad the claim is, not how narrow. Narrow claims are difficult to invalidate, broad claims are easily invalidated. In the sense that a single member invalidates, Markush claims are broad. A single instance from the Markush list or the laundry list for the MPF invalidates the claim if you are relying on that element for novelty, so they are parallel in the broad sense.

    The reason a Markush is narrow is that you must use the “consisting of” before the list, indicating that you are limited to members of that list. With a MPF, you are limited to the description in the specification. Therefore, they are parallel in the narrow sense.

    IE a laundry list in the specification, when invoked by a MPF claim, is exactly like a Markush.

  10. The reason to use MPF claims: it can make a claim seem BROADER than it actually is and it is MORE DIFFICULT to discern the proper scope.

    A prosecutor used to tell me, I always throw in a MPF claim at the end of every application. It makes it very difficult for an accused infringer to properly search for references and conduct an infringement analysis. By putting them at the end, with similar language, the examiner will probably not give it too much trouble.

  11. “Oh, so if I look at the patent specification I’ll see the “structure” of an “intelligent time-division multiplexer”?

    You’ll see a brief desciption of what function an ITDM is supposed to perform

    ROTFLMAO

  12. Note to self: do not let SteveW write applications until he knows the difference between “broad” and “narrow.”

  13. “Oh, so if I look at the patent specification I’ll see the “structure” of an “intelligent time-division multiplexer”?

    You’ll see a brief desciption of what function an ITDM is supposed to perform and maybe you’ll appreciate how one of ordinary skill might assemble one or maybe even find something appropriate off the shelf. Noone is saying that an ITDM is an invention.

    Most of the elements of the claim are in MPF format. Novelty/non-obviousness doesn’t end with finding an ITDM in the prior art just because that was the issue on which non-infringement turned.

  14. Max, why do you think a SPECIFICATION would have to be written differently [as opposed to just being done properly] to support a valid M+F claim in addition to other claims? [As noted above, if you want to broaden the scope of the M+F claim in the U.S. you may want to add some alternative means embodiments, but that’s distinct from simply having at least one thing in the spec for each claim element in M+F format to avoid it being fatally defective. Isn’t that spec support that one would want for any claimed element, however claimed?

  15. a markush claim is narrow because it takes only one instance of the group in the prior art to anticipate/obivate it. A laundry list in the specification is not like a markush group.

  16. @M – EFT:

    A “fastener” is broader and still has the support of that wonderful laundry list in the spec. The MPF claim is strictly limited to the list. As a sort super-Markush creature, the MPF can certainly be useful, but just like a Markush it is also narrow.

  17. But in the case of means plus function claims, I think that a wee bit more willingness to look at the spec to see what structure has actually been claimed is in order.

    Oh, so if I look at the patent specification I’ll see the “structure” of an “intelligent time-division multiplexer”?

  18. “‘m not against MPF claims in general – sometimes you want a narrow claim that is directed to exactly what is described in the specification, and an MPF claim is just the thing for that. ”

    Um, not really. An MPF claim is not “narrow.” The classic case for MPF is the case where “fastening means” is claimed and the specification describes a laundry list of possible structures for fastening including screws, rivets, spot welds, and the like. MPF saves you the trouble of having to individually claim each and every fastening device. The claim then becomes as broad as the number of embodiments that have been described.

    There was actually a really good case on point (the fastening means case) but I couldn’t find it after a quick Google search.

    Can anyone help?

    “I’m not sure you even have a point”

    Excuse me, but do you really think Mooney the troll ever has a point, except to try to annoy real patent attorneys? If you are a real patent attorney JV, Mooney’s snarky strategy appears to be working.

    To just about everyone else, he is a crappy little troll with big problems. Imagine what his personal life must be like…

  19. MM asks:

    “was the idea of a computer configured to simultaneously access two CD-ROMS completely wacky?”

    I understand your general complaint re functionally recited claim elements.

    But in the case of means plus function claims, I think that a wee bit more willingness to look at the spec to see what structure has actually been claimed is in order.

    Unless your point is that no structure for accomplishing simultaneous access to disks could ever patentable, I’m not sure you even have a point.

  20. The question is: when this patent was filed way back in the Dark Ages of Bubble Time (1996), was the idea of a computer configured to simultaneously access two CD-ROMS completely wacky?

    Because if it wasn’t, then it seems that every limitation in the claim is just a bunch of self-evident malarkey.

    But this blog is filled with commenters who are “experts” in this field. Some of them even have engineering degrees (WOW!!!!!). I’m sure they can set us all straight about how incredible this innovation was. Good thing we didn’t have a FTF system back then or stuff like this would never even have been developed ever.

  21. I’m not against MPF claims in general – sometimes you want a narrow claim that is directed to exactly what is described in the specification, and an MPF claim is just the thing for that. I’m just saying that a lot of times you see an aspect that is difficult to describe broadly, and someone throws hand-waving means claims at it. Thus, it looks like a bad habit.

    In this case, every independent utilized means claims, although who knows what happened during prosecution.

    @Maxdrei: I agree with you that the state of US law on MPF doesn’t make “sense”, as an MPF claim indeed looks very broad in plain English. My point is that it’s just not that hard to understand, and the courts have demonstrated that they really really mean it.

    Patent attorneys: “Dr., it hurts when I do this.”
    Courts: “Stop doing that.”

  22. And now for something completely different.

    MM says: looks like an obvious pile of crap…!!!!!

  23. According to the description, an “intelligent time-division multiplexer” is used to combine the multiple information sets into a single data stream for the host computer to process.

    Isn’t this the invention?

    Was it actually claimed? Or was it just some vague hand-wavey thing the alleged “inventors” dreamed up to make their “invention” sound more impressive than it actually is? The claim Dennis posted looks like an obvious pile of crap (“But our computer accesses TWO discs!!!!!”).

  24. Zak,

    Sorry if I can off as commenting on “advocacy skills.” None of us are perfect, including me. I probably should have used a different phrase.

    As far as the “courts are pulling the summary judgment trigger far more readily now than in the past,” that’s just the reality I see. Judges right now feel burdened by ever growing dockets, and the easiest way for them to prune those dockets is by granting summary judgment. SCOTUS decisions that are frequently cited by the Federal Circuit on granting motions for summary judgment also encourage this trend. You can just can’t rely on the courts to give you a break if you make it more difficult for them to understand the validity of your position.

  25. EG,

    I agree with you that being a good advocate requires ensuring that key factual evidence is present in expert opinions submitted to the court. But, I do not like to comment on the advocacy skills of other attorneys when blogging. So, I will keep my opinions on that matter to myself.

    I am more worried about you first observation that “courts are pulling the summary judgment trigger far more readily now than in the past.” I am concerned that cases like this make that easier by setting precedent that lowers the summary judgment standard by placing previously uncalled for evidentiary burdens on the parties.

  26. “I am not convinced that the failure of the plaintiff’s expert to annotate the circuit diagrams truly indicated that there was no genuine issue of material fact regarding whether the accused devices contained all the required elements of the claims.”

    Zak,

    In a “perfect world” you would be right. But patent litigation is far from a “perfect world,” and courts are pulling the summary judgment trigger far more readily now than in the past. Put differently, don’t make it hard for the courts to understand your position, especially on technical factual points like claim elements being present in the alleged infringing product that are crucial to your case. You simply can’t assume that the courts are going to bail you out if your expert’s opinion doesn’t provide key factual information to show you’ve at least got a prima facie case for infringement. In addition, it wouldn’t have taken that much to annotate the cited circuit diagrams and provide the appropriate explanation; that’s just good advocacy. In short, I’ve got very little sympathy for this patentee.

  27. The problem with a lot of these cases is that when they were drafted (in this instance, about 13 years ago), the landscape of MPF case law was completely different than it is now. Very few to no practitioners at that time would’ve guessed that the issue in the case was an issue under the landscape of the law at that time.

    As for making a single specification support both U.S. claims and foreign claims, this can be done in multiple ways (e.g., write multiple dependent claims and include a full set of MPF claims, then file in the U.S. with a preliminary amendment that cancels the MPF claims and removes the multiple dependencies).

  28. So, are we saying here that saving the money to pay top dollar for the litigators is a false economy, and that the budget is better spent on hiring drafters with some aptitude for drafting?

    If so, how does one check out drafting skills?

    Is there an examination paper on drafting to pass, before would-be claim drafters are let loose on the public? Or can one find reliable and consistently excellent drafting performance only in top name (top whack) law firms?

  29. Builidng on Just Vistiting’s comment: I am not convinced that the failure of the plaintiff’s expert to annotate the circuit diagrams truly indicated that there was no genuine issue of material fact regarding whether the accused devices contained all the required elements of the claims. After all he did testify to their presence and based that testimony on the attached diagrams. So he basically said look these diagrams provided by the defendants show all the required elements. In my mind that indicates that there is a genuine issue of material fact that could be resolved by the jury.

    The failure to annotate the figures could easily be corrected during examination of the expert at trial. Undoubtedly to convince the jury the plaintiff’s expert would have to annotate the figures and explain how each element functions. So building the record during trial would also be necessary to provide substantial evidence to support a finding of infringement. It seems to me that the court is trying to put the onus on parties, or at least the plaintiff, to produce substantial evidence to survive summary judgment. In essence then this would change the standard from “no genuine issue of material fact” to “has offered no substantial evidence regarding a material fact.”

    It seems to me from how the district court had the plaintiff split the case into groups and focus on paradigm claims and paradigm devices that for some reason or another the court just wanted to get rid of the case. But then what do I know, I just prosecute patents and leave litigation to others.

  30. “The more I look at these litigations the more I come to conclusions that it’s all crapshoot, a dice to roll, a roulette”

    Not exactly. I see the whole proposition of launching a successful product into business more as a mountain climbing expedition – with the patent portion and important part of it, like a good rope and other gear. If you invest in the best gear and the best guides, your chances of reaching the top increase dramatically.

    If you think patent attorneys are all fungible, and patent stuff and legal stuff is all “mumbo jumbo,” and go for the cheapest services you can find, or give work to your friends, just because they’re your friends, you should at least consider what life will be like without your fingers and toes because they are the first things to go from frostbite. If you’re really practical, you should consider what it will be like to freeze to death.

    Better yet, just hire the best attorneys you can find from the outset – that includes in-house counsel. The fact is, all patent attorneys are not created equal – some are just plain better than others regardless of their position.

  31. Hmm…haven’t read this, but seems like there is a genuine issue of material fact as just because the expert didn’t have all the elements doesn’t mean that they couldn’t produce evidence of those elements during trial.

  32. “What the line of cases should warn against is the hapless use of MPF claims without a well written specification.”

    Without knowing what prior art the patent holder was trying to avoid during prosecution and enforcement, it seems presumptive to assume that the patent holder did not benefit having his claim interpreted narrowly.

    Unlike the Aristocrat line of cases, no claims were invalidated because of MPF or because of an attempt to express limitations in functional language.

    This case may be about failing to put in enough evidence of infringement to avoid SJ.

  33. With all due respect, it seems as if Intellectual Sciences & Technology did not exactly go to a venerable firm for their P&P services…

    I’m just sayin…

  34. A question for lawyers:

    Are there any legal consequences after a summary judgement of non-infringement ?
    After all, defendant spent a sizable fortune in court
    Any Rule 11 sanction for sloppy plaintiff ?
    Any punishment for sloppy “expert” ?

    The more I look at these litigations the more I come to conclusions that it’s all crapshoot, a dice to roll, a roulette

    You can lose with perfectly valid and infringed patent but you can also win with invalid and non-infringed patent

    It’s all legal mumbo-jumbo, a bread and butter and some caviar too for lawyers

  35. Thanks Paul. So, ideally, it’s one set of claims for the USA and a different one for the ROW. One specification for the USA and a different one, written with EPO-PSA in view, for the ROW.

    So, that suggests that, optimally (to avoid a malpractice suit) it’s a PCT for the ROW, and a concurrently filed non-pro for the USA. Have I got that right?

  36. “…warning against the use of means-plus-function claim language”

    I hardly think that there is any reason to be warned “against” the use of MPF claims. Characterizing the line of cases as warning “against” the use of MPF claims shows a classic neophyte misunderstanding of the MPF world and comes off as a silly aversion to doing something that seems to be “risky.”

    Heck, there are lines of cases regarding every kind of claim. Does that mean that all claim types should be avoided? Hardly.

    What the line of cases should warn against is the hapless use of MPF claims without a well written specification. For that matter, what all lines of cases should warn against is the hapless use of any kind of claim and against the haphazard preparation and prosecution of patent applications.

  37. Max, re the need for expert testimony in U.S. patent litigation, issues over technical terms may have to go to a lay jury, not someone technically and patent-interpretation educated.
    Yes, if it were not for the aversions to more than one independent claim overseas it could make sense in some cases to file a means-function claim [which is likely to be effectively broader overseas] in ADDITION to non-MF claims that would be broader in the U.S.

  38. More crappy litigating.

    I often wonder exactly what goes on at big lit firms.

    I know it’s easy to monday-morning QB, but what the heck. They bill enough that an oversight such as this should be inexcusable.

  39. nevermind, there was corresponding structure in the patent itself, although it’s hard to believe that it was not Aristocrat-ed

  40. Perhaps the plaintiff was worried about getting Arisocrat-ed if they had identified the alleged specific structure.

  41. Most of the comments so far have been on the claims being in means-plus-function format. But the key problem here which Dennis notes is the failure of the patentee’s expert to clearly identify the presence of 2 of the 4 elements of the “data transmitting means.” What’s even worse is that court-appointed special master pointed out that the patentee’s expert in his declaration had attached circuit diagrams of the alleged infringing products but didn’t annotate those diagrams to point out where these 2 missing elements were. To fail to make clear where the claim elements are present in diagrams of the alleged infringing product is just begging for the court to rule no infringment.

  42. Pen, yes, I know. Those GB associates, what silly billies they all “seem” to be, no?

    Tell me, when a US attorney writes claims for a PCT filing, should she include one or more M+F claims? Or would that also be a silly thing to do? You know, repercussions in the US, that sort of thing.

  43. MaxDrei,

    Regardless of the silly nature of the treatment of MPF claims, it is the law in the US. It seems that most of the applications that I receive from UK associates are written in MPF claim language.

    Dennis, you mention that a MPF claim should not be your broadest. Do you suppose that I should include 2 IC’s using non MPF language, and 1 using MPF language? My concern with that is that an accused infringer could then certainly argue that the language of the 2 IC’s is in fact MPF language and is entitled to 112 treatment. I see this as particularly problematic if your MPF IC recites “functional term means” and your non MPF IC recites “functional term device.”

    Maybe it is just me, but I am not putting MPF language in any of my claims.

  44. Loved your mail SteveW, especially the last line. First laugh of the day. Many thanks. Keep ’em coming.

    Of course I already knew that:

    “A means claim is quite narrow, and really only covers the specifically described embodiments.”

    You categorise writing a M+F claim as a habit that’s “bad”. As if nobody in their right mind could ever suppose that M+F, taken on its face, is as broad as it gets. (That, BTW, is my second laugh of the day.)

  45. It might be silly, it might be pedantic, but it’s well settled and easily understood. A means claim is quite narrow, and really only covers the specifically described embodiments. Old bad habits die hard I suppose.

    Move along, nothing more to see here.

  46. You couldn’t make it up. I quote:

    “The appeal focused on the claimed “data transmitting means.” The parties agreed that the limitation should be interpreted under 35 U.S.C. 112p6 as a means-plus-function term. The dispute turned on whether the claimed means covers the accused device.”

    So, the decisive question was whether the accused embodiment includes a “data transmitting means”.

    Now anybody outside the arcane world of US patent law might naively suppose that this question is easier to answer than just about any question they encounter in the course of their ordinary working day, given that the case was all about transmitting data from a data-carrying disc to a data processing machine.

    But no, it isn’t easy at all. In fact it’s so difficult that it took two armies of lawyers and a visit to the CAFC to answer.

    And, with 112 M+F, it happens all the time. What a laugh. But only in America, so thanks for reporting it to us Dennis.

Comments are closed.