Case: Bennett Marine, Inc. v. Lenco Marine, Inc., No. 2012-1336 (Fed. Cir. Sept. 19, 2013) (non-precedential). On appeal from S.D. Fla. Before Lourie, Schall, and Prost.

Procedural Posture: Defendant accused-infringer appealed final judgment of infringement, induced infringement, willful infringement, no invalidity, breach of settlement agreement, and damages. CAFC affirmed the findings of no invalidity; reversed the findings of infringement, induced infringement, willful infringement, and breach of contract; and vacated damages award.

  • Means-plus-function: District court erred in its claim construction. The specification disclosed a figure of a specific control circuit capable of performing the claimed function, and did not disclose alternative structures. Therefore the CAFC limited the scope of the corresponding structure to the specific circuit shown in the figure and its equivalents, rather than construe the claim to encompass any circuit capable of performing the claimed function.
  • Means-plus-function; Doctrine of Equivalents: Where the accused circuit (a timing circuit) operated in a different way from the specific control circuit (a counting circuit) that corresponded to the claimed function, testimony that the accused circuit could potentially perform the claimed function was insufficient to demonstrate that the accused circuit is structurally equivalent to the specific control circuit disclosed in the specification.
  • Infringement: Despite being fully aware of defendant’s proposed revised construction (which the CAFC adopted), plaintiff presented no evidence of infringement under that construction. The CAFC therefore reversed the findings of infringement, induced infringement, and willful infringement, and vacated the damages award.
  • Estoppel: That the inventor failed to distinguish a certain prior art reference during prosecution on a specific ground did not create an estoppel with respect to an arguably similar aspect of a different reference. More specifically, that the inventors distinguished Reference B on grounds other than that Reference B does not disclose trim tabs does not mean that the inventors waived an argument that a disclosure in Reference A that is arguably similar to that in Reference B did not disclose trim tabs.