Unsupported conclusion of infringement by patentee´s expert is not enough to raise a genuine issue of material fact.

Intellectual Science and Technology, Inc. v. Sony Electronics, Inc., No. 2009-1142 (Fed. Cir. Dec. 15, 2009).

The patentee asserted infringement of a patent for an apparatus for reading optical discs in a computer that reduces the role of magnetic disk drives by enhancing “information processing” through reading information simultaneously from multiple locations. An embodiment of this apparatus could run multiple applications from multiple locations on a single disk while simultaneously running other applications from another disc. The district court granted summary judgment of non–infringement. The Federal Circuit affirmed, determining that the patentee´s expert had not sufficiently identified the presence of certain elements of a claimed means–plus–function term in the accused device.

“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 the features of the accused product would support a finding of infringement under the claim construction adopted by the court.” The patentee´s expert´s “unsupported conclusion of infringement” was not sufficient to indentify the structural elements of the means–plus–function term. The patentee´s expert failed to “pinpoint” the location of certain structural elements “in the accused devices.” Merely citing to a service manual for each accused device “also supplies no specific showing of an infringing structure.”

The patentee argued that the structural elements were “off–the–shelf” components, but nothing in the record corroborated that assertion or showed that one of skill in the art would recognize the “off–the–shelf” component as matching the infringing means. Even 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. Without that further identification and explanation, a reasonable juror would not be able to determine that those allegedly infringing components are actually present.

Lastly, the patentee contended that its expert did at least identify the structure that serves as one of the elements (an intelligent time–division multiplexer, “ITDM”) of the means-plus-function term, because he identified a structure that performed the same multiplexing function as an ITDM. The Federal Circuit rejected this “leap” because the record did not show “that all multiplexers are ITDMs.” The expert failed to show that the identified structure accomplished the same function in the same way as the claimed structure. Again, the expert´s “conclusory statement [was] insufficient.”

A copy of the opinion can be found here.