The U.S. Court of Appeals for the Federal Circuit confirmed a special master’s determination that, in the context of a means plus function claim element, the patentee’s technical expert failed to tie the accused device to the corresponding structures found in the patent specification. Intellectual Science and Technology, Inc. v. Sony Electronics, Inc., Case No. 09-1142 (Fed. Cir., Dec. 15, 2009) (Rader, J.).

Intellectual Science and Technology (IST) is the owner of a patent claiming a computer configured to access multiple optical disc drives to simultaneously read information. The patent describes using an intelligent time-division multiplexer to combine the multiple information sets as a single data stream and sending the combined data stream to a host computer.

In early 2006, IST filed nine complaints against different defendants alleging that various audio player/recorder devices made by the various defendants were infringing five of its patents, including the ’575 patent. In response to a court order, IST choose claim 1 of the ’575 patent to be its representative claim. In response, and before claim construction, several defendants moved for summary judgment of noninfringement. In support of their motion, the defendants relied on a declaration by their expert stating the disclosed structures from the ’575 patent corresponding to the means plus function limitation “data transmitting means” were not present in the accused devices. In response, IST submitted a declaration from its expert asserting those requirements were present in the accused devices.

The district court assigned the motion to a special master who agreed with the conclusions of the various experts who testified regarding the disclosed structures (in the ’575 patent) corresponding to the “data transmission means” but determined that because the statements made by IST’s expert as to whether such structures were found in the accused device were merely conclusory, IST did not make a sufficient showing of infringement to survive summary judgment. Accordingly, the special master recommended granting the defendants’ motion for summary judgment of non-infringement. The district court agreed and granted the summary judgment motion. IST appealed.

On appeal, Federal Circuit focused on the comparison of the claim construction of the “data transmitting means” to the allegedly infringing devices; citing its 2000 decision in No. Telecom, the Court noted that in order to satisfy the summary judgment standard, a patentee’s expert must set forth the factual foundation for his or infringement opinion in sufficient detail for a court to be certain that features of the accused product would support a finding of infringement. On this issue the law of the regional circuit (the U.S. Court of Appeals for the Sixth Circuit) was in agreement.

In analyzing IST’s expert’s declaration, the Federal Circuit concluded that it combined vague citations to pages in a service manual with a statement that the structures in the accused devices “perform the same function as the claimed ‘data transmitting means’ (i.e., transmitting to the host computer), in the same way (i.e., through a time division multiplexed structure) to achieve the same result (i.e., transmitted information sets)” but did not sufficiently identify the structural elements of the claimed “data transmitting means.” The Federal Circuit determined that the opaque identification is not enough to permit any reasonable juror to conclude that the identified structure accomplishes the same function in the same way as the claimed structure. The Federal Circuit explained that, at a minimum, the expert needed to supply some description about the specific features of the accused playback signal selection device’s manipulation of the information stream and that the expert did not supply any of the details necessary to identify an infringing device.

Practice Note: Especially when addressing means plus function limitations in the context of infringement, a practitioner should bear in mind the Court’s admonition that, “[a]sking litigants to provide more than a difficult-to-decipher expert declaration does not impose too high a burden at summary judgment, especially where, as here, the structural elements are allegedly common.”

The Federal Circuit noted that when counsel for IST was asked where the IST expert identified the structural elements, counsel conceded that the language is “perhaps not as grammatical as one would wish.” Counsel’s statement apparently sealed the fate of the appeal.