« So Unlike Concrete | Main | No Transaction »

December 16, 2009


Experts are the litigation equivalent of hired guns. They are only as good as the guidance given by the attorneys providing their payday on what bullets to shoot where. A case in point is Intellectual Science and Technology v. Sony. 5,748,575, one of five patents left standing on appeal, claims concurrent reading of computer CDs. The district court pitched the case on summary judgment for non-infringement after the plaintiff's expert failed to convince, as his declaration was "merely conclusory." The appeals court gave a lesson in how an expert ought to spurt.

Intellectual Science and Technology v. Sony (CAFC 2009-1142) precedential

The claims at issue were means-plus-function claims, which, under §112 ¶6, are construed as limited to the structure(s) disclosed supporting the means.

Claim construction precedes ascertaining infringement.

On appeal, Intellectual Science asserts that Sony's Paradigm Products literally contain the "data transmitting means." Literal infringement first requires the trial court to interpret the claims to determine their scope and meaning. Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1273 (Fed. Cir. 2004). In this case, the parties do not dispute the accuracy of the district court's construction of the means-plus-function term "data transmitting means." Thus, the focus in this appeal is on the comparison of that claim construction to the allegedly infringing devices. Id. 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. Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1099 (Fed. Cir. 2008).

Firming infringement assertion to get to trial is a plaintiff burden, of laying out the facts connecting the dots from patent claim to product.

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, with all reasonable inferences drawn in favor of the non-movant. Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1047-48 (Fed. Cir. 2000). This court considers the sufficiency of an expert's opinion at summary judgment according to the standards of regional circuit law. Id. at 1048. The standard in the United States Court of Appeals for the Sixth Circuit is similar to the standard set forth in Arthur A. Collins, namely, that "[a]n expert opinion submitted in the context of a summary judgment motion must . . . set forth facts and, in doing so, outline a line of reasoning arising from a logical foundation." Brainard v. Am. Skandia Life Assur. Corp., 432 F.3d 655, 663-64 (6th Cir. 2005) (quotations omitted).

Intellectual Science's expert, Dr. Michalson, put the cart before the horse, and forgot the horse.

Turning to Dr. Michalson's declaration, this court concludes that it does not sufficiently identify the structural elements of the claimed "data transmitting means." An expert's unsupported conclusion on the ultimate issue of infringement will not alone create a genuine issue of material fact. Arthur A. Collins, 216 F.3d at 1046. Moreover a party may not avoid that rule "by simply framing the expert's conclusion as an assertion that a particular critical claim limitation is found in the accused device." Id. This record discloses no more than an unsupported conclusion of infringement that is not sufficient to raise a genuine issue of material fact.

Dots not connected.

Dr. Michalson's statement that "[s]erial input buses receive information from each optical drive to an ITDM for multiplexing subcode data which is then transmitted to the host bus interface" does not pinpoint where those elements are found in the accused devices.

Michalson's declaration cited schematics from Sony's accused product service manual, presenting "an unexplained array of electronic symbols."

To present a prospect of infringement, Intellectual Science must present a triable issue of fact that a person of skill in the art would recognize that these symbols depict an infringing device. See TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1374-75 (Fed. Cir. 2002) (affirming summary judgment of non-infringement because the record did not support assertion that one of skill in the art would equate the accused element, a multiplexer, with the claimed element, a decoder). Instead Intellectual Science argues vaguely that the structural elements are "off-the-shelf" components. Again, nothing in the record corroborates that assertion or shows 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.

It gets better. Michalson identified a multiplexer in one of the schematics as the smoking gun of infringement, an ITDM (intelligent time-division multiplexer).

Dr. Michalson'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.

Stated another way, the problem with equating the identified playback signal selection device with an ITDM on this record is the absence of any showing that the identified structure accomplishes the same function in the same way as the claimed structure. See Welker Bearing Co., 550 F.3d at 1099. Dr. Michalson's affidavit supplied only the 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)." That conclusory statement is insufficient. To permit a jury to conclude that the playback signal selection device is an ITDM, Dr. Michalson needed to supply at a minimum some description about the specific features of the accused playback signal selection device's multiplexing of the audio information stream. Dr. Michalson did not supply any of the details necessary to identify an infringing device.

Michalson was handed the dunce cap to wear.

Dr. Michalson's declaration in this case is even more lacking than the one in Arthur A. Collins. Dr. Michalson did not even expressly state that the playback signal selection device is the ITDM

But it's not really the expert's fault. Besides giving the guidance of what's required, the lawyers approve the expert's report. If something isn't clear, the lawyers need to make sure it gets clear. Litigation is the craft of storytelling in action. There is no stench of lawyerly incompetence like fumbling language.

Two other points bolster the conclusion that Intellectual Science has not proffered enough evidence to permit a reasonable juror to conclude that the accused devices contain a "data transmitting means." First, when counsel for Intellectual Science was asked at oral argument where exactly Dr. Michalson identified the structural elements in his declaration, counsel conceded that the language is "perhaps not as grammatical as one would wish." Oral Arg. at 10:56, Oct. 9, 2009, available at http://oralarguments.cafc.uscourts.gov/mp3/2009-1142.mp3. Asking 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.

Second, Intellectual Science's attorney argument does not offer any more clarity.

Finally, the case law Hail Mary play that falls far short.

In a last-ditch effort, Intellectual Science points to Applied Medical for the proposition that it was not required to link Dr. Michalson's statements to particular structures in the accused devices. To the contrary, this court in Applied Medical vacated a summary judgment because the patentee's expert provided a sufficient basis on which a jury could conclude that the identified structure in the accused device, a surgical instrument, was equivalent to the structure claimed in the patent-in-suit. Id. at 1334. This court concluded that the expert had adequately established that the identified structure was equivalent because he provided an explanation as to why one of skill in the art would view the structure as functioning in substantially the same way to achieve substantially the same result. Id. at 1335. In dicta, this court said that "we have only required [particularized testimony and linking argument] in applying the 'function, way, result' test in the context of proving infringement of a claim under the doctrine of equivalents." Id. at 1335 n.5.

Thus, unlike this case, the patentee's expert in Applied Medical had pinpointed the relevant structure in the accused device. See id. at 1333 ("Once the relevant structure in the accused device has been identified, a party may prove it is equivalent to the disclosed structure by showing that the two perform the identical function in substantially the same way, with substantially the same result." (emphasis added)). This court has never stated that a patentee can survive summary judgment of non-infringement on an apparatus claim without specifically identifying the allegedly infringing structure in the accused device. Such a rule would conflict with the express language of Fed. R. Civ. P. 56(e)(2), which requires a non-movant to set out "specific facts" showing a genuine issue for trial. Without clear identification of the claimed structure or its equivalent in the accused devices, Intellectual Science cannot survive summary judgment.


Posted by Patent Hawk at December 16, 2009 12:36 AM | Infringement


This case is a painful example of glossing over the All Elements/All Limitations Rule. The Federal Circuit also gave an explicit warning about expert opinions on infringment in declarations: don't assume that mere citation to an exhibit will be sufficient to identify that a claim element is presnt. Instead, employ the KISS principle and make sure that the expert clearly identifies where each of the claimed elements/features are present in the alleged infringing product, including annotations and explanations of cited exhibits. Failure to do so will likely cause your infringement case to go down in flames.

Posted by: EG at December 16, 2009 9:50 AM