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August 28, 2010


Pass & Seymour (P&S) has patents claiming ground fault circuit interrupters (GFCIs): 5,594,398; 7,164,564; 7,212,386; and 7,283,340. GFCIs halt a ground fault: preventing shocking a consumer laying hands upon a defective household appliance plugged into the wall. "GFCIs operate by detecting a difference in electrical current flowing into and out of the connected appliance." Pass & Seymour sought to shock alleged importing infringers by plugging them into the ITC. Some claims sizzled to a importation ban, while others fizzled out. All finding fault, all appealed.

Two CAFC rulings come out of this case: the first, where at the ITC Pass & Seymour's claims fizzled (noninfringement), the second where they sizzled (at least until they were seen to by the CAFC).

Pass & Seymour v. ITC and General Protecht Group and Wenzhou Trimone and Shanghai Ele (2009-1338, -1369) precedential

General Protecht Group and Wenzhou Trimone and Shanghai Ele v. ITC and Pass & Seymour (2009-1378, -1387, -1434) precedential

On '398 and '386 claims, a shocking switch at the ITC for P&S.

The asserted claims were initially construed and com-pared to the accused devices at issue here by an administrative law judge [ALJ]. The administrative law judge adopted P&S's proposed claim constructions of the disputed claim terms, and found that the defendant's products at issue here infringed the claims as construed. On review, the Commission modified the administrative law judge's constructions of certain terms and found that the accused devices did not infringe the construed claims as modified.

The CAFC agreed with the ITC regarding the plain meaning of disputed terms for '398.

The specification and prosecution history confirm that this plain meaning is appropriate in the context of this claim limitation. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc).

Because the accused products at issue here do not meet the "mounting means" limitation as properly construed, and thus do not meet every limitation of the asserted claims, there can be no infringement. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 15, 29 (1997). That some of the accused products also fail to meet the "a unitary, electrically conducting member" limitation as properly construed provides additional reason why those accused products do not infringe. See id.

The asserted '386 claim looked to be at fault: "not perfectly logical" "that a wiring state detection signal is generated when the device is properly wired."

On review, the Commission mostly agreed with the administrative law judge, though it noted that the claimed circuit interrupter had to be configured to trip in response to the actuator signal in the reset state. Since the asserted claim requires the actuator assembly to generate an actuator signal in response to the wiring state detection signal, it follows that generation of a wiring state detection signal ultimately causes the circuit interrupter to trip when in the reset state. Commission Op. at 18. The specification teaches that a wiring state detection signal is generated when the device is properly wired. Accordingly, under the Commission's interpretation of the claim the patented device must be configured to trip in response to a signal that the device is properly wired. Id. In so holding, the Commission acknowledged that such a claim requirement was not perfectly logical, and may have been the result of a claim drafting error. Id. Under the Commission's construction, the devices at issue were found not to infringe.

The CAFC majority went with the ITC over P&S's objections.

The plain language of the claims, however, does not allow for an exception to this consequence, and the intrinsic evidence of record supports the Commission's construction. The specification contemplates embodiments in which the wiring state detection signal trips the device in the reset state only once, until a fuse or resistor is burned out. See id. col.7 l.59-col.8 l.15.


In concurrence, Judge Newman made sense of the claim while holding to non-infringement.

Claim construction requires conformity with the description of the invention in the specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) ("[C]laims must be read in view of the specification, of which they are a part." (internal quotation omitted)); Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998) ("The best source for understanding a technical term is the specification from which it arose, informed, as needed, by the prosecution history.").

I would adhere to the Commission's construction, and affirm the finding of non-infringement based on the substantial evidence relied upon by the Commission.

For the '386 patent, the court has strayed from the Commission's correct rulings, although reaching the same result of non-infringement. The court errs in construction and application of the clause "circuit interrupter" in interaction with the "actuator assembly," for, as patentee P&S points out, it makes no sense to interpret the claims as requiring a miswiring protection device to trip a properly wired device but not an improperly wired device.

The court's understanding of the claims as requiring tripping of the circuit whenever the device is wired properly, is contrary to the purpose, function, and operation of the claimed device. It is not the claim that is not "logical," Maj. Op. at 13; it is the claim construction that defies the specification.

However, I agree that the accused devices do not embody these limitations as correctly construed by the Commission, and on this basis I concur in the conclusion of non-infringement.

A dispositive dispute to infringement of '340 went to ground over expert testimony. "ALJ" is the acronym for an ITC "administrative law judge," which makes a preliminary determination which is then reviewed by the commission.

The issue is thus whether the term "load terminals" in the '340 patent includes receptacle outlets.

We start with the '340 patent itself. A patent's specification "is the single best guide to the meaning of a disputed term." Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)) (quotation mark omitted). The '340 patent never describes receptacle outlets as load terminals. In fact, the circuit diagram drawings in the '340 patent all clearly label the load terminals separately from the receptacle outlets, as seen in the portion of Figure 1 above.

We have held that expert testimony can be useful in assisting a court "to establish that a particular term in the patent . . . has a particular meaning in the pertinent field." Phillips, 415 F.3d at 1318. However, we have cautioned that "conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court." Id. The testimony relied on by the ALJ does not reveal that the term "load terminals" had a particular meaning in the art that included receptacle outlets. None of the experts identified a particular meaning in the art, and an expert's subjective understanding of a patent term is irrelevant. See Howmedica Osteonics v. Wright Med. Tech., 540 F.3d 1337, 1347 & n.5 (Fed. Cir. 2008) (holding that an inventor's subjective intent in using a term is irrelevant, but that the inventor may testify as an expert on the established meaning of particular terms in the relevant art); Symantec Corp. v. Computer Assocs. Int'l, 522 F.3d 1279, 1291 (Fed. Cir. 2008) (disregarding expert testimony that "simply recite[d] how each expert would construe [a] term . . . based on his own reading of the specification" because it did "not identify the 'accepted meaning in the field' to one skilled in the art"); Sinorgchem Co., Shandong v. Int'l Trade Comm'n, 511 F.3d 1132, 1137 n.3 (Fed. Cir. 2007) ("We attribute no weight to that testimony because the experts did not identify any evidence that those skilled in the art would recognize 'controlled amount,' or any term used in the specification, has an accepted meaning in the field of chemistry. Under such circumstances, testimony as to how one skilled in the art would interpret the language in the specification is entitled to little or no weight.").

Moreover, contrary to the ALJ's unsupported conclusion, the experts here never suggested that receptacle outlets, which they also called "user load terminals" or "user accessible load terminals," could be referred to as simply load terminals. Rather, they were fastidious in referring to them as separate elements.

Therefore, the ALJ erred in construing the term "load terminals" to also include receptacle outlets.

The CAFC short-circuited the ALJ's faulty finding of infringement.

Back to the '398 patent, where, in this case, claims were found by the ITC to have been infringed.

The claims use means-plus-function language to define several elements, pursuant to 35 U.S.C. § 112 ¶ 6.

"Literal infringement of a means-plus-function limitation requires that the relevant structure in the accused device perform the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification." Applied Med. Res. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 (Fed. Cir. 2006). A structure in the accused device constitutes an equivalent to the corresponding structure in the patent only if the accused structure performs the identical function "in substantially the same way, with substantially the same result." Id.; see Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed. Cir. 2000) (stating that in order to literally infringe, "the accused structure must either be the same as the disclosed structure or be a section 112, paragraph 6 'equivalent,' i.e., (1) perform the identical function and (2) be otherwise insubstantially different with respect to structure").

As we held in Toro Co. v. Deere & Co., 355 F.3d 1313 (Fed. Cir. 2004), one system that accomplishes a function mechanically and another system that accomplishes the same function using magnetic force "function in fundamentally different ways." Id. at 1324. The Commission and Pass & Seymour argue that the ALJ's decision was supported by substantial evidence because of the testimony of expert witnesses that one of ordinary skill in the art would have considered the magnetic matching structure to be interchangeable with the mechanical structure of the '398 patent. See Initial Determination, slip op. at 67. However, the experts merely testified that magnets were well known as latches, not that they performed the latching means function in substantially the same way as the mechanical latch disclosed in the patent. See J.A. 40,524 (testimony of Pass & Seymour expert Dr. Fred Stolfi) ("The use of a magnet as a latch is fairly common in other devices. You know, for example like a door latch often has a magnet catch. And there [are] patents that I have looked at that speak about a magnetic latch in a GFCI . . . ."); id. at 40,750 (testimony of ELE expert Kenneth Eugene Haynes) (agreeing that "permanent magnets were known in the art of latching structures and GFCIs in the late 1980s and 1990s"); id. at 40,979 (testimony of GPG expert Dr. James Roberge) (agreeing that permanent magnets had been used in "latching relays" in the electrical industry to perform latching functions). This testimony "goes to the function or result of these systems, and begs the issue of the way in which [the mechanical] systems and [magnetic] systems actually work." Toro, 355 F.3d at 1324. We therefore hold that substantial evidence does not support the Commission's finding that the magnetic latching structure of GPG's 2006 GFCI is equivalent to the mechanical structure disclosed in the '398 patent corresponding to the latching means.

Infringement reversed. Remanded.

Once again painting her colleagues as buffoons, Judge Newman severely scolded DYK and Prost in dissent. Below, the flavors of the great judge's remarks.

With all respect to my colleagues on this panel, they have erred in law and in procedure, in their reversal of the findings and rulings of the Commission on the issues presented in this appeal... This court now finds its own facts, applies theories that were not raised by any party, uses incorrect standards of review, and creates its own electrical technology contrary to the uniform and unchallenged expert testimony.

In the companion cross-appeal decided today by separate opinion, Appeal Nos. 2009-1338, -1369, taken by the patentee Pass & Seymour from the Commission's rulings adverse to it, the court deferentially affirms the Commission's findings of non-infringement, while in this appeal my colleagues act de novo to reverse the Commission's findings of infringement. In reversing the Commission, the court does not discuss the substantial evidence supporting the Commission's findings. In contrast to the companion appeal, the court bypasses the standards of APA review, and makes new finding and rulings on new theories, some of which were not presented and not argued by any party, and which are conspicuously incorrect. Further, despite its changes in claim construction, its new findings, and its de novo applications of law to fact, the court provides no opportunity for the patentee or the Commission to respond to the court's new arguments and adjudications.

Contrary to this unanimity of experts, my colleagues dispose of the experts with the statement that "an expert's subjective understanding of a patent term is irrelevant." However, an expert's testimony concerning the definition of a technological term in his field of expertise is highly relevant. An objective definition of a term of electrical art is not "subjective understanding."

['340] It is simply incorrect for this court now to hold that "load terminals" exclude user load terminals. The Commission's finding of infringement by the user load terminals is supported by substantial evidence; the court's contrary finding is totally devoid of support.

['398] The court rejects the Commission's finding of equivalency, without discussing the evidence for or against this finding. Instead, the court rules that there can never be equivalence between a mechanical latch and a magnetic latch, misciting Toro Co. v. Deere & Co., 355 F.3d 1313 (Fed. Cir. 2004). Toro did not so hold. My colleagues remove from its context Toro's quotation of the argument of the defendant Deere, viz. "Deere contends that this difference means the two systems accomplish clause(e)'s function in fundamentally different ways." Id. at 1324. This was not a pronouncement of law for all mechanical-magnetic substitutions. On the facts of that case, the mechanical cam-follower that travels a slope, used in the Toro patent to lift a valve stem, was found to operate in a substantially different way from the magnetic solenoid used by Deere to create a magnetic force that pulls open a liquid valve. Id. This court in Toro affirmed the district court's finding of non-equivalency for that system; the court did not establish a universal law of non-equivalence for all systems and all mechanical/magnetic facts.

Equivalence is a question of fact to be determined "against the context of the patent, the prior art, and the particular circumstances of the case." Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950). As explained in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 36 (1997), "known interchangeability of substitutes for an element of a patent is one of the express objective factors noted by Graver Tank as bearing upon whether the accused device is substantially the same as the patented invention." Substantial evidence supports the Commission's finding that GPG's 2006 Interrupter contains structure equivalent to the latching means described in the '398 patent. There was no contrary evidence.

My colleagues on this panel disregard the rulings and findings of the Commission, and render de novo rules and findings on new theories to which the parties have had no opportunity to respond. This is an inappropriate appellate process.

No wonder patent litigation is a constant crap shoot, lousy lawyering by litigants aside. The grotesque discrepancies that regularly arise between judges, and courts, is a stale tradition, but the disturbance of discord, belying sensible jurisprudence, is frequently renewed afresh.

Continuing competence is rare in humans (and localized to a few), much rarer than the sometime appearance that suggests otherwise.

Posted by Patent Hawk at August 28, 2010 12:00 AM | ITC


This is incredibly disturbing to read, as the Precedential part of this Decision is this:

"Here at the Federal Circuit Court of Appeals we don't need to read no stinkin' Appeal Brief because we have the power to just make the facts up and get away with it"

Posted by: Murf DaSurf Author Profile Page at August 28, 2010 5:53 AM

"The Initial Decision of 170 pages and the Commission’s supplemental rulings of 32 pages present a full understanding of the technology, with rigorous discussion of the evidence and extensive analysis, findings, and conclusions. This court now finds its own facts, applies theories that were not raised by any party, uses incorrect standards of review, and creates its own electrical technology contrary to the uniform and unchallenged expert testimony."


It's too bad that Newman is simply ignored by the other judges of the CAFC.

Posted by: Anon at August 28, 2010 7:31 AM

For how bad it is at the CAFC it is 10-times as bad at the BPAI and 100-times as bad at the Examiner level.

For the BPAI to make up their own findings, ignore the plain language of the claims, and otherwise engage in a denovo prosecution of the claims is something I see all the time. Most of them are former Examiners and instead of acting like an impartial judge, they want to justify their promotion by proving to the Examiner how the Examiner should have "done it right" the first time.

This is just another example of result-oriented decision making at its worst. Instead of impartially weighing the evidence, the Examiner, the BPAI, the CAFC have a result they want to achieve, and once they have determined that result, they fit (or ignore) the facts to achieve that result.

Like the hawk said, it is a crap shoot. You can have the evidence on your side, but if the judge, APJ, or Examiner doesn't like your case, you are screwed. With the Examiner and the BPAI, you have two re-rolls by bringing it to the BPAI and CAFC, respectively. However, if the CAFC gets it wrong, you are SOL – SCOTUS isn't going to help any patent owner.

Unfortunately, it is what it is.

Posted by: Passing through at August 30, 2010 3:48 PM