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January 24, 2011


5,220,919 claims a booze detector which sniffs the air near the skin of the lubricated one. Owner AMS sued four for tippling infringement. The district court, a little tipsy in its claim construction, nonetheless walked a straight line to noninfringement. The appeals court sobered things up.

Alcohol Monitoring Systems (AMS) v. ActSoft et al (CAFC 2010-1250) nonprecedential

The sobriety test for this case:

Infringement, either literal or under the doctrine of equivalents, is a question of fact. IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1429 (Fed. Cir. 2000). An infringement analysis is a two-step inquiry: first the court must construe the claims, and second the court must apply the properly construed claims to the accused device. See, e.g., Acumed L.L.C. v. Stryker Corp., 483 F.3d 800, 804 (Fed. Cir. 2007). We review both the district court's grant of summary judgment of noninfringement and its underlying claim construction de novo. Laryngeal Mask Co. Ltd. v. Ambu A/S, 618 F.3d 1367, 1370 (Fed. Cir. 2010). "Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law." Immunocept, L.L.C. v. Fulbright & Jaworski L.L.P., 504 F.3d 1281, 1286 (Fed. Cir. 2007). In making this determination, this court views the record in the light most favorable to the non-moving party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).

Generally, we give claim terms their ordinary and customary meaning, which is the meaning a person of ordinary skill in the art would give to the term at the time of invention when read in the context of the specification and prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).

The disputed claim -

14. A method for monitoring the percentage of blood alcohol content of a human subject, said method comprising the steps of: (a) securely attaching an alcohol measurement device to the human subject using an attachment device; (b) storing an error indication if the human subject tampers with said measurement device or an error occurs within said measurement device; (c) measuring a percentage of alcohol expelled through the subject's skin into said measurement device and storing a measurement result; (d) repeating steps (b) and (c) until a predetermined amount of time expires; (e) transmitting each of said measurement results and each of said tamper and error indications to said monitoring station; and (f) repeating steps (b) through (e).

The spilled beer in the district court claim construction was requiring the "calculation of a percentage of blood alcohol content" in step (c), derived as an extrapolation of the claim 14 preamble.

Generally, a preamble does not limit the scope of claims unless "it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim." See, e.g., Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal citations omitted). We previously held that a preamble is not limiting where it "merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention." IMS Tech., Inc., 206 F.3d at 1434-35 (Fed. Cir. 2000). Here, "monitoring the percentage of blood alcohol" is such a descriptive name and does not additionally limit the scope of the claims.

While AMS spotted the problem, its proposed construction was woozy: "not quantifiable," the CAFC declared.

Thus, properly construed, step (c) requires the measurement of an amount of alcohol being emitted from an individual's skin and the calculation of a percentage that approximates blood alcohol content (e.g., transdermal alcohol content). This construction is consistent with both the intrinsic record and the extrinsic testimony from AMS's inventor and expert witness.

Careful reading of the claim eluded the district court in construing step (e) when it came to the claimed "measurement result." "Conflate" is a diplomatic synonym for "confuse." Opinion author Judge Moore deftly corrects with delicacy.

[T]he district court appears to have conflated the measurement of a percentage and the claimed "measurement result." Step (e) requires "transmitting each of said measurement results and each of said tamper and error indications to said monitoring station." We note that this "measurement result" may or may not be the same as the measured "percentage" of step (c). The claim does not require the storage and transmission of "said percentage" but instead introduces a new limitation: "a measurement result." While the claimed "measurement result" could be the calculated "percentage" it could also be an indicator that the human subject has consumed alcohol or any other result capable of storage and transmission. These are two separate limitations and may or may not include the same information. Therefore, properly construed step (e) should refer not to a "measurement" but instead to a "measurement result."

The district court had defined the claimed "each" in (e) as "separately identifiable." AMS claimed a reach in the district court's construction of "each," but the CAFC found the lower court on the beach. With a plain dictionary, no less.

Regarding the "separately identifiable" language of the district court's construction, the district court clearly relied on the plain meaning of "each" and not the accused device as AMS alleges. We agree with the district court that the plain meaning of "each" is defined as "being one of two or more distinct individuals having a similar relation and often constituting an aggregate." Markman Order at 13 (citing Merriam-Webster's Collegiate Dictionary 390 (11th ed. 2007)). Thus, step (e) as properly construed requires transmitting every measurement result from step (c) in a way that the measurement results are separately identifiable." (emphasis in original)

The next downed shot was infringement.

"To prove literal infringement, the patentee must show that the accused device contains every limitation in the asserted claims." Mas-Hamilton Grp. v. La-Gard, Inc., 156 F.3d 1206, 1211 (Fed. Cir. 1998). To find infringement under the doctrine of equivalents, any differences between the claimed invention and the accused product must be insubstantial. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950). One way of proving infringement under the doctrine of equivalents "is by showing on a limitation by limitation basis that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product." See, e.g., Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009).

It is undisputed that the HAS device does not calculate TAC [transdermal alcohol content, i.e., skin sniffing] or any percentage that approximates BAC [blood alcohol content], but merely measures voltage. Therefore, under the proper claim construction of step (c), the HAS device does not literally infringe claim 14 of the '919 patent.

Under the facts before us, a reasonable jury could conclude that the HAS device's voltage measurements perform substantially the same function, in substantially the same way, to achieve substantially the same result as the calculation of a percentage TAC. Therefore, the district court erred in granting summary judgment of noninfringement under the doctrine of equivalents.

Defendants argue that they are separately entitled to summary judgment of noninfringement because the HAS device either does not perform step (d) or step (e). We decline to address these arguments for the first time on appeal. See Superguide Corp. v. DirecTV, Inc., 358 F.3d 870, 884 (Fed. Cir. 2004) (declining to address infringement theories not addressed by district court's summary judgment decision). Now that we have properly construed the disputed terms, the parties will be in a better position to brief these issues to the district court.

For the reasons discussed above, we affirm the district court's grant of summary judgment of no literal infringement, reverse the district court's grant of summary judgment of no infringement under the doctrine of equivalents and remand.

Posted by Patent Hawk at January 24, 2011 11:01 PM | Claim Construction


One dumb claim. 112 road kill.

"to said monitoring station" -- no antecedent.

"measuring a percentage of alcohol" -- it is not possible to "measure" a percentage of anything. At any rate, all they disclose is measuring a voltage.

Percentage of what? Of the blood volume? Of the total volume of fluid exuded by the skin? Total body volume?

Posted by: Babel Boy at January 25, 2011 10:40 AM