Docket No. 2012-1575
LOURIE, DYK (D), O’MALLEY
April 10, 2014
Brief Summary: Construction of means-plus-function limitation in independent claim affirmed. Preamble term of dependent claim found not part of the apparatus but “drawn to an intended use.” Willful infringement finding reversed.
Summary: Varian appealed DC partial SJ in favor Pitt finding infringement of US 5,727,554 related to a device for reducing damage to healthy tissue during radiation therapy by synchronizing the radiation beam with a patient’s movements. Varian’s infringement was found willful by the jury (Varian’s defenses found no objectively reasonable) and Pitt was awarded about $100,000,000 in damages (royalties) and $9,200,000 in attorneys’ fees. Varian contests the DC claim construction as well as its findings of infringement and willfulness. Pitt’s device functions by tracking “fiducials” (e.g., scars or moles) on the patient’s skin, one being necessary but more being advantageous. Varian’s “RPM System” is a video-based system that tracks respiratory movement during treatment using a “marker block” and generates a signal (“gating signal”) to switch radiation on or off with the patient’s movements. A key term of disputed claim 20 was the “means determining movement of said patient” that the parties agreed is a means-plus-function term which a Special Master determined the means-plus-function structure was “[a] computer processor…that (1) identifies at least one fiducial from the image signals; and (2) tracks its movement; and equivalents” (a two-step algorithm). The FC agreed with this determination because “[t]he algorithm need only include what is necessary to perform the claimed function”, rejecting Varian’s argument that a four-step algorithm was required (citing Wenger Mfg., FC 2001; “Varian’s attempt to pick and choose which steps it deems necessary by synthesizing steps from disparate portions of the written description is too limiting.”) The opinion also explained that claim differentiation may be relevant to means-plus-function analyses (again citing Wenger). Regarding infringement of claim 20, the opinion explained “Varian’s argument that it does not use the image of the patient is easily rejected” and “belied by its own admission…that the RPM System camera captures patient images to identify the location of the fiducials”. The “beam generator” in the preamble of claim 22 (“The apparatus of claim 20 adapted for use during treatment of said patient with a radiation beam generated by a beam generator”) was found to be included in the claim scope but this was reversed because “[t]he claim does not…require the beam generator to be part of the claimed apparatus…[instead, it is] drawn to a specific intended use”. That term was also disputed with respect to clam 38 (Special Master construed it to be “a beam generator configured to provide radiation therapy under computer control….) (and infringement of that claim affirmed). The FC panel also concluded “Varian’s unsuccessful invalidity defense based on [prior art] was not objectively unreasonable” and therefore vacated the willfulness finding (e.g., “While not of substantial weight, it is at least worth noting that the PTO initially rejected the claims…in light of [the same prior art] during reexamination.”) Judge Dyk’s dissent disagreed with FC panel’s decision regarding construction of claim 20 and infringement of claims 20, 22 and 38 (means-plus-function “structure must include what the specification discloses as ‘necessary’ to perform the function.”)