Docket No. 2016-2015
PROST, BRYSON, WALLACH
March 17, 2017
Brief Summary: DC finding of no infringement of means-plus-function limitation after consideration of “function-way-result” and “insubstantial differences” tests affirmed.
Summary: Tomita appealed DC holding on remand (Tomita Techs., FC 2014) that Nintendo’s 3DS handheld gaming console does not infringe the “stereoscopic video image display device include[ing] offset presetting means for offsetting and displaying said different video images” limitation of US 7,417,664. The FC panel opinion explained this is a means-plus-function limitation and as such “must recite a function and a corresponding structure” (Ibormeith, FC 2013; Chiuminatta Concrete, FC 1998; § 112, para. 6 (2006) (amended AIA § 112 does not apply here because the application leading to the ‘664 patent was filed before the effective date thereof)). This opinion also explained that ‘[f]ollowing a bench trial,” it “reviews a [DC’s] conclusions of law de novo and its findings of fact for clear error” (Allergan, FC 2015 (“clearly erroneous” where court finds “a definite and firm conviction that a mistake has been made”)) and that “[i]nfringement, both literal and under the [DOE], is an issue of fact” (Roton Barrier, FC 1996). The DC found no infringement under both the “function-way-result test” (“FWR”)(does the element “perform substantially the same function is substantially the same way to obtain substantially the same result” (Voda, FC 2008; Odetics, FC 1999) and the “insubstantial differences test” (“insubstantial change which adds nothing of significance” (Valmont, FC 1993)). Infringement is shown by proving “‘the [literal] presence of each and every claim element or its equivalent’ in the accused product” (Star Sci., FC 2011). And “[l]iteral infringement of a means-plus-function limitation requires that the relevant structure in the accused device [(1)] perform the identical function recited in the claim and [(2)] be identical or equivalent to the corresponding struction in the specification” (Gen. Protecht, FC 2010; “an application of the [DOE] in a restrictive role…turn[s] on a single question: whether structural equivalency exists” (Warner-Jenskinson, US 1997)). The question here was whether the 3DS included the required corresponding structure of the “offset presetting means”: the timing control unit performing the “offsetting” function and the switch control unit performing the “displaying” function. Tomita did not challenge the DC’s finding “that Tomita fails both the way and results prong of the” FWR test but instead unsuccessfully argued this test was not applicable to the “non-mechanical products” (“or process”) of this patent (the FC citing Brilliant Inst., FC 2013), improperly “evaluated equivalents in the context of the accused device…rather than…in the context of the invention” (Gemstar-TV, FC 2004), and that the DC improperly found “that software implementation essentially could never be equivalent to a hardware implementation” (Overhead Door, FC 1999). The DC found Tomita’s arguments also failed under the insubstantial differences test and Tomita did not argue against the DC’s factual findings but only its reliance “on the 3DS’s camera calibration feature’ in its analysis” but the FC panel disagreed (“those findings rely upon differences in software and hardware”). The FC panel also disagreed the DC merged the two tests and concluded the DC “conducted a comprehensive comparison…and, thus, examined equivalency at a level that comports with what precedent demands”. Thus, the DC decision was affirmed.