ITC decision remanded for briefing on structure correlating to means-plus-function limitation

Kyocera Senco Ind. Tools, et al. v. International Trade Commission (ITC)

Docket No. 2020-1046, -2050 (https://cafc.uscourts.gov/opinions-orders/20-1046.OPINION.1-21-2022_1896055.pdf)

MOORE, DYK, CUNNINGHAM

January 21, 2021

Brief Summary:  ITC decision vacated and remanded for the parties to brief “what structures correspond to” the means-plus-function limitation “lifting member”; exclusion of expert testimony proper.

Summary: Kyocera and Koki each appealed ITC decision regarding Kyocera’s complaint against Koki for importing gas spring nailer products that were alleged to infringe five of Kyocera’s device and method of use patents.  The “appeals address five parts of the investigation below: (I) the exclusion of Dr. Pratt’s [expert] testimony, (II) the construction of ‘driven position,’ (III) the construction of “lifter member,” (IV) the construction of ‘initiating a driving cycle,’ and (V) whether Pedicini teaches the ‘main storage chamber.’”  Regarding the expert testimony, the Administrative Law Judge (ALJ) adopted Koki’s definition (“at minimum, two years’ experience designing power nailers”), to which Kyocera did not object, and offered its own expert Dr. Pratt.  The ALJ excluded Dr. Pratt’s testimony regarding literal infringement and under the doctrine of equivalents (DOE) due to his lack of experience, and the ITC agreed.  The FC panel found no error with that exclusion as “an expert must at a minimum possess ordinary skill in the art” (Sundance, FC 2008; AquaTex, FC 2007; Endress, FC 1997).  During claim construction, the ALG adopted Koki’s view that the claimed “driven position’…was limited to the singular position ‘at the bottom most-travel position’” as opposed to “at or near the bottom most-travel position” as Kyocera argued.  The FC panel explained that “There are only two exceptions to” the ordinary meaning  “general rule” (Phillips, FC 2005): “1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution” (Thorner, FC 2012 (“To act as its own lexicographer, a patentee must clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning” and must “clearly express an intent to redefine the term.”))  Here, the FC panel agreed with the ALJ, finding that Kyocera acted as its own lexicographer in its specification (“Nothing about this statement [in the specification] suggests the ‘bottom position’ is merely an example of a driven position…The surrounding written description language supports this interpretation…Figure 20 is therefore consistent with, and in fact supports, the patentees’ lexicography.”)  The parties also disputed whether the claim limitation “lifter member” is a means-plus-function term (section 112, para. 6) even though it “does not use the word means”.  The FC panel explained that “[t]o determine whether § 112 ¶ 6 applies to a claim limitation, we ask ‘whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure’” and “[i]f a limitation does not use the word “means,” there is a rebuttable presumption that § 112 ¶ 6 does not apply” that can be overcome “if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function” (Williamson, FC 2015).  The FC panel concluded that “[a] person of ordinary skill in the art would not understand the claimed “lifter member” to have ‘a sufficiently definite meaning as the name for a structure’” (Mas-Hamilton, FC 1998), “the surrounding claim language does not describe any structural detail about the “lifter member” (Inventio AG, FC 2011), and “[n]othing in the written description provides a clear and unambiguous definition of ‘lifter member’” (MTD Prods., FC 2019), and remanded this issue as “the parties have not thoroughly briefed what structures correspond to” it.  The ALJ also constructed the “safety contact” limitation, but the ITC disagreed, which Koki argued here was erroneous.  The FC panel agreed with Koki as the claims distinguished between claim structures (Becton, FC 2010 (“a presumption that those components are distinct”)), the specification “arguably discloses multiple embodiments”, and “[t]he patentees were free to claim only the latter embodiment” (TIP, FC 2008).  Koki also argued the ALJ improperly applied the “agreed-upon construction” of the “main storage chamber”, but the FC panel disagreed.  The decision was therefore vacated and remanded.

This entry was posted in Claim Construction, International Trade Commission, Means-plus-function, Written description. Bookmark the permalink.

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