Means plus Function Doctrine Expanded by Court
of Appeals
for the Federal Circuit, with Dissent
Golight, Inc. v. Wal-Mart Stores, Inc. and North Arkansas
Wholesale Company, Inc. v. Innovative International (H.K.) Ltd.,
02-1608 (CAFC, January 20, 2004)
Background:
The '989 patent involves a wireless, remote-controlled, portable
search light that can be mounted on the outside of a vehicle and remotely
controlled from either the inside or outside of the vehicle.
In 1997, Wal-Mart, through Sam's Club stores, began selling a
portable, wireless, remote-controlled search light. The search light was
allegedly a low-end copy of the search light disclosed in the '989 patent, and
was virtually identical in all respects except for the placement of a plastic
stop piece that prevented the search light from rotating a full 360 degrees.
After holding a three-day bench trial, the district court found
that Wal-Mart infringed claim 11 of US Patent 5,673,989 ("the '989
patent") by importing portable search lights literally meeting each
limitation of the claim. It also found that the claim was not invalid,
that Wal-Mart's infringement was willful, and Golight was entitled to damages of
$464,280 plus its attorney fees.
The claim construction dispute involved whether the claim
language required the search light to be capable of rotating through 360
degrees.
The claim in dispute (claim 11), included the following disputed
language:
"In a searchlight apparatus wherein a lamp unit is mounted
in a housing having vertical drive means for tilting said lamp unit in a
vertical direction and horizontal drive means for rotating said lamp unit in a
horizontal direction..."
The district court concluded that claim 11 does not contain a
360 degree limitation and Wal-Mart argued that the written description and
prosecution history require construction of the claim to include a 360 degree
limitation.
In the specification, the patentee stated that "the present
invention includes a lamp unit mounted in a housing which has a motor-driven
vertical drive mechanism for tilting the lamp unit in a vertical direction and a
motor-driven horizontal drive mechanism for rotating the lamp unit in a
horizontal direction through at least 360°."
Majority Holding:
The CAFC majority held that the horizontal drive means in claim
11 was not limited to the structure or its equivalents disclosed in the
specification. Instead, it held that "while it is true that the
patentees describe their invention as having the ability to rotate through 360
degrees, this particular advantage is but one feature of the invented search
light" [emphasis added]. Based on this holding, the CAFC affirmed
the district court's ruling on infringement.
Dissent:
Judge Archer provided a dissenting opinion in which he states
that the "means plus function limitation must be interpreted in light of
structure provided in the specification. Here the specification only
describes a single structure, one that shows only rotation through 360°."
Conclusion:
This case gives a means plus function claim limitation a broader
meaning than the structure shown or described in the specification, or an
equivalent thereof. Even if the trend does not continue, it provides a
justification for including means plus function claims in new patent
applications, together with non means plus function claims and claims of varying
scope.
Back to Top
Patent Pooling Trust loses to users complying
with IEEE 1394 Industry Standard
Dynacore Holdings Corporation and Dynacore Patent Litigation
Litigation Trust v. U.S. Philips Corporation et al., 03-1305,-1306 (CAFC,
March 31, 2004)
Background:
The district court ruled in favor of the defendants motion for
summary judgment and held that US Patent 5,077,732 ("the '732 patent")
was not infringed by the accused products that incorporate technology that
facilitates the design of networks compliant with an explicitly hierarchical
industry-standard architecture because the products did not meet the numerous
limitations of the '732 patent claims. The CAFC affirmed.
The IEEE 1394 Standard, like the '732 patent, teaches network
designers how to connect devices with differing capabilities to a single LAN
without sacrificing enhanced or optimized capabilities possessed by some but not
all devices.
In computer networks, as in the physical world, effective
communication requires a minimum of three components: a common language, a
delivery mechanism, and an addressing mechanism. A problem occurs in a
network if a high-speed components such as a high-speed desktop (D*) and a
high-speed printer (P*) are added because the LAN designer much design the
network to allow D* to send high-speed requests to P* without
"confusing" any of the other low-speed devices with the message whose
body they cannot understand. Solutions to this technical challenge are
provided in both the '732 patent and in the IEEE 1394 Standard.
The '732 patent teaches network designers how to design a LAN
connecting computer devices with differing capabilities that allows devices with
an "enhanced" capability to take advantage of their enhancements
without disrupting the operation of devices lacking those enhancements.
The IEEE 1394 Standard teaches network designers how to set up a
serial connection as a low-cost alternative to parallel busses. The
standard's preferred topology is not merely serial; it is a tree. The
standard includes a set of algorithms that optimize the tree's configuration to
ease communication -- particularly across devices with differing capabilities.
Discussion and Holding:
Dynacore argued that a hypothetical direct infringement suffices
to establish the defendants' broad vicarious liability across the entire
category of IEEE 1394 networks. The example used to find error in this
argument came from the law of copyright. The US Supreme Court found that Betamax
was capable of non-infringing uses and therefore Sony's sale of such equipment
to the general public does not constitute contributory infringement of the
respondents' copyrights. Sony Corp. of Am. v. Universal City Studios, Inc.,
464 U.S. 417 (1984).
The court used this as a basis for holding that Dynacore must
either demonstrate that LANs compliant with the IEEE 1394 Standard necessarily
infringe the '732 patent, or point to a specific instance of direct infringement
and restrict its suit to liability stemming from that specific instance.
The Special Master in the district court constructed the claims
at issue in the '732 patent and concluded that the term "equal peers",
which is repeated in all five independent claims requires that the nodes have
direct access to all other nodes in the network so that all data frames
transmitted by each node are heard by all other nodes, and that all nodes have
the same right of access to each and every other node in the network through a
single logical point.
The court found that the IEEE 1394 Standard does not meet the
"equal peers" limitation and the requirements of the IEEE 1394
Standard suggest that most if not all compliant networks will not meet
the "equal peers" limitation. Moreover, Dynacore did not
point to a single network that both complies with the IEEE 1394 Standard and
meets the "equal peers" limitation, nor did Dynacore present anything
other than speculation that such a network might exist.
Back to Top
$28.5
Million Compensatory/$8.55 Million Enhanced Damage Award Against Conair
Corporation Reversed by CAFC
Dr. Harry Gaus v. Conair Corporation, 03-1295,-1310
(CAFC, April 1, 2004)
Background:
A jury in the Southern District of New York found that Conair
infringed Dr. Gaus's US Patent 4,589,047 ("the '047 patent") and that
the infringement was willful. The jury awarded Dr. Gaus $28.5 million in
compensatory damages and the district court enhanced the jury's damage award by
$8,550,00 because of Conair's willfulness.
Discussion and Holding:
The claim at issue (claim 12), provides:
"A hazard prevention device for an electrical externally
powered apparatus comprising:
a housing, said housing having at least one opening and said
housing comprising an electrical operating unit and a pair of spaced-apart
electrically exposed conductive probe networks, said pair being responsive to
the entry of a conductive fluid electrically reducing the impedence between said
probe networks of said pair..."
The claimed device is used in conjunction with a voltage
carrying hairdryer to prevent the user from getting shocked.
The CAFC found that the clear implication of the claim language
is that the pair of probe networks is a distinct component, separate from the
electrical operating unit of the claimed invention. As a result, it found that
the accused device, which includes a protective device that relies on current
passing between a probe and the electrical operating system, could not infringe
the claim because "such a device would be triggered only when the hair
dryer was operating and voltage was being applied to the electrical operating
system."
In the Conair device the protective circuit is not triggered
until water reaches a voltage-carrying component and the sense wire, at which
point current runs between the voltage-carrying component and the sense wire,
triggering the protective circuit that shuts off the power to the device.
During the short period before the power shuts off, the user of the device will
experience a shock, although because the period of the current flow is very
short, the shock is not fatal.
The Conair device does not have a pair of probe networks that is
separate from the electrical operating unit, as is required by claim 12 of the
'047 patent. Instead, the Conair device includes a single probe acting in
concert with the electrical operating system. Therefore, the CAFC
concluded that the Conair device does not literally infringe claim 12 of the
'047 patent.
The CAFC found the Conair device did not infringe under the
doctrine of equivalents because Dr. Gaus excluded Conair's type of device in the
specification of the '047 patent. In the '047 patent, Dr. Gaus criticized
prior art in which the protective device relied on the fluid coming in contact
with the voltage-carrying portions of the system. That is specifically
what the Conair device does. Also, Dr. Gaus described his invention as
requiring the protective circuitry to function regardless of the operating state
of the apparatus. This is something that the Conair device could not do,
because of its reliance on the voltage-carrying operating unit of the hairdryer
to serve as one of the two conductors in the protective circuit.
Dr. Gaus cannot reclaim that which was surrendered in his patent
and therefore, the Conair device was found not to have infringed the '047 patent
under the doctrine of equivalents.
Back to Top
Patent and Trademark Office Move Proceeding on Schedule
The US Patent and Trademark Office ("USPTO") continues
to gradually move
its employees to the new Alexandria Campus, south of Duke Street
in Alexandria Virginia. The new location is four blocks from our
offices. For more information about the layout of the new campus
see http://www.uspto.gov/web/offices/ac/qs/osa/
The moves from Crystal City to Alexandria coincide approximately
with the expiration of the leases in Crystal City. The USPTO occupies
office space in the Crystal Park buildings, from which the employees
will be the last to move to Alexandria.
A new Public Search Facility will be moved to the Alexandria
Campus
no later than September of this year. The new Public Search Facility
will include more patent searching terminals that are interfaced to
the East search system and the USPTO database.
The new location is more convenient than ever and we welcome the
opportunity to
provide assistance to domestic and foreign law firms and clients with
patent prosecution and interview assistance.
Back to Top
Intellectual Property Services in the U.S.A.
For Complete Schedule of Intellectual Property Services
and Fees for 2004-2005, click
here
Back to Top
Copyright 2004, Pravel
Intellectual Property Law, P.C., All Rights Reserved Worldwide
1800 Diagonal
Road, Suite 600
Alexandria, Virginia 22314
Telephone: 703-549-4114
Facsimile: 703-549-3111
|
