Patent Lawyer Blog
In December 2010, plaintiff Multimedia Patent Trust (“MPT”) filed a complaint for patent infringement against several defendants, including Apple, LG and Canon. The complaint accused the defendants of infringing several patents pertaining to video compression technology. The district court subsequently granted Canon’s motion for summary judgment based on exhaustion. Prior to trial, the remaining defendants filed a motion to exclude MPT’s infringement expert’s analysis under the doctrine of equivalents.
After reviewing the standard for a Daubert motion to exclude expert testimony, the district court turned to the specific standard for infringement of means-plus-function claims. “A patent infringement analysis proceeds in two steps. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff’d 517 U.S. 370. In the first step, the court construes the asserted claims as a matter of law. See id. In the second step, the factfinder compares the claimed invention to the accused device. Id.; see also Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1340 (Fed. Cir. 2010) (“A determination of infringement is a question of fact . . . .”). “To prove literal infringement, the patentee must show that the accused device contains every limitation in the asserted claims. If even one limitation is missing or not met as claimed, there is no literal infringement.” Riles v. Shell Exploration & Prod. Co., 298 F.3d 1302, 1308 (Fed. Cir. 2002) (quoting Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1211 (Fed. Cir. 1998)).”
The district court then discussed the specific requirements of a means-plus-function claim. “Literal infringement of a means-plus-function claim “requires that the relevant structure in the accused device perform the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification.” Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed. Cir. 1999). An accused structure is equivalent if it “performs the claimed function in substantially the same way to achieve substantially the same result.” Id. at 1267; see also Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1309 (Fed. Cir. 1998) (“The proper test is whether the differences between the structure in the accused device and any disclosed in the specification are insubstantial.”). In addition, for literal infringement to be met, the accused “structural equivalent under § 112 [¶ 6] must have been available at the time of the issuance of the claim.” Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1320 (Fed. Cir. 1999); accord Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1099-1100 (Fed. Cir. 2008).”
In denying the defendants’ motion, the district court found that the defendants were merely disagreeing with the expert’s versions of the facts, which was an appropriate basis for cross-examination, but not exclusion. “Dr. Richardson’s infringement expert reports state that the use of integrated circuits to implement video coding and encoding functionality was well known in the art by at least 1988. (Doc. No. 596-1, Declaration of Bruce Zisser Ex. 1 at 40-41, Ex. 2 at 330-31.) In reply, Defendants argue that this statement is insufficient because the accused equivalent structures are not merely integrated circuits capable of implementing video coding generally, but rather integrated circuits capable of implementing the algorithms or functions which are alleged to be equivalent. (Doc. No. 624 at 3-5.) Defendants then argue that some of the allegedly equivalent structures arose after the issuance of the patents. (Id. at 4.) Here, the structure that MPT alleges is equivalent to the claimed structure is a decoder with integrated circuits. Dr. Richardson has provided analysis concluding that the use of integrated circuits to implement video coding and encoding functionality was well known in the art by at least 1988, prior to the issuance of the Patents-in-Suit. (Doc. No. 596-1, Declaration of Bruce Zisser Ex. 1 at 40-41, Ex. 2 at 330-31.) Defendants contest these facts, but disagreement with an expert’s version of the facts is not a proper basis to exclude his testimony under Daubert. See Micro Chem., 317 F.3d at 1392. Rather, the proper course for contesting Dr. Richardson’s testimony would be through vigorous cross-examination and the presentation of Defendants’ competing infringement theory through their own expert witness. See id.; Primiano, 598 F.3d at 564.”
The district court also denied the Daubert motion on the ground that the expert had not provided any facts or analysis to support the assertions that the accused structures are equivalent to the structures in the asserted claims. “[L]iteral infringement of a means-plus-function claim can be met by a structure that is merely equivalent to the corresponding structure in the specification. Odetics, 185 F.3d at 1267. The overall structure does not need to be identical as long as it “performs the claimed function in substantially the same way as the claimed structures to achieve substantially the same result.” Id. Defendants argue that Dr. Richardson has failed to provide any analysis or argument showing that the structures in the accused products function in the same way because he did not analyze the differences between the claimed structures and the accused products. (Doc. No. 624 at 7-9.) However, as Defendants admit in their briefs, Dr. Richardson did provide argument and analysis explaining how the structures function in the same way. For example, Dr. Richardson acknowledges that the accused products do not possess the structural component “multiplier 45,” but he explains that based on the way the accused products operate, “multiplier 45” is superfluous. (See Doc. No. 624-1, Declaration of Justin Barnes Ex. C at 4; Doc. No. 624-3, id. Ex. G at 100.) Defendants may disagree with Dr. Richardson’s conclusion that “multiplier 45” is superfluous, but that is not a basis for excluding his testimony under Daubert. See Primiano, 598 F.3d at 564 (“‘[T]he test under Daubert is not the correctness of the expert’s conclusions but the soundness of his methodology.'”).”
Accordingly, the district court denied the defendants’ Daubert motion to exclude MPT’s infringement expert.
Multimedia Patent Trust v. Apple Inc., et al., Case No. 10-CV-2618-H (KSC) (S.D. Cal. Nov. 19, 2012)
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.