NOTE: This disposition is nonprecedential
United States Court of Appeals for the Federal Circuit
06-1168
DESA IP, LLC,
Plaintiff-Appellant,
v.
EML TECHNOLOGIES, LLC
and COSTCO WHOLESALE CORPORATION,
Defendants-Appellees.
James R. Higgins, Jr., Middleton Reutlinger, of Louisville, Kentucky, argued for
plaintiff-appellant. With him on the brief were Augustus S. Herbert and Robert J.
Theuerkauf.
Roger L. Cook, Townsend and Townsend and Crew LLP, of San Francisco,
California, argued for defendants-appellees. With him on the brief was Iris Sockel
Mitrakos.
Appealed from: United Sates District Court for the Middle District of Tennessee
Judge Aleta A. Trauger
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
06-1168
DESA IP, LLC,
Plaintiff-Appellant,
v.
EML TECHNOLOGIES, LLC
and COSTCO WHOLESALE CORPORATION,
Defendant-Appellees.
__________________________
DECIDED: January 4, 2007
__________________________
Before MICHEL, Chief Judge, PLAGER, Senior Circuit Judge, and RADER, Circuit
Judge.
MICHEL, Chief Judge.
In this patent case, DESA IP, LLC ("DESA") appeals from a stipulated judgment
of non-infringement, entered by the United States District Court for the Middle District of
Tennessee following a claim construction hearing. Desa IP, LLC v. EML Techs., LLC,
No. 3-04-0160 (Nov. 21, 2005). Because the district court erred in construing "sensor
means" and other disputed terms, we vacate and remand.
I. BACKGROUND
DESA is the owner of United States Patent No. 5,598,066 ("the '066 patent"),
directed to motion-activated security lights. The '066 patent discloses a light that
illuminates at two levels: (1) a dim "accent" level when dusk is detected by a photocell
within the apparatus and (2) a brighter "security" level which is rapidly activated when
motion is detected by a passive infrared motion sensor. The lamp remains illuminated
at the "security" level as long as the motion sensor continues to detect motion (which
resets an internal timer), but eventually returns to "accent" mode. When the photocell
senses daylight, however, the lamp is turned off.
The '066 patent further discloses that, in the preferred embodiment, there is a
"manual override" feature, which keeps the light continuously on at the brighter "security
level" until daylight. The preferred embodiment also has a "pulse counting" feature,
which avoids false triggering by activating the "security" mode only when motion is twice
detected by the sensor within a specified time period. These additional features,
(neither of which are present in the accused device), are explicitly recited in some, but
not all, of the claims.
On February 27, 2004, DESA filed suit against EML Technologies LLC ("EML")
and Costco Wholesale Corporation ("Costco"),1 alleging infringement of claims 6, 9, 10
and 11 of the '066 patent. Claim 6 recites:
An apparatus comprising:
first sensor means for detecting a first predetermined condition external to
said apparatus, said first predetermined condition being motion relative to
said first sensor means of a person or object separate from said
apparatus;
second sensor means for detecting a second predetermined condition,
said second predetermined condition being a predetermined level of light
external to said apparatus;
1
Costco imports and sells the allegedly infringing motion-activated security
lights manufactured by EML.
06-1168 2
a lamp which can emit a first level of illumination and which can emit a
second level of illumination substantially greater than said first level of
illumination, said lamp being capable of switching rapidly from said first
level of illumination to said second level of illumination; and
control circuit means coupled to said lamp and responsive to said first and
second sensor means for causing said lamp to emit light at said first level
of illumination in the absence of said first predetermined condition in
response to said second predetermined condition, and for causing said
lamp to emit light at said second level of illumination in response to
detection of said first predetermined condition;
wherein said control circuit means includes means responsive to detection
of said first predetermined condition for initiating measurement of a
predetermined time interval, and responsive to expiration of said time
interval for causing said lamp to thereafter emit light at said first level of
illumination in response to said second predetermined condition in the
absence of a recurrence of said first predetermined condition.
Claim 9 recites:
sensor means for detecting a predetermined condition external to said
apparatus;
a lamp which can emit a first level of illumination and which can emit a
second level of illumination substantially greater than said first level of
illumination, said lamp being capable of switching rapidly from said first
level of illumination to said second level of illumination; and
control circuit means coupled to said lamp and responsive to said sensor
means for causing said lamp to emit light at said first level of illumination
in the absence of said predetermined condition, and for causing said lamp
to emit light at said second level of illumination in response to detection of
said predetermined condition, wherein said control circuit means is
powered by an AC voltage, and wherein said control circuit means include
switching means for selectively permitting and preventing the application
of said AC voltage to said lamp and means for causing said switching
means to be actuated for a selected portion of each half wave cycle of
said AC voltage, said portion of said half waves being greater for said
second level of illumination than for said first level of illumination.
Claims 10 and 11, although likewise drafted as independent claims, merely add
additional limitations to those recited by claim 9.
06-1168 3
The district court appointed as technical advisor Dr. Charles Carnal, a professor
of electrical engineering at Tennessee Technological University. It held a three-day
Markman hearing, during which multiple experts for both sides testified as to (1) the
applicability of 35 U.S.C. § 112, ¶ 6 and (2) the meaning of the disputed claim terms.2
At the end of the hearing, the court orally rendered its claim construction ruling. Hr'g Tr.
656-78, Oct. 27, 2005.
Most relevant to this appeal, the district court construed the disputed terms
"sensor means," "control circuit means," and "switching means." As a preliminary
matter, the court concluded that 35 U.S.C. § 112, ¶ 6 applied to all three of these
phrases because the asserted claims did not recite sufficient structure, materials, or
acts to perform the recited functions. Id. at 659:8-11.
The court found the corresponding structure for "first sensor means for detecting
a first predetermined condition external to said apparatus" in claim 6—where "first
predetermined condition" was internally defined within claim 6 to be "motion relative to
said first sensor means of a person or object separate from said apparatus"—described
at col.3 l.24-col.4 l.5 of the specification. Id. at 664:6-14. This definition includes not
only the passive infrared sensors Q1 and Q2, but also what Professor Massengill
dubbed "selection circuitry," i.e., circuits 43, 46, 47, 48 and 51 of Figures 2A and 2B.
See id. at 481:5-11. The same meaning was ascribed to "sensor means for detecting a
predetermined condition external to said apparatus" in claims 9, 10 and 11. Id. at
665:16-25.
2
Mark Patterson, William Raper, Thomas J. Paulus, and Steven Carlson
testified for DESA. J. Michael Thesz, Scott Evans, and Professor Lloyd Massengill
testified on behalf of EML and Costco.
06-1168 4
As for "control circuit means," the court found that this described, in plain
language, "the means for causing the lamp to go on at accent level when there is no
motion but it's dark or dusk, and then going up to the higher level of illumination, which I
believe is 95%, in response to detection of the motion of a person or object." Id. at
667:15-22. It found the corresponding structure for this function described at col.5
l.63-col.6 l.14. Id. at 667:24-668:4.
Finally, "switching means for selectively permitting and preventing the application
of said AC voltage to said lamp" was described by the court in plain language as
"basically a switch that allows the lamp to either be on or off." Id. at 670:5-6. The court
found the corresponding structure described at col.5 ll.13-25, which was, as EML and
Costco had argued, "more than just the triac."3 Id. at 670:22.
The court then stressed that all of the means-plus-function terms were being
construed to include structural equivalents, too. Id. at 672:17. On October 31, 2005,
the court issued a written order adopting these oral rulings without further explanation.
DESA subsequently conceded that none of the asserted claims were infringed,
and a stipulated judgment was entered on November 21, 2005. This judgment is
expressly conditioned upon the district court's interpretation of "sensor means" being
upheld on appeal. A timely notice of appeal was filed on December 16, 2005. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
II. DISCUSSION
Claim construction is a question of law reviewed de novo. Cybor Corp. v. FAS
Techs., Inc., 138 F.3d 1448, 1454-56 (Fed. Cir. 1998) (en banc). When construing
3
A triac is a type of electronic switch.
06-1168 5
claim terms, the court determines the customary meaning of claim terms as understood
by a person of ordinary skill in the art according to the methodology set forth in Vitronics
Corp v. Conceptronics, Inc., 90 F.3d 1576, 1582-83 (Fed. Cir. 1996) and reaffirmed in
Phillips v. AWH Corp., 415 F.3d 1303, 1312-19 (Fed. Cir. 2005) (en banc).
A
Where an element in a claim is expressed as a means or step for performing a
specified function without reciting structure, it "shall be construed to cover the
corresponding structure, material, or acts described in the specification and equivalents
thereof." 35 U.S.C. § 112, ¶ 6. This two-step inquiry involves determining (1) whether
§ 112, ¶ 6 applies and, if it does, (2) identifying the claimed function and corresponding
structures in the written description. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d
1352, 1360 (Fed. Cir. 2000).
The use of the word "means" in the claim language invokes a rebuttable
presumption that § 112, ¶ 6 applies; conversely, the failure to use "means" invokes a
presumption that § 112, ¶ 6 does not apply. Apex Inc. v. Raritan Computer, Inc., 325
F.3d 1365, (Fed. Cir. 2003). Here, the key disputed phrases are "sensor means,"
"control circuit means," and "switching means." Nonetheless, the presumption that
§ 112, ¶ 6 applies may be rebutted if the claim recites no function or recites sufficient
structure for performing that function. Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d
1420, 1427 28 (Fed. Cir. 1997).
The trial court recognized that the use of the word "means" invoked the
presumption that § 112, ¶ 6 applied, but resorted to expert testimony to resolve whether
that presumption was rebutted. DESA presented evidence from Mr. Patterson that the
06-1168 6
use of "means" language was ambiguous because it was commonly used in electronics
patents without necessarily intending to invoke § 112, ¶ 6. Mr. Carlson and Mr. Raper
further testified that the modifiers "sensor," "control circuit," and "switch" were commonly
understood by those skilled in the art to describe structure. Defendants' experts
testified to the contrary. The district court ultimately rejected DESA's argument that the
asserted claims contained sufficient structural language to escape the application of
§ 112, ¶ 6. Hr'g Tr. at 659:12-15.
Although the district court seemed to rely upon expert testimony,4 we note that its
conclusion could have been reached without the aid of extrinsic evidence. First, the
claims use both means-plus-function language (i.e., "sensor means," "control circuit
means," etc.) and structural language (i.e., lamp, zero crossing detect circuit, etc.),
which suggests that the patentee intentionally used "means" language to invoke § 112,
¶ 6. Second, the claims recite a function for each of these "means" limitations without
specifying what structure(s) would be required to perform that function. Third, we reject
DESA's argument that the use of "sensor, "control circuit," and "switching" before the
word "means" was sufficient to denote structure. Rather, those modifiers were simply
used to distinguish between subsequent references to different "means" limitations
within the same claim, i.e., "said first and second sensor means" as opposed to "said
control circuit means." Finally, DESA argues that this court has previously stated that "it
is clear that the term 'circuit' by itself connotes some structure." Apex, 325 F.3d at
1373. In Apex, however, the word "means" was not used, so the reverse
4
While the court did not explain in detail the reasons behind its oral
decision, we infer that the court found the expert testimony of Mr. Thesz and Professor
Massengill to be more persuasive.
06-1168 7
presumption—i.e., that § 112, ¶ 6 does not apply—was invoked. Here, we agree with
the district court that DESA failed to overcome the presumption that § 112, ¶ 6 does
apply to "sensor means," "control circuit means," and "switching means."
B
We now consider whether the district court correctly identified the claimed
functions and corresponding structures of the disputed phrases. We conclude that it
erred in relying upon Professor Massengill's expert testimony. In doing so, the district
court construed each disputed claim term by simply referring to various passages in the
specification that corresponded to portions of Figures 2A and 2B, which depict the
preferred embodiment. Expert testimony in conflict with the intrinsic evidence, however,
should have been accorded no weight. Phillips, 415 F.3d at 1318; see also Markman v.
Westview Instruments, 517 U.S. 370, 390 (1996) (holding that expert testimony must be
evaluated in a manner that "fully comports with specification and the claims" and
"preserve[s] the patent's internal coherence").
1
With respect to "first sensor means" (of claim 6) or "sensor means" (of claims 9,
10, and 11) for detecting motion, the central dispute is whether this includes "selection
circuitry" such as the pulse-counting function, as Professor Massengill testified. On
appeal, DESA reiterates its argument that only Q1 and Q2—i.e., the passive infrared
sensors depicted in Figure 2A—perform the motion-detecting function. We agree that
"sensor means" is properly construed as "Q1 and Q2 or equivalents." All the other parts
of Figures 2A and 2B, including the pulse-count function at 51, are part of the control
circuit in the preferred embodiment.
06-1168 8
Not only does the specification of the '066 patent repeatedly refer to the passive
infrared sensors Q1 and Q2 as the "sensors," it even explicitly states that "[t]he sensors
Q1 and Q2 are each coupled to a detector portion 43 of the circuit," (emphasis added)
and then goes on to describe the additional functions of the circuit—i.e., selecting and
amplifying the "signals most likely to correspond to infrared signals from a human body."
Col.3 ll.34-35, 38-39. Because the intrinsic evidence clearly sets forth the
corresponding structure for "sensor means," it was improper to rely upon contrary
extrinsic evidence to construe this term.5
2
Although the stipulated judgment was only conditioned upon the claim
construction of "sensor means," we now address the proper construction of "control
circuit means." EML and Costco argue that the patentee distinguished certain prior art
on the basis that the invention had a pulse-counting feature as "generally disclosed."
Thus, they argue, the pulse-counting feature is a limitation of every claim, and if "sensor
means" does not limit the invention to those devices with a pulse-counting function, then
"control circuit means" does. We disagree.
The structure corresponding to "control circuit means" (i.e., everything except the
lamp, the passive infrared sensors, and the photocell) necessarily varies from claim to
claim, depending on the functions disclosed. For example, claim 6 contains a limitation
wherein the lamp will revert to the first level of illumination after a predetermined time
5
In any event, we reject with Professor Massengill's testimony that the
"selection circuitry" is part of the "sensor means." Rather, the passive infrared sensors
Q1 and Q2 detect motion, while the pulse-counting feature and other parts of the circuit
are used to decide whether the lamp switches to the brighter level of illumination in
response or whether the detected motion is ignored.
06-1168 9
interval if additional motion is not detected, see col.8 ll.12-19, so a control circuit would
have to include portion 52 of Figure 2B or its equivalent to be within the scope of claim
6. Claims 9-11, however, lack this particular limitation and would not require portion 52
to be part of an infringing control circuit. The same holds true for the pulse-counting
function, which is expressly recited as a limitation only in claim 12.
Moreover, the Jensen/McCavit declaration in the prosecution history states that
the prior art also lacked "other features as recited in the claims," not just the
pulse-counting function. Specifically, the Nippon reference was distinguished on
several grounds. Some claims recite the manual-override function, others recite the
pulse-counting function, and "[i]n addition, [application] claims 2, 10, 11 and 126 are
directed to features clearly not disclosed or suggested in the instruction manual."
Although the validity of these claims remains to be decided, nothing in the prosecution
history suggests that either the manual-override function or the pulse-counting function
was intended to be a limitation of every claim. Unlike application claim 16 (which
ultimately issued as claim 12), the claims asserted by DESA were not distinguished
over prior art on the basis of the pulse-counting function.
3
Finally, as to "switching means" in claims 9, 10 and 11, we agree with DESA that
this claim term is properly construed to mean "triac Q3 or equivalents." The other
structures described in the portion of the specification referenced by the district court
correspond to the "means for causing said switching means to be actuated for a
6
These claims were renumbered and issued as claims 6, 9, 10, and 11.
06-1168 10
selected portion of each half wave cycle of said AC voltage." Again, the court erred in
relying upon expert testimony that was inconsistent with the intrinsic evidence.
III. CONCLUSION
For the aforementioned reasons, we vacate the stipulated judgment of
non-infringement and remand for further proceedings consistent with this opinion. We
expressly encourage the district court to revisit its claim construction for any other terms
it deems necessary.
06-1168 11