United States Court of Appeals for the Federal Circuit
2009-1142
INTELLECTUAL SCIENCE AND TECHNOLOGY, INC.,
Plaintiff-Appellant,
v.
SONY ELECTRONICS, INC.,
Defendant-Appellee,
and
US JVC CORPORATION, JVC AMERICAS CORPORATION,
and PANASONIC CORPORATION OF NORTH AMERICA,
Defendants.
Andrew Kochanowski, Sommers Schwartz, P.C., of Southfield, Michigan, argued
for plaintiff-appellant.
John R. Hutchins, Kenyon & Kenyon, of Washington, DC, argued for defendant-
appellee. On the brief was Richard S. Gresalfi, of New York, New York. Of counsel
was Zaed M. Billah, of New York, New York.
Appealed from: United States District Court for the Eastern District of Michigan
Senior Judge Avern C. Cohn
United States Court of Appeals for the Federal Circuit
2009-1142
INTELLECTUAL SCIENCE AND TECHNOLOGY, INC.,
Plaintiff-Appellant,
v.
SONY ELECTRONICS, INC.,
Defendant-Appellee,
and
US JVC CORPORATION, JVC AMERICAS CORPORATION,
and PANASONIC CORPORATION OF NORTH AMERICA,
Defendants.
Appeal from the United States District Court for the Eastern District of Michigan in Case
No. 06-CV-10406, Senior Judge Avern C. Cohn.
___________________________
DECIDED: December 15, 2009
___________________________
Before RADER, ARCHER, and GAJARSA, Circuit Judges.
RADER, Circuit Judge.
In this patent case, the United States District Court for the Eastern District of
Michigan granted summary judgment of non-infringement in favor of defendants. See
Intellectual Sci. & Tech., Inc. v. Sony Elecs., Inc., Nos. 06-10406, -10409, -10412, 2008
WL 5068823 (E.D. Mich. Nov. 24, 2008). Because the district court correctly
determined that plaintiff did not show that any genuine issue of material fact prevents
summary judgment, this court affirms.
I.
Intellectual Science and Technology, Inc. (“Intellectual Science”) owns U.S.
Patent No. 5,748,575 (the “’575 patent”), entitled “Information processing apparatus
having a multitasking function with one or more optical discs.” This patent claims an
apparatus for reading optical discs in a computer that reduces the role of magnetic disk
drives. The invention facilitates and improves “information processing” in a computer
system by retrieving original source data from optical discs like CD-ROMs rather than
from floppy disks or hard drives. Specifically, the invention enhances “information
processing” by reading information simultaneously from multiple locations on one or
more optical discs. For example, the patent discloses an embodiment that runs
Microsoft Word®, Excel®, and PowerPoint® from three different locations on a single disc
while simultaneously running Microsoft Windows® 95 from another disc. Concurrently,
“a user can enjoy digital music by playing a disc situated in [another] compartment.”
’575 patent col.12 ll.40-43.
In order to simultaneously read information from several optical discs, the patent
discloses an apparatus with control and signal-process systems that retrieve and
decode multiple “information sets” from the discs. Id. at col.13 ll.31-41. For example,
one embodiment includes two optical head units controlled by a microprocessor, “for
simultaneously reproducing information from two separate disc positions.” Id. at col.9
l.67-col.10 l.1. The hardware described in the patent allows the apparatus to process
information from each of its optical units in parallel.
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Of importance for this appeal, the ’575 patent discloses a structure for
transmitting the information sets obtained from the optical discs to a host computer.
The patent describes using an intelligent time-division multiplexer (“ITDM”) to transmit
multiple information sets as a single data stream. The patent further explains that the
ITDM receives the information sets from a high-speed system control bus and transmits
the single stream to a host interface bus. The host interface bus, with the help of read
only and random access memory (“ROM/RAM”), sends the stream to a host computer.
This case focuses on the data-transmitting structure disclosed in the patent and the
corresponding structure, if any, in the accused devices.
II.
In early 2006, Intellectual Science filed nine complaints in the Eastern District of
Michigan against different defendants, including JVC Americas Corp. (“JVC”),
Panasonic Corp. of North America (“Panasonic”), and Sony Electronics, Inc. (“Sony”).
Intellectual Science alleged that various audio player/recorder devices made by the
various defendants were infringing five of its patents, including the ’575 patent. The
district court split the five patents into two groups, calling the first group the “read-read”
patents and the second group the “read-write” patents, and ordered Intellectual Science
to select a single paradigm claim from each group. The ’575 patent, the only patent at
issue on appeal, was part of the “read-read” patents, and Intellectual Science chose
claim 1 of that patent as the representative claim of that group.
The district court also ordered defendants to choose paradigm products for each
group of patents to provide the trial court context for understanding the technology at
issue. Defendants chose Sony’s RCD-W500C and RCD-W1 products and JVC’s XL-
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R5000BK product as the representative products for the “read-read” patents (the “Sony
Paradigm Products” and the “JVC Paradigm Product,” respectively).
Claim 1 of the ’575 patent reads as follows (important limitation underlined):
An information processing apparatus with multitasking function, the
information processing apparatus comprising:
(a) a plurality of turntables, each comprising a disc-setting table for
mounting an optical disc;
(b) a plurality of optical units, each comprising a driving means and
an optical read head, wherein said driving means is provided for
moving said optical read head in a radial direction of said optical
disc to a predetermined disc position on a surface of said optical
disc;
(c) means for simultaneously controlling a plurality of said driving
means to move a plurality of said optical read heads to a
plurality of predetermined disc positions on at least two optical
discs for retrieving information stored thereon;
(d) a plurality of signal-process systems for converting a plurality of
information sets retrieved by said plurality of optical read heads
from a compact disc format to the original state of the
information; and
(e) data transmitting means for transmitting a plurality of the
information sets converted by said plurality of signal-process
systems to a host computer.
After Intellectual Science picked its representative claims ― but before claim
construction ― JVC, Panasonic, and Sony jointly moved for summary judgment of non-
infringement. In support of their motion, defendants relied on a declaration by their
expert, Dr. Martin E. Kaliski. Dr. Kaliski opined that the means-plus-function limitation of
“data transmitting means” should be construed to require a structure that includes at
least a system control bus, an ITDM, a host interface bus, and ROM/RAM. Dr. Kaliski
further stated that the accused devices do not have a “data transmitting means”
because they lack both an ITDM and a host interface bus.
In response, Intellectual Science submitted a declaration from its expert, Dr.
William R. Michalson. Dr. Michalson did not dispute that the structure for the “data
2009-1142 4
transmitting means” included the four elements also identified by Dr. Kaliski. Dr.
Michalson, however, asserted that those elements were indeed present in the accused
devices. Referring to two circuit diagrams from Sony Service Manuals, Dr. Michalson
stated in his declaration that,
94. The Sony RCD-W500C Paradigm Product has a “data transmitting
means” that includes a control bus, an ITDM, a host interface bus
and RAM/ROM. Serial output buses (i.e. control bus) transmit
control information (instructions) along circuitry associated with
each optical drive. Serial input buses receive information from
each optical drive to an ITDM for multiplexing subcode data which
is then transmitted to the host bus interface. A/D D/A Converter
IC500 multiplexes audio information stream (CD or CDR) for output
by the unit. Internal ROM/RAM is provided to support program
operations from each of the optical drives. (P’s App. Ex. 24 (Sony
RCD-W500C Service Manual), at SEL00057).
95. The Sony RDC-W1 Paradigm Product includes a control bus, an
ITDM, a host interface bus and RAM/ROM. Serial output buses
(i.e. control bus) transmit control information (instructions) along
circuitry associated with each optical drive. Serial input buses
receive information from each optical drive to an ITDM for
multiplexing subcode data which is then transmitted to the host bus
interface. Playback signal selection device IC-109 multiplexes
audio information stream (CD or CDR) for output from the D/A
converter. Internal ROM/RAM is provided to support program
operations from each of the optical drives. (P’s App. Ex. 25 (Sony
RCD-W1 Service Manual), at SEL000209).
…
102. The structures referred to above … for the accused Paradigm
Product[s] all perform the same function as the claimed “data
transmitting means” (i.e., transmitting to the host computer), in the
same way (i.e., through a time division multiplexed structure) to
achieve the same result (i.e., transmitted information sets).
Accordingly, the Paradigm Products satisfy clause (e) as either a
literal equivalent under “means plus function” or under the Doctrine
of Equivalents.
Intellectual Science relied exclusively on these paragraphs and the two cited diagrams
to show that the Sony Paradigm Products contained the claimed “data transmitting
2009-1142 5
means.” Intellectual Science’s evidence was similar with respect to the JVC Paradigm
Product.
The district court appointed a special master to issue a Report and
Recommendation (“Report”) on defendants’ summary judgment motion. As a part of the
Report, the special master construed “data transmitting means” as a means-plus-
function limitation with a structure that includes at least four elements: “the high-speed
system control bus, ITDM, wide-band host interface bus, and ROM/RAM.” As for the
limitation’s function, the special master relied exclusively on the claim language and
concluded that the “data transmitting means” is “for transmitting a plurality of the
information sets converted by said plurality of signal-process systems to a host
computer.”
Addressing infringement, the special master concluded that Intellectual Science
did not make a sufficient showing of infringement to survive summary judgment
because the statements in Dr. Michalson’s declaration were merely conclusory.
Specifically, the Report stated,
There is no indication as to the specific structure in the Paradigm products
relied upon by Michalson as corresponding to the claim elements (by way
of example, Michalson does not annotate the circuit diagrams upon which
he relies to point to any specific structural element). Michalson does not
explain the specifications of such element. Michalson does not inter-relate
the operation of such element relative to any other elements.
Accordingly, the Report recommended that the district court grant defendants’ motion
for summary judgment of non-infringement.
The district court agreed with the special master and granted summary judgment
in favor of JVC, Panasonic, and Sony. Intellectual Sci. & Tech., 2008 WL 5068823, at
*10. Intellectual Science appealed the decision with respect to all three movants, but,
2009-1142 6
while its appeal was pending, settled with JVC and Panasonic. This opinion therefore
discusses Intellectual Science’s evidence of infringement for Sony only.
III.
This court reviews a district court’s grant of summary judgment without
deference. Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1323 (Fed. Cir. 2009).
Summary judgment resolves any case without a “genuine issue as to any material fact”
where the “the moving party is [also] entitled to judgment as a matter of law.” Fed. R.
Civ. P. 56(c). Stated in the negative, summary judgment is improper when the record
contains “evidence on which the jury could reasonably find for the [non-moving party].”
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986).
On appeal, Intellectual Science asserts that Sony’s Paradigm Products literally
contain the “data transmitting means.” Literal infringement first requires the trial court to
interpret the claims to determine their scope and meaning. Dynacore Holdings Corp. v.
U.S. Philips Corp., 363 F.3d 1263, 1273 (Fed. Cir. 2004). In this case, the parties do
not dispute the accuracy of the district court’s construction of the means-plus-function
term “data transmitting means.” Thus, the focus in this appeal is on the comparison of
that claim construction to the allegedly infringing devices. Id. For a means-plus-
function claim term, the term literally covers an accused device if the relevant structure
in the accused device performs the identical function recited in the claim and that
structure is identical or equivalent to the corresponding structure in the specification.
Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1099 (Fed. Cir. 2008).
To satisfy the summary judgment standard, a patentee’s expert must set forth the
factual foundation for his infringement opinion in sufficient detail for the court to be
2009-1142 7
certain that features of the accused product would support a finding of infringement
under the claim construction adopted by the court, with all reasonable inferences drawn
in favor of the non-movant. Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042,
1047-48 (Fed. Cir. 2000). This court considers the sufficiency of an expert’s opinion at
summary judgment according to the standards of regional circuit law. Id. at 1048. The
standard in the United States Court of Appeals for the Sixth Circuit is similar to the
standard set forth in Arthur A. Collins, namely, that “[a]n expert opinion submitted in the
context of a summary judgment motion must . . . set forth facts and, in doing so, outline
a line of reasoning arising from a logical foundation.” Brainard v. Am. Skandia Life
Assur. Corp., 432 F.3d 655, 663-64 (6th Cir. 2005) (quotations omitted).
IV.
Turning to Dr. Michalson’s declaration, this court concludes that it does not
sufficiently identify the structural elements of the claimed “data transmitting means.” An
expert’s unsupported conclusion on the ultimate issue of infringement will not alone
create a genuine issue of material fact. Arthur A. Collins, 216 F.3d at 1046. Moreover
a party may not avoid that rule “by simply framing the expert’s conclusion as an
assertion that a particular critical claim limitation is found in the accused device.” Id.
This record discloses no more than an unsupported conclusion of infringement that is
not sufficient to raise a genuine issue of material fact.
Dr. Michalson’s statement that “[s]erial input buses receive information from each
optical drive to an ITDM for multiplexing subcode data which is then transmitted to the
host bus interface” does not pinpoint where those elements are found in the accused
devices. His citation to a page number in Sony’s Service Manual for each
2009-1142 8
representative product also supplies no specific showing of an infringing structure. The
schematic found at each page, one of which is reproduced below, presents an
unexplained array of electronic symbols:
To present a prospect of infringement, Intellectual Science must present a triable
issue of fact that a person of skill in the art would recognize that these symbols depict
an infringing device. See TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1374-75
(Fed. Cir. 2002) (affirming summary judgment of non-infringement because the record
did not support assertion that one of skill in the art would equate the accused element, a
multiplexer, with the claimed element, a decoder). Instead Intellectual Science argues
vaguely that the structural elements are “off-the-shelf” components. Again, nothing in
the record corroborates that assertion or shows that one of skill in the art would
recognize the “off-the-shelf” component as matching the infringing means. Even if the
2009-1142 9
elements are common components, the record must specifically identify the infringing
features of those components and the reason that one of skill in the art would recognize
them as infringing. Without that further identification and explanation, a reasonable
juror would not be able to determine that those allegedly infringing components are
actually present.
Intellectual Science contends that Dr. Michalson did at least identify the structure
that serves as the ITDM, relying on the statement in his declaration that “[p]layback
signal selection device IC-109 multiplexes audio information stream (CD or CDR) for
output from the D/A converter.” The record shows that Dr. Michalson identified an
element labeled IC-109 in the cited schematic. Moreover, the schematic appears to
identify that element as a multiplexer because the element is labeled “selector,” accepts
two inputs, and produces one output:
Merely referring to the IC-109 multiplexer, however, does not suffice to show
infringement. To accept this identification, this court would have to conclude that it
would be reasonable to infer that the identified playback signal selection device is an
ITDM simply because both devices perform multiplexing. Dr. Michalson’s opaque
identification is not enough to permit any reasonable juror to make that leap. The
record simply does not allow this court to accept the reasoning that all multiplexers are
ITDMs. Rather, as the record shows, an ITDM’s output is more complex. The patent
explains that “[t]he plurality of converted information sets are multiplexed by ITDM 717
in order to be simultaneously transferred to host computer 720.” ’575 patent col.14
2009-1142 10
ll.15-17 (emphasis added). While a signal selector might be a multiplexer because it
outputs one of two input signals, Dr. Michalson does not provide any indication that the
one here outputs a signal that simultaneously transmits a plurality of information sets.
Stated another way, the problem with equating the identified playback signal
selection device with an ITDM on this record is the absence of any showing that the
identified structure accomplishes the same function in the same way as the claimed
structure. See Welker Bearing Co., 550 F.3d at 1099. Dr. Michalson’s affidavit supplied
only the statement that the structures in the accused devices “perform the same
function as the claimed ‘data transmitting means’ (i.e., transmitting to the host
computer), in the same way (i.e., through a time division multiplexed structure) to
achieve the same result (i.e., transmitted information sets).” That conclusory statement
is insufficient. To permit a jury to conclude that the playback signal selection device is
an ITDM, Dr. Michalson needed to supply at a minimum some description about the
specific features of the accused playback signal selection device’s multiplexing of the
audio information stream. Dr. Michalson did not supply any of the details necessary to
identify an infringing device. Moreover Dr. Michalson’s statement with respect to the
other Sony Paradigm Product, the RCD-W500C, also lacked that vital identification and
explanation.
This court dealt with a similar record in Arthur A. Collins. In that case, this court
determined that the patentee’s expert had not sufficiently identified a “TST switch”
limitation in the accused device. The court concluded that a statement from the
patentee’s expert that “[t]he so-called JNET is a TST switch” did not supply enough
information to survive summary judgment, reasoning:
2009-1142 11
Dr. Helgert did not support his assertion that ‘JNet is a TST switch’ with an
explanation of why JNET’s structure renders it a TST switch in his view;
i.e., there is nothing in his declaration that would allow a finder of fact to
conclude that JNET constitutes a TST switch as that term is used in the
patent.
216 F.3d at 1046.
Dr. Michalson’s declaration in this case is even more lacking than the one in
Arthur A. Collins. Dr. Michalson did not even expressly state that the playback signal
selection device is the ITDM. As noted, this court declines to make that inference on
appeal.
Two other points bolster the conclusion that Intellectual Science has not
proffered enough evidence to permit a reasonable juror to conclude that the accused
devices contain a “data transmitting means.” First, when counsel for Intellectual
Science was asked at oral argument where exactly Dr. Michalson identified the
structural elements in his declaration, counsel conceded that the language is “perhaps
not as grammatical as one would wish.” Oral Arg. at 10:56, Oct. 9, 2009, available at
http://oralarguments.cafc.uscourts.gov/mp3/2009-1142.mp3. Asking litigants to provide
more than a difficult-to-decipher expert declaration does not impose too high a burden
at summary judgment, especially where, as here, the structural elements are allegedly
common.
Second, Intellectual Science’s attorney argument does not offer any more clarity.
To be specific, Intellectual Science contends that Dr. Michalson identified the host
interface bus when he stated that “[s]erial input buses receive information from each
optical drive to an ITDM.” Dr. Michalson’s statement, however, indicates that the
identified “serial input buses” interface not with the host, as required by the claims, but
2009-1142 12
instead with “an ITDM.” While attorney argument might be able to clarify an otherwise
ambiguous expert declaration in some circumstances, see Applied Medical Resources
Corp. v. United States Surgical Corp., 448 F.3d 1324, 1335 n.5 (Fed. Cir. 2006) (“[T]he
expert declaration and Applied’s argument provide[] particularized testimony and linking
argument.” (emphasis added)), in this case those arguments render the expert’s
declaration even less clear.
In a last-ditch effort, Intellectual Science points to Applied Medical for the
proposition that it was not required to link Dr. Michalson’s statements to particular
structures in the accused devices. To the contrary, this court in Applied Medical
vacated a summary judgment because the patentee’s expert provided a sufficient basis
on which a jury could conclude that the identified structure in the accused device, a
surgical instrument, was equivalent to the structure claimed in the patent-in-suit. Id. at
1334. This court concluded that the expert had adequately established that the
identified structure was equivalent because he provided an explanation as to why one of
skill in the art would view the structure as functioning in substantially the same way to
achieve substantially the same result. Id. at 1335. In dicta, this court said that “we have
only required [particularized testimony and linking argument] in applying the ‘function,
way, result’ test in the context of proving infringement of a claim under the doctrine of
equivalents.” Id. at 1335 n.5.
Thus, unlike this case, the patentee’s expert in Applied Medical had pinpointed
the relevant structure in the accused device. See id. at 1333 (“Once the relevant
structure in the accused device has been identified, a party may prove it is equivalent to
the disclosed structure by showing that the two perform the identical function in
2009-1142 13
substantially the same way, with substantially the same result.” (emphasis added)).
This court has never stated that a patentee can survive summary judgment of non-
infringement on an apparatus claim without specifically identifying the allegedly
infringing structure in the accused device. Such a rule would conflict with the express
language of Fed. R. Civ. P. 56(e)(2), which requires a non-movant to set out “specific
facts” showing a genuine issue for trial. Without clear identification of the claimed
structure or its equivalent in the accused devices, Intellectual Science cannot survive
summary judgment.
V.
Intellectual Science also appeals the district court’s construction of the term “with
multitasking function” in the preamble of claim 1 of the ’575 patent. The construction of
that term, however, does not affect the issue of adequate information to create a factual
issue on infringement of the “data transmitting means” in the accused devices.
Because Intellectual Science did not show a genuine issue of material fact on one of the
limitations in the accused devices, this court need not reach the district court’s
construction of another. See TechSearch, 286 F.3d at 1371 (“To establish literal
infringement, all elements of the claim, as correctly construed, must be present in the
accused system.”).
VI.
For the foregoing reasons, this court affirms the district court’s grant of summary
judgment of non-infringement in favor of Sony.
AFFIRMED.
COSTS
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Each party shall bear its own costs.
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