Expert witness failure

In INTELLECTUAL SCIENCE AND TECHNOLOGY, INC v. Sony, the CAFC affirmed a grant of summary judgment against plaintiff-patentee.

At issue was a means plus function claim: 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).

Further at issue was the report of plaintiff-patentee's expert:

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
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).

(...)

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.

The term "off the shelf" appears in the decision:

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.

The word "conclusory" appeared:

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.

The CAFC cited the oral argument:

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.

Of the role of attorney argument:

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.