Wednesday, February 08, 2012

CAFC affirms ED Texas in METTLER-TOLEDO, INC case

The issue:

On appeal, Mettler limits its arguments to a single claim construction issue: whether the district court im- properly construed the relevant claim terms to require a multiple slope integrating A/D converter rather than any generic A/D converter. Mettler argues that the district court erred by importing the structure of only the pre- ferred embodiment or best mode of the disclosure into the claim. It contends that A/D converters are well-known in the art and that there was no reason to limit the structure to only the multiple slope integrating A/D converter. It further points to figure 5 that illustrates an “Analog to Digital Converter 100”. It argues that this shows that the specification discloses generic A/D converters as well as the more specific multiple slope integrating embodiment. Mettler contends that the Abstract, by mentioning a generic A/D converter, supports its broad construction. Finally, Mettler points out that the district court applied a different construction for the ’052 patent, holding that a generic A/D converter is included in the claim term’s construction. It argues that the two patent specifications are very similar and both disclose a generic A/D converter linked to the claimed functions.

Citing Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003), B-Tek responds that the patent never links a generic A/D converter to the claimed functions.

The CAFC noted:

We agree with the district court that the appropriate structure for the disputed means-plus-function claim elements in the ’547 patent is the multiple slope integrating A/D converter and equivalents thereof. Our case law is clear that a means-plus-function claim limitation is limited to the structures disclosed in the specification and equivalents. Med. Instrumentation & Diagnostics, 344 F.3d at 1210. A court must look to the specification to determine the structures that correspond to the claimed function. “[S]tructure disclosed in the specification is ‘corresponding’ structure only if the specification or prose- cution history clearly links or associates that structure to the function recited in the claim.” B. Braun Med. Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). If a patentee chooses to disclose a single embodiment, then any means-plus-function claim limitation will be limited to the single disclosed structure and equivalents thereof. See Nomos Corp. v. Brainlab U.S.A., Inc., 357 F.3d 1364, 1368 (Fed. Cir. 2004).

The ’547 patent discloses a single embodiment for the claimed invention that uses a multiple slope integrating A/D converter. In every instance where the specification refers to an “A/D converter”, see, e.g., ’547 patent col.5 l.14, it is referring to the preferred embodiment, which only includes the multiple slope integrating A/D converter 100. Although generic A/D converters were known in the art, the patentee chose to use means-plus-function lan- guage which limits it to the disclosed embodiments and equivalents. While Mettler argues that the district court erred by limiting it to the “best mode,” the best mode was also the only structure disclosed in the specification.


The district court correctly held that the multiple slope integrating A/D converter was the only converter disclosed by the ’547 patent and linked to the claimed functions. Therefore, we affirm the district court’s denial of JMOL of infringement.

There was another issue:

In order to develop its case rebutting lost profits damages, B-Tek requested documents related to Mettler’s manufacturing capacity. Mettler stated that it had no such documents. During trial, a Mettler employee admitted that certain documents existed—a production schedule and a plant diagram—and that some of these documents had been destroyed. Further, Mettler admitted that it provided some of these documents to its own damages expert during the preparation of its case show- ing that Mettler appreciated the documents’ relevance. B- Tek moved for sanctions, including attorney’s fees. The district court denied the motion. It noted that Mettler did not hide the documents because Mettler’s representative, in a deposition, spoke about manufacturing capability and mentioned the production schedule. Further, the district court found that the documents were not particularly relevant, stating:
Production schedules are, as the court under- stands them, merely an ever-changing, real-time representation of Mettler-Toledo’s backlog, and unlikely to provide much, if any, relevant infor- mation about manufacturing capacity. Nor does the court see how a physical layout diagram of the Masstron facility would be relevant.
J.A. 170. The district court also noted that B-Tek could not show the requisite harm or prejudice because “[B-Tek] ultimately prevailed at trial on the issue of infringement” so it did not have to rely on its damages case.


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