Friday, September 20, 2013

CAFC reverses SD Fl on infringement issues in Bennett Marine v. Lenco

From within Bennett Marine v. Lenco an appeal to the CAFC from SD FL:

Defendants-Appellants Lenco Marine, Inc. and its president Richard DeVito, Jr. (collectively “Lenco”) appeal from a final judgment of the United States District Court for the Southern District of Florida holding (1) that vari- ous products sold by Lenco infringed a patent owned by Plaintiff-Cross Appellant Bennett Marine, Inc. (“Ben- nett”); (2) that Lenco induced infringement of, and willful- ly infringed, Bennett’s patent; (3) that the asserted claims are not invalid based on prior art; and (4) that Lenco breached a settlement agreement. See Bennett Marine, Inc. v. Lenco Marine, Inc., No. 04-CV-60326 (S.D. Fla. Sept. 29, 2011) (“Final Decision”). Based on its patent infringement ruling, the district court awarded damages. Bennett Marine, Inc. v. Lenco Marine, Inc., No. 04-CV- 60326 (S.D. Fla. Mar. 2, 2012) (“Final Judgment”).

For the reasons set forth below, we (1) reverse the judgments of infringement, induced infringement, and willful infringement; (2) affirm the judgment of no invalidity; (3) reverse the judgment of breach of contract; and (4) vacate the award of damages.

As to claim construction:

In construing such a limitation, a court must first identify the function recited and then identify the corresponding structure in the written description necessary to perform that func- tion. See Asyst Techs., Inc. v. Empak, Inc., 268 F.3d 1364, 1369–70 (Fed. Cir. 2001). Here, the district court identi- fied the function as “to provide a means to respond to the stimulus of electrical power being removed from the engine, thus resulting in the trim tabs being automatical- ly returned to the fully retracted position or other prede- termined position.” Final Decision at 28–29, ¶ 20. It identified the structure as “control circuit 42, fig. 1, and equivalents thereof.” Id. (...)

We agree with Lenco’s first two arguments regarding the fifth limitation. As essentially conceded by Bennett, the district court erred by failing to fully identify the function and corresponding structure required. As stated in the fifth limitation, the recited “means” must “automat- ically mov[e]” the trim tabs “upon removal of power at said engine.” We thus revise the required function as follows: “to respond to the stimulus of electrical power being removed from the engine by automatically return- ing the trim tabs to the fully retracted position or other predetermined position.” See Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1319 (Fed. Cir. 2003) (“The function of a means-plus-function claim must be construed to include the limitations contained in the claim language.”). The corresponding structure is a control circuit (discussed in further detail below) as well as the actuators and related components necessary to automatically retract the trim tabs upon the removal of engine power. (...)
The ’780 patent discloses only one specific type of cir- cuit to perform part of the function required by the fifth limitation. In such a situation, the corresponding struc- ture should be limited to that specific structure and its equivalents, rather than any circuit capable of performing the required function. See Mettler-Toledo, Inc. v. B-Tek Scales, LLC, 671 F.3d 1291, 1295–96 (Fed. Cir. 2012) (affirming a construction limiting a means-plus-function limitation to the specific disclosed analog-to-digital con- verter, despite the presence of a generic “analog-to-digital converter” in a patent figure, because “[i]f 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 also J&M Corp. v. Harley-Davidson, Inc., 269 F.3d 1360, 1367 (Fed. Cir. 2001) (“The literal scope of a properly construed means-plus-function limitation does not extend to all means for performing a certain function. Rather, the scope of such claim language is sharply limited to the structure disclosed in the specification and its equiva- lents.”).

As to infringement of a means plus function claim element:

For there to be literal infringement of a claim reciting a means-plus-function limitation, the accused device must perform the identical function recited in the claim, and must use the same structure disclosed in the specification or equivalent structure. See IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1430 (Fed. Cir. 2000).
Structural equivalence under § 112, ¶ 6 is met only if the differences are insubstantial . . . that is, if the assertedly equivalent structure performs the claimed function in substantially the same way to achieve substantially the same result as the corresponding structure described in the specification.” See Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed. Cir. 1999). To find infringe- ment of a claim reciting a means-plus-function limitation under the doctrine of equivalents using the traditional function-way-result test, “the accused structure must perform substantially the same function, in substantially the same way, to achieve substantially the same result, as the disclosed structure.” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed. Cir. 2000).

Chiuminatta is cited:

This, however, is insufficient to demonstrate an accused structure is equivalent. See Chiuminatta Concrete Con- cepts v. Cardinal Indus., Inc., 145 F.3d 1303, 1309 (Fed. Cir. 1998) (noting in a discussion of structural equivalents that “[t]he question of known interchangeability is not whether both structures serve the same function, but whether it was known that one structure was an equiva- lent of another”); see also id. at 1310 (“[A] finding of a lack of literal infringement for lack of equivalent structure under a means-plus-function limitation may preclude a finding of equivalence under the doctrine of equivalents.”). On appeal, Bennett has failed to demonstrate how the evidence supports a finding of infringement under the doctrine of equivalents when analyzed under the proper construction of the fifth limitation of claim 1 (or the sixth limitation of claim 9). For this reason, we reverse the finding of infringement under the doctrine of equivalents.

As to induced infringement

We turn briefly to the district court’s conclusions as to induced infringement and willful infringement. Because a judgment of induced infringement requires an act of direct infringement, see Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1277 (Fed. Cir. 2004), based on our reversal of the infringement judgment, we reverse as to induced infringement. Similarly, reversing the district court’s judgment of infringement requires us to reverse the judgment of willful infringement. See John- son & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1055 (Fed. Cir. 2002) (en banc). Based on our reversal as to infringement, we vacate the award of damages and thus need not address the aspects of Ben- nett’s cross-appeal relating to the proper royalty rate for patent infringement damages.

The CAFC points to a failure to cite case law:

We are not persuaded by Lenco’s estoppel argument, which lacks any citation to case law. We know of no decision supporting the proposition that the failure of an inventor to distinguish a certain prior art reference on a specific ground creates an estoppel with respect to an arguably similar aspect of a different reference. As ap- plied here, the fact that the inventors distinguished Takeuchi on alternative grounds (other than the potential argument that Takeuchi does not disclose trim tabs) does not mean that the inventors waived an argument distin- guishing Newman for a failure to disclose trim tabs.


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