01/20/14

Vistan Corp. v. FIDEI: District Court's Classification of Examples in Specification too Narrow


Category: 112 - Means Plus  
 
 
 
 By: John Kirkpatrick, Contributor 
 
TitleVistan Corp. v. FIDEI USA, Inc., No. 13-1216, -1217 (non-precedential) (Fed. Cir. Dec. 3, 2013).
Issue"[W]hether the disclosure of a “mechanical linear actuator” in the [U.S. Patent No. 5,870,949] specification is a sufficient description of structure that 'one skilled in the art will know and understand what structure corresponds' to the claim limitations."  Vistan, at *6, 7 (text added, citation removed).
Holding"The evidence makes clear that a person of ordinary skill in the art would understand mechanical linear actuators to be a distinct and identifiable class of actuators."  Id. at *6.
 

Procedural History"Vistan filed suit [...] alleging infringement of the ’949 patent."  Vistan, at *3.  ʺThe [district court] granted summary judgment of noninfringement in favor of the defendants.  [...]  Vistan has appealed."  Id. at *5 (text added).

Legal Reasoning (O'Malley, Bryson, Wallach, CJ)
Background
Claim Language"An active assembly positioned to engage the holders as the holders pass the pitting knife assembly, and configured to cause the pockets of each of the holders to be in the closed configuration during the pitting operation and to move the pockets of said each of the holders from the closed configuration to the open configuration after the pitting operation thereby improving efficiency of separation of pitted fruit flesh from the holders after said pitting operation."  Vistan, at *3.
District Court Findings
 
§112 6th Applied"[T]he active-assembly limitations [described in claims 5 and 12 were construed] as means-plus-function limitations.ʺ Id. (text added).
Specification Identifies Only Pneumatic and Solenoid-based Actuators"[The specification describes] whereby 'each embodiment includes an actively (e.g., pneumatically, or by solenoid) driven actuator assembly.'  [...]  [The] court concluded that pneumatic and solenoid-based actuators are the only types of actuators identified by the specification."  Id. at *4 (text added, citation removed).
Mechanical Linear Actuators are not Distinct "[The specification describes] a preferred embodiment in which 'each actuator 88 is a mechanical linear actuator.'  [...]  The court reasoned that the mechanical linear actuator [...] is simply 'part of the entire class of embodiments' that must be driven pneumatically or by solenoid.ʺ  Id. (text added, citation removed).
Defendant's Actuator not Equivalent"[T]he accused pitter’s servomotor-driven mechanical linear actuator was not equivalent to a pneumatic or solenoid-driven actuator because Vistan had not presented evidence that the servomotor power source functioned in 'substantially the same way as a pneumatic or solenoid power source.'"  Id. at *5 (text added).
Erroneous Grant of Summary Judgment of Noninfringement
Mechanical Linear Actuators Are Distinct"[M]echanical linear actuators are devices that mechanically convert rotary motion into linear motion.  [A] person skilled in the art would understand that mechanical linear actuators are powered by a mechanical input and that pneumatic and solenoid-based actuators are not.  [...]  The reference in the ’949 specification to “mechanical linear actuator” thus discloses structure that is no less specific than the references to pneumatic and solenoid-based actuators."  Vistan at *7 (text added, footnote removed).
Specificaton Not Limited to Actuators Driven Pneumatically or by Solenoid"The mechanism that supplies the rotating mechanical input force (e.g., an electric motor) need not be an integrated part of the actuator.  [...]  [The specification] discloses pneumatic and solenoid-based actuators as examples of the broader class of [...] actuators [and] describes an embodiment in which the actively driven actuator is a mechanical linear actuator.  The specification nowhere states or suggests that an 'actively . . . driven actuator assembly' must be driven pneumatically or by solenoid. [T]he specification indicates the contrary by its use of the term “e.g.” in the statement that 'each embodiment includes an actively (e.g., pneumatically, or by solenoid) driven actuator assembly.'"  Id. (text added, citations removed).
Conclusion
"[W]e conclude that mechanical linear actuators are a distinct and identifiable class of actuators separate from pneumatic and solenoid-based actuators.  [The district court's] conclusion that a mechanical linear actuator not driven pneumatically or by solenoid could not infringe the ’949 patent [is in error]."  Vistan, at *6 (text added, footnote removed).

 

Contributor Notes
No Waiver of Claim Construction Argument on AppealVistan’s disagreement with the court’s decision to invoke section 112, paragraph 6, does not disable it from arguing that the court’s application of that provision was erroneous [when Vistan did not make its argument that the claims are not in means-plus-function format during the claim construction proceedings].  Vistan, at *6 n.1 (text added).
No Spoilation of Evidence[Defendant's disassembly of accused machine not spoilation] because Vistan’s amended infringement contentions did not distinguish the destroyed pitter from the other accused pitters and because Vistan did not show that the unavailability of the destroyed machine, which Vistan had already examined, would affect Vistan’s rights."  Id. at *9 (text added).

 

Image Attribution Statement: Underwater Linear Actuator manufactured by Ultra Motion, Inc., available as a public domain image under the terms of the GNU Free Documentation License, http://commons.wikimedia.org/wiki/File:Underwater_Linear_Actuator.png (last visited Jan. 20, 2014). 

 

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