How Ignoring Disclosed Structure Can Derail a Means-Plus-Function Case

Written by: Douglas B. Wentzel and Stella B. Haynes Kiehn

GENUINE ENABLING TECHNOLOGY LLC v. SONY GROUP CORPORATION

Before Dyk, Taranto, and Chen.  Appeal from the United States District Court for the District of Delaware.

Summary: The Federal Circuit affirmed summary judgment of noninfringement of means-plus-function claims where the patentee failed to justify omitting aspects of the disclosed structure in attempting to show that structure operated in substantially the same “way” as the accused products.

Genuine Enabling Technology (GET) sued Sony, alleging Sony’s PlayStation 3 and 4 consoles and controllers infringed GET’s patent relating to computer input devices that synchronize multiple input data streams. The district court construed “encoding means” in the asserted claims as a means-plus-function limitation subject to 35 U.S.C. § 112(f), and defined the corresponding structure as “the logic design at block 34 in Figure 4A [in GET’s patent] and equivalents thereof.” At the close of discovery, Sony filed a Daubert motion to exclude the opinion of GET’s expert witness that the accused Bluetooth modules were structurally equivalent to block 34 in figure 4A of GET’s patent. The district court granted Sony’s Daubert motion because GET’s expert failed to explain why he omitted parts of block 34 in opining that GET’s patent and Sony’s accused Bluetooth modules function in substantially the same “way.” Sony later moved for summary judgment of noninfringement, which the district court granted. The district court found that the reasoning in its Daubert ruling compelled concluding that GET failed to prove the accused Bluetooth modules operate in substantially the same “way” as block 34, and thus no reasonable jury could find infringement. The

Federal Circuit affirmed. The Federal Circuit noted that GET never disputed the district court’s claim construction ruling that the structure for the claimed “encoding means” was logic block 34 in GET’s patent. The Federal Circuit emphasized that block 34 has “many different elements,” which GET and its expert ignored without explanation in arguing that block 34 and the accused modules operate in the same “way.” The court also noted that GET’s expert gave inconsistent testimony about which aspects of block 34 matter to the structural equivalence analysis. Because GET’s expert failed to explain why his analysis of the “way” block 34 works left out various elements of that feature, the Federal Circuit agreed summary judgment of noninfringement was warranted because GET did not present enough evidence for a reasonable jury to find that the accused structure and block 34 were structurally equivalent.

Editor: Sean Murray