Structural, Not Merely Functional Analysis, Governs Infringement of Means-Plus-Function Claims.By Mr Joshua Nelson Joshua Nelson is an American gospel singer and Hebrew teacher. Biography Background Nelson is Black and Jewish[1] (he has called himself "the KKK's worst nightmare"). He became fascinated with music when he was 8, living in Brooklyn. and Mr matthew F. Weil Revisiting the troublesome sixth paragraph of 35 U.S.C. s. 112, the U.S. Court of Appeals for the Federal Circuit reversed a jury verdict of infringement holding there was a lack of substantial evidence where the plaintiff had failed to provide a structural analysis of the means-plus-function limitation in a contested claim. CytoLogix Corp. v. Ventana Medical Systems, Inc., Case No. 04-1446 (Fed. Cir. Sept. 21, 2005) (Dyk, J.). At trial, CytoLogix and Ventana had agreed, contrary to the district court's wishes, to forego a Markman hearing A Markman hearing is a pre-trial hearing in the United States court system during which a judge hears testimony from both parties on the appropriate meanings of the relevant key words used in the claims of a patent, the infringement of which is alleged by the plaintiff. and to present expert witnesses to testify To provide evidence as a witness, subject to an oath or affirmation, in order to establish a particular fact or set of facts. Court rules require witnesses to testify about the facts they know that are relevant to the determination of the outcome of the case. before the jury regarding conflicting claim constructions. The Federal Circuit disapprovingly dis·ap·prove v. dis·ap·proved, dis·ap·prov·ing, dis·ap·proves v.tr. 1. To have an unfavorable opinion of; condemn. 2. To refuse to approve; reject. v.intr. noted in its opinion that when experts opine on claim construction before the jury, the risk of jury confusion is high, even when the district court makes it clear that its construction controls. After the jury returned its verdict of infringement, the district court entered a judgment for CytoLogix and an injunction against Ventana. Ventana appealed, arguing the jury verdict resulted from an erroneous erroneous adj. 1) in error, wrong. 2) not according to established law, particularly in a legal decision or court ruling. claim construction provided by the court. As neither party objected to the claim construction at trial, the Federal Circuit held that the issue on appeal was limited to whether the substantial evidence supported the verdict under the court's construction. One of the patents-in-suit contains the claim limitation "temperature controller means for regulating electric power," which is a means-plus-function limitation under s. 112 [micro] 6. As noted by the Court, in order to establish that the relevant structure in the accused device is "identical or equivalent to" the corresponding structure in the specification, the patent holder must do more than present testimony on the function of the structure. Here, the testimony presented by CytoLogix through its expert witnesses identified a microprocessor in the accused product that they argued was the "means for converting temperature data," and, therefore, it satisfied the district court's construction of the "temperature controller." The Federal Circuit, however, held that CytoLogix failed to compare the corresponding disclosed structure of the "temperature controller" in its patents to the structure of the accused device. Accordingly, the Federal Circuit held that CytoLogix failed to present substantial evidence of infringement of that claim and reversed the jury verdict of infringement. Practice Note When arguing infringement of a claim with means-plus-function limitations, conduct a structural analysis of the accused product and compare it to the structure disclosed in the specification. The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances CIRCUMSTANCES, evidence. The particulars which accompany a fact. 2. The facts proved are either possible or impossible, ordinary and probable, or extraordinary and improbable, recent or ancient; they may have happened near us, or afar off; they are public or . McDermott Will & Emery emery: see corundum. emery Granular rock consisting of a mixture of the mineral corundum (aluminum oxide, Al2O3) and iron oxides such as magnetite (Fe3O4) or hematite (Fe2O3). 600 Thirteenth Street NW Washington, DC 20005-3096 UNITED STATES United States, officially United States of America, republic (2005 est. pop. 295,734,000), 3,539,227 sq mi (9,166,598 sq km), North America. The United States is the world's third largest country in population and the fourth largest country in area. Tel: 2027568000 Fax: 2027568087 E-mail: pdevinsky@mwe.com URL URL in full Uniform Resource Locator Address of a resource on the Internet. The resource can be any type of file stored on a server, such as a Web page, a text file, a graphics file, or an application program. : www.mwe.com Click Here for related articles (c) Mondaq Ltd, 2005 - Tel. +44 (0)20 8544 8300 - http://www.mondaq.com |
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