22 F.4th 1369
Fed. Cir.2022Background
- Kyocera sued Koki at the ITC (Section 337) alleging infringement of multiple patents covering gas-spring/linear fastener driving tools and control methods; the dispute ultimately centered on the ’718 patent.
- The ALJ conducted claim construction, adopted a particular definition of the person of ordinary skill (requiring experience in powered nailer design), and made several evidentiary rulings, including partially excluding Kyocera expert Dr. Pratt from testifying under the doctrine of equivalents because he lacked power-nailer design experience.
- The ALJ initially found noninfringement (tool lacked a system controller) and rejected some invalidity challenges (concluding Pedicini did not teach a distinct main storage chamber); the Commission remanded to address unadjudicated claim limitations and inducement.
- On remand the ALJ found additional noninfringement (e.g., no displacement volume; initiation limitation not met) and insufficient intent to prove inducement; the Commission later reversed the ALJ on noninfringement for the ’718 patent and found inducement.
- Both parties appealed to the Federal Circuit. The panel vacated and remanded in part, addressing five principal issues: admissibility of Dr. Pratt’s testimony, construction of “driven position,” whether “lifter member” invokes 35 U.S.C. § 112 ¶ 6, meaning of “initiating a driving cycle,” and whether Pedicini teaches a distinct “main storage chamber.”
Issues
| Issue | Plaintiff's Argument (Kyocera) | Defendant's Argument (Koki) | Held |
|---|---|---|---|
| Admissibility of Dr. Pratt's expert testimony | Dr. Pratt should be allowed to testify on literal infringement and doctrine of equivalents despite lacking power-nailer design experience | Dr. Pratt should be excluded entirely because he lacks the ordinary skill in the art defined by the ALJ | ALJ abused discretion by admitting any of Dr. Pratt’s testimony; expert offering opinions from the vantage of a skilled artisan must possess at least ordinary skill in the art, so testimony on issues analyzed by that standard must be excluded |
| Construction of “driven position” | Broader: includes positions “at or near the bottom-most travel position” | Narrower: means the singular bottom-most travel position | Patentee acted as lexicographer; term construed as “at the bottom-most travel position” (narrow construction) |
| “Lifter member” — means-plus-function (§ 112 ¶ 6) | Term should be treated as structural (not means-plus-function) | Term is functional and invokes § 112 ¶ 6 | § 112 ¶ 6 applies; "lifter member" is a means-plus-function term and must be limited to structures in the specification and equivalents; remand to identify corresponding structures |
| “Initiating a driving cycle” — can pressing the safety contact element satisfy the claim? | The exit end of the safety contact element is the exit end of the mechanism, so pressing the safety contact element can meet the limitation | Safety contact element and exit end of the driving mechanism are distinct; pressing the safety contact does not necessarily press the mechanism exit end | The elements are distinct; pressing the exit end of a safety contact element does not satisfy the "initiating a driving cycle" limitation (Commission erred to the extent it conflated them) |
| Whether Pedicini teaches a distinct “main storage chamber” | Pedicini discloses the required chamber(s) and thus anticipates/obviates claim limitations | Pedicini shows only a single air chamber and does not disclose a distinct main storage chamber as claimed | Substantial evidence supports the ALJ’s finding that Pedicini contains only one structure and does not disclose a distinct main storage chamber; ALJ’s nonobviousness finding as to Pedicini upheld |
Key Cases Cited
- Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008) (expert admission reviewed for abuse of discretion; testimony must be relevant and reliable)
- AquaTex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320 (Fed. Cir. 2007) (doctrine-of-equivalents typically requires expert input; discussed expert testimony requirements)
- Endress + Hauser, Inc. v. Hawk Measurement Sys., 122 F.3d 1040 (Fed. Cir. 1997) (expert must be qualified; substantial credentials can justify admission)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (claim construction principles; give terms their ordinary meaning unless lexicography or disavowal applies)
- Thorner v. Sony Computer Ent. Am., 669 F.3d 1362 (Fed. Cir. 2012) (patentee lexicography requires clear definition to overcome ordinary meaning)
- Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc in relevant part) (means-plus-function § 112 ¶ 6/§ 112(f) framework and the presumption against means-plus-function when "means" is absent)
- Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206 (Fed. Cir. 1998) (functional "member" claim held subject to means-plus-function treatment)
- Becton, Dickinson & Co. v. Tyco Healthcare Group, 616 F.3d 1249 (Fed. Cir. 2010) (separately listed claim elements presumed distinct)
- TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364 (Fed. Cir. 2008) (disclosed alternative embodiments do not necessarily broaden claim scope beyond claim language)
- Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317 (Fed. Cir. 2012) (review of ITC factual findings is for substantial evidence)
- Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (U.S. 1997) (doctrine of equivalents framework)