Last week wrapped up a busy January for the Federal Circuit. Oral arguments returned to a telephonic format, and arguments next month will be by video (although still audio-only for the public). As the month is now in the books, we thought we’d take one last look at a January precedential patent decision in a month with the Court’s written opinions largely dominated by the non-patent docket.
Precedential opinions: 10 total in January (4 in patent cases, 6 in non-patent cases)
Non-precedential opinions: 21 total in January (7 in patent cases, 14 in non-patent cases)
Rule 36: 15 total in January (9 in patent cases, 6 in non-patent cases)
Our patent case of the month: Kyocera Senco Industrial Tools Inc. v. International Trade Commission, No. 20-1046
Panel: Chief Judge Moore and Judges Dyk and Cunningham, with Chief Judge Moore writing the opinion
You should read this case if: you have a matter involving (1) whether an expert is qualified to testify from the perspective of a skilled artisan or (2) whether a claim term should be construed as a means-plus-function limitation
The concept of a “person of ordinary skill in the art” is ubiquitous in patent law, but Federal Circuit decisions about who qualifies as a skilled artisan are relatively rare. In our case of the week this week, the Federal Circuit clarified the necessary experience for an expert to testify from the perspective of an ordinarily skilled artisan. It also decided several other issues, including a dispute about whether a claim term should be construed as a means-plus-function limitation.
The owner of several patents on “linear fastener driving tools,” such as portable tools that drive staples or nails, filed a complaint with the International Trade Commission, alleging that the respondent was importing infringing products. During the resulting investigation, the administrative law judge (ALJ) found that a person of ordinary skill in the art relevant to the asserted patents would have at least two years of experience designing power nailers. The ALJ excluded the patentee’s proposed expert testimony on doctrine-of-equivalents infringement because the expert had no experience in power nailer design. But the ALJ nonetheless permitted the patentee’s expert to testify about literal infringement. The Commission ultimately found that the accused products infringed and rejected the respondent’s invalidity challenges.
The Federal Circuit vacated the Commission’s decision. We’ll focus on two of the Court’s holdings that we thought were particularly notable.
First, the Court held that the ALJ erred in admitting the patentee’s expert testimony on literal infringement. It was undisputed that the expert did not qualify as a skilled artisan under the ALJ’s definition: although the expert had advanced degrees in engineering and extensive experience designing fastener driving tools generally, he lacked experience in power nailer design in particular. The Court explained that “a witness must at least have ordinary skill in the art” to offer testimony from the perspective of a skilled artisan; otherwise the witness’s opinions “are neither relevant nor reliable.” That principle applies equally to testimony on literal infringement as it does to testimony on infringement under the doctrine of equivalents. The Court acknowledged that expert testimony is not necessarily required to prove literal infringement, unlike doctrine-of-equivalents infringement. But if a party seeks to offer expert testimony on literal infringement, the expert must possess the qualifications needed to testify from the perspective of a skilled artisan.
Second, the Court concluded that the ALJ should have construed the claimed “lifter member” as a means-plus-function limitation under § 112 ¶ 6 (§ 112(f) post-AIA). A claim term that does not use the word “means” is presumed not to be a means-plus-function limitation, but that presumption can be overcome if “the claim term fails to recite sufficiently definite structure” or “recites function without reciting sufficient structure for performing that function.”
Although “lifter member” does not use the word “means,” the Court held that the presumption was rebutted because “that claim term does not recite sufficiently definite structure.” On its own, “lifter member” is “a non-structural generic placeholder (member) modified by functional language (lifter).” The surrounding claim language likewise provided a “purely functional description” of the “lifter member”: the claims merely recite that the “lifter member” is moved by a certain clam element and lifts another claim element. The Court further explained that, although “lexicography can avoid application of § 112 ¶ 6,” the patent’s written description did not “provide a clear and unambiguous definition of ‘lifter member.’” The specification described “example[s] of a lifter member,” but it did not supply “a definition of the lifter member.”