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USFC2006-1168-04
{2C18B1F5-F7F5-4439-82AA-4B3681
F217B2}
{70884} {32-060622
175219}{060806}
APPELLEE'S
BRIEF
WEST/CRS
No.
06-1168
t_lnitri_ _tates
of Appeals
_ourt
for
the
_eheral
(girrttit
o
I
DESA
IP
Plaintiff-Appellant,
VS.
EML
COSTCO
TECHNOLOGIES,
WHOLESALE
LLC AND
CORPORATION,
Defendants-Appellees.
Appeal
from
Tennessee
the United
in Case
States
District
No. 03-04-O160-TRA
Court for
UGER,
the Middle
Judge
Aleta
District
of
A. Trauger
CORRECTED
BRIEF
FOR
DEFENDANTS-APPELLEES
ROGER L. COOK
IRIS SOCKEL MITRAKOS
'U.S. COU,gT 07 APPE_ALS FOR
H = F =DERh . CIRCUIT
TOWNSEND AND TOWNSEND AND CREW LLP
Two
Embarcadero
San Francisco,
,_tttV _-;t!@'A'
Center,
CA
8th Floor
94111
Telephone:
(415)
576-0200
Facsimile:
(415)
576-0300
, .11
Attorneys
_
COUNSELPRESS.LLC
for
(202) 783-7288 * (888) 277-3259
Defendants-Appellees
Counsel
"None"
for appellees
if applicable;
1.
of Interest
EML Technologies
and Costco
use extra sheets
Costco
Wholesale
certifies
the following
(use
if necessary):
The full name of every party or amicus
EML Technologies,
2.
Certificate
represented
by me is:
LLC
Corporation
The name of the real party in interest
the real party in interest)
represented
(if the party named
in the caption
is not
by me is:
N/A
3.
All parent
corporations
and any publicly
or more of the stock of the party or amicus
held companies
curiae
represented
that own
10 percent
by me are:
N/A
4.
The names
of all law firms and the partners
the party or amicus
now represented
expected
in this court are:
Townsend
Angus
to appear
and Townsend
A. MacDonald,
that appeared
by me in the trial court or agency
and Crew LLP, Roger
Leonard
or associates
J. Augustine
or are
L. Cook, Iris Sockel Mitrakos,
for
TABLE
OF CONTENTS
Paa
I.
STATEMENT
OF RELATED
CASES
II.
STATEMENT
OF JURISDICTION
III.
COUNTER-STATEMENT
IV.
STATEMENT
V.
COUNTER-STATEMENT
...............................................................
1
....................................................................
1
OF THE ISSUES
....................................................
1
OF THE CASE ............................................................................
OF FACTS
2
..............................................................
4
A.
The '066 Patent ...........................................................................................
4
B.
Prosecution
of the '066 Patent
6
C.
The Action
Below ......................................................................................
D.
The Markman
1.
2.
3.
4.
5.
VI.
SUMMARY
VII.
ARGUMENT
......................................................................
8
10
10
Applicability
of § 112 ¶6 To the "Means" Terms
of the '066 Patent ...........................................................................
10
Interpretation
of Claim Elements in accordance
with § 112 ¶6 ..................................................................................
11
Specific
.......................................................
12
.............................................................
12
Markman
a)
Plaintiffs
b)
Defendants'
The District
Testimony
Witnesses
Witnesses
Court's
OF ARGUMENT
Markman
.........................................................
Ruling ...........................................
.........................................................................
.....................................................................................................
Standard
B.
Applicable
2.
...............................................
Characteristics
of a Person of Ordinary Skill in
the Art ............................................................................................
A.
1.
Proceedings
Application
of Review
..................................................................................
Legal Principles
.....................................................................
14
16
19
23
23
23
The Federal Circuit Reviews Judgments
Not
Opinions ........................................................................................
23
Construction
of Means Plus Function Claim
Limitations .....................................................................................
24
TABLE
C°
DESA Has Failed to Overcome the § 112 ¶6
Presumption
.............................................................................................
1.
2.
The District Court Correctly
"Sensor Means for Detecting
Applied § 112 ¶6 to
Motion" ..........................................
24
28
The District Court Correctly Applied § 112 ¶6 to
"Control Circuit Means" ................................................................
31
The District Court Correctly Applied 9112 ¶6 to
"Switching
Means " .......................................................................
33
Structure Defining "Sensor Means For Detecting
Motion" Under § 1-12 ¶6 ...........................................................................
34
3.
Do
OF CONTENTS(con't)
1.
Judge Trauger's§
112 ¶6 Interpretation
"Sensor Means For DetectingMotion"
a)
b)
c)
d)
e)
f)
g)
.
DESA's
of
Is Correct
........................
34
Defining the Function Of the "Sensor
Means" Claim Elements ......................................................
35
The PIRs Do Not, By Themselves,
"Detect
Motion" Within The Meaning Of The
Claims .................................................................................
35
The Claim Context Shows That Motion Is
Detected By the Combined PIRs and
Selection Circuitry ..............................................................
37
"Pulse Counting"
from Non-Motion
38
Distinguishes
Motion
................................................................
Pulse Counting Does Not Merely
"Enhance" Motion Detection ..............................................
39
Limiting The "Senso_r Means" To The
PIRs Arid Selection _Sircuitry Of The
Patent Specification,
And Equivalents,
Is
Not Unduly Restrictive
.......................................................
41
The Jensen/McCavit
Declaration
Supports
Inclusion Of Pulse Counting In The
"Sensor Means For Detecting Motion"
Claim Elements ...................................................................
42
Arguments
Have No Merit ..............................................
a)
DESA's
Misuse
of the "Cardinal
b)
DESA's Misapplication
of the Rodime
Case .....................................................................................
ii
Rule" ..............................
43
43
44
TABLE
c)
d)
3.
4.
E.
Express Inclusion of"Pulse
Claim 12 Does Not Defeat
Court's Claim Interpretation
Counting"
In
The District
................................................
Error In Claim
12 .......................................
45
47
(1)
Probable
(2)
Counter-Evidence
12 ................................
48
(3)
The "Consistent
Interpretation"
Maxim Does Not Apply Here ...................................
52
To Claim
47
DESA's Demonstration
Does Not Defeat Judge
Trauger's § 112 ¶6 Definition of "Sensor Means '
for Detecting Motion" ...................................................................
52
This Court Should Not Disregard The Testimony
Of Professor Massengill
................................................................
53
55
The District Court's Interpretation
of the Claimed
Function of "Control Circuit Means" Is Correct ...........................
56
The District Court's Identification
of Structure
Corresponding
to the Claimed Function of
"Control Circuit Means" Is Correct ...............................................
56
If This Court Were to Conclude That The District
Court's § 112 ¶6 Interpretation
of "Sensor Means for
Detecting Motion"
Erroneously
Included Pulse
Counting, Then The "Control Circuit Means" Should
Include Pulse Counting (And Equivalents)
.............................................
60
2.
VIII.
Court's Construction
Is Not
With The Intrinsic Record ..............................
Structure Defining "Control Circuit Means" Under
§112 ¶6 .....................................................................................................
1.
F.
The District
Inconsistent
OF CONTENTS(con't)
CONCLUSION
..................................................................................................
,°°
111
61
TABLE
OF AUTHORITIES
Cases
Asyst Techs., Inc. v. Empak, Inc.,
268 F.3d 1364 (Fed. Cir. 2001)
...........................................................................
40
Becton Dickenson
& Co. v. C.R. Bard, Inc.,
922 F.2d 792 (Fed. Cir. 1990) ............................................................................
19
Cellnet Data Sys., Inc. v. Itron, Inc.,
17 F.Supp.2d
1100 (N.D. Cal. 1998) ...................................................................
25
Chiuminatta
145 F.3d
Concrete Concepts, Inc. v. Cardinal Indus., Inc.,
1303 (Fed. Cir. 1998) .....................................................................
39, 40
Cole v. Kimberly-Clark
Corp.,
102 F.3d 524 (Fed. Cir. 1996) .......................................................................
25, 26
Conopco,
46F.3d
Inc. v. May Department
Stores Co.,
1556 (Fed. Cir. 1994) .............................................................................
19
Elkay M_fg. Co. v. Ebco Mfg. Co.,
192 F.3d 973 (Fed. Cir. I999) .............................................................................
44
Envirco Corp. v. Clestra Cleanroom,
Inc.,
209 F.3d'1360
(Fed. Cir. 2000) ..........................................................................
25
Finnigan
Corp. v. ITC,
180-F.3d 1354 (Fed. Cir. 1999) ...........................................................................
27
Generation
263 F.3d
40
H Orthotics, Inc. v. Med. Tech., Inc.,
1356 (Fed. Cir. 2001) ...........................................................................
Greenberg v. Ethicon Endo-Surgery,
lnc.,
91 F.3d-1580 (Fed. Cir. 1996) .......................................................................
1MS Technology,
lnc. v. Haas Automation,
Inc.,
206 F.3d 1492 (Fed. Cir. 2000) .......................................................................
JVW Enter.,
424 F.3d
lnc. v. lnteract Accessories,
Inc.,
1324 (Fed. Cir. 2005) ....................................................................
Laitram Corp. v. Dexnord, lnc.,
939 F.2d 1533 (Fed. Cir. 1991) .......................................................................
25, 30
6, 61
43, 44
6, 61
Linear Tech. Corp. v. Impala Linear Corp.,
379 F.3d 1311 fled. Cir. 2004) ..........................................................................
25
Nilssen v. Magnetek,
1999 WL 982966
25
lnc.,
(N.D. I11. 1999) .......................................................................
Nilssen v. Motorola lnc.,
80 F.Supp.2d
921 (N.D.Ill.
2000) ........................................................................
iv
26
TABLE
OF AUTHORITIES
(con't)
O.I. Corp. v. Tekmar Co.,
115 F.3d 1576 (Fed. Cir. 1997) ...........................................................................
30
...................................................
Phillis
v. AWH Corp.,
41f_.3d
1303 (Fei:l. Cir. 2005), cert. denied, A WH Corp. v.
Phillips, 126 S.Ct. 1332 (U.S. 2006) .......................................................
23, 52, 54
Sa_2e Prods. v. Devon Indus.,
6 F.3d 1420 (Fed. Cir. 1997) ...............................................................
23, 26, 30
Stratoflex, Inc. v. Aeroquip
713 F.2d 1530 (Fed.Cir.
Tech. Licensing
67 U.S.P.Q.2d
Corp.,
1983) ...........................................................................
Corp. v. Videotek, Inc.,
1842 (N.D.Cal. 2002) ..................................................................
23
26
TurboCare Div. of Demag Delavas Turbomachinery
Corp. v. GE,
264 F.3d 1111 (Fed. Cir. 2001) ...........................................................................
30
York Prods., Inc. v. Central Tractor Farm & Family Ctr.,
99 F.3d 1568 (Fed. Cir. 1996) .............................................................................
27
Statutes
35 U.S.C.
§112 ¶6 .............................................................................................
passim
Treatises
Landis,
Patent
Claim Drafting
§35 ..........................................................................
12
STATEMENT
Io
OF RELATED
There are no related
II.
STATEMENT
Appellees
III.
cases.
OF JURISDICTION
have nothing
to add to Appellant's
COUNTER-STATEMENT
A.
Judgment)
interpretation
external
Pursuant to FRCP 54('0)
or vacated
means for detecting
to said apparatus" ("sensor
means") claim element,
of Judgment
should be reversed
of the "sensor
statement.
OF THE ISSUES
Whether the Stipulation
(Stipulated
CASES
because
the District
a [first] predetermined
means for detecting
Court's
condition
motion" or "sensor
found in each of the claims 6, 9, 10 and 11, was in error,
either because
1.
The District Court's
the "sensor
2.
The District Court's
structure
element
B.
means,"
means" claim element
corresponding
holding
that 35 U.S.C.
§112 ¶6 applies to
is in error; or
identification
to the claimed
pursuant to § 112 ¶6 of
function of the "sensor
means" claim
is in error.
If error has occurred in connection
with interpretation
of"sensor
whether
1.
"control
or
The District
circuit means"
Court's
holdings
and "switching
that § 112 ¶6 applies
means"
claim elements
to the
are in error;
2.
structure
The District
corresponding
means"
Whether,
regard to the structure
cursory
fashion
challenge
the District
IV.
claim elements
corresponding
Court's
means,"
in the "sensor
in the "control
STATEMENT
means"
each &the
extensive
Carnal,
other than in a
has waived
and "switching
claim terms.
pulse counting
CASE
a three day Markman trial in which
expert opinion
testimony
as to the meaning
an electrical
engineering
At the conclusion
for and conduct
interpretations
proposed
propounded
expert.
her Markman
claim interpretations,
by DESA.
2
of the trial
of certain
of the trial, as to the remaining,
As to the disputed claim elements,
agreed with Defendants'
of
in the asserted '066 patent claims 6, 9,
disputed claim terms, Judge Trauger rendered
time, on the record.
means".
then whether
During the course of the trial, the parties agreed to interpretation
of the subject
the fight to
included
10 and 11. Judge Trauger was aided during preparation
Charles
function,
with
claim element.
disputed claim terms contained
by Professor
holdings
Court erroneously
claim element,
circuit means"
Court's
to any claim elements
means"
that the District
District Court Judge Trauger conducted
she heard and received
the District
with regard
circuit
circuit
are in error.
of the brief, DESA
holdings
to § 112 ¶6 of
of the "control
to the claimed
"control
OF THE
pursuant
functions
by never addressing
If this Court concludes
counting"
is included
means"
in the conclusion
other than "sensor
"pulse
identification
to the claimed
and "switching
3.
C.
Court's
rulings
orally, one at a
Judge Trauger largely
and rejected the claim
Most importantly to this appeal, Judge Trauger concluded that the critically
disputed "sensor means''_ claim element must be construed in accordance with the
requirements of 35 U.S.C. § 112 ¶6 and that, so construed, the "sensor means"
claam element requires "pulse counting."
From the very outset of the case, commencing with the Initial Case
Management Conference Statement, Defendants had asserted that the accused
product did not infringe the asserted claims because Defendants' product did not
employ "pulse counting" and, properly construed in accordance with § 112 ¶6, each
of those claims necessarily required pulse counting. JA 1245-47.
Following Judge Trauger's Markman Ruhng, DESA and the Defendants
entered into a Stipulated Judgment [JA 0028-31 ] which provides that, in view of
Judge Trauger's Markman ruling, Defendants' accused product does not infringe
the asserted claims; and, unless the District Court's claim interpretation rulings
with regard
to the sensor
means
claim element
the stipulated
judgment
defendants."
JA 0030 at ¶¶ 6, 7, 9. DESA
stipulated
contain
of noninfringement
judgment
ofnoninfi'ingement
'pulse count'
or an equivalent,
could not prove infringement
are "reversed
finally resolves
acknowledges
because
DESA's
claim."
DESA
product
on appeal,
claims
that it entered
Defendants'
[and, as a result,]
of any asserted
or vacated
against
into the
does "not
concede[s]
that _t
BR 30.
i "Sensor means" refers to claim elements A and I [JA 60-65], sometimes also
referred to as "sensor means for detecting motion," not to be confused with claim
element J ("second sensor means" or "sensor means for detecting nighttime.")
Id.
In view of the foregoing stipulation and concession, unless this Court
reverses or vacates Judge Trauger's interpretation of the "sensor means" claim
element, DESA has formally and expressly waived its right to relief as to the
remaining claim elements and, therefore, this is appeal as to those elements -absent reversal or vacation of the sensor means claim element in such a way as to
eliminate
thepulse
In addition,
Requested
requirement
-- is moot and need not be addressed.
the relief requested
[BR 57-60]
[Id. at ¶ 2 a)-g)],
incorrectly
count
includes
as to which
construed.
by DESA
requests
DESA
As a result,
in its Conclusion
for reinterpretation
has not explained
DESA has waived
and Relief
of six claim elements
why they are, allegedly,
any right to relief as to those
claim elements)
V.
COUNTER-STATEMENT
A.
The '066 Patent
The '066 patent
for detecting
which
OF FACTS
discloses
and claims a security
the motion of a person
causes, during the night-time,
illumination
in response
light having
or other object, and a control
a lamp to illuminate
to the detection
a sensor means
circuit means
at a high level of
of such motion.
2 The only conceivable
argument in DESA's opening brief, related to these claim
elements, is that Defendants'
proposed interpretation
is propounded
by Professor
Massengill
(a highly qualified professor of electrical engineering),
whose
credentials
DESA inexplicably
attack. If this Court agrees, as it should, that
Professor Massengill
is qualified to express his opinions, DESA's challenge to
these items should be dismissed.
The sensor means for detecting motion includes a passive infrared (PIR)
sensor. A PIR detects changes in infrared radiation. The sensor means for
detecting motion also includes a pulse counting circuit designed to distinguish
between PIR signals which result from changes and infrared radiation caused by
stationary objects changing temperature, and other PIR signals which result from
changes in infrared radiation caused by moving objects. As a consequence, the
pulse counting circuitry is part of the sensor means for detecting motion.
All agree that the only embodiment disclosed in the patent employs pulse
counting, and that Defendants' accused product does not employ pulse counting.
The question is whether or not the asserted claims are limited to pulse counting and
equivalents.
All of the disputed
other words,
all disputed
by a recitation
rebuttably
structure
presumed
to perform
claim element,
performs
elements.
claim elements
include
and, therefore,
to be governed
Court correctly
by 35 U.S.C.
concluded
the entire recited
the claimed
"means
format.
for" followed
of these claim elements
§112 ¶6.
that the § 112 ¶6 resumption
because
In
is not
none of them recite sufficient
function.
Court then correctly
and then correctly
plus function
the phrase
interpretation
as to any of the claim elements
The District
which
are in means
of function
The District
overcome
claim elements
identified
identified
(i.e. recited)
the claimed
the structure
function
function
of each
from the specification
for each of the disputed
claim
is
B.
Prosecution
The patent
prosecuted
Perhaps
application
by another
was prepared
patent
attomey
not fully understanding
prosecution
(claim
of the '066 Patent
Specifically,
has seized
during
prosecution
limitation
counting
preparation
to be part of the motion
circuit to the "control
Although
claim
circuit"
to argue that the pulse counting
circuit,
rather than the motion
cannot
be included
element
of asserted
attomey
detection
issued
claims
would be contrary
the
-- one of which
the prosecution
as claim
12, which
circuit component,
intended
circuitry
and --
the pulse counting
-- assigned
the pulse
means.
circuitry
detection
in the structure
attorney,
Court is in error.
12 has not been asserted in the litigation,
DESA
elements
preparation
apphcation,
what eventually
attorney, and
See JA 198, 246.
into the claims
to a "pulse counting"
that the patent
circuit component
anomalies
of the '066 patent
includes
evidence
law firm.
upon to argue that the District
by amendment
despite
in a different
several
attorney introduced
an express
and filed by one patent
the work of the patent
attorney introduced
12) DESA
Application
is a component
circuit and, further,
supporting
the "control
6, 9, 10 and 11 because
to the doctrine
of "claim
it has been used by
of the control
that pulse counting
circuit means"
to so construe
differentiation.
claim
that circuit
''3
3 Even if this were true, which it is not, §112 ¶6 trumps the claim differentiation
doctrine.
IMS Technology,
Inc. v. Haas Automation,
Inc., 206 F.3d 1442, 1431-32
(Fed. Cir. 2000); Laitram Corp. v. Dexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir.
1991) (claim differentiation
only a "guide").
6
During prosecution, the prosecution attorney notified the patent examiner of
the prior art motion detection two-level hghting system of Nippon Ceramic
576-77,
1342], and submitted
applicant's
employees,
not have "manual
generallv
recited
who distinguished
override
disclosed
claimed"
declaration
(presumably
the reader
to understand
"recited
reading
that the applicant
included
as being
the applicant's
wished
public
that pulse counting
just in claim
notice
counting
or other features
as being "generally
patent
in the claims,"
attorney)
[] as
as
examiner
would
to appreciate
for purposes
[] claimed,"
reasonably
not merely
format,
understand
that pulse counting
this declaration
of claim interpretation
i.e. present
and
to have intended
were in means-plus-function
of § 112 ¶6. Accordingly,
claimed,"
disclosed
the author of the
appears
was "generally
in the file history
function,
is "generally
in all claims
was
serves
-- which is
(or at least not
12).
In the file history,
are underlined
the patent
by virtue
on the basis that it did
and "pulse
application
"recited
that pulse counting
this statement
in the claims
an important
* Claim
counting"
in the claims. ''4 Given that all claims
a competitor
Ceramic
two of
1344.
"pulse
and "other features"
and McCavit,
and claimed"
in the instant
JA 463-65,
characterized
of Jensen
Nippon
[] as disclosed
and claimed
in the claims."
Having
the declaration
[JA
the references
in handwriting.
to "manual
override"
JA 1344. 5 A competitor
12 is the only claim where
pulse counting
reading
is specifically
5 This declaration
is from the '066 file history [JA 354-577,
underlining
is more distract in JA 1344 than at JA 463-465.
7
and "pulse counting"
the file history
recited.
at 463-465].
The
would reasonably understand that the patent examiner regarded these assertions as
significant evidence in his decision immediately thereafter to allow the claims.
A competitor reading the file history would reasonably understand that, by
explicitly calling out "manual override," and "pulse counting" to distinguish their
claims from Nippon Ceramic, and only mentioning but not explicitly identifying
"other [distinguishing] features," the applicant intended the examiner to understand
that "manual override" and "pulse counting" were by themselves sufficient to
distinguish
identified
all claims
if necessary.
understand
by virtue
Consequently,
function
Ceramic,
By this statement,
that the applicant
in the claims
notice
from Nippon
intended
but that other features
a competitor
to convey
could also be
would reasonably
that pulse counting
was included
of § 112 ¶6.
the Jensen-McCavit
as to the meaning
Declaration
of the claims
serves an important
to generally
included
public
"pulse
counting."
C.
The Action
At the very outset
product
did not infringe
explicitly
manual
limited
override
although
necessarily
counting,
1245-47.
Below
of the case, Defendants
claims
to "manual
feature;
those claims
and because
DESA
1-5, 7, 8, 12 and 13 because
override,"
whereas
and did not infringe
were not explicitly
must be construed
informed
the accused
product
claims
limited
in accordance
the accused
that the accused
those claims
product
are
did not have a
6, 9, 10 and 11 because,
to "manual
override,"
with § 112 ¶6 to require
does not include
they
pulse
pulse counting.
JA
Subsequently, DESA did not assert claims 1-5, 7, 8, 12 and 13 ("manual
override claims"), but did assert claims 6, 9, 10 and 11 ("asserted claims"), arguing
that those claims should not be construed in accordance with § 112, ¶6 and,
alternatively, if construed m accordance with §112 ¶6, the supporting structure
does not include the pulse counting circuitry so that the claims are not limited to
products which include pulse counting.
Imtially the District Court set a Markman
simultaneous
exchange
exchange
of opposition
first, a tutorial
of opening
briefs,
and, second,
At the conclusion
briefs,
of the briefing
announced
that it wished
entirely
new round
followed
for
by simultaneous
by a two-day
hearing
consisting
of,
process,
declarations
an entirely
during
which
supporting
the parties
the briefs,
new roster of expert
DESA
witnesses
at the heanng.
Court generously
granted
of expert declarations,
both sides tweaked
and in the hearing,
governed
to introduce
by three days of testimony
Although
which provided
argument.
briefs and expert witness
The District
to be followed
to be followed
exchanged
and new testimony
schedule
their fundamental
by § 112 ¶6, and did/did
DESA's
request,
from an entirely
which
led to an
new round
of experts,
and argument
regarding
claim interpretation.
their positions
somewhat
during
arguments,
not require
9
i.e. that the claims
pulse counting,
the briefing,
were/were
remained
not
the same.
D.
The Markman
1.
DESA
electrical
Proceedings
Characteristics
contended
engineer
of a Person
that a person
of ordinary
with two years industrial
experience
a person
another
discipline
with about two to four years of practical
school
degree
industrial
a bachelor's
in designing
products;
in designing
and building
experience
Defendants
in designing
disagreed
concepts
familiar
to switching
understood
by any electrical
electrical
lighting
engineer
products,
2.
between
engineer,
engineer.
had no prior lighting
claim elements
of ordinary
means"
and the like "connote
Carlson
skill would
admitted
industry
JA 111-12.
that the experience
and claims
DESA
from witnesses
that the structural
10
easily
William
for DESA's
to
issues were
-- a concept
Raper,
motion
an
sensing
JA 1359-65.
Terms
of the '066
that § 112 ¶6 applies to the
Carlson
and Raper that
that terms like "sensor,"
to persons
needed
were devoted
witness
experience.
the presumption
structure"
and five years of
¶6 To the "Means"
understand
design
the only lighting
responsibility
of§l12
with testimony
persons
However,
JA 0732.
who took over design
Applicability
Patent
whereas
in
with a high
lighting products.
two levels of illumination
DESA attempted to overcome
disputed
education
since the patent
or science
industrial
or person
with this only to the extent
to an electrical
with regard
technical
and building
to be in the field of lighting products,
and building
degree in engineering
lighting products;
and two years of practical
Skill in the Art
skill in the art would be an
lighting
experience
holding
of Ordinary
of ordinary
"control
circuit
skill in the art.
terms in the various
claim elements
did not connote "sufficient structure to perform the entire recited functions" of
those claim elements
Massengill,
-- a conclusion
agreed.
Interpretation
§112¶6
In construing
"sensor
that PIRs are motion
triggers."
by moving
temperature
motion
already
of pulse counting
objects
criticizes
objects.
Massengill
a PIR detects
changes
did not produce
in infrared
changes
radiation
for lacking
entirely
or, as Defendants
This is a false issue.
is merely
false
incorrect
radiation.
in infrared
caused
JA
radiation
by changes
in
JA 237, 1341.67
contends,
energy.
by Q1/Q2
in infrared
BR 15. Yet, this attack is focused
infrared
takes the position
of [pulse counting]
is to distinguish
industry.
motion
DESA
with
the flaw at the core of DESA's
detects
from changes
Professor
detected
reveals
Pulse counting
of non-moving
DESA
Professor
in accordance
motion,"
and that "the purpose
BR 14. This statement
The purpose
caused
of Claim Elements
means for detecting
detectors
unwanted
claim interpretation.
755.
expert,
JA 1119-52.
3.
so that certain
with which a Defendant's
experience
in the lighting
upon whether,
contend,
It is inconceivable
detects
as DESA
changes
that persons
in
who
6 This document,
"Instructions"
for the Heath Zenith (a DESA subsidiary)
"Reflex"
SL-5315A Pulse Count Motion Sensor Light Control, was cited as prior art in the
file histories [JA 230-237, 568-575] and is part of the intrinsic record.
7 Even DESA's technical expert, Professor Paulus, agrees that PIRs detect infrared
energy. JA 171. Moreover, rather than describe PIRs as motion detectors,
Professor Paulus says that they are used in motion detectors.
Id. While DESA
gives short shrift to the physical operation of a PIR, Professor Massengill
explains
it in detail. JA 755. DESA never contradicted
Professor Massengill's
explanation,
nor could it do so.
11
designed the circmt of the '066 patent did not understand that a PIR detects
changes in infrared energy. The circuit itself demonstrates a sophisticated
awareness of this indisputable physical fact, simply by virtue of the intricately
designed selection circuitry -- including pulse counting, which is specifically
employed to distinguish changes in infrared radiation caused by moving objects
from other changes in infrared radiation caused by temperature changes in nonmoving objects. JA 237, 1341.
While DESA argues that some of the selection circuitry is used to
distinguish the motion of human beings from other motion, this cannot be said of
pulse counting. The Heath/DESA product literature unequivocally states that the
purpose
of pulse
of non-moving
counting
objects.
4.
the argument
Markman
Plaintiffs
J. Patterson.
that, unlike
invoking
§ 112 ¶6. BR 16-17.
is commonly
If anything,
DESA
Mr. Patterson
by reference
to Landis,
unpersuasive,
since Landis
merely
and legally
as an expert.
Patent
Claim
prosecution
DESA's
Drafting
12
by
arts without
to support
unsupportable
states that § 112 ¶6 claims
arts, and does not state that claims
was to support
followed
has cited no legal authority
this unique
credibility
testimony
arts, the word "means"
used in the electrical
Mr. Patterson's
electrical
in temperature
Witnesses
the mechanical
of function
undermines
changes
Testimony.
The thrust of Mr. Patterson's
recitation
novel proposition.
motion from
JA 237, 1341.
Specific
a)
Mark
is to distinguish
attempt
this
testimony
to support
§35 [BR 17] is
are common
in means plus function
format
in the
are
interpreted differently with regard to § 112 ¶6, depending upon whether they are in
the mechanical or electrical arts.
William
a PIR actually
Raper.
senses the difference
against
a reference
motion
detection.
construe
background,
BR 17-18.
the claims
quality
strictly
-- as though
world
is round.
The thrust of Mr. Raper's
produced
in the lighting
industry
With this testimony,
competitors
knowledge
argument
should be rejected.
to extrinsic
DESA
testimony
with substantial
refer to this as
this Court to
it is indisputable
that the
to check their
the patent claims.
is directly
experience
body
of the most suspect
should not be required
Mr. Raper's
by a moving
requests
evidence
at the door when they construe
engineer
was to say that, while
energy
the world were flat, even though
DESA's
an electrical
persons
according
scientific
Evans,
in infrared
testimony
This
contradicted
in the lighting
by Mr.
industry.
JA 731-35.
Raper's
nothing
Demonstration.
This demonstration
more than that a PIR generates
person
or other object
causes
a change
[BR 19-21] "exhibited"
an electrical
in infrared
signal when the motion
radiation
falling
of a
on the PIR
sensor.
Professor
Paulus.
The referenced
significant
only if the claims
the claims
are construed
referenced
testimony
Stephen
systems.
DESA
were not construed
in accordance
of Professor
B. Carlson.
testimony
in accordance
Paulus
[BR 21] is
with § 112 ¶6. If
with § 112 ¶6, as they must be, the
Paulus
Mr. Carlson
does not present
of Professor
must be disregarded.
is presented
Mr. Carlson
13
as an expert in control
to challenge
Defendants'
assertion
that a PIR detects changes in infrared radiation. BR 21-23. While DESA presents
Mr. Carlson to testify that the "sensor means for detecting motion," control circuit
means," and "switching means" claim elements "connote structure to me" [BR 22],
Mr. Carlson has admitted that those claim elements do not connote
structure
to perform
necessary
the recited
to overcome
the presumption
b)
Scott
Evans
-- a highly
designing
patent.
Evans.
motion
Where
Witnesses
For Defendants
qualified
electrical
detection
lighting
and other components,
[JA1119-53],
as would be
that § 112 ¶6 applies.
Defendants'
the patent
those components
claim elements
sufficient
s
to fully understand
engineer
with considerable
systems
did not assign
the patented
-- built the system
specific
values
a working
Mr.
experience
described
to the resistors,
Mr. Evans relied upon his expertise
to build and demonstrate
circuit,
in the
capacitors
to assign values
device.
JA 730-35,
to
1181-
82.
J. Michael
case law examples
Professor
Professor
circuit,
Thesz.
where
A true patent
expert
(JA 738-39),
the § 112 ¶6 presumption
Massengill
Massengill.
referred
using the values provided
was and was not overcome.
to these examples
To confirm
Mr. Thesz provided
in his analysis.
and illustrate his analysis
by Mr. Evans,
Professor
Massengill
JA 759-
of the patented
created
s Defendants
follow DESA's convention
of referring to the witnesses' written
statements,
which were read into the record, rather than the actual transcripts,
clarity and to avoid transcription
errors.
14
JA
a
for
SPICE simulation of the circuit shown and described in the patent. JA 757, 1118,
1179-80. SPICE is the industry-standard circuit simulation software -- a
preeminent analytical tool used by circuit designers worldwide -- that Professor
Massengill uses on a frequent basis in his classes at Vanderbilt University and in
research, ld.. For the PIR signal, Professor
of Q 1 and Q2 as described
Professor
Massengill
DESA
vaguely
Massengill
by Mr. Raper's
oscilloscope
explained
the operation
nit-picks
at Professor
he never worked
in the "lighting
DESA's
experts
a counter-simulation
challenged
DESA's
the accuracy
experts
explanation,
731-32,
1278, 1290,
elements
sufficient
overcome
where
structural
perform
structure
simulation.
of Professor
but merely
[BR 25-27]
none of
Similarly,
Massengill's
expanded
or
none of
PIR
upon Professor
and industry
agreed with Mr. Carlson
to perform
Massengill
Paulus's
publications.
JA
allowed
function
format,
that, as to each of the claim
none of those claim elements
the entire recited
function,
as is needed
to
JA 759-767.
also noted that, in case law examples
there was sufficient
the recited
expertise
of the circuit of the patent,
Massengill's
in means-plus-function
description
JA 755.
per se; however,
by Mr. Evans
the § 112 ¶6 presumption.
Professor
In addition,
1292.
Massengill
expressed
recited
did not contradict
of a PIR.
industry"
the accuracy
and was confirmed
Professor
Thesz,
challenged
which
PIR explanation
of Professor
trace.
Massengill's
because
produced
used the PIR input signals
structure
to overcome
him to envision
whereas,
a specific
in the disputed
15
provided
the presumption,
structure
by Mr.
the
satisfactory
means-plus-function
to
claim
elements, the structural language is consistently too general to permit him to do
that. Id.
Professor
supporting
Carlson.
Massengill
structure
specification
Massengill
the PIR to produce
location
DESA
the requisite
Professor
witness
where
his identification
structure
identified
"sensor
means"
detector,
of
by Mr.
Massengill
selection
by the "selection
labeled
"Node A."
Massengill's
challenge
JA 769-70.
particular
to Professor
Massengill's
incorrectly
The Distriet
Court's
opening
Markman
to parlay the District
with regard to a confusing
during
circuitry
-- a
Here again, no
analysis
level, e.g. arguing
Massengill
circuitry
which
of the circuit.
opinion
regarding
that a PIR is a motion
described
the structure
ofa PIR with its
circuitry.
attempts
"puzzlement"
radiation
upon exit from the selection
Professor
DESA's
in the patent
of infrared
of either the PIR by itself, or the combination
5.
9
any change
a signal, but was not selected
than that Professor
and operation
DESA
as "motion"
has been at the semantic
rather
associated
that the circuit described
low voltage
challenged
In summary,
statement
law three days later during
9THE COURT:
Continued
from the supportmg
testified
did not regard
to produce
counsel
departed
each instance
JA 767-79.
Professor
caused
addressed
DESA's
Ruling.
Court's justifiable
[and incorrect]
into an alleged
closing
But you're saying
on the next page
16
statement
erroneous
argument.
expression
of
by DESA's
understanding
BR 27-29.
each claim is a separate
of the
Dunng the referenced portion of closing argument [JA 928, Tr. 588-89], the
District Court was simply pressing DESA's counsel to explain why, in this singleembodiment case, the "specification"
from which the "corresponding structure"
was to be drawn in accordance with § 112 ¶6l° was different from what DESA had
frequently and dismissively referred to as the mere "preferred embodiment."
Understandably, DESA was unable to justify any such distinction in the present
case, because no such distinction exists.
Judge Trauger's Markman ruling [JA 0032-58] referred to certain documents
and code letters (A, B, C, etc.) prepared and employed by Defendants for use in the
Markman proceedings in the District Court so that the claim terms could be
conveniently referred to, and the parties' respective positions could be conveniently
viewed side-by-side in an orderly fashion. These same documents and code letters
are helpful in understanding Judge Trauger's Markman ruling, and serve as a
convenient reference for use in this Court:
Continued
from the pre'.qous
page
invention,
invention,
not just a different way of describing
the same
which is what I thougfit you were saying?
MR. HIGGINS:
things ....
I'm really saying
somewhat
the same
THE COURT: go on. This will be a continuing
puzzlement
for me, so I just alert you all to the fact that
this is a concern.
JA 0789 (emphasis
added)
_0,,... and such claim shall be construed to cover the corresponding
structure,
material, or acts described in the specification
and equivalents
thereof. 35 U.S.C.
§ 112 ¶6 (emphasis added).
17
Master
Claim
individual
claim
Chart:
claim
element
reference
This
is a table
element
and then,
I) a reference
name
setting
("Sensor
for convenience,
letter
Means,"
"Lamp,"
in which
each
each
element
in means-plus-function
language
is set forth
underlined.
Marked
'066
in italics,
Patent
Drawings:
FIGS.
of the single
embodiment
disclosed
drawing
is marked
with
portion
of the schematic
expert,
Professor
(blue),
define
Chart)
under
circuit
Patent
specification
of which
(red),
elements
¶6.
for
the functional
language
is
is a merged
in the patent.
that,
There
element,
according
each
of
diagram
is one such
and each
box,
and DESA's
circuit
copy
such
enclosing
the
to Defendants'
expert,
Mr. Carlson
Claim
JA 1255-69.
encloses
elements
drawings
A, B, C, etc. (of the Master
Text:
The relevant
pages
of the patent
with
red and blue
boxes
labeled
are marked
and DESA's
circuit
§ 112 ¶6.
Moreover,
is the schematic
claim
diagram
Specification
text
Defendants'
define
appears.
format,
a red box and a blue
Massengill
§112
of these
2A and 2B, which
per means-plus-function
each
and at 3) identifies
and the structural
Each
drawing
etc.,
2) a shorthand
etc.),
element
each
JA 60-65.
Patent
Marked
claim
of each
assigns
(A, B, C, etc.),
the claims
claim
such
out the text
the portion
experts,
of the text that,
Massengill
(red)
A, B, C, etc. (of the Master
JA 1270-76.
18
A, B, C,
according
and Carlson
Claim
Chart)
to
(blue)
under
VI.
SUMMARY
OF ARGUMENT
The parties
entered
into a Stipulated
the District
Court's
the asserted
claims;
with regard
to the so-called
"reversed
or vacated
resolves
DESA's
acknowledges
because
claim."
ruling, Defendants'
and, unless
the District
"sensor
on appeal,
claims
against
DESA
product
product
does not infringe
claim interpretation
means for detecting
motion"
rulings
claim element
the stipulated
judgment
defendants."
JA 30 at ¶¶ 6, 7, 9. DESA
does "not contain
concede[s]
[JA 28-31 ] that, in view of
accused
Court's
that it entered into the Stipulated
Defendants'
as a result,]
Markman
Judgment
of non-infringement
Judgment
are
finally
of non-infringement
'pulse count' or an equivalent,
that it could not prove infringement
[and,
of any asserted
BR 30.
In view of the foregoing,
Court's
interpretation
particularly
of "sensor
by excluding
issues of this appeal
rationale.
pulse counting
of its opening
of numerous
However,
means for detecting
DESA
by an appellant
May DepartmentStores
Dickenson
motion"
from the asserted
brief, DESA
the District
claim element,
claims,
cursorily
claim terms [BR 57-60],
addressed
body of its brief. An issue not raised,
manner,
or vacates
all remaining
are moot.
At the conclusion
reinterpretation
unless this Court reverses
in its opening
relatively
without
requests
discussion
or
few of those claim terms in the
or dealt with only in a cursory
brief on appeal
is waived.
or ambiguous
Conopco,
Inc. v.
Co., 46 F.3d 1556, 1561 fn. 1 (Fed. Cir. 1994); Becton
& Co. v. C.R. Bard, Inc., 922 F.2d 792, 800 (Fed. Cir. 1990).
19
Consequently, Defendants address only those issues raised m the body of DESA's
brief.
DESA
function
asserts
that three claim elements
style (the so-called
means
" and "switching
accordance
function.
function,
First, DESA
sufficient
expert
structure
Court DESA
argued
because
some of the words
structure
when
enough
DESA
function
structure
in the subject
are primarily
does not apply.
function,
claim elements
to the structure
claim elements
the presumption.
involved
of the
in the District
did not include
and also because
"connote
structure"
the opposite
The only case authorities
contain
presumption
the
decisions
-- cases discussed
relied upon by DESA
2O
comparing
this Court's
not written
--
the presumption.
The case authorities
claim elements
in the
was overcome
to raise the issue on appeal,
-- show that the present
style and, therefore,
claim elements
is and is not overcome
cases involving
the
to overcome
this issue here because,
as a matter of law to overcome
were permitted
to overcome
in
to perform
structure
only that the § 112 ¶6 presumption
the presumption
detail at JA 741-43
structure
circuit
This issue is frivolous.
set forth in those claim elements
illustrating
"control
with regard to identification
the entire claimed
being insufficient
But even ifDESA
sufficient
that the subject
to perform
morion,"
there is sufficient
from raising
admitted
District
such argument
they include
means-plus-
should not be construed
There being no dispute
is foreclosed
in classic
for detecting
claim elements)
in favor of § 112 ¶6.
DESA's
means
the only issue is whether
the presumption
Court,
means"
with § 112 ¶6 because
entire claimed
claimed
"sensor
written
in
nowhere
near
relied upon by
in means-plusi.e. that § 112 ¶6
where
the
presumption that § 112¶ 6 did apply despite minimal
cases from the Seventh
precedent
and Ninth Circuits,
here, are inconsistent
each since been sharply
DESA
accordance
also asserts
Court's
inclusion
"sensor
means
is over-inclusive,
the "sensor
means
history
own expert
changes
in infrared
those caused
radiation
by changes
motion"
because
own product
detect changes
in infrared
caused by the motion
in temperature
changes
from changes
in such large stationary
allowance
of its claims
radiation.
or object,
objects,
As DESA's
changes
as well as
such as pools
product
evidence
radiation
PIRs detect
literature
in its opening
brief)
of infrared
radiation
caused
by temperature
objects.
Even if this were not enough
receiving
in infrared
all agree -- including
of a person
is to distinguish
of ordinary
(JA 1341) from the file
of large stationary
units, etc.
of pulse counting
by actual motion
the
by themselves,
persons
However,
literature
is and relies upon as intrinsic
caused
supporting
(PIR) sensors,
(which
states, the purpose
structure
to the District
infrared
air conditioning
agrees
in
claim element.
of water, brick walls,
DESA
of supporting
with regard
that PIRs detect motion.
-- that PIRs actually
are not
must be construed
circuit in the structure
for detecting
and DESA's
court
of the rule, and have
claim elements
particularly
that the passive
skill in the art understand
DESA's
motion"
asserts
on the other, which
application
Court's selection
of the pulse counting
First, DESA
constitute
that, if the subject
for detecting
are two district
within their own districts.
with § 112 ¶ 6, the District
from the specification
one relying
with this Court's
criticized
structure
to settle the matter,
immediately
m the PTO, the applicants
21
submitted
prior to
a declaration
distinguishing highly relevant prior art on the basis that it did not contain "pulse
counting [] as generally
features
as recited
in the claims
single claim, whereas
this argument
counting
other rational
immediately
However,
by the [PIRs]"
DESA
pulse counting,
judgment
radiation
motion"
assertion
m all claims,
that pulse
has offered
it important
claim element.
radiation,
phrases
to] motion
be inconsistent
upon phrases
to
refers to the fact
such as "detection
phrases
pulse counting
of motion
for "detection
by the [PilLs]."
of
Moreover,
with the only rational
as a feature
-- since, like "sensor
22
means,"
reference
of the "control
of this case would
in
as evidence
declaration.
While the outcome
of non-infringement)
in
to the PIRs.
skill would understand
attributable
would
DESA relies
also states that PIRs are "responsive
as shorthand
12, recites
no
in his
also relies upon the fact that the only claim to explicitly
claim
in a
was underlined
should be limited
understood
of the file history
was present
of motion by the [PIRs]"
of ordinary
in infrared
interpretation
interpretation
are not persuasive.
application
are reasonably
in infrared
any contrary
means"
changes
was only recited
statement
considered
or other
to allow the claims.
for detecting
which persons
that PIRs detect
[changes
means
application
of § 112 '[[6. DESA
the foregoing
such as "detection
since the patent
light,"
as the applicant's
that the examiner
decision
specification
claim element
by application
counterarguments
that the "sensor
means"
Moreover,
subsequent
DESA's
infrared
in the claims
indicating
in the instant
.... " Since pulse counting
understood
explanation.
the file history,
and claimed
the "sensor
is reasonably
is present
the patent
disclosed
circuit
be the same (i.e. a
"control
circuit
means" is present in each of the asserted
construed
"sensor
to make pulse counting
means,"
erroneously
since inclusion
introduced
a feature
VII.
amendment
-- the claims
of "control
of pulse counting
during prosecution,
other factors point to the inclusion
un-noted
claims
should not be
circuit means,"
rather
than
and claim 12 is an anomaly
after a change
of pulse counting
to a single claim to dominate
of attorneys.
in "sensor
means"
Too many
to allow an
claim interpretation.
ARGUMENT
A.
Standard
Defendants
review.
of Review
do not dispute
The reference
DESA's
to Phillips",
statements
however,
regarding
the standard
does not concern
the standard
of
of
review.
B.
Applicable
I.
The Federal
decisions
reached
Legal
Principles
The Federal
Circuit
Circuit
Reviews
does not review
by the trial court.
Judgments
supporting
Stratoflex,
arguments,
lnc. v. Aeroquip
1530, 1540 (Fed. Cir. 1983) ("We sit to review judgments,
also SageProds.
v. Devon
Indus.,
Not Opinions
but only the
Corp., 713 F.2d
not opinions.");
see
126 F.3d 1420, 1426 (Fed. Cir. 1997).
Jl Phillips v. A WH Corp., 415 F.3d 1303 (Fed. Cir. 2005), cert. denied, A WH Corp.
v. Phillips, 126 S.Ct. 1332 (U.S. 2006).
23
2.
Construction
The construction
First, one determines
of Means
of a means-plus-function
the claimed
function.
334 F.3d
1314, 1321 (Fed. Cir. 2003).
structure
in the written
C.
DESA
DESA
description
means," and "switching
have applied,
ld.
the §112 ¶6 Presumption
means for detecting
motion,"
"control
by § 112 ¶6.
circuit
BR 35-39.
all use "means
for" followed
street.
by a recitation
that § 112 ¶6 applies.
In other words,
of
This
had these claim elements
presumption
not
would
i.e. that § 112 ¶6 does not apply.
and "switch"
when the presumption
is not expressed
elements
Corp.,
the corresponding
that function,
in means plus function format, the opposite
The case authorities
to overcome
two steps.
is frivolous.
is a two-way
been expressed
includes
one identifies
that performs
thereby giving rise to a presumption
presumption
circuit,"
Second,
Limitations
Eng'g, Inc. v. Raytek
means" ought not be governed
These claim elements
function,
Claim
limitation
Omega
Has Failed to Overcome
argues that "sensor
This argument
Plus Function
indicate that, while terms like "sensor,"
are sufficiently
structural to avoid application
is that § 112 ¶6 does not apply, i.e. where
in means plus function
the presumption
are expressed
"control
of § 112 ¶6
the claim element
format, they are not sufficiently
that § 112 ¶6 does apply where,
structural
as here, the claim
in means plus function format.
In the District Court, and here, the case authorities
are mostly cases in which the disputed claim elements
24
upon which
DESA relies
were not expressed
in
means-plus-function
that terms
like
presumption
DESA's
format.
"control
that
As a result,
circuit"
§ 112 ¶6 does
task is to overcome
Consequently,
Inc.,
Impala
Linear
Corp.,
"detent
means,"
reliance
1580,
379 F.3d
and "circuit"
Cir. 2000),
1996)
which
sufficient
help
to DESA
compared
in view
to the minimal
DESA
with
relatively
v. Itron,
1999
982966
decisions
on its facts.
"circuit
(N.D.
means;"
specification
there
position
102 F.3d 524,
(N.D.
Ill. 1999)
the claim
decisions:
1998),
followed
authority
here,
itself
specified
was a complete
and drawings;
court
Cal.
which
in those
claim
absence
in a related
25
the holding
and each
are of no
cases,
Data
Sys.,
v. Magnetek,
of CellNet.
patent
Inc.
Inc.,
Neither
distinguishable
location
of any corresponding
co-pending
Cir.
was overcome
is readily
a particular
1365
elements.
Cellnet
and Nilssen
1360,
apply,
the § 112 ¶6 presumption
district
that
contain
§ 112 ¶6 does
in DESA's
v.
531 (Fed.
elements
of structure
of structure
both
1100
that
Corp.
the presumption
209 F.3d
claim
recitation
v. Ethicon
here.
Inc.,
Corp.,
where
to the effect
to support
Cleanroom,
in which
is controlling
In CellNet,
DESA's
the presumption
two decisions
17 F.Supp.2d
structure
case,
Tech.
Cir. 2004),
means-plus-function
recitation
little structure,
Inc.,
WL
of these
patent
cites
Linear
1996),
the
apply.
Cir.
sufficient
of the extensive
in the present
§ 112 ¶6 does
(Fed.
to the effect
to support
in Greenberg
v. Kimberly-Clark
to overcome
cases
statements
1319-21
v. Clestra
that particular
structure
no force
(Fed.
do not support
Corp.
and Cole
hold
1311,
in those
structure,"
that
upon
1583
have
that § 112 ¶6 does not apply,
(Fed.
have
the presumption
91 F.3d
like Envirco
"sufficient
not apply
DESA's
Endo-Surgery,
Cases
convey
statements
for the
circuitry
application,
in the
incorporated
d_scussion
history
by reference
of the circuit
contained
into the at-issue
structure
no evidence
patent,
the patent
was "nonessential;"
that the applicants
intended
limitation.
17 F. Supp.2d
rationale
of CellNet,
declining
to apply § 112 ¶6 because,
specified
the precise
locations
of the circuit.
had relied upon
Cir. 1996), a case, unlike
claim painted
sharply
a picture
criticized
the present
in their respective
Inc., 67 U.S.P.Q.2d
Motorola
lnc., 80 F.Supp.2d
The case authorities
means plus function
when
format
DESA now contends
to perform
the relevant
necessary
entirely
that "sensor,"
factor,
102 F.3d 524, 531 (Fed.
CellNet
language
and Nillsen
(N.D.Cal.
2002),
of the
have each been
See Tech. Licensing
(N.D.Ill.
the
the claim
for the "location"
Corp. v.
and Nilssen
v.
2000).
by Thesz (JA 741-43),
the § 112 ¶6 presumption
which
Massengill
used
is and is not overcome
in
claims.
that the subject elements
the recited function"
test _2-- whereas
followed
as in CellNet,
the structural
jurisdictions.
1842, 1845-1846
provided
exemplify
product.
921,926-930
explicitly
Corp.,
file
to assert a means plus
As authority
case, where
of the claimed
Videotek,
in his analysis,
Nilssen
Cole v. Kimberly-Clark
held that a
and the prosecution
function
CellNet
at 1106-09.
examiner
circuit,"
structure
[BR 36] -- an appropriate
in the District
"control
"connote
Court DESA
and "switch"
argued
"connote
sufficient
expression
of
that it was only
structure."
DESA
12Sage Prods., Inc. v. Devon Indus., 126 F.3d 1420, 1427-28 (Fed. Cir. 1997)
("[W]here a claim recites a function, but then goes on to elaborate sufficient
structure, material, or acts within the claim itself to perform entirely the recited
function, the claim is not in means-plus-function
format.")
26
was forced into this flawed position in the District Court because its expert, Mr.
Carlson, admitted under cross examination that those terms did not connote
sufficient
structure
its new argument
factual
position
to perform
entirely
is easily disposed
in the District
Finnigan
Corp. v. ITC,
argument
should
not be a moving
"means,"
part of the classic
presumption
mandates
quoting
to the merits,
where
acts within
Id.
Likewise,
clauses."
Inc. v. Central
However,
presumption.
where
format.
claim elements
here on the
but specifies
entirely
giving rise to a
the statutory
126 F.3d at 1427-28,
Farm & Family
the presumption
a claim recites
DESA
to invoke
Sage Prods.,
Tractor
use the word
claim elements,
used the term advisedly
the claim itself to perform
in means-plus-function
taken a contrary
ought not be heard further
for functional
a claim uses the word "means,"
the "means."
having
Although
target.").
template
1568, 1574 (Fed. Cir. 1996).
JA 1119-52.
180 F.3d 1354, 1363 (Fed. Cir. 1999) ("A party's
for means-plus-function
from York Prods.,
DESA
all of the disputed
"that the inventor
function.
of on the merits,
Court,
subject.
Turning
the recited
Ctr., 99 F.3d
is not conclusive,
no corresponding
sufficient
the recited
structure,
function,
such as
function
for
material,
or
the claim is not
has not even come close to overcoming
this
13
13DESA tries to make it appear as though there is a dispute with regard to whether
the terms "sensor," "control circuit," and "switch" connote strucatre to a person of
ordinary skill in the art [BR 37]. However, Defendants
have never argued
otherwise.
See Defendants'
MASTER CLAIM CHART [JA 0060-65], where the
above terms and others are underlined,
indicating Defendants'
acknowledgement
that they are structural terms. See JA 0060, fn. 1. However, this is not the issue.
27
1.
The District Court Correctly Applied
Means for Detecting Motion ''14
The disputed
"sensor
forth in the following
function
Ref.
Letter
for detecting
table, with the structural
motion"
language
claim elements
underlined
are set
and the recited
italicized.
Re£
Name
Sensor
Means
for
Detecting
Motion
A
means
§112 ¶6 to "Sensor
Sensor
Means
For
Detecting
Motion
Claim Text (Key: structure; means plus
function format;
recited function)
First sensor means for detecting afirst
predetermined
condition external to said
apparatus, said first predetermined
condition
being motion relative to said first sensor
means of a person or an object separate from
said apparatus;
Sensor means for detecting a predetermined
condition external to said apparatus;
The only structural
language
however,
"sensor"
does not connote
function
of detecting
the motion
are many different
detect the motion
kinds
sufficient
of the person
of sensors,
of a person
in these claim elements
structure
or other object.
6
9, 10, 11
is the word "sensor;"
to perform
or other object.
most of which
Claims
entirely
JA 759-61.
would not be sufficient
Js JA 759.
the
There
to
Thus, the term "sensor"
_4Since the "first sensor means" (claim 6) and "sensor means" (claims 9, 10 and
11) claim elements I and A have been interpreted identically,
as to function (to
detect the motion of a person or object) and structure, they are collectively
sometimes
referred to herein as "sensor means for detecting motion" or "sensor
means."
15Given the parties' primary focus upon whether or not pulse counting is a
limitation of each of the asserted claims, the parties did not dispute the differences
between the recited functions of these claim elements:
Cont, nued on the next page
28
is
a generic term, and does not describe the type of sensor needed to perform the
recited function.
Moreover, informed only by the term "sensor," a person of
ordinary skill in the art would not envision a sensor that would detect the motion of
the person or other object. JA 759-61.
DESA argues that Carlson testified that "when he read the entirety of the
claim term he noted that "motion of a person or object" was being sensed, and he
knew that either a PIR or a break beam detector could perform that function (JA
117)." BR 38. This, however, does not help DESA, since "motion of a person or
object" is part of the recited function, not part of the structural language of the
claim. As a result, Carlson is using the recited function as though it were part of
the structural language. If this were the law, then every means-plus-function claim
element would recite sufficient structure to perform entirely the recited function. It
is not surprising that DESA has failed to cite any case authority where the §112 ¶6
presumption has been overcome in this fashion.
Continued
from
the
previous
page
The Court: [Referring to claim element A] " [F]irst of
all, the parties agree that a predetermined
condition
external to apparatus is equivalent to the first
predetermined
condition [referring to claim element I],
which is the motion of a person or object. I'm correct
there, aren't I? You all agree on that?" []
Ms. Mitrakos:
Mr. Higgins:
"We do, Your Honor."
"Yes."
JA 43-44.
29
[]
Nonetheless, unencumbered by supporting case authority, DESA argues that
it is entitled to treat the recited function as though it were part of the structural
language of the claim element because Sage Products
presumption
is overcome
acts .... " BR 38.
Tekmar
to method
inconsistent
264 F.3d
claims.
1111, 1120-21
structures
a claim recites
Court,
DESA
act to achieve
the claimed
a method
is perfectly
0.1. Corp. -- which flatly
DESA
his opinion,
analysis
takes Professor
that case held that the §112 ¶6
BR 39.
However,
how those
in TurboCare
--
of] how the structures
with the clear and logical
the erroneous
holding
legal proposition
upon
to task for the reason
language
structure."
BR 38. According
in Greenberg,
the 112/6 presumption."
BR 38. However,
to DESA,
structure'
Greenberg
i.e. the disputed
30
"did not
this
"this Court held that it is not
overcome
applied,
that, in expressing
of the claim elements
to
was a case in
claim element
in
of
which
¶6 is based.
MassengiU
to law because,
presumption
Corp. v. GE,
"[t]he claim also describes
consistent
of§112
a specific
of O./. Corp. is
Turbomachinery
that a claim term 'call to mind a single well-defined
the opposite
or
out that 0.1. Corp. v.
necessary
which
material,
in the claim, rather than to the recited function.
he said that the structural
is contrary
Delavas
function."
contradicts
to application
allow me to envision
structure,
here that the holding
claim -- the "descri[ption
As a result,
TurboCare
argues
because
language
defense
pointed
(Fed. Cir. 2001), because
act" refers to structural
DESA's
Defendants
Div. of Demag
had been overcome
did not involve
a sufficient
1576, 1583 (Fed. Cir. 1997) limits the "acts" of Sage
with TurboCare
presumption
which
In the District
Co., 115 F.3d
Products
"where
says that the § 112 ¶6
Greenberg
was not in means plus function
format
and, therefore,
it was presumed
that § 112 ¶6 did not apply.
As a result,
recite sufficient
structure
2.
Ref.
Name
Control
Circuit
Means
c(1)
Control
Circuit
Means
unless
motion"
the presumption
claim elements
do not
that § 112 'I[6 applies.
Applied
§112 ¶6 to "Control
Text
Claims
Control circuit means coupled to said lamp
and responsive
to said first and second sensor
means for causing said lamp to emit light at
said first level of illumination
in response to
said second predetermined
condition in the
absence of said first predetermined
condition,
and for causing said lamp to emit light at
said second level of illumination
in response
to detection of said first predetermined
condition
6
Control circuit means coupled to said lamp
and responsive
to said sensor means for
causing said lamp to emit light at said first
level of illumination
in the absence of said
predetermined
condition, and for causing
said lamp to emit light at said second level of
illumination
in response to detection of said
predetermined
condition, wherein said
control circuit means is powered by an AC
voltages (sic)
9, 10, 11
or vacates
motion,"
circuit means"
This is because,
to overcome
Claim
it reverses
means for detecting
"control
means for detecting
The District Court Correctly
Circuit Means"
Ref.
Letter
K(1)
Unless
the "sensor
the District
Court's
interpretation
this Court need not address
is governed
whether
of "sensor
interpretation
by § 112 ¶6, or any other issue for that matter.
this Court reverses
or vacates
31
the District
Court's
of
interpretation of "sensor
means
the Stipulated
"finally
therefore,
Judgment
the District
elements
would
easily disposed
Court's
be moot.
are the words
"control
voltages
(sic)" (claims
connote
sufficient
There
DESA's
interpretation
the parties
claims
against
of the "control
JA 0030, ¶¶ 5-9. However,
language
circuit
sensor means"
of the person
resolves
motion,"
have agreed
Defendants,"
circuit means"
claim
this issue is also just as
in the "control
[] coupled
(claims
circuit means"
structure
6, 9, 10 and 11) and "powered
to perform
claim elements
to said lamp and responsive
9, 10 and 11, but not 6). This structural
are numerous
do not describe,
entirely
the function
to said first
by an AC
language
of detecting
types of control
to sensors,
to a person
and powered
circuits,
which
does not
the motion
could be coupled
by an AC voltage,
cause a lamp to emit light at a low level in response
nighttime,
and at a higher
level in response
to detection
circuit
to detection
of motion.
for the same reasons
claim elements
claim elements
presumption
that the "sensor
do not recite sufficient
do not recite sufficient
that § 112 ¶6 applies.
32
structure,
structure
means
for detecting
the "control
to overcome
of
JA 761-62,
1125-28.
As a result,
to
but such structures
of ordinary skill in the art, the type of control
that would
means"
and,
or other object.
lamps, responsive
motion"
that
of on the merits.
The only structural
and second
for detecting
circuit
the
The District
Means "
o
Ref.
Letter
Re£
Name
Means
Switching
interpretation
Stipulated
§112 ¶6 to "Switching
circuit means,"
of "sensor
of "switching
Judgment.
Claims
wherein said control circuit means includes
switching means for selectively permitting
and preventing
the application
of said AC
voltage to said lamp and
As with "control
interpretation
Applied
Claim Text
C(2)
Court's
Court Correctly
means
means"
unless
it reverses
for detecting
motion,"
is moot, pursuant
JA 0030, ¶¶ 5-9.
However,
or vacates
the District
the District
to the express
Court's
terms of the
this issue is also disposed
of just
as easily on the merits.
The only structural
language
in the "switching
means"
claim element
is the
word "switching."
Professor
acknowledged
perform
application
Massengill
agrees
that this structural
entirely
the function
of said AC voltage
with DESA's
language
Mr. Carlson,
does not connote
of "selectively
to said lamp."
33
expert,
permitting
JA 762-63,
sufficient
and preventing
1132-35.
who has
structure
the
to
Do
Structure
§112 ¶6
D
Ref.
Letter
I
A
Ref.
Name
First
Sensor
Means;
Sensor
Means
Defining
"Sensor
Means For Detecting
Judge Trauger's
§112 ¶6 Interpretation
For Detecting Motion" Is Correct
Claim
Text
Claims
First sensor means for
detecting a first predetermined
condition external to said
apparatus, said first
predetermined
condition being
motion relative to said first
sensor means of a person or an
object separate from said
apparatus;
6
Sensor means for detecting
predetermined
condition
external to said apparatus;
9,10,11
a
Motion"
of "Sensor
Under
Means
Court's
Definition
Function: in
italics. 16 per
agreement.
See Carlson
"claimed
function." JA
121
Structure:
patent text,
col. 3, In. 24 to
col. 4, In 5 [JA
22, 43]; plus
equivalents
[JA 44]; plus
corresponding
drawings. [JA
44, 75, 1264
(in red).
Function:
Same as italics
in claim
element I, per
agreement of
counsel.
JA
43 -44.
Structure:
same as claim
element I. JA
0044.
16"Identification
of the function does not permit the limitation of a means-plusfunction claim by adopting a function different from that explicitly recited in
claim." Judge Trauger's oral opinion.
JA 0039.
34
a)
The parties
the above table.
Statement
Defining
Elements
each defined
the claims
See Defendants'
Master
(JA 119).
In the functional
of claim 6, the code phrase
that clause to mean
separate
"motion
person
or other object");
means"
claim elements
to said apparatus")
relative
of claims
is not defined
Nonetheless,
despite
condition
Claim
person
must necessarily
this difference,
external
code phrase
the parties
in
or an object
of a
in the "sensor
condition
extemal
agreed that the
to said apparatus"
clauses
clause
defined
so that the "sensor
of the critical
means
means"
for detecting
of claims
9, 10 and 11
"first predetermined
6, 9, 10 and 11 have been stipulated
be "sensor
defined
in the claim, or elsewhere.
the functional
or other object;"
in
claim element
is explicitly
9, 10 and 11 ("predetermined
of claim 6. JA 43-44.
of claims
means"
herein as "motion
the corresponding
condition"
elements
condition"
paraphrased
the same as the explicitly
Accordingly,
Claim
Chart (JA 64) and Carlson's
to said sensor means of a person
should be defined
clause
Means"
of claim 6 the same as shown
clause of the "sensor
(sometimes
whereas,
Of the "Sensor
function
"first predetermined
from said apparatus"
"predetermined
the Function
"sensor
to mean
means"
claim
"the motion
of a
of each of those claim elements
the motion
of a person
or other
object."
b)
DESA
asserts
The PIRs Do Not, By Themselves,
"Detect
Within The Meaning Of The Claims
that the District
ordinary skill in the art in the lighting
Court committed
industry,
35
error because,
PIR's "detect
motion"
Motion"
to persons
and,
of
therefore, the PIRs Q1 and Q2 are the sole supporting structure for the "sensor
means" claim element.
According to DESA, the additional circuit components which Judge Trauger
identified as supporting structure for the "sensor means" claim element (labeled
"selection circuitry" by Professor Massengill) are surplusage, since they do not
perform the function of "detecting the motion of a person or object."
DESA is wrong. In the first place, while PIRs are "in common use in
motion
detectors
Massengill
electrical
expert,
1277-78,
[JA 171 ], they do not detect motion per se.
explained,
signal when such changes
Dr. Paulus,
and industry
1290, 1292.
22 at col. 3, Ins. 24-28
(PIR) sensors
infi'ared)
PIRs detect changes
sensor detects
are detected.
publications
The parent
motion
by watching
producing
this explanation.
and file history
[] includes
to infrared
radiation,
two conventional
light...");
36
JA 478,
are in accord.
passive
JA
infrared
JA 1341 ("A PIR (passive
the heat given off by an object
passive infrared ("PIR") sensor consists of an
insulator material which has a particularpolarity,
which
polarity rapidly switches back and forth by 180° when
exposed to changes in infrared radiation. This rapid
change in polarity produces a characteristic
brief pulse of
negatave-going
then positive-going
(or positive-going
thennegative-going)
electrical voltage (or current).
The
oscilloscope
trace shown in the screen capture at the
bottom ofpage 6 of Mr. Raper's testimony [JA 156]
(which begins at a particular background level of voltage,
goes negative for a few milliseconds,
then positive t0r a
few more milliseconds,
and then returns to the
background
level) is characteristic
of the signal produced
when a PIR is exposed to a change in infrared radiation."
JA 755 (emphasis added).
17 ')A
a brief
JA 755, 771-72. _7 DESA's
confirm
specification
("The circuit
[] each responsive
in infrared
As Professor
as the
object moves
whether
an front of the sensor lens. ''18 Selection
or not the changes
signal were caused
event,
by the motion
such as changes
water, brick walls,
in infrared
added.);
heated
and cooled
cause PIR sensors
energy,
or object,
by the motion
of a person
objects
which
of water, brick walls,
motion"
not motion;
the PIR to generate
("[The
or object."
a
by a non-motion
objects,
such as pools
PIR output]
of
pulse
(Emphasis
do not move but become
air conditioning
units, etc. may
Thus, it is not technically
since, in reality,
and not all changes
is used to deterrrnne
or instead
JA 771-72
to think it (sic) sees motion.")
to say that a PIR "detects
infrared
units.
at 1341 ("Large
(pools
caused
of large stationary
or air-conditioning
JA 1334-41,
which
of a person
in temperature
may or may not be caused
energy
circuitry
correct
PIRs only detect changes
in infrared
energy
in
are caused
by
motion.
c)
The context
The Claim Context Shows That Motion Is Detected
By the Combined
PIRs and Selection Circuitry
in which
the term "motion"
highly instructive
here. _9 The "control
_s DESA's
Professor
expert,
Paulus,
appears
circuit means"
explained
elsewhere
in the claim is
claim element
of claims
6, 9,
PIRs consistently:
"Passive Infrared Sensors (PIR): passive infrared sensors
can detect the heat or infrared energy, given off by
humans .and other objects. They are in common use in
motion detectors.
In simplest torm, they may consist of a
pyroelectrical
material coupled to a special transistor.
The pyroelectrical
materiafis
built li_e a capacitor.
A
small current flows as the infra(.ed energy changes.
This
small current tlows into a very large reszstor producing a
voltage signal. A transistor couples this voltage signaI to
the external electric circuit."
JA 171 (emphasm adaed).
J9 Phillips v. A WH Corp., 415 F.3rd 1303, 1314 (Fed. Cir. 2005) ("[T]he
which a term is used in the asserted claim can be highly instructive."
37
context
in
10 and 11 of the '066 patent dictates that the control circuit switches the lamp from
dim ("accent mode") to bright (" full bright mode") "in response
motion."
JA 24-25.
switch
Thus, the claim provides
the lamp from dim to bright
response
to those PIR signals
"motion."
energy,
thus defined
the PIRs alone.
DESA
circuit does not
has decided
a change
represent
in infrared
may or may not turn on the lamp.
in infrared
and the patent
only by the combined
energy
specification
PIRs and selection
Motion
which
shows
is
cause
that these
circuitry,
not by
JA 770-772.
argues
inclusive
"Pulse Counting"
Motion
that the District
since it includes
to DESA,
goes beyond
recited
in claim element,
object
[]." BR 41-42.
block 51 is merely
According
own product
interpretation
Motion
the structure
needed
to perform
of"detecting
to DESA,
the likelihood
motion
the purpose
-- the identical
portion
of the intrinsic
reduce
false triggering
since
record that
of pulse counting
non-motion:
Large objects which do not move but become heated
cooled (15ools of water, brick walls, air-conditioning
38
or
[BR 42].
disingenuous,
itself relies upon here [BR 50] -- says that the purpose
motion from
the function
of the pulse count circuit
DESA
is to distinguish
which,
[] of a person
of false triggering"
true and altogether
from Non-
of "first sensor means"
the pulse count circuit structure
is only narrowly
literature
Distinguishes
Court's
i.e. the function
"to reduce
This argument
DESA's
circuitry
the PIR has detected
fi'om dim to bright;
d)
according
the selection
energy
of
any PIR signal, but only in
by the claim to be only those changes
are "detected"
is overly
which
in infrared
the lamp to switch
changes
in response
In the claim, even though
that change
that the control
to detection
and
to
units, etc.) may cause the PIR sensors to think it (sic)
sees motion. Careful aiming and proper adjustment of
sensitivity will substantially reduce the chances of false
triggering. Many Reflex motion sensors, including this
model, use Pulse Counting Technolo_w to further reduce
false triggering. By counting the nurfiber of times motion
is detectei:l within a short period of time, a Reflex motion
sensor with pulse counting can verify that what it seesis
actually
JA 230-237
a moving
at 237, 1341.
e)
DESA
but merely
also argues
the motion
1303, 1308-09
of the cutting
during
detecting
Concrete
Concepts,
the surface
blade to inhibit
cutting;"
added.)
Motion
the claimed
function
of the PIR, in the same sense
the case authorities
it relies upon do
spalling,
and the supporting
in the present
other than [the recited
concrete,
such as "reduc[ing
of the saw."
adjacent
or cracking
structure
structural
145 F.3d
to the leading
of] supporting
Id.
such as the shape
structure
because,
details performed
the surface
of the cutting
of the
blade" or "support[ing]
ld.
Techs., Inc. v. Empak,
Inc., 268 F.3d 1364,
39
edge
of the concrete
details
case, those structural
the] wobbling
lnc.,
was a skid plate.
of the supporting
function
lndus.,
of the §112 ¶6 claim was
of the concrete
chipping,
functions
In Asyst
lnc. v. Cardinal
This Court did not include
"pulse counting"
the weight
abilities
(Fed. Cir. 1998), the cited function
and size of the skid plate in its definition
unlike
does not perform
[BR 45]; however,
for] "supporting
(emphasis
"Enhance"
such a distinction.
In Chiuminatta
surface
Does Not Merely
that pulse counting
case authorities
not support
[means...
Pulse Counting
Detection
"enhances"
as certain
object.
1370-71
(Fed. Cir.
2001), the supportive structure of the § 112 ¶6 claim was "[second microcomputer
means for] receiving
respective
second
supporting
devices
and processing
two-way
structure
between
communication
to local control
line 51 because
local control
in the present
microcomputer
means
its recited
Id. (emphasis
those cases,
the pulse counting
motion,
i.e. helping
structural
cables or
20, such as line 51. Id.
carrying
This
data
means 50" and thus, unlike
line 51 enables
functions,
the second
it does not actually
fi'om Chiuminatta
circuitry
to distinguish
than some other function.
" and the
perform
added.)
case is easily distinguished
detecting
rather
case, "although
The present
unlike
added),
with said
20, but not external
20 and communicating
to perform
any of those functions."
(emphasis
processor
processor
communicated
"the role of line 51 [is] simply
processor
pulse counting
information
means
was the local control
that connected
Court excluded
digital
performs
between
and Asyst since,
the recited
motion
function
of
and non-motion,
As a result, pulse counting
is not an over-included
detail.
In its "over-inclusion"
Orthotics,
argument,
DESA
Inc. v. Med. Tech., Inc., 263 F.3d
however,
unlike the present
structure
supporting
II is concerned
plus-function
limitation,"
1356, 1364-65
statement
with "construing
the functional
added).
II
with determining
in a means-plus-function
Id. at 1364 (emphasis
40
Generation
(Fed. Cir. 2001);
case, rather than being concerned
the functional
Generation
also relies upon
statement
limitation,
in a means-
the
f)
Limiting
the "sensor
shown and described
equivalents,
Limiting The "Sensor Means" To The PIRs And
Selection Circuitry Of The Patent Specification,
And
Equivalents,
Is Not Unduly Restrictive
means" to the PIRs and selection
in the drawings
circuit elements
and text of the patent specification,
is neither unduly nor undeservedly
plus
restrictive.
The circuit diagram of FIGS. 2A and 2B is a generic diagram, rather than a
production-specific
capacitance,
blueprint
provides
specific
etc.) for each circuit component.
claim interpretation
selection
which
As a result, the District Court's
does not require the use of specific
circuit elements.
interpretation
values (of resistance,
Moreover,
encompasses
To the extent
component
under the statute,
equivalents
the District Court's claim
of those selection
DESA may believe
circuit elements.
this claim interpretation
undeservedly
narrow, DESA would be wrong.
plus-function
format, the patent applicant can be presumed
examination
enabled
and subsequent
interpretation
values for the
By presenting
is still
its claims
to have requested
of its claims pursuant
to § 112 ¶6.
the applicant to obtain patent claims in the face of an extremely
art device of Nippon
applicant's
specific
Ceramic
[JA 576-77,
1342], which
circuitry and equivalents
in means-
would protect
from duplication
This
close prior
the
by unscrupulous
competitors.
Nothing
prevented
it was worthwhile
issuance
claims
DESA
from also seeking
broader
coverage,
if it believed
to do so. DESA did in fact seek broader
coverage,
resulting in
of U.S. Patent No. 5,747,937
(the '937 patent)
are in standard, ordinary language
[JA 0583-91
], whose
format, rather than means-plus-function
41
format.
Since the claims
feature
which the accused
patent
against
product
are all limited
does not include,
to "manual
DESA
override,"
has not asserted
a
this
Defendants.
g)
The Jensen/McCavit
Of Pulse Counting
Detecting Motion"
The file history
distinguished
pulse
of the '937 patent
includes
from the patent
counting
feature
Declaration
Supports Inclusion
In The "Sensor Means For
Claim Elements
a declaration
claims
to reduce
in which highly relevant
on the basis
false operation
disclosed
and claimed
in the instant
application
claims."
JA 1343-45.
The application
prior art was
that the prior art did not "have a
of the switch as generally
or other features
was allowed
as recited
in the following
in the
office action.
JA 506.
This declaration
to be "generally
claims."
draws
disclosed
It is reasonable
between
recites
counting"),
This declaration
invention
"recited
on the basis
[in claim
counting
reasonable
explanation
counting
the pulse counting
and other features
that if the patent
feature
said to be "recited
attorney
had merely
12 (the only claim which
said
in the
intended
actually
there would have been no need for this distinction.
is reasonably
understood
that pulse counting
as distinguishing
was "generally
the patent
in the claims by virtue
examiner
the claimed
claimed"
rather
to understand
than
that pulse
of § 112 ¶6. There is no other
for this distinction.
in the file history
is underlined
between
the prior art and claim
12]," he intended
was included
Moreover,
and claimed"
to assume
to distinguish
"pulse
a distinction
[JA1344],
copy of this declaration,
reasonably
42
indicating
the reference
to the public
to pulse
that the
examiner considered this statement important in his decision to allow the claims.
Even without the underlining, competitors would reasonably understand this
declaration to indicate that pulse counting is "generally claimed," as per §112 ¶6,
not just "recited," as in claim 12.
2.
DESA's
a)
In the District
"sensor
means
"Cardinal
DESA's
Court,
Have
Misuse
DESA
for detecting
motion"
that Defendants'
under § 112 ¶6 violated
which prohibits
defimtion
what DESA
importing
of
called the
limitations
from
criticized
DESA's
attempted
Rule" since § 112 ¶6 expressly
requires
claims of this type to be limited
to what is shown
Defendants
in the specification
(plus equivalents),
misapplication
and plainly
of the
trumps
the
Rule.
DESA
disingenuously
in its discussion
reprises
of JVW Enter.,
its attempted
Inc. v. Interact
1331 (Fed. Cir. 2005) and RodimePLCv.
(Fed. Cir. 1999) [BR 42-46].
of the functional
interpretation
of the means
here, where
clause
clause
reliance
upon the Cardinal
Accessories,
Seagate
However,
interpretation
relevance
argued
Rule"
into the claims.
In response,
"Cardinal
No Merit
of the "Cardinal
repeatedly
Rule" of claim construction
the specification
Cardinal
Arguments
lnc., 424 F.3d
Tech., lnc.,
JVWEnterprises
of such a claim.
there is no dispute
regarding
involve
claim, rather
These case authorities
definition
1324,
174 F.3d 1294, 1303
and Rodime
of a means-plus-function
Rule
than
have no
of the functional
clause.
According
to DESA,
the "lesson
of JVWis
43
that even under
§ 112 ¶6 a court
must not limit the scope of the claims to the preferred embodiment described in the
specification, even if the preferred embodiment is the only embodiment described."
BR 43. This is plainly not the "lesson of JVW," which has absolutely
with the point DESA is attempting
Moreover,
DESA's
the scope of the claims
argument
place,
construed
embodiment,
equivalents."
argument,
described"
neither
argues
of the cases DESA
the phrase
Trauger
"and
have ever argued
cites in support
of this
override
of sophistication'
quote from the Rodime
for the Rodime
means-plus-function
Rodime
[] the different
and zero crossing
BR 45. This DESA
decision
District
detect
states,
is immediately
in construing
"additional
to do with the point DESA
44
and
including
were 'added
an 'additional
preceded
explained
the functional
functions"
Carlson
features,
limitations
where Judge Prost lucidly
Court,
Case
Patterson,
claimed
or as Rodime
argument
claim, to import
has nothing
of the Rodime
[as DESA witnesses]
or 'enhancement'
(Fed. Cir.
this issue.
Misapplieation
to the Trial Court,
pulse count, manual
BR 44-45.
DESA's
that "precisely
all explained
improper
only to the scope of the
includes
nor Judge
In the first
JWV and Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973,978
DESA
function.'"
the preferred
[BR 43] is nonsensical.
specifically
Defendants
Third, neither
b)
levels
where
under § 112 ¶6 are never limited
1999) (a non § 112 ¶6 case), even address
Paulus
112/6 a court must not limit
embodiment
since the statute
Moreover,
or held otherwise.
that "even under
to the preferred
is the only embodiment
preferred
to do
to make.
embodiment
claims
nothing
by a lengthy
why it was
clause of a
from the specification.
is trying to make.
As already explained, unlike Rodime,
interpretation
of the functional
clause
there is no dispute
of the sensor means
regarding
(or any other)
claim
element.
c)
Relying
on non-contextual
referred to as having
detecting
The District Court's Construction
With The Intrinsic Record
"detected
snippets
motion,"
of text 2° where a PIR is occasionally
DESA argues that the "sensor
... the motion of a person or object" is simply a PIR without
circuitry, and that the trial court's
expert testimony
the intrinsic
premised
record
differing
evidence
of the '066 patent."
BR 48.
inconsistent
with either the District
evidence
by Defendants'
For example,
..." [JA 237 (Reflex
entitled
the phrase
counting)
is needed
14)] appears
in mfrared
to determine
are attributable
20 Taken
from (1) the '066 patent
to the motion
Nos. 4,943,712
based on
contradicts
in context,
claim interpretation,
infrared)
"How the Pulse Count Motion
radiation
(3) U.S. Patent
page
changes
any other
impermissibly
are examined
for
they
or the
experts.
"[a] PIR (passive
Instructions,
clear that the PIR detects
(pulse
Court's
means
is impermissibly
which
statements
are not inconsistent
presented
construction
on extrinsic
When these allegedly
discussion
Is Not Inconsistent
which
and 4,982,176.
45
at the beginning
Sensor
radiation,
Works,"
motion
of a detailed
which
makes it
and that additional
of those changes
of a person
specification,
sensor detects
or object,
(2) the "Reflex
BR 49-50.
circuitry
in infrared
as opposed
to changes
instructions,"
and
attributable to the heating or cooling of a large stationary object like a pool of
water, brick wall, or air-conditioning
subject
phrase
makes
phrase
is reasonably
detects
changes
understood
phrases
description
as shorthand
energy
of how the motion
sensors
Q1 and Q2" are described
external
Thus, in context,
the circuit drawing
of infrared
energy
explanation
these patents
sensor
by the sensors
the "passive
for "detection
to motion,"
energy
attributable
States patents
in the District
as to why it should be permitted
for the first time on appeal.
art on the face of the '066 patent,
column
(PIR)
light
3, lines 24-
to understand
would reasonably
by the sensors
Q1 and Q2
and "[i]f at some point the sensors
(U.S. Patent Nos. 4,943,712
were never addressed
infrared
skill in the art, presumed
as shorthand
two United
3, line 24 -
to infrared
JA 22 ('066 patent,
Q1 and
by a detailed
[/d. at column
as each being "responsive
of infrared
also relies upon
face of the '066 patent
these patents
of that discussion,
of ordinary
attributable
and Q2 detect a change
DESA
of motion
Figs. 2A and 2B and also how a PIR works,
the above phrases
infrared)
to motion
Q1
..."
cited as prior art on the
and 4,982,176).
However,
Court,
and DESA
offers no
to introduce
statements
contained
Although
these patents
in
are listed as prior
they were not used by the examiner
46
that
to motion."
system works
to the lamp."
a person
understand
radiation,
6, lines 2-3)] are accompanied
detection
4, hne 5]. At the beginning
28).
in infrared
for "[a] PIR (passive
such as "detection
..." [JA 23, column
by sources
changes
of the
4, lines 6-8] and "[i]f at some point the sensors
column
produced
Here again, since the context
attributable
in the patent
Q1 and Q2" [JA 22, column
Q2 detect motion,
Id.
it clear that the PIR detects
in infrared
Likewise,
unit.
to reject
claims, nor were they the subject of any discussion
in the patent
prosecution
file
history.
Moreover,
referenced
statements
interpretation
radiation
250.")
even if these patents
are not inconsistent
of "sensor
detector
means,"
JA 1050 at column
testimony
consistent
circuit
element
inconsistent
in the sensor means
with the explicit
original)],
claims
sensor means
law.
However,
claim elements
Court's
a PIR radiation
detector
2, lines and 62-
claim interpretation,
inclusion
and the
claim
Court's
Probable
Error
inclusion
of pulse counting
attomey's
in
in
in the
as a matter of
drafting
of claim
12,
of claims 6, 9, 10 and 11.
In Claim
12
application,
6, 9, I 0 and 11 are based,
47
circuit
[BR 46 (emphasis
6, 9, 10 and 1 lis erroneous
interpretation
claims
in the control
the same in each claim"
and filing of the '066 parent patent
upon which
6, 9, 10 and 11 is
12. Since, "a claim term that appears
to be in the patent
Court's
12
of the pulse counting
of claims
of pulse counting
of claims
the error appears
(I)
claims
Court's
that the District
rather than in the District
original
inclusion
be interpreted
argues
The preparation
includes
claim elements
of independent
should
DESA
clear that the PIR is an infrared
Express Inclusion
of "Pulse Counting"
In Claim
Does Not Defeat The District Court's Claim
Interpretation
out that the District
means claim element
multiple
with the District
claim
experts.
d)
points
200 further
Court's
5, lines 64-65 and JA 1037 at column
of Defendants'
DESA
with the District
since each makes
("the alarm system
65. This is entirely
could be relied upon at this late date, the
including
was by a patent
the
attomey with a firm in Flint Michigan [JA 218-219]. However, prosecution of the
patent apphcatlon, including the post-filing addition of claim 12, was immediately
taken over by a different patent attorney with a different firm in Chicago, Illinois
[JA 246, 516], who introduced several anomalies into the claims -- perhaps as a
result of his failure to understand the original claims (or possibly, in the case of
claim
12, even in order to provide
the type DESA
None
of the claims
application
That the second
understandable
-- included
and McCavit
attomey
might
since the claims
extensive
etc.] and his failure
between
the "sensor
of
a review
with the knowledge
inclusion
added claim
was
12, five
the claims is perhaps
to read because
of the original
condition,"
"second
explicit
patent
"second
level of
links in the patent
and "control
circuit
means"
claim
in the specification.
Counter-Evidence
of the patent
of a person
of pulse counting
to pulse
JA 513, 516-17.
["first predetermined
means"
limited
claims
to pulse counting
attomey
have misunderstood
to provide
structure
(2)
attorney's
limitation
"first level of illumination,"
and corresponding
Nonetheless,
declaration.
use of code words,
illumination,"
together
argument
-- the original
any claim expressly
are difficult
condition,"
specification
attomey
was when the second
predetermined
elements,
by the original
The first and only time that an express
after the Jensen
attorneys
drafted
application
added to the patent
months
with a litigation
is making).
filed with the patent
counting.
the patent owner
To Claim
specification,
12
claims,
skilled in the art, reveals
in claim 12 as an anomaly,
48
and the history,
the second
patent
rather than a
compelling argument for construing pulse counting to be part of the control circuit
means instead of the sensor means:
•
Persons
skilled
in the art would understand
changes
m infrared
energy.
it is only the combination
selection
detects
circuitry,
motion
including
between
and other PIR signals
•
Claim context
also points
sensing
For example,
in the claims,
ofaperson
circuit means
detection
dim to bright
processed
A person
or other object,
Q1 and Q2 with the
since pulse counting
those PIR signals
to inclusion
circuitry,
attributable
to non-motion.
JA 568-575
rather than in the control
is
to motion,
of the pulse counting
at 575.
circuitry
circuitry.
it is the task of the sensor means
to detect
the lamp from dim to bright in response
of a person
or object.
only after the signal reaches
by the pulse count circuit.
skilled
Thus, in the patent,
or object, 21 and it is the task of the control
to switch
of motion
771-72.
pulse count circuit 51, that actually
attributable
in the motion
the motion
•
of PIR detectors
of a person
what distinguishes
JA 171,755,
that a PIR only detects
in the art would
node A has been processed
The lamp switches
node A after having
to the
from
been
JA 770-72.
understand
that once the signal at
by the logic circuitry
which
decides
which
2t This is explicit in claim 6, which defines "first predetermined
condition" as
"motion ... of a person or object." It is also implicit in claims 9, 10 and 11 which,
although they do not define "predetermined
condition," each requires the control
circuit means to cause the lamp "to emit light at said second [bright] level of
illumination
in response to detection of said predetermined
condition.".
49
mode is in effect (JA 778, first full paragraph), a signal which
indicates whether the circuit has or has not detected motion appears at
node 61. JA 0018-19. If the signal at node 61 is low, this corresponds
to motion; whereas, afthe signal at node 61 is high, this corresponds
to non-motion.
JA 023 at column 5, line 58 - column 6, line 15. The
pulse counting circuit 51 is part of the circuitry which decides whether
or not to produce a high or low signal at node A and, consequently, at
node 61.
A person skilled in the art would understand that the parallel structure
of the schematic diagram and patent claims similarly points towards
inclusion of the pulse counting circuitry in the sensor means circuits,
rather than in the control circuit means circuits. Broadly speaking
from a circuit design perspective, the claims describe the design
functions of detecting one or two predetermined conditions (e.g.
motion and/or daylight), performing some logic to choose a mode for
the lamp (e.g. off, dim, bright) based on a combination of detected
events, and then implementing that mode with appropriate lamp
control circuitry.
JA 777-778. These three functional divisions seem
to be purposefully captured in the schematic diagram of '066 patent
FIGS. 2A and 2B since, in the schematic, the detection/selection
circuitry is set out in the top row of circuit blocks, the logic circuitry
is set out in the middle row of circuit blocks (perhaps including the
timer (block 52) above), and all of the lamp modulation and override
50
control circuitry is set out in the bottom
the schematic,
the pulse counting
row of circuit blocks.
circuit is located
along with the rest of the detection/selection
photocell
circuitry
The file history
of block
includes
art was distinguished
the switch
application
pulse counting
disclosed
had intended
rather
to distinguish
examiner
"sensor
as indicating
means
the declaration
prior
JA 463-465.
between
disclosed
the claims
in the claims,
simply
the
and claimed"
If the patent
on the basis
there would
have been
of this is reasonably
that pulse counting
that pulse counting
of
in the instant
in the claims."
The purpose
claim element
reference
the
false operation
in the claims."
and that the applicant
to understand
(including
as drawing a distinction
was recited
than "recited,"
to reduce
and claimed
were "recited
no need for this distinction.
understood
feature
which was "generally
which
that pulse counting
circuitry
claims on the basis that the prior
as recited
understood
feature
and other features
attorney
counting
or other features
This is reasonably
in the upper row
in which highly relevant
from the patent
as generally
In
56). Id.
a declaration
art did not "have apulse
Id.
was "generally
intended
claimed"
the patent
was included
in the
by virtue of § 112 ¶6. In the file history,
to the pulse counting
JA 463-465.
51
feature
is underlined.
(3)
According
to DESA,
because
it violates
appears
in multiple
interpretation
The "Consistent
Not Apply Here
the District
a rule requiring
claims.
is merely
terms are normally
v. AWH
requiring
"pulse counting"
and logical
of a single
in the "control
anomaly
introduced
apparent
error to dictate
claim interpretation
must necessarily
3.
Here, where
patent
interpretation
"Because
claim
the usage of a term in
added.)
There is no rule
to yield to an apparent
it appears
that the inclusion
claim element
attorney,
to common
of claim
it makes
of other independent
yield
consistent
of the same term and other claims."
circuit means"
by a late-coming
regarding
the patent,
claim interpretation
claim.
is erroneous
not a rule of law.
throughout
Does
of a claim term that
the maxim
Corp., 415 F.3d at 1314 (emphasis
error in the drafting
of
12 is an
no sense for this
claims.
Maxims
of
sense.
DESA's Demonstration
Does Not Defeat Judge Tranger's
§112 ¶6 Definition
of "Sensor
Means for Detecting Motion"
argues
(William
Raper)
to bright
in response
(miniature
baseball
is a motion
interpretation
an aid to interpretation,
the meaning
Maxim
claim interpretation
However,
used consistently
the reasonable
DESA
consistent
BR 46.
one claim can often illuminate
Phillips
Court's
Interpretation"
that, using an allegedly
built and demonstrated
to the motion
bat).
BR 19-21.
"bare PIR," a DESA
a device
of a person
According
detector.
52
which
(waving
switched
engineer
a lamp from dim
hand) or an object
to DESA,
this showed
that a PIR
At
best,
PIR produces
the motion
all that all this demonstration
22
an electrical
of a person
demonstration
signal in response
or object can produce
does not take into account
could be produced
by heating
brick walls and air-conditioning
DESA has not argued
nor could DESA
patent
in patent
-- and other selection
4.
a PIR detects changes
a change
in infrared
those changes
and cooling
radiation,
radiation.
in infrared
of stationary
objects
allege, a
materials,
The
radiation
which
like pools of water,
that this demonstration
drawing
Figure
circuitry
unit is disclosed
shown
or described
2A and 2B, which
besides
in the patent,
includes
in the
pulse
a band pass filter.
this Court to reject Professor
The Testimony
Massengill's
Of
testimony
in infrared radiation rather than motion, DESA argues
to gain his understanding
and
units.
of his lack of industrial
from marketing
in infrared
This Court Should Not Disregard
Professor Massengill
To try to persuade
"[b]ecause
is that, as Defendants
to changes
do so, since the only embodiment
is illustrated
counting
shows
experience,
Professor
Massengill
that
that
was required
of PIRs from books or technical papers about PIRs or
all extrinsic
evidence
to the '066 patent." BR 50
22Upon cross examination
by Professor Carnal, Mr. Raper acknowledged
that his
device actually included some selection circuitry, a band pass filter as in the patent,
rather than being a bare PIR. JA 916-917 at TR 543-45. The purpose of the band
pass filer is to filter out "noise." JA 22 at col. 3, lns. 50-61. Had he not done so, it
is fair to assume that during the courtroom demonstration
the lamp would have
been susceptible
to switching from dim to bright in response to noise (i.e. nonmotion), without the motion of a person or object being present. The fact that Mr.
Raper felt the need to include selection circuitry in his circuit, and still try to pass it
offas a "bare PIR," illustrates the point Defendants
make, and the poverty of
DESA's position.
53
(emphasis added). However, Professor Massengill's testimony on this point is
perfectly
consistent
Moreover,
with the intrinsic
Professor
with the claim construction
record.
Massengill's
mandated
description,
and the prosecution
to disregard
or discount
Professor
JA 22 (col. 3, 1.24-28),
testimony
by the claims
history,"
as would
Massengill's
415 F.3d at 1317; BR p. 51.
54
is certainly
not "clearly
themselves,
at odds
the written
have required
testimony.
171,237.
Phillips
the District
Court
v. A WH Corp.,
E.
Ref.
Letter
K(1)
Structure
Ref.
Name
Control
Circuit
Means -claim
element
n(1)
c (1)
Control
Circuit
Means -claim
element
C(1)
Defining
"Control
Circuit
Means"
Under
Claim Text
Claims
Control circuit means coupled
to said lamp and responsive
to
said first and second sensor
means for causing said lamp to
emit light at said first level of
illumination
in response to said
second predetermined
condition
in the absence of said first
predetermined
condition, and
for causing said lamp to emit
light at said second level of
illumination
in response to
detection of said first
predetermined
condition
6
Control circuit means coupled
to said lamp and responsive to
said sensor means for causing
said lamp to emit light at said
first level of illumination
in the
absence of said predetermined
condition, and for causing said
lamp to emit light at said
second level of illumination
in
response to detection of said
predetermined
condition,
wherein said control circuit
means is powered b¥ an AC
voltages (sic), and
9, 10, 11
§112 ¶6
Court's
Defimtion
Function:
italics, zj
in
Structure:
patent text,
col. 5, In. 63 to
col. 6, In 14
[JA 23, 4647,]; plus
equivalents
[implicit per
JA 44]; plus
corresponding
Massengill
drawings.
[JA
46-47, 77 (in
red, implicit).
Function:
Same as italics
in claim
element K(1),
per agreement
of counsel. JA
45-46.
Structure:
same as claim
element K(I).
JA 44.
23 Judge Trauger: [referring to the functional language of claim element K(1)]
"And, basically, this just means in plain language, which at this point at least we
can all understand,
I certainly didn't understand
it at the beginning of this
proceeding,
that the function is the means for causing the lamp to go on at accent
level when there is no motion but it's dark or dusk, and then going up to the higher
level of illumination,
which I believe is 95%, in response to detection of the
motion of a person or object. So that's the plain language of what we're looking
for." JA 46.
55
As stated earlier, pursuant to the Stipulated Judgment [JA 0028-31 ], the
District
Court's
§ 112 ¶6 interpretation
this Court reverses
for detecting
or vacates
of"control
the District
circuit means"
Court's
interpretation
the District
Court's
interpretation
first by quibbling
with the District
Court's
expression
then by a narrow
reading
nit-picks
Reasonably
1.
12-21.
interpreted,
the claimed
[JA 0046, 11.5-11],
DESA
is correct
the illumination,"
understood,
rather
of the District
The District
of "Control
Regarding
function
of "sensor
means
motion."
DESA
structure.
is moot unless
the District
Court's
Circuit
function,
identification
Court's
the District
purposes,
The District
function
structure,
Here, the District
by reference
Court correctly
recited
However,
the
Id. at 11.
level of
reasonably
understanding,
so stipulate.
of Structure
Function
the District
to text and Professor
identified
Function
only refers to a "second
Identification
function,
and
is correct.
it in "plain language."
and Defendants
Corresponding
to the Claimed
Means" Is Correct
corresponding
interpretation
"95%" to demonstrate
Court's
the claimed
function,
of the corresponding
Court correctly
and then paraphrased
Court was using
than for definitional
After identifying
of the claimed
than "95%" of full illumination.
the District
circuit means,"
Interpretation
of the Claimed
Means" Is Correct
that the claimed
rather
2.
Court's
of "control
of "Control
Court identified
Massengill's
the text which describes
Circuit
the
diagrams.
the operation
24 The "DETAILED
DESCRIPTION"
is divided into two segments which could
have been, but were not, helpfully labeled "Structure"
and "Operation."
The first
Continued
on the next page
56
24
of the claimed structure, and the diagrams
but did not explicitly
structure.
reference
While
also identifying
Massengill's
is altogether
correct
structure
the structure
opens the door to quibbling
should
District
Court correctly
identified
and K(1)) correctly
is making
by the District
identify
the text which
describes
the District
Whereas
the operation
Court's
without
Massengill
of the claimed
marked
function,
Massengill's
which corresponds
the structure
interpretation
the text identified
of the claimed
Court (Professor
the structure
the text Professor
[JA 1112-13,
be clarified.
describes
structure,
here.
there be a remand,
should
by
and appropriate,
the text describing
circuit means"
chart.
diagrams
of the claimed
of the claimed
of the claimed
of the type DESA
quite logically,
identification
the structure
structure,
the operation
"control
function,
Court's
the claimed
to the text describing
Accordingly,
diagrams
illustrate
the text which describes
the District
to Professor
the reference
arguments
identify
which
of
by the
and the
diagrams
C(1)
to the claimed
function
for C(1) is,
in red as C(1) in the text
col. 4, In. 37 to col. 5, In. 30.] Text corresponding
to diagram
Conhnued from the previous page
segment, extending from col. 2, 1.38 through col. 5, 1.48, is devoted to a
description of the structure of the circuit shown in FIGS. 2A and 2B. The second
segment, extending from col. 5, 1.48 through col. 6, 1.65, describes that circuit's
three modes of operation. The claimed function of the "control circuit means"
claim element describes the first mode of operation, i.e. the "motion sensing accent
mode." The District Court identified the text in the Operation section which
described the mode of operation corresponding
to the claimed function, and
correctly identified the portion of the circuit (in Professor Massengill's diagrams)
that performed the claimed function. However, the District Court's ruling would
have been clearer if she had also referred to the text in the Structure section which
described the portion of the circuit identified in Professor Massengill's diagrams.
57
K (1) appears at the same location, excluding reference to the 120 V AC power
supply. [JA 1113, col. 5, ln. 5]
Reasonably interpreted as above, the District Court's ruling identifying
structure corresponding to the claimed function for "control circuit means" does
not, as DESA alleges, encompass "structure [] already assigned as the structure of
"sensor means [for detecting motion]." BR 53-54. That DESA's interpretation of
the District Court's ruling results in a substantial overlap between the structures
supporting these different claimed functions is evidence that DESA has misread
the District Court's ruling.
According to DESA, the only structure necessary to perform the claimed
function is the triac 73 and phase angle 72 [BR 54], whereas inclusion of the zero
crossing detect 66 is overinclusive because it "merely enables phase angle 72 to
operate as intended, but it does not cause the lamp to emit light as recited in the
"control circuit means". BR 56. DESA should not be permitted to make that
argument here since it did not make the argument in the District Court, and now
that the record is closed, Defendants are unable to respond with a statement from
Professor Massengill.
Moreover, in the District Court, Mr. Carlson agreed that the
zero crossing detect was structure supporting the claimed function for the "control
circuit means." JA 68, 77, 122.
Further, the patent specification makes clear that the zero crossing detect 66
provides the output which, along with the threshold voltage at node 61, causes the
phase angle control and triac to turn on the lamp at either the dim or bright modes
when operated in accent mode. JA 0022, col. 4, ln. 56 to col. 6, ln. 14. Logically,
58
the structure supporting the claimed function of switching the lamp between dim
and bright must necessarily include the structure which produces the voltages
causing the lamp to be either dim or bright.
In the District Court, the only disagreement was that Mr. Carlson failed to
include the logic circuitry necessary to determine "off," "dim," or "bright"
operation. JA 68, 77, 773. Professor Massengill includes that circuitry, i.e. the
circuit
components
necessary
to establish
needed
to perform
the claimed
function
first level of illumination..,
level of illumination."
DESA
argues
and for causing
said lamp to emit light at said second
that the daylight
and turn-on
detect
inhibit
and reset circuit
portion
52 during
this is true, this means that the daylight
responsible
for producing
the predicate
at some level of illumination,
involved
in carrying
whether
51 [is] simply
carrying
communicating
means
data between
50.").
voltage
Asyst,
voltage
bright,
is the claimed
daylight
hours
hours.
at node 61 necessary
function.
local control
As a result,
the
so that
BR 56.
57 is
to light lamp
circuit 57 is
It does not merely
enable
processor
20 and
268 F.3d at 1371.
at node 61 necessary
function.
daylight
disables
e.g. as does line 51 in Asyst ("the role of line
The same can be said for the switch
the predicate
57 merely
detect and reset circuit
dim or bright.
out the claimed
the circuit to carry out that function,
which
[at node 61 ]
said lamp to emit light at said
will not cause the lamp 18 to be turned on during
Although
directly
of "causing
voltages
JA 773.
output of the on-timer
motion
the threshold
62, since it is responsible
for the lamp to switch
Switch
59
62 does not merely,
for producing
between
dim and
by analogy
to
line 51 of Asyst,
carry electricity
dim and bright.
In,;tead,
F.
to the circuit which
If This Court Were to Conclude
That The District
Court's
¶6 Interpretation
of "Sensor Means for Detecting
Motion
Erroneously
Included
Pulse Counting,
Then The "Control
Means"
Should Include Pulse Counting
(And Equivalents)
means
and, therefore,
of the "sensor
means
pulse counting
necessarily
motion"
circuit 51, Defendants
be construed
declaration
Ceramic
did not include
to include
urge that "control
which
circuit
whereas
circuit means"
the
should
51.
means"
is based upon the
the claimed
1342] by arguing
pulse counting
function
does not include
circuit
distinguished
prior art [JA 576-77,
pulse counting,
for the claimed
claim element
of "control
§112
"
Circuit
is part of the control
structure
pulse counting
construction
and McCavit
the Nippon
that pulse counting
that the supporting
for detecting
This alternative
Jensen
the lamp between
it is part of that circuit.
If this Court were to conclude
circuit
switches
invention
that Nippon
is "generally
from
Ceramic
described
and
claimed."
This file history
statement,
immediately
issued
an important
public, notice
present
a notice
in all claims.
-function
format,
included
in the claims
"control
circuit means."
following
of allowance,
function
the patent
and apparently
as to the presence
In this context,
the only reasonable
which
where
even underlined,
of pulse counting
all the claims
interpretation
is specifically
60
being
is that pulse counting
called
serves
are in classic means-plus
by virtue of § 112 ¶6 -- if not in "sensor
The fact that pulse counting
examiner
means,"
out in claim
is
then in
12 gives rise
to a potential claim differentiation argument; however, it is well-established that
claim differentiation
is trumped by the statutory reqmrements of § 112 ¶6. IMS
Tech.,
206 F.3d at 1431-32;
VIII.
CONCLUSION
The Stipulated
correctly
determined
Judgment
structure.
means,"
Because
including
939 F.3d at 1538.
should
that "sensor
§ 112 ¶6, and then correctly
"sensor
Laitram,
be affirmed
means"
selected
the District
should be interpreted
structure
its determination
the District
because
supporting
that "pulse
Court correctly
construed
in accordance
the claimed
counting"
"sensor
Court
function
with
of
is part of that
means,"
all other
issues are moot.
DATED:
June 2, 2006
Respectfully
submitted,
TOWNSEND
and TOWNSEND
and CREW
LLP
By:
Roger L. Cook
.
Iris Sockel Mitrakos
Attorneys
for Appellees
EML TECHNOLOGIES,
COSTCO
WHOLESALE
61
LLC and
CORPORATION
CERTIFICATE
OF SERVICE
l_ni_i__tat_a (£ourtof Appeals
for th__il_ral
_ircuiI
No. 06-1168
DESA IP,
Plaintiff-Appellant,
V.
EML TECHNOLOGIES,
LLC AND
COSTCO
WHOLESALE
CORPORATION,
Defendants-Appellees.
I, ,_ugc,.
_
¢/x_, being duly sworn
the age_f 18, upon my oath depose and say that:
I am retained
Defendants-Appellees.
That
on
the
18 th
Day
of
2006,
addressed
wrapper,
by depositing
in an official
I
served
the
within
BRIEF
for
FOR
upon:
Robb S. Harvey
Waller, Lansen Dortch
& Davis, PLLC
Nashville City Center
511 Union Street, Suite 2100
Nashville, TN 37219
Express,
to law and being over
by TOWNSEND AND TOWNSEND AND CREW LLP, Attorneys
DEFENDANTS-APPELLEES
via Federal
according
James R. Higgins, Jr.
Robert J. Theuerkauf
Middleton Reutlinger,
PSC
2500 Brown and Williamson
401 South Fourth Avenue
Louisville,
KY 40202-3410
2 true copies of each, enclosed
depository
Tower
of the Federal
in a properly
Express.
Unless otherwise noted, 12 copies have filed with the Court on the same date and
in the same manner as above.
May 18, 2006
CERTIFICATE
]_nitei_ _tat_s
for the _ral
No. 06-1168
OF SERVICE
_ourt nf 2kpp_als
_ir_it
DESA IP,
Plaintiff-Appellant,
V.
EML TECHNOLOGIES,
COSTCO
LLC AND
WHOLESALE
CORPORATION,
Defendants-Appellees.
I, Robyn Cocho, being duly sworn
18, upon my oath depose and say that:
I am retained
Defendants-Appellees.
FOR
according
to law and being over the age of
by TOWNSEND AND TOWNSEND AND CREW LLP, Attorneys
That on the 2nd Day of June, 2006, I served the within CORRECTED
DEFENDANTS-APPELLEES
upon:
Robb S. Harvey
Waller, Lansen Dortch
& Davis, PLLC
Middleton Reutlinger,
PSC
2500 Brown and Williamson
401 South Fourth Avenue
Louisville,
the same manner
June 2, 2006
noted,
Tower
KY 40202-3410
via Federal Express, by depositing 2 true copies of each, enclosed
addressed wrapper, in an official depository of the Federal Express.
otherwise
BRIEF
James R. Higgins, Jr.
Robert J. Theuerkauf
Nashville City Center
511 Union Street, Suite 2100
Nashville, TN 37219
Unless
for
in a properly
12 copies have filed with the Court on the same date and in
as above.
, _.
_/__._)
.
-. _
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LIMITATION,
OF COMPLIANCE
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L. Cook
Attomeys
for Appellees
EML Technologies,
LLC and
Costco Wholesale
Corporation
60786155
vl
Rule of
in a proportionally
June 2, 2006
Roger
Rule of