IlUlIIIIIIIIIMIIIIIIIIlUlIlUlIlU
USFC2006-1168-09
{632F930B-7F99-471
E-8ABA-B4B025CC2042}
{70890} {32-060712:082607}
{060506}
REPLY BRIEF
06-1168
UNITED
STATES
COURT
OF APPEALS
FOR THE FEDERAL
CIRCUIT
DESA IP, LLC
Plaintiff-Appellant
Vo
EML TECHNOLOGIES,
and
COSTCO
WHOLESALE
LLC
CORPORATION
Defendants-Appellees
APPEAL FROM THE UNITED STATES DISTRICT
COURT FOR THE
MIDDLE DISTRICT OF TENNESSEE IN CASE NO. 3:04-CV-0160
JUDGE ALETA A. TRAUGER
CORRECTED
REPLY
PLAINTIFF-APPELLANT
OF
DESA
JAMES
,,,._._,_=v _'_
BRIEF
IP, LLC
R. HIGGINS,
AUGUSTUS
JR.
S. HERBERT
ROBERT J. THEUERKAUF
MIDDLETON
REUTLINGER
2500 Brown
& Williamson
Tower
Louisville,
Kentucky
40202-3410
(502) 584- I 135 (Telephone)
(502) 561-0442
COUNSEL
(Facsimile)
FOR PLAINTIFF-APPELLANT,
DESA IP, LLC
For_Ji"
¥O'RWg.c_rfff=t__f-interm..
TABLE
OF CONTENTS
PAGE
CERTIFICATE
OF INTEREST
TABLE
OF CONTENTS
TABLE
OF AUTHORITIES
Introduction
ARGUMENT
I°
..............................................................................
........................................................................................
ii
.................................................................................
iv
..............................................................................................................
IN REPLY
.........................................................................................
The Judgment
Must Be Reversed
Because it is Based On the
District Court's Erroneous
112/6 Construction
..............................................
a.
b*
C°
d*
eo
1
4
4
The District Court's 112/6 Construction
Improperly
Assigns
as Corresponding
Structure
for "Sensor
Means"
Circuitry
Which Does Not Perform the Identified Function ...............................
6
The District Court's 112/6 Construction
Improperly
Imports Non-Claimed
Functions From the Preferred
Embodiment
Into the "Sensor Means" Claim Term ............................
8
The District Court's 112/6 Construction Improperly
Renders Pulse Count" as Actually Recited in Claim 12 a
Surplusage,
and Destroys the Internal Coherence
of the
'066 Patent's Claim Structure ...........................................................
11
Raper's Demonstration
That a Bare PIR Can and Does
Detect Motion Demonstrates
That the Supposed Need for
"Selection
Circuitry" to Detect Motion is a Ruse ..............................
12
Defendants
Construction
f.
i
Concede
That The District Court's
of"Control
Circuit Means"
The District
Court's Construction
is Improper
Because
it Assigns
ii
112/6
is Improper
of"Switching
as Corresponding
.......................
Means"
17
Structure Components
of Switching
go
Conclusion
II.
As Actually
the Function
Recited ......................................................
17
DESA Did Not Waive Its Argument
That Other "Means"
Terms Were Improperly
Construed ....................................................
18
as to 112/6 Construction
Issues ...........................................................
18
The Judgment of Non-Infringement
Must Be Reversed Because
it is Based on the District Court's Erroneous Holding That
"Sensor Means," "Control Circuit Means" and "Switching
Means"
Are Governed
By 112/6 ..................................................................
The Claim Terms Are Not Presented in "Classic Means Plus
Function Format .................................................................................
a.
19
20
The Only Testimony
From Persons Skilled In the Art
Was That "Sensor Means," "Control Circuit Means" and
b.
"Switching
c.
III.
That Do Not Perform
Means"
Were Structural,
is Either Structural
........................
22
or it is Not .................
23
Defendants
Proffer a Disguised Prosecution
Disclaimer
Argument
to Justify Interpreting
"Pulse Count" as Part of Every Claim ......................
25
al
A Term in a Patent Claim
Not Functional
The Jensen/McAvitt
Declaration Does Not Meet This
Court's "Clear and Unmistakable"
Standard to Create a
Prosecution
Disclaimer
Requiring
"Pulse
Count"
to be
Part of Every Claim ............................................................................
Both the Grammatical
bJ
Structure
and the Schematic
Diagram
of the '066 Patent Unequivocally
Require "Pulse Count" as
a "Portion of the Circuit" Not Part of Any Sensor ............................
IV.
PROOF
Conclusion
....................................................................................................
OF SERVICE
CERTIFICATE
...........................................................................................
OF COMPLIANCE
....................................................................
iii
24
27
30
31
32
TABLE
OF AUTHORITIES
PAGE
Cases
Apex, Inc. v. Raritan Computer, Inc.,
325 F.3d 1364 (Fed. Cir. 2003) .............................................................
20, 21, 23, 24
Applied Medical Resources
Corporation
v. United States
Surgical Corporation,
__ F.3d ______,
2006 WL 132504
(May 15, 2006) ..........................................................................................................
Asyst Tech., Inc. v. Empak, lnc., 268 F.3d 1364
(Fed. Cir. 2001) ...............................................................................................
9
4, 7, 18
Atmel Corp. v. Information
Storage Devices, Inc.,
198 F.3d 1374 (Fed. Cir. 1999) ...............................................................................
CAE Screenplates,
224 F.3d
Inc. v. Heinrich
Fiedler
GmbH
16
& Co. KG,
1308 (Fed. Cir. 2000) ...............................................................................
11
Cardiac Pacemakers,
lnc. v. St. Jude Medical, Inc.,
296 F.3d 1106 (Fed. Cir. 2002) .................................................................................
9
CellNet Data Systems, Inc. v. ltron, Inc.,
17 F.Supp2d
1100 (N.D. Calif. 1998) ...............................................................
Cole v. Kimberly-Clark
Generation
Corp.,
Il Orthotics,
102 F.3d 524 (Fed. Cir. 1996) ...............................
JVW Enters.
v. Ethicon
v. Interact
21
Inc. v. Med. Tech., Inc.,
263 F.3d 1356 (Fed. Cir. 2001) .............................................................................
Greenberg
20, 21
Endo-Surgery,
Accessories,
7, 9
Inc., 91 F.3d 1580 (Fed. Cir. 1996) ...... 20, 23
Inc.,
424 F.3d 1324 (Fed. Cir. 2005) ..................................................................................
Linear Technology
Corp. v. Impala Linear Corp.,
379 F.3d 1311 (Fed. Cir. 2004) ...................................................................
iv
9
20, 23, 24
Markman
Merck
v. WestviewInstr.,
Inc., 517 U.S. 370 (1996) .........................................
& Co., Inc. v. Teva Pharmaceuticals
11
USA,
347 F.3d 13672 (Fed. Cir. 2003) .............................................................................
14
Micro Chem., Inc. v. Great Plains Chem. Co.,
194 F.3d 1250 (Fed. Cir. 1999) .................................................................................
4
Nilssen
v. Magnetek,
Omega Eng'g,
Inc., 1999 W.L. 982966
Inc. v. Raytek
Panduit
Corp. v. Dennison
Phillips
v. AWttCorp,
Rodime
PLC v. Seagate
Sage Products,
(N.D. Ill. 1999) ..............................
Corp., 334 F.3d 1314 (Fed. Cir. 2003) ....................
26
Mfg. Co., 810 F.2d 1561 (Fed. Cir. 1987) ..................
12
415 F.3d 1303 (Fed. Cir. 2005) ...................................
Technology,
Inc.,
14, 20
174 F.3d 1294 (Fed. Cir. 1999) ...........
Inc. v. Devon Ind., Inc., 126 F.3d
$3 Inc. v. Nvidia
20
1420 (Fed. Cir. 1997) ..............
Corp., 259 F.3d 1364 (Fed. Cir. 2001) ..................................
Texas Instruments,
Inc. v. U.S. Int'l.
12
22
15, 16
Trade Comm "n.,
988 F.2d 1165, 1177 (Fed. Cir. 1993) .....................................................................
27
Unique
27
Concepts,
Inc. v. Brown,
939 F.2d 1558 (Fed. Cir. 1991)
........................
Statutes
35 U.S.C.
§ 1 !2 ¶6 ..................................................................................................
20
Other
Modem Dictionary
of Electronics
.........................................................................
19
Introduction
The judgment
that "pulse
Opening
count"
of non-infringement
is a required
Brief and confirmed
that is contrary
to Federal
The specification
count"
is to reduce
count"
only in claim
District
Court's
construction
of"detecting
The Response
(RBr47).
that "pulse
motion
Column
of a person
The real "error"
that the function
requires
means"
or object"
count"
recited
Despite
"pulse
error"
is the Judgment's
"pulse
this, the
count"
as part of
of every claim to perform
(JA43).
(hereafter,
construction
is not recited
(and hence the
in the "sensor
means"
claim 6, 9, 10 or 11), and despite
in non-asserted
circuit means").
obvious
of''pulse
4, Line 1-2), and recites
Court's
in any asserted
is part of"first
on a claim construction
of Defendants/Appellees
is explicitly
it is a "fairly
As set forth in DESA's
is based
circuit means."
the District
("control
this Court concludes
and must be reversed.
of the "sensor
that "pulse
anywhere
count"
count"
(JA22,
Brief ("RBr")
claim element
12, contending
precedent
circuitry"
notwithstanding
(or indeed
the Judgment
of the '066 Patent
seeks to justify
fact that "pulse
different
Circuit
of every claim.
12 as part of"control
the function
element
below,
false triggers
"selection
Judgment),
component
stand unless
of the '066 Patent teaches
the so-called
"Defendants")
cannot
(JA778)
Defendants
12 as part of a
brush aside claim
or one of several
embracing
sensor means."
claim
the
and adopting
Such a notion
"anomalies"
the notion
derives
from the
extrinsic testimony of Defendants' expert Prof. Massengill who: never read the
prosecution history of the '066 Patent (JA908); never spoke to the patent expert
(Thesz) he supposedly relied on (JA92 I); never read any prior art reference
(JA908); never read the entire deposition of DESA's expert (Carlson) and instead
only read excerpts provided by Defendants' counsel (JA918) but nevertheless
concluded that Carlson "conceded" to his position; and obviously did not prepare
his own report but merely signed it as prepared by Defendants' counsel based on
exhibits (Master Claim Chart, etc.) prepared by counsel (JA919) 1.
Prof. Massengill's opinion is contrary to the '066 Patent's teaching. There is
n___q
teaching in the '066 Patent that "pulse count" is part of any sensor; in fact, both
the specification and claims of the '066 Patent explicitly recite that "pulse count" is
part of the control
construction
which
circuit.
(adopted
at their urging)
Prof. Massengill
motion
alleges
from non-motion
DESA's
document
SL-5315
that PIPs
to so-called
to detect motion
claim
"selection
sensor detects
importing
is truly a person
(JA237).
violates
a non-claimed
_xperienced
In
at least two
function
in the field
the '066 Patent claim terms, see infra, pp. 13-14.
2
for
but in fact that
motion"
circuitry"
circuitry"
by distinguishing
point to the Instructions
based on such "selection
Prof. Massengill
Court's
do not detect motion,
infrared)
of this Court, by [1] improperly
to interpret
the District
by pointing
is necessary
states, "A PIR (passive
' As to whether
qualified
justify
(RBr 38). Defendants
as ''proof'
truth, claim construction
precepts
Defendants
(discriminating human motion from object motion) and/or [2] including
corresponding structure that does not perform the identified function.
Defendants state the disputed claim limitations are in "classic means plus
function format" (RBr60) but that is not correct. The key limitations
means,"
"control
modifier
that removes
Defendants
("112/6")
and "switching
from persons
skilled
should not be construed
because
its own judgment
criticize
testimony
structure"
premise
Court's
of DESA's
construction
These and other points
means"
of"eontrol
are explained
that those claim
Instead,
(JA38).
the District
Defendants
test, but the "connote
directly
from case authority
Defendants
circuit means"
Brief, the District
("sensor
were governed
wholly
the
do stipulate
is incorrect
of
that the
(P-d3r 56-57).
in more detail below.
Opening
means")
(adopted
explanation
Surprisingly,
disregarding
§ 112, sixth paragraph
not functional.
is derived
[1 ] that key limitations
and "switching
112/6 construction
without
witnesses
As set forth in DESA's
basic errors, ruling
under 35 U.S.C.
a structural
format.
and Carlson),
as not based on the proper
this Court and was fully explained.
Dislriet
each contain
the District Court's
in the art (Raper
such terms are structural
Court substituted
DESA's
means")
them from the classic means-plus-function
cite no authority which justifies
only testimony
limitations
circuit means"
("sensor
and entirely
Court committed
means,"
"control
circuit
by 112/6; and [2] providing
as proffered
two
by Defendants)
a
that
was erroneous
either because
identified
function
structure
to perform
112/6 response
Response
[a] it incorporated
and/or [b] it assigned
the identified
arguments
excessive
function.
first, because
corresponding
they devote
Defendants'
the larger portion
of their
IN REPLY
The Judgment Must Be Reversed Because it is Based
District Court's Erroneous
112/6 Construction.
To construe
a 112/6 term, first a court must "identify
recited
in the claim," and then "identify
written
description
that performs
Tech., Inc. v. Empak,
must not include
v. Great Plains
Chem.
function,
construction
or object"
the particular
different
structure
but rather merely
Response
both incorporates
and assigns
function
on the
the function explicitly
structure
set forth in the
set forth in the claim."
1364, 1369 (Fed. Cir. 2001).
from that explicitly
recited,
Micro
A court
Chem., Inc.
Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999), and must not
268 F.3d at 1369-70,
Defendants'
the corresponding
Inc., 268 F.3d
a function
assign as corresponding
Asyst,
over-inclusive
into the
Brief to that issue.
I.
recited
functions
This Reply addresses
ARGUMENT
Asyst
non-claimed
components
enable
perform
the strtitcture to operate
the
as intended.
1371.
Brief does not justify
functions
as corresponding
to do with (or even prevents)
that do not actually
detecting
why the District
other than "detecting
structure
motion
circuitry
or simply
Court's
motion
112/6
of a person
that either has nothing
enables
the device
to
operate as intended
perspective,
to detect motion of a person or object.
following
is "first sensor means"
To put this Reply
of claim 6 as construed
District Court:
6.
An apparatus
comprising
2 (JA22)
3 (JA22)
'066 Patent:
'066 Patent:
Col. 3, lines 36-39
Col. 3, line 44
4 (JA22)
(JA22)
6 (JA22)
'066 Patent:
'066 Patent:
'066 Patent:
Col. 3, line 49
Col. 3, line 57
Col. 3, line 61
7 (JA22)
8 (JA22)
'066 Patent:
'066 Patent:
Col. 3, line 67
Col. 4, lines 1-2
9 not expressed
in '066 patent;
supplied
by Prof. MassengiU
by the
into
10
KEY: _
= claim term as recited
The District
ao
Court's
in '066 Patent
11216 Construction
Improperly
Assigns as Corresponding
Structure for "Sensor
Means"
Circuitry Which Does Not Perform the Identified
Function.
The District
means"
Court assigned
as corresponding
structure
from Column
3 Line 24 through
Column
everything
includes
all of Defendants'
function
of detecting
'066 Patent, _
motion
PIR sensors
none of the other "selection
identified
"selection
circuitry")
of a person or object
4 Line 5 (which
(JA43) to perform the identified
(JA43-44).
Q1 and Q2 are capable
circuitry" components
for "first sensor
However,
of detecting
in the
motion,
can or do actually perform the
function:
Detector Block 43 cannot and does not detect motion of a person
or object, it merely processes
signals from the PIR sensors
(which have already detected all forms of motion by detecting
changes in infrared radiation) to select those which correspond to
human body (JA22, Column 3, Line 40), which in fact de-selects
motion of an object, part of the identified function
of 'Tu'st
sensor means;"
to (JA22)
_ stipulated
'066 Patent:
function
Col. 4, lines 4-5
of ''first sensor means"
and
JA43-44
Turn-on Inhibit
Block 46 cannot and does not detect motion
of a
perso.n or object, instead it disables the output of PIR sensors
(which prevents "detecting motion") until the circuit is stabilized
(JA22, Column 3, Line 43);
Amplif-y & Filter Block 47 cannot and does not detect motion of
a person 9 r object, it merely further filters and amplifies (JA22,
Column
3, Line 49) the signal from the PIRs (which Prof.
Massengill
agreed have already detected motion (JA918);
Window
Comparator
Block
48 cannot
and does not detect
motion of a person or object, it merely and only divides the
amplified
and filtered signals into positive and negative
spikes
and rectifies positive
3, Line 50-61); and
Pulse
Count
Block
person
or object,
triggers
(JA22,
Assignment
of a person
or object,"
the assigned
structure
construction
it merely
to perform
to a human
counts
structure
so that detection
out of the claim.
Med. Tech., Inc., 263 F.3d 1356, 1364-65
function
different
Defendants
sensor means"
from that explicitly
respond
spikes
Column
motion
of a
to reduce
false
other than PIR sensors
function
Asyst,
Q1/Q2
is
of "detecting
motion
268 F.3d at 1371.
Further,
of motion
of an object
so that the District
Generation
(i.e., not
Court's
IlOrthotics,
(Fed. Cir. 2001) (improper
Inc. v.
to adopt a
recited).
only that the parties
was "detecting
the
the identified
body) is de-selected,
reads "or object"
(JA22,
and does not detect
and so must be reversed.
operates
spikes
4, Line 1-2).
of corresponding
over-inclusive
into negative
51 cannot
Column
excessively
corresponding
spikes
the motion
agreed
of a person
that the function
or object"
of "first
(JA43-44).
Such a
response,
however,
Q2, the assigned
b.
does not change the fact that, other than P1R sensors
structure
does not actually
"first sensor means"
hearing,
was "detecting
on Prof. Massengill's
opinion
was "the conditions
correspond
hearing,
to whatever
Defendants
of"first
(JA43-44).
Defendants
Defendants
motion
argued
sought
that "predetermined
[of motion]
that overly-narrow
sensor means"
function
(JA896)
the Judgment
theory (RBr37-42).
"selection
circuitry"
is to select the type of motion
argument
based on "selection
function
wish to detect")
(detecting
instead
of a person
Therefore,
circuitry"
motion
However,
because
sought
actually
based
have decided
the Markman
and agreed that
or object"
on the basis of their
the purpose
of
(e.g., humans),
based upon
to be detected;
function
(JA790),
of a person
largely
is an argument
sought
of the broader
motion
of the
of the "first sensor
During
was "detecting
seek to justify
to be detected"
(JA768).
circuitry"
function
or object."
that the function
that the circuit designers
"selection
motion
of a person
condition"
it is they wish to detect"
dropped
the function
original
motion
The District Court's 112/6 Construction
Improperly
Imports Non-Claimed
Functions
From the Preferred
Embodiment
Into the "Sensor
Means" Claim Term.
Prior to the Markman
means"
"detect
Q1 and
Defendants'
i.e, "whatever
construed
an
it is they
(detecting
or object).
the District
than it actually
Court's
identified
actual construction
is based on a different
for the "first sensor means"
and is thus
improper. Cardiac
Pacemakers,
Inc. v. St. Jude Medical,
1113 (Fed. Cir. 2002) ("The court must construe
function
limitation
to include
only those limitations");
the limitations
see also Generation
the function
in the claim language,
II, supra,
263 F.3d at Id. ("we must
limit the function
different
in the claim").
Defendants
allege that the purpose
motion
from "non-motion"
sought
to be detected;
Court adopted
relying
(RBr40),
function
circuitry"
construed
Surgical
(JA1403);
claim."
to which
Corporation,
__
Medical
F.3d____,
see also JVW Enters.
the parties
function
Resources
v. Interact
(JA43-44)
the District
unclaimed
Accessories,
(May
motion
but by
Court actually,
it adopted.
functions
Corporation
2006 WL 132504
is to distinguish
Thus, the District
from the function
imports
and
a function
way of saying
agreed
as urged by Defendants,
a different
Applied
circuitry"
it is they wish to detect."
"A court errs when it improperly
plus function
of "selection
by adopting
but that is just another
i.e, "whatever
the correct
on "selection
and improperly,
recited
of a means-plus-
contained
take great care not to impermissibly
from that explicitly
lnc., 296 F.3d 1106,
into a means
v. United
15, 2006)
States
atp.
11
lnc., 424 F.3d 1324, 1331
(Fed. Cir. 2005) 12.
_ In DESA's view Applied Medical, JVW and other cases cited at pp. 42-43 of
DESA's opening brief can properly be cited as applying the "cardinal rule" of
claim construction
in a 112/6 context.
As noted, the agreed function of "first sensor means"
a person
or object"
the District
(JA43-44).
Court's
incorporates
As set forth in DESA's
construction
the non-claimed
which
function
forth in the
function
detecting
motion
itself includes
resemble
and [4] monitoring
sensor for a positive
spike and negative
to justify
the District
triggers"
function
merely
Court's
importation
agreed on the function
the correctness
and filtering
signals
over-inclusion
above).
10
signals
from
from the PIR
the positive
any facts or cite any authority
"preventing
false
which make up that function.
should
of "first sensor means."
of DESA's
beyond
the output of the PIR on
of the non-claimed
argument
false
to be ignored.
sub-functions
that DESA's
"reducing
spike (the region between
as "noise")
And as set
from the PIR sensors
and amplified
Brief does not provide
and the non-claimed
contend
[3] amplifying
the filtered
spike or a negative
Response
signals
of
circuitry"
sub-functions
body; [2] disabling
spike being considered
Defendants'
validates
the human
[1] selecting
motion
Brief (pp. 40-43),
false triggers."
at least four non-claimed
until the circuit is stabilized;
the PIR sensors;
parties
all "selection
of "reduc[ing]
of a person or object:
that most closely
Defendants
Opening
above (pp. 5-6) the non-claimed
triggers"
initialization
includes
is "detecting
be rejected
because
Such an argument
argument
only
(I.a, immediately
the
c.
The District Court's 112/6 Construction
Improperly
Renders "Pulse Count" as Actually Recited in Claim 12 a
Surplusage,
and Destroys the Internal Coherence
of the
'066 Patent's Claim Structure.
The Supreme
Court has stated claims are to be construed
patent's
internal coherence."
(1996).
This Court instructs
we must presume
meanings"
Markman
that "[i]n the absence of any evidence
that the use of...
for those terms.
identically
different terms in the claims
CAE Screenplates,
in claims
"first sensor means"
and also requires
Claim
pulse...),
that "sensor
12 additionally
which
obviously
identically
means"
recites
there is a presumption
have different
meanings
Court's
claim construction
coherence
count" (means
as part of"control
circuit means"
where
requires
that
at Id.,
similarly.
for generating
a
aspart
11
at Id.
and "pulse
of"first
it is actually
and must be reversed.
and "pulse
C,4E Screenplates,
treats "first sensor means"
count"
is
term" than "first sensor means".
in the '066 Patent.
it treats "pulse
GmbH &
Here, "first sensor means"
that "first sensor means"
the same (indeed,
different
in claim I, 6 and 12, Markman,
"pulse
Consequently,
Fiedler
in other claims be construed
is a "different
to the contrary,
connotes
Inc. v. Heinrich
1, 6 and 12. Thus, internal
be construed
the
v. Westview Instr., Inc., 517 U.S. 370, 390
Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000).
recited
to '`preserve
The District
count" as one and
sensor means"
recited).
count"
instead
This is improper
of
Defendants'
Response
Brief attempts
First, Defendants
rely on Prof. Massengill's
he is not a patent
lawyer,
obvious
error"
(JA778).
that claim
based on clear and convincing
evidence.
Panduit
doctrine
of claim differentiation."
holding
that the logic of the claim structure
informs
the meaning
v. Seagate
of the different
Technology,
d.
the "selection
raise "claim
by 112/6 (RBr60-61).
invokes
(i.e., the patent's
DESA's
not invoke
precedent
claim terms in different
Inc., 174 F.3d 1294,
it is an "anomaly."
to claim 12 "does
merely
and
the
of this Court
"internal
claims.
coherence")
Rodime
PLC
1303 (Fed. Cir. 1999).
Raper's Demonstration
That a Bare PIR Can and Does
Detect Motion Demonstrates
That the Supposed Need for
"Selection
Circuitry"
to Detect Motion is a Ruse.
Defendants'
construction
DESA
Mfg. Co., 810
of no ease authority,
a claim because
are "trumped"
Brief stated at page 46 that reference
the law of this
Corp. v. Dennison
also argue that while claim 12 might
Opening
or a "fairly
valid and can only be invalidated
invalidate
issues, those issues
(RBr47-48)
at all, and ignores
DESA knows
cite none, which would
differentiation"
he says, notwithstanding
12 is an "anomaly"
is presumed
F.2d 1561, 1570 (Fed. Cir. 1987).
Defendants
report where
This is no response
Court that every claim of a patent
Defendants
to deal with claim 12 in two ways.
primary
argument
supporting
is that a PIR cannot detect motion,
eircuilry"
notion
espoused
the District
a theory proposed
by Prof. Massengill
12
Court's
claim
by and through
(RBr37-42).
This is
contrary to the intrinsic teachings of the '066 Patent which states multiple
times
that a PIR does detect motion
for
detecting
motion"));
to detection
JA22,
of motion
(JA16,
Column
Abstract
physical
by the [PIR.] sensors
only components
by DESA
that biased
and did detect motion
respond
works,
because
Persons
(RBr36,
37).
testified
to and demonstrated
skill-in-the-art
witness
(JA23,
in response
Column
6, Lines
(Id., Lines
It is also contrary
to the
Raper that a "bare PIR" (connected
the PIR to its normal
teachings
sensor
Q l and Q2 detect motion"));
(JA 1242, Exhibit
that the patent
technically
Q1 and Q2"));
Q1 and Q2 detect motion")).
demonstration
infrared
4, Lines 7-8 ("the lamp is activated
2-3 ("if at some point the [PIR] sensors
34-35 ("if the sensors
("a passive
operating
E to DESA's
are merely
a PIR only detects
"short
Opening
hand"
changes
skilled in the art appreciate
by Raper (JA1242),
level that a PIR does, as intrinsically
mode
(JA912))
Brief).
to
can
Defendants
for how a PIR
in infrared
radiation
and accept that (JA155),
they understand
expressed
but as
at the practical,
in the '066 Patent,
detect motion.
instead
coupled
The District
Court ignored
accepted
Prof. Massengill's
to "selection
for several
Massengill's
reasons.
opinion
circuitry."
Raper's
testimony
opinion
and demonstration,
that a PIR cannot
Prof. Massengili's
theory
detect motion
should
First, as set forth supr a p. 2 it is_fairly obvious
was not prepared
by him (JA918-19)
13
and
unless
not be accepted
that Prof.
as required
by
Fed.R.Civ.P. 26(a)(2)(B).
Further, Prof. Massengill is not experienced in the field
of the '066 Patent (indeed, he has no induslrial experience at all (JA925)), so under
precedent of this Court, his opinion should not be accepted. See Merck
v. Teva Pharmaceuticals
claim construction
experience
notable
USA, 347 F.3d 1367, 1372 (Fed. Cir. 2003) (rejecting
because
in the specific
was from "a witness
qualified
it was based on a proffered
field of the invention").
who, although
for his distance
Prof. Massengill
qualified
has a Ph.D. and is certainly
in his Department
of Defense
documents
which
are contrary
overly -- if not hyper-technical
operated
Further,
the extrinsic
security
of Prof. Massengill.
1317, 1318 (Fed. Cir. 2005).
motion/lighting
PIR detects
PIR in detecting
(JA155).
motion
Persons
actually
The '066 Patent
(JA22,
opinion
was
Here, although
and undoubtedly
field, he has no
is both based on extrinsic
of the '066 Patent,
and
"in the field of the patent,"
Column
teachings
Phillips
arts (like Raper and Carlson)
motion
teaching
engineer],
lights.
a court must accept the intrinsic
opinion
clearance
His opinion
to be a reliable
who was "without
ld. at 1371.
well-educated
to the intrinsic
a
This Court stated the opinion
as a[n electrical
security
in the field of the '066 Patent.
sensor
expert
from the field [of the patent]."
experience
motion
& Co., lnc.
v. AIFI-ICorp.,
over
415 F.3d 1303,
skilled in the field of
understand
explains
3, Lines 24-33),
14
of the '066 Patent
how, and therefore
the technical
operation
so it is not necessary
that, a
of a
that
every other reference
motion
to detecting
recite the inner workings
'066 Patent
persons
need not explain
actually
'066 Patent
skilled
hearing
a PIR sensor cannot
based on an argument
detects
of that signal),
only detects
revolutions
detect motion,
case.
that a radar detector
between
or that a thermocouple
in voltage
documents.
motion.
judge
her
the notion
that
must accept a construction
of a radio
(technically,
two dissimilar
it only counts
materials),
the number
This court has said many times
this Court explained,
for persons
experienced
in the
field of the invention. [intemal citations 6mitred] To hold
otherwise would require every patent document to include
technical treatise for the unskilled reader.
15
it
or that
of axle
that patents
I
are written
it
signal and return
The law is clear that patent documents need not include subject
matter that is known in the field of the invention and is in the
prior art, for Patents
See
conducting
detect speed (technically,
given offby
the
is an
If this Court accepts
impingement
to
infra.
argument
cannot detect temperature
In $3, supra,
the
Thus, intrinsically
discussed
circuitry"
cannot
detect speed (technically,
of
both testified,
how and that a PIR detects
this Court likewise
in a given time period).
not engineering
arts.
upon a conscientious
in her first patent
detection
detail how a PIR sensor works
"selection
ruse foisted
the time interval
cannot
As Raper and Carlson
1364 (Fed. Cir. 2001),
Defendants'
the difference
a speedometer
and claims
Corp., 259 F.3d
overly-technical
first Markman
of a PIR.
or claim in minute
teaches
For these reasons,
elaborate,
or every claim term reciting
in the field of motion/lighting
adequately
$3 Inc. v. Nvidia
actually
motion
a
are
Id. at 1371 (emphasis
Devices,
Inc.,
encumber
supplied);
198 F.3d
reinvcnt
teaches
specification
multiple
"detects
motion,"
District
Court accepted
Patent's
teaching
this as detecting
Court's
length
no sense to
of the past ....
The
if one had to literally
construction
times that a "conventional
who have "experience
insisted
Persons
and unnecessary
what the District
Carlson
radiation.
with all the knowledge
Storage
the wheel").
Yet this is exactly
Patent
of a patent
would be of enormous
and describe
Corp. v. Information
1374, 1382 (Fed. Cir. 1999) ("it makes
the specification
specification
see also Atmel
an intrinsic
teaching
that a PIR only detects
(JA155),
in the field to understand
the District
Court's
that, or chooses
(really, Defendants')
"selection
circuitry" argument,
interpreted
like an engineering
($3 at/d.).
document.
16
infrared
readily
apparently
understand
does not have the
not to. If this Court accepts
claim construction
it will have required
Yet the
who contrary to the '066
in the field of the invention
experience
by Raper and
changes in incident
but Prof. Massengill
The '066
in the
fully understood
of Prof. Massengill,
with experience
motion
PIR" as described
in the field of the invention"
the opinion
requires.
based on the
the '066 Patent
to be
e.
Defendants
Concede
Construction
Defendants
function
of "Control
"so stipulate"
of the "control
limitation
means"
the District
Court's
circuit means"
assigned
the function
Opening
Brief), which
requires
no citation
to confirm
functions
to re-write
Defendants
the District
the appellate
The District
is Improper
The District
the 95% brightness
function
the function
(see Exhibit
characterize
of "first sensor
Brief that
of the "control
and Defendants'
construction
(R.Br57).
Response
to perform
It
Brief cites none,
two different
To fix that, Defendants
of"control
to
H of DESA's
as "nit-pick[ing]"
the same structure
ask this Court
circuit means"
(RBr57),
a
role of this Court.
Court's
Because
Components
of Switching
Court construed
Construction
of "Switching
it Assigns as Corresponding
That Do Not Perform
As Actually Recited.
the function
the lamp to either be on or off'
triac Q3 plus the resistors
imports
of the
(plus Node 61 and triac Q3) assigned
claim limitations.
Court's
identification
to perform
to case authority,
of two different
Court's
out at pp. 53-54 of its Opening
of the "first sensor means"
Structure
Function
that allows
structure
the error of assigning
task well beyond
f.
also pointed
112/6
is Improper.
into the identified
was the same structure
perform
Court's
Means"
improperly
embodiment
DESA
Circuit
that the District
circuit means"
of the preferred
(RBr 56-57).
That The District
and transistor
and assigns
which
17
of "switching
Means"
the
means"
as corresponding
as "a switch
structure
feed a signal from the Phase Angle
to the triac (JA49). Here also, this is over-inclusive because the only component
that performs the function ("a switch that allows the lamp to either be on or off') is
the triae itself. The feeding components do not cause the lamp to be on or off, they
only enable the triac Q3 to perform that function as intended. Asyst,
1369-70,
1371.
g.
DESA Did Not Waive Its Argument That Other
"Means"
Terms Were Improperly
Construed.
In the Conclusion
and Relief Requested
set forth what it believes
the '066 Patent.
section of its Opening
is the proper 112/6 construction
Defendants
section of its Response
its right to request that relief regarding
Brief.
over-inclusion
argument
some claim terms.
Here, there can be no "waiver"
section 07,.Brl 9),
However,
"waived"
waiver
of
in the Reply, not raised
because
DESA raised the
in its Opening Brief, and the terms mentioned
citations to the Joint Appendix
terms of
Brief, that DESA
only applies if the party makes a new argument
in the Opening
Brief DESA
of the "means"
argue in the Summary of Argument
but not in the actual argument
argument
268 F.3d at
where proper construction
(with
was presented
rejected by the District Court) is part and parcel of DESA's
to but
over-inclusion
argument.
Conclusion
For the foregoing
the Judgment
reasons,
ofnon-infi'ingement
as to 112/6 Construction
even if 112/6 applies
must be reversed
18
Issues
(see Argument
because
II, below),
it is based on an
improper
112/6 claim construction
structure that does not actually
improperly
imports
coherence
perform
non-claimed
assigns"
claim elements;
and/or
the identified
teachings
to perform
[fJ renders
corresponding
function;
and/or
and/or [c] destroys
claim strategy; and/or
to the intrinsic
the same structure
[a] over-includes
function(s);
of the '066 Patent's
theory contrary
which:
[b]
the internal
[d] is based on an extrinsic
of the '066 Patent and/or
two different
functions
a term a surplusage;
[e] "double
of two different
and/or
[g] reads a function
out of the claim.
II.
The Judgment
of Non-Infringement
Must Be Reversed Because
Based on the District Court's Erroneous
Holding That "Sensor
"Control
112/6.
Circuit
Means"
At the Markman
(DESA
witnesses
Raper
the '066 Patent claims
"connote
disregarded
structure"
ruling
and
should
was incorrect.
'_ One of Defendants'
Are Governed
from persons
skilled
not be govemed
(JA161-62;
witnesses
JA113-116).
and ruled merely
DESA's
Particularly,
by 112/6 because
Opening
relied solely on the opinion
application
of 112/6.
Court
that the 112/6 presumption
Brief(pp.
35-39)
showed
dictionary
definitions
art and
presented no testimony
or functional.
Instead,
of Prof. Massengill
19
had
why that
is skilled i.n the motion/lighting
could have presented such testimony, but Defendants
him as to whether the "means" terms were structural
Defendants
terms of
those terms
The District
DESA cited to technical
(Evans)
By
in the art
CarlsoN) 13was to the effect that the "means"
testimony
(JA38).
Means"
the only testimony
not function
DESA's
not been rebutted
hearing,
and "Switching
it is
Means,"
which
assumed
from
the
in the Modem
Dictionary
circuit means"
and "switching
CellNet,
Nilssen,
Apex,
reasonably
Response
either because
means"
Greenberg,
a term has a meaning
Defendants'
of Electronics
the '066 Patent's
format"
(RBr60),
because
there the presumption
for "sensor
means,"
as well as cases (Linear
etc.) holding
understood
Brief argues
function
("MDE")
Technology,
that 112/6 is not implicated
in the art to "connote
that this argument
"means"
where
structure."
by DESA
should be rejected
terms were in "classic
or that the "connote
"control
means plus
structure" cases do not control
was the other way and 112/6 did not apply (RBr24-
25).
a.
The Claim Terms
Function
Format.
In Phillips,
claims."
recites
Thus, "classic"
just "means
This is because
means "without
means-plus-function
for
"switching
means") 14each include
appeal
("sensor
in the electronics/lighting
be clear, DESA's
ruling as to "sensor
format
Means
means,"
a structural
arts.
appeal
"control
of structure."
"control
modifier
Such well-known
only challenges
circuit
20
means"
functional
35 U.S.C.
her el The "means"
means,"
Plus
itself only applies ifa claim
is where no structure
." That is not the situation
of DESA's
" As should
the statute
the recitation
the subject
known
in "Classic
this Court stated that 112/6 applied only to "purely
415 F.3d at 1311.
limitation
Are Not Presented
§ 112 916.
at all is recited,
terms that are
circuit means"
and
that recites
structure
well
electronic
structural
terms
the District
and "switching
Court's
means."
112/6
should be enough toremove thoseterms from 112/6,as was the casein CellNet
Data Systems,Inc.v.Itron,Inc.,17 F.Supp2d 1100, 1107 0N.D. Calif.1998) ("the
Court findsthatthoseskilledinthe artwould understandthe term 'circuit
means'
as a structural
ratherthan a means-plus-function
element").This Courthas not
squarelyaddressedthisissueinan electronics
case,althoughinApex, Inc.v.
Raritan
Computer,
Inc., 325 F.3d 1364 (Fed. Cir. 2003) this Court cites CellNet
with approval,
325 F.3d at 1373 at fla. 1. Apex also states "the term 'circuit'
an appropriate
modifier
identifies
such as 'interface,'
some structural
meaning
Cole v. Kimberly-Clark
Defendants,
applied
means"
the claim limitation
limitation
means),
because
"control
mdans,"
I
This Court reasoned
function
DESA's
means"
"sensor
his analysis
"control
means,"
a structural
means":and
the statute because
the term "sensor"
Id.
means."
(perforation
"switching
means"
means
'
the structure
supporting
how Carlson
'
tbrlns of the '066 Patent:
was certainly structural
21
of the
... for tearing'
Id. at 53 l_ !This is exactly
i
of the mc_s
In Cole,
modifier
it degcHbcs
i
not be
a means-plus-function
that "the _perforation
and interpretation
certainly
that 112/6 should
or "switching
was heldnot
•
described
skill in the art."
argument
circuit means"
(i.e., perforations)."
and 'logic'
102 F.3d 524 (Fed. Cir. 1996), cited by
the claim term contained
... fails to satisfy
the tearing
Corp.,
"perforation
just like "sensor
'066 Patent.
element
to one of ordinary
can be read as supporting
to "sensor
'programming,'
with
and when he read the
for
claim in total context
what sort of sensor
means"
(JA113,
to glean the function
was recited
(JA114,
_[26) and switching
(i.e., detection
of motion)
he thus knew
728); the same was true for "control
means
(JA113,
9127). Raper testified
circuit
similarly
(JA161-62).
b.
The Only Testimony From Persons Skilled In the Art
Was That "Sensor Means," "Control
Circuit Means"
and "Switching
Functional.
The District
"sensor
"control
terms of the '066 Patent
not function.
any proffered
court should
expert
perform
testimony
means"
that a trial judge
but where
there is no competing
to do more than merely
that
and other means
by 112/6 because
acknowledges
they connoted
can accept or reject
testimony,
state "the presumption
Court did quote the Sage Products rule that "there
entirely
sufficient
the recited
structure
function"
PIR sensor or a break beam detector
of detecting
motion
material
(JA38).
were sensors
capable
to accomplishthe
the lamp to emit light at two different
22
or acts within
But Carlson
of a person or object
fact many) could easily be designed
causing
and Raper's
and "switching
should not be governed
testimony,
in the claims
the function
Not
the
has not
(JA38).
.The District
elaborated
circuit means"
DESA
be required
been rebutted"
Were Structural,
Court did not accept Carlson's
means,"
structure
Means"
is not
the claim to
was specific
of performing
(JA117);
complete
levels in response
a control
function
that:
a
entirely
circuit
of
to (or in the
(in
absence o0 motion;
complete
function
did not elaborate
of switching
any reason
Prof. Massengill's
"for"
and a triac or a number of switches
the lamp on or off (JA 113-14).
to support
oft-repeated
Court's
(JA893-900).
precedent.
However,
Greenberg
her conclusion,
statement
"did not allow me to envision
function
could accomplish
specific
"specific
v. Ethicon
structure"
structure"
The District
but it appears
that the words
the
Court
she relied on
in the claim after the word
for performing
is not required
Endo-Surgery,
the recited
by this
lnc., 91 F.3d
1580, 1583
(Fed. Cir. 1996).
Defendants
structure
reading
argue that Carlson
and therefore
of Carlson's
"agreed"
testimony
claim terms in isolation
structure
Carlson
to perform
"agreed"
c.
Defendants
"circuit"
reveals
any context
functions
in a Patent
concede,
"agreed"
did not connote
(JA854-59)_
A principled
that certain
sufficient
Thus, any conclusion
is make-weight
Claim
there was insufficient
(R.Brl 5, 33).
only that Carlson
with Prof. MassengiU
A Term
(RBrl4)
with Prof. Massengill
and without
certain
"admitted"
is Either
that
at best.
Structural
or it is Not.
as they must, that this Court held that the claim term
is structural in both Linear
Technology
Corp. v. lmpala
Linear
Corp., 379
i
F.3d 1311 (Fed. Cir. 2004) and Apex, supra.
Apex reveals
defined
that it was persuasive
in a technical
dictionary
Review
of Linear
to this Court that the claim
embraced
Technology
term at issue was
by those skilled in the art. Here,
23
and
"sensor," "control circuit" and "switch" all have structural definitions
MDE, which
even Prof. Massengill
Defendants
argue that neither
"switching
means"
presumption
acknowledges
"sensor
can be structural,
means"
nor "control
because
(that 112/6 should be invoked)
as authoritative.
in Linear
A claim term is either structural
art, or it is not.
the mere addition
Surely,
strip a claim term - especially
Technology
way."
nor
and Apex
the
This cannot be
to a person
of the word "means"
an electronic
Yet,
circuit means"
was the "other
the law of this Circuit.
based in the
skilled
cannot
in the
magically
claim term -- of its structural
connotation.
This is what both Raper and Carlson
same meaning
"control
circuit
(JA113-14,
means;"
161-62).
employed
attomeys
as "sensor
means;"
that "control
and "switch"
If anything,
in the context
(see Exhibit
that electrical
circuit"
claim term, as taught
claims
Opening
are generally
!
intended
to accomplish
temperature,
with the word "means"
if not thousands
of electronic
of the term "means"
to generations
as
means"
is
of patent
Brief).
When understood
drawn
to what the device
is
,
speed, control
claim term might be structural
opens' a whole Pandora's
patents
24
as "switching
turn dn a lamp, control
etc.), the notion that an electrical
when not associated
hundreds
(e.g., detect motion,
had the
had the same meaning
the addition
D to DESA's
patent
to -- that "sensor"
had the same meaning
historically
to avoid an overly narrow
by Landis
testified
at unnecessary
risk.
only
box that puts
III.
Defendants
Proffer
Argument
to Justify
Every Claim.
a Disguised
Prosecution
Interpreting
"Pulse
Disclaimer
Count"
The only way the Judgment can stand is if"pulse
as Part of
count"
somehow
required part of every claim, even those claims (such as asserted
and 11) where
"pulse
Court's construction
this Court's
count"
based on the "selection
the vulnerability
argued
to the District
worked
a prosecution
of their "selection
notion
cannot
stand under
as a matter
circuitry" theory,
15Jensen/McAvitt
disclaimer
''pulse
that required
939-40).
Declaration,
Defendants
Declaration
count" to be interpreted
In their Response
based on the Jensen/McAvitt
Brief,
only here the argument
of the "sensor
is
of grammar.
Prosecution
Disclaimer
Part of Every Claim.
Defendants
as
they make the same
The Jensen/McAvitt
Declaration
Does Not Meet This
Court's "Clear and Unmistakable"
Standard to Create
a.
'_ Below,
underlined
circuitry"
above, the District
Court that the underlined
part of every claim (JA744,
framed
As discussed
6, 9, 10
precedent(s).
Realizing
argument
is not recited.
claims
remains
Requiring
"Pulse
Count"
to be
argue that if this Court does not accept that "pulse
means"
under the "selection
circuitry"
theory,
a
count" is part
then the
Defendants
conceded that it was "an assumption"
that the Examiner
"manual override" and ''pulse count" in the Jensen/McAvitt
Declaration
(JA794), but here they present
that "assumption"
(RBr42).
argument
that the public is justified
25
in relying
on
a
Jensen/McAvitt
Declaration
count to be "generally
claims themselves
must be "reasonably
claimed"
"fairly
interpretation"
included
of the Jensen/McAvitt
by virtue
circuit means.'"
and unmistakable"
The Jensen/McAvitt
Switch
reference
including
specifically
and cannot
disclaimer.
Omega
is
means'
interpretation"
then in
is insufficient
Eng'g,
Inc. v. Raytek
disclaimer
requires
of claim scope).
discusses
and distinguishes
on the basis of features
"manual
be a "clear
"is that pulse counting
"Reasonable
Declaration
(JA576-77)
or a
also argue that the "only reasonable
(Fed. Cir. 2003)-(,prosecution
disavowal
fact,
(RBr48)
of § 112 76 - if not in the 'sensor
a prosecution
Corp., 334 F.3d 1314, 1325-26
in only one claim,
anomalies"
Declaration
(RBr60).
as a matter of law to create
"clear
Defendants
pulse
The actual
by the logic of that undisputed
12 is one of"several
error" (JA778).
in the claims
the 'control
as part of every claim (RBr50-51).
Undeterred
contend that claim
obvious
as requiring
reject this notion, for pulse count is claimed
claim 12, not "generally."
Defendants
understood"
override'
and "other
and unmistakable"
disavowal
the Nippon
other than pulse count,
features"
(JA464).
of claim scope.
This is not
Moreover,
in
D
the Preliminary
clearly
recited
Amendment
the patent
pulse count in only one claim, claim
Further
still, claim
means"
but claim
J
(JA468-78),
1 does not recite
12 does.
If"pulse
"pulse
count"
26
count"
attorney
16 (issued
presented
claims
as claim
as part of"control
is part of every claim
12).
circuit
as part of
that
"control circuit means" the express recitation
"meaningless,"
Unique
1991) and "mere
Comm'n.,
requiring
argued
claim
surplusage."
Inc. v. Brown,
939 F.2d 1558, 1563 (Fed. Cir.
Texas Instruments,
Inc. v. U.S. Int 7. Trade
988 F.2d 1165, 1177 (Fed. Cir. 1993).
Certainly
the Examiner
"pulse
without
Concepts,
of pulse count in claim 12 is both
count"
the recitation
did not treat the Declaration
in every claim,
of"pulse
count"
pulse count as a patentable
for he allowed
(JA506-510).
as a disclaimer
claims
And, the patent
feature only in reference
12), the only claim to recite that feature (JA477-78).
Examiner
did not treat the Jensen/McAvitt
unmistakably"
b.
requiring
both with and
Declaration
to claim
attorney
16 (issued
Obviously,
as "clearly
the
and
pulse count in every claim, nor should this Court.
Both the Grammatical
Structure
Diagram of the '066 Patent
"Pulse Count"
as a "Portion
and the Schematic
Unequivocally
Require
of the Circuit"
Not Part of
Any Sensor.
Defendants
Jensen/McAvitt
urge that the "only reasonable
Declaration
requires
the fact that pulse count appears
this as a matter of grammar.
Patent
itself requires
A security
infrared
pulse count to be "generally
explicitly
However,
otherwise.
only in claim
the grammatical
For example,
light has a quartz-halogen
sensor for detecting
and a circuit which
causes
interpretation"
motion
27
structure
of the '066
a passive
to the security
lamp to operate
despite
premise
states,
lamp, a:photocell,
the quartz-halogen
claimed,"
12. Defendants
the Abstract
external
of the
light,
at
about 50% of full brightness in the absence of detection
motion at night, to operate at 95% of full brightness
predetermined
time interval in response to detection
night, and to be off while the photocell
(JA16)
Obviously,
"control
the "circuit"
mentioned
circuit means."
[PIR] sensor"
in the Abstract
The Abstract
is "for detecting
is detecting
motion,"
for a
of motion
at
daylight ....
is the control
also teaches
of
circuit,
claimed
that that the "passive
as
infrared
and that the PIR sensor is separate
from
the circuit.
Further,
in the text of the specification,
and Q2 are "responsive
Patent
explains
to infrared
at Column
after explaining
light" (JA22,
Column
how PIR sensors
Q1
3, Line 27), the '066
3, Lines 34-39 that,
The sensors Q1 and Q2 are each coupled to a detector portion 43
of the circuit., which detects any significant change in the output
of either sensor, and which filters and amplifies the resulting
signal so as to select and amplify signals most likely to
correspond
to infrared signals from a human body.
Here also, the word "circuit"
(included
"portion
"for detecting
of the circuit."
of the "circuit"
the "pulse
of the circuit"
(J.A.
motion")
control
circuit,
and PIR sensors
are not part of the circuit,
The '066 Patent goes on to explain
are coupled
count portion
means
to other "portions"
of the circuit,
51" of the circuit (Colurrm
and its substitute
1421) to list the components
"portion"
Q1 and Q2
but are _
to a
that other components
including
specifically
4, Line 1). The term "portion
appear over 50 times in the '066 Patent
of the "circuit."
28
This shows
unequivocally
that
pulse count is part of the circuit, not part of the "sensor means" as Prof. Massengill
alleges in his "selection circuitry" theory adopted to support the construction by
the District Court.
Defendants also argue that the structure of the schematic diagram supports
their view that pulse count is part of the sensor means for detecting motion
(RBr50-51).
But the schematic diagram (Fig. 2A/2B) of the '066 Patent flatly
contradicts this argument. As to the schematic,
•
;
.
. qlt:llr-
"_-_ _"
lc-_lT:ll::l:o_r_l_.
,
' "
...... -_'"-T--_
il F
::,;_t--T,--_ _-.-_
i1"_-g
nml:
7 1_
/
ii
note that dotted
lines surround
sensors
Q1 and Q2 are outside
Persons
skilled
sensors
Q1 and Q2 sensors
"r,. i_
•
_ "r:
_.:.t
:
=ell=-ilail_lla
Ili'l"._i
every component
the dotted
in the art understand
but they are not part of the circuit.
if
i -!_
."
i
.
After the PIR sensors
29
-'_"
(which
:
. .
t,,_.l
?
"_"
lilllalt
Ill_llllll
circuit,
and that PIR
as is lamp 18.
presentation
of the apparatus
output is fed into the dotted lines of the circuit
t;_-.rg
tL
_.
of the control
lines of the circuit,
are the sensors
"_"
: l_l;_
i
by this schematic
.
:I
I:"
;
"a.U'lq_hlk_lllb
r _--
"
Ill
_
_q.141
i'q''l
................
P!_.
1 _
:
which
that PIR
detect motion,
detect motion,
Prof. Massengill
their
calls
"selection
circuitry"),
in the manner
IV.
where the motion
described
signals
in the specification
are processed
and claimed
by the control
circuit
in the claims.
Conclusion
For the reasons
Court should reverse
Court,
disputed
and remand
stated in DESA's
Opening
Brief and in this Reply Brief, this
and vacate the non-infringement
this case back to the District
claim terms be construed
judgment
of the District
Court with instructions
as set for at pp. 57-60 of DESA's
that the
Opening
Brief.
Robert
J. Theuerkauf
Middleton Reutlinger
2500 Brown & Williamson
Tower
Louisville,
Kentucky
40202-3410
(502) 584-1135 (Telephone)
(502) 561-0442 (Facsimile)
COUNSEL
APPELLANT,
30
FOR PLAINTIFFDESA
IP, LLC
PROOF
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Reply Brief of Plaintiff-Appellant
Defendants-Appellees,
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The undersigned
Corrected
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Iris S. Mitrakos
W. Riley at sriley@bowenriley.com.
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40202-3410
(502) 584-1135 (Telephone)
COUNSEL
APPELLANT,
32
(Facsimile)
FOR PLAINTIFFDESA
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