Holding: An expert witness who does not qualify as ordinary observer may still testify as to the perspective of an ordinary observer if the expert establishes that they are familiar with the perspective of the ordinary observer. For doctrine of equivalents analysis, expert testimony cannot redefine a claim’s function when the specification clearly discloses that function.
Smartrend accused Opti-Luxx of infringement of the US Design Patent No. D932,930 and US Patent No. 11,348,491, both directed to an illuminated school bus sign. The D’930 Patent is shown below and includes oblique shading lines, which the specification states “denote transparency.” However, the district court construed the term “transparency” to mean either “transparent” or “translucent.”
As to the utility patent, claim 1 of the ‘491 Patent recites a sign that comprises a translucent panel, an opaque rear panel and a light source positioned in a space between the translucent panel and the rear panel. A frame surrounds the perimeter of the translucent panel and forms a perimeter of the sign. The district court construed the frame to be a separate and distinct component from the panel of the sign.
Opti-Luxx’s accused product is an illuminated sign that includes a rigid plastic tub housing, an LED light board, and a yellow lens with black lettering. The plastic housing operates as a frame and is not separable from the rest of the sign. The black lettering is opaque and the yellow lens is translucent so that light can pass through but the LED board behind the lens is obscured from view.
At trial, the jury found that Opti-Luxx infringed both the D’930 Patent and the ‘491 Patent. The district court denied Opti-Luxx’s motion for JMOL and issued a permanent injunction. The Federal Circuit ordered a new trial regarding the D’930, holding that the district court erred in its construction of the term “transparency.” For the ‘491 Patent, the Federal Circuit held that Opti-Luxx’s motion for JMOL should have been granted because no reasonable jury could have found infringement under the doctrine of equivalents.
Opti-Luxx argued that the district court erred by admitting testimony of Smartrend’s expert, Mr. York, as to the perspective of an ordinary observer for determining infringement of the design patent. An ordinary observer is a principal purchaser of a particular product. Mr. York conceded that he was not an ordinary observer, as he had extensive experience working in the automotive industry, was familiar with relevant regulations applied to school buses, and was an expert in lighting systems and signage. However, even if an expert witness does not qualify as ordinary observer, they may testify as to the perspective of an ordinary observer as long as the expert establishes that they are familiar with the perspective of the ordinary observer.
Opti-Luxx also challenged the district court’s claim construction of the term “transparency” in the D’930 Patent to be synonymous with translucency. Design patents may be claimed either “as shown” or “as shown and described.” Although the drawings are typically the best description, a design patent applicant may use written description to describe the appearance of portions of the design that are not apparent from the drawings. The MPEP states that oblique shading may be used to show “transparent, translucent and highly polished or reflective surfaces.”[1] However, the description of the D’930 Patent specifically states that the “oblique shading lines visible in the front and perspective views denote transparency.” The district court must construe the term “transparency” in accordance with how it is used in the specification. Transparency and translucency are not synonymous, and the D’930 Patent offers no indication that the term “transparency” should not be given its plain and ordinary meaning. Therefore, “transparency” cannot be construed to mean both transparent and translucent.
Smartrend appealed the district court’s claim construction of the term “frame” in the ‘491 Patent to be a separate and distinct component from the remainder of the sign. However, the Federal Circuit found that the district court correctly construed this term. The ‘491 Patent consistently refers to a separate mounting frame, and the function of the frame to allow the sign to be removable requires that the frame be separate and not integrated with the rest of the sign.
The Federal Circuit also held that the district court erred in denying Opti-Luxx’s motion for JMOL on the issue of infringement by the doctrine of equivalents. When determining the function of a claimed invention for the function-way-result test, sometimes the intrinsic evidence from the patent’s disclosure is dispositive as to the function of the invention. However, if the patent’s description is silent as to the function of the claimed invention, then the court should look to the understanding of a person of ordinary skill in the art.
In this case, the specification of the ‘491 Patent clearly disclosed the function of the frame. The frame is described as being configured to removably receive the sign so that the service or replacement of the sign can be performed without removing the entire installation from the vehicle. If the sign is integrated with the frame, similar to the accused products produced by Opti-Luxx, then the sign cannot be replaced without removing the entire signage structure from the vehicle. Smartrend could not rely on expert testimony to redefine the function of the claimed frame where the patent specification expressly defined that function. When intrinsic evidence clearly identifies the purpose of a claim element, that disclosure controls the function-way-result analysis, and expert testimony that contradicts it is entitled to no weight.
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