Holding: A patent owner fails to meet its burden of proving structural equivalence when it does not address a significant part of the structure identified in the specification as the corresponding means‑plus‑function element.
Genuine owns US Patent No. 6,219,730, which pertains to solving limited resources issues related to multiple input devices linked to a computer. Dependent claim 10 of the ‘730 Patent, recites a device that takes both a user’s input and signals from a sensor, converts them into digital streams, and synchronizes them. It then packages those synchronized inputs into a single encoded data stream that can be sent to a computer. A specific clause of dependent claim 10 recites “encoding means for synchronizing the user input stream with the input stream and encoding the same into a combined data stream transferable by the communication means.”
Genuine alleged that Sony’s PlayStation 3 and PlayStation 4 controllers and consoles infringed the ‘730 Patent. The district court found the “encoding means” clause of the claims of the ‘730 Patent to be a means-plus-function limitation. The specification of the ’730 Patent discloses a logic block called a framer, which is representative of the “encoding means.” The specification describes this logic block as including a data selector, a clock generator, and an oscillator. The district court construed the function of the encoding means as synchronizing and encoding the user input stream and the input stream into a combined data stream. The district court construed the disclosed logic block as the corresponding structure.
The expert report of Genuine’s expert witness, Dr. Fernald, identified the data selector, a codec, and a bit-rate clock as the elements that perform the claimed encoding function, while omitting the clock generator and the oscillator. Based on this analysis, Dr. Fernald argued that Sony’s Bluetooth module included in the Playstation performed an equivalent function. The district court excluded Dr. Fernald’s expert report, as it did not appropriately address the way in which the logic block synchronized data or whether the components he omitted were sufficiently insubstantial to be left out of the analysis. The district court then granted summary judgment of noninfringement.
A means-plus-function limitation recites a function to be performed rather than stating the structure that performs that function. This limitation must be construed to only cover the corresponding structure that is described in the specification and equivalents of that structure. Literal infringement requires that the relevant structure in the accused device performs an identical function to that recited in the claim and be identical or equivalent in structure as described in the specification. Equivalent structure can be shown if the structures perform the identical function in substantially the same way, with substantially the same result.
Dr. Fernald’s analysis failed to explain why many components of the encoding logic block were not present in his comparison of structural equivalence of Sony’s Bluetooth module to the logic block identified as the structure for the claimed encoding means in the ‘730 Patent. A patent owner fails to meet its burden of proving structural equivalence if they neglect to address a significant portion of the feature identified as the corresponding structure in the specification. Although a component-by-component analysis of the corresponding structure and the alleged infringing product is not necessary, the patent owner still must account for each element of the claimed structure in its equivalence analysis. When equivalence analysis is focused on less than the whole corresponding structure, the patent owner is required to explain why it is permissible to disregard the omitted elements.
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