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Recent Cases
United States
Court of Appeals for the Federal Circuit
03-1032
MEDICAL
INSTRUMENTATION AND DIAGNOSTICS CORPORATION,
Plaintiff-Appellee,
v.
ELEKTA AB, ELEKTA
INSTRUMENT AB, ELEKTA INSTRUMENTS, INC.
and, ELEKTA
ONCOLOGY SYSTEMS, INC.,
Defendants-Appellants.
Paul
Adams, Peacock, Myers & Adams, P.C., of Albuquerque,
New Mexico,
argued for plaintiff-appellee.
With him on the brief was Rod D. Baker and Stephen A. Slusher. Of counsel was Andrea L. Mays.
Theresa
M. Gillis, Jones, Day, Reavis & Pogue, of New
York, New York, argued for
defendants-appellants. Of
counsel on the brief were John F. Sweeney and Harry C. Marcus,
Morgan & Finnegan LLP, of New York, New
York.
Appealed from: United
States District Court for the Southern
District of California
Judge Robert H. Whaley
United States
Court of Appeals for the Federal Circuit
03-1032
MEDICAL
INSTRUMENTATION AND
DIAGNOSTICS
CORPORATION,
Plaintiff-Appellee,
v.
ELEKTA AB, ELEKTA
INSTRUMENT AB,
ELEKTA INSTRUMENTS,
INC., and ELEKTA ONCOLOGY SYSTEMS, INC.,
Defendants-Appellants.
___________________________
DECIDED: September 22, 2003
___________________________
Before NEWMAN, CLEVENGER, and SCHALL, Circuit Judges.
Opinion for the court filed by Circuit Judge
CLEVENGER. Dissenting opinion
filed by Circuit Judge
NEWMAN.
CLEVENGER, Circuit Judge.
Elekta
AB, Elekta Instrument AB, Elekta Instruments, Inc., and Elekta Oncology
Systems, Inc. (collectively "Elekta") appeal the judgment of the
United States District Court for the Southern District of California, which
denied Elekta's motion for judgment as a matter of law ("JMOL")
that its products do not infringe United States Patents No. 5,099,846
("'846 patent") and No. 5,398,684 ("'684 patent"). Med.
Instrumentation & Diagnostics Corp. v. Elekta AB, No. 97-CV-2271
(S.D. Cal. Sept. 6, 2002)
(Order denying JMOL). Elekta
also appeals the district court's grant of partial summary judgment in
favor of Medical Instrumentation and
Diagnostics Corp. ("MIDCO") that the '846 and '684 patents are
not invalid. Med.
Instrumentation & Diagnostics Corp. v. Elekta AB, No. 97-CV-2271
(S.D. Cal. Nov. 5, 2001)
(Order granting partial summary judgment of noninvalidity). Because the district court erred in
its construction of the "converting means" limitation and
noninfringement is conceded under the correct claim construction, we
reverse the district court's denial of JMOL of noninfringement. We also reverse the grant of summary
judgment of noninvalidity because Elekta brought forth sufficient evidence
to raise a genuine issue of material fact as to the validity of the '846
and '685 patents. We thus
remand the case to the district court on that issue, and for judgment in
favor of Elekta on the infringement issue.
I
MIDCO
is the holder of the '846 and '684 patents, both of which relate to a
system for planning surgical treatment using a presentation of images from
multiple scanning sources. The
'684 patent is a continuation of the application that matured into the '846
patent, and it is subject to a terminal disclaimer. The disclosure of both patents is
particularly directed toward stereotactic surgery, which is a type of brain
surgery that uses a three-dimensional coordinate system to locate the site
on which the surgeon is to operate.
Dorland's Medical
Dictionary 1699 (29th ed. 2000).
Performing
surgery on the human brain is extremely complex, and pre-surgical planning
is especially important because any surgical exploration of a patient's
brain is very risky. Therefore,
it is very advantageous if, prior to surgery, a surgeon can map out exactly
where the problem areas are by using techniques to "visualize"
the patient's brain.
Stereotactic surgical techniques allow the surgeon to
"explore" the brain structures that cannot be seen from the
surface by determining their location using "a knowledge of their
coordinates in space relative to known anatomical and topographical
landmarks." '684 patent,
col. 1, ll. 31-33. In order to
avoid opening a patient's skull any more than is necessary, stereotactic
surgery is essentially done "blind," using electrodes attached to
certain target areas as landmarks.
Id., col. 1,
ll. 36-40. Although the
location of the probes in the brain structures is very critical, it is
difficult for the surgeon to conceptualize that location because the probe
is out of sight and the position of the probe involves many complex angular
variables. Id.,
col. 1, ll. 40-60.
The invention
disclosed in the '846 and '684 patents attempts to enhance the surgeon's
ability to conceptualize the structures inside the brain by combining
stereotactic surgical techniques with various imaging technologies,
including computerized axial tomography ("CT") and nuclear
magnetic resonance ("NMR") scanning. The specification explains the goal
as follows: "The present invention is primarily concerned with the use
of computer-graphics techniques and scanning techniques for generating
various composite images to better aid the stereotactic surgeon in
localizing structures, such as subcortical structures, lesions, or
abnormalities." Id.,
col. 2, ll. 31-36. The use of
imaging techniques increases the resolution, which allows for direct rather
than inferential identification of brain structures and therefore allows
for more accurate performance of stereotactic surgery.
Both the '846
and the '684 patent describe a "method and apparatus for generating a
video presentation of images from a variety of separate scanner imaging
sources." '846 patent,
col. 6, ll. 24-26; '684 patent, col. 6, ll. 25-27. The apparatus of the invention
comprises a number of different structures that work together to create
this presentation of images.
The apparatus can acquire image data from different scanner sources,
and then convert that image data into a selected digital format. To perform the conversion into the
selected format, the apparatus takes the images from the different scanner
sources and converts them into a format in which the images have the same
number of pixels in the same arrangement (a one-to-one pixel arrangement),
which allows them to be readily compared to one another. The apparatus also stores the images
and is capable of selectively recalling and displaying at least two of them
on a single screen. The images
on the screen may be independently manipulated, and preferably also shaped
and sized so that they conform to one another, allowing for optimum
comparison. Furthermore, the
apparatus of the invention can also perform various comparison techniques
on the images and use the images to determine stereotactic
coordinates.
The preferred
use of the apparatus of the invention is in stereotactic surgery, such as
tumor biopsies, thalamotomies, and treatment of other neurological
disorders. '684 patent, col. 9,
ll. 62-68. Not only may it be
used to assist the surgeon in accurate planning of such surgical procedures
beforehand, but the preferred embodiment may also be used by the surgeon
during a surgical procedure to view and compare images. An infrared beam touch screen
interface allows the surgeon to communicate directly with the system in a
sterile manner while the surgeon is performing a procedure. Id.,
col. 10, ll. 10-17.
In 1997, MIDCO
filed a patent infringement suit against Elekta in the United States
District Court for the Southern District of California, alleging that
Elekta's GammaKnife, GammaPlan, ScopePlan, and SurgiPlan products infringed
the '846 and '684 patents.
Elekta asserted affirmative defenses and counterclaims of noninfringement
and invalidity. The only
independent claims asserted by MIDCO in this litigation were claim 1 of the
'684 patent and claim 9 of the '846 patent, both of which are apparatus
claims. Claim 1 of the '684
patent reads as follows:
An apparatus for generating
a presentation of images from a variety of imaging sources, the apparatus
comprising:
means for
acquiring a plurality of images from a plurality of separate imaging
sources;
means for
converting said plurality of images into a selected format;
means for
storing said plurality of images;
means for
selectively recalling and displaying at least two images of said plurality
of images upon a single display device;
means for
manipulating at least one of said at least two images independently of the
other image;
means for
comparing at least two images;
means for
determining stereotactic coordinates and performing volumetric
determinations from said at least two images; and
means for
determining distances and areas from said at least two images.
'684 patent, col. 19, ll.
14-32. Claim 9 of the '846
patent is very similar, but it specifically claims only the use of brain
images. '846 patent, col. 19,
l. 55 – col. 20, l. 11.
After holding
a Markman hearing, the district court issued an order construing the
claims and a later order granting in part and denying in part Elekta's
motion for clarification of the claim construction. Med.
Instrumentation & Diagnostics Corp. v. Elekta AB, No. 97-CV-2271
(S.D. Cal. Apr. 4, 2001)
(First claim construction order); Med.
Instrumentation & Diagnostics Corp. v. Elekta AB, No. 97-CV-2271
(S.D. Cal. July 13, 2001)
(Partial clarification of claim construction). The district court construed the
claims by analyzing claim 1 of the '684 patent, concluding that the
analysis for the '846 patent would be essentially the same. The parties do not dispute this
treatment.
The district
court construed the function of the "means for converting said
plurality of images into a selected format" to be converting multiple
acquired images into a particular selected digital format. The court then found that the
structures corresponding to this function were the VME bus based
framegrabber video display board, the computer video processor ("CVP"),
and "[s]oftware routines for converting digital-to-digital known to
those of skill in the art."
The framegrabber and the CVP both perform only the conversion of
analog data into the selected digital format, known as analog-to-digital
conversion. The accused devices
do not perform analog-to-digital conversion, but rather only perform
digital-to-digital conversion using software. The patentee concedes that the
accused devices do not have a framegrabber or anything that could be
considered an equivalent. The
key dispute between the parties is whether the district court was correct
in including software for digital-to-digital conversion as a corresponding
structure for the converting means.
If so, the judgment of infringement is correct; if not, that
judgment is incorrect.
MIDCO
filed a motion for partial summary judgment that its patents were not
invalid, and the district court granted this motion. The case was then submitted to a
jury, which found that the patents were infringed and awarded $16 million
in damages. The district court
denied Elekta's motions for JMOL following the verdict.
Elekta now
appeals to this court, arguing that the district court's claim construction
was erroneous as to a number of claim terms, that JMOL of noninfringement
should have been granted, and that the district court erred in granting
partial summary judgment of noninvalidity. We have jurisdiction over this
appeal pursuant to 28 U.S.C. § 1295(a)(1).
II
We
review the district court's denial of JMOL of noninfringement by reapplying
the JMOL standard, under which we reverse the denial of the motion
"only if the jury's factual findings are not supported by substantial
evidence or if the legal conclusions implied from the jury's verdict cannot
in law be supported by those findings." Cybor Corp. v. FAS Techs.,
138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc).
Determination
of infringement is a two-step analysis, with the first step being to
ascertain the meaning and scope of the patent claims and the second step
being to compare the properly construed claims to the allegedly infringing
device. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd,
517 U.S. 370 (1996). The first
step, construction of the claims, is a question of law subject to de novo review. Cybor, 138 F.3d at 1454. The second step, comparison of the
claims with the accused device, is a question of fact. Bai v. L & L Wings, Inc.,
160 F.3d 1350, 1353 (Fed. Cir. 1998).
We
review the district court's grant of summary judgment de novo. Golan v.
Pingel Enter., Inc., 310 F.3d 1360, 1367 (Fed. Cir. 2002).
III
Elekta
asserts that the district court made a number of errors in claim
construction, but we will only focus on the construction of the "means
for converting," as we find it to be dispositive of the infringement
issue. There is no dispute that
this limitation is written in means-plus-function form and falls under 35
U.S.C. § 112, ¶ 6.
Section 112, paragraph 6 provides: "An element in a claim for a
combination may be expressed as a means or step for performing a specified
function without the recital of structure . . . in support thereof, and
such claim shall be construed to cover the corresponding structure . . .
described in the specification and equivalents thereof." 35 U.S.C. § 112, ¶ 6
(2000). The first step in the
construction of a means-plus-function claim element is to identify the
particular claimed function. Micro
Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir.
1999). The second step in the
analysis is to look to the specification and identify the corresponding
structure for that function. Id. Under this second step,
"structure disclosed in the specification is 'corresponding' structure
only if the specification or prosecution history clearly links or
associates that structure to the function recited in the claim." B. Braun Med.
Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997).
The district
court construed the function for the "means for converting" limitation
to be converting multiple acquired images into a particular selected
digital format and the structures corresponding to this function to be the
framegrabber, the CVP, and "[s]oftware routines for converting
digital-to-digital known to those of skill in the art." Elekta asserts that the
district court's inclusion of software for digital-to-digital conversion as
corresponding structure was erroneous.
According to Elekta, the only disclosed structures that the patents
associate with the converting function are the framegrabber and the
CVP. Elekta points out that,
although some types of software are certainly disclosed in the
specification, such software is clearly linked to other functions, such as
the "means for manipulating" the images.
MIDCO argues
that, in addition to the framegrabber and the CVP, the district court
correctly found that software is also disclosed as corresponding structure
for the converting function. It
points to three places in the specification that it asserts expressly and
adequately disclose software as corresponding structure for the conversion
function: (1) the "Image Format Conversion" box in the block
diagram of Figure 1, (2) the reference to "image format
conversion" in the specification, '684 patent, col. 10, l. 28, and (3)
the reference to "image editing" in the specification, id.,
col. 11, l. 43.
We
conclude that the district court correctly construed the function of the
"means for converting" to be converting the acquired images into
a particular selected format.
The district court also correctly found both the framegrabber and
the CVP to be corresponding structures. The specification clearly links
these structures with the function of converting the acquired images into a
selected format. See
'684 patent, col. 16, ll. 4-6 ("[The VME bus based framegrabber video
display board] is capable of converting a standard (RS-170) or non-standard
video signal to a digital format which is stored in its memory."); id.,
col. 17, l. 65 – col. 18, l. 2 ("At the level of the computer
video processor unit, the non-standard video signal is analyzed and
converted by the system's signal processor and converted to a standard
RS-170 video output which then is output to the VME bus based framegrabber
display board."). However,
the district court erred by identifying software as an additional
corresponding structure for this limitation. There is nothing in the
specification or prosecution history that clearly links or associates software
with the function of converting images into a selected format.
The
duty of a patentee to clearly link or associate structure with the claimed
function is the quid pro quo for
allowing the patentee to express the claim in terms of function under
section 112, paragraph 6. Budde
v. Harley-Davidson, Inc., 250 F.3d 1369, 1377 (Fed. Cir. 2001). Section 112, paragraph 6 was
intended to allow the use of means expressions in patent claims without
requiring the patentee to recite in the claims all possible structures that
could be used as means in the claimed apparatus. O.I. Corp. v. Tekmar Co., 115
F.3d 1576, 1583 (Fed. Cir. 1997).
However, "[t]he price that must be paid for use of that
convenience is limitation of the claim to the means specified in the
written description and equivalents thereof." Id. If the specification is not clear as
to the structure that the patentee intends to correspond to the claimed
function, then the patentee has not paid that price but is rather
attempting to claim in functional terms unbounded by any reference to structure
in the specification. Such is
impermissible under the statute.
The
requirement that a particular structure be clearly linked with the claimed
function in order to qualify as corresponding structure is also supported
by the requirement of 35 U.S.C. § 112, ¶ 2 that an invention must
be particularly pointed out and distinctly claimed. B. Braun, 124 F.3d at
1424-25. "The requirement
that the claims 'particularly point[] out and distinctly claim[]' the
invention is met when a person experienced in the field of the invention
would understand the scope of the subject matter that is patented when the
claim is read in conjunction with the rest of the specification." S3, Inc. v. nVIDIA Corp., 259
F.3d 1364, 1367 (Fed. Cir. 2001).
Although indefiniteness of the claims is not an issue in this case
because the specification does disclose the framegrabber and CVP as
corresponding structures for the function of converting images, a failure
to associate software with the converting function is a failure to particularly
point out and claim that particular structure as a means of performing the
function. See B.
Braun, 124 F.3d at 1425 ("Because Braun's specification does not
adequately disclose the valve seat as structure that holds the disc firmly
in place, Braun has failed to particularly point out and distinctly claim
that particular means.").
In this case,
even the district court acknowledged that the link between software and the
converting function was not completely clear. The court stated that "the
specification is not very explicit in its disclosures of a means for
performing a digital-to-digital conversion." Nevertheless, the court concluded
that because techniques for performing those conversions were known to
those of skill in the art at the time the application was filed, a person
of skill in the art would understand software to be a corresponding
structure for the converting function. It is of course correct
that to answer the question of whether the specification adequately
describes and links structure that corresponds to the claimed function, we
must look at the disclosure from the point of view of one skilled in the
relevant art. Budde, 250
F.3d at 1376. MIDCO presented
some evidence before the district court that a skilled programmer at the
time of the application's filing could have written a program for
digital-to-digital conversion of image size, and we have no reason to doubt
that assertion. In discussing
software programs in the medical imaging field, MIDCO's expert explained
that "a software programmer having ordinary skill in the art . . .
would be aware of the sources of routines, modules and even small programs
. . . that could be incorporated into the larger program being
developed. These programs were
widely available from well-known sources or available from other software
developers. . . ." MIDCO
then provided examples of programs for digital-to-digital image conversion
(none of which are cited in the patents) that would have been available at
the time the patent was filed.
However, that
is not the correct inquiry. The
correct inquiry is to look at the disclosure of the patent and
determine if one of skill in the art would have understood that disclosure
to encompass software for digital-to-digital conversion and been able to
implement such a program, not simply whether one of skill in the art would
have been able to write such a software program. See Atmel Corp. v. Info.
Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999)
("[I]nterpretation of what is disclosed must be made in light of the
knowledge of one skilled in the art."); see also Omega
Eng'g, Inc. v. Raytek Corp., Nos. 01-1546, 02-1478, slip op. at 28-29
(Fed. Cir. July 7, 2003) (explaining that statements from experts cannot be
used to "rewrite the patent's specification" to create a clear
link where the language in the specification provides none); Medtronic,
Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1313 (Fed.
Cir. 2001) (finding particular structures not to be corresponding
structures because "one skilled in the art would not perceive any
clear link or association between these structures and the [recited]
function of connecting adjacent elements together"). It is important to determine whether
one of skill in the art would understand the specification itself to
disclose the structure, not simply whether that person would be capable of
implementing that structure. See
Atmel, 198 F.3d at 1382 ("Fulfillment of the § 112, ¶
6 trade-off cannot be satisfied when there is a total omission of
structure. There must be
structure in the specification."). Indeed, the requirement of looking
to the disclosure to find the corresponding structure comes from section
112, paragraph 6 itself. It is
not proper to look to the knowledge of one skilled in the art apart from
and unconnected to the disclosure of the patent.
Here, MIDCO's
expert never pointed to any disclosure of structure for digital-to-digital
conversion in the specification.
Instead, when asked about digital-to-digital conversion in the
patents, he explained as follows: "The actual aspects of changing the
digital format from one, for instance, number of pixels to another number
of pixels, is not disclosed or discussed in the document, presumably . . .
because it was well-known in the art and required no
explanation."
We
turn now to the three portions of the specification that MIDCO alleges to
disclose software for digital-to-digital conversion as corresponding structure
for the means for converting and MIDCO's other arguments as to where we may
find the link between software and conversion. We conclude that there is nothing in
the specification or prosecution history sufficient to disclose software
that is clearly linked to the converting function.
A
The
"Image Format Conversion" box in Figure 1 of both patents is not
a depiction of structure. This
figure is described as illustrating the steps of the preferred method
of the invention, not the structure of the apparatus that is the subject of
the asserted claims. '684
patent, col. 9, ll. 44-45.
Because the figure does not describe structure at all, and there is
no indication that one skilled in the art would understand it to do
anything other than list the steps of the method, it cannot serve to
clearly link software as a corresponding structure for the function of
converting the images into a selected format.
This is not
like the situation in Overhead Door Corp. v. Chamberlain Group, Inc.,
194 F.3d 1261 (Fed. Cir. 1999), where we held that the district court erred
in finding that the corresponding structure for the "memory selection
second switch means" included only the mechanical switch embodiment
shown in one of the figures of the patent and did not include the software
embodiment illustrated by a flow diagram in a different figure. This court held that the software
embodiment should also be included as an alternative corresponding
structure. Id. at
1272. The software embodiment
was clearly linked to the claimed function of the means limitation. Id. First, expert testimony indicated
that one of skill in the art would understand the relevant portions of the
flow diagram to describe software operations for performing the claimed
function. Id. Second, the prosecution history
contained an explicit statement that the "switch means includes
electronic as well as manual switches." Id. Therefore, the flow diagram figure
of the patent at issue in Overhead Door would have been understood
by one of skill in the art to clearly link a software embodiment to the
recited function. In contrast,
the "Image Format Conversion" box in Figure 1 of the patents in
suit refers to the method claims rather than the apparatus claims at issue,
and there is no evidence that it would be understood by one skilled in the
art to refer to structure at all, let alone to software for
digital-to-digital conversion.
That Figure 1
is not a depiction of structure at all is made even clearer by the fact
that the patents include two figures actually depicting structure. Figure 2 of the patents in suit is a
block diagram for depicting the preferred hardware of the invention. One of the blocks in Figure 2 is labeled
"Computer Video Signal Processor," and the specification explains
that in this component, the "scanning data, which is in various,
typically non-standard formats, is convertible to a standard format in
accordance with the invention."
'684 patent, col. 10, l. 66 – col. 11, l. 1. The figure also has a block labeled
"Central Processing Unit," and the specification explains that
the "central processing unit (CPU) . . . preferably compris[es] hard
disc storage, floppy disc storage, streamer tape storage, and a
high-resolution frame grabber with a high speed graphics and video image
processor." Id.,
col. 11, ll. 8-13. Figure 3 is
a depiction of the preferred apparatus, and none of the numbered components
of the figure refer to software.
Therefore, the two structures clearly linked by the specification to
the converting function are depicted in the figures of the patent, while
software for digital-to-digital conversion is not. As noted above, the disclosed
structures perform analog-to-digital conversion, but do not perform
digital-to-digital conversion.
If
the box in Figure 1 labeled "Image Format Conversion" actually
referred to some structure instead of simply referring to a step in the
claimed method, then the situation may well be different. In past cases, we have been generous
in finding something to be a corresponding structure when the specification
contained a generic reference to structure that would be known to those in
the art and that structure was clearly associated with performance of the
claimed function. For example,
in Intel Corp. v. VIA Technologies, Inc., 319 F.3d 1357, 1366
(Fed. Cir. 2003), we found that the "core logic" modified to
perform a particular program was adequate corresponding structure for a
claimed function although the specification did not disclose internal
circuitry of the core logic to show exactly how it must be modified. The core logic was described as
structure in the specification, and the specification explained that it was
the adapted core logic that was capable of performing the functions recited
in the claim. Id. There was no need for a disclosure
of specific circuitry in that case, just as here there would be no need for
a disclosure of the specific program code if software were linked to the
converting function and one skilled in the art would know the kind of
program to use. However, in this
case, the "Image Format Conversion" box does not refer to a type
of structure, so it does not serve to link software to the converting
function. It would be more like
the situation in Intel if the box in Figure 1 were labeled as
"Image Conversion Software" or if it at least appeared in a
figure illustrating the components of the apparatus.
Similarly, in S3,
Inc. v. nVIDIA Corp., 259 F.3d 1364, 1370-71 (Fed. Cir. 2001), we
concluded that a "selector" was adequately disclosed as
corresponding structure for the "means . . . for selectively
receiving," although the electronic structure of the sensor and the
details of its operation were not described. The selector referred to in the
disclosure and drawings of the patent was clearly a type of structure, unlike
the reference to "Image Format Conversion" in the '846 and '684
patents. There was testimony
that the selector was a standard component well known in the art and that
such standard components were usually represented in the same way that they
were in the patent. Id.
at 1370. There was also
testimony that one skilled in the art would "recognize that the
selector as shown in the specification [was] an electronic device such as a
simple multiplexer, whose structure [was] well known." Id. Unlike the evidence in the case
before us, which fails to connect what is disclosed in the specification
with the knowledge of one skilled in the art, the testimony in S3, Inc.
showed that one of skill in the art would recognize that the specification
clearly linked a particular structure to the claimed function. There is no indication in this case
that one skilled in the art would understand the "Image Format
Conversion" box to refer to software for the conversion function.
Budde v.
Harley-Davidson, Inc., 250 F.3d 1369 (Fed. Cir. 2002), is yet another
example of this line of cases.
In Budde, we held that the district court correctly
found that a patent disclosed
adequate corresponding structure for a "status sensing
means." Id. at
1381. Part of the function was to
measure vacuum in the intake manifold, and the specification explained that
"vacuum sensors are commercially available units which produce analog
signals for the control unit."
Id. (internal quotation marks omitted). The patent also contained a block diagram
that included a box labeled "vacuum sensor." Id. We found that the specification's
description of the vacuum sensor as a "commercially available
unit" would have been understood by a person skilled in the art to
disclose structure capable of performing the recited function. Id. at 1382. Unlike the specifications of the
patents in suit, the specification in Budde disclosed a generic
structure that was clearly linked to the claimed function.
Unlike the
situations in our previous cases where we have found some link between a
generic structural reference and a claimed function, there is nothing in
this case to link the "Image Format Conversion" box of Figure 1
of the patents in suit to the function of converting images into a selected
digital format.
B
The second portion of the specification that MIDCO
asserts discloses software for digital-to-digital conversion as
corresponding structure for the means for converting is another reference
to "image format conversion." '684 patent, col. 10, l. 28. The specification explains as
follows:
The method of the invention is illustrated in FIG. 1. The method of the invention
comprises scanning 10 the patient's head or other body part(s); image
acquisition 12 of the scans obtained; image format conversion 14 for all
images so that they are converted into the same format; image storage
16; multiple image recall and display 18 of the images; and image
manipulation and comparison 20.
Id., col. 10, ll. 25-32 (emphasis added). Again, this is simply a description
of Figure 1, which, as discussed above, illustrates the method of the
invention rather than the apparatus.
There is no evidence that one skilled in the art would understand the
phrase to refer to software for digital-to-digital conversion. Therefore, this reference to
"image format conversion" also does not serve to clearly link
software as a corresponding structure for the function of converting the
images into a selected format.
C
The third and final place in
the specification that MIDCO points to as disclosing software as a
corresponding structure for the means for converting is a reference to
"image editing." '684
patent, col. 11, l. 43. The
full passage of the specification reads as follows:
The division
for image acquisition, enhancement, and manipulation includes modular software
subroutines for: 1) image capture, storage, and archiving; 2) pixel
analysis for an entire image or user-defined areas of interest; 3) zoom and
pan functions; 4) contrasting and filtering images with functions for
smoothing, sharpening, and pseudocoloring; 5) image comparisons; 6) image
editing; and 7) various edge detection routines. . . .
Id., col. 11, ll. 36-44 (emphases added). Unlike the reference to "Image
Format Conversion" in Figure 1 and the related discussion of
"image format conversion" in the specification, this quoted
portion of the specification describes software. However, there is no evidence that
one of skill in the art would understand the use of the phrase "image
editing" as a reference to the function of converting images into a
selected digital format. The
quoted passage is prefaced by the statement that "[s]oftware, provided
in the CPU 34, is preferably structured on a multi-modular bi-divisional
foundation, which comprises a division for image acquisition, enhancement
and manipulation and a division for graphics and user specific
functions." '684 patent,
col. 11, ll. 32-36. If
the patentee had wanted to link "image editing" to the function
of converting images, all that would have been necessary was to add
"conversion" to the list of divisions that the software
contains. As it is actually
written, there is nothing to indicate that conversion is one of the
functions performed by the described software or that one skilled in the
art would understand that the software described in the specification
performs digital-to-digital image conversion. The reference to "image
editing" in this discussion of software is insufficient to clearly
link software to the converting function.
This portion
of the specification clearly links software to the claimed functions of
acquiring and manipulating the images and may therefore appropriately be
considered a corresponding structure for those functions. However, MIDCO would have us hold
that software is also a corresponding structure for the converting
function, even though the reference to software is not clearly linked to
the claimed converting function.
In the past,
we have rejected similar attempts to include as additional corresponding
structure for a particular function a structure that is disclosed in the
specification but is not associated with the particular claimed
function. In B. Braun,
we held that, although the specification showed a valve seat, it was not corresponding
structure for the recited function of holding the flexible disc against the
triangular member to restrain sideways movement because there was no clear
link between this structure and the function in the specification or
prosecution history. B.
Braun, 124 F.3d at 1425.
We explained that "[t]his lack of association between the valve
seat and the recited function is especially striking given the explicitly
clear association provided between the transverse cross bar and the recited
function." Id. That is quite similar to the
situation in this case, where the specification clearly links the
framegrabber and CVP to the converting function, but does not link software
to that function, though software is disclosed in the specification.
Also, in Medtronic,
Inc. v. Advanced Cardiovascular Systems, Inc., 248 F.3d 1303 (Fed. Cir.
2001), we rejected a similar attempt by a patentee to include, as
additional corresponding structure for one function, structure that was not
clearly linked to that function but was clearly linked in the specification
to a different function. The
claim limitation at issue in Medtronic
was a "means for connecting adjacent elements together," and the
patentee alleged that the specification disclosed multiple corresponding
structures. Id. at
1311. The parties did not
dispute that the helical windings were corresponding structure, as the
specification clearly linked them to the function. Rather, the issue was whether the
straight wire, hooks, and sutures were also corresponding structure. Id. This court held that the windings
were the only corresponding structure because, although the straight wire,
hooks, and sutures were capable of performing the connecting function,
neither the specification nor the prosecution history clearly linked or
associated them with that function.
Id. at 1312. In
fact, similar to this case where software is described in the specification
as performing other functions, the straight wire, hooks, and sutures were
described in the specification as having the function of preventing
overstretch of the formed coil.
We concluded in Medtronic
that "one skilled in the art would not perceive any clear link or
association between [the straight wire, hooks, and sutures] and the
function of connecting adjacent elements together." Id. at 1313. We reach a similar conclusion in
this case: there is no evidence that one of skill in the art would perceive
a clear link between software and the function of converting images into a
selected digital format.
D
In addition to
the three specific places in the specification that MIDCO asserts link
software to the function of digital-to-digital conversion, MIDCO also
raises an additional argument to support the district court's
judgment. MIDCO argues that its
expert testimony that software programs for digital-to-digital conversion
were known in the art, combined with the statement in the specification
that "[o]ther programs used in practicing the invention, such as image
manipulation programs, are either commercially available or within the
skill of practitioners in the programming arts," '684 patent, col. 12,
ll. 24-27, is sufficient for one skilled in the art to understand how the
function of converting is performed and therefore enough to make software a
corresponding structure. We
disagree.
MIDCO relies
on our decision in Atmel, where we found that, based on the
knowledge of one skilled in the art, sufficient structure was disclosed for
a high voltage generating means when "the specification plainly
state[d] that 'known circuit techniques are used to implement high voltage
circuit 34. See On-Chip High
Voltage Generation in NMOS Integrated Circuits Using an Improved Voltage
Multiplier Technique, IEEE Journal of Solid State Circuits.'" Atmel, 198 F.3d at 1382. This case is different in at least
two significant respects.
First, the "known techniques" referred to in Atmel
are quite clearly linked to the high voltage generating means. In the patents in suit, the
references to commercially available software or software known in the art
are not discussed in connection with the means for converting. Second, Atmel's expert had actually
testified that the title of the article was enough to indicate to a person
skilled in the art the precise corresponding structure contemplated by the
specification. Id. There is no comparable evidence in
this case to indicate that a person skilled in the art would actually
understand from the specification that software for digital-to-digital
conversion was structure that corresponded to the means for
converting. This may be a
different case if the specification contained a statement suggesting that
digital-to-digital conversion can be performed by software programs known
to those of skill in the art. A
statement in the specification referring to the knowledge of those skilled
in the art specific to the claimed function would put it closer to the
lines we have drawn in other cases such as Atmel.
Another
example of this type of situation is In re Dossel, 115 F.3d 942, 946
(Fed. Cir. 1997), which involved a claim for a "means for
reconstructing." The
Patent and Trademark Office found the claim to be invalid for failing to
adequately disclose any corresponding structure for the reconstructing
function. This court concluded that
the specification sufficiently disclosed a computer as corresponding
structure. Id. Although the specification did not
use the term "computer," it described a structure that
"receive[d] digital data, perform[ed] complex mathematical
computations and output[] the results to a display," and we concluded
that one of skill in the art of medical imaging would understand that a
computer must be the structure to perform these functions. Id. at 946-47. Further, although no code that the
computer would use to perform the functions was disclosed, the
specification did explain that "known algorithms" could be used
in the reconstruction process. Id.
at 946.
In contrast to Dossel,
the specifications of the '846 and '684 patents do not clearly link known
software to the converting function.
Although the specification refers to the use of software programs
that "are either commercially available or within the skill of
practitioners in the programming arts," '684 patent, col. 12, ll.
26-27, this statement in no way links software to the function of
converting images into a selected format. There is no indication that it is
referring to commercially available programs for conversion. Even if one skilled in the art would
know that software is capable of performing the function of converting
images into a selected format, there is nothing in the patents to suggest
that it must be the structure that would perform the function in this
invention. There must be
something in the disclosure to indicate to the public that the patentee
intends for a particular structure to correspond to a claimed
function. It is not enough
simply to list a certain structure in the specification; that structure
must also be clearly linked to a claimed function in order to be a
corresponding structure for that function. Furthermore, in this case, the
specifications clearly describe the framegrabber and the CVP as performing
the converting function, so, unlike Dossel, it is not necessary to
find software to be corresponding structure to save the claim from being
found invalid.
The
circumstances of this case are quite similar to those in Texas Digital
Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002). In Texas Digital, we held
that the district court erred in its construction of "converter
means" because "the court's description of the corresponding
structure as 'including firmware, software, and/or hardware' has no basis
in the specification." Id.
at 1213. The specification had
disclosed an inverter that was linked to the converting function, but Texas
Digital Systems had argued that it presented expert testimony "that
one of skill in the art would have appreciated that the converter means
could be implemented in hardware, software, and/or firmware." Id. We concluded that the district court
failed to properly perform the step of identifying the corresponding
structure because, rather than looking to the specification, which is the
proper place to look to determine what structure is disclosed that
corresponds to the claimed function, it "identified a broad array of
possible structures not mentioned anywhere in the specification." Id. In the case currently before us,
software is mentioned in the specification, but it is mentioned nowhere in
connection with the converting function. However, as in Texas Digital,
there is other structure in the specification that is clearly linked to the
converting function. Also,
similar to the patentee in Texas Digital, MIDCO presented some
evidence suggesting that a software program for digital-to-digital
conversion would have been within the knowledge of one skilled in the art,
but nothing to connect that testimony to what one of skill in the art would
understand the specification to actually disclose.
Finally,
none of the other references to software in the specification that MIDCO
has not specifically called to our attention serve to clearly link software
to the claimed function of converting images into a selected digital
format. The specification
states that "[s]oftware usable with the apparatus hardware to practice
and to carry out the desiderata of the invention is disclosed
herewith." '684 patent,
col. 12, ll. 14-16. Obviously,
the specification itself does not disclose any software routine for
digital-to-digital conversion, as MIDCO's expert even admitted. Additionally, the software routines
that are appended to the patents do not deal with conversion. The specification explains what
types of programs are included in the microfiche appendix, and none of the
programs deal with conversion. Id.,
col. 18, ll. 48-57. The
reference to "image manipulation programs" that are commercially
available, id., col. 18, ll. 57-58, similarly does not link software
to the converting function, but only to the manipulating function. Furthermore, the statement that
"[t]he CPU controls all data inflow and outflow through its special
software programs," id., col. 18, ll. 41-42, does not serve as
a clear link between software and the converting function. There is nothing to indicate that
this statement would be understood to refer to digital-to-digital
conversion of images, especially since the statement appears right before
the listing of appended software programs, which does not include a program
for image conversion.
E
In addition to
there being nothing in the specification to clearly link or associate
software with the function of converting images, there is also nothing in
the prosecution history to provide this link. During prosecution of the '846
patent, the applicant prepared a chart to distinguish the claims over the
Umemura reference. One of the
points of comparison in the chart was whether the system was "Solely
an A/D [analog-to-digital] Conversion System." In the column labeled "Present
Invention" the applicant marked "no," while in the column
for Umemura the applicant marked "yes." This may indicate that the applicant
intended for the invention to cover digital-to-digital conversion, although
the framegrabber and the CVP only perform analog-to-digital
conversion. However, it is not
sufficient to provide a clear link of software for digital-to-digital
conversion to the claimed function of converting images into a selected
digital format. There is no
reference to software in that portion of the prosecution history, and there
is nothing to suggest that one of skill in the art would know from that
table that software must be the structure to perform the conversion.
F
We
therefore conclude that the district court erred in identifying software as
a corresponding structure for the means for converting because the
specification and prosecution history fail to clearly link or associate
software with performance of the converting function. The requirement that structure must
be clearly linked or associated with the claimed function is the quid pro quo for the convenience of
claiming in functional terms. See
Budde, 250 F.3d at 1377.
MIDCO is attempting to avoid its part of the section 112, paragraph
6 bargain by asserting as corresponding structure for the converting
function a structure that is not linked to that function in the
specification or prosecution history.
In order for the claims to serve their proper function of providing
the public clear notice of the scope of the patentee's property rights, we
cannot allow a patentee to claim in functional terms essentially unbounded
by any reference to what one of skill in the art would understand from the
public record. The scope of a
claim under section 112, paragraph 6 therefore must be limited to structures
clearly linked or associated with the claimed function in the specification
or prosecution history and equivalents of those structures. Here, the only two structures that
are clearly linked to the converting function are the framegrabber and the CVP. Because MIDCO has conceded that the
accused devices do not contain these structures or their equivalents, we
reverse the judgment of infringement, and remand for entry of judgment in
favor of Elekta on the issue of infringement.
To
be sure, the patentee clearly and emphatically selected the framegrabber
and the CVP as structure that corresponds to the claimed converting
function. And equally to be
sure, one of ordinary skill in the art could have written the software
program to achieve digital-to-digital conversion. So, it may be tempting to say that
this patentee should not be required to turn square corners when it comes
to disclosing structure in the specification that is clearly linked to the
claimed conversion function.
Why not simply require
the patentee to disclose some structure for conversion, such as the
framegrabber or CVP, and then permit the patentee to claim infringement by
some other structure, such as software, so long as one of ordinary skill in
the art could have written the software program to perform the claimed
function? The reason, of
course, is because the statute itself requires disclosure of corresponding
structure in the specification, and that disclosure must clearly link the
disclosed structure to the claimed function with which it is
associated. The public should
not be required to guess as to the structure for which the patentee enjoys
the right to exclude. The
public instead is entitled to know precisely what kind of structure the
patentee has selected for the claimed functions, when claims are written
according to section 112, paragraph 6.
This is precisely the point we emphasized in Atmel, where we
stated:
All one needs to do in order to obtain the benefit of
[§ 112, ¶ 6] is to recite some structure corresponding to the
means in the specification. . . .
The requirement of specific structure in § 112, ¶ 6 thus
does not raise the specter of an unending disclosure of what everyone in
the field knows that such a requirement in § 112, ¶ 1 would
entail. If our interpretation
of the statute results in a slight amount of additional written description
compared with total omission of structure, that is the trade-off
necessitated by an applicant's use of the statute's permissive generic
means term.
Atmel, 198 F.3d at
1382.
The
established rules in our case law on section 112, paragraph 6 that
structure corresponding to the claimed function must be disclosed in the
specification with clear linkage between the structure and the claimed
function serve worthy goals.
Such rules are intended to produce certainty in result. Precision in claiming is not an
unreasonable price to pay to gain the benefits of claiming in functional terms
under section 112, paragraph 6.
IV
Elekta
also challenges the district court's grant of summary judgment that the
patents are not invalid.
Summary judgment is only appropriate if the evidence fails to create
a genuine issue of material fact.
Fed. R. Civ. P. 56(c).
Furthermore, all factual inferences are to be drawn in favor of the nonmoving
party. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 255 (1986). Anticipation is a question of fact, Atlas
Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999), and
obviousness is a question of law based on underlying facts, McGinley v.
Franklin Sports, Inc., 262 F.3d 1339, 1349 (Fed. Cir. 2002). When looking at this proferred
evidence of invalidity, it must be kept in mind that issued patents enjoy a
presumption of validity, and therefore the evidence to show invalidity must
be clear and convincing. Schumer
v. Lab. Computer Sys., 308 F.3d 1304, 1315-16 (Fed. Cir. 2002).
Elekta's
expert testimony in this case is not of the type that we have found to be
insufficient as a matter of law to raise a genuine issue of invalidity in the
past. Rather than leaving the
trial judge to "search through lengthy technologic documents for
possible evidence," Biotec Biologische Naturverpackungen v.
Biorcorp, Inc., 249 F.3d 1341, 1353 (Fed. Cir. 2001), Elekta's expert
quoted the particular portions of the references that were relevant for
each of the claim limitations.
Furthermore, the expert did not simply make a conclusory statement
that, in his opinion, the claims were invalid. See id. ("It is
well established that conclusory statements of counsel or a witness that a
patent is invalid do not raise a genuine issue of fact."). Rather, for each claim limitation,
he connected it with disclosures in the prior art that he believed taught
each particular limitation.
Elekta
brought forth numerous references as prior art that allegedly either
anticipated or rendered obvious the claimed invention. The district court found all the
references insufficient to raise a genuine issue of material fact and therefore
granted summary judgment that the patents are not invalid. We conclude that Elekta presented
sufficient evidence to survive a motion for summary judgment of
noninvalidity, and therefore we
reverse the district court's summary judgment grant.
Elekta
argued that the patents were anticipated by the Kall/Kelly reference, which
was noted in the prior art section of the patents during prosecution. MIDCO argues that this reference
fails to disclose the "means for selectively recalling and displaying
at least two images . . . upon a single display device." Elekta argues that this reference
does in fact teach the means for selectively recalling and displaying when
it says: "The surgeon may, at any time, review any of the imaging data
by displaying and manipulating the CT, MR, and DSA images simultaneously on
three independent monochrome monitors or in pseudocolor on the color
monitor." The district
court concluded that the reference is "ambiguous" on this point
and therefore creates no genuine issue of material fact. However, Elekta presented expert
testimony that the Kall/Kelly reference does teach the recalling and
displaying limitation, and one of the authors of the reference also
testified that Elekta's expert interpreted it correctly.
MIDCO argues
that the district court was correct in concluding that the reference is too
vague and argues that there is insufficient structure disclosed in the
reference, citing Scripps Clinic v. Genentech, Inc., 927 F.2d 1565,
1576-77 (Fed. Cir. 1991), for the proposition that a witness may only
testify about what a reference would teach one of skill in the art, but
cannot "fill gaps in the reference" by supplying information that
is entirely absent. However,
Elekta's experts simply testified about what the Kall/Kelly reference would
teach one of skill in the art, referring to specific parts of the
reference. The question of what
a reference teaches and whether it describes every element of a claim is a
question for the finder of fact.
Advanced Display Sys. v. Kent State Univ., 212 F.3d 1272,
1283 (Fed. Cir. 2000). The
district court concluded that the Kall/Kelly reference was
"ambiguous," which suggests to us that the issue of exactly what
the reference teaches is something that should have been resolved by the
jury. The district court
improperly usurped the role of the jury in finding that the reference
failed to raise a genuine issue of material fact.
The
district court also concluded that Elekta had not presented sufficient
evidence to create a genuine issue of material fact on the issue of
obviousness, and granted summary judgment on this ground as well. According to the district court,
Elekta did "provide[] sufficient evidence from which a jury could find
that each element, viewed individually, would be obvious to a person
skilled in the prior art," but failed to make a clear showing that it
would have been obvious to one of skill in the art to combine the various
references into a single system.
Although the ultimate determination of obviousness is a legal
conclusion, "[t]he presence or absence of a motivation to combine
references in an obviousness determination is a pure question of
fact." In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000).
The suggestion or motivation to combine references does not have to
be stated expressly; rather it "may be shown by reference to the prior
art itself, to the nature
of the problem solved by the claimed invention, or to the
knowledge of one of ordinary skill in the art." Beckson Marine, Inc. v. NFM, Inc.,
292 F.3d 718, 728 (Fed. Cir. 2002).
The district court
explained that MIDCO's invention "seems to center around combining
stereotaxy with composite images." It is the motivation to combine
these two elements that is critical.
Elekta's expert's declaration quotes from several prior art articles
that expressly discuss the combination of stereotaxy with computer imaging
technologies. For example, one
reference explains that "[s]tereotaxy is the surgery of the
hidden. The need to visualize
the hidden is the reason why simulation by computer graphics technology is
necessarily becoming part of this discipline." Additionally, the declaration of
Elekta's expert suggested that the papers written by Fraas/McShan also
provided such a motivation to combine.
Elekta actually argues that these papers should be treated as a
single reference and, as a single reference, it anticipates the
patents. However, even if
treated as multiple references, there is an issue of fact as to whether the
appearance of teachings about image combination and stereotactic treatment
planning in the same bound volume discussing a comprehensive system of
treatment planning would provide one of skill in the art with a motivation
to combine the teachings. We
therefore conclude that the district court erred in finding that Elekta
failed to demonstrate the existence of an issue of material fact on
obviousness.
V
Because
software is not clearly linked in the specification or prosecution history
to the claimed function of converting images into a selected format, the
district court's identification of software as a corresponding structure
for the "means for converting" was erroneous. The only corresponding structures
for that means are the framegrabber and the CVP, and the accused devices
concededly do not contain these structures or equivalents thereof. We therefore reverse the judgment
that Elekta's products infringe the '846 and '684 patents, and hold that
Elekta is entitled to JMOL of noninfringement.
Additionally,
we reverse the district court's grant of summary judgment of noninvalidity
because Elekta presented sufficient evidence to create a genuine issue of
material fact on anticipation and obviousness. The case is remanded to the district
court.
COSTS
No
costs.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND
REMANDED
United States Court of Appeals for the Federal Circuit
05-1574
MOTIONLESS KEYBOARD COMPANY,
Plaintiff,
and
THOMAS L. GAMBARO,
Movant-Appellant,
v.
MICROSOFT CORPORATION,
Defendant-Appellee,
and
NOKIA INC.,
Defendant-Appellee,
and
SAITEK INDUSTRIES LTD.,
Defendant-Appellee.
__________________________
DECIDED: June 8, 2006
__________________________
Before MICHEL, Chief Judge, PLAGER, Senior Circuit
Judge, and BRYSON, Circuit Judge.
PER CURIAM.
Plaintiff Motionless Keyboard Company (“MKC”)
filed a patent infringement suit against Microsoft Corporation, Nokia Inc.,
and Saitek Industries, Ltd. (collectively, “Defendants”) in the
United States District Court for the District of Oregon. The district court
granted Defendants’ motions for summary judgment of non-infringement
and invalidity and entered final judgment in their favor on May 9, 2005.
Thereafter, on June 2, 2005, Thomas L. Gambaro, the inventor of the two
patents-in-suit and the controlling shareholder of MKC, filed a motion to
intervene pursuant to Federal Rule of Civil Procedure 24. The district
court denied the motion on August 4, 2005. Gambaro appeals from the order
denying his motion to intervene. We affirm.
We consider Gambaro’s motion to intervene to be,
in substance, a motion to substitute himself as counsel for MKC. It is
apparent from his various filings that he seeks to represent MKC in
post-judgment proceedings, including the appeal from the trial
court’s final judgment on the merits. (That appeal is pending in this
court as Appeal No. 05-1497 and has been stayed pending the outcome of this
appeal.) For example, Gambaro asserted in his motion before the trial court
that he should be permitted “Pro Se to continue to represent the
Plaintiff.” Similarly, in the informal brief he filed in this appeal,
Gambaro “requests to be allowed to intervene on appeal because
counsel has withdrawn.” App. Br. at 3.
It is well-established that a corporation may appear in
federal court only if represented by licensed counsel. See 28 U.S.C. §
1654; Rowland v. Calif. Men’s
Colony, 506 U.S. 194, 201-02 (1993). We recognize Gambaro’s motion to
intervene as an attempted end run around section 1654. The Ninth Circuit,
whose law governs this
05-1574 2
Like the Ninth Circuit, “[w]e decline to read Rule
24 as condoning such a result.” appeal,1 has dealt with a similar attempt.
See United States v. High Country Broad. Co., 3 F.3d 1244, 1245 (9th Cir.
1993). When Gambaro filed his motion to intervene, he claimed that counsel
for MKC intended to withdraw, though that did not occur until six months
later. To allow Gambaro as the controlling shareholder of MKC to intervene
rather than hire replacement counsel for the corporation “would
eviscerate section 1654.” Id. Id. Under these circumstances, the
trial court did not err in denying Gambaro’s motion to intervene.
Eleven days after the trial court entered final
judgment, MKC purportedly transferred rights in the asserted patents to
Gambaro. To the extent that transfer is valid, Gambaro may have an interest
allowing him to bring an infringement action in his own name, but he may
not participate in the case filed by MKC as plaintiff.
On May 15, 2006, Mr. Gambaro filed three motions in this
appeal. These motions are denied because, like other motions previously
denied in this case, they relate only to the merits of the underlying
patent case, which is not the subject of the present appeal. In addition,
James L. Buchal, who formerly represented MKC before the trial court, has
filed certain confidential materials in this appeal. These materials also
relate to the merits and therefore are not accepted for filing.
CONCLUSION
The judgment of the trial court is affirmed. The
specified motions are denied.
1 This
matter is not unique to patent law and is therefore governed by the law of
the appropriate regional circuit, in this case the Ninth Circuit. Ericsson,
Inc. v. Interdigital Commc’ns Corp., 418 F.3d 1217, 1220-21 (Fed.
Cir. 2005).
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