Odetics and Kahn:
Has the Federal Circuit Unnecessarily Unearthed a Monster?
In 1952, Congress enacted 35 U.S.C. § 112, ¶ 6, permitting the expression of claim limitations in a means-plus-function format. The United States Court of Appeals for the Federal Circuit recently issued two opinions - Odetics, Inc. v. Storage Technology Corp. and Kahn v. General Motors Corp. - that address the proper methodology for conducting a literal infringement analysis pursuant to § 112, ¶ 6. Unfortunately, the opinions create confusion as to whether equivalents of a means-plus-function limitation should be compared to an accused infringing device on an in gross or component-by-component basis.
The Federal Circuit created the confusion by reaching into the pre-Pennwalt Corp. v. Durand-Wayland, Inc. past and resurrecting the specter of the element-by-element/invention as a whole quandary. This is problematic. The rationale supporting the all elements rule articulated in Pennwalt should not be dusted off and employed in literal infringement determinations under 35 U.S.C. § 112, ¶ 6. Although the plain language of § 112, ¶ 6 is ambiguous, applying it on a component-by-component basis does not comport with the purpose of the statute or the patent laws in general. To serve the purpose of § 112, ¶ 6 and the patent laws, equivalence analyses should be conducted on an in gross basis.
I. Confusion Lives
According to 35 U.S.C. § 112, ¶ 6, a claim limitation expressed as a means for performing a specified function (a means-plus-function limitation) "shall be construed to cover the . . . structure [or] material . . . described in the specification [that corresponds to the function specified in the claim] and equivalents thereof." Consequently, to determine the literal scope of such a limitation, it is necessary to identify the structure or material described in the specification that performs the claimed function. Once identified, the proper structure or material, and its equivalents, are compared to an accused infringing device.
The method used to make the comparison is crucial. As exemplified by Odetics and Kahn, different results may be reached depending on whether an equivalence analysis under § 112, ¶ 6 is conducted on an in gross or component-by-component basis.
In Odetics, the Federal Circuit reversed a district court's grant of judgment as a matter of law (JMOL) of non-infringement in favor of the defendant, Storage Technology Corporation (STK). Judges Clevenger and Schall joined to form the court's majority opinion. Judge Lourie dissented.
1. The Majority - In Gross
The majority concluded that the district court erred when it applied the analytical framework it believed the Federal Circuit had established for performing an infringement analysis under 35 U.S.C. § 112, ¶ 6. In view of a proper § 112, ¶ 6 analysis, the majority also determined that the jury's infringement verdict was supported by substantial evidence and reversed the JMOL.
The patent at issue, Odetics' U.S. Patent No. 4,779,151 (the Odetics patent), discloses an automated tape storage system. The storage system consists of a large housing, containing a library section and a cassette tape transport section. The library is designed to store cassettes, and the cassette tape transport section is designed to receive a cassette from the library and convey it to a playback/record mechanism. The housing contains two openings to permit the cassettes to be loaded into and unloaded from the library. An automated loading/unloading mechanism is located next to each opening to receive the cassettes from outside of the housing. It rotates to position the cassettes so they may be properly loaded into the library section. The loading/unloading mechanism also receives cassettes from the library and rotates to present them to a user outside of the housing.
Claim 9 of the Odetics patent, which is representative of the claims at issue, contains several limitations. The issue on appeal, however, centered on a means-plus-function limitation. That limitation reads:
a rotary means rotatably mounted within the library adjacent the access opening for providing access to the storage library, the rotary means having one or more holding bins each having an opening for receiving a cassette, wherein the rotary means is rotatable from a first position in which the opening of at least one holding bin is accessible from outside of the housing to a second position in which the opening of at least one holding bin is accessible from inside of the housing . . . .
After a trial, the jury returned a verdict of infringement and awarded damages to Odetics. STK filed a post-trial motion for JMOL. The district court initially denied STK's motion, but, in view of Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc., subsequently reversed its denial of STK's JMOL motion. Odetics appealed.
On review, the Federal Circuit concluded that, as a matter of law, the district court utilized the improper methodology of applying the "rotary means" limitation, causing it to err in its non-infringement determination. Particularly, the district court erroneously conducted an equivalence analysis pursuant to § 112, ¶ 6 by making a component-by-component, rather than an in gross comparison between the relevant structure disclosed in the patent and the accused device.
The court defined the structure associated with the "rotary means" limitation as "the components that receive the force and rotate as a result of that force (i.e., the rod, gear, and rotary loading and loading mechanisms)." It noted that, as depicted in a particular figure of the Odetics patent, the corresponding structure "is a set of tape holders or bins, a rod providing the axis of rotation, and a gear capable of receiving a force sufficient to cause the structure to accomplish the claimed 'rotary' function."
Then, the Federal Circuit turned to the district court's literal infringement determination and examined the evidence by comparing the equivalents of the disclosed structure as a whole, or on an in gross basis, to the accused infringing device. The evidence of record indicated that, like the structure disclosed in the Odetics patent, the accused STK device included bins for holding cassettes and a rod that serves as an axis of rotation. Instead of a gear, however, pins protrude from the STK bin to receive the force necessary to rotate the bin. Based on clear and consistent testimony of equivalence between the structure corresponding to the "rotary means" limitation and the STK bin, the Federal Circuit re-instituted the jury's finding of infringement.
As part of its analysis, the court noted that the similarity between the test for structural equivalence under § 112, ¶ 6 and the doctrine of equivalents does not "lead to the conclusion that Pennwalt . . . command[s] a component-by-component analysis of structural equivalence under § 112, ¶ 6." It stressed that individual components of an overall structure corresponding to the claimed function of a means-plus-function limitation are not claim limitations; "the claim limitation is the overall structure corresponding to the claimed function."
2. The Dissent - Component-by-Component
Judge Lourie dissented. He submitted that the majority's conclusion regarding the proper methodology for performing an infringement analysis under 35 U.S.C. § 112, ¶ 6 was incorrect, and that the jury's verdict of infringement was not supported by substantial evidence.
In his dissent, Judge Lourie suggested that, without focusing on each of the components that make up the structure corresponding to a means-plus-function limitation, it is not possible to determine if the accused device contains an equivalent. He based his rationale on the language of the statute, stating: "My difference with the majority essentially arises from my belief that it misunderstands the meaning of the word 'structure.'"
Judge Lourie proceeded by comparing the "rotary means" limitation on a component-by-component basis to the evidence of record. As a result, he focused on the only structural difference between the two - the gear of the disclosed Odetics device and the pins protruding from the STK bin. Based on the comparison, he determined that substantial evidence did not support the finding that a set of pins designed to receive a force for rotating the bin of the accused infringing device is structurally equivalent to a gear also designed to receive force to rotate a bin.
B. Kahn - Component-by-Component
Similarly, in Kahn the Federal Circuit affirmed a finding of non-infringement by analyzing a means-plus-function limitation in accordance with the component-by-component procedure outlined in Judge Lourie's dissent in Odetics - the same procedure the majority admonished. The patent at issue in Kahn - U.S. Patent No. 4,018,994 (the Kahn patent) - is directed to an improvement to an amplitude modulated (AM) receiver designed to receive a signal containing stereo-related information.
On appeal, the Federal Circuit examined a single claim limitation. That limitation, which is a means-plus-function limitation, reads "means for deriving a distortion cancellation component from the stereo sum signal component [derivation means]."
At least for the purpose of analysis on review, the Federal Circuit accepted Kahn's contention that the structure or material corresponding to the derivation means limitation is disclosed as an amplifier, summer, and frequency doubler (distortion cancellation circuitry). It did not, however, as urged by Kahn, overturn the district court's non-infringement finding by agreeing that the "feedback circuit" of the accused infringing General Motors (GM) AM receiver is an equivalent to the distortion cancellation circuitry.
In affirming the finding of non-infringement, the Federal Circuit applied 35 U.S.C. § 112, ¶ 6 on a component-by-component basis. It reviewed the district court's finding by comparing the derivation means limitation to the "feedback circuit" of the accused GM receiver by separately focusing on each component - the amplifier, summer, and frequency doubler - of the limitation's corresponding structure or material. The court's analysis proceeded as follows:
Despite Kahn's claim that the feedback system used in the GM circuit is the feedforward equivalent of the structure disclosed in the [Kahn] patent, there are significant differences between the two structures. The structure of the [Kahn] patent includes a frequency doubler, which has no counterpart equivalent in the GM receiver that performs a similar function. Likewise, the summer described in the [Kahn patent] specification has no counterpart in the GM circuit.... As a result, we hold that there is no counterpart equivalent structure in the accused device that meets the means-plus-function limitation of [the claim-at-issue] ....
Had the court compared the derivation means limitation to the GM circuit on an in gross basis, it may have reached a different result.
A proper interpretation of the statute, which is ambiguous, dictates that the issue - whether § 112, ¶ 6 equivalency analyses should be conducted on an in gross or component-by-component basis - should be resolved in favor of the majority in Odetics. To serve the purpose of 35 U.S.C. § 112, ¶ 6 and the patent statute in general, § 112, ¶ 6 equivalence analyses should be conducted on an in gross, rather than component-by-component basis. Pennwalt is a red herring; the rationale supporting the limitation-by-limitation requirement in connection with the doctrine of equivalents does not apply to means-plus-function limitations.
A. The Meaning of Structure
As it is used in 35 U.S.C. § 112, ¶ 6, structure is ambiguous. The term does not clearly indicate whether it refers to structure as a whole or as defined by each of its components. Indeed, Judge Lourie also grappled with the meaning of structure in his dissent in Odetics.
Under the principles of statutory construction, the plain language of a statute controls if it is clear and unambiguous. If the language of a statute gives rise to more than one reasonable interpretation, however, the legislative intent, including what interpretation is most harmonious with the general purpose Congress manifested in the statute, controls.
Because § 112, ¶ 6 is ambiguous on its face, the controversy between the majority and dissent in Odetics cannot be resolved by merely referring to the text of the statute. The legislative history associated with § 112, ¶ 6 and the legislative intent manifested in the patent statute must be considered.
The relevant legislative history and intent strongly suggest that an equivalence analysis under § 112, ¶ 6 should be considered on an in gross basis. In particular, applying § 112, ¶ 6 on a component-by-component basis would undermine the purpose of § 112, ¶ 6 and, more generally, the intent behind the patent statute.
1. 35 U.S.C. § 112, ¶ 6
In 1952, Congress enacted 35 U.S.C. § 112, ¶ 6 to permit patent applicants to draft claims in a manner previously prohibited by the Supreme Court in Halliburton Oil Well Cementing Co. v. Walker. In doing so, it addressed the Supreme Court's fundamental concern with means-plus-function limitations - definiteness.
In Halliburton, the patent at issue was directed to an acoustic resonator of an echo system for determining the distance from the top of an oil well to the oil below. The relevant portion of the claim at issue, Claim 1, was written in functional terms. It read: "means associated with said pressure responsive device for tuning said receiving means to the frequency of echoes from the tubing collars of said tubing sections to clearly distinguish the echoes from said couplings from each other."
The district court held the claim not invalid and infringed, and the court of appeals affirmed. The Supreme Court, however, reversed on the issue of validity because the claim did not satisfy the requirements of the predecessor to 35 U.S.C. § 112, ¶ 2; it did not "particularly point out and distinctly claim the part, improvement, or combination . . . claim[ed] as [the] invention or discovery." That requirement, the Supreme Court noted, was designed to notify the public of the scope of the exclusive right granted to the patentee.
Shortly after Halliburton was handed down, Congress promulgated 35 U.S.C. § 112, ¶ 6, permitting limitations of patent claims to be expressed in functional terms. As part of the statute, it provided notice to the pubic by limiting the scope of a means-plus-function limitation to the structure or material, and equivalents thereof, described in the specification that corresponds to the function specified in the claim. Like its predecessor, 35 U.S.C. § 112, ¶ 2 also requires definite disclosure of the subject matter defined by a claim.
Applying a means-plus-function limitation on a component-by-component basis in equivalence determinations would discourage patentees from providing the very thing that Congress sought to encourage through § 112, ¶ 6 - a detailed description of the subject matter associated with a means-plus-function limitation.
Generally, to describe an item in detail a patentee must disclose a sufficient number of the item's components. The scope of a means-plus-function limitation subjected to a component-by-component equivalence analysis narrows as each additional structural component is disclosed. Indeed, if the exact form of the disclosed structure or material cannot be found in an accused infringing device, each component of the corresponding structure or material must be separately scrutinized to determine if its equivalent is present. Thus, in the face of component-by-component equivalence scrutiny, patentees would be forced to provide scant disclosures to prevent their claim limitations from being unnecessarily narrowed.
On the other hand, conducting equivalence analyses on an in gross basis would not discourage detailed disclosures; it would serve the definiteness concerns the Supreme Court raised in Halliburton, and that Congress addressed when it enacted 35 U.S.C. § 112, ¶ 6. Disclosing an additional component of an item would not incrementally narrow a means-plus-function limitation, because the structure or material, including components, which corresponds to the limitation would be considered in its entirety. As a result, in gross equivalence analyses would not discourage patentees from providing detailed descriptions.
2. The Patent Statute
Similarly, adopting the component-by-component approach suggested by the dissent in Odetics, and applied in Kahn, would not serve the general intent behind the patent statute. It would chill innovation by reducing the reward associated with the grant of a patent without providing the public with any additional notice of the scope of a patentee's exclusive right.
Our patent system is incentive-based. The prospect of obtaining an exclusive right fuels innovation. It is the inventor's reward for his or her achievement, and it serves as compensation for the effort expended toward attaining the achievement. The notice the claim provides to the public also spurs innovation. It permits the public to innovate with some degree of confidence that it is not infringing on the patent rights of another.
Under a component-by-component equivalency analysis, the exclusive rights of patentees that elect to utilize means-plus-function limitations would be unnecessarily narrowed. As discussed above, the scope of the limitation is defined in response to a separate inquiry - whether an equivalent is present in the accused device - for each component of the corresponding structure or material disclosed. Obviously, the probability of determining that a limitation exists in a device under examination decreases with each additional equivalence inquiry.
At the same time, a component-by-component comparison will not materially enhance the public's understanding of the scope of a means-plus-function limitation. Although it is more difficult to show that structure or material equivalent to a series of components, as opposed to an item as a whole, exists in an accused device, focusing on a series of components does not clarify the scope of a means-plus-function limitation.
Finally, in Pennwalt, the Federal Circuit stressed that "a court may not, under the guise of applying the doctrine of equivalents, erase a plethora of meaningful structural and functional limitations of the claim on which the public is entitled to rely in avoiding infringement." A means-plus-function limitation, however, is but one limitation of a claim. It is taken into account, and is in no means erased from the claim, when an equivalence analysis is conducted on an in gross basis.
The Federal Circuit should follow the majority in Odetics. To serve the purpose of 35 U.S.C. § 112, ¶ 6 and the patent statute in general, it should firmly adopt an in gross methodology of conducting equivalence analyses in connection with means-plus-function limitations. Conducting equivalence analyses on a component-by-component basis would undermine the purpose of § 112, ¶ 6 and the patent statute by penalizing patentees for providing detailed disclosures.
 185 F.3d 1259, 51 U.S.P.Q.2d 1225 (Fed. Cir. 1999).
 135 F.3d 1472, 45 U.S.P.Q.2d 1608 (Fed. Cir. 1998).
 833 F.2d 931, 4 U.S.P.Q.2d 1737 (Fed. Cir. 1987) (en banc).
 35 U.S.C. § 112 (1998).
 E.g., Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1257-58, 52 U.S.P.Q.2d 1258, 1263 (Fed. Cir. 1999).
 Odetics, 185 F.3d at 1263, 51 U.S.P.Q.2d at 1227.
 U.S. Patent No. 4,779,151 (issued Oct. 18, 1988).
 Id. at col. 5, line 49 - col. 6, line 8.
 Odetics, 185 F.3d at 1266, 51 U.S.P.Q.2d at 1228.
 145 F.3d 1303, 46 U.S.P.Q.2d 1752 (Fed. Cir. 1998).
 Odetics, 185 F.3d at 1266, 51 U.S.P.Q.2d at 1228 (citing Odetics, Inc. v. Storage Tech. Corp., 14 F. Supp. 2d 807, 47 U.S.P.Q.2d 1923 (E.D. Va. 1998)).
 Id. at 1272, 51 U.S.P.Q.2d at 1233.
 Id. at 1268, 51 U.S.P.Q.2d at 1230.
 Id. at 1264-65, 51 U.S.P.Q.2d at 1227-28 (citation omitted).
 Id. at 1269, 51 U.S.P.Q.2d at 1231.
 Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1269-70, 51 U.S.P.Q.2d 1225, 1231 (Fed. Cir. 1999).
 Id. at 1270, 51 U.S.P.Q.2d at 1232.
 Id. at 1267-68, 51 U.S.P.Q.2d at 1230.
 Id. at 1268, 51 U.S.P.Q.2d at 1230.
 Id. at 1277-78, 51 U.S.P.Q.2d at 1237-38.
 Id. at 1277, 51 U.S.P.Q.2d at 1237.
 Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1277, 51 U.S.P.Q.2d 1225, 1237 (Fed. Cir. 1999).
 Id. at 1277-78, 51 U.S.P.Q.2d at 1237-38.
 Kahn v. Gen. Motors Corp., 135 F.3d 1472, 1476, 45 U.S.P.Q.2d 1608, 1611 (Fed. Cir. 1998).
 Id. at 1476-77, 45 U.S.P.Q.2d at 1611.
 Id. at 1477, 45 U.S.P.Q.2d at 1612 (emphasis added).
 Odetics, 185 F.3d at 1277-79, 51 U.S.P.Q.2d at 1237-38.
 Id. at 100.
 329 U.S. 1, 71 U.S.P.Q. 175 (1946).
 Id. at 8-9, 71 U.S.P.Q. at 178.
 Id. at 9, 71 U.S.P.Q. at 178 (quoting 35 U.S.C. § 33 (1946)).
 Id. at 10, 71 U.S.P.Q. at 179.
 35 U.S.C. § 112, ¶ 2 (1998).
 See U.S. Const. art. I, § 8, cl. 8.
 Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935, 4 U.S.P.Q.2d 1737, 1739 (Fed. Cir. 1987) (en banc) (quoting Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 3 U.S.P.Q.2d 1321 (Fed. Cir. 1987)).
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