A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Kyocera Senco Industrial Tools Inc. v. ITC, Nos. 2020-1046, ‑2050 (Fed. Cir. (ITC) Jan. 21, 2022). Opinion by Moore, joined by Dyk and Cunningham.
Kyocera filed an ITC complaint asserting that Koki Holdings violated 19 U.S.C. § 1337 by importing gas spring nailer products that infringe, or were made using methods that infringe, certain claims in five patents. Following an evidentiary hearing and a review and remand by the Commission, the ALJ issued an initial determination finding that Koki did not infringe. On review, the Commission reversed the ALJ’s noninfringement finding and also found that Koki induced infringement. Both parties appealed to the Federal Circuit.
The Federal Circuit addressed five discrete issues, including the exclusion of Kyocera’s expert’s testimony on the doctrine of equivalents, the construction of three claim terms, and whether the prior art teaches a particular claim limitation. The court ultimately vacated and remanded for further proceedings.
As to the testimony by Kyocera’s expert, the ALJ had excluded the expert’s testimony as to infringement under the doctrine of equivalents but admitted the testimony as to literal infringement. On appeal, the Federal Circuit first noted that the expert lacks ordinary skill in the art, which required experience in power nailer design. The expert did not have that experience, and so the Federal Circuit ruled that “the ALJ abused his discretion by admitting [the expert’s] testimony on any issue that is analyzed through the lens of an ordinarily skilled artisan.”
The Federal Circuit then turned to three claim construction issues. As to the first, the court held that the patentee had acted as its own lexicographer in defining the term “driven position,” and thus affirmed the ALJ’s construction. As to the second, the court held that the ALJ erred by not treating the term “lifter member” as a means-plus-function term under 35 U.S.C. § 112, ¶ 6. The Federal Circuit explained that the claimed “lifter member” does not have “a sufficiently definite meaning as the name for a structure,” the surrounding claim language “does not describe any structural detail” about the term, and “nothing in the written description provides a clear and unambiguous definition.” As to the third claim construction issue, the Federal Circuit disagreed with the construction of “initiating a drive cycle,” ruling that it “cannot be met by pressing the exit end of a safety contact element against a workpiece.”
Lastly, the Federal Circuit affirmed the ALJ’s finding that the asserted claims would not have been obvious over a particular combination of prior art references. The court explained that the ALJ did not err in requiring the primary reference “to disclose two separate structures” in order to meet a required claim limitation. Here, the reference “has only one structure.”