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Federal Circuit

“Means” Term Not Subject to 112(6) Because of Deference to District Court’s Factual Findings; No Waiver Where Claim Construction Argument Was Raised at the Markman Stage But Not Renewed at Trial or in a JMOL Motion

June 24, 2015

Federal Circuit

“Means” Term Not Subject to 112(6) Because of Deference to District Court’s Factual Findings; No Waiver Where Claim Construction Argument Was Raised at the Markman Stage But Not Renewed at Trial or in a JMOL Motion

June 24, 2015

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Lighting Ballast Control, LLC v. Philips Elecs. N. Am. Corp., __ F.3d __ (Fed. Cir. June 23, 2015) (Lourie, O’Malley, REYNA) (N.D. Tex.: O’Connor) (3 of 5 stars)

On remand for the Supreme Court, Federal Circuit affirms judgment of infringement and no invalidity (flipping its prior opinion invalidating the claims as indefinite).  The patent covered an energy conversion device that included “voltage source means,” output terminals “connected to” heatable filaments of a gas discharge lamp, “control means,” and “direct current blocking means.”  The appeal involved mostly claim construction and waiver issues.

Reversing course from its prior opinion, Federal Circuit held that the term “voltage source means” was not subject to section 112(6).  The defendant had adequately preserved the issue by obtaining a claim construction (and definiteness) ruling at Markman and was not required to re-raise it again in either pre- or post-verdict JMOL motions.  Moreover, Rule 51 did not require a separate objection to the jury instruction where the defendant’s claim construction position was clear and the court had previously ruled on it.  On the merits, Federal Circuit deferred to the district court’s factual findings based on expert testimony that the term “voltage source means” connotes a class of structures and that a skilled artisan reading the claim language would understand that a rectifier is the only structure that would fit within it.  The expert evidence was legally permissible because it was not being used to “contract claim meaning that is unambiguous in light of the intrinsic evidence.”  Slip op. at 14.  So the factual findings demonstrated the claim conveyed sufficient structure for this term not to be subject to section 112(6).

The district court’s construction of a second term—“direct current blocking means”—was well-supported by the claim language and did not import a limitation.  Under that construction, substantial evidence supported the jury’s verdict of no anticipation on one reference.  The defendant had waived the argument that a second reference anticipated where it lost summary judgment on it and then did not present the issue to the jury.

Federal Circuit affirmed challenges on two other terms as well.  For one of them, the district court’s construction was well-supported by the specification.  For the other, the defendant waived its argument because it never presented a proposed construction until after trial.

Finally, Federal Circuit affirmed a finding that the claimed “control means” was present in the accused products under the doctrine of equivalents.  Substantial evidence supported the jury verdict and the court would not reweigh the evidence on appeal.

Related Tags

CAFC Summary
Federal Circuit
Waiver (NO/YES)
MEANS PLUS FUNCTION (NO)

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Craig Countryman | Principal

Craig Countryman is a Principal in the Southern California office of Fish & Richardson and was named a 2016 Rising Star by Law360, and was named to the "Top 40 Under 40" lists in both the Daily Journal and the San Diego Daily Transcript.  His practice...

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