United States Court of Appeals for the Federal Circuit 

2009-1142 

INTELLECTUAL SCIENCE AND TECHNOLOGY, INC., 

Plaintiff-Appellant, 

v. 

SONY ELECTRONICS, INC., 

Defendant-Appellee, 

and 

US JVC CORPORATION, JVC AMERICAS CORPORATION, 

and PANASONIC CORPORATION OF NORTH AMERICA, 

Defendants. 

Andrew Kochanowski, Sommers Schwartz, P.C., of Southfield, Michigan, argued 

for plaintiff-appellant. 

John R. Hutchins, Kenyon & Kenyon, of Washington, DC, argued for defendantappellee. On the brief was Richard S. Gresalfi, of New York, New York. Of counsel 

was Zaed M. Billah, of New York, New York. 

Appealed from: United States District Court for the Eastern District of Michigan 

Senior Judge Avern C. Cohn
United States Court of Appeals for the Federal Circuit 

2009-1142 

INTELLECTUAL SCIENCE AND TECHNOLOGY, INC., 

 Plaintiff-Appellant, 

v. 

SONY ELECTRONICS, INC., 

 Defendant-Appellee, 

and 

US JVC CORPORATION, JVC AMERICAS CORPORATION, 

and PANASONIC CORPORATION OF NORTH AMERICA, 

 Defendants. 

Appeal from the United States District Court for the Eastern District of Michigan in Case 

No. 06-CV-10406, Senior Judge Avern C. Cohn. 

___________________________ 

DECIDED: December 15, 2009 

___________________________ 

Before RADER, ARCHER, and GAJARSA, Circuit Judges. 

RADER, Circuit Judge. 

 In this patent case, the United States District Court for the Eastern District of 

Michigan granted summary judgment of non-infringement in favor of defendants. See

Intellectual Sci. & Tech., Inc. v. Sony Elecs., Inc., Nos. 06-10406, -10409, -10412, 2008 

WL 5068823 (E.D. Mich. Nov. 24, 2008). Because the district court correctly 
determined that plaintiff did not show that any genuine issue of material fact prevents 

summary judgment, this court affirms. 

I. 

 Intellectual Science and Technology, Inc. (“Intellectual Science”) owns U.S. 

Patent No. 5,748,575 (the “’575 patent”), entitled “Information processing apparatus 

having a multitasking function with one or more optical discs.” This patent claims an 

apparatus for reading optical discs in a computer that reduces the role of magnetic disk 

drives. The invention facilitates and improves “information processing” in a computer 

system by retrieving original source data from optical discs like CD-ROMs rather than 

from floppy disks or hard drives. Specifically, the invention enhances “information 

processing” by reading information simultaneously from multiple locations on one or 

more optical discs. For example, the patent discloses an embodiment that runs 

Microsoft Word®, Excel®, and PowerPoint® from three different locations on a single disc 

while simultaneously running Microsoft Windows® 95 from another disc. Concurrently, 

“a user can enjoy digital music by playing a disc situated in [another] compartment.” 

’575 patent col.12 ll.40-43. 

 In order to simultaneously read information from several optical discs, the patent 

discloses an apparatus with control and signal-process systems that retrieve and 

decode multiple “information sets” from the discs. Id. at col.13 ll.31-41. For example, 

one embodiment includes two optical head units controlled by a microprocessor, “for 

simultaneously reproducing information from two separate disc positions.” Id. at col.9 

l.67-col.10 l.1. The hardware described in the patent allows the apparatus to process 

information from each of its optical units in parallel. 

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 Of importance for this appeal, the ’575 patent discloses a structure for 

transmitting the information sets obtained from the optical discs to a host computer. 

The patent describes using an intelligent time-division multiplexer (“ITDM”) to transmit 

multiple information sets as a single data stream. The patent further explains that the 

ITDM receives the information sets from a high-speed system control bus and transmits 

the single stream to a host interface bus. The host interface bus, with the help of read 

only and random access memory (“ROM/RAM”), sends the stream to a host computer. 

This case focuses on the data-transmitting structure disclosed in the patent and the 

corresponding structure, if any, in the accused devices. 

II. 

 In early 2006, Intellectual Science filed nine complaints in the Eastern District of 

Michigan against different defendants, including JVC Americas Corp. (“JVC”), 

Panasonic Corp. of North America (“Panasonic”), and Sony Electronics, Inc. (“Sony”). 

Intellectual Science alleged that various audio player/recorder devices made by the 

various defendants were infringing five of its patents, including the ’575 patent. The 

district court split the five patents into two groups, calling the first group the “read-read” 

patents and the second group the “read-write” patents, and ordered Intellectual Science 

to select a single paradigm claim from each group. The ’575 patent, the only patent at 

issue on appeal, was part of the “read-read” patents, and Intellectual Science chose 

claim 1 of that patent as the representative claim of that group. 

The district court also ordered defendants to choose paradigm products for each 

group of patents to provide the trial court context for understanding the technology at 

issue. Defendants chose Sony’s RCD-W500C and RCD-W1 products and JVC’s XL2009-1142 3
R5000BK product as the representative products for the “read-read” patents (the “Sony 

Paradigm Products” and the “JVC Paradigm Product,” respectively). 

Claim 1 of the ’575 patent reads as follows (important limitation underlined): 

An information processing apparatus with multitasking function, the 

information processing apparatus comprising: 

(a) a plurality of turntables, each comprising a disc-setting table for 

mounting an optical disc; 

(b) a plurality of optical units, each comprising a driving means and 

an optical read head, wherein said driving means is provided for 

moving said optical read head in a radial direction of said optical 

disc to a predetermined disc position on a surface of said optical 

disc; 

(c) means for simultaneously controlling a plurality of said driving 

means to move a plurality of said optical read heads to a 

plurality of predetermined disc positions on at least two optical 

discs for retrieving information stored thereon; 

(d) a plurality of signal-process systems for converting a plurality of 

information sets retrieved by said plurality of optical read heads 

from a compact disc format to the original state of the 

information; and 

(e) data transmitting means for transmitting a plurality of the 

information sets converted by said plurality of signal-process 

systems to a host computer. 

After Intellectual Science picked its representative claims ― but before claim 

construction ― JVC, Panasonic, and Sony jointly moved for summary judgment of noninfringement. In support of their motion, defendants relied on a declaration by their 

expert, Dr. Martin E. Kaliski. Dr. Kaliski opined that the means-plus-function limitation of 

“data transmitting means” should be construed to require a structure that includes at 

least a system control bus, an ITDM, a host interface bus, and ROM/RAM. Dr. Kaliski 

further stated that the accused devices do not have a “data transmitting means” 

because they lack both an ITDM and a host interface bus. 

In response, Intellectual Science submitted a declaration from its expert, Dr. 

William R. Michalson. Dr. Michalson did not dispute that the structure for the “data 

2009-1142 4
transmitting means” included the four elements also identified by Dr. Kaliski. Dr. 

Michalson, however, asserted that those elements were indeed present in the accused 

devices. Referring to two circuit diagrams from Sony Service Manuals, Dr. Michalson 

stated in his declaration that, 

94. The Sony RCD-W500C Paradigm Product has a “data transmitting 

means” that includes a control bus, an ITDM, a host interface bus 

and RAM/ROM. Serial output buses (i.e. control bus) transmit 

control information (instructions) along circuitry associated with 

each optical drive. Serial input buses receive information from 

each optical drive to an ITDM for multiplexing subcode data which 

is then transmitted to the host bus interface. A/D D/A Converter 

IC500 multiplexes audio information stream (CD or CDR) for output 

by the unit. Internal ROM/RAM is provided to support program 

operations from each of the optical drives. (P’s App. Ex. 24 (Sony 

RCD-W500C Service Manual), at SEL00057). 

95. The Sony RDC-W1 Paradigm Product includes a control bus, an 

ITDM, a host interface bus and RAM/ROM. Serial output buses 

(i.e. control bus) transmit control information (instructions) along 

circuitry associated with each optical drive. Serial input buses 

receive information from each optical drive to an ITDM for 

multiplexing subcode data which is then transmitted to the host bus 

interface. Playback signal selection device IC-109 multiplexes 

audio information stream (CD or CDR) for output from the D/A 

converter. Internal ROM/RAM is provided to support program 

operations from each of the optical drives. (P’s App. Ex. 25 (Sony 

RCD-W1 Service Manual), at SEL000209). 

... 

102. The structures referred to above ... for the accused Paradigm 

Product[s] all perform the same function as the claimed “data 

transmitting means” (i.e., transmitting to the host computer), in the 

same way (i.e., through a time division multiplexed structure) to 

achieve the same result (i.e., transmitted information sets). 

Accordingly, the Paradigm Products satisfy clause (e) as either a 

literal equivalent under “means plus function” or under the Doctrine 

of Equivalents. 

Intellectual Science relied exclusively on these paragraphs and the two cited diagrams 

to show that the Sony Paradigm Products contained the claimed “data transmitting 

2009-1142 5
means.” Intellectual Science’s evidence was similar with respect to the JVC Paradigm 

Product. 

The district court appointed a special master to issue a Report and 

Recommendation (“Report”) on defendants’ summary judgment motion. As a part of the 

Report, the special master construed “data transmitting means” as a means-plusfunction limitation with a structure that includes at least four elements: “the high-speed 

system control bus, ITDM, wide-band host interface bus, and ROM/RAM.” As for the 

limitation’s function, the special master relied exclusively on the claim language and 

concluded that the “data transmitting means” is “for transmitting a plurality of the 

information sets converted by said plurality of signal-process systems to a host 

computer.” 

 Addressing infringement, the special master concluded that Intellectual Science 

did not make a sufficient showing of infringement to survive summary judgment 

because the statements in Dr. Michalson’s declaration were merely conclusory. 

Specifically, the Report stated, 

There is no indication as to the specific structure in the Paradigm products 

relied upon by Michalson as corresponding to the claim elements (by way 

of example, Michalson does not annotate the circuit diagrams upon which 

he relies to point to any specific structural element). Michalson does not 

explain the specifications of such element. Michalson does not inter-relate 

the operation of such element relative to any other elements. 

Accordingly, the Report recommended that the district court grant defendants’ motion 

for summary judgment of non-infringement. 

The district court agreed with the special master and granted summary judgment 

in favor of JVC, Panasonic, and Sony. Intellectual Sci. & Tech., 2008 WL 5068823, at 

*10. Intellectual Science appealed the decision with respect to all three movants, but, 

2009-1142 6
while its appeal was pending, settled with JVC and Panasonic. This opinion therefore 

discusses Intellectual Science’s evidence of infringement for Sony only. 

III. 

 This court reviews a district court’s grant of summary judgment without 

deference. Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1323 (Fed. Cir. 2009). 

Summary judgment resolves any case without a “genuine issue as to any material fact” 

where the “the moving party is [also] entitled to judgment as a matter of law.” Fed. R. 

Civ. P. 56(c). Stated in the negative, summary judgment is improper when the record 

contains “evidence on which the jury could reasonably find for the [non-moving party].” 

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986).

 On appeal, Intellectual Science asserts that Sony’s Paradigm Products literally 

contain the “data transmitting means.” Literal infringement first requires the trial court to 

interpret the claims to determine their scope and meaning. Dynacore Holdings Corp. v. 

U.S. Philips Corp., 363 F.3d 1263, 1273 (Fed. Cir. 2004). In this case, the parties do 

not dispute the accuracy of the district court’s construction of the means-plus-function 

term “data transmitting means.” Thus, the focus in this appeal is on the comparison of 

that claim construction to the allegedly infringing devices. Id. For a means-plusfunction claim term, the term literally covers an accused device if the relevant structure 

in the accused device performs the identical function recited in the claim and that 

structure is identical or equivalent to the corresponding structure in the specification. 

Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1099 (Fed. Cir. 2008). 

 To satisfy the summary judgment standard, a patentee’s expert must set forth the 

factual foundation for his infringement opinion in sufficient detail for the court to be 

2009-1142 7
certain that features of the accused product would support a finding of infringement 

under the claim construction adopted by the court, with all reasonable inferences drawn 

in favor of the non-movant. Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 

1047-48 (Fed. Cir. 2000). This court considers the sufficiency of an expert’s opinion at 

summary judgment according to the standards of regional circuit law. Id. at 1048. The 

standard in the United States Court of Appeals for the Sixth Circuit is similar to the 

standard set forth in Arthur A. Collins, namely, that “[a]n expert opinion submitted in the 

context of a summary judgment motion must . . . set forth facts and, in doing so, outline 

a line of reasoning arising from a logical foundation.” Brainard v. Am. Skandia Life 

Assur. Corp., 432 F.3d 655, 663-64 (6th Cir. 2005) (quotations omitted). 

IV. 

 Turning to Dr. Michalson’s declaration, this court concludes that it does not 

sufficiently identify the structural elements of the claimed “data transmitting means.” An 

expert’s unsupported conclusion on the ultimate issue of infringement will not alone 

create a genuine issue of material fact. Arthur A. Collins, 216 F.3d at 1046. Moreover 

a party may not avoid that rule “by simply framing the expert’s conclusion as an 

assertion that a particular critical claim limitation is found in the accused device.” Id. 

This record discloses no more than an unsupported conclusion of infringement that is 

not sufficient to raise a genuine issue of material fact. 

Dr. Michalson’s statement that “[s]erial input buses receive information from each 

optical drive to an ITDM for multiplexing subcode data which is then transmitted to the 

host bus interface” does not pinpoint where those elements are found in the accused 

devices. His citation to a page number in Sony’s Service Manual for each 

2009-1142 8
representative product also supplies no specific showing of an infringing structure. The 

schematic found at each page, one of which is reproduced below, presents an 

unexplained array of electronic symbols: 

To present a prospect of infringement, Intellectual Science must present a triable 

issue of fact that a person of skill in the art would recognize that these symbols depict 

an infringing device. See TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1374-75 

(Fed. Cir. 2002) (affirming summary judgment of non-infringement because the record 

did not support assertion that one of skill in the art would equate the accused element, a 

multiplexer, with the claimed element, a decoder). Instead Intellectual Science argues 

vaguely that the structural elements are “off-the-shelf” components. Again, nothing in 

the record corroborates that assertion or shows that one of skill in the art would 

recognize the “off-the-shelf” component as matching the infringing means. Even if the 

2009-1142 9
elements are common components, the record must specifically identify the infringing 

features of those components and the reason that one of skill in the art would recognize 

them as infringing. Without that further identification and explanation, a reasonable 

juror would not be able to determine that those allegedly infringing components are 

actually present. 

 Intellectual Science contends that Dr. Michalson did at least identify the structure 

that serves as the ITDM, relying on the statement in his declaration that “[p]layback 

signal selection device IC-109 multiplexes audio information stream (CD or CDR) for 

output from the D/A converter.” The record shows that Dr. Michalson identified an 

element labeled IC-109 in the cited schematic. Moreover, the schematic appears to 

identify that element as a multiplexer because the element is labeled “selector,” accepts 

two inputs, and produces one output: 

Merely referring to the IC-109 multiplexer, however, does not suffice to show 

infringement. To accept this identification, this court would have to conclude that it 

would be reasonable to infer that the identified playback signal selection device is an 

ITDM simply because both devices perform multiplexing. Dr. Michalson’s opaque 

identification is not enough to permit any reasonable juror to make that leap. The 

record simply does not allow this court to accept the reasoning that all multiplexers are 

ITDMs. Rather, as the record shows, an ITDM’s output is more complex. The patent 

explains that “[t]he plurality of converted information sets are multiplexed by ITDM 717 

in order to be simultaneously transferred to host computer 720.” ’575 patent col.14 

2009-1142 10
ll.15-17 (emphasis added). While a signal selector might be a multiplexer because it 

outputs one of two input signals, Dr. Michalson does not provide any indication that the 

one here outputs a signal that simultaneously transmits a plurality of information sets. 

Stated another way, the problem with equating the identified playback signal 

selection device with an ITDM on this record is the absence of any showing that the 

identified structure accomplishes the same function in the same way as the claimed 

structure. See Welker Bearing Co., 550 F.3d at 1099. Dr. Michalson’s affidavit supplied 

only the statement that the structures in the accused devices “perform the same 

function as the claimed ‘data transmitting means’ (i.e., transmitting to the host 

computer), in the same way (i.e., through a time division multiplexed structure) to 

achieve the same result (i.e., transmitted information sets).” That conclusory statement 

is insufficient. To permit a jury to conclude that the playback signal selection device is 

an ITDM, Dr. Michalson needed to supply at a minimum some description about the 

specific features of the accused playback signal selection device’s multiplexing of the 

audio information stream. Dr. Michalson did not supply any of the details necessary to 

identify an infringing device. Moreover Dr. Michalson’s statement with respect to the 

other Sony Paradigm Product, the RCD-W500C, also lacked that vital identification and 

explanation. 

 This court dealt with a similar record in Arthur A. Collins. In that case, this court 

determined that the patentee’s expert had not sufficiently identified a “TST switch” 

limitation in the accused device. The court concluded that a statement from the 

patentee’s expert that “[t]he so-called JNET is a TST switch” did not supply enough 

information to survive summary judgment, reasoning: 

2009-1142 11
Dr. Helgert did not support his assertion that ‘JNet is a TST switch’ with an 

explanation of why JNET’s structure renders it a TST switch in his view; 

i.e., there is nothing in his declaration that would allow a finder of fact to 

conclude that JNET constitutes a TST switch as that term is used in the 

patent. 

216 F.3d at 1046. 

Dr. Michalson’s declaration in this case is even more lacking than the one in 

Arthur A. Collins. Dr. Michalson did not even expressly state that the playback signal 

selection device is the ITDM. As noted, this court declines to make that inference on 

appeal. 

Two other points bolster the conclusion that Intellectual Science has not 

proffered enough evidence to permit a reasonable juror to conclude that the accused 

devices contain a “data transmitting means.” First, when counsel for Intellectual 

Science was asked at oral argument where exactly Dr. Michalson identified the 

structural elements in his declaration, counsel conceded that the language is “perhaps 

not as grammatical as one would wish.” Oral Arg. at 10:56, Oct. 9, 2009, available at

http://oralarguments.cafc.uscourts.gov/mp3/2009-1142.mp3. Asking litigants to provide 

more than a difficult-to-decipher expert declaration does not impose too high a burden 

at summary judgment, especially where, as here, the structural elements are allegedly 

common. 

Second, Intellectual Science’s attorney argument does not offer any more clarity. 

To be specific, Intellectual Science contends that Dr. Michalson identified the host 

interface bus when he stated that “[s]erial input buses receive information from each 

optical drive to an ITDM.” Dr. Michalson’s statement, however, indicates that the 

identified “serial input buses” interface not with the host, as required by the claims, but 

2009-1142 12
instead with “an ITDM.” While attorney argument might be able to clarify an otherwise 

ambiguous expert declaration in some circumstances, see Applied Medical Resources 

Corp. v. United States Surgical Corp., 448 F.3d 1324, 1335 n.5 (Fed. Cir. 2006) (“[T]he 

expert declaration and Applied’s argument provide[] particularized testimony and linking 

argument.” (emphasis added)), in this case those arguments render the expert’s 

declaration even less clear. 

 In a last-ditch effort, Intellectual Science points to Applied Medical for the 

proposition that it was not required to link Dr. Michalson’s statements to particular 

structures in the accused devices. To the contrary, this court in Applied Medical

vacated a summary judgment because the patentee’s expert provided a sufficient basis 

on which a jury could conclude that the identified structure in the accused device, a 

surgical instrument, was equivalent to the structure claimed in the patent-in-suit. Id. at 

1334. This court concluded that the expert had adequately established that the 

identified structure was equivalent because he provided an explanation as to why one of 

skill in the art would view the structure as functioning in substantially the same way to 

achieve substantially the same result. Id. at 1335. In dicta, this court said that “we have 

only required [particularized testimony and linking argument] in applying the ‘function, 

way, result’ test in the context of proving infringement of a claim under the doctrine of 

equivalents.” Id. at 1335 n.5. 

Thus, unlike this case, the patentee’s expert in Applied Medical had pinpointed 

the relevant structure in the accused device. See id. at 1333 (“Once the relevant 

structure in the accused device has been identified, a party may prove it is equivalent to 

the disclosed structure by showing that the two perform the identical function in 

2009-1142 13
substantially the same way, with substantially the same result.” (emphasis added)). 

This court has never stated that a patentee can survive summary judgment of noninfringement on an apparatus claim without specifically identifying the allegedly 

infringing structure in the accused device. Such a rule would conflict with the express 

language of Fed. R. Civ. P. 56(e)(2), which requires a non-movant to set out “specific 

facts” showing a genuine issue for trial. Without clear identification of the claimed 

structure or its equivalent in the accused devices, Intellectual Science cannot survive 

summary judgment. 

V. 

 Intellectual Science also appeals the district court’s construction of the term “with 

multitasking function” in the preamble of claim 1 of the ’575 patent. The construction of 

that term, however, does not affect the issue of adequate information to create a factual 

issue on infringement of the “data transmitting means” in the accused devices. 

Because Intellectual Science did not show a genuine issue of material fact on one of the 

limitations in the accused devices, this court need not reach the district court’s 

construction of another. See TechSearch, 286 F.3d at 1371 (“To establish literal 

infringement, all elements of the claim, as correctly construed, must be present in the 

accused system.”). 

VI. 

 For the foregoing reasons, this court affirms the district court’s grant of summary 

judgment of non-infringement in favor of Sony. 

AFFIRMED. 

COSTS

2009-1142 14
2009-1142 15

Each party shall bear its own costs.