## 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 Washingt on, 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 Cour t 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 Dis trict Court for the Eastern Dis trict 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 correctlydetermined that plaintiff did not show that any genuine issue of material fact prevents summary judgment, this court affirms. I. Intellectual Science and Technology, In c. (“Intellectual Science”) owns U.S. Patent No. 5,748,575 (the “’ 575 patent”), entitled “Informa tion processing apparatus having a multitasking function with one or more optical discs.” This patent claims an apparatus for reading optical disc s in a computer that reduces the role of magnetic disk drives. The invention facilitates and improv es “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. Specific ally, the invention enhances “information processing” by reading information simultaneous ly from multiple locations on one or more optical discs. For example, the pat ent 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 playi ng a disc situated in [another] compartment.” ’575 patent col.12 ll.40-43. In order to simultaneously read informati on from several optical discs, the patent discloses an apparatus with control and signa l-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 hardwar e described in the patent allo ws the apparatus to process information from each of its optical units in parallel.

2009-1142 2Of 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-d ivision multiplexer (“ITDM”) to transmit multiple information sets as a single data str eam. 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 in terface bus. The host interfac e 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, incl uding JVC Americas Corp. (“JVC”), Panasonic Corp. of North America (“Panasonic”), and Sony Electronics, Inc. (“Sony”). Intellectual Science alleged t hat various audio player/recorder devices made by the various defendants were infringing five of it s 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 th e “read-write” patents, and or dered 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 r epresentative claim of that group. The district court also ordered defendants to choose par adigm products for each group of patents to provide t he trial court context for under standing the technology at issue. Defendants chose Sony’s RCD-W5 00C and RCD-W1 products and JVC’s XL2009-1142 3R5000BK product as the representative products for th e “read-read” patents (the “Sony Paradigm Products” and the “JVC Paradigm Product,” respectively). Claim 1 of the ’575 patent reads as fo llows (important limitation underlined): An information processing apparatus with multitasking function, the information processing apparatus comprising: (a) a plurality of turntables, eac h comprising a disc-setting table for mounting an optical disc; (b) a plurality of optic al units, each comprisi ng a driving means and an optical read head, wherein said driving means is provided for moving said optical read head in a r adial direction of said optical disc to a predetermined disc position on a surface of said optical disc; (c) means for simultaneously contro lling a plurality of said driving means to move a plurality of said optical read heads to a plurality of predetermined disc posi tions on at least two optical discs for retrieving information stored thereon; (d) a plurality of signa l-process systems for conv erting 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 picke d 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 op ined 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 in terface 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 subm itted a declaration from its expert, Dr. William R. Michalson. Dr. Michalson did not dispute that the st ructure for the “data

2009-1142 4transmitting means” included t he four elements also identif ied by Dr. Kaliski. Dr. Michalson, however, asserted that those el ements were indeed pres ent 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 inpu t 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 Pr oduct includes a control bus, an ITDM, a host interface bus and RA M/ROM. Serial output buses ( i.e. control bus) transmit control information (instructions) along circuitry associated with each opti cal 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 f unction as the claimed “data transmitting means” ( i.e. , transmitting to the host computer), in the same way ( i.e. , through a time division mu ltiplexed 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 t he two cited diagrams to show that the Sony Paradigm Products contained the claimed “data transmitting

2009-1142 5means.” Intellectual Science’s evidence was similar with respect to the JVC Paradigm Product. The district court appointed a spec ial master to issue a Report and Recommendation (“Report”) on defendants’ summary judgment motion. As a part of the Report, the special master construed “dat a transmitting means” as a means-plusfunction limitation with a struct ure that includes at least f our elements: “the high-speed system control bus, ITDM, wide-band host inte rface 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 plur ality of signal-process systems to a host computer.” Addressing infringement, the special mast er concluded that Intellectual Science did not make a sufficient showing of in fringement 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 specif ic structure in t he Paradigm products relied upon by Michalson as corresponding to the claim elements (by way of example, Michalson does not annotat e the circuit diagrams upon which he relies to point to any specific stru ctural element). Michalson does not explain the specifications of such el ement. Michalson does not inter-relate the operation of such element re lative 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 spec ial master and granted summary judgment in favor of JVC, Pa nasonic, and Sony. Intellectual Sci. & Tech. , 2008 WL 5068823, at *10. Intellectual Science appe aled the decision with respect to all three movants, but,

2009-1142 6while its appeal was pending, se ttled with JVC and Panasonic. This opinion therefore discusses Intellectual Science’s evidenc e of infringement for Sony only. III. This court reviews a district cour t’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 [a lso] entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). Stated in the negative, summary judgm ent is improper when the record contains “evidence on which t he 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 th at Sony’s Paradigm Products literally contain the “data transmitting means.” Literal in fringement first require s the trial court to interpret the claims to dete rmine 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 t he district court’s constructi on of the means-plus-function term “data transmitting means.” Thus, the fo cus in this appeal is on the comparison of that claim construction to the a llegedly 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 co rresponding 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 7certain that features of the accused product would s upport a finding of infringement under the claim construction adopted by the c ourt, with all reasonabl e inferences drawn in favor of the non-movant. Arthur A. Collins, In c. v. N. Telecom Ltd. , 216 F.3d 1042, 1047-48 (Fed. Cir. 2000). This court considers t he sufficiency of an expert’s opinion at summary judgment according to the st andards of regional circuit law. Id. at 1048. The standard in the United States C ourt 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 fa cts and, in doing so, outline a line of reasoning arising fr om 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 struct ural elements of the claimed “data transmitting means.” An expert’s unsupported conclusion on the ultima te 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 unsuppor ted conclusion of in fringement that is not sufficient to raise a genuine issue of materi al fact. Dr. Michalson’s statement that “[s]erial input buses receive information from each optical drive to an ITDM for multiplexing su bcode data which is then transmitted to the host bus interface” does not pinpoint wh ere those elements are found in the accused devices. His citation to a page number in Sony’s Service Manual for each

2009-1142 8representative product also supplies no specific showing of an infringi ng structure. The schematic found at each page, one of wh ich is reproduced below, presents an unexplained array of electronic symbols:

To present a prospect of in fringement, Intellectual Scie nce 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 decode r). Instead Intellectual Science argues vaguely that the structural elements are “off-the-shelf” com ponents. 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 ma tching the infringing means. Even if the

2009-1142 9elements are common components, the record mu st specifically identify the infringing features of those co mponents and the reason that one of skill in the art would recognize them as infringing. Without that further identification and expl anation, a reasonable juror would not be able to determine that those allegedly infringing components are actually present. Intellectual Science contends that Dr. Mic halson did at least identify the structure that serves as the ITDM, relying on the stat ement 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 t he 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 multiplexe r, however, does not suffice to show infringement. To accept this identification, this court would have to conclude that it would be reasonable to infer t hat the identified playback si gnal selection device is an ITDM simply because both devices perform multiplexing. Dr. Michalson’s opaque identification is not enough to permit any r easonable juror to make that leap. The record simply does not allow this court to a ccept the reasoning that all multiplexers are ITDMs. Rather, as the record shows, an IT DM’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 10ll.15-17 (emphasis added). While a signal sele ctor might be a mult iplexer because it outputs one of two input signals, Dr. Michals on does not provide any indication that the one here outputs a signal that simultaneously trans mits 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 mu ltiplexed 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 sig nal selection device is an ITDM, Dr. Michalson needed to supply at a minimum some de scription 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 t hat 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 su mmary judgment, reasoning:

2009-1142 11Dr. Helgert did not support his asserti on 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 t hat 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, th is 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 reasonabl e juror to conclude that the accused devices contain a “data transmitting means.” First, when counsel for Intellectual Science was asked at oral argument wher e exactly Dr. Michal son identified the structural elements in his dec laration, 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 dec laration does not impos e too high a burden at summary judgment, especially where, as her e, the structural el ements are allegedly

common. Second, Intellectual Science’s attorney ar gument 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. Michalso n’s statement, however, indicates that the identified “serial input buses” interface not with the host, as required by the claims, but

2009-1142 12instead with “an ITDM.” While attorney ar gument 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 (F ed. Cir. 2006) (“[T]he expert declaration and Applied’s argument provide[] particularize d testimony and linking argument.” (emphasis added)), in this ca se 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 r equired 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 pat entee’s expert provided a sufficient basis on which a jury could conclude that the ident ified 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 ex pert had adequately established that the identified structure wa s equivalent because he provided an explanation as to why one of skill in the art would view the structure as functioning in s ubstantially 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 provi ng infringement of a clai m 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 accus ed 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 13substantially the same way, with substantia lly 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 identif ying 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 issu e for trial. Without clear identification of the claimed structure or its equivalent in the accused devices, Intelle ctual Science cannot survive summary judgment. V. Intellectual Science also appeals the distri ct court’s construction of the term “with multitasking function” in the preamble of cl aim 1 of the ’575 patent. The construction of that term, however, does not affect the i ssue of adequate information to create a factual issue on infringement of t he “data transmitting means” in the accused devices. Because Intellectual Science did not show a genui ne 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 t he claim, as correctly constr ued, must be present in the accused system.”). VI. For the foregoing reasons, this court affi rms the district court’s grant of summary judgment of non-infringement in favor of Sony. AFFIRMED. COSTS

2009-1142 142009-1142 15 Each party shall bear its own costs.