NOTE: This disposition is nonprecedential 

## United States Court of Appeals for the Federal Circuit

06-1168

DESA IP, LLC, Plaintiff-Appellant,

v.
EML TECHNOLOGIES, LLC and COSTCO WHOLESALE CORPORATION, Defendants-Appellees.

James R. Higgins, Jr. , Middleton Reutlinger, of Louisville, Kentucky, argued for plaintiff-appellant. With him on t he brief were Augustus S. Herbert and Robert J. Theuerkauf

. Roger L. Cook , Townsend and Townsend and Crew LLP, of San Francisco, California, argued for defendants-appellees. Wi th him on the brief was Iris Sockel Mitrakos

. Appealed from: United Sates District Cour t for the Middle District of Tennessee Judge Aleta A. TraugerNOTE: This disposition is nonprecedential. 

## United States Court of Appeals for the Federal Circuit

06-1168

DESA IP, LLC, Plaintiff-Appellant,

v. EML TECHNOLOGIES, LLC and COSTCO WHOLESALE CORPORATION, Defendant-Appellees.

__________________________ DECIDED: January 4, 2007

__________________________

Before MICHEL, Chief Judge , PLAGER, Senior Circuit Judge , and RADER, Circuit Judge

. MICHEL, Chief Judge

. In this patent case, DESA IP, LLC ("DE SA") appeals from a st ipulated judgment of non-infringement, entered by the United States District Cour t for the Middle District of Tennessee following a claim construction heari ng. Desa IP, LLC v. EML Techs., LLC , No. 3-04-0160 (Nov. 21, 2005). Because the district court erred in construing "sensor means" and other disputed terms, we vacate and remand

. I. BACKGROUND DESA is the owner of Un ited States Patent No. 5,598,066 ("the '066 patent"), directed to motion-activated security lights. The '066 patent discloses a light thatilluminates at two levels: (1) a di m "acc ent" level when dusk is detected by a photocell within the apparatus and (2) a br ighter "security" level which is rapid l y activated when motion is detected by a passive infrared moti on sensor . The lamp remains illuminated at the "security" level as long as the motion sensor continues to detect motion (which resets an internal timer), but eventually re turns to "ac c ent" mode. When the photocell senses daylight, however, the la mp is turne d off. The '066 patent further discloses that, in t he preferred embodiment, there is a "manual ov erride" feature, which keeps the light continuously on at the brighter "security level" until daylight. The pr eferred embodiment also has a "pulse counting" feature, which avoids false triggering by activating t he "securit y" m ode only when motion is twic e detected by the sensor within a specified time period. These additional features, (neither of which are present in t he accused devic e), are explicitly recited in some, but not all, of the claims. On February 27, 2004, DESA file d suit against EML Technologie s LLC ("EML") and Costc o Wholesale Co rporation ("Costco"), 1 alleging infringem ent of claims 6, 9, 10 and 11 of the '066 patent. Claim 6 recites: An apparatus comprising: first sensor means for detecting a fi rst predetermined condi tion external to said appar atus, said first predetermined condition being motion r e lative to said first sensor means of a person or object separate from said apparatus; second sensor means for detecting a se cond predetermined condition, said second predetermined condition being a predetermined level of light external to said appar atus;

1 Costco imports and sells the allegedly infringing motion-activated security lights manufactured by EML.

06-1168 2a lamp which can emit a first level of illumination a n d which can emit a second lev e l of illumination sub s tantially g r eater than said first level of illumination, said lamp being capable of switching rapidly from said first level of illumination to said se cond level of illumination; and control circuit means coupled to said lamp and responsive to said first and second sensor means for causi ng said lamp to emit light at said first level of illumination in the absence of said first predetermined con d ition in response to said s e c ond predet ermined c ondition, and for causing said lamp to emit light at said second leve l of illuminat i on in res ponse to detection of said first predetermined conditio n ; wherein said control circuit means in cludes means responsive to detection of said first predetermined condition for initiatin g measurement of a predetermined time interval, and respons ive to expiration of said time interval for causing s a id lamp to therea fter emit light at said fir s t level of illumination in response to said second predetermined condition in the absence of a recurrence of said first predetermined condition. Cla im 9 recites: sensor means for detecting a predete rmined condition external to said apparatus; a lamp which can emit a first level of illumination a n d which can emit a second lev e l of illumination sub s tantially g r eater than said first level of illumination, said lamp being capable of switchin g rapidly from said first level of illumination to said se cond level of illumination; and control circ uit means coupled to said lamp and responsive to said sensor means for causing sa id lamp to emit li ght at said first level of illu mination in the absence of said predetermined co ndition, and for causing said lamp to emit ligh t at said se cond lev e l of illumination in resp o n se to dete c tion of said predetermined condition, wherein s a id control circuit means is powered by an AC voltage, and wherein said control circuit means include switching means for selectively pe rmitting and preventing the applic ation of said AC voltage to said lamp and means for causing said switching means to be actuated for a selected portion of each half wave cycle of said AC v o ltage, said portion of said half waves being greater for said second lev e l of illumin a tion than for said first level of illu mination. Claims 10 and 11, although like wise dr afted as independent claims, merely add additional limitations to those recited by claim 9.

06-1168 3The district court appointed as technical advisor Dr. Charles Carnal, a professor of electrical engineering at Tennessee Technological Universi ty. It held a three-day Markman hearing, during whic h multip le experts for both sides testified as to (1) the applicabilit y of 35 U. S.C. § 112, ¶ 6 and (2) the meaning of the disputed c l aim terms. 2 At the end of the hearing, the court orally ren dered its c l aim construction rulin g . Hr'g Tr. 656-78, Oct. 27, 2005. Most relevant to this appeal, the dist rict court construed the disputed terms "sensor means," "control circuit means," and "switc h ing means." As a preliminary matter, the court concluded that 35 U.S.C. § 112, ¶ 6 applied to all three of these phrases because the asserted claims did not re cite sufficient struct ure, materials, or acts to perform the recited functions. Id. at 659:8-11. The court found the c o rresponding structure fo r "first sensor means for detecting a first predetermined condition external to said apparatu s" in claim 6— where "first predetermined condition" was int e rnally defined within claim 6 to be "motion relative to said first sensor means of a person or obj ec t separate from said apparatus"—described at col.3 l.24-col. 4 l.5 of the spec ification. Id. at 664:6-14. This definition includes no t only the passive infr ared sens ors Q1 and Q2 , but also what Professor Massengill dubbed "selection c i r c uitry," i.e., circuits 43 , 46, 47, 48 and 51 of Figures 2A and 2B. See id. at 481:5-11. The same meaning was ascr ibed to "sensor means for detecting a predetermined condition external to said appar atus" in claims 9, 10 and 11. Id. at 665:16-25.

2 Mark Patterson, Willia m Raper, Thomas J. P aulus, and Steven Carlson testified for DESA. J. Michael Th esz, Scott Evans, and Professor Lloyd Massengill testified on behalf of EML and Costco.

06-1168 4As for "control circuit means," the cour t found that this de scribed, in plain language, "the means for causi ng the lamp to go on at accent level when there is no motion but it's dark or dusk, and then going up to the higher le ve l of illumin a tion, which I believe is 95%, in response to detection of the motion of a per son or object." Id. at 667:15-22. It found the corres ponding structure for this f uncti on described at col.5 l.63-col.6 l.14. Id. at 667:24-668:4. Finally, "switching means for selectivel y per mitting and preventing the applic ation of said AC voltage to said lamp" was des cribed by the court in plain language a s "basically a switch that allows the lamp to ei ther be on or off." Id. at 670:5-6. The court found the corresponding structur e described at col.5 ll.13-25 , which was, as EML and Costco had argued, "more than just the triac." 3 Id. at 670:22. The court then stressed that all of t he means-plus-function terms were being construed to include s t ructural equivalents, too. Id. at 672:17. On October 31, 2005, the court issued a written order adopting these oral rulings without further explanation. DESA subsequently conceded t hat none of t he asserted claims were infringed, and a stipulated judgment was entered on No vember 21, 2005. This judgment is
express l y conditioned upon the di strict court's interpretation of " s ensor means" being upheld on appeal. A timely notic e of appeal was filed on Dece mber 16, 2005. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). II. DISCUSSI ON Claim cons truction is a ques tion of law reviewed de no vo. Cybor Corp. v. FAS Techs., Inc

. , 138 F.3d 1448, 1454-56 (Fed. Cir. 1998) (en banc). When construing

3 A triac is a type of electronic switch.

06-1168 5claim terms, the court determines the cust omary meaning of claim terms as understood by a perso n of ordinar y skill in th e art accord ing to the methodolo g y set forth in Vitronic s Corp v. Conceptronics , Inc. , 90 F.3d 1576, 1582-83 (F ed. Cir . 1996) and reaffirmed in Phillips v. AWH Corp. , 415 F.3d 1303, 1312-19 (Fed. C i r. 2005) (en banc).
A Where an element in a clai m is expressed as a mean s or step for performi ng a specified f unction without reciting struct ure, it "shall be cons trued to cover the corresponding structure, material, or acts described in t he specif ic ation and equivalents thereof." 35 U.S.C. § 112, ¶ 6. This tw o-step inquiry involves determining (1) whether § 112, ¶ 6 applies and, if it does, (2) ident ifying the claimed func tion and corresponding structures in the written de scription. Kemco Sales, Inc. v. Control Papers Co. , 208 F.3d 1352, 1360 (Fed. Cir. 2000). The use of the word "means" in t he claim language invok e s a rebuttable presumption that § 112, ¶ 6 applies; conversely, the failure to use "means" invokes a presumption that § 112, ¶ 6 does not apply

. Apex Inc

. v. Raritan Computer, Inc. , 325 F.3d 1365, (Fed. Cir. 2003). H e re, the key disputed phrases are "sensor means," "control circuit means," and "switching means ." Nonetheless, the presumption that § 112, ¶ 6 applies may be rebutted if the clai m recites no function or recites sufficient structure for performing that function. Sage Prods., Inc. v. Devon I ndus., Inc. , 126 F.3d 1420, 1427 28 (Fed. C i r. 1997). The trial court recognized that the use of the word "means" invoked the presumption that § 112, ¶ 6 app lied, but resorted to expert te stimony to resolve whether that presumption was rebutted. DESA presented ev idence fr om Mr. Patterson that the

06-1168 6use of "means" language was ambiguous becaus e it was commonly used in electronics patents without neces sarily intending to inv o ke § 112, ¶ 6. Mr. Carlson and Mr. Raper further testified that the modi fiers "sensor," "control circuit," and "switch" were commonly understood by those skille d in the art to de scribe structure. Defenda nts' exp e rts testified to the contrary. The dist rict cour t ultimately rejected DESA's argument that the asserted claims contained sufficient structur al language to escape the application of § 112, ¶ 6. Hr'g Tr. at 659:12-15. Although the district court seemed to rely upon expert testimony, 4 we note that its conclus i on could hav e been reached without t he aid of extrinsic evidenc e . First, the claims use both means-plus-function langu age (i.e., "sensor means," "control circuit means," etc.) and structural language ( i .e., lamp , zero crossing detect circuit, etc.), which suggests that the patent ee intentionally used "m ean s" language to inv o ke § 112, ¶ 6. Second, the claims recite a functi on for each of these "m eans" limitations withou t specifying what structure(s) would be requir ed to perform that function. Thir d, we reject DESA's argument that the us e of "sensor, "control circui t," and "switching" before the word "means" was sufficient to denote structure. Rather, those modi fiers were simply used to distinguish between subsequent refer ences to different "means" limitations within the same claim, i.e., "said first and second sensor means" as opposed to "said control circuit means." Fina lly, DESA arg u e s t hat this court has previous ly stated that "it is clear that the term 'c ircuit' by itself c o nnotes some structure." Apex , 325 F.3d at 1373. In Apex , however, the word "means" was not used, so the reverse

4 While the court did not explain in detail the reasons behind its oral decision, we infer that the court found the expert testimony of Mr. Thesz and Professor Massengill to be more persuasive.

06-1168 7presumption—i.e., that § 112, ¶ 6 does not apply—was invoked. Here, we agree wit h the district court that DESA failed to over come the presumption that § 112, ¶ 6 does apply to "sensor means," "control circuit means," and "switching means."
B We now c onsider whether the district court correctly identified the cla i med functions and corresponding structures of t he disputed phrases. We conclude that it erred in relying upon Professor Massengill' s expert testimony. In doing so, the district court construed each disputed c l aim term by si mply ref e rring to various pass ages in the specification that corresponde d to portions of Figures 2A and 2B, which depict the preferred embodiment. Expert te stimony in conflict with the intrinsic evidenc e, however , should hav e been acc o rded no weight. Phillips , 415 F. 3d at 1318; see also Markman v

. Westview Instruments , 517 U.S. 370, 390 (1996) (holding th at expert testimony must be evaluated in a manner that "ful ly comports with spec ification and the claims" and "preserve[s] the patent's internal coherence")

. 1 With respect to "first sensor means" (of claim 6) or "sensor means" (of claims 9, 10, and 11) for detecting motion, the central di spute is whether this includes "selection circuitry" such as the pulse-counting functi on, as Professor Massengill test ified. On appeal, DESA reiterates its argument that onl y Q1 and Q2—i.e., the passiv e infrared sensors depicted in F i gure 2A— perform the mo tion-detecting function. W e agree that "sensor means" is properly const r ued as "Q 1 and Q2 or equivalents." All the other parts of Figures 2A and 2B, including the puls e -c ount function at 51, are part of the control circuit in the preferred embodiment.

06-1168 8Not only does the specificat ion of the '066 patent repeat edly refer to the passive infrared sensors Q1 and Q2 as the "sensors," it even explic itly states that "[t]he sensor s Q1 and Q2 are each coupled to a detector portion 43 of the circuit ," (emphasis adde d) and then goes on to describe th e additional functions of the circuit—i.e., selecting and amplifying the "signals most likely to corres pond to infrared signals from a human body." Col.3 ll.34-35, 38-39. Because the intrinsic ev i dence clearly sets forth the corresponding structure for "sensor means," it was improper to rely upo n contrary extrinsic ev idence to construe this term. 5
2 Although the stipulat ed judgment was only cond itioned upon the claim construction of "sens or means," we now a ddress the proper construction of "control circuit means." EML and Costc o argue that the patentee distinguishe d certain prior art on the bas is that the inventio n had a pulse-counting feature as " generally disclose d ." Thus, they argue, the pulse-counti ng feature is a limit ation of every claim, and if "sensor means" does not limit the invent ion to those devices with a pulse-counting function, then "control circuit means" does. We disagree. The structure corresponding to "c ontrol ci rcuit means" (i.e., everything except the lamp, the passive infrared sensors, and the phot ocell) necessarily varies from claim to claim, depending on the functions disclosed. For example, claim 6 contains a limitation wherein th e lamp will revert to the first level of illum i nation after a predetermined time

5 In any event, we reject with Prof essor Massengill's testimony that the "selection circuitry" is part of the "sensor m eans." Rather, the passive infrared sensors Q1 and Q2 detect motion, while t he pulse-c ounting feature and ot her parts of the circui t are used to decide whether the lamp switches to the bright er level of illumination in response or whether the detected motion is ignored.

06-1168 9interval if additional m o tion is not detected, see col.8 ll.12-19, so a control cir c uit would have to inc l ude portion 52 of Figure 2B or it s equivalent to be within the scope of claim 6. Claims 9-11, however, lack this particula r limitation and would not require portion 52 to be part of an infringing c ontrol circuit. T he same holds true for the puls e -counting function, which is expressly recit ed as a limitation only in claim 12. Moreover, the Jensen/McCavit declaration in the pros ecution hi s t ory states that the prior art also lacked "other features as recited in the claims," not just the pulse-counting function. Specifically, t he Nippon r e ference was distinguished on several grounds. Some claims recite the manual-override function, others recite the pulse-counting function, and "[i]n addition, [application] claims 2, 10, 11 and 12 6 are directed to features clearly not disc losed or suggested in the instruction manual." Although the validity of these claims remains to be decided, not hing in the prosecution history suggests that either the manual-ov e rride function or the pulse-counting function was intended to be a limitation of every cl aim. Unlike a pplic ation claim 16 (whic h ultimately issued as claim 12), the claims asserted by DESA were not d i stinguished over prior art on the basis of the pulse-counting function.
3 Finally, as to "switching means" in cl aims 9, 10 and 11, we agree with DESA that this claim term is properly construed to mean "triac Q3 or equiva lents." The other structures described in the por tion of the specification refe renced by the district court correspond to the "means for causing s a id switching means to be actuated for a

6 These claims were renumbered and i ssued as claims 6, 9, 10, and 11.

06-1168 10selected portion of each half wave cycle of said AC voltage." Again, the court erred in relying upon expert testimony that was in consistent with the intrinsic evidence. III. CONCLUS ION For the aforementioned reasons, we v a cate the stipulated judgment of non-infringement and remand for further proceedings consistent with this opinion. W e express l y encourage the district court to revi sit its claim construction for any other terms it deems necessary.

06-1168 11