Sony Prevails at CAFC in Decision Faulting Patent Owner’s Means-Plus-Function Analysis

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday issued a precedential decision finding Sony’s Playstation controllers and consoles did not infringe Genuine Enabling Technology’s (GET’s) patent for computer input devices.

GET alleged that Sony directly and indirectly infringed its U.S. Patent No. 6,219,730 via certain Playstation products. Specifically, GET said that the products’ Bluetooth module “synchronized user input from controller buttons with input from controller sensors,” thereby meeting the claims’ “encoding means” limitation.

The district court construed the encoding means limitation as means-plus-function limitations because the claim terms “failed to sufficiently denote structure to a skilled artisan.” The district court ultimately granted Sony’s summary judgement of non-infringement motion.

On appeal, GET challenged the district court’s finding that it did not sufficiently show the claimed and accused structures to be structurally equivalent. “Literal infringement of a [means-plus-function] limitation requires that the relevant structure in the accused device perform the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification,” wrote the CAFC, citing to Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed. Cir. 1999).

Relying on its decision in Traxcell Techs., LLC v. Sprint Commc’ns Co., 15 F.4th 1121, 1127 (Fed. Cir. 2021), the Federal Circuit said that GET’s expert failed to sufficiently describe the “‘way’ the ‘encoding means’ structure in the ’730 patent performs its function.”

While the expert, Dr. Fernald, originally described the “way” logic block 34—the figure the district court identified as providing the structure for the ’730 patent’s “encoding means”—in detail, GET pared that description down during the Daubert hearing so that Fernald’s final position was just that “the ‘way’ block 34 synchronized the two data streams is by ‘synchronizing both to a common bit-rate clock.’” This left out many other elements of logic block 34, said the CAFC, causing it to agree with the district court’s conclusion that “Dr. Fernald was deficient in his explanation of why he had considerably curbed his analysis of logic block 34 to just one of its elements.”

In Traxcell Technologies, the CAFC similarly upheld summary judgment of no infringement because the patent owner had “failed to meet its burden to show structural equivalence of a means-plus-function limitation when its expert ‘neglected to address a significant fraction’ of a ‘very detailed’ algorithm’ identified in the patent specification as the corresponding structure.” The CAFC also pointed to its decision in Dawn Equipment Co. v. Kentucky Farms Inc., 140 F.3d 1009 (Fed. Cir. 1998) for support.

GET argued that the district court’s analysis amounted to “component-by-component” analysis, which the CAFC has said is unnecessary for demonstrating structural equivalence. But the opinion called this argument “unavailing,” and said the district court specifically noted that it did not conduct such an analysis, and also that “though we articulated a component-by-component analysis was unnecessary in Odetics, the patentee must still account for each element of the claimed structure in its equivalence analysis.” While each element of the identified structure does not require its own equivalence mapping to a corresponding element in the accused product, “where the patentee elects to focus its equivalence analysis on something less than the whole structure that is disclosed in the specification, the patentee has an obligation to meaningfully explain why it is permissible to discard the other elements,” said the CAFC.

GET never explained why so many elements of the identified structure were left out of the analysis, and that combined with Dr. Fernald’s and GET’s “sparse” analysis of the Bluetooth modules in the Accused Products—which the district court rejected as conclusory—warranted affirming the grant of summary judgment of non-infringement for Sony.

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