Power-One, Inc. v. Artesyn Technologies, Inc., 599 F.3d 1343, 2010 U.S. App. LEXIS 6487 (Fed. Cir. 2010) (KENDALL, district judge, Michel & Gajarsa)PowerOne03302010
MAJOR ISSUES: definiteness; construction of technical term giving reasonable guidance to jury; “near”, “adapted to”; precise measurements not required; obviousness; conflicting expert testimony supporting jury verdict; all claim elements in prior art: obviousness not established; secondary considerations; industry praised; infringer touting patented feature to its customers
COMMENT. When obviousness as a challenge to a patent claim’s validity is tried to a jury, expert testimony plays a critical role. If a party’s testimony is sufficiently detailed and consistent with the law, a verdict in favor of that party, whether patent owner or challenger, is apt to be sustained.
In contrast, a challenge to a claim for indefiniteness is reviewed a question of law. The jury plays no role, in theory. Central to this case was whether the district court’s construction of the patent’s technical term, “POL regulators”, provided sufficient guidance to the jury when it used the relative terms”near” and “adapted to.” The Federal Circuit, in an opinion by a district court judge sitting by designation, said “yes.”
1. POWER CONTROL REGULATORS.
A patent concerned “power supply systems for controlling, programming and monitoring point-of-load regulators (`POL regulators’).” U.S. Pat. No. 7,000,125. USPatNo7000125 The regulators provide an appropriate level of current (power) to devices (“loads”) in an electronic system. The control was “adapted” to send and receive programming, control and monitoring data to and from the POL regulators.
2. DEFINITENESS: “POL Regulator.” An accused infringer argued that a district court failed to provide a sufficient construction of the phrase “POL regulator” and, alternatively, that the phrase as construed rendered asserted patent claims invalid for indefiniteness. The Federal Circuit rejected the arguments.
a. The patent did not define “point-of-load (POL) regulator.”
b. After holding a Markman hearing, the district court construed a POL regular as (1) a dc/dc switching voltage regulator receiving power from a voltage bus, (2) “adapted to” provide power to devices on a printed circuit board, and (3) placed “near” one or more devices.
c. ARE TERMS “NEAR” AND “ADAPTED TO” FACIALLY VAGUE, SUCH THAT THE JURY WAS LEFT TO ADOPT ITS OWN CONSTRUCTION OF THE CLAIMS? The accused infringer argued that the district court’s construction used the “facially vague” terms “near” and “adapted to” with the result that the jury was left to adopt its own construction of the claims in violation of the Markman principle (that is, that claim construction is a question for the court, not the jury). See Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1366 (Fed. Cir. 2004).
c. “MEANINGFULLY PRECISE”. The district court’s construed the claims “in a meaningfully precise manner.”
i. “NEAR” AND “ADAPTED TO”: NOT FACIALLY VAGUE. Prior decisions held that “near” and “adapted to” were not vague as such. E.g., Young v. Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir. 2007)] (near); Central Admixture Pharm. Servs., Inc. v. Advanced Cardiac Solutions, 482 F.3d 1347, 1356 (Fed. Cir. 2006) (adapted to).
ii. HOW NEAR IS “NEAR”? SPECIFICATION GUIDANCE; “CLOSE TO” OR “AT” LOAD; AVOID DELIVERING CURRENT OVER A “LONG” DISTANCE. The specification made clear that a POL regulator should be “close to” a load. It provided an illustration in a drawing (Figure 1). The purpose of nearness was to avoid delivery of currency “over relatively long distances.” This provided sufficient guidance to a person of ordinary skill in the art on the location of POL regulator on a circuit board, that is, how near “near” is.
iii. FUNCTIONALITY REQUIREMENT RESTRICTS BOUNDARIES OF LOCATION. “The patent’s functionality requirement restricts the boundaries of where the regulator can be located in relation to the load it is powering. A skilled artisan in distributed power systems would know where to place the regulator to accomplish that stated objective.”
iv. “ADAPTED TO”; PROVIDE CURRENT AT LEVEL A DEVICE (LOAD) REQUIRES. The specification made clear that a POL regulator should provide power at an “appropriate intensity” to the loads (devices), that is, the level of current the devices required.
v. PRECISE NUMERICAL MEASUREMENT NOT REQUIRED. “The fact that the claim is not defined using a precise numerical measurement does not render it incapable of providing meaningful guidance to the jury because the claim language, when taken in context of the entire patent, provides a sufficiently reasonable meaning to one skilled in the art of distributed power systems.”
d. DEFINITENESS. “Because a person having ordinary skill in the art would know where to place the POL regulator and how to use it, we find that the claim term `POL regulator’ is not indefinite ….”
i. “To comport with § 112’s definiteness requirement, the boundaries of the claim, as construed by the court, must be discernible to a skilled artisan based on the language of the claim, the specification, and the prosecution history, as well as her knowledge of the relevant field of art. See Halliburton Energy Servs., Inc. v. M-1 LLC, 514 F.3d 1244, 1249-51 (Fed. Cir. 2008).”
ii. “POL REGULATORS”: WELL KNOWN DEVICES; LOCATIONS AND FUNCTIONS RELATIVE TO OTHER POWER SYSTEM COMPONENTS UNDERSTOOD BY ORDINARILY SKILLED PERSONS. “The intrinsic evidence of the … patent supports that POL regulators are well known devices whose locations and functions relative to other components in the power system are understood by those of ordinary skill in the art.”
4. OBVIOUSNESS; JURY VERDICT SUPPORTED BY CONFLICTING EXPERT TESTIMONY. At a trial, a jury found that an accused infringer failed to establish that the patent’s asserted claims were invalid for obviousness over seven cited prior art references. A district court denied the accused infringer’s motion for JMOL on validity. The Federal Circuit held that the district court did not error.
a. ALL ELEMENTS IN THE PRIOR ART. That all the elements of the patented invention were independently known in the prior art did not establish obviousness.
b. CONFLICTING EXPERT TESTIMONY BETWEEN EXPERTS. There was conflicting expect testimony on obviousness. The jury could disbelieve the testimony of the accused infringer’s expert and credit that of the patent owner’s expert. The patent owner’s expert testified that no prior art taught the use of combined elements, that is, a serial data bus exchanging bidirectional information between a system controller and a plurality of POL regulators.
c. SECONDARY CONSIDERATIONS. The patent owner provided evidence of secondary considerations.
i. INDUSTRY PRAISE. patent owner “presented evidence of praise in the industry that specifically related to features of the patented invention, linking that industry praise with the patented invention. See Allen Archery, Inc. v. Browning Mfg. Co., 819 F.2d 1087, 1092 (Fed. Cir. 1987) (praise in the industry for a patented invention, and specifically praise from a competitor tends to `indicat[e] that the invention was not obvious’); see also Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988).”
ii. INFRINGER’S TOUTING ADVANTAGES OF ITS INFRINGING PRODUCT TO ITS CUSTOMERS. After the patent owner’s invention, an infringer launched its own product and touted to its customers the new products ability to achieve functions not possible in the past. The accused infringer’s “position that [the patent owner’s] invention was obvious is inconsistent with its position that its own infringing product was an advancement in the industry.”
CROSS REFERENCES.
1. On the standard for reviewing jury verdicts on obviousness, see Chisum Patent Law Digest 1565.
2. On claim indefiniteness, see Chisum Patent Law Digest 2424; Chisum on Patents 8.03[3].
