It is not often that a defendant in a patent infringement suit is able to win a summary judgment of non-infringement. Usually, the plaintiff is able to defeat a motion for summary judgment by producing a “declaration” (lawyerspeak for “a document ghost-written by lawyers”) of its “technical expert” (lawyerspeak for “degree-holding mouthpiece for the lawyers”) to raise a “substantial question of material fact.” Usually, but not always. (Intellectual Science And Technology, Inc. v. Sony Electronics, Inc. et al.)
Intellectual Science sued for infringement of a patent pertaining to an improvement in “information processing” comprising reading information simultaneously from multiple locations on one or more optical discs. The defendants moved, before the Court had construed the claim terms, for summary judgment of non-infringement, relying on a declaration by their technical expert who opined that the means-plus-function limitation of “data transmitting means” should be construed to require a structure including a system control bus, an ITDM – whatever the heck that is – a host interface bus, and ROM/RAM. He further stated that the accused devices lacked both an ITDM and a host interface bus.
In response, Intellectual Science submitted the declaration of its expert who asserted that those elements were, in fact, present in the accused devices. Ordinarily, this should suffice to defeat defendants’ motion. Ordinarily, but not in this case.
The Court concluded that plaintiff’s expert “did not make a sufficient showing of infringement to survive summary judgment because the statements in [the expert’s] declaration were merely conclusory.” It did “not sufficiently identify the structural elements of the claimed ‘data transmitting means.’” A plaintiff may not avoid summary judgment “by simply framing the expert’s conclusion as an assertion that a particular critical claim element is found in the accused device.” The Court suggested that the expert should have annotated the circuit diagrams of the accused devices so that “one of skill in the art would equate the accused element … with the claimed element … 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.”
THE LESSON TO BE LEARNED: When explaining why the accused device infringes, assume the reader knows nothing about the technology in question – this is almost always true – and explain EVERYTHING in DETAIL.