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Kyocera Senco Industrial Tools Inc. v. International Trade Commission, Appeal No. 2020-1046, -2050 (Fed. Cir. Jan. 21, 2022)

The Federal Circuit’s only precedential patent decision this week comes on appeal from the International Trade Commission, where an Administrative Law Judge (ALJ) found noninfringement and the Commission reversed. The Federal Circuit addressed the issues of qualifications to provide technical expert testimony, claim construction, and references.

The patents at issue generally related to portable tools that drive staples or nails. In 2017, Kyocera filed a complaint with the Commission alleging Koki’s importation and sale of infringing products was in violation of the Tariff Act of 1930, 19 U.S.C. § 1337. Koki denied infringement and argued that the asserted claims were invalid. The ALJ first found that Koki’s products were not infringing and rejected Koki’s invalidity challenges. Kyocera petitioned for review and the Commission remanded, directing the ALJ “to address whether the accused products met the unaddressed claim limitations and whether Koki induced its customers to infringe.” On remand, the ALJ found both that the accused products met all but two of the claim limitations, and that Kyocera failed to prove intent as is required for a showing of induced infringement. Kyocera petitioned for review. The Commission reversed on these two issues. Both parties appealed to the Federal Circuit.

The Court vacated and remanded. First, the Court addressed the issue of whether the ALJ improperly handled the offered testimony of Kyocera’s Dr. Pratt. The ALJ excluded Dr. Pratt’s testimony as to the doctrine of equivalents because of his lack of experience. However, the ALJ permitted Dr. Pratt’s testimony as to the issue of literal infringement. The Commission had defended the ALJ’s order on this issue. The Court reversed, finding that “[b]ecause Dr. Pratt lacked ordinary skill in the art, the ALJ abused his discretion by admitting any of Dr. Pratt’s testimony.”

Second, the Court addressed the issue of the construction of the claimed “driven position” in several of the asserted patents. The claim construction dispute “centered around whether the construction included positions ‘at or near the bottom-most travel position’ (Kyocera’s stance) or was limited to the singular position ‘at the bottom most-travel position’ (Koki’s stance). The ALJ adopted the latter construction.” The Court agreed with the ALJ, finding that the “patentee clearly defined ‘driven position’ in the written description [in such a manner as to indicate it is a singular position, and as such], that definition control[ed].”

Third, the Court addressed the issue of whether the claimed “lifter member” in the ‘718 patent invoked 35 U.S.C. § 112 ¶ 6. The ALJ found that it did not. The Court disagreed, explaining that “[t]he ‘lifter member’ limitation [did] not use the word means, so there [was] a presumption that § 112 ¶6 [did] not apply. But because that claim term [did] not recite sufficiently definite structure, that presumption [was] overcome.”

Fourth, the Court addressed the construction of the claim requiring “initiating a driving cycle by pressing said exit end against a work piece.” The Commission agreed with Kyocera’s argument that “the exit end of the ‘safety contact element’ was the ‘exit end of the fastener driving mechanism,’ [such that] a tool that initiates a driving cycle by pressing the exit end of a safety contact element against a workpiece would meet the claim language.” The Court disagreed, explaining that the “safety contact element” and the “exit end of the mechanism” were distinct components and that the claim language and the written description supported such presumption.

The Court vacated and remanded accordingly.

The opinion can be found here.

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