Ncr Corpporation v. Palm, Inc. , 120 F. App'x 328 ( 2005 )

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
04-1093
NCR CORPORATION,
Plaintiff-Appellant,
v.
PALM, INC. and HANDSPRING, INC.
(now collectively palmOne, Inc.),
Defendants-Appellees.
__________________________
DECIDED: January 6, 2005
__________________________
Before MAYER,* RADER, and SCHALL, Circuit Judges.
SCHALL, Circuit Judge.
NCR Corp. (“NCR”) appeals the decision of the United States District Court for
the District of Delaware that granted summary judgment of non-infringement in favor of
Palm, Inc. (“Palm”) and Handspring, Inc. (“Handspring”) in NCR’s suit against Palm and
Handspring (collectively “defendants”) for infringement of U.S. Patent Nos. 4,634,845
(“the ’845 patent”) and 4,689,478 (“the ’478 patent”). NCR Corp. v. Palm, Inc., 217 F.
*
Judge Haldane Robert Mayer vacated the position of Chief Judge on
December 24, 2004.
Supp. 2d 491 (D. Del. 2002). The district court granted summary judgment in favor of
defendants after construing the asserted claims of the ’845 and ’478 patents and
determining that there was no genuine issue of material fact as to whether defendants
infringed the claims. Id. at 529. We have jurisdiction over NCR’s timely appeal
pursuant to 28 U.S.C. § 1295(a)(1). For the reasons set forth below, we affirm.
BACKGROUND
I.
The ’845 patent is directed to a portable handheld electronic device (“handheld”)
and the ’478 patent is directed to a system comprising a handheld, an interface module
to connect the handheld to other devices, and other optional components. The ’478 and
’845 patents are not within the same chain of applications. However, both patent
applications were filed on the same date and have virtually identical specifications
regarding the device features that are at issue.
Although multiple claim terms are disputed, this appeal can be resolved by
focusing on one principal feature of the claimed device: the handheld’s interactive
display screen. The display guides the user through various menu options and tasks.
The display can reconfigure its menu options in response to a user pressing a “key
area” on the display.
For example, the handheld’s display may initially show a menu of different
applications from which the user may choose, such as a calendar, a calculator, a task
list, etc. At that point, the user may press a key area on the panel to enter one of these
applications. For instance, if the calculator application is selected, the handheld’s
processor will reconfigure the display to show a calculator device instead of the initial
04-1093 2
menu display. The various key areas on the display will then correspond with buttons
on a normal calculator, instead of the initial menu options previously displayed. The
following figures, which are Figures 3 and 4 in both patents, depict the handheld’s
display in two different configurations, with the same line display 26-9 presenting the
user with different options.
Defendants also produce portable handheld devices. The accused products,
Palm’s PalmPilot and Handspring’s Visor and Treo™ PDAs, use liquid crystal display
screens to display information for the user. See NCR, 217 F. Supp. 2d at 498.
Defendants describe the display system on their handhelds as a “resistive digitizer,”
characterized as “a single, continuous touch screen, with which the handheld computer
can sense the touch of a stylus.” (Br. of Appellees, at 14.)
II.
NCR filed suit against defendants for infringement of claims 1-7, 9, and 12-16 of
the ’845 patent, and claims 6-9 and 11 of the ’478 patent. Four of the asserted claims
04-1093 3
are independent: claims 1 and 16 of the ’845 patent, and claims 6 and 11 of the ’478
patent. The independent claims are set forth in pertinent part below, with the disputed
limitations in bold:
’845 patent, Claim 1:
A data handling device comprising:
a panel;
a plurality of discrete display elements arranged relative to said panel to
present, when selectively energized, user instructions and key information
to a user of said device; said discrete display elements being small in size
to enable said user instructions and key information to be presented over
substantially all of said panel;
a plurality of discrete switches for entering data when actuated;
said discrete display elements and said discrete switches being positioned
in overlapping relationship relative to said panel to enable said switches to
be actuated from said panel;
...
’845 patent, Claim 16:
A portable, intelligent, data-handling device comprising:
means for storing data and machine instructions;
means for executing said machine instructions;
a panel;
means for displaying data to a user of said device;
means for entering data on said device;
said displaying means and said entering means being in overlapping
relationship relative to said panel and extending over substantially all of
said panel;
...
’478 patent, Claim 6:
A system for handling data comprising:
a portable data handling device; and
an interface module for coupling said device with other systems;
said data handling device comprising:
a panel;
a plurality of discrete display elements arranged relative to
said panel to present, when selectively energized,
information to a user of said device;
a plurality of discrete switches for entering data when
actuated;
04-1093 4
said discrete display elements and said discrete switches
being positioned in overlapping relationship relative to said
panel to enable said switches to be activated from said
panel;
...
’478 patent, Claim 11:
A system for handling data comprising:
a portable data handling device having a size which is substantially
the same as a credit card;
at least one other system; and
an interface module for coupling said device with said other system
to transfer data between said device and said other system;
said device comprising:
a panel;
a plurality of discrete display elements arranged relative to
said panel to present, when selectively energized, user
instructions and key information to a user of said device;
said discrete display elements being small in size to enable
said user instructions and key information to be presented
over substantially all of said panel;
a plurality of discrete switches for entering data when
actuated;
...
After the parties submitted cross motions for summary judgment, the district court
conducted a hearing, and heard argument on the proper claim construction of the
disputed claim limitations. NCR, 217 F. Supp. 2d at 493-94. In a comprehensive
opinion ruling on the summary judgment motions, the district court construed various
limitations of the asserted claims. Among the limitations construed were “a plurality of
discrete switches,” id. at 508, and “means for entering data,” id. at 510. Based on its
construction of these and other limitations of the asserted claims, the district court
granted summary judgment of non-infringement in favor of defendants. Id. at 529.
04-1093 5
III.
“We review the district court’s grant of summary judgment de novo.” Caterpillar
Inc. v. Sturman Indus., 387 F.3d 1358, 1373 (Fed. Cir. 2004). Summary judgment is
appropriate when “the pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, if any, show that there is no genuine
issue as to any material fact and that the moving party is entitled to a judgment as a
matter of law.” Fed. R. Civ. P. 56(c).
On appeal, NCR challenges, among other things, the district court’s construction
of the claim limitations a “plurality of discrete switches” and “means for entering data.”
Claim construction is a question of law that we review de novo. Cybor Corp. v. FAS
Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). We begin our analysis
with the words of the claim. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996). “In construing claims, the analytical focus must begin and
remain centered on the language of the claims themselves, for it is that language that
the patentee chose to use to particularly point out and distinctly claim the subject matter
which the patentee regards as his invention.” Interactive Gift Express, Inc. v.
Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (citations omitted). The
ordinary and customary meaning of a claim term may be determined by reviewing a
variety of sources, including “the claims themselves; dictionaries and treatises; and the
written description, the drawings, and the prosecution history.” Ferguson Beauregard v.
Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003) (citations omitted).
The limitation “plurality of discrete switches” appears in the ’845 patent in claims
1-7, 9, and 12-15, and in the ’478 patent in claims 6-9 and 11. The district court
04-1093 6
construed “plurality of discrete switches” to mean “two or more distinct and separate
manual or mechanically actuated devices for making, breaking, or changing the
connections in an electric circuit” (for shorthand, the “physical switch” definition). NCR,
217 F. Supp. 2d at 508. NCR argues that the proper construction of “plurality of
discrete switches” is “more than one individually distinct programmed device for
indicating that one of alternative states or conditions have been chosen” (for shorthand,
the “programmed device” definition).
NCR asserts that the district court improperly construed “plurality of discrete
switches” because the court adopted one dictionary definition of “switch” (as a physical
switch) and ignored alternate definitions of the term “switch” in the same dictionary.
See Tex. Digital Sys. v. Telegenix, Inc., 308 F.3d 1193, 1203 (Fed. Cir. 2002) (“If more
than one dictionary definition is consistent with the use of the words in the intrinsic
record, the claim terms may be construed to encompass all such consistent
meanings.”). NCR also asserts that the specification supports its proposed construction
of “plurality of discrete switches” as programmed devices.
We agree with the district court’s construction of “plurality of discrete switches.”
Preliminarily, we see a fundamental difficulty with NCR’s arguments with respect to this
claim limitation: the fact that the claimed invention contains various programmed
components, some of which are programmed to respond to the closure of simple
mechanical-electrical switches, does not in turn make the switches themselves
“programmed.” Nor does the fact that multiple components are necessary for the
operation of the device’s entire display system mean that all of such components are
part of the “plurality of discrete switches,” as that term is used in the patent claims. We
04-1093 7
think that one skilled in the art, reading both the plain language of the claims and the
specification, would conclude that the “plurality of discrete switches” is nothing more
than a set of simple switches, and that separate components are programmed to
respond to the actuation of those switches. These separately claimed components all
work together to enable dynamic interaction with the user.
We begin with the language of the claims. See Nystrom v. Trex Co., 374 F.3d
1105, 1120 (Fed. Cir. 2004). Taking claim 1 of the ’845 patent as an example, the
claims recite various elements, including:
a plurality of discrete switches for entering data when actuated;
said discrete display elements and said discrete switches being positioned
in overlapping relationship relative to said panel to enable said switches to
be actuated from said panel;
control means for controlling the operation of said device including said
discrete display elements and said discrete switches so as to facilitate the
displaying and entry of data;
said control means comprising:
means for storing data and a plurality of machine instructions; and
means for executing said machine instructions including means for
selectively energizing said display elements so as to present on said panel
that key information and those of said user instructions which are
associated with those of said discrete switches which are to be used in
association with said machine instructions being executed so as to
present to said user a variable user instruction format and a variable key
format which are a function of said machine instructions being executed
as said machine instructions are executed so as to facilitate the entry of
data[.]
’845 patent, col. 14, l. 67 - col. 15, l. 23.
NCR asserts that software is “integrated” into the “plurality of discrete switches”
to reconfigure the key areas for the user. See Brief of Appellant, at 34 (“When the user
04-1093 8
actuates that yellow area, software reconfigures the active key switch areas and
reassigns different functions to those areas[].”).
However, this is contradicted by the claim language. The claims indicate that the
invention includes “a plurality of discrete switches” and a separate “control means” for
controlling, among other things, the “plurality of discrete switches.” According to the
claims, it is the “control means” for the “plurality of discrete switches,” and not the
“plurality of discrete switches” itself, that stores “machine instructions” (i.e., software)
and reacts to a switch in the “plurality of discrete switches.” The “means for executing
said machine instructions” within the “control means,” and not the “plurality of discrete
switches,” “present[s] on said panel that key information and those of said user
instructions which are associated with those of said discrete switches. . . so as to
present to [the] user a variable user instruction format and a variable key format.”
(emphasis added). The reconfiguring of the keys in a “variable user instruction format,”
recited in the claims as part of the “control means,” contradicts NCR’s assertion that this
is performed by programming within the “plurality of discrete switches.” This type of
construction is disfavored. See Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
381 F.3d 1111, 1119 (Fed. Cir. 2004) (“While not an absolute rule, all claim terms are
presumed to have meaning in a claim.”).
Thus, we think that one skilled in the art, reading the claim language, would
recognize that the invention includes a dynamic display arrangement, which functions
with the help of several separately claimed elements. A “means for executing said
machine instructions” energizes certain “display elements” on the handheld’s panel, with
different display elements representing a menu option or a particular task that the user
04-1093 9
wishes to perform. The “control means” contains software to energize the proper
display elements. Accordingly, the plain language of the claims indicates that a “control
means” and a “means for executing said machine instructions” are programmed to
cause the display elements to be selectively energized. The “plurality of discrete
switches” is separate from the “control means” and its programming.
In addition to the fact that a separate claim element performs what NCR claims
that the “plurality of discrete switches” is “programmed” to do, other claim limitations
support the district court’s interpretation that “plurality of discrete switches” means an
array of physical switches. All of the asserted claims containing the “plurality of discrete
switches” limitation also contain a limitation similar to that in claim 1 of the ’845 patent:
said discrete display elements and said discrete switches being positioned
in overlapping relationship relative to said panel to enable said switches to
be actuated from said panel. . .
’845 patent, col. 15, ll. 1-4; see also id. col. 16, ll. 39-42 (independent claim 16); ’478
patent, col. 16, ll. 34-37 (independent claim 6); id. col. 18, ll. 7-10 (independent claim
11). This limitation also comports with the district court’s physical switch interpretation,
as it indicates to one skilled in the art that the switches are precisely located physical
components. It would be strange to describe the switches, with software, as in
“overlapping relationship” to anything, because there would be no precise place where a
“switch” would be located. An entire component of the switches—the software
component—would be stored in memory and only rendered by software.1 The plain
1
In addition, NCR has not pointed to any part of the specification that
describes where the programming for the “plurality of discrete switches” is stored. The
only memory elements disclosed are part of the “means for controlling the P terminal
12” shown in Figure 8, see ’845 patent, col. 8, l. 31 - col. 9, l. 21, i.e., they are part of the
04-1093 10
language of the claims stands as an obstacle in NCR’s attempt to import separate claim
limitations into the “plurality of discrete switches” limitation in an effort to broaden the
meaning of that term.
The specification confirms the understanding found in the claim language that the
switches are simple physical switches which are coupled with separate programmed
components to make the entire overall display system functional for the user. In short,
the specification discloses an array of transparent switches that are no more
“programmed” than a simple mechanical “on/off” light-switch. It is other components
that are programmed to dynamically “highlight” the appropriate physical switches that
the user should actuate to perform a desired task, and to respond to the switch closures
resulting from a user’s pressure on a key area.
The preferred embodiment, shown in Figure 7 of both the ’845 and ’478 patents,
discloses an array of simple open/closed physical switches that are fabricated as a set:
(Cont’d. . . .)
“means for controlling the operation of said device.” See ’478 patent, col. 15, ll. 5-7
(claim 1).
04-1093 11
The specification unambiguously recites those elements that are included in the
“plurality of switches:”
The upper compartment 38-2 contains those elements
included in the plurality of switches 30 and they are included in the
bracket 30-1 in FIG. 7.
. . . The plurality of switches 30 included in the bracket 30-1 in FIG.
7 is comprised of a top, transparent, flexible, plastic-film layer 50 such as
Mylar. . . The lower side of the layer 50 has five, equally spaced,
transparent strips or conductors 52-1, 52-2, 52-3, 52-4, and 52-5[.]
. . . The plurality of switches 30 (FIG. 7) also includes a thin,
bottom, transparent, plastic-film layer 54, and this layer has nine equally-
spaced, transparent strips or conductors 56-1, 56-2, 56-3, 56-4, 56-5, 56-
6, 56-7, 56-8, and 56-9 deposited on the top surface of layer 54. . . A
spacer layer 58 is positioned between the top layer 50 and the bottom
layer 54 to provide insulation between the conductors. . . The layer 58 has
a plurality of holes therein, with each hole being located at an intersection
between one of the conductors 52-1 through 52-5 and one of the
conductors 56-1 through 56-9.
’845 patent, col. 6, ll. 8-10, 24-29, 35-48 (emphasis added). No software is disclosed as
part of the “plurality of switches 30.” It is logical that none would be, because the above
figure and description make clear that the “plurality of switches 30” is comprised merely
04-1093 12
of a few plastic-film layers and strips of conductive material. A spacer layer separates
the conductors, and holes in the spacer layer allow the top and bottom conductive strips
to contact each other at different points, thus forming a set of discrete open/closed,
mechanical-electrical switches.
Figure 7 and its related description undermine NCR’s arguments with respect to
the specification. NCR has not explained how, without more, the disclosed pieces of
plastic and conductive strips can be “programmed,” as well as what the switches would
be programmed to do that is not performed by elements separately claimed and
disclosed apart from the “plurality of switches 30.” Although NCR is correct that
programming appears to be an integral part of the device’s overall operation, the
specification’s description of switch actuation reinforces the point that the “plurality of
switches” is merely a set of open/closed, mechanical-electrical switches:
When a user wishes to actuate one of the plurality of switches 30, as for
example that one associated with key area 28-9 in FIG. 4, the user simply
depresses that area 28-9 causing the conductor 52-5 in FIG. 7 to pass
through the hole 60-9 and thereby contact the conductor 56-9.
’845 patent, col. 6, ll. 58-63. Thus, a switch in the “plurality of switches 30” is a
mechanical-electrical switch that is either open (when the upper and lower conductive
strips are not in contact through a particular hole) or closed (when the pressure from a
user’s finger or stylus causes two conductors to contact through a particular hole to form
a circuit). The handheld also includes a separate “keyboard interface 106” which
“includes a set of drivers. . . to scan the rows of switches in the keyboard array 64 and
to inform the microprocessor 46 of the switch closures.” Id. col. 9, ll. 14-17 (emphasis
added). The specification thus comports with the district court’s understanding that the
04-1093 13
patents disclose “the use of a plurality of discrete physical switches whose closures are
recorded by a microprocessor.” NCR, 217 F. Supp. 2d at 529.
NCR proffers other passages from the specification as supporting its
programmed device definition of “plurality of discrete switches.” First, NCR cites the
following passage:
It should also be noted that the key areas themselves have no captions or
labels on them in the usual sense. The labels or designations are
provided by the display 26 which lies below the plurality of switches 30.
’845 patent, col. 5, ll. 46-50. This statement does not support NCR’s contention that
“software creates a switch”2 that is in the “plurality of switches.” This merely explains
how the display 26 is dynamically “re-labeled,” so that the user is directed to the proper
physical switches to actuate (which are transparent and lie above the corresponding
display element) in order to complete various tasks.
Second, NCR argues that a related passage supports its construction:
While the actual (physical) switches in the plurality of switches 30 are
always present on the top panel 24, they are outlined or highlighted only
when they become necessary for a particular function or instruction being
executed by the P Terminal 12[.]
’845 patent, col. 5, ll. 48 - 54. We think that this statement undermines, rather than
supports, NCR’s proposed construction. As discussed supra, the “plurality of switches
30” is unambiguously described as a set of open/closed mechanical switches which are
actuated by contacting two pieces of conductive material through a hole to complete a
2
NCR’s argument conflates “actuation” of a switch with whether other
components in turn respond to switch actuation. The fact that a separate component is
“programmed” to do something (or, in some cases, to do nothing) in response to the
actuation of a simple mechanical-electrical switch does not logically make that switch
itself a “programmed device.”
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circuit. The above-quoted statement merely observes that certain physical switches in
the plurality of switches 30 are not always “highlighted.” In reading the above
statement, one must bear in mind how the switches are, in fact, highlighted. The
specification explains that the key areas are “outlined or highlighted” by the display 26
positioned beneath the plurality of switches 30. Id. col. 6, ll. 63-65. Thus, the above-
quoted statement merely explains that, when certain switches are not necessary for a
particular function, those switches are not highlighted, i.e., the microprocessor does not
send a signal to energize the display elements lying below those particular transparent
switches.3 We find nothing in that description to indicate that there is some type of
software or logic within the switch itself. Rather, it further confirms that the switches
themselves are of the simple mechanical-electrical variety, and that the only way to
make the entire display apparatus appear dynamic to the user is to have software to
alter the state of separately claimed components, such as the display elements, rather
than the plurality of switches 30.
NCR also would have us infer that the language “the actual (physical) switches in
the plurality of switches 30,” id. col. 5, ll. 50-51, means that the physical switches are
only “part” of a broader, more abstract set of switches that includes software. Breaking
this argument into its logical components, NCR argues that (1) the “plurality of switches
30” contains something more than the physical switches; and (2) that the “something
more” is software.
We can accept the first proposition, but must reject the second. The language
“actual (physical) switches in the plurality of switches 30” indicates that the specification
3
See, e.g., ’845 patent, col. 7, l. 59 - col. 8, l. 4 (discussing “pixel selection”
by the microprocessor).
04-1093 15
is distinguishing certain physical switches from the entire plurality of switches 30, which,
in the preferred embodiment, is a set of switches that is fabricated together. In Figure 7,
there is indeed something more to the “plurality of switches 30” than the actual physical
switches, but this “something more” is not software. In the preferred embodiment, each
of the switches in the “plurality of switches 30” is fabricated from a layer of transparent
plastic and conductive material. Consequently, portions of the top layer 50, and all of
the spacer layer 58, for example, are part of the “plurality of switches 30” yet
conceptually are not part of any one particular physical switch.
NCR points to a third statement in the specification in support of its position:
Although the fabrication of switches 30 has been described in a specific
manner, it is not intended to exclude other alternative methodologies to
fabricate “transparent” switches such as homogeneous or discrete
capacitive-film switches and electrostatic-sensitive switches, for example.
’845 patent, col. 7, ll. 5-10. We do not see how this passage shows that there is a
software component to the claimed switches. The quoted statement does not mention
programming or software; it only refers to physical fabrication methods of discrete
physical switches.
NCR also proffers extrinsic evidence in support of its proposed definition of
“plurality of discrete switches,” quoting an article titled “Back to Basics: How
Touchscreens Work”:
All touchscreen systems have three components. To process a user’s
selection, a sensor unit [physical switch] and a controller sense the touch
and its location, and a software device driver transmits the touch
coordinates to the computer’s operating system.
NCR concludes from this description that (1) the patented display system is a
“touchscreen” system and (2) consequently, the “plurality of discrete switches” must
04-1093 16
include software. Defendants urge us not to consider this extrinsic evidence, citing
Elkay Manufacturing. Co. v. Ebco Manufacturing. Co., 192 F.3d 973, 976-77 (Fed. Cir.
1999).
Assuming arguendo that we should consider this extrinsic evidence, it does not
support NCR’s construction of “plurality of discrete switches.” The patents claim a
“touchscreen” not by using that term, but rather by claiming its separate components,
namely: “a plurality of discrete display elements” (which display items for the user); “a
plurality of discrete switches” (a set of physical switches); and a “control means”
(including a set of drivers).4 This separation of the “touchscreen” into different claim
limitations within the claims is mirrored by the specification’s separation of the elements:
a “display 26”; a separate “plurality of switches 30”; and a separate “keyboard interface
106” which “includes a set of drivers. . . to scan the rows of switches in the keyboard
array 64 and to inform the microprocessor 46 of the switch closures.” ’845 patent, col.
9, ll. 14-17. Thus, NCR’s extrinsic evidence confirms that a software driver is not
considered part of the switches. Rather, according to this definition, both the switches
and drivers are separate components of a “touchscreen.”
For these reasons, we affirm the district court’s construction of “plurality of
discrete switches” as “two or more distinct and separate manual or mechanically
actuated devices for making, breaking, or changing the connections in an electric
circuit.”
4
The drivers are described in the context of Figure 8, which discloses the
“means for controlling” the “P terminal” or handheld, and are not disclosed as part of the
“plurality of discrete switches.” See ’845 patent, col. 2, ll. 33-35; id. col. 8, ll. 31-33; id.col. 9, ll. 14-17.
04-1093 17
IV.
NCR also argues that the district court erred in construing the claim limitation
“means for entering data,” appearing in independent claim 16 of the ’845 patent. The
parties agree that this limitation is governed by 35 U.S.C. § 112, ¶ 6. However, they
dispute whether the district court properly identified all of the corresponding and
alternative structure disclosed in the specification to perform the function of “entering
data.” The court identified the corresponding structure for “entering data” as “the
plurality of discrete switches” (as described in the specification and construed in the
preceding section), “including capacitive-film and electrostatic-sensitive switches
fabricated as an array of discrete transparent switches.” See NCR, 217 F. Supp. 2d at
524.
NCR argues that additional, alternative structure is disclosed in the following
passage of the specification:
Although the fabrication of switches 30 has been described in a specific
manner, it is not intended to exclude other alternative methodologies to
fabricate “transparent” switches such as homogeneous or discrete
capacitive-film switches and electrostatic-sensitive switches, for example.
’845 patent, col. 7, ll. 5-10. According to NCR, this statement discloses alternative ways
in which data may be entered because the “transparent switches” designation was well
known to those skilled in the art. NCR asserts that the district court’s identification of
the corresponding structure is incorrect because the district court erroneously
concluded that “details showing how the switches are fabricated (‘fabricated as an array
of discrete transparent switches’) must be set forth in the specification in order to qualify
the alternative disclosed switches as alternative embodiments.”
04-1093 18
NCR has misapprehended the district court’s ruling. The court did not state that
in order to qualify as corresponding structure, manufacturing details of the alternative
structure must be disclosed in the specification. Rather, the district court simply read
the above passage as stating that using “capacitive-film switches” and “electrostatic-
sensitive switches” are alternative types of physical switches to use in fabricating an
array of discrete transparent switches. See NCR, 217 F. Supp. 2d at 510 (“[W]hile the
specification states that the switches in the plurality of switches could be made using
capacitive or electrostatic-sensitive materials, the structure disclosed is still any array of
physical switches. . . . If the ‘alternative methodologies’ language imparts any
corresponding structure at all to one of skill in the art, it is capacitive-film and
electrostatic-sensitive switches fabricated as an array of discrete transparent
switches.”). Thus, regardless of the transparent switch type one decides to employ, the
only structure disclosed in the specification for “entering data” is still an array of discrete
physical switches. NCR has not adequately explained how the nature of “transparent
switches,” such as electrostatic-sensitive or capacitive-film switches, requires us to
disturb the district court’s interpretation of the specification.
V.
We have considered NCR’s passing argument on the doctrine of equivalents and
find it to be without merit. NCR has not shown error in the district court’s conclusion
that, as a matter of law, no reasonable jury could find that the accused devices operate
in substantially the same manner as the claimed “plurality of discrete switches,” as that
term is properly construed. See NCR, 217 F. Supp. 2d at 527-28. Nor has NCR
addressed the district court’s claim vitiation analysis, see id. at 527.
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With respect to equivalents for the structure corresponding to the “means for
entering data” limitation in claim 16 of the ’478 patent, Mr. Kitchen’s report is insufficient
to create a genuine issue of material fact under the doctrine of equivalents. Mr.
Kitchen’s statement that one skilled in the art could easily “substitute” a resistive layer
touch screen for a device having distinct physical switches only speaks to the fact that
these input devices are functionally identical. However, under § 112, ¶ 6, “[f]unctional
identity and either structural identity or equivalence are both necessary.” Odetics, Inc.
v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed. Cir. 1999). As we explained in
Odetics, “under § 112, ¶ 6 equivalence, functional identity is required; thus the
equivalence (indeed, identity) of the ‘function’ of the assertedly substitute structure,
material, or acts must be first established in order to reach the statutory equivalence
analysis.” Id. “The content of the test for insubstantial differences under § 112, ¶ 6 thus
reduces to ‘way’ and ‘result.’” Id.
The district court detailed how the patented input device and the accused
devices perform the identical function of entering data but in a substantially different
“way”:
[T]he touch screen digitizer and the plurality of discrete switches function
to enter data in a substantially different way. In the claimed invention, data
is entered by closing a particular switch and energizing a particular
electrical circuit; the microprocessor is informed of which switches are
closed and reacts accordingly. By contrast, in the accused devices, data is
entered by means of a digitizer that measures voltages produced at the
location of the touch and converts those voltages into digital coordinates.
Moreover, the resistive sheets of the accused devices are “continuous”
and comprise a single device for measuring tactile input.
NCR, 217 F. Supp. 2d at 527. Mr. Kitchen’s one-sentence, conclusory statement that
entering data on a resistive layer touch screen and on a plurality of discrete switches “is
04-1093 20
accomplished in the same way” is insufficient to overcome the district court’s reasoned
analysis.
VI.
To conclude, we affirm the district court’s construction of the claim limitations
“plurality of discrete switches” and “means for entering data.” These two determinations
are sufficient to decide this appeal. At least one of these two claim limitations appears
in all of the asserted claims. We express no opinion on the other claim construction
issues raised by the parties. For the foregoing reasons, the district court’s grant of
summary judgment of non-infringement in favor of defendants is affirmed.
04-1093 21