             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


                                        05-1237

                         COMPETITIVE TECHNOLOGIES, INC.,

                                                Plaintiff,

                                          and

          THE BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS,

                                                Plaintiff-Appellant,

                                           v.

        FUJITSU LIMITED, FUJITSU GENERAL LIMITED, FUJITSU HITACHI
       PLASMA DISPLAY LIMITED, FUJITSU GENERAL AMERICA, INC., and
                FUJITSU MICROELECTRONICS AMERICA, INC.,

                                                Defendants-Appellees.

                            __________________________

                               DECIDED: June 15, 2006
                            __________________________


Before LOURIE, RADER, and PROST, Circuit Judges.

LOURIE, Circuit Judge.

      The Board of Trustees of the University of Illinois (the “University”) appeals from

the decision of the United States District Court for the Northern District of California

entering judgment of noninfringement of claims 26, 32, 33, 36, 39, and 40 (collectively

the “clamping claims”) of U.S. Patent 5,081,400 (the “’400 patent”), invalidity of claims

5-11 of U.S. Patent 4,866,349 (the “’349 patent”), and invalidity of claims 21-25, 27-31,
35, and 38 (collectively the “non-clamping claims”) of the ’400 patent in favor of Fujitsu

Limited, Fujitsu General Limited, Fujitsu Hitachi Plasma Display Limited, Fujitsu General

America, Inc., and Fujitsu Microelectronics America, Inc. (collectively “Fujitsu”).

Competitive Techs., Inc. v. Fujitsu Ltd., No. C-02-1673 (N.D. Cal. Sept. 20, 2004)

(“Judgment”). We affirm the district court’s claim construction of the term “clamping,”

and hence its grant of Fujitsu’s motion for summary judgment of no literal infringement

of the clamping claims of the ’400 patent. We also affirm the court’s grant of Fujitsu’s

motion for summary judgment of no infringement of those claims under the doctrine of

equivalents. In addition, we affirm the court’s grant of Fujitsu’s motion for summary

judgment that the non-clamping claims of the ’400 patent are invalid because of

anticipation, and that claims 5-11 of the ’349 patent are invalid because of

indefiniteness.

                                     BACKGROUND

       The ’349 patent and its continuation, the ’400 patent, are both entitled “Power

Efficient Sustain Drivers and Address Drivers for Plasma Panel,” and were issued to the

University as assignee. The invention is directed to circuits that create images on a

display by selectively exciting tiny pockets of light-emitting gas (“pixels”) with electric

current, used in plasma display panels (“PDPs”), electroluminescent panels, and liquid

crystal panels. Generally, PDPs comprise two parallel glass plates, separated by a gas-

filled gap of pixels. ’400 patent, col. 1, ll. 14-20. In the “standard” PDP configuration, a

pixel emits light when its associated electrodes are charged and discharged by “driver”

circuits that supply voltages to and remove voltages from those electrodes. Id. The

perceived illumination of a pixel can be prolonged by applying an alternating voltage to




05-1237                                      2
the electrodes using a “sustain driver” circuit. Id., col. 1, ll. 31-37. The ’349 and ’400

patents, however, describe a different PDP configuration known as Independent Sustain

and Address (“ISA”) that includes the addition of an independent address electrode

between the sustain electrodes; because the address electrodes are then connected to

address driver circuits, address electrodes are not energized by a sustain driver circuit

in ISA panels. Id., col. 1, ll. 65-67, col. 2, ll. 1-2.

       Early PDPs consumed a great deal of energy because the energy supplied by

the sustain driver circuit to a pixel was normally lost due to each pixel’s inherent

capacitance, i.e., the unavoidable capacitance associated with the physical geometry of

the PDP’s electrode configuration. Id., col. 2, ll. 21-23, 48-53. The invention of the ’349

and ’400 patents reduced the amount of energy normally lost in charging and

discharging the capacitance of the PDPs, describing an improved address driver circuit

and an improved sustain driver circuit. Id., col. 2, ll. 30-60.

       Fujitsu manufactures PDPs that include an energy recovery circuit that clamp

while there is substantial current still flowing in the inductor and that additional current is

supplied directly from the power supply. On December 21, 2000, the University filed a

complaint against Fujitsu in the United States District Court for the Central District of

Illinois alleging infringement of the ’349 and the ’400 patents. Judgment, slip op. at 1.

The case was then transferred to the Northern District of California on April 2, 2002.

Competitive Techs., Inc. v. Fujitsu Ltd., 374 F.3d 1098, 1099 (Fed. Cir. 2004).

       On August 8, 2003, the California district court issued its Claim Construction

ruling construing 47 claim terms. Competitive Techs., Inc. v. Fujitsu Ltd., 286 F. Supp.

2d 1161, 1203-1209 (N.D. Cal. 2003) (“Claim Construction Order”). Among its rulings,




05-1237                                          3
the court held that “address means” in claim 5 of the ’349 patent only describes ISA

panels, and that the term “sustain means” in that same claim excludes ISA panels, and

concluded that claim 5 and dependent claims 6-11 were invalid for indefiniteness. Id. at

1169-70.   The court also invalidated claims 5-11 as indefinite on the independent

ground that they lacked corresponding structure. Id. In addition, the court construed

the term “clamping” in claims 31, 33, 36, 39, and 40 of the ’400 patent to mean “specific

structures that activate in response to the inductor current reaching zero upon the panel

capacitance being substantially fully charged [or discharged] through the inductor to add

a specific reference voltage.” Id. at 1206-08, 1193-94.

      On February 16, 2004, Fujitsu filed consolidated motions for summary judgment

of invalidity and noninfringement of claims of the ’400 patent. Competitive Techs., Inc.

v. Fujitsu Ltd., 333 F. Supp. 2d 858, 861-62 (N.D. Cal. 2004) (“Summary Judgment

Order”). The court granted those motions on July 13, 2004. Id. First, based on the

University’s concessions following the Claim Construction Order, the court held that

there was no genuine dispute that claims 21-40 of the ’400 patent (including the

clamping claims) were not literally infringed and that claims 21-24, 27, 35 (a subset of

the non-clamping claims), were anticipated by JP No. 58-53344 (“Kanatani”). Id.

      Second, the court granted summary judgment that claims 28-31 (the other non-

clamping claims outside of the subset) of the ’400 patent were anticipated by Kanatani

and that the accused products cannot infringe the clamping claims of the ’400 patent

under the doctrine of equivalents. Id. at 861. Specifically, the court held that there was

no genuine dispute that Kanatani anticipates claims 28 and 29 (the “forcing voltage

claims”) and also claims 30 and 31 (the “maintaining claims”). Id. at 870, 872.




05-1237                                     4
      The court also held that there was no genuine dispute that the clamping claims of

the ’400 patent were not infringed under the doctrine of equivalents, relying on Fujitsu’s

evidence that, in the accused devices, the amount of “current in the inductor at the time

of clamping is substantial – for many of the panels, closer to maximum current than to

zero,” and that “the amount of additional charging to the panel capacitance after

clamping is substantial.” Id. at 888. According to the court, a reasonable juror could not

conclude that the accused devices met the limitations in the clamping claims. Id. at

879-80. In addition, the court held that the University was precluded from applying the

doctrine of equivalents because of prosecution history estoppel, and that, in the

alternative, the prosecution history supported a finding of estoppel by disclaimer. Id. at

883, 888.

      The district court entered judgment in favor of Fujitsu on September 20, 2004 of

noninfringement of claims 21-40 of the ’400 patent, including the clamping claims,

invalidity of the non-clamping claims of the ’400 patent, and invalidity of claims 5-11

claims of the ’349 patent. Judgment, slip op. at 1-2. The University timely appealed the

judgment of noninfringement as to the clamping claims, and the judgment of invalidity

as to the non-clamping claims and claims 5-11 of the ’349 patent. We have jurisdiction

pursuant to 28 U.S.C. § 1295(a)(1).

                                      DISCUSSION

      Claim construction is an issue of law, Markman v. Westview Instruments, Inc., 52

F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), that we review de novo, Cybor Corp. v.

FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). We also review a

district court’s grant of summary judgment without deference, drawing all reasonable




05-1237                                     5
inferences in favor of the nonmovant. Perricone v. Medicis Pharmaceutical Corp., 432

F.3d 1368, 1373 (Fed. Cir. 2005). We review evidentiary rulings of the district court

applying the law of the regional circuit. Sulzer Textil A.G. v. Picanol N.V., 358 F.3d

1356, 1363 (Fed. Cir. 2004). The Ninth Circuit reviews evidentiary rulings for abuse of

discretion. McEuin v. Crown Equip. Corp., 328 F.3d 1028, 1032 (9th Cir. 2003).

     I. Infringement

       On appeal, the University argues that the court erred in its claim construction of

the clamping claims of the ’400 patent. According to the University, the claim limitations

are open-ended, and should not be narrowly construed to require charging “solely

through the inductor,” “no substantial supplemental charging,” and “charging without

interruption” until the inductor current reaches zero. The University also challenges the

district court’s construction requiring that clamping occur only after the inductor current

reaches zero.    Further, the University argues that even if the district court’s claim

construction were correct, the court erred in granting Fujitsu’s motion for summary

judgment of noninfringement under the doctrine of equivalents as to the clamping

claims.   In addition, the University asserts that the court improperly excluded the

University’s expert evidence based on its perceived weight rather than its admissibility,

and that the University did not surrender equivalents in which clamping occurred before

the inductor current reaches zero.

       Fujitsu responds that the district court correctly construed the clamping claims to

permit clamping only when the current in the inductor reaches zero.           Fujitsu also

contends that the court correctly found that Fujitsu’s accused devices clamp while there

is substantial current still flowing in the inductor, and therefore did not err in granting




05-1237                                     6
Fujitsu’s motion for summary judgment of noninfringement under the doctrine of

equivalents as to the clamping claims.           In addition, Fujitsu asserts that during

prosecution the applicants surrendered devices that clamped before the inductor current

reached zero.

         We agree with Fujitsu that the district court correctly construed the clamping

claims of the ’400 patent to permit clamping only when the current in the inductor

reaches zero. Our primary focus in determining the ordinary and customary meaning of

a claim limitation is to consider the intrinsic evidence of record, viz., the patent itself,

including the claims, the specification and, if in evidence, the prosecution history, from

the perspective of one of ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d 1303,

1312-17 (Fed. Cir. 2005) (en banc). Here, the construction of the “clamping” claim term

that is consistent with the claims and specification is that clamping occurs when the

inductor current equals zero, and thus we give those claim limitations that ordinary and

customary meaning.

         Four of the clamping claims of the ’400 patent, claims 26, 32, 33, and 36, require

charging and discharging the panel capacitance through an inductor “until the inductor

current reaches zero.” ’400 patent, col. 19, ll. 65-66; col. 20, ll. 4-5, 41-42, 47-48; col.

21, ll. 21-22, 30-31; col. 22, 1-2, 10-11 (emphasis added). Those claims also require

“clamping the voltage level of the panel capacitance upon the inductor current reaching

zero.”    Id., col. 20, ll. 31-32; col. 21, ll. 9-10, 24-25, 33-34; col. 22, ll. 4-5, 13-14

(emphasis added). The express language of those claims thus requires that clamping

occurs only after the inductor has reached zero. The two other clamping claims, claims

39 and 40, require charging to a desired voltage and discharging to a first voltage




05-1237                                      7
“through an inductor” while first “storing” and then “removing said stored energy from

said inductor.” Id., col. 22, ll. 22-58. All six of the clamping claims thus require that the

panel capacitance charges and discharges through the inductor until all the energy is

removed from the inductor, i.e., the inductor current is zero, and that clamping not occur

before the current and energy is removed from the inductor, i.e., the inductor current is

zero.

        The specification also supports that interpretation of the clamping claims. The

Abstract states that the invention is “an improved power efficient sustain driver for

plasma panels including an inductor through which the panel capacitance is charged

and discharged, and switch means is switched when the inductor current is zero, which

permits recovery of the energy otherwise lost in driving the panel capacitance.” Id.,

Abstract (emphasis added). Further, all the detailed descriptions of the embodiments

state that the panel capacitance is charged/discharged through the inductor, until the

circuit automatically discontinues charging/discharging through the inductor in response

to the inductor current reaching zero. Id., col. 10, ll. 10-44; col. 11, ll. 15-67; col. 12, ll.

17 - col. 13, ll. 31; col. 15, ll. 22-61.

        Having affirmed the district court’s claim construction of the term “clamping,” we

also affirm its grant of Fujitsu’s motion for summary judgment of no literal infringement

of the clamping claims of the ’400 patent. As an initial matter, we note that the district

court granted Fujitsu’s motion for summary judgment of no literal infringement of the

clamping claims without comparing the accused devices to the claims because the

University did not dispute that there was no literal infringement of those claims under

the court’s claim construction. Summary Judgment Order, 333 F. Supp. 2d at 862.




05-1237                                        8
However, in granting Fujitsu’s motion for summary judgment that there was no

infringement under the doctrine of equivalents of the clamping claims, the court held

that there was no genuine issue of material fact that, in the accused devices, “the

amount of current at the time of clamping is not zero or even close to zero.” Id. at 879.

We see no error in that determination. Thus, we hold that no reasonable fact finder

could conclude that Fujitsu’s devices meet the correctly construed “clamping” limitations

so as to literally infringe the clamping claims. We therefore affirm the court’s grant of

Fujitsu’s motion for summary judgment of no literal infringement of the clamping claims.

       We also affirm the court’s grant of Fujitsu’s motion for summary judgment of no

infringement of the clamping claims under the doctrine of equivalents. “Infringement

may be found under the doctrine of equivalents if every limitation of the asserted claim,

or its ‘equivalent,’ is found in the accused subject matter, where an ‘equivalent’ differs

from the claimed limitation only insubstantially.” Ethicon Endo-Surgery, Inc. v. U.S.

Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998). Here, the correctly construed

“clamping” term of the clamping claims requires that clamping occur when the inductor

current reaches zero. In the accused devices, the clamping occurs while the amount of

current is not zero or even close to zero. The difference between when the clamping

occurs in the claims and when clamping occurs in the accused devices is not a “subtle

difference in degree,” but rather a “clear substantial difference or difference in kind” that

precludes a finding of infringement under the doctrine of equivalents. Id. at 1321. We

conclude that no reasonable fact finder could find that the accused devices meet the

limitations in the clamping claims, and we therefore affirm the court’s grant of Fujitsu’s

motion for summary judgment of no infringement under the doctrine of equivalents.




05-1237                                      9
       In so holding, we reject the University’s argument that the district court abused its

discretion in accepting Fujitsu’s contentions that for all accused panels, the amount of

current in the inductor at the time of clamping is not zero or even close to zero. First,

because the University failed to cite the specific evidence that it sought to strike in its

motion below, the court did not abuse its discretion in denying the University’s motion to

strike. Summary Judgment Order, 333 F. Supp. 2d at 862. Second, the court did not

abuse its discretion in finding that “the evidence offered by [the University] in opposition

to summary judgment, while extensive, is insufficient to show a genuine issue of

material fact.” Id. at 880. The court rejected some of the University’s evidence because

the University “ha[d] not met the burden of showing that [its expert’s] methodology is

reliable rather than speculative,” and we defer to that finding. Id. at 881.

       Because no reasonable fact finder could conclude that Fujitu’s accused devices

infringe the clamping claims of the ’400 patent under the correct construction of the

claim term “clamping,” it is unnecessary for us to reach the remaining claim construction

issues. It is also unnecessary for us to address whether the estoppel by amendment or

estoppel by disclaimer bars application of the doctrine of equivalents.

     II. Invalidity

       On appeal, the University argues that because it has amended each of the

claims of the ’400 patent that the district court deemed invalid for anticipation, the

judgment of invalidity is moot. In addition, the University argues that claims 28 and 29

of the ’400 patent are not anticipated by Kanatani. The University also asserts that the

court erred in granting Fujitsu’s motion for summary judgment of invalidity for

indefiniteness as to claims 5-11 of the ’349 patent. According to the University, the




05-1237                                      10
claim language is not limited to ISA panels, and therefore the claims are not logically

contradictory. The University also argues that the court erred in concluding that the

“first switch means” lacks corresponding structure.

       Fujitsu responds that the non-final reexamination proceedings cannot moot the

court’s invalidity judgment as to the original claims. Fujitsu also asserts that the court

did not err in holding that claims 28 and 29 were anticipated, and in determining that

claims 5-11 of the ’349 patent were invalid as indefinite. In addition, Fujitsu contends

that claims 5-11 are invalid on the independent ground that there is no structure in the

specification clearly linked to the “sustain means” limitation of claim 5. Further, Fujitsu

asserts that there is no structure that corresponds to the first switch means in claim 5.

       We agree with Fujitsu and the district court that there is no genuine dispute that

the non-clamping claims of the ’400 patent are invalid because of anticipation. As an

initial matter, the non-final reexamination proceedings do not render the judgment of

invalidity moot. See In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002) (“Until a matter has

been completed, . . . the PTO may reconsider an earlier action.”). Further, because

there is no final judgment from the district court as to the correct claim construction of

terms in the proposed reexamination amendments, that issue is not properly before us.

       Turning to the issue of anticipation, claims 28 and 29 require a “means” for

“applying a forcing voltage” when charging/discharging the panel. ’400 patent, col. 20,

ll. 49-58.   Pursuant to 35 U.S.C. § 112, ¶ 6, we construe those claims “to cover

corresponding structure, material, or acts described in the specification and equivalents

thereof.” Here, the University’s own expert defined “forcing voltage” as “the voltage

across the inductor.”    Summary Judgment Order, 333 F. Supp. 2d at 869.               It is




05-1237                                     11
undisputed that in Figure 11, the generic power supply “applies a voltage Vdd across

the inductor that is ‘about one-half the magnitude of the voltage level the panel

capacitance reaches after charging.’” Id. We therefore agree with the district court that

the application of voltage Vdd depicted in Figure 11 is a “forcing voltage,” and affirm the

court’s grant of Fujitsu’s motion for summary judgment that claims 28 and 29 are

anticipated by Kanatani.

         We also agree with Fujitsu that the court did not err in holding that claims 5-11 of

the ’349 patent were invalid because of indefiniteness. Every patent specification must

“conclude with one or more claims particularly pointing out and distinctly claiming the

subject matter which the applicant regards as his invention." 35 U.S.C. § 112, ¶ 2

(2000). Claims that are “not amenable to construction” or “insolubly ambiguous” are

indefinite. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir.

2005).     “In the face of an allegation of indefiniteness, general principles of claim

construction apply. Intrinsic evidence in the form of the patent specification and file

history should guide a court toward an acceptable claim construction.” Id. at 1348.

         Here, independent claim 5, from which claims 6-11 depend, recites:

         An ac plasma panel having panel capacitance and comprising:

                a plurality of X and Y dimension address electrodes, intersections
                between said address electrodes defining address cells;

                address means for applying a signal to selected X and Y address
                electrodes to discharge at least one selected address cell associated with
                said electrode and create wall charges at said selected cell;

                sustain means for subsequently energizing said address electrodes, which
                energization in combination with said wall charges at said selected cell
                discharges said cell . . .




05-1237                                       12
’349 patent, col. 17, ll. 9-23 (emphases added). The parties agree that the term “sustain

means” describes a non-ISA panel because it requires that address electrodes be

energized by a “sustain means,” which can never occur in an ISA panel.                Claim

Construction Order, 286 F. Supp. 2d. at 1175. The key issue is whether a person of

ordinary skill in the art would have understood the limitation “address means” to refer to

an ISA panel. We conclude that the only construction of that term that is consistent with

the intrinsic evidence is that it describe an ISA configuration.

       The language of claim 5 requires the intersection of “X and Y dimension address

electrodes” to define “address cells.” ’349 patent, col. 17, ll. 11-13. As the district court

correctly noted, that language “describes a configuration that is unique to ISA panels, in

which separate electrodes are used for addressing and sustaining, resulting in a panel

in which the pixels are distinct from the address cells.” Claim Construction Order, 286

F. Supp. 2d at 1171. The specification comports with that understanding because the

term “address electrode” is used only in the context of describing an ISA panel. ’349

patent, col. 1, ll. 63-65; col. 3, ll. 66-68. Conversely, the description of generic plasma

display panels in the specification refers to electrodes as “electrodes” and not “address

electrodes.” Id., col. 1, ll. 17-23.

       Because the “address means” limitation of claim 5 requires ISA structures, and

the “sustain means” limitation of that same claim excludes ISA structures, a person of

ordinary skill in the art would be unable to determine the scope of the claims. They are

internally inconsistent. We therefore conclude that the court did not err in holding that

claims 5-11 are invalid because of indefiniteness. It is unnecessary for us to address




05-1237                                      13
whether those claims are invalid on the independent ground that there is no structure in

the specification linked to the sustain means limitation of claim 5.

      We have considered the University’s remaining arguments and find them to be

unpersuasive.

                                      CONCLUSION

       We affirm the district court’s claim construction of the term “clamping,” and hence

its grant of Fujitsu’s motion for summary judgment of no literal infringement of claims 26,

32, 33, 36, 39, and 40 (the clamping claims) of the ’400 patent. We also affirm the

court’s grant of Fujitsu’s motion for summary judgment of no infringement of those

claims under the doctrine of equivalents. In addition, we affirm the court’s grant of

Fujitsu’s motion for summary judgment that claims 21-25, 27-31, 35, and 38 (the non-

clamping claims) of the ’400 patent are invalid because of anticipation, and that claims

5-11 of the ’349 patent are invalid because of indefiniteness.




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