       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                 ______________________

               VISTAN CORPORATION,
                  Plaintiff-Appellant,

                            v.

FADEI USA, INC., PAN AMERICAN ENGINEERING
AND EQUIPMENT CO., INC., MANUEL SILVA, AND
        MARIANI PACKING CO., INC.,
           Defendants-Cross-Appellants.
             ______________________

                    2013-1216, -1217
                 ______________________

    Appeals from the United States District Court for the
Northern District of California in No. 10-CV-4862, Magis-
trate Judge Joseph C. Spero.
                 ______________________

               Decided: December 3, 2013
                ______________________

    ROBERT A. MCFARLANE, Hanson Bridgett, LLP, of San
Francisco, California, argued for plaintiff-appellant. With
him on the brief was RUSSELL C. PETERSEN. Of counsel on
the brief were MICHAEL N. BERG, Regard IP Law, of San
Francisco, California; and MICHAEL J. BROWN, Michael J.
Brown Law Office LLC, of Livingston, New Jersey.
2                      VISTAN CORPORATION    v. FADEI USA, INC.



    MICHAEL J. THOMAS, Downey Brand, of Sacramento,
California, argued for defendants-cross appellants.
                 ______________________

Before O’MALLEY, BRYSON, and WALLACH, Circuit Judges.
BRYSON, Circuit Judge.
                              I
     Appellant Vistan Corporation is the owner U.S. Pa-
tent No. 5,870,949 (“the ’949 patent”), which is directed to
an apparatus for pitting soft fruit, such as prunes and
dates. Claims 5 and 12, the claims at issue in this case,
recite a fruit-pitting apparatus in which fruit is conveyed
in fruit holders toward pitting knives and then briefly
stopped under the knives. The knives are then forced
down through the fruit, ejecting the pits through the
bottoms of the fruit holders. After pitting, the knives are
retracted and the fruit holders are conveyed away from
the knives.
     As explained in the specification, the fruit holders are
configured so that a variable-strength gripping force can
be exerted on the individual pieces of fruit. When the
fruit is gipped tightly, the fruit holders are said to be in a
“closed” configuration. When the grip is relaxed, the fruit
holders are in an “open” configuration. In order to im-
prove the efficiency of the pitting operation and assist in
removing the pitted fruit flesh from the pitting knives and
the fruit holders, the fruit-gripping force is varied over
the course of the pitting operation. The fruit holders are
first pushed to a closed configuration as they approach the
pitting knives. ’949 patent, col. 19, ll. 43-51. Then, after
the pit is ejected, the fruit holders are briefly opened and
then reclosed while the pitting knives are still engaged
with the fruit. Id., col. 9, ll. 18-28; id., col. 13, ll. 4-11.
The knives are then retracted while the fruit holders are
in a closed position. The fruit holders are then opened so
that fruit remaining in the holders can be ejected after
VISTAN CORPORATION   v. FADEI USA, INC.                    3



the holders move out from under the pitting knives. Id.,
col. 13, ll. 27-34.
    The final limitation of claims 5 and 12 of the patent
describes an “active assembly” whose function is to en-
gage the fruit holders and apply the variable force. The
active-assembly limitation in claim 5 recites:
    An active assembly positioned to engage the hold-
     ers as the holders pass the pitting knife assem-
     bly, and configured to cause the pockets of each
     of the holders to be in the closed configuration
     during the pitting operation and to move the
     pockets of said each of the holders from the
     closed configuration to the open configuration
     after the pitting operation thereby improving ef-
     ficiency of separation of pitted fruit flesh from
     the holders after said pitting operation.
’949 patent, col. 21, ll. 43-51. Claim 12 is similar to claim
5 except that it describes the active assembly as “config-
ured to move relative to the holders so as to vary the
gripping force exerted by the pockets on the specimens of
fruit held in said holders during and after the pitting
operation.” Id., col. 22, ll. 48-52.
                              II
    In October 2010 Vistan filed suit against the four de-
fendants alleging infringement of the ’949 patent. A
claim construction hearing was held in January 2012.
Neither Vistan nor the defendants argued that the active-
assembly limitations should be construed as means-plus-
function limitations under 35 U.S.C. § 112, ¶ 6 (2006).
The district court, however, construed the active-assembly
limitations as means-plus-function limitations because,
according to the court, the “active assembly” is defined
functionally instead of by reference to a particular struc-
ture or materials.
4                      VISTAN CORPORATION   v. FADEI USA, INC.



     Applying section 112, paragraph 6, the district court
looked to the specification of the ’949 patent to identify
the structure corresponding to the active-assembly limita-
tion. The specification describes a class of embodiments
that operate through intermittent motion of the fruit
holders whereby “each embodiment includes an actively
(e.g., pneumatically, or by solenoid) driven actuator
assembly . . . used to move (at appropriate times during
the pitting cycle) a pair of cam tracks 87 to vary the force
with which each fruit holder 36 grips fruit during and
after pitting.” ’949 patent, col. 18, ll. 52-58. The specifi-
cation then describes a preferred embodiment in which
“each actuator 88 is a mechanical linear actuator config-
ured to pull or push track 87 coupled thereto.” Id., col. 20,
ll. 15-17.
    From those descriptions, the district court concluded
that pneumatic and solenoid-based actuators are the only
types of actuators identified by the specification. The
court reasoned that the mechanical linear actuator re-
ferred to in the specification is simply “part of the entire
class of embodiments” that must be driven pneumatically
or by solenoid. The court thus found that mechanical
linear actuators are not a class of actuators distinct from
pneumatic and solenoid-based actuators, but are instead a
subclass of those types of actuators.
    The court construed the claimed active assembly as
“an assembly containing pneumatically- or solenoid-
driven actuators, or mechanical linear actuators, connect-
ed to a pair of cam tracks, and equivalents thereof.” Even
though that construction uses the disjunctive “or” to refer
to mechanical linear actuators, the court clarified in its
summary judgment order that mechanical linear actua-
tors are not “a separate class of actuators that fall outside
the patent’s requirement that actuators be pneumatically-
or solenoid-driven.”
VISTAN CORPORATION   v. FADEI USA, INC.                    5



    In its opinion on summary judgment, the district
court compared the active assembly in the accused pitters
with the corresponding structure in the ’949 patent and
determined that the accused structure was neither identi-
cal nor equivalent to the corresponding structure set forth
in the specification. For purposes of summary judgment,
the court assumed that the accused pitters include me-
chanical linear actuators. However, the court concluded
that the accused pitters were not identical to the corre-
sponding structure in the specification because the ac-
cused pitters “do not contain solenoid- or pneumatically-
driven actuators, and no solenoid- or pneumatically-
driven mechanical linear actuators.” Likewise, the court
found that the accused pitter’s servomotor-driven me-
chanical linear actuator was not equivalent to a pneumat-
ic or solenoid-driven actuator because Vistan had not
presented evidence that the servomotor power source
functioned in “substantially the same way as a pneumatic
or solenoid power source.” The court therefore granted
summary judgment of noninfringement in favor of the
defendants.
    In light of its finding of noninfringement, the court
declined to address whether the ’949 patent was invalid
for indefiniteness, and it therefore dismissed the defend-
ants’ counterclaims of invalidity without prejudice.
    Vistan has appealed the district court’s grant of sum-
mary judgment. The defendants have cross-appealed,
asking this court to declare the disputed claims invalid for
indefiniteness under 35 U.S.C. § 112, ¶2 (2006).
                             III
    1. The primary issue in this case is a narrow one. We
must decide whether the disclosure of a “mechanical
linear actuator” in the ’949 patent specification is a suffi-
cient description of structure that “one skilled in the art
will know and understand what structure corresponds” to
6                     VISTAN CORPORATION   v. FADEI USA, INC.



the claim limitations. Atmel Corp. v. Info. Storage Devic-
es, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999).
    Based on record evidence submitted by both Vistan
and the defendants, we conclude that mechanical linear
actuators are a distinct and identifiable class of actuators
separate from pneumatic and solenoid-based actuators.
The district court therefore erroneously granted summary
judgment of noninfringement based on its conclusion that
a mechanical linear actuator not driven pneumatically or
by solenoid could not infringe the ’949 patent. 1
    The evidence makes clear that a person of ordinary
skill in the art would understand mechanical linear
actuators to be a distinct and identifiable class of actua-
tors. Vistan’s expert, Dr. Timothy Bowser, stated that
“[a] mechanical linear actuator is an actuator . . . that is
driven at least in part by a mechanical element such as a
gear, threaded rod, cam, or crank, and that produces
substantially linear motion.” Dr. Bowser agreed with a


    1    We reject the defendants’ argument that Vistan
has waived its claim construction argument on appeal by
not making its means-plus-function argument to the
district court during the claim construction proceedings.
The defendants assert that Vistan is limited on appeal to
pressing its original argument that the claims are not in
means-plus-function format and to arguing that the
decision to construe the claims as means-plus-function
claims was erroneous. We reject that argument. In the
summary judgment proceedings, Vistan clearly presented,
and the district court clearly decided, the question wheth-
er mechanical linear actuators are a distinct class of
actuators whose disclosure in the specification is suffi-
cient to satisfy section 112, paragraph 6. Vistan’s disa-
greement with the court’s decision to invoke section 112,
paragraph 6, does not disable it from arguing that the
court’s application of that provision was erroneous.
VISTAN CORPORATION   v. FADEI USA, INC.                  7



description from Wikipedia that states: “Mechanical
linear actuators typically operate by conversion of rotary
motion into linear motion. Conversion is commonly made
via a few simple types of mechanisms: Screw . . . Wheel
and axle . . . and cam actuators.”
    Other record evidence provides further support for Dr.
Bowser’s definition. The defendants’ expert, Dr. Richard
Klopp, presented a figure from the Standard Handbook of
Machine Design that depicts eight linear actuators. Five
of those actuators are labeled as hydraulic actuators. The
other three are a lead screw, a worm gear with stationary
nut, and a worm gear with stationary screw. Those three
nonhydraulic actuators—which Dr. Bowser classified as
mechanical linear actuators—are illustrated as devices
that translate rotary motion about the depicted wheels
into linear motion along the depicted shafts. The defend-
ants’ evidence is therefore consistent with Dr. Bowser’s
definition that mechanical linear actuators are devices
that mechanically convert rotary motion into linear
motion. 2
    The record establishes that a person skilled in the art
would understand that mechanical linear actuators are
powered by a mechanical input and that pneumatic and
solenoid-based actuators are not. Pneumatic actuators
are powered by pressurized air, while solenoids are pow-
ered by electrical energy. The reference in the ’949 speci-
fication to “mechanical linear actuator” thus discloses
structure that is no less specific than the references to
pneumatic and solenoid-based actuators.


   2    Dr. Klopp’s broader definition of “mechanical line-
ar actuator” as a device that simply “causes motion be-
tween two machine elements wherein the motion occurs
along a straight line” is supported only by a textbook
definition of “linear actuator”; the textbook does not
provide that definition for “mechanical linear actuator.”
8                      VISTAN CORPORATION   v. FADEI USA, INC.



    The district court erroneously conflated an actuator
with the power source that drives the actuator, as demon-
strated by the court’s analysis of equivalency. The court
faulted Vistan for failing to produce evidence that the
accused actuator’s servomotor power source was equiva-
lent to a “pneumatic or solenoid power source.” The
specification’s references to pneumatic and solenoid-based
actuators, however, describe a type of actuator, not a type
of power source.
    The evidence of record shows that an actuator’s power
source need not be part of the actuator itself. Solenoid-
based actuators, for example, rely on an external source of
electrical energy, and pneumatic actuators rely on pres-
sure from externally compressed air. Likewise, mechani-
cal linear actuators rely on an external rotating
mechanical force that the actuator converts into linear
force. The mechanism that supplies the rotating mechan-
ical input force (e.g., an electric motor) need not be an
integrated part of the actuator. Indeed the mechanical
linear actuators depicted in the figures provided by Dr.
Klopp show only an interface for connecting a rotating
mechanical input; they do not show the device that gener-
ates the rotating force as part of the mechanical linear
actuator.
     The ’949 specification discloses pneumatic and sole-
noid-based actuators as examples of the broader class of
actively driven actuators. ’949 patent, col. 18, ll. 52-54.
The specification then describes an embodiment in which
the actively driven actuator is a mechanical linear actua-
tor. Id., col. 20, ll. 14-16. The specification nowhere
states or suggests that an “actively . . . driven actuator
assembly,” id., col. 18, ll. 53-54, must be driven pneumati-
cally or by solenoid. In fact, the specification indicates the
contrary by its use of the term “e.g.” in the statement that
“each embodiment includes an actively (e.g., pneumatical-
ly, or by solenoid) driven actuator assembly.” Id.
VISTAN CORPORATION   v. FADEI USA, INC.                   9



     2. The defendants raise a number of other issues in
their brief as appellees, complaining of the allegedly
shifting nature of Vistan’s infringement contentions, and
contending that the accused devices do not infringe be-
cause their actuators do not move linearly and because
they do not move in response to control signals. The
district court did not address those issues in its summary
judgment opinion, and we decline to address them for the
first time on appeal.
    3. Vistan argues that the defendants were guilty of
spoliation of evidence because, after Vistan had examined
one of the accused pitting machines, the defendants
disassembled it and used it for spare parts. The district
court denied Vistan’s request to treat that conduct as
spoliation because Vistan’s amended infringement conten-
tions did not distinguish the destroyed pitter from the
other accused pitters and because Vistan did not show
that the unavailability of the destroyed machine, which
Vistan had already examined, would affect Vistan’s rights
in any way. We see no basis to conclude that the court
abused its discretion in failing to find that the defendants
engaged in sanctionable spoliation of evidence.
     4. Vistan also complains that the district court denied
its motion to amend the Complaint to include the defend-
ants’ 2012 model pitter among the accused products. The
district court denied Vistan’s motion because at the time
the motion was filed the case was in its “final stage.” We
need not determine whether that decision was an abuse of
discretion because the litigation is no longer in its final
stage. Accordingly, the district court should reconsider
that motion pursuant to the Northern District of Califor-
nia’s Local Rules and in light of the posture of the case
following the remand.
                             IV
    In their cross-appeal, the defendants ask this court to
invalidate the disputed claims of the ’949 patent based on
10                     VISTAN CORPORATION   v. FADEI USA, INC.



the alleged indefiniteness of the references to “mechanical
linear actuator” and to “control signals . . . generated (in
any of a number of well known ways) by a conventional
timing system operating in synchronism” with the pitting
knives. ’949 patent, col. 20, ll. 8-11.
    We decline to address those issues in the absence of a
district court ruling on invalidity. As we have explained,
this court “will not undertake the indefiniteness and
enablement inquiries in the first instance.” Green Edge
Enters., LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287,
1299 (Fed. Cir. 2010). Although this appeal has allowed
us to determine that “mechanical linear actuator” is
sufficiently definite structure for the purpose of section
112, paragraph 6, the district court declined to address
whether the disclosure of a “conventional timing system”
was sufficiently definite. We will not decide that issue in
the first instance without having a decision by the district
court to review. The district court will be free to revisit
the counterclaims of invalidity in light of the posture of
the case on remand.
     Each party shall bear its own costs for this appeal.
              REVERSED and REMANDED
