                 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.”


04-1093                                    14
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



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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.




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