A Blog About Intellectual Property Litigation and the District of Delaware

[UPDATE: Apparently not! This opinion was reversed on a motion for reconsideration; further update below]

Judge Connolly today struck portions of an expert report where the expert opined that the accused product did not infringe because it included extra components in addition to what was claimed in a means-plus-function claim element.

According to the Court, this is contrary to the well-established principle that additional structure does not preclude infringement of an MPF claim element, if the required structure is also there.

[UPDATE: As the Court recognized on reconsideration, that was not what was happening here. Instead, the expert was pointing out that the opposing party's expert had failed to identify the a structure that performed the function, not that the presence of additional components results in non-infringement.]

Here is an example of the excluded text, as quoted by the Court:

Dr. Vallee points, without much explanation, to various structures on the JoistPro' s safety mechanism as allegedly meeting the required structure of the claimed "push portion[."] However, Dr. Vallee fails to explain how his identified [structures] work together to achieve the function of the claimed "push portion[."] This is because these components do not perform the claimed function because the JoistPro 's safety mechanism also requires additional pneumatic components and a pressurized air supply to operate.

Notably, Judge Connolly confined his ruling to just the problematic argument, and declined to use plaintiff's broader exclusion from its proposed order (which he "fear[ed] might lead to unintended and perhaps undesirable consequences.")

P.S. this shows why it's good to include a proposed order with your motion, even though they are not required, depending on the judge (at least one has called proposed orders presumptuous under some circumstances). It really makes clear what it is that you want the Court to rule, which is often less apparent than you think.

Of course, a proposed order along the lines of "the motion is hereby granted" does nothing at all for you...

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