Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Kyocera Senco Indus. Tools Inc. v. Int'l Trade Comm'n, No. 2020-1046 (Jan. 21, 2022), vacating and remanding an International Trade Commission (“ITC”) holding on induced infringement.
The asserted Kyocera patents relate to linear fastener driving tools, such as power nailers. Kyocera filed a complaint with the ITC alleging that Koki was violating 19 U.S.C. § 1337 by importing infringing spring nailer products. The ITC instituted an investigation and ultimately found that Koki induced infringement of the asserted patents. Both Kyocera and Koki appealed. The appeals addressed three issues: 1) the exclusion of an expert’s testimony as unreliable because he lacked experience in the relevant art; 2) the ITC’s claim construction determinations; and 3) whether a prior art reference teaches the “main storage chamber” claim limitation.
On the issue of expert testimony, the ITC administrative law judge had excluded the expert’s doctrine of equivalents opinions because he lacked experience in power nailer design but allowed him to testify on literal infringement. The Federal Circuit observed that it was undisputed that the expert lacked the experience required of a person of ordinary skill in the art and thus held that allowing him to testify on any issue was error.
On the claim construction issues, the appellate court reversed three of the ITC’s determinations. First, the Court reversed the ITC’s construction of “driven position” because the patentees had acted as their own lexicographers by explicitly defining the term within the specification, and that definition controls. Second, the Court reversed the ITC’s construction of “lifter member” because it failed to treat the term as a means plus function limitation. The Court explained that, while the claims did not use word “means,” the rebuttable presumption against means plus function treatment was overcome because the claim did not recite sufficiently definite structure. Third, the Court reversed the ITC’s claim construction of “initiating a driving cycle,” explaining that it failed to treat components as distinct despite the structure of the claim indicating they are distinct components.
Lastly, on the prior art issue, the Court agreed with the ITC’s finding that a prior art reference failed to disclose a distinct “main storage chamber.”
Because the Court reversed on the expert testimony and claim construction issues, it vacated and remanded for further proceedings.