The issue on appeal was whether the patentee had provided sufficient evidence through its expert’s declaration to survive summary judgment of non-infringement. The patent was directed toward an “apparatus for reading optical discs in a computer that reduces the role of magnetic disk drives.” The defendants moved for summary judgment (before claim construction) based on the insufficiency of the patentee’s evidence for infringement. In particular, there was no evidence in the record pointing to specific structures in the accused devices that met the claimed “data transmission means.” Therefore, summary judgment of non-infringement was affirmed.
After reviewing the expert declaration, the court found that “it does not sufficiently identify the structural elements of the claimed ‘data transmitting means.’” (p. 8.) The expert declaration also failed to explain how one of skill in the art would recognize how the cited components were infringing. (p. 10.) To present a triable issue of fact on infringement, the patentee must provide at least a “clear identification of the claimed structure or its equivalent in the accused devices.” (p. 14.)
The court included additional statements about the sufficiency of expert opinions in the infringement context: “An expert’s unsupported conclusion on the ultimate issue of infringement will not alone create a genuine issue of material fact.” (p. 8.) “To satisfy the summary judgment standard, a patentee’s expert must set forth the factual foundation for his infringement opinion in sufficient detail for the court to be certain that features of the accused product would support a finding of infringement….” (p. 7-8.)