Claims 5 and 12 are at issue in this case. For your reference, claim 5 is reproduced below:
5. A fruit pitting apparatus, including:
holders having pockets dimensioned to hold soft fruit, each of the pockets being configured to be movable between an open configuration and a closed configuration;
a pitting knife assembly mounted to the frame and including a knife set and a knife drive assembly, wherein the knife set includes one or more pitting knives and the knife drive assembly is coupled to the knife set and configured to drive the knife set along a pitting path relative to each of the holders;
a holder drive assembly coupled to the holders and configured to translate the holders intermittently around a closed loop such that each of the holders passes the pitting knife assembly while translating intermittently around the loop, and each of the holders is stationary relative to the frame each time the knife set performs a pitting operation on fruit in said each of the holders;
an active assembly positioned to engage the holders as the holders pass the pitting knife assembly, 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 efficiency of separation of pitted fruit flesh from the holders after said pitting operation.
Claim 5 in the ‘949 patent is directed towards knives being forced through fruit, ejecting the pits through the bottom of fruit holders. After pitting the fruit, the knives are retracted and the fruit holders are conveyed away. The fruit holders are used to secure the fruit in place while the knives extend into the body of the fruit to eject the pits.
During claim construction at the district court, the district court applied section 112, paragraph 6 (means-plus functions) to the “active assembly” limitation recited in the claims. The district court concluded that pneumatic and solenoid based actuators are the only type of actuators identified by the specification, and that the mechanical linear actuator referred to in the specification is simply part of the entire class of embodiments that must be driven by a solenoid. Using this logic, the district court found that the accusers pitters that were driven by a mechanical linear actuator was not the equivalent to a pneumatic or solenoid driven actuator because Vistan had not presented evidence that the servomotor power source functions in the substantially the same way (for doctrine of equivalents). Therefore the district court granted summary judgment of non-infringement in favor of the defendants.
On appeal, Vistan argued that one skilled in the art would understand that the disclosure of a “mechanical linear actuator” as disclosed in the ‘949 specification would allow one skilled in the art to understand what structure that corresponds to in the claim limitation.
Specifically, the court held that the record established 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. The court further ruled that the mechanism that supplies the mechanical input force need not be an integrated part of the actuator, and that the ‘949 specification discloses pneumatic and solenoid based actuators as examples of a class of actively driven actuators. Thus, the court of appeals held that the district court erroneously granted summary judgment of non-infringement based on the district court’s conclusion that mechanical linear actuator not driven pneumatically or by a solenoid could not infringe the ‘949 patent.
PATENT ATTORNEY TAKE-A-WAYS:
- Hearings on claim construction can be very important. When conducting claim construction it is crucial to not give up ground. In this circumstance, I am not sure why additional limitations were read into the claims that were not actually part of the claim.
- The main reason why additional limitations were read into the claims during claim construction is because the term “Active assembly” is not present in the specification of the ‘949 patent outside of the patent claim. When drafting claims and patent applications it is crucial that the claim elements have the same wording throughout the application and the claims. This is one example of where it could be held indefinite as to what “an active assembly” is regarding the claim limitations, because this language was not used throughout the patent specification. If the specification included language such as “an active assembly, which may be an actuator such as x,y,z.” This language would be much broader. In short, USE THE SAME LANGUAGE IN YOUR CLAIMS AS IN THE SPECIFICATION.