COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH ORGANISATION,
v.
BUFFALO TECHNOLOGY (USA), INC.
and BUFFALO, INC.,
DECIDED: September 19, 2008
『Buffalo’s counsel later stated that the stipulation permitting the court to decide any fact issues that might arise applied only to those issues on which Buffalo had moved for summary judgment. Those issues included infringement, anticipation, and invalidity because of a written description violation based on the alleged introduction of new matter. But with respect to obviousness, as to which Buffalo did not file a cross-motion for summary judgment,』
Buffalo的律師找了好幾篇prior art做結合來攻擊CSIRO的專利，卻不要求做obviousness的summary judgment。他們是在想什麼?一直到要permanent injunction時才想到。也因此即使CAFC引用KSR的判例來結合prior art，也只能撤銷permanent injunction，無法判決CSIRO的專利無效。
『But with respect to obviousness, as to which Buffalo did not file a cross-motion for summary judgment, Buffalo’s counsel stated that “any factual issues that came up in the context of obviousness would be reserved for later adjudication.” After a brief colloquy between the court and counsel, it was agreed that the court would not make findings of fact on obviousness,』
Buffalo的律師說進步性要等到後來的判決再來討論，結果是法官就決定不討論進步性的問題了。What a stupid counsel，不知道二審不能提心的證據嗎？
『Before the district court, Buffalo could have argued both (1) that the phrase “confined multipath transmission environment” does not mean “indoor environment,” and (2) that, in any event, the environment of use defined in the preamble should not be treated as a separate limitation. But Buffalo made only the first argument. It has therefore waived the argument that the relevant language in the preamble does not limit the claims.』
Preamble中與結構無關的敘述不能拿來限縮claim，可惜Buffalo的律師一開始不知道，知道的時候已經太遲了。
『Under the correct analysis, the Court wrote, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 1742.』
該領域已知的需求及問題都可以拿來作為結合的理由。所以，除非是這世界上第一位發現問題的人，否則不能再以缺乏結合的動機來作為對缺乏進步性的答辯的理由。
『To the contrary, the Court explained, “familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. . . . A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id.』
也不能以目的不同來作為對缺乏進步性的答辯的理由。
『In Rault’s diagram of a receiver according to the described structure, Rault depicts a demodulator, a deinterleaver, and data reliability enhancement mechanisms, in that order. The reverse sequence of structures in the corresponding transmitter would be lined up in exactly the order recited in the asserted claims of the ’069 patent.』
Demodulator可以作為揭露modulator的證據？有趣！
『CSIRO argues that Buffalo’s references do not “show structure corresponding to the structure found for the means-plus-function elements of the patent.” CSIRO is apparently referring to the structures disclosed in the specification of the ’069 patent that correspond to the modulation means, the data reliability means, and the interleaving means. One of the inventors testified, however, that interleaving, multi-level modulation, and data reliability enhancement in the form of forward error correction were all well known in the art at the time of the invention. He added that the elements that performed those functions in the system of the invention were also known in the art. In its brief to the district court, CSIRO made the same admission,』
如果means plus function的element是well known，即使保護範圍限定在說明書中相對應的結構，不同的結構也能作為揭露的證據。要是means plus function的element不是well known，那又該如何呢？
『The district court construed one of the means-plus-function limitations of the asserted independent claims—the “means to apply data reliability enhancement” limitation—as corresponding to the “[r]ate ½ TCM (trellis coded modulation) encoder described in block 42 of Figure 7 and references at 6:32-46” of the ’069 patent. Buffalo does not dispute that its accused devices perform the function recited in that limitation. Thus, the question for infringement purposes is whether the devices have a structure that is identical or equivalent to the structure disclosed in the specification. Buffalo argues that its devices contain “convolutional encoders,” which are not the same as, or equivalent to, the structure identified in the specification of the ’069 patent.』
rate ½ TCM (trellis coded modulation) encoder是“means to apply data reliability enhancement”於說明書中的對應結構，但是說明書中只說其電路包含TCM encoder，沒解釋那是什麼樣的東西，而圖式中TCM encoder只是一個框框，請問一個框框的結構或其均等物是什麼？Buffalo的律師在此又犯了一個錯，他們應該以means plus function於說明書中缺乏對應結構來反訴專利無效。
『As noted by Buffalo’s own expert, Mr. Lanning, the rate ½ TCM encoder discussed in the ’069 patent has two sub-components, each of which performs a distinct function. The first is a convolutional encoder, which the parties agree performs the data reliability enhancement function of the means-plus-function limitation. The second subcomponent performs what the parties have referred to as signal mapping. Buffalo argues that the functions of the two subcomponents of the rate ½ TCM encoder are inseparable and therefore if its accused products do not perform both functions of the encoder as a whole, then the devices do not infringe the claims.』
不以缺乏對應結構來反訴專利無效，其結果就是打混仗，說明書中哪裡明示或暗示TCM encoder包含convolutional encoder？沒啊，就是一個框框而已。強加解釋的結果就是給法院對means-plus-function limitation錯誤解讀的機會。
『With respect to that function, Buffalo has not offered any reason to conclude that the convolutional encoder in its products is not identical or equivalent to the convolutional encoder that is part of the data reliability enhancement means described in the patent. Although the trial court stated that the rate ½ TCM encoder corresponds to the data reliability enhancement means, it is clear from the court’s discussion of the issue that it was comparing the separable convolutional encoding subcomponent of the disclosed rate ½ TCM encoder to the accused devices.』
Buffalo的律師再一次不長眼，法院要討論的是兩造的convolutional encoder結構是否一樣，他們偏要去扯什麼是rate ½ TCM encoder。但是法院的決定也很奇怪，既然決定rate ½ TCM encoder是data reliability enhancement means的對應結構，且data reliability enhancement means包含convolutional encoder及signal mapping subcomponent，而means plus function的保護範圍限定在對應結構及其均等物，要侵權應該就要包含兩者才對啊！
『We therefore sustain the trial court’s decision construing the term “blocks of data” to refer to data consisting of one or more bits.』
原來複數也能包含單數。
感想
盡信師不如無師。此師也包含律師。Buffalo的律師犯了很多錯，可說是罄竹難書。但是若Buffalo本身對專利有研究的話，就可以降低律師在法庭上犯錯的機會。
此外，CAFC對means plus function的侵權解釋立下了不太好的範例。
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