# Petition for Writ of Certiorari — Budde v. Harley-Davidson, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386007_0555%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 2005 - **Citation:** 544 U.S. 1000 ## Text (1) Supreme Court, U.S. FILED 041147 FEB 14 2005 IN THE Supreme Court of the United States No. WILLIAM A. BUDDE, PETITIONER Vv. HARLEY-DAVIDSON, INC. AND HARLEY-DAVIDSON MOTOR COMPANY PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS ; FOR THE FEDERAL CIRCUIT PETITION FOR WRIT OF CERTIORARI IRVING S. RAPPAPORT Counsel of Record 1500 Edgewood Drive Palo Alto, CA 94303 (650)321-7024 Attorney for Petitioner CURRY & TAYLOR @ WASH D.C. @ (202) 223-3160 ¢ USSCINFO.COM et OR tte i QUESTIONS PRESENTED a Does the constitutional right of “due process” include the right to require that the Court of Appeals for the Federal Circuit (CAFC) follow its own final appellate decision in a Markman claim construction in a later appeal from a Federal District Court summary judgment Ruling on patent infringement? 2. Does the constitutional right of “due process” include the right to preclude a Federal District Court from: 1) ignoring an earlier appellate decision on a Markman claim construction handed down by the CAFC, and 2) changing the claim construction established as the “law of the case” in the prior CAFC decision in a Ruling ona summary judgment motion? — il PARTIES TO THE PROCEEDING Pursuant to Rule 14.1(b), the following list represents all of the parties before the United States Court of Appeals for the Federal Circuit Circuit. William A. Budde, hereinafter “Budde” was the Plaintiff in the United States Court of Appeals for the Federal Circuit and is the Petitioner in this petition and is represented by: Irving S. Rappaport 1500 Edgewood Drive Palo Alto, CA 943803 (650)321-7024 Harley-Davidson, Inc. and Harley-Davidson Motor Company, hereinafter collectively “HD” were Defendants in the United States Court of Appeals for the Federal Circuit and are respondents in this petition are represented by: J. Donald Best Michael Best & Friedrich LLP One South Pinckney Street Suite 700 Madison, WI 53703 (608) 257-3501 TABLE OF CONTENTS Page ge 1 PARTIES TO THE PROCEEDING ..........c.cecccesesesescescscscsesecosesecesseee Hy EE NE EY AS eR a E ill gk EEA CSN OT ST Vv EE a eT ES DT «SE 1 SETS IS Oe PNA EAN Te 1 CONSTITUTIONAL PROVISION INVOLVED .....cececececececscsesescenee 1 SOOT ON TID COREE, ..scccosanssentesenscvanionssnneoussnnsienanenosesenmmuns 2 REASONS FOR GRANTING THE PETITION ........ccececececececscsceceses 6 I. THE FEDERAL CIRCUIT FAILED TO APPLY THE “LAW OF THE CASE” Ios aT UIT cececsincinaeanineinstiinictdanns tecseiieiieatiinaeieinaadiieiieiaaaads 6 II. THE OCTOBER 5, 2004 FEDERAL CIRCUIT DECISION VIOLATES BUDDE’S RIGHT TO SPR ATTEN tictetincniiincilcinsiianitaeaieitihdtia iacndecaeiicia ais 13 III. THE OCTOBER 5, 2004 FEDERAL CIRCUIT DECISION IGNORES THE DISTRICT COURT'S EQUIVALENTS FINDING .....0......cccccecceeee 14 REARS NS RS SEO RETO EMER OE EE SR LAA 19 APPENDIX CIRCUIT COURT ORDER (10/05/04) 2......cccccccccceccececesees la Se iv DISTRICT: COURT ORDER (05/24/01) ....----sssvsssseeeeessseereee lla DISTRICT COURT DECISION (06/30/03) ....---ssssssssssssseer 39a DISTRICT COURT DECISION (01/29/99) .....----sssseseeseeeeeer 8la ORDER DENYING REHEARING (11/15/04)....---seesevssseee 98a FINDINGS _ FROM ABA IPL NEWSLETTER, SUMMER 2003, VOL. 21, NO. 4 -sssssssesssseeeeesssennsnnnssssersenenee 100a EXCERPT OF WHITE EXPERT REPORT ...--+svsssssssseeeee 125a TRANSCRIPT OF HEARING OF JUNE 23, 2003 ON CROSS-MOTIONS FOR SUMMARY JUDGMENT ON INFRINGEMENT........cecososssssssesssseonensnsenenenenennsnnonsnnseseesere® 131la ee V TABLE OF AUTHORITIES Page CASES AGOSTINI V. FELTON, 512 U.S. 203 | RARE a ee 6 APEX ELECTRICAL MFG. Co. Vv. MAYTAG Co., 122 F.2D 182, 187, 50 U.S.P.Q. (BNA) 90, 94 (7™ CiR.), CERT. DENIED, 314 U.S. 687, 86 L. ED. 549, 62S. Cr. BOS CODE) cnsinpstiniiciiiticumabisicgled tee: spidiscanbaalbiaaticidatia: 17 ARIZONA V. CALIFORNIA, 460 U.S. 605, 618, N. 8 COO) asenceeinisioseintiit cana 7 BEMIS MFG. v. DoRNOCH MEDICAL SYSTEMS, INC., 21 FED. APPx, 930 (FED. CIR. 2001)......ccseccsssssesesoosess.... 14,15 DAVIS V. UNITED STATES, 417 U.S. 383, 342 (1974)........... 7 MAGRATH V. DRAPER CORP., 384 F.2p 672, 674, 155 U.S.P.Q. (BNA) 609, 610 (1°" CIR. 1967) ..inescscssssssssocecosssss.,. 17 MESSENGER V. ANDERSON, 225 U.S. 436, 444 (1912).............. 7 Mosa, B.V. v. DIAMOND AUTOMATION, INC., 325 F.3D 1306, 1812-14 (FED. CIR. i Naibicitignte es 11 NO-JOINT CONCRETE PIPE Co. V. HANSON, 344 F.2p 13, 15, 144 U.S.P.Q. (BNA) 519, 520 (9™ CiR.), CERT. DENIED, 382 U.S. 843, 15 L.ED. 2p 83, 86 S. CT. 79 TI sornsinsinstanlttcinniigagl ait tec Nie 17 RICHARDS V. CHASE ELEVATOR, 159 U.S. 477, 486, 40 L. ED. 225, 16S. Cr. 53 ( MIB) oancosssircesssscayinsenaitinanin sen 18 ROYAL TYPEWRITER Co. V. REMINGTON RAND, INC., 168 F.2p 691, 693, 77 U.S.P.Q. (BNA) 517, 519 (2D CIR.), CERT. DENIED, 335 U.S. 825, 98 L. Ep. OT, COSC: IID isiisisitin ada ee 15 vi SPECIALTY EQUIPMENT & MACH. CORP. V. ZELL MOTOR CAR Co., 193 F.2D 515, 518, 92 U.S.P.Q. (BNA) 84, 87 (4™ CIR. 1952) 17 WHITE V. DUNBAR, 119 U.S. 47, 51 (1886) 12 MISCELLANEOUS 28 U.S.C. § 1254 1 1 - OPINIONS BELOW The opinion of the Court of Appeals for the Federal Circuit (CAFC) dated October 5, 2004, not designated for publication, appears in the APPENDIX, pages la through 10a, to this petition. A Combined Petition for Panel Rehearing and Rehearing En Banc was filed on October 19, 2004. The Combined Petition was denied on November 15, 2004 and is found in the APPENDIX at pages 98a through 99a. STATEMENT OF JURISDICTION The jurisdiction of this Court is invoked under 28 U.S.C. § 1254, which states in part: “Cases in the courts of appeals may be reviewed by the Supreme Court by the following methods: (1) By writ of certiorari granted upon the petition of any party to any civil or criminal case, before or after rendition of judgment or decree; . CONSTITUTIONAL PROVISION INVOLVED Amendment V - Trial and Punishment, Compensation for Takings guarantees that no person shall be deprived of property without due process of law: 2 “No person shall be held to answer for a capital, or otherwise infamous crime, unless on a presentment or indictment of a Grand Jury, except in cases arising in the land or naval forces, or in the Militia, when in actual service in time of War or public danger; nor shall any person be subject for the same offense to be twice put in jeopardy of life or limb; nor shall be compelled in any criminal case to be a witness against himself, nor be deprived of life, liberty, or property, without due process of law; nor shall private property be taken for public use, without just compensation.” (Bolding added) STATEMENT OF THE CASE For William (Billy) Budde, his whole life has been about riding and customizing motorcycles, particularly Harley-Davidson (HD) motorcycles. Mr. Budde started riding at age 12, finished only 9" grade, was a champion rider by age 18, and until his recent divorce and loss of his motorcycle shop, invented and developed customized features for HD motorcycles. He and co-inventor, Floyd Knapp, made the patented invention in 1989 and U.S. patent 4,955,348 (348 patent) issued in 1990, covering electronic fuel injection for Harley-Davidson V-twin engine motorcycles. In the early ‘90s Mr. Budde was unsuccessful in his attempts to get the attention of motorcycle behemoth HD to license the ‘848 patent. They essentially refused to deal with him, figuring they could crush him. 3 In January 1995 HD commenced selling V-twin engine motorcycles which infringed the ‘348 patent. In June 1997, Mr. Budde commenced a suit for patent infringement against HD in the Federal District Court for the Northern District of California. Although the case was originally brought in Oakland, CA, the case was transferred to San Jose, CA onto the docket of District Court Judge Jeremy Fogel. © A Markman claim construction was issued by the District Court on January 29, 1999. (APPENDIX, pages 81a-97a.) That construction was appealed to the CAFC, and on appeal the Districts Court’s claim construction was amended by the CAFC on May 24, 2001. (APPENDIX, pages 11a-38a.) Reconsideration was requested by HD and denied, and the final . appellate decision consisting of a complete claim construction of the single claim in suit was sent back to the District Court for further proceedings. In 2003 Cross Motions for Summary Judgment relating to patent infringement were filed by the parties. The District Court ruled on those motions in July 2003 granting HD’s Motion and denying Mr. Budde’s Motion (APPENDIX, pages 39a-80a). The District Court, in ruling on the Summary Judgment Motions, ignored the prior claim construction in the CAFC 2001 decision and changed and re-construed the claim. Further, in ruling on infringement, the District Court took the accused infringing fuel injection systems into consideration in rewriting the claim, and as to one element, stated that there was ambiguity on the - question of equivalence, even though in the original claim construction affirmed in the first appeal, no ambiguity was found as to the element in question. 4 On appeal for the second time, without a trial on the merits, the CAFC on October 5, 2004 affirmed the District Court’s Ruling on summary judgment on non- infringement (APPENDIX, pages 1a-10a), finding that the District Court merely “clarified” its earlier claim construction, rather than having actually changed and reversed the claim construction. Mr. Budde filed a Combined Petition for Panel Rehearing and Rehearing En Bane on October 19, 2004. The CAFC denied Budde’s Combined Petition for Rehearing and for Rehearing En Banc on November 15, 2004 (APPENDIX, pp. 98a-99a). After almost eight years of litigation, without a trial on the merits, Mr. Budde’s financial problems are so severe due to the legal fees he has incurred in this case, he may have to file for bankruptcy. The record of Markman appeals in the last several years shows reversals by the CAFC almost half the time.! (See APPENDIX., pages 100a-124a) It ! Mark T. Banner, Chair of the Intellectual Property Section of the ABA states in the IPL Newsletter, Summer 2003, Vol. 21, No. 4: “Nothing I have written this past year generated as much mail as the article proposing a review of the Markman process.” Letters, e-mails, and comments came from members of the user community, district court judges, individual inventors, and colleagues in the outside bar. ... Federal Circuit judges, academics, and even clerks of court had debated and written about the reversal rate, some suggesting a rate as high as 47 percent ... the reversal rate on claim construction for the first six months of 2003 is 48 percent .. A thorough study of this situation cannot be done too soon. The Markman procedure is broken. The analytical framework is confusing and the results are confounding. The lack of predictability is not serving the patent system well. ...Today, the uncertainty inherent in the manner in which de novo review of 5 seems that the time is ripe for the Supreme Court to lend some clarity to what the standards are for Markman claim constructions. This Court needs to make clear when a claim construction becomes final in a case, so that the parties do not have to struggle with a case in which the District Court and CAFC turn claim construction into a continually moving ping-pong ball back and forth between them, without the parties having an opportunity to go to trial. On February 8, 2005 the en Banc Federal Circuit heard oral argument to consider the proper way to interpret patent claims in light of the specifications to correctly determine their limitations. Phillips v. AWH Corp., Fed. Cir., No. 03- 1269. There is disarray as to what constitutes proper Markman methodology. The Budde case provides the Supreme Court a unique opportunity to provide more detailed guidelines on the requirements, standards and law relating to Markman claim constructions provided by District Courts and the appeal of such constructions to the CAFC. In this case, Mr. Budde was denied due process because of the continual changing of the Markman claim construction by both the District Court and the CAFC, even though it had been finalized in the first decision of the CAFC in 2001. A District Court claim construction Markman rulings takes place has created a widely held belief in the business and user community that the outcome of patent cases cannot be determined until after the Federal Circuit has ruled on claim construction. The Federal Circuit, the argument goes has created a morass of confused and contradictory claim construction canons. ... We need to find a way to make the Markman process more predictable. ... need to he law of clai nstruction.” (Emphasis added) Exhibit A is his findings. 6 followed by a final construction by the CAFC should fix claim construction for the remainder of the case, with no prerogative in the District Court or the CAFC to change the “law of the case” claim construction. The claim construction handed down by the CAFC should be final and not subject to change by the District Court or the CAFC. Claim construction is an issue which the parties should neither be allowed multiple bites of the apple nor subjected to multiple constructions. One claim construction by the District Court, finalized on appeal by the CAFC, should be sufficient. Instead of our judicial institutions giving him a fighting chance, Mr. Budde finds himself harpooned by two contradictory appellate decisions by the CAFC on claim construction of his single claim at issue. Surely this result is not what was contemplated by Markman and is more than any party can stand or to which he/she should be subjected. Accordingly Mr. Budde has filed this Writ of Certiorari. REASONS FOR GRANTING THE PETITION I. THE FEDERAL CIRCUIT FAILED TO APPLY THE “LAW OF THE CASE” DOCTRINE Budde asserts the facts of this case and his fundamental constitutional guarantees should have required both the District Court and the CAFC to apply the “law of the case” on claim construction as decided in the first decision by the CAFC in 2001. This Court in Agostini v. Felton, 512 U.S. 203 (1997), at 236, discussed the requirements of the “law of the case” doctrine stating: 7 “Under this doctrine, a court should not reopen issues decided in earlier stages of the same litigation. Messenger v. Anderson, 225 U.S. 486, 444 (1912). The doctrine does not apply if the court is ‘convinced that [its prior decision] is clearly erroneous and would work a manifest injustice.’ Arizona sv. California, 460 U.S. 605, 618, n. 8 (1983). In light of our conclusion that Aguilar would be decided differently under our current Establishment Clause law, we think adherence to that decision would undoubtedly work a ‘manifest injustice,’ such that the law of the case doctrine does not apply. Accord, Davis v. United States, 417 U.S. 333, 342 (1974) (Court of Appeals erred in adhering to law of the case doctrine despite intervening Supreme Court precedent).” (Emphasis added) Neither the District Court nor the CAFC discussed “manifest injustice”. Budde was not advised that the District Court considered that its prior Markman decision was clearly erroneous and, therefore, was working a manifest injustice. HD did not advance such an argument. The District Court’s original claim construction order in 1999 ruled: “The third disputed term is a ‘pair of fuel injectors mounted in a fuel injector and throttle body secured to [the] intake manifold.’ Budde argues that this 8 language is clear on its face and that it requires that two fuel injectors be mounted in a body referred to as a ‘fuel injector and throttle body. Harley- Davidson argues that this claim element requires a throttle body injection system, as opposed to a port injection system. However, neither the claims nor the specification include reference to ‘throttle body injection’ or ‘port injection.’ Therefore, a proper interpretation of this term need not require any particular type of fuel injection system. Rather, the language of this claim simply requires that two fuel injectors be mounted in a fuel injector and throttle body. The language of this claim element further requires that the fuel injector and throttle body be secured to the intake manifold.” (APPENDIX, pages 87a and 88a, January 29, 1999 District Court Claim Construction Order.) (Emphasis added). Neither HD nor Budde appealed the District Court’s claim construction on the _ location of the fuel injectors, and the CAFC in the first appeal made no change to that construction. In fact, the CAFC said in its 2001 decision: | “The parties do not dispute the district court’s construction of the following claim limitations: ... (3) pair of fuel injectors mounted in a fuel injector and throttle body ...” 250 F.3d 9 1369, 13876 (APPENDIX, page 22a) (Emphasis added). \ HD was therefore judicially estopped from even raising this argument after it had been fully settled by the 2001 CAFC appellate decision. But on remand, HD renewed its previous arguments before the District Court, and the District Court in its 2003 Ruling improperly found that the “parties disagree as to what type of body qualifies as a ‘fuel injector and throttle body.” (APPENDIX, page 55a.) The District Court then essentially reversed its own earlier 1999 claim construction, ignoring the 2001 CAFC appellate decision, and concluded: “The limitation is ambiguous and neither of the parties’ positions is entirely satisfactory.” (APPENDIX, page 56a.) (Emphasis added). The District Court found the language perfectly clear in 1999, but in 2003, four years later, found the language ambiguous in light of the same rejected arguments presented by HD that its fuel injectors are located slightly closer to the cylinders than to the- throttle butterfly valve. As originally pointed out and construed by the District Court, nothing in the claim language or specification referred to any type of fuel injection system, and under the doctrines of law of the case and judicial estoppel, the District Court committed reversible error in finding “ambiguous” that which it previously found unambiguous. Nor did the District Court conclude that a “manifest injustice” compelled a departure from the settled claim construction. Clearly, both HD’s Original and New EFI Systems satisfy this 10 claim element based on the original 1999 claim construction by the District Court and affirmed by the CAFC in 2001. See APPENDIX, pages 125a and 126a, of White Expert Report which show images of both Budde’s fuel injectors mounted in the fuel injector and throttle body integral with the intake manifold (page 125a) and the corresponding views of the HD fuel injectors and their throttle body and intake manifold. The only difference between HD’s Original EFI System and New EFI System is that in the New HD EFI system, the throttle body and intake manifold are two pieces secured together, as opposed to the one piece construction of the Original EFI system (page 126a). The District Court’s 1999 Ruling, upheld by the CAFC on the first appeal in 2001, found that the type of fuel injection system was not in issue, as it was not even mentioned in the ‘348 patent. The District Court’s so-called clarification is really a misnomer for what has really occurred here, which is a complete reversal and reconstruction of the District Court’s 1999 claim construction Ruling, which Ruling was upheld by the CAFC in 2001 and became the law of this case. Based on the 2001 CAFC appellate decision, the type of fuel injection system was not even in issue. For the District Court to completely reverse itself in the summary judgment Rulings on infringement in 2003 by finding that the location of the fuel injectors has become a critical element in claim 1, violates the “law of this case” as enunciated by the CAFC in its own 2001 _ appellate decision. Surely the affirmation of this 180- degree reversal of its own 2001 decision in the CAFC’s 2004 appellate decision is a miscarriage of justice. In li essence, Budde has been hit by a “rolling” Markman claim construction, whereby the District Court and CAFC change claim construction, denying the parties their day in court on the settled 2001 CAFC claim construction. Surely, this is “manifest injustice”! In addition, the District Court reached its 2003 Ruling on HD’s motion for summary judgment of non- infringement by reading the language in claim 1 regarding the pair of fuel injectors in light of the accused HD devices. This practice is clearly not in concert with long-standing case law that in construing claims, the accused devices are not to be considered. The District Court violated the fundamental principle of claim construction that courts may not interpret claims with an eye to the infringing device. See, Moba, B.V.v. Diamond Automation, Inc., 325 F.3d 1306, 1312- 14 (Fed. Cir. 2003). This departure by the District Court tainted that court’s revisiting of claim construction and speaks legions why the settled claim construction following the 2001 CAFC decision should have been treated as the “law of the case” as Judge Fogel himself had acknowledged during the June 23, 2003 oral argument on the parties’ Cross-Motions.2 (See APPENDIX, page 136a.) * THE COURT: All right. Say again. I lost you there. The claim construction was - - as I —— = no gE Oo oe pn was ast the subject of the appeal with the iad exception of the Court’s conclusion that there was a lack of structure with respect to the vacuum sensor and that - - and that aspect of the Court’s construction order was the subject of reversal. 12 The District Court and CAFC both failed to heed the admonition given to parties in patent suits in the case handed down by this Court in White v. Dunbar, 119 U.S. 47, 51 (1886): “Some persons seem to suppose that a claim in a patent is like a nose of wax which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express.” (Emphasis added). The District Court and the CAFC failed-to apply the law of the case doctrine in their 2003 and 2004 decisions, respectively, and treated claim 1 of the ‘348 patent as a “nose of wax” to require that it include a specific location of the pair of fuel injectors. Nowhere is such limitation expressed or shown in the specification of the’348 patent. In essence, the District Court and the CAFC have rewritten claim 1 of the 848 patent by incorporating inconsequential differences found in the HD accused devices as limitations into the claim. For the courts themselves to engage in this sleight of hand is unconscionable and should not be allowed to stand. Therefore, for Mr. Budde to receive “due process”, the CAFC’s new, decision of October 5, 2004 should be reversed and the case remanded to the District Court for a trial on the merits based on the 2001 CAFC claim construction decision. That’s where we are. So I don’t know that anything needs to be modified any further. (Emphasis added.) 13 II. THE OCTOBER 5, 2004 FEDERAL CIRCUIT DECISION VIOLATES BUDDE’S RIGHT TO DUE PROCESS For the CAFC in its October 5, 2004 decision to now compound the error of the District Court in its Ruling on the summary judgment motions in J uly 2003 not only violates the “law of the case” doctrine, but represents a denial of due process to Mr. Budde by the CAFC. The pair of fuel injectors was no longer an issue regarding claim interpretation as of the CAFC’s May 24, 2001 decision. (APPENDIX, page 22a.) For the CAFC to say in October 2004 that: 3 “On remand, the District Court clarified its claim construction, stating that this limitation required the fuel injectors be mounted in the throttle body. Budde III, slip op. at 12-13”. (APPENDIX, page 7a.) (Emphasis added) totally overlooks the reality of what occurred. The District Court did not clarify its claim construction in its 2003 Ruling but rather, clearly and unabashedly, violated this Court’s “nose of wax” admonition by changing and reversing its earlier 1999 claim construction on this element. In doing so, the District Court not only ignored the 2001 mandate of the CAFC that the pair of fuel injectors was not in dispute, but chose to ignore its own 1999 Ruling, as affirmed by the 2001 CAFC appellate decision, which established the law of the case with respect to the fuel injectors. The CAFC compounded the District Court’s 2003 Ruling error by supporting this “nose of wax” reconstruction of the claim in its October 2004 appellate decision. Not 14 only did the CAFC violate the clear “law of the case” doctrine which it set in its own earlier 2001 decision in this case, but in doing so denied Budde due process. Budde should have been provided an opportunity to submit evidence on the question of literal infringement and, especially, infringement under the doctrine of equivalents in view of the District Court’s “clarification,” and the failure to have afforded him that opportunity is a violation of Budde’s due process rights. See Bemis Mfg. v. Dornoch Medical Systems, Inc., 21 Fed. Appx. 930 (Fed. Cir. 2001). Even if the law were to allow the law of the case doctrine to be ignored, at a minimum, Budde should be allowed to argue the changed claim construction based on further evidence and expert testimony, which he has never had the opportunity to do before the District Court or CAFC. Plaintiff has unquestionably been denied due process. This Court should reverse the October 5, 2004 CAFC decision and remand this case for a trial on the merits, if Mr. Budde is to receive any justice in this matter, much less his day in court, which he has yet to receive after over seven and one half years since this case was filed. Ill. THE OCTOBER 5, 2004 FEDERAL CIRCUIT _ COURT’S EQUIVALENTS FINDING The CAFC’s October 5, 2004 decision states: “The district court, in the face of ‘conflicting expert opinions’ presented by 15 Budde and Harley-Davidson, found a ‘triable issue of material fact’ concerning whether the difference in the location of the fuel injectors was insubstantial, and thus equivalent, under the doctrine of equivalents. Id. The district court found that the possible conclusion that the placement of the fuel injectors in the Harley-Davidson systems was equivalent to the claimed placement would not vitiate the limitation in question because ‘the fuel injectors clearly are present in HD’s (Harley-Davidson’s] EFI system.” (APPENDIX, page 9a.) Expanding one element into two, or combining two elements into one, does not preclude application of the doctrine of equivalents. The solidity of this precedent was referred to by Judge Learned Hand in j j 168 F.2d 691, 693, 77 U.S.P.Q. (BNA) 517, 519 (2d Cir.), cert. denied, 335 U.S. 825, 93 L. Ed. 379, 69 S. Ct. 50 (1948): | “Although we are chary [sic] of all objective absolutes in the field of patents, reliance upon which has done more to conceal and confuse the subject than anything else, courts have with curious _ unanimity held that it does not avoid infringement to combine into one member that which the patent discloses as two, if the single member performs the duties of both in the same way. The decisions are so numerous that we confine ourselves to 16 citing those which over the last thirty years we have passed _ ourselves.” [Citations omitted]. The simple fact is that in the Budde ‘348 patent and in both the Old and New HD EFI systems there is an induction module. The induction module in the ‘348 patent consists of a pair of fuel injectors, throttle body and intake manifold. The Original HD EFI system also consists of an-induction module made up of a throttle body and intake manifold with the fuel injectors mounted therein. Also, the New HD EFI system consists of an induction module made up of a two-piece unit having a throttle body and an intake manifold bolted to the throttle body with fuel injectors mounted therein. The “fuel injector and throttle body” is part of a unitary assembly known as the induction module, which in the ‘348 patent and the Original and New HD EFI systems also includes the intake manifold, as stated in the ‘348 patent at col. 4, lines 6 — 18: “Fuel injectors 11 are mounted in a fuel injector throttle body 13 for delivering fuel from the injectors to the engine cylinders through the intake manifold 15. Since V-twin engines only have two cylinders, only two separate injectors are required. These fuel injectors are standard units and for the _ present invention can be the particular injectors made by Bosch which are utilized in Volkswagen flat four opposed cylinder air cooled engines. The throttle body 13 is secured to the intake manifold 15 which in turn is secured to the cylinder heads 17 proximate the intake valves of the engine.” | There is no requirement in the ‘348 patent as to the exact location of the pair of fuel injectors as found in the 1999 District Court Ruling on claim construction and upheld on appeal in the 2001 decision on claim construction by the CAFC. See, also, e.g., Apex Electrical Mfg. Co. v. Maytag Co., 122 F.2d 182,187, 50 U.S.P.Q. (BNA) 90, 94 (7 Cir.), cert. denied, 314 U.S. 687, 86 L. Ed. 549, 62 S. ‘Ct. 297 (1941) (“Patents are not limited to the structure described and shown, but the invention may be embodied in various forms. ... Infringement is not avoided by combining two elements in a claim into one part”); Specialty Equipment & Mach. Corp. v. Zell Motor Car Co., 193 F.2d 515, 518, 92 U.S.P.Q. (BNA) 84, 87 (4" Cir. 1952) (“(OJne using the substance and essentials of a patented combination does not avoid infringement by varying nonessential details. Neither the joinder of different elements of a patented combination into two or more doing together substantially what was done by the single element will evade a charge of infringement”); No-Joint Concrete Pipe Co. v. Hanson, 344 F.2d 13, 15, 144 U.S.P.Q. (BNA) 519, 520 (9"" Cir.), cert. denied, 382 U.S. 848, 15 L.Ed. 2d 83, 86 S. Ct. 79 (1965) (“A substantial body of law recognizes that infringement is not avoided by making into one part that which has been shown as two”); Magrath v. Draper Corp., 384 F.2d 672, 674, 155 U.S.P.Q. (BNA) 609, 610 (1* Cir. 1967) (“If unification or combination be regarded as omitting something, it is not enough to omit an element when the omission ‘is attended by a corresponding omission of the function 18 _ performed by that element ... if the elements retained performed the same function as before”) (quoting Richards v. Chase Elevator, 159 U.S. 477, 486, 40 L. Ed. 225, 16S. Ct. 53 (1895)). Essentially, the CAFC’s analysis of “fuel injector and throttle body” (APPENDIX, pages 9a and 10a) of its October 5, 2004 decision eliminates the language “fuel injector and,” so that the fuel injectors are mounted in a “throttle body”, thereby improperly rewriting the claim. This impermissible rewriting ignores the facts establishing equivalents under settled _ precedent that neither the joinder of different elements of a patented combination into one, nor separation of one integral part into two or more, doing together substantially what was done by the single element, will evade a charge of infringement. Budde’s expert testified that there was absolutely no difference between locating the fuel injectors at one end of the induction module or the other. Why has the CAFC overturned the District Court’s finding that under the doctrine of equivalents there is a triable issue of fact on the pair of fuel injectors? In fact, the District Court’s initial 1999 claim construction with respect to the pair of fuel injectors is the correct one, i.e., there is nothing in the ‘348 patent requiring any particular kind of fuel injection system, the prosecution history does not require location of the fuel injectors in a particular location, and there is no such limitation in the claim to restrict the range of equivalents. See page 8 above. At a minimum, Budde is entitled to have this issue on equivalents heard before a jury, where all the evidence and experts can be heard. That is what the law 19 requires, where there is a dispute on a material issue of fact under the doctrine of equivalents, as was found by the District Court when considering the parties’ Cross- Motions. This case has been pending since 1997 and Mr. Budde has not yet had the benefit of having his day in Court, but rather, has been buffeted back and forth between the District Court and the CAFC for seven years on a claim construction that was clearly settled by the District Court in its 1999 claim construction Ruling and affirmed by the CAFC’s 2001 complete and final decision on claim construction. At a minimum, this Court should reverse the erroneous CAFC decision of October 5, 2004 and remand this case for a full trial on the merits of infringement, validity, and damages, based on the original and full claim construction contained in the CAFC decision of 2001. Mr. Budde is entitled to nothing less, if he is to receive due process, which the Constitution guarantees. If the District Court and CAFC had not been so anxious to summarily dispose of this case, Mr. Budde could have had a full trial (requiring no more than a week) several years ago. CONCLUSION The issue raised here is one of fundamental rights of the parties to have the claim construction fixed, not treated by the courts themselves as a “nose of wax”, and not be subjected to a “rolling” Markman claim construction, particularly when it has already been appealed once and a final claim construction ee yo Per eee re. 20 decision has been handed down by the CAFC as occurred in this case back in 2001. It is fundamentally unfair and contrary to any notion of justice to be required to face years of expensive litigation around a moving target as to the simple construction of a single element of a single claim in suit, without ever having the opportunity to have a full and open trial on all the evidence with all the witnesses. Surely, this is neither what our system of justice nor the Markman decision contemplated for litigants in a patent suit. This is not justice dispensed, or even long delayed, but simply justice and due process completely denied! In light of the foregoing, it is respectfully requested that the United States Supreme Court give William Budde his day in court by issuing a writ of certiorari to the Court of Appeals for the Federal Circuit and consider Petitioner’s argument that his right to due process has been denied by the courts’ below. Respectfully submitted, Irving S. Rappaport ' Counsel of Record 1500 Edgewood Drive Palo Alto, CA 94303 (650)321-7024 Attorney for Petitioner la (Any footnotes trail end of each document) 03-1610, -1641 UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT WILLIAM A. BUDDE, Plaintiff-Appellant, V. HARLEY-DAVIDSON, INC. and HARLEY-DAVIDSON MOTOR COMPANY, Defendants-Cross Appellants. October 5, 2004, Decided NOTICE: THIS DECISION WAS ISSUED AS UNPUBLISHED OR NONPRECEDENTIAL AND MAY NOT BE CITED AS PRECEDENT. PLEASE REFER TO THE RULES OF THE FEDERAL CIRCUIT COURT OF APPEALS FOR RULES GOVERNING CITATION TO UNPUBLISHED OR NONPRECEDENTIAL OPINIONS OR ORDERS. COUNSEL: J. Donald Best, Michael Best, Madison, WI, Russell L. Johnson, Skjerven, Morrill, San J ose, CA, and John C. Scheller, Michael Best, Madison, WI, for Defendants-Cross Appellants HARLEY- DAVIDSON MOTOR COMPANY and HARLEY- DAVIDSON, INC. SISTINE 2a Jack Russo and William C. Milks, III, Russo & Hale, Palo Alto, CA, for Plaintiff-Appellant W'LLIAM A. BUDDE. JUDGES: Before RADER, BRYSON, and LINN, Circuit Judges. OPINION BY: LINN OPINION: LINN, Circuit Judge. William A. Budde (“Budde”) appeals from a final decision of the U.S. District Court for the Northern District of California granting a motion for summary judgment of non-infringement of U.S. Patent No. 4,955,348 (“the ‘848 patent”) filed by Harley-Davidson, Inc. and Harley-Davidson Motor Co. (collectively “Harley-Davidson”). Budde v. Harley-Davidson, Inc., 2003 U.S. Dist. LEXIS 25990, No. C-98-20447-JF (N.D. Cal. July 29, 2003) (“Budde III”). Harley-Davidson cross-appeals the denial of its argument in support of summary judgment that the “fuel injector and throttle body” limitation was not met under the doctrine of equivalents. Reversal of the district court’s ruling on that issue, however, would not alter the judgment in Harley-Davidson’s favor, so that issue is not properly presented as a cross-appeal. Bailey v. Dart Container Corp. of Mich., 292 F.3d 1360, 1362 (Fed. Cir. 2002). A prevailing party has no right to cross-appeal. Lindheimer v. Ill. Bell Tel. Co., 292 U.S. 151, 176, 78 L. Ed. 1182, 54 S. Ct. 658 (1934). Accordingly, we dismiss the cross-appeal and treat the challenge as the assertion of an alternative ground for affirming the summary judgment of non-infringement. 3a We affirm the district court’s judgment that Harley- Davidson did not infringe the ‘348 patent, literally or under the doctrine of equivalents, for the reasons set. forth below. I. BACKGROUND The ‘348 patent issued in 1990 and is directed to an electronic fuel injection (“EFI”) system for V-twin motorcycle engines. Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1371 (Fed. Cir. 2001) (“Budde II”). Claim 1 of the ‘348 patent is representative, with the disputed terms highlighted: 1. A fuel injection conversion system for V-twin motorcycle engines having two cylinders, an ignition system, and a fuel source, comprising an intake manifold providing separate ducts for delivering a fuel and air mixture separately to each cylinder, a pair of fuel injectors mounted in a fuel injector and throttle body secured to said intake manifold, a fuel distributor for delivering an_ individual pressurized fuel flow to each of said injectors, a fuel pump for delivering a pressurized fuel flow from the fuel source to the fuel distributor, a fuel flow pressure regulator for controlling the pressure of the fuel flow delivered by the distributor to said injectors, an electronic sensing means for determining when the ignition system of the engine delivers an electronic PRES ATA ELE BE IAF DS. 4a pulse to fire each spark plug of the cylinders and producing an electronic signal in response thereto, a throttle potentiometer for sensing the position of the throttle and producing an electronic signal in response thereto, a status sensing means for measuring a combination of air intake and engine temperature, and vacuum in the intake manifold and producing electronic signals therefrom, and a control unit which discriminates which spark plug of the engine is firing a fuel-air mixture charged cylinder of the engine from the asymmetrical spark plug firing order related electronic signal from said electronic sensing means, said control unit electronically integrating the electronic signals from the throttle potentiometer, the electronic sensing means, and the status sensing means to generate electronic signals which control the fuel injectors and operate them at the proper time and for the calculated duration to deliver the proper amount of fuel to said cylinders for the engine operating conditions by timed injection. ‘348 patent, col. 12, ll. 26-65 (emphases added). Budde is a co-inventor and owner of the ‘348 patent. In 1997, Budde sued Harley-Davidson for infringement of the ‘348 patent, alleging that two of Harley-Davidson’s electronic fuel injection systems-the “old” and “new” EFI systems-infringed its patent. Budde III, 2003 U.S. Dist. LEXIS 25990, *7; see also Budde v. Harley- Davidson, Inc., No. C-98-20447-JF, slip op. at 2 (N.D. Cal. Jan. 29, 1999) (“Budde I”); Budde II, 250 F.3d at 5a 1374. The district court held a Markman hearing, then construed seven of the disputed claim limitations. Budde II, 250 F.3d at 1374-75. Because Budde concluded he could not establish infringement under the district court’s claim constructions, the district court, at Budde’s request, entered summary judgment of non- infringement. Id. at 1375. Budde then appealed to this court, challenging the constructions of two claim limitations. Id. at 1376. We construed the two terms, vacated the summary judgment, and remanded the case for further proceedings. Id. at 1382. On remand, Budde alleged that Harley-Davidson infringed the ‘348 patent, while Harley-Davidson responded that it did not infringe and that the ‘348 patent was invalid and unenforceable. Budde III, 2003 U.S. Dist. LEXIS 25990, *7. On cross-motions for summary judgment, the district court granted Harley- Davidson’s motion for summary judgment that Harley- Davidson did not infringe the ‘348 patent, either literally or under the doctrine of equivalents. 2003 U.S. Dist. LEXIS 25990, *9. In that judgment, the district court concluded that several limitations of claim 1 were not met by Harley-Davidson’s systems, literally or under the doctrine of equivalents, but found that a “triable issue of material fact” remained as to whether Harley-Davidson’s systems met the “pair of fuel injectors” limitation of claim 1 under the doctrine of equivalents. 2003 U.S. Dist. LEXIS 25990, *11. Budde again appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). 6a II. DISCUSSION A. Standard of Review “We review a district court’s grant of summary judgment de novo.” ACTYV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1087 (Fed. Cir. 2003). When evaluating a motion for summary judgment, we view the record evidence through the same evidentiary standard that would prevail at trial. Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001). Summary: judgment is only appropriate if there are no genuine issues of material fact and the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1116 (Fed. Cir. 1985) (en banc). On summary judgment, claim construction is a matter of law that we review de novo. Comparison of the claims to the accused device requires a factual determination that every claim limitation or its equivalent is found in the accused device. Because infringement is a question of fact, infringement is properly decided at summary judgment only when no reasonable jury could find that every limitation recited in the properly construed claim either is or is not found in the accused device. Int’l Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 13869 (Fed. Cir. 2004) (internal citations and quotation marks omitted). B. Analysis Budde argues that the district court erred in granting summary judgment that Harley-Davidson did not meet Ta the “conversion system,” “intake manifold,” “pair of fuel injectors,” “electronic sensing means,” “status sensing means,” and “control unit” limitations in claim 1 of the ‘348 patent. To prevail on appeal, Budde must show error as to each claim limitation. Because we conclude that the district court correctly concluded that neither of Harley-Davidson’s systems contained the “pair of fuel injectors” limitation of claim 1 of the ‘348 patent, and because we hold as a matter of law that no reasonable jury could find infringement under the doctrine of equivalents of any Harley-Davidson system without reading the “pair of fuel injectors” limitation out of the claim, we affirm. We need not consider the arguments pertaining to the remaining disputed claim limitations. Budde argues that the district court erred in construing the “pair of fuel injectors mounted in a fuel injector and throttle body” limitation in claim 1 of the ‘348 patent. This claim limitation states in pertinent part: “a pair of fuel injectors mounted in a fuel injector and throttle body secured to said intake manifold.” ‘348 patent, col. 12, ll. 33-34. The district court initially construed this - term to require “that two fuel injectors be mounted in a fuel injector and throttle body.” Budde I, slip op. at 8. The parties did not appeal the construction of this claim term, and this court did not decide issues related to this claim construction in the prior Budde II appeal. On remand, the district court clarified its claim construction, stating that this limitation required that the fuel injectors be mounted in the throttle body. Budde III, 2003 U.S. Dist. LEXIS 25990, *24. We discern no error in the district court’s claim construction. The express language of the claim i Pot ELAR RAE eS Rohe ey Pe = z we Boar essemieninss DP Mi TAE GK ae as ON hg Fitba Lr 4 wee 8a distinguishes between a “fuel injector and throttle body” and an “intake manifold” and recites that the fuel injectors are mounted to the “fuel injector and throttle body,” which is secured to the “intake manifold.” See ‘348 patent, col. 12, ll. 33-34. Under the ordinary and customary meaning of the words of the claim, the pair of fuel injectors must be mounted in the “fuel injector and throttle body” and not the “intake manifold.” Thus, the district court was correct in concluding that mounting the pair of fuel injectors in the intake manifold does not literally infringe the claim. The district court found undisputed evidence that in Harley-Davidson’s “old” EFI system, the parts corresponding to the throttle body anc intake manifold claim limitations were combined int» an integral “induction module.” Budde III, 2003 U.s. Dist. LEXIS 25990, *26. Because the pair of fuel injectors are mounted in the intake manifold portion of the induction module rather than the throttle body portion, the “old” EFI system did not literally meet the claim limitation. Id. Concerning Harley-Davidson’s “new” EFI system, the district court found it was undisputed that the throttle body and intake manifold are separate parts bolted together and that the fuel injectors are mounted in the intake manifold. Id. We agree and, thus, concur in the district court’s conclusion that no reasonable juror could find that either of Harley-Davidson’s “old” or “new” EFI systems literally met the “pair of fuel injectors” limitation of claim 1 of the “348 patent. Claim 1 is therefore not literally infringed by these systems. Harley-Davidson challenges the district court’s denial of Harley-Davidson’s motion for summary judgment that its systems did not meet the “pair of fuel injectors” . 9a limitation under the doctrine of equivalents. The district court, in the face of “conflicting expert opinions” presented by Budde and Harley-Davidson, found a “triable issue of material fact” concerning whether the difference in the location of the fuel injectors was insubstantial, and thus equivalent, under the doctrine of equivalents. Id. The district court found that the possible conclusion that the placement of the fuel injectors in the Harley-Davidson systems was equivalent to the claimed placement would not vitiate the limitation in question because “the fuel injectors clearly are present in HD’s {Harley-Davidson’s] EFI system.” Id. 2 The district court correctly notes that Warner- Jenkinson cautioned that “it is important to ensure that the application of the doctrine [of equivalents], even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 USS. 17, 29, 187 L. Ed. 2d 146, 117 S. Ct. 1040 (1997); see also Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d 394, 398 (Fed. Cir. 1994) (“The doctrine of equivalents is not a license to ignore claim limitations.”). As previously discussed, the claim limitation in question explicitly distinguishes between the “fuel injector and throttle body” and the “intake manifold” and recites that the fuel injectors are “mounted in [the] fuel injector and throttle body.” ‘348 patent, col. 12, ll. 33-34 (claim 1) (emphasis added). To conclude that the placement of the fuel injectors on the intake manifold (or on the intake manifold side of the induction module) is equivalent to the claimed mounting of the injectors in the “fuel injector and throttle body” ignores the principal relationship between the three components 10a recited in the limitation-the “fuel injectors,” the “fuel injector and throttle body,” and the “intake manifold”- and makes the relational claim language superfluous. Thus, a finding of equivalence under the doctrine of equivalents would read “mounted in a fuel injector and throttle body” out of the claim and vitiate the claim limitation. In light of this legal error, and given the undisputed evidence concerning the combination of Harley-Davidson’s accused systems, we hold no reasonable juror could find that Harley-Davidson’s “new” and “old” EFI systems infringe claim 1 of the ‘348 patent literally or under the doctrine of equivalents. III.CONCLUSION __ _ For the foregoing reasons, and on the alternative ground asserted by Harley-Davidson as to the “pair of fuel injectors” limitation of claim 1, we affirm the district court’s judgment that the Harley-Davidson systems at issue did not infringe the 48 patent, either literally or under the doctrine of equivalents. IV. COSTS No costs. lla 99-1533, 99-1534 UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT WILLIAM A. BUDDE, Plaintiff- Appellant, V. HARLEY-DAVIDSON, INC. and HARLEY-DAVIDSON MOTOR COMPAN : # Defendants-Cross Appellants. May 24, 2001, Decided COUNSEL: Robert M. Skolnik, of West Long Branch, New Jersey, argued for plaintiff-appellant. ~ Michael E. Husmann, Michael Best & Friedrich LLP, of Milwaukee, Wisconsin, argued for defendants-cross appellants. With him on the brief was J. Donald Best. JUDGES: Before BRYSON, LIN N, and DYK, Circuit Judges. OPINION BY: LINN OPINION: LINN, Circuit Judge. ‘ William A. Budde appeals the district court’s judgment of non-infringement. Budde v. Harley-Davidson, Inc., C-98-20447-JF (EAI) (N.D. Cal. June 30, 1999). This judgment was entered at Budde’s request, following the district court’s claim construction order, which 12a Budde now challenges. Budde v. Harley-Davidson, Inc., C-98-20447-JF (EAI) (N.D. Cal. Jan. 29, 1999) (“Order Construing Claims”). We hold that the district court erred in concluding that the claim limitation “electronic sensing means for determining when the ignition system of the engine delivers an electronic pulse to fire each spark plug” requires sensing the electronic pulse that fires the spark plugs and that the specification contained no structure corresponding to the function of the “electronic sensing means.” We also address the conditional cross-appeal of Harley-Davidson, Inc. and Harley-Davidson Motor Co. (collectively “Harley- Davidson”), and hold that the district court did not err in its construction of the claim limitation “status sensing means.” We vacate the judgment of non- infringement and remand the case for further proceedings consistent with this opinion. BACKGROUND I. A. Overview U.S. Patent No. 4,955,348 (the “ ‘348 patent”) covers fuel injection conversion systems for reciprocating engines generally and V-twin motorcycle engines in particular. The invention is described as being particularly well-suited for use with V-twin engines customarily used on Harley-Davidson motorcycles. 348 patent, col. 1, ll. 7-11. Such engines have an ignition system, a fuel delivery system, and two cylinders. Each cylinder includes a cylinder head, a piston, and a spark plug. The ‘348 13a patent discloses that Harley-Davidson motorcycle engines typically use one of three types of ignition systems: (1) a breaker ignition system; (2) an electronic ignition system; or (3) a magneto ignition system. Id. at col. 4, ll. 66-67. In each type of ignition system, a device or sensor is used to sense crankshaft or camshaft position. This sensor generates a series of low voltage timing pulses at shaft positions corresponding to the top of the power stroke position of each of the two cylinders. These low voltage pulses feed an ignition coil that, in turn, supplies high voltage pulses to the spark plugs. The patented system is compatible with all of these ignition systems to provide a fuel injection conversion system that will retrofit any Harley- Davidson V-twin motorcycle engine. Id. at col. 2, ll. 49- ys Fuel injection has long been recognized as an efficient way to provide a fuel-air mixture to reciprocating engines. Fuel injection has also been known to be difficult to implement, because it requires a sophisticated sensing system to properly time the delivery of a fuel charge to each successive cylinder in the firing sequence. Budde asserts that at the time he and his co-inventor, Floyd Knapp, filed the patent application that issued as the ‘348 patent, there were substantial compatibility problems in fitting a fuel injection system - either in the initial manufacturing process or in an after-market modification - onto an engine that was originally designed for carburetion. A critical compatibility problem was deriving timing information. Id. at col. 3, ll. 33-36. Timing information is crucial to proper operation of a fuel injection system, because it assures that the l4a injection system feeds fuel only to the cylinder that is to be fired. Most fuel injection systems acquire timing information from the engine’s spark distributor. However, in a carbureted Harley-Davidson V-twin engine, the firing system does not use a spark distributor. In a Harley-Davidson engine, when one cylinder is on the power stroke, the other is on the exhaust stroke, and both spark plugs may be fired simultaneously with no adverse consequences. This eliminates the need for a distributor or any like electromechanical device for “steering” spark pulses. Id. at col. 3, ll. 33-39. Thus, to convert a simultaneously firing V-twin engine to fuel injection requires adding some device or arrangement to ascertain which of the two cylinders needs a fuel charge from the injectors at any particular time in the cycle. To add a distributor, a cam and switch, or any other type of electromechanical device for the purpose of generating the needed timing information for a fuel injection conversion system requires making undesirable and impractical mechanical modifications to the engine. Id. at col. 3, ll. 44-50. The invention described in the ‘348 patent overcomes this problem by deriving the needed timing information electronically rather than by adding an electromechanical device. The invention is based on the recognition that while both spark plugs in a Harley-Davidson V-twin engine fire simultaneously, the time between successive spark plug firings is not identical. Instead, the time separation alternates between 4/9 and 5/9 in each complete timing cycle to accommodate the asymmetrical relationship between the cylinders in the V-twin arrangement. By detecting the low voltage 15a timing pulses produced in the engine’s existing ignition System, and by measuring the time between successive low voltage timing pulses, the system of the ‘348 patent determines electronically (i.e., using a control unit) when each respective cylinder is ready for a fuel charge without having to add a distributor, a cam and switch, or any other sort of electromechanical device to the engine. Id. at col. 2, ll. 21-34. This not only eliminates having to make mechanical alterations to the engine, but also enables the patented conversion system to be installed on any simultaneously firing V-twin engine regardless of which of the three different types of ignition systems the engine uses. As stated above, in each type of ignition system addressed by the present invention, a device or sensor is used to sense camshaft position and emits a low voltage spark plug firing pulse (timing pulse) in response thereto. The invention described in the ‘348 patent feeds the low voltage timing pulses generated by the ignition system’s existing device or sensor to a control unit. The control unit then measures the time between successive low voltage timing pulses. Since the time between the firing of cylinder 1 and then cylinder 2 is different from the time between the firing of cylinder 2 and then cylinder 1, the control unit is able to determine from the stream of low voltage timing pulses which cylinder needs to be charged with fuel. The output of the control unit thus provides the needed timing signals for the fuel injectors without any mechanical modification of the engine. Cf. ‘348 patent, col. 3, ll. 44-47. oo ada an aries tl aia he - * QUENCES TORE Sr TF x 16a B. Detailed Discussion The ‘348 patent describes the breaker, electronic, and magneto ignition systems in detail in lines 5 through 56 of column 5. The patent describes how, in each of these ignition systems, low voltage timing pulses are provided by various sensing devices. For breaker and electronic ignition systems, the sensing devices include mechanical points, solid-state devices, or Hall effect devices. Mechanical points are typically driven by a camshaft, which in turn is driven by the engine’s crankshaft. As the camshaft rotates, it forces the points apart. When the points are separated, the ignition coil temporarily loses its ground (ie. the points temporarily “break” the low voltage current being fed to the ignition coil) and generates a high voltage pulse that fires the spark plugs. Thus, spark plug firing is caused by, and therefore can be determined by, the low voltage interrupt generated by the points as the camshaft rotates. This low voltage interrupt is input to the control unit of the present invention. A Hall effect device tracks camshaft position using a metallic timing cup having a pair of windows cut into the cup’s sides. See ‘348 patent, at col. 5, ll. 37-39. The metallic timing cup is typically attached to a camshaft, id., which is driven by the engine’s crankshaft assembly. The position of the windows on the metallic timing cup corresponds to the position of the pistons within the two cylinders, respectively. See id. at col. 5, ll. 39-41. That is, each window corresponds to a plug firing and causes a magnetic field that creates a low voltage pulse that is sent to the ignition coil, id., to cause the ignition coil to send a high voltage pulse to fire the spark plugs. Thus, spark plug firing is caused 17a by, and therefore can be determined by, a Hall effect device’s tracking of windows on a metallic timing cup. The low voltage pulse created by the Hall effect device is input to the control unit of the present invention. Id. at col. 5, ll. 48-45. Magneto ignition systems are described as using a rotating magnet to generate a constantly changing flux in the core winding of a magneto coil. In the same manner as in the breaker or electronic systems, interruption of the control coil current in the magneto system causes high voltage signals to be generated to fire the spark plugs. Thus, spark plug firing is caused by, and therefore can be determined by, the low voltage interrupt caused by the changing flux. This low voltage interrupt is input to the control unit of the present invention. - The patented system describes the output of the electronic ignition system sensor (e.g., mechanical points, solid-state devices, Hall effect devices) as directly feeding the control unit. Id. at col. 5, ll. 43-45. If the ignition system uses mechanical points or a Hall effect device, the output of these sensors is described as being used to feed the control unit. Id. at col 5, Il. 45-48. Similarly, the interruption of the control coil current in the magneto system is described as being used to feed the control unit. Id. at col. 5, ll. 50-51. Thus, the 348 patent describes the electronic sensors which are present in the three conventionally used V-twin motorcycle engine ignition systems and the manner in which those sensors determine when, in the engine timing cycle, the ignition system of the engine delivers a low voltage pulse to fire the spark plugs. 18a The written description of the ‘348 patent goes on to describe how the control unit analyzes the low voltage timing pulses generated by the electronic sensing devices to determine which cylinder should be charged with fuel. It does this by measuring the time span between successive pulses. The relationship of spark plug firing between cylinders is fixed for any given type of internal combustion engine based on its structural configuration. In a V-twin engine, the period between spark plug firing between the first cylinder (cylinder 1) and the second cylinder (cylinder 2) is asymmetrical due to the V-shape formed by (or the angle between) the cylinders. Id. at col. 5, 1. 57-col. 6, 1. 3. In a Harley- Davidson V-twin engine utilizing a Hall effect device, the windows on the camshaft’s metallic timing cup reflect this asymmetry. That is, the distance, in one direction, between the window representing cylinder 1 and the window representing cylinder 2 is 4/9 of the circumference of the timing cup in a typical Harley- Davidson engine. The distance, moving in the same direction, between the window representing cylinder 2 and the window representing cylinder 1 is 5/9 of the circumference of the timing cup. By measuring the asymmetrical firing of the spark plugs, the conversion system of the ‘348 patent electronically determines which cylinder should be injected with fuel. An engine timer in the control unit measures the time duration between spark plug firings, i.e., the time between electronic signals received from the electronic ignition system sensor. The control unit stores the times for comparison to determine the longer and shorter periods. By comparing the differences, the desired sequence of cylinder charging is determined by the control unit. The varying distance between the cup 19a windows can be translated into the time lapse between the spark plug firing from cylinder 1 to cylinder 2, which is different than the time lapse between the spark plug firing from cylinder 2 to cylinder 1. For example, when the control unit detects a 4/9 spacing (or time gap) between the windows, cylinder 1 is to be injected with fuel. Conversely, when the Hall effect device detects a 5/9 spacing (or time gap) between the windows, cylinder 2 is to be injected with fuel. Id. at col. 6, ll. 4-10. The 348 patent’s fuel injection system uses a number of other sensors to detect various system parameters and supply further input signals to the control unit. See id. at col. 2, Il. 4-19. The control unit integrates (or processes) the input signals, and transmits output signals to the fuel injectors causing each fuel injector to charge its associated cylinder with fuel at the proper time. nl See id. at col. 3, 1. 65 - col. 4, 1. 3. IT. Budde filed a complaint for patent infringement against Harley-Davidson on June 11, 1997 in the Northern District of California. The district court held a Markman hearing on January 14, 1999 to construe the claims of the %48 patent, and issued its Order Construing Claims on January 29, 1999. Seven claim limitations were disputed by the parties. Because all seven of the then-disputed limitations appeared in claim 1 of the ‘%48 patent, the district court’s Order Construing Claims addressed only claim 1, which recites (with the disputed terms underlined): 20a 1. A fuel injection conversion system for V-twin motorcycle engines having two cylinders, an ignition system, and a fuel source, comprising an intake manifold providing separate ducts for delivering a fuel and air mixture separately to each cylinder, a pair of fuel injectors mounted in a fuel injector and throttle body secured to said intake manifold, a fuel distributor for delivering an _ individual pressurized fuel flow to each of said injectors, a fuel pump for delivering a pressurized fuel flow from the fuel source to the fuel distributor, a fuel flow pressure regulator for controlling the pressure of the fuel flow delivered by the distributor to said injectors, an electronic sensing means for determining when the ignition system of the engine delivers an electronic pulse to fire each spark plug of the cylinders and producing an electronic signal in response thereto, a throttle potentiometer for sensing the position of the throttle and producing an electronic signal in response thereto, a status sensing means for measuring a combination of air intake and engine temperature, and vacuum in the intake manifold and producing electronic signals therefrom, and 2la a control unit which discriminates which spark plug of the engine is firing a fuel-air mixture charged cylinder of the engine from the asymmetrical spark plug firing order related electronic signal from said electronic sensing means, said control unit electronically integrating the electronic signals from the throttle potentiometer, the electronic sensing means, and the status sensing means to generate electronic signals which control the fuel injectors and operate them at the proper time and for the calculated duration to deliver the proper amount of fuel to said cylinders for the engine operating conditions by timed injection. Id. at col. 12, ll. 26-64. As part of its claim construction, the district court interpreted the claim limitation “electronic sensing means for determining when the ignition system of the engine delivers an electronic pulse to fire each spark plug” and found that the 348 patent specification failed to disclose structure corresponding to the claimed function as construed by the court. Budde concluded that he could not prove infringement based on the court’s claim construction and motioned the district court to enter final judgment in favor of Harley- Davidson to facilitate an early appeal. The district court granted Budde’s motion and entered a judgment of non- infringement. We have jurisdiction over Budde’s appeal from the district court’s judgment pursuant to 28 U.S.C. § 1295(a)(1) (1994). DISCUSSION I. Standard of Review A finding of non-infringement requires a two-step analytical approach. First, the claims of the patent must be construed to determine their scope. Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576, 27 U.S.P.Q.2D (BNA) 1836, 1839 (Fed. Cir. 1993). Second, a determination must be made as to whether the properly construed claims read on the accused device. Id. In this ease, Budde has conceded the second part of the infringement analysis, leaving only the propriety of the district court’s claim construction in issue. Claim construction is a matter of law that we review de novo. Id. II. Analysis The parties do not dispute the district court’s construction of the following claim limitations: (1) conversion system; (2) fuel and air mixture; (3) pair of fuel injectors mounted in a fuel injector and throttle body; (4) individual pressurized fuel flow; and (5) control unit. Budde challenges the district court’s construction of the “electronic sensing means” claim limitation. In its conditional cross-appeal, Harley-Davidson challenges the district court’s construction of the “status sensing means” claim limitation. Harley-Davidson asserts that the district court erred in concluding that the specification of the ‘348 patent discloses structure corresponding to the “status sensing means limitation.” 23a Our analysis focuses on the construction of these two disputed claim limitations. The parties agree that the two disputed claim limitations are written in means-plus-function form, and we agree. In construing means-plus-function claim limitations, a court must first define the particular function claimed. Thereafter, the court must identify “the corresponding structure, material, or acts described in the specification.” It is not until the structure corresponding to the claimed function in a means-plus-function limitation is identified and considered that the scope of coverage of the limitation can be measured. 35 U.S.C. § 112, para. 6; Sage Prods., Ine v. Devon Indus., Inc., 126 F.3d 1420, 1428, 44 U.S.P.Q.2D (BNA) 1103, 1110 (Fed. Cir. 1997); In re Donaldson Co., 16 F.3d 1189, 1195, 29 U.S.P.Q.2D (BNA) 1845, 1850 (Fed. Cir. 1994) (“if one employs means-plus-function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by the language” (emphasis added)). Whether or not the specification adequately sets forth structure corresponding to the claimed function necessitates consideration of that disclosure from the viewpoint of one skilled in the art. See 35 U.S.C. § 112, para. 1; N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1579, 28 U.S.P.Q.2D (BNA) 1333, 1339 (Fed. Cir. 1993); cf. In re Ghiron, 58 C.C.P.A. 1207, 442 F.2d 985, 991, 169 U.S.P.Q. (BNA) 723, 727 (CCPA 1971) (stating that “if such a selection would be ‘well within the skill of persons skilled in the art’, such functional- type block diagrams may be acceptable and, in fact, preferable if they serve in conjunction with the rest of 24a the specification to enable a person skilled in the art to make such a selection and practice the claimed invention with only a reasonable degree of routine experimentation”). Moreover, failure to disclose adequate structure corresponding to the recited function in accordance with 35 U.S.C. § 112, paragraph 1, results in the claim being of indefinite scope, and thus invalid, under 35 U.S.C. § 112, paragraph 2. In re Dossel, 115 F.3d 942, 945, 42 U.S.P.Q.2D (BNA) 1881, 1884 (Fed. Cir. 1997). For a court to hold that a claim containing a means- plus-function limitation lacks a disclosure of structure in the patent specification that performs the claimed function, necessarily means that the court finds the claim in question indefinite, and thus invalid. Because the claims of a patent are afforded a statutory presumption of validity, overcoming the presumption of validity requires that any facts supporting a holding of invalidity must be proved by clear and convincing evidence. Ultra-Tex Surfaces, Inc. v. Hill Bros. Chem. Co., 204 F.3d 1360, 1367, 53 U.S.P.Q.2D (BNA) 1892, 1898 (Fed. Cir. 2000); Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1570, 1 U.S.P.Q.2D (BNA) 1593, 1595 (Fed. Cir. 1987) (stating that the presumption mandated by § 282 is applicable to all of the many bases for challenging a patent’s validity). Thus, a challenge to a claim containing a means-plus-function limitation as lacking structural support requires a finding, by clear and convincing evidence, that the specification lacks disclosure of structure sufficient to be understood by one skilled in the art as being adequate to perform the recited function. 25a Electronic Sensing Means Claim 1 of the 848 patent recites “an electronic sensing means for determining when the ignition system of the engine delivers an electronic pulse to fire each spark plug of the cylinders and producing an electronic signal in response thereto.” The district court parsed the claimed function as: “(1) determining when the ignition system of the engine delivers an electronic pulse to fire each spark plug of the cylinders; and (2) producing an electronic signal in response thereto.” Order Construing Claims, slip op. at 9. Neither party disputes the district court’s characterization of the claimed function, and we see no reason to disagree. The district court then held that the ‘348 patent “fails to disclose any structure corresponding to the claimed function of the electronic sensing means.” Order Construing Claims, slip op. at 11. Budde disputes the district court’s analysis, asserting that the process by which the district court consulted the specification to define the structure corresponding to the claimed function was improper. Specifically, Budde asserts that the district court erred in impermissibly narrowing the term “determining” in the claimed function to require electronic “sensing.” Although Budde’s description of the district court’s error is perhaps oversimplified, the district court in fact narrowed its own interpretation of the defined function, based on its incorrect reading of statements contained in the summary and objects of the invention. Based upon those portions of the patent disclosure, the district court erroneously stated that the structure corresponding to the claimed function could not be 26a structure that sensed the position of the camshaft. We discuss the district court’s error in more detail below. As a quid pro quo for the convenience of employing § 112, paragraph 6, Budde has a duty to clearly link or associate structure to the claimed function. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1360, 54 U.S.P.Q.2D (BNA) 1308, 1313 (Fed. Cir. 2000) (citing B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424, 43 U.S.P.Q.2D (BNA) 1896, 1900 (Fed. Cir. 1997)). Budde asserted to the district court that Figure 3 and the following passage of the specification defined the structure capable of performing the claimed function: In the present invention, sensors are utilized to obtain a timing signal from the ignition system which is inputted to the control unit of the fuel injection system for utilization in controlling the operation ‘of the fuel injectors. The Electronic ignition systems use sensors that may be optical (usually infrared), or magnetic (usually Hall effect devices). These sensors detect the windows cut in the sides of a metallic “cup” that is attached to the end of the cam shaft. Each window corresponds to a plug firing and the angle between the windows corresponds to the angle between the cylinders. The position of the lobes of a Breaker ignition system have a corresponding relationship. The output of the Electronic ignition system sensor is used directly by the control unit of the present invention. Col. 5, ll. 31-45. The district court held that neither the text nor the figure cited by Budde discloses structure capable of determining when the ignition system of the engine 27a delivers an electronic pulse to fire the spark plugs. The district court found that the text cited by Budde merely identifies two types of sensors utilized by ignition systems in Harley-Davidson carbureted engines that detect windows in a cup on the camshaft, and that “the electronic sensing means called for by the claim may not be a structure that senses the position of the camshaft.” Order Construing Claims, slip op. at 10-11. The district court based this assertion on the following statements in the summary and objects of the ‘348 patent: “The present invention is designed to acquire the required timing information for providing the fuel injectors with their instructions by picking up an electronic pulse off the ignition system.” ‘348 patent, col. 2, ll. 21-24 (emphasis added). “An electronic sensing means is provided for determining when the ignition system of the engine delivers an electronic pulse to fire the spark plugs of the cylinders... .” ‘348 patent, col. b, 1. 68 - col. 2, 1.3 (emphasis added). “It is another object of the invention to provide a fuel injection conversion system for Harley-Davidson motorcycle engines which is able to time the fuel injection sequence from analysis of the spark pulses... ‘348 patent, col. 2, ll. 41-44 (emphasis added). 28a The district court found that these statements require the electronic sensing means to pick-up or sense high voltage pulses fed to the spark plugs from the ignition coil, rather than sensing camshaft position. Finding no structure for sensing the high voltage pulses fed to the spark plugs, the district court concluded that the 48 patent specification failed to disclose structure corresponding to the claimed function of the electronic sensing means. We note, however, that the “electronic sensing means” claim limitation merely recites the functions of “determining when” pulses are delivered to fire the spark plugs and “producing an electronic signal in response thereto,” not the function of sensing the high voltage pulses sent from the ignition coil to the spark plugs. Contrary to the view of the district court, ‘determining’ when pulses are delivered to fire the spark plugs does not require direct detection of those pulses. Such a determination can be done indirectly, by detecting a low-voltage electronic signal from a sensor that determines, from the position of the cam shaft, when high-voltage pulses are to be delivered to the spark plugs. That interpretation of the manner in which the electronic sensing means determines when the ignition system delivers an electronic pulse to fire each spark plug is consistent with the statements in the summary and objects of the invention. These sections of the specification contrast the conventional system for obtaining timing information “from the electronic distributor,” ‘848 patent, col. 2, ll. 25-26, with the system employed by the invention, i.e., obtaining timing information “from an analysis of the spark plug firing pulses,” ‘848 patent, col. 2, Il. 33-34. In context, it appears that the “spark plug firing pulses” that are analyzed, and the “electronic pulse” that is “picked up . . . off the ignition system,” 48 patent, col. 2, ll. 23-24, 29a refer to the low-voltage signal from the :electronic sensor, not the high-voltage pulse that is sent to fire the spark plugs. The district court, and Harley-Davidson on appeal, rely heavily on a passage from the objects of the invention, which describes one of the objects as being to provide a fuel injection conversion system that is “able to time the fuel injection sequence from analysis of the spark pulses rather than from a mechanical electronic reading of the electro-mechanical or electronic-mechanical ignition timing unit which fires the spark plugs.” ‘348 patent, col. 2, ll. 41-47. While the district court found that the “electro-mechanical ignition timing unit” referred to is a Hall effect device (or other device for sensing camshaft position), we think the better interpretation is that the reference to the “electronic- mechanical ignition timing unit” refers to the conventional method of acquiring timing information, which the specification identifies as “acquiring the timing information from the electronic distributor.” ‘348 patent, col. 2, Il. 25-26. The problem solved by this invention is determining which plug is being fired (in order to determine the proper fuel injection sequence) in the absence of a distributor. Thus, one skilled in the art would understand that the patent is referring to determining the proper injection sequence using a control unit that analyzes: (1) when the ignition system delivers a low voltage pulse to cause spark plug firing; and (2) the timing between delivery of the low voltage pulses. The control unit can perform this analysis based on the low voltage pulse received from a Hall effect device (or other optical or magnetic sensor), a solid- State sensor, or a standard mechanical point setup. Use a 30a of the control unit negates the need for a distributor to determine the proper injection sequence. In supporting the district court’s opinion, Harley- Davidson’s attempts to prove a lack of corresponding structure focus on the disclosure set forth in the summary and objects of the invention and, in particular, statements that the claimed function includes an “analysis of the spark plug firing pulses.” Harley- Davidson invites us to conclude therefrom that the claimed function of “determining when the ignition system . . . delivers an electronic pulse to fire each spark plug” requires that the electronic sensing means analyze the firing pulses. To this end, Harley-Davidson points out that although their expert testified that a Hall effect device can determine a window within which spark plug firing occurs, he further testified that the Hall effect device could not determine the exact time of ignition coil activation. Harley-Davidson asserts that because the Hall effect device cannot determine the exact time of ignition coil activation, it does not analyze the spark plug firing pulses, and therefore it cannot perform the claimed function of determining when the ignition system delivers an electronic pulse to fire each spark plug. We are not persuaded by Harley- Davidson’s argument, which fails to recognize that, as we have discussed, the summary and objects of the invention can fairly be read to refer to an electronic sensing means that determines the firing sequence of the spark plugs by detecting a low-voltage electronic signal from a sensor within the ignition system. Moreover, whatever force Harley-Davidson’s argument might have viewing the summary and objects of the invention sections of the specification in isolation, it cannot be squared with the specific passage that 3la describes in detail the electronic sensing means, see ‘348 patent, col. 5, ll. 31-56. The specification must be read as a whole to determine the structure capable of performing the claimed function. See 35 U.S.C. § 112, para. 6 (1994) (requiring that a means-plus-function claim limitation “be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof’ (emphasis added)); see also Serrano v. Telular Corp., 111 F.3d 1578, 1588, 42 U.S.P.Q.2D (BNA) 1538, 1542 (Fed. Cir. 1997) (holding that the proper construction of a claim limitation under § 112, paragraph 6 looks to the “disclosed structure [that] is described in a patent specification, including any alternative structures identified”). In construing terms used in patent claims, it is necessary to consider the specification as a whole, and to read all portions of the written description, if possible, in a manner that renders the patent internally consistent. In addition, it is important to construe claim language through the “viewing glass” of a person skilled in the art. Interactive Gift Express, Inc. v. Compuserve Inc., 231 F.3d 859, 866, 56 U.S.P.Q.2D (BNA) 1647, 1653 (Fed. Cir. 2000). As discussed previously, the problem solved by the Budde invention is how to determine which cylinder needs a charge of fuel in an engine that has no distributor and fires both plugs simultaneously. This problem is_ preferably solved without making impractical and undesired mechanical modifications to the engine. This is achieved by deriving the needed timing information’ electronically, rather than mechanically, by analyzing the asymmetrical pulse train 32a generated by the engine’s existing ignition system. Analysis of the pulse train determines when each cylinder is ready for a fuel-charge. As described in the ‘348 patent specification, the control unit of the patented system receives as an input the low voltage timing pulses picked up from the existing ignition system. These pulses trigger the simultaneous firing of the spark plugs and, by their asymmetry, impart information that the control unit uses to determine electronically, rather than mechanically, which of the two cylinders is on the power stroke and is thus ready for a fuel charge. The summary and objects of the invention are followed by a description of the preferred embodiment, and must be read, if possible, in a manner consistent with the rest of the written description. The rest of the written description clearly states that “there are three types of motorcycle ignition systems: Breaker, Electronic, and Magneto. Any one of these types may be in use on a Harley engine, and the solution to providing a conversion system requires the adaptability to determine fuel injector timing from any one of them.” ‘ - 7348 patent, col. 4, 1. 66 - col. 5, l. 3 (emphasis added). At column 5, lines 35-51, a number of alternative sensors are disclosed that determine when the ignition system delivers a low voltage electronic pulse to fire the spark plugs. The alternative sensors include: (1) an optical sensor; (2) a magnetic sensor (e.g., a Hall effect device); (3) a standard mechanical point setup; and (4) a solid- state sensor. As we discussed in the background portion of this opinion, the detailed description discloses not only each of these sensors, but how the signals from those sensors are fed as an input to the control unit which, in turn, analyzes the low voltage 33a timing pulses to determine electronically when each cylinder needs a fuel charge. These four sensor types are listed under the heading of “Electronic Sensing” in the description of the preferred embodiment, thus directly linking the disclosed structure to the “electronic sensing means” limitation in the claims. Each of these sensors is structure corresponding to the claimed function of the electronic sensing means. They each determine when the engine’s ignition system delivers a timing pulse to fire the spark plugs and produce electrical signals in response thereto. Harley-Davidson also relies on a portion of co-inventor Knapp’s deposition testimony to show that co-inventor Knapp could not find structure in the specification of the 848 patent corresponding to the electronic sensing means. However, the portion of the testimony that Harley-Davidson cites is not sufficient to render negligible the written description of the four embodiments of the electronic sensing means discussed above. In addition, we note that the district court’s Order Construing Claims discussed neither the level of skill in the art, nor the requirement that a lack of corresponding structure be proven by clear and convincing evidence. In fact, the district court never addressed the validity of claim 1. It merely concluded, in its Order Construing Claims, that there was no structure corresponding to the claimed function of the “electronic sensing means.” Despite the fact that the district court entered its judgment of non-infringement without addressing the issue of validity, its decision necessarily renders claim 1 invalid. Thus, the district court should have applied the “clear and convincing” 34a evidentiary standard in assessing Harley-Davidson’s assertion that the specification of the ‘348 patent fails to disclose structure corresponding to the “electronic sensing means.” The district court’s failure to apply the correct “clear and convincing” standard to Harley- Davidson’s evidentiary submission on this issue is another reason why we hold that the district court’s construction of the “electronic sensing means” limitation was erroneous. So holding requires us to consider Harley-Davidson’s conditional cross appeal. Status Sensing Means Claim 1 of the ‘348 patent includes “a status sensing means for measuring a combination of air intake and engine temperature, and vacuum in the intake manifold and producing electronic signals therefrom.” The district court correctly identified the claimed function as: “(1) measuring a combination of air intake and engine temperature; (2) measuring vacuum in the intake manifold; [and] (8) producing electronic signals from those measurements.” Order Construing Claims, slip op. at 12. The parties do not dispute that the specification of the 848 patent discloses a thermistor as the structure capable of performing the first and third functions. However, the parties dispute whether the patent sufficiently discloses structure capable of performing the second function, i.e., measuring vacuum in the intake manifold. The district court held that the corresponding structure was identified in the written description of the patent as a “commercially available” vacuum sensor that produces an analog signal. Harley- Davidson asserts that this generic reference in the specification of the 848 patent does not adequately 35a disclose structure for measuring vacuum in the intake manifold. The specification states, at column 6, lines 38-40, “vacuum sensors are commercially available units which produce analog signals for the control unit.” In addition, Figure 3 of the ‘348 patent is a block diagram of the fuel injection controller that includes a box labeled “VACUUM SENSOR.” In its claim construction analysis and corresponding determination of definiteness of the means-plus- function claims under 35 U.S.C. § 112, paragraph 2, the district court held that “the box labeled VACUUM SENSOR and the passage describing ‘commercially available units’ meet the definiteness requirement of § 112, P 2.” Order Construing Claims, slip op. at 14. The district court explained, Vacuum sensors were well known in the art of motorcycle engine manufacturing at the time the patent issued. The phrase “commercially available units” particularly and distinctly pointed out to those skilled in the art the vacuum sensors [that] the 348 patent claimed. Accordingly, the structure which corresponds to the [second function] is a vacuum sensor which produces an analog signal and which was commercially available at the time the patent was issued. Id. Harley-Davidson asserts that Budde’s use of “commercially available units” unfairly allows him to incorporate by reference every commercially available 36a vacuum sensor, which is not allowable under our holding in Atmel Corporation v. Information Storage Devices, Inc., 198 F.3d 1874, 1381, 53 U.S.P.Q.2D (BNA) 1225, 1229 (Fed. Cir. 1999). We are not persuaded by this argument because the facts of the present case are distinguishable from Atmel. In Atmel, the means-plus-function claim limitation was “high voltage generating means disposed on said semiconductor. . . .” 198 F.3d at 1376, 53 U.S.P.Q.2D (BNA) at 1226. The specification stated, “the present invention may include high-voltage generator circuit 34. Known Circuit techniques are used to implement high- voltage circuit 34. See On-Chip High Voltage Generation in NMOS Integrated Circuits Using an Improved Voltage Multiplier Technique, IEEE Journal of Solid State Circuits, Volume SC-11, No. 3, June 1976.” Id. in addition, the figures of the patent depicted the high voltage generator circuit 34 as a black box. Id. at 1377, 53 U.S.P.Q.2D (BNA) at 1226. This court held that the patentee could not incorporate the disclosure of the cited article by reference to fulfill the definiteness requirement of § 112, paragraph 2. Id. at 1382, 53 U.S.P.Q.2D (BNA) at 1230. In other words, the content of the article could not be used to discern sufficient structure in the specification that corresponded to the claimed function. In the present case, the issue is not whether subject matter absent from the _ specification can be incorporated by reference to satisfy the requirement that corresponding structure be adequately described in the specification. The issue is whether the characterization, in the patent specification, of the vacuum sensor as a “commercially available unit” would 37a be understood by one skilled in the art as structure capable of performing the function recited in the claim limitation. The record reflects, as found by the district court, that vacuum sensors were well known in the art. See In re Dossel, 115 F.3d at 946-47, 42 U.S.P.Q.2D (BNA) at 1885 (“Clearly, a unit which receives digital data, performs complex mathematical computations and outputs the results to a display must be implemented by or on a general or special purpose computer (although it is not clear why the written description does not simply state ‘computer’ or some equivalent phrase.)”). Harley-Davidson points to its expert’s testimony at the Markman hearing that the expert “didn’t see any description in the patent of the vacuum sensor other than that [the invention] has one and it’s in the diagram.” Relying on Atmel, Harley-Davidson argues that testimony from those skilled in the art is instructive as to whether the specification discloses structure corresponding to the claimed function. Atmel, 198 F.3d at 1379, 53 U.S.P.Q.2D (BNA) at 1228. However, Harley-Davidson’s expert misses the mark in not shedding any light on the significance to, or understanding of, one skilled in the art of the described “commercially available” vacuum sensor. He also admitted that he was “not very well versed in pressure sensors.” This is hardly the type of testimony that amounts to clear and convincing evidence that one skilled in the art would not understand the scope of claim 1 when read in light of the specification. In view of the foregoing, we conclude that the district court did - not err in holding that the ‘48 patent sufficiently discloses structure capable of measuring vacuum in the intake manifold. 38a CONCLUSION Because the judgment of non-infringement was entered based on an erroneous claim construction of “electronic sensing means,” we vacate the judgment of non- infringement and remand for further proceedings consistent herewith. VACATED AND REMANDED Footnotes nl Budde’s brief informs us that the “proper time” is when the piston of the fuel injector’s associated cylinder is returning from an exhaust stroke. 39a Case Number C-98-20447-JF, [Doc. Nos. 136, 1387, 188, 144, 149, 166, 179, 185, 188] UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION WILLIAM A. BUDDE, Plaintiff, V. HARLEY-DAVIDSON, INC., et al., Defendants. July 29, 2003, Decided - July 30, 2003, Filed COUNSEL: For WILLIAM BUDDE, Plaintiff: Jack Russo, Tim C. Hale, William Milks, Russo & Hale, Palo Alto, CA. For HARLEY-DAVIDSON, INC., a _ Wisconsin corporation, defendant: Russell L. Johnson, Skjerven Morrill LLP, San Jose, CA; Michael E. Husmann, Michael Best & Friedrich, Milwaukee, WI; John C. Scheller, Michael Best & Friedrich, Madison, WI; Russell L. Johnson, Sidley Austin Brown & Wood, LLP, San Francisco, CA; J. Donald Best, Richard H. Marschall, Michael Best & Friedrich LLP, Medison, WI. For HARLEY-DAVIDSON MOTOR COMPANY, a Wisconsin corporation, defendant: Russell L. Johnson, Skjerven Morrill LLP, San Jose, CA; Michael E. 40a Husmann, Michael Best & Friedrich, Milwaukee, WI; John C. Scheller, Michael Best & Friedrich, Madisor, WI; Russell L. Johnson, Sidley Austin Brown & Wood, LLP, San Francisco, CA; J. Donald Best, Richard H. Marschall, Michael Best & Friedrich LLP, Medison, WI. JUDGES: JEREMY FOGEL, United States District Judge. OPINIONBY: JEREMY FOGEL E OPINION: ORDER (1) GRANTING DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT OF NONINFRINGEMENT AND DENYING PLAINTIFF'S MOTIONS FOR SUMMARY JUDGMENT OF INFRINGEMENT; (2) DENYING THE PARTIES’ CROSS-MOTIONS WITH RESPECT TO DEFENDANTS’ AFFIRMATIVE DEFENSES; AND (3) ADDRESSING THE PARTIES’ MOTIONS TO STRIKE EVIDENCE On June 23, 2003, the Court heard the parties’ cross- motions for summary judgment. The motions fall into two groups: those addressing the issue of infringement and those addressing the affirmative defenses of patent invalidity and unenforceability. The Court also heard several motions to strike evidence submitted by both sides. The Court will grant Defendants’ motion for summary judgment of noninfringement and deny Plaintiffs motions for summary judgment of infringement. The Court will deny the parties’ cross- motions for summary judgment with respect to 4la Defendants’ affirmative defenses. With respect to the motions to strike evidence, the Court will address those motions only as they relate to evidence actually considered by the Court in analyzing the substantive motions. None of the evidence actually considered by the Court is subject to exclusion for the reasons set forth below. I. BACKGROUND United States Patent No. 4,955,348 (“the patent” or “the 348 patent”) teaches a system for converting car» ureted V-twin motorcycle engines to fuel injection. The specification focuses on Harley-Davidson (“HD”) engines, but states that the conversion system will work on all V-twin motorcycle engines. A V-twin engine has two cylinders arranged at an angle to each other in a “V” configuration. The cylinders alternately are filled with a mixture of fuel and air. This fuel/air mixture then is compressed by a piston that moves up and down inside the cylinder. A spark plug is used to ignite the compressed fuel/air mixture. The resulting combustion drives the piston in an up-and-down motion that is translated into circular motion by other parts of the engine. Prior to model year 1995, HD manufactured only carbureted V-twin motorcycle engines. In a carbureted engine, a mechanical device -- the carburetor -- mixes the correct amount of fuel and air so that the engine runs properly. In simple terms, the carburetor is a tube that narrows in one portion. Air flowing through the carburetor creates a vacuum that draws in fuel. The resulting fuel/air mixture is delivered to the cylinder. 42a In a fuel injected engine, an electronically controlled valve -- the fuel injector -- sprays fuel either directly into the cylinder or into the air flow at the cylinder’s intake valve. According to the patent specification, fuel injection is more efficient than carburetion but can be difficult to implement because of difficulties in determining when and how much fuel should be provided for each stroke of each cylinder (“timing information”). Most fuel injection systems acquire timing information from the engine’s distributor, a device that “steers” spark pulses to one cylinder or the other. At the time of the application that ultimately issued as the 348 patent, HD V-twin engines were unusual in that they did not use a distributor. Rather, the spark plugs associated with both cylinders fired simultaneously. The patent addresses the problem of acquiring timing information absent a distributor. The specification notes that additional hardware such as a cam and switch arrangement could be added to the engine in order to provide timing information, but also notes that such additions “would probably be highly objectionable to most Harley owners. “848 patent, col. 3, 11. 44-47. The specification further observes that the differences among motorcycle models, and the ignition systems used by different models, would make adding a cam and switch arrangement complicated and impractical. Id. at col. 3, 11. 47-50. The specification asserts that the patented conversion system “provides a solution to these problems.” Id. at col. 3, 11. 58-59. In its 2001 ruling addressing this Court’s claim construction, the Federal Circuit described the patented conversion system as follows: 43a The invention is based on the recognition that while both spark plugs in a Harley-Davidson V-twin engine fire simultaneously, the time between successive spark plug firings is not identical. Instead, the time separation alternates between 4/9 and 5/9 in each complete timing cycle to accommodate the asymmetrical relationship between the cylinders in the V-twin arrangement. By detecting the low voltage timing pulses produced in the engine’s existing ignition system, and by measuring the time between successive low voltage timing pulses, the system of the 348 patent determines electronically (i.e., using a control unit) when each respective cylinder is ready-for a fuel charge without having to add a distributor, a cam and switch, or any other sort of electromechanical device to the engine. Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1372 (Fed. Cir. 2001). The Court went on to state as follows: As discussed previously, the problem solved by the Budde invention is how to determine which cylinder needs a charge of fuel in an engine that has no distributor and fires both plugs simultaneously. This problem is preferably solved without making impractical and undesired mechanical modifications to the engine. This is achieved by deriving the needed timing information electronically, rather than mechanically, by analyzing the asymmetrical pulse train generated by the engine’s existing ignition system. Analysis of the pulse train determines when each cylinder is ready for a fuel charge. As described in the 348 patent specification, the control unit of the patented system receives as an input the low voltage timing puises picked up from the existing ignition ee ee eS ee as 44a system. These pulses trigger the simultaneous firing of the spark plugs and, by their asymmetry, impart information that the control unit uses to determine electronically, rather than mechanically, which of the two cylinders is on the power stroke and is thus ready for a fuel charge. Id. at 1380. In model year 1995, HD began manufacturing V-twin motorcycles with fuel injection. HD first came out with its “original” electronic fuel injection (“EFI”) system, a sequential port injection system in which each fuel injector sprays fuel directly into the intake port of one of the cylinder heads just prior to the opening of the intake valve. In model year 2001, HD began marketing its “new” EFI system, which also is a sequential port injection system but which differs in some respects from the original system. The V-twin engines equipped with the original and new EFI systems differ in several respects from the older V-twin engines equipped with carburetors. One significant difference is that the newer fuel injected engines fire the spark plugs alternately, rather than simultaneously as in the older carbureted engines described in the patent. Plaintiff William Budde (“Budde”), co-inventor and owner of the 348 patent, asserts that both the original and new EFI systems infringe the patent. Defendants Harley-Davidson, Inc. and Harley-Davidson Motor Company (collectively “HD”) assert that there is no infringement and that in any event the 348 patent is invalid and unenforceable on a number of grounds. The parties have filed cross-motions for summary judgment on the issues of infringement, invalidity and 45a unenforceability. The parties also have filed a number of motions to strike evidence. The Court will address the mctions to strike evidence as necessary to its analysis of the motions for summary judgment. Il. INFRINGEMENT Budde seeks summary judgment of infringement, asserting that the patent reads on both the original EFI system and the new EFI system. HD seeks summary judgment of noninfringement, asserting that its EFI systems do not meet several claim limitations. The determination of infringement of a patent is a two- step process. Lockheed Martin Corp. v. Space Systems/Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir. 2003). The Court first construes the claims of the patent to determine their proper scope. Id. The Court then compares the properly construed claims to the accused device. Id. While claim construction is a question of law, infringement is a question of fact. Id. Accordingly, summary judgment on the issue of infringement is appropriate only if no reasonable jury could return a verdict for the nonmoving party, viewing the facts and inferences in the light most favorable to that party. Id. With respect to the first step, this Court previously construed the disputed terms contained in claim 1. nl The Federal Circuit reversed with respect to one term, “electronic sensing means,” and left the remainder of the claim construction undisturbed. Applying the claim construction as modified by the Federal Circuit, the question is whether either party has established that no reasonable trier of fact could find for the other on the question of infringement. 46a To prove infringement, the patentee must show that the accused device meets each claim limitation either literally or under the doctrine of equivalents. Catalina International Marketing, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 812 (Fed. Cir. 2002). Literal infringement requires that the accused device contain each limitation of the patent claim. Id. Infringement under the doctrine of equivalents requires that the accused device contain an equivalent for each limitation not literally satisfied. Id. An element in the accused product is equivalent to a claim limitation if the differences between the two are “Gnsubstantial” to one of ordinary skill in the art. Id., citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40, 187 L. Ed. 2d 146, 117 S. Ct. 1040 (1997). Insubstantiality may be determined by asking whether the accused device “performs substantially the same function in substantially the same way to obtain the same result” as the claim limitation. Id. at 813. This function-way-result test for insubstantiality may not be suitable in all cases. Warner-Jenkinson, 520 U.S. at 40. Whatever formulation is used, equivalence must be determined on an element-by-element basis, and not as to the invention as a whole. Id. at 29. Moreover, < is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety.” Id. Claim 1 of the patent is set forth below with the limitations at issue highlighted in bold. The Court will address each of the disputed limitations in turn. 47a 1. A fuel injection conversion system for V-twin motorcycle engines having two cylinders, an ignition system, and a fuel source, comprising an intake manifold providing separate ducts for delivering a fuel and air mixture separately to each cylinder, a pair of fuel injectors mounted in a fuel injector and throttle body secured to said intake manifold, a fuel distributor for delivering an _ individual pressurized fuel flow to each of said injectors, a fuel pump for delivering a pressurized fuel flo 7 from the fuel source to the fuel distributor, a fuel flow pressure regulator for controlling the pressure of the fuel flow delivered by the distributor to said injectors, an electronic sensing means for determining when the ignition system of the engine delivers an electronic pulse to fire each spark plug of the cylinders and producing an electronic signal in response thereto, a throttle potentiometer for sensing the position of the throttle and producing an electronic signal in response thereto, a status sensing means for measuring a combination of air intake and engine temperature, and vacuum in the intake manifold and producing electronic signals therefrom, and 5) De site i ets :? ee te ey Oe ee ee ee ee LS ae Se ee 48a a control unit which discriminates which spark plug of the engine is firing a fuel-air mixture charged cylinder of the engine from the asymmetrical spark plug firing order related electronic signal from said electronic sensing means, said control unit electronically integrating the electronic signals from the throttle potentiometer, the electronic sensing means, and the status sensing means to generate electronic signals which control the fuel injectors and operate them at the proper time and for the calculated duration to deliver the proper amount of fuel to said cylinders for the engine operating conditions by timed injection. A. Fuel Injection Conversion System This Court has construed the term “conversion system,” which appears in the preamble of claim 1, to be a limitation on the claim. The Court stated that the patented conversion system “requires a fuel injection system suitable for an engine that can be operated as a carbureted engine, regardless of whether the fuel injection system was designed as an after-market product or as original equipment.” Order of January 29, 1999 (“Claim Constr. Order”), 6. This construction was articulated in the context of determining whether the term “conversion system” is a limitation at all and, if so, whether it includes original equipment. The Court quoted the specification’s statement that an important object of the invention is to convert V-twin motorcycle engines from carburetion to fuel injection, but concluded that “nothing in the specification indicates, however, that the patent does not cover a fuel injection system designed by an original manufacturer to fit an engine it has previously manufactured only with a carburetor.” Id. The Court’s point was that a 49a conversion system otherwise covered by the patent does not fall outside the scope of the patent simply because it is provided as original equipment rather than as an after-market conversion kit. Nothing in the Court’s construction was intended to delete the requirement that the “conversion system” described by the patent actually “convert” one type of engine to another. For the most part, Budde’s arguments ignore the “conversion” aspect of the patent and focus on the Court’s statement that the invention requires a fuel injection system “suitable for an engine that can be operated as a carbureted engine.” While this excerpt of the Court’s construction order appears quite broad standing on its own, it must be read in the context of the Court’s construction as a whole and of the patent itself. As is discussed above, the Court’s construction did not eliminate the “conversion” aspect of the patent. Moreover, a reading of the patent makes clear that the entire purpose of the invention is to convert to fuel injection an engine originally designed for carburetion. The abstract of the patent describes the invention as “{a] conversion kit for V-twin motorcycles to convert them from carbureted to fuel injection.” The specification states the objects of the invention as follows: (1) “to provide a fuel injection conversion system for V-twin motorcycle engines which converts them from carburetion to fuel injection”; (2) “to provide a fuel injection conversion system for Harley-Davidson motorcycle engines which is able to time the fuel injection sequence from analysis of the spark pulses rather than from a mechanical electronic reading of the electro-mechanical or electronic-mechanical ignition timing unit which fires the spark plugs”; and (38) “to 50a provide a fuel injection conversion system for Harley- Davidson motorcycles which will retrofit any V-twin motorcycle engine.” 348 patent, col. 2, 11. 37-52. Read in context then, the Court’s construction requires either an after-market kit that can convert a V-twin motorcycle engine with a carburetor to fuel injection or an original equipment fuel injection system that fits an engine previously manufactured only with a carburetor (thus effectively “converting” to fuel injection an engine previously designed for carburetion). n2 Budde asserts that HD uses the same basic engine in its carbureted V-twin engine motorcycles and its fuel injected V-twin motorcycles. According to Budde, this same basic engine comes in two “flavors,” carbureted and fuel injected. Therefore, Budde asserts, HD’s original and new EFI systems fall within the Court’s construction of “conversion system.” If Budde were correct in asserting that HD simply puts its EFI systems on the same basic engine previously manufactured only with a carburetor, the Court would conclude that the conversion system limitation reads on HD’s EFI systems. However, the undisputed evidence is to the contrary. HD’s original and new EFI systems will not work with a V-twin engine unless such engine has specially designed parts that integrate with the EFI systems. For example, it is undisputed that HD’s original EFI system utilizes a camshaft position sensor that relies upon a specially designed rotor cup. It similarly is undisputed that both the original and new EFI systems utilize a crankshaft position sensor that determines the location of the crankshaft based upon the passage of specially designed teeth on the engine flywheel. It is undisputed that HD’s carbureted V-twin 5la engines did not have these specially designed engine parts prior to model year 1999. HD introduces evidence that, as a result, HD’s EFI systems would not work with the pre-1999 carbureted engines absent addition to the engines of the specially designed rotor cup (original EFI system, and specially designed teeth on the flywheel (both original and new EFI systems). Jones Decl., P 11; Farrell Decl., P 11; Lodise Decl., P 20. n3 The patent specification explicitly scorns such mechanical alterations as “highly objectionable” and emphasizes the invention’s ability to convert any V- twin engine from carburetion to fuel injection absent mechanical alterations. 348 patent, col. 3, 11. 44-59. It is undisputed that beginning in model year 1999 HD incorporated the above-described rotor cup and flywheel into its carbureted V-twin engines. An argument could be made, then, that these later carbureted engines are essentially the same as those utilizing HD’s EFI systems, the only difference being the type of fuel delivery system added by HD. HD introduces evidence, however, that the engines utilizing the EFI systems have other specially designed parts such as the fuel pump, regulator and fuel lines that are necessary to withstand the high fuel pressure requirements of the EFI systems. Farrell Decl., P 19. HD introduces evidence that the EFI systems could not be used without replacement of these parts. Id. Consequently, this is not the situation posited by the Court’s claim construction order, in which an original equipment manufacturer in essence “converted” to fuel injection an engine previously designed only for carburetion. To the contrary, the evidence indicates that the V-twin engines manufactured with HD’s EFT systems are significantly different from the V-twin ee ee ee oF, 52a engines previously manufactured with carburetors, and that HD’s EFI systems are not suitable for use with the latter engines absent significant mechanical alterations to such engines. Budde introduces the reports of his expert, Robert White (“White”), in support of his assertion that HD uses the same basic engine in its carbureted V-twin engine motorcycles and its fuel injected V-twin engine motorcycles. White’s conclusory statements to this effect are unsupported, however, and seem to hinge upon the fact that both types of engines are V-twin engines. White Report, PP 20-22; White Supp. Report, P 15. Under White’s overly broad interpretation of “engine,” the “conversion system” limitation would read on any fuel injection system used with a V-twin engine. Such an interpretation is not consistent with the Court’s claim construction order, which focuses on whether an original manufacturer in essence has “converted” to fuel injection an engine previously made only with a carburetor. Nor is such an interpretation, which effectively would eliminate the “conversion” limitation, consistent with settled precedent. See Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 29-30, 187 L. Ed. 2d 146, 117 S. Ct. 1040 (1997) (holding that each element contained in a patent claim is material to defining the scope of the invention and that it is improper to interpret a patent so broadly as to effectively eliminate any element in its entirety). ’ Based upon the record before it, the Court concludes that no reasonable trier of fact could find that HD’s EFI systems are conversion systems within the meaning of the patent. 53a B. Intake Manifold Providing Separate Ducts Claim 1 discloses “an intake manifold providing separate ducts for delivering a fuel and air mixture separately to each cylinder.” The Court has construed this limitation to require “an intake manifold with two ducts, each of which separately delivers a fuel and air mixture to a cylinder.” Claim Constr. Order at 7. HD concedes that this limitation reads on its original EFI system, but asserts that it does not read on its new EFI system. Budde asserts that the limitation does read on HD’s new EFI system. HD interprets the word “duct” to mean a tube running from one end of the intake manifold to the other. HD points out that Figure 6 of the patent shows two such tubes, and that HD’s original EFI system similarly uses two such tubes. HD distinguishes this configuration from that of its new EFI system, in which a single tube runs from one end of the intake manifold to the other but splits into two outlets, or branches, at one end so that the fuel/air mixture can be delivered to the two cylinders. Budde interprets the word “duct” to mean not the tube running the length of the intake manifold but rather one of the two outlets or branches referenced above. Because HD’s new EFI system utilizes a tube that branches into two outlets, Budde contends that the two-duct requirement is met. The dictionary definition of “duct” is “a tube, channel, or canal through which a gas or liquid moves.” Webster’s New World Dictionary 419 (8d college ed. 1988). There is no indication in the specification that Budde intended a different meaning. To the contrary, the specification emphasizes the use of two separate 54a tubes to deliver a fuel/air mixture to each cylinder without any crossover: The unique configuration of the intake manifold includes the fact that it has separate intake tubes or ducts for each injector whereby there is no cross-over of fuel-air mixture between the two injectors and whereby accurate timed injection can be accomplished. ‘348 patent, col. 4, 11. 17-22. Because the specification makes clear that a duct is a tube, the two-duct requirement cannot be met by a single duct or tube that contains two outlets or branches at one end. Moreover, the latter configuration could not deliver the fuel/air mixture without any crossover, which feature of the two-duct configuration is touted by the specification. This analysis is consistent with the Court’s construction of the limitation, which requires that each duct referenced in claim 1 “separately” deliver a fuel/air mixture to one of the cylinders. Budde’s expert, White, refers to the two outlets at the end of the single tube in HD’s new EFI system as “ducts,” but offers no facts in support of this reference, no explanation for the patent language discussed above and no evidence that one of ordinary skill in the art would define “ducts” in this manner. White Report, P 29; White Supp. Report, PP 19, 21. The Court concludes that no reasonable trier of fact could find that the single-duct configuration of HD’s new EF system literally meets the two-duct limitation set forth in claim 1. The Court further concludes that no reasonable trier of fact could find that the single-duct configuration of HD’s new EFI system meets the claim 55a limitation under the doctrine of equivalents. The specification emphasizes the differences between the patented configuration and other fuel injection systems that have fuel/air crossover. 348 patent, col. 4, 11. 17-30 The specification further explains that, with a two-duct configuration, a small air communication passage between the two ducts is provided “to equalize the pressure in the tubes for balance between the cylinders and during engine operation without cross-over of the fuel-air mixture.” Id. at col. 4, 11. 36-41. Given the specification’s characterization of the two-duct configuration as “unique,” and the details provided regarding the differences between this configuration and those in which there is fuel/air crossover, no reasonable trier of fact could conclude that the differences between the patented _ two-duct configuration and HD’s single-duct configuration are insubstantial. C. Pair Of Fuel Injectors Mounted In A Fuel Injector And Throttle Body Claim i discloses “a pair of fuel injectors mounted in a fuel injector and throttle body secured to said intake manifold.” The Court has construed this limitation to require that the two fuel injectors be mounted in a body referred to as a “fuel injector and throttle body” and that “the fuel injector and throttle body be secured to the intake manifold.” Claim Constr. Order at 8. The parties disagree as to what type of body qualifies as a “fuel injector and throttle body.” HD asserts that this body is the combination of the fuel injectors and the throttle body; that is, that the limitation is simply an awkwardly worded requirement that the fuel injectors be mounted in the throttle body. Budde asserts that the 56a fuel injectors need not be mounted in the throttle body, and that a “fuel injector and throttle body” is made up of the fuel injector component -- m [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386007_0555%3A1. Public record. Not legal advice.