RE: Ampex versus Mitsubishi (part 2)
As somebody painstakingly explained to me based on an exceptional piece of analysis done by an Ampex shareholder well versed in these matters, Ampex essentially had to prove that Mitsubishi used the single clock scheme outlined in this claim to provide the PIP feature of its television sets while Mitsubishi's defense was built on a two-clock scheme.
More specifically, the jury had to first, find literal infringement in elements No. 2, 3, 4, and 5 of Claim No. 83 of the '027 patent. If unable to do so on that basis they then had to go on to decide infringment under the doctrine of equivalents.
techstocks.com
The Jury found literal infringement in element no. 2. It then went on to find infringement under the doctrine of equivalents in element nos. 3, 4, 5. Consequently, the jury awarded $8.1 million in damages to Ampex based on 3/4 of 1% of $1.1 billion worth of infringing TV sets.
Mitsubishi then went on to use the fact that the Jury indicated that they found infringment under the doctrine of equivalents in Element No. 3 of the Patent in the Jury Questionnaire to unravel the entire jury verdict on the basis of Prosecution History Estoppel.
This was the Jury Instruction re: Element No. 3 of Claim No. 83.
Has Ampex proven by a preponderance of the evidence that Mitsubishi's PIP televisions listed in attached Exhibit A contain the equivalent of Element Three of claim 83 of the '027 Patent: means for effecting retrieval of the stored portions of the information signal from addressed storage locations at times determined by said clock signal?
The Jury answered YES under the doctrine of equivalents. Mitsu argued Prosecution History Estoppel. Judge Rodney McKelvie ruled in favor of Mitsu and threw out the jury verdict. Ampex moved for a new trial. Judge McKelvie denied the motion. Thus, the appeal making its way to the CAFC where....
"... Additional pronouncements can be expected from the Federal Circuit and the Supreme Court, as litigants struggle to define a workable equivalence analysis and clash over the application of prosecution history and prior art estoppel."
Gus
References:
What is the "doctrine of equivalents?"
What is Prosecution History Estoppel?
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Who is Judge Rodney McKelvie?
ljx.com
As with all other members of the federal bench who hear patent cases, Judge McKelvie has had to make some adjustments in the light of last year's U.S. Supreme Court ruling that left judges, rather than juries, with the burden of construing the boundaries of a patent claim. Markman v. Westview Instruments, 95-26. "I have tons of Markman issues," he says. "They are very difficult and complex, and I am still trying to figure it out." |
