## Facts

- Odetics owned U.S. Patent No. 4,779,151 covering an automated tape storage library using a robot and a claimed “rotary means” that rotates storage bins around an axis to present a selected cassette for retrieval.
- Storage Technology Corporation (STK) made and supplied accused automated storage library systems using rotating bin arrays.
- In STK’s system, cam followers on bin arrays interact with cams that apply force to rotate the arrays about a rod/axis.
- The disputed claim limitation was drafted as a means-plus-function element under 35 U.S.C. § 112 ¶ 6, requiring comparison between the patent’s disclosed “rotary means” structure and the accused structure.
- At trial, Odetics presented expert testimony that STK’s cam/cam-follower mechanism was structurally equivalent to the disclosed rotary structure because it performed the identical rotary function in substantially the same way.
- A jury found literal infringement and willfulness and awarded $70.6 million in damages.
- The district court initially denied JMOL but later reconsidered sua sponte, granted JMOL of no infringement based on its reading of Federal Circuit precedent, and entered judgment for STK.
- The district court also partially denied a permanent injunction (citing laches for certain pre-complaint products), limited certain time periods relevant to willfulness, and denied enhanced damages and attorneys’ fees.
- STK cross-appealed, including on whether a § 102(g) invalidity defense was barred by a prior appellate mandate and on certain evidentiary exclusions.

## Issues

1. Whether the district court applied an incorrect legal standard for structural equivalence under 35 U.S.C. § 112 ¶ 6 when it granted JMOL of noninfringement.
2. Whether substantial evidence supported the jury’s finding that the accused structure was equivalent to the disclosed “rotary means” structure for purposes of literal infringement.
3. Whether the district court abused its discretion in partially denying a permanent injunction based on laches as to certain pre-complaint infringing products.
4. Whether the district court abused its discretion in denying enhanced damages and attorneys’ fees despite a willfulness verdict.
5. Whether the district court properly treated STK’s § 102(g) validity defense as barred by the prior appellate mandate and properly excluded challenged evidence.

## Decision

- The Federal Circuit reversed the JMOL of noninfringement and ordered reinstatement of the jury’s literal infringement verdict.
- The court held the district court misread precedent as requiring a rigid component-by-component comparison for § 112 ¶ 6 structural equivalence.
- The court concluded substantial evidence supported the jury’s equivalence finding, and JMOL improperly reweighed expert testimony and credibility determinations reserved for the jury.
- The court affirmed the partial denial of a permanent injunction, finding no abuse of discretion in applying laches to limit injunctive relief as to certain pre-complaint products.
- The court affirmed denial of enhanced damages and attorneys’ fees, emphasizing their discretionary nature even after a willfulness finding.
- The court affirmed the district court’s mandate interpretation barring the § 102(g) defense and affirmed the challenged evidentiary rulings.

## Legal Principles

- For a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, literal infringement requires (i) identical function and (ii) structure in the accused device that is equivalent to the structure disclosed in the specification.
- Structural equivalence under § 112 ¶ 6 asks whether differences between accused and disclosed structures are insubstantial from the viewpoint of a person of ordinary skill in the art, in light of the way the disclosed structure performs the claimed function.
- § 112 ¶ 6 equivalence does not impose a rigid, element-by-element or component-by-component identity requirement; the inquiry is tied to the overall structure that performs the claimed function.
- JMOL is improper where substantial evidence supports the jury’s infringement finding; weighing competing expert testimony and assessing credibility are jury functions.
- Permanent injunctions, enhanced damages, and attorneys’ fees are equitable or discretionary remedies; doctrines such as laches and the trial court’s fact-bound remedial analysis can limit relief even after a willfulness verdict.
- The mandate rule and law-of-the-case doctrine bar relitigation of matters within the scope of a prior appellate mandate, and evidentiary rulings are reviewed for abuse of discretion.

## Conclusion

The Federal Circuit reinstated the jury’s literal infringement verdict, clarifying that § 112 ¶ 6 structural equivalence turns on insubstantial differences and does not require component-by-component matching, while affirming the trial court’s discretionary limits on injunctive and enhanced remedies and its mandate-based preclusion of a § 102(g) defense.


Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259 (Fed. Cir. 1999)