PUBLIC VERSION
`
`United States International Trade Commission
`Washington, D.C. 20436
`
`In the Matter of
`
`CERTAIN SELF-CLEANING LITTER
`BOXES AND COMPONENTS THEREOF
`
`Investigation No. 337-TA-625
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`COMMISSION OPINION
`
`On April 7, 2009, the Commission issued notice of its final determination of vi olati OIL of
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`.'+",
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`,<
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`section 337 of the Tariff Act of 1930 (19 U.S.c. § 1337) ("section 337"), entry of a limited.;
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`exclusion order and cease and desist orders, and termination of this investigation. This opinion
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`sets forth the reasons for the Commission's determination on the issues it determined to review,
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`and on remedy, the public interest, and bonding.
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`With the modifications discussed below, the Commission has determined to affirm on
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`review the findings of the presiding administrative law judge ("ALl") in his final initial
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`determination ("ill") concerning violation of section 337 by Respondents Lucky Litter, L.L.c.
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`("Lucky Litter") and OurPet's Company ("OurPet's"), the infringement of claim 33 of U.S.
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`Patent No. RE36,847 ("the '847 patent") by both Respondents, contributory infringement by
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`Lucky Litter, and the validity of the challenged claims ofthe '847 patent.
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`The Commission has also determined that the appropriate remedial relief, which is
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`consistent with the public interest, is a limited exclusion order, cease and desist orders against
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`Lucky Litter and OurPet's, and a bond during the Presidential review period in the amount of 100
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`percent of the entered value of the covered products.
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`

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`PUBLIC VERSION
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`I. BACKGROUND
`
`The Commission instituted this investigation on December 28, 2007, based on the
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`complaint of Applica Consumer Products, Inc. ("Applica") and Waters Research Company
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`("Waters"), alleging violations of section 337 in the importation into the United States, the sale
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`for importation, and the sale within the United States after importation of certain self-cleaning
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`litter boxes and components thereof by reason of infringement of various claims of the' 847
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`patent. 72 Fed. Reg. 73884 (Dec. 28,2007); see 73 Fed. Reg. 13566 (Mar. 13,2008) (amending
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`notice). The complaint named Lucky Litter and OurPet's as respondents, as well as Doskocil
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`Manufacturing Co., Inc., which was later terminated from the investigation by settlement in an
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`unreviewed ID (Order 50). See Commission Notice of September 15, 2008. 1
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`Te~hnology and Patent at Issue
`
`The technology at issue concerns self-cleaning cat litter boxes. The' 847 patent, entitled
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`"Automated Self-Cleaning Litter Box For Cats," is directed to improved self-cleaning cat litter
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`boxes and describes a litter box including a comb or rake. JX-l at 1 :59-62. A motor drives the
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`comb or rake through the litter to move any cat waste into a waste receptacle. JX-l at 5:36-57.
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`Various claims (there are 48 in all, 17 of which are independent and 31 dependent) add
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`1 Other pre-hearing IDs summarily determined the issues of the economic prong of the
`domestic industry requirement under section 337, the importation requirement under section 337,
`and the defense of derivation under 35 U.S.C. § 102(f) (Orders 28, 30, and 35, respectively, each
`decided in Complainants' favor). The first of these was reviewed and modified to include an
`order (Order 34) the ALJ had subsequently issued to clarify the reasoning of his original order;
`the latter two were not reviewed. See Commission Notices of August 8 (two notices) & 19,
`2008.
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`2
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`

`

`PUBLIC VERSION
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`limitations such as a sensor for detecting a cat, track members for guiding the comb, and devices
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`for changing between manual operation mode and automated operation mode.
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`The '847 patent describes its improvements over the prior art self-cleaning litter boxes as
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`an improved drive for the rake or comb that can be made responsive to the entry and exit of the
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`cat from the litter box; an improved waste receptacle; and alarms that signal insufficient litter
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`supply or that the waste receptacle is full. JX-1 at 1 :33-39.
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`The '847 patent issued on September 5, 2000, as a reissue of U.S. Patent No. 5,477,812,
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`which had issued on December 26, 1995. Michael Waters is the named inventor and the patent is
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`assigned to his company, Waters, the complainant in this investigation along with the patent's
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`exclusive licensee, Applica.
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`Products at Issue
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`Complainant Applica markets and sells a line of self-cleaning litter boxes under
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`the brand name Littermaid®, including the Littermaid® LM Basic 500 and Elite models that the
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`ALJ found, and no party disputes, practice the invention.
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`The accused products are automated self-cleaning litter boxes. Lucky Litter markets and
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`sells a line of self-cleaning litter boxes under the brand name "ScoopFree." OurPet's markets
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`and sells a line of self-cleaning litter boxes under the brand name "SmartScoop."
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`Final ID
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`On December 1,2008, the ALJ issued his final ID in which he determined that a violation
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`of section 337 has occurred in the importation, sale for importation, or sale after importation of
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`certain self-cleaning litter boxes and components thereof. He found that the ScoopFree and
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`3
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`

`

`PUBLIC VERSION
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`SmartS coop products infringe claim 33 of the '847 patent, and further that the importation and
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`sale of component cartridges by Lucky Litter constitute contributory infringement under 35
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`U.S.c. § 271(c). He found that the other claims asserted against Lucky Litter (claims 27,33, and
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`41-42) and OurPet's (claims 8, 13,24-25,27, and 31-32) were not infringed, and that the
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`allegation of induced infringement against Lucky Litter and OurPet's was not proven. Rejecting
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`Respondents' affirmative defenses, the ALJ also found that the asserted claims of the '847 patent
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`are not invalid, and that the patent is enforceable.
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`Commission Review
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`Lucky Litter and OurPet's, Applica and Waters, and the Commission investigative
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`attorney ("IA") filed petitions (or contingent petitions) for review. Lucky Litter and OurPet's
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`sought review and reversal of the ID's finding of infringement and, on a contingent basis,
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`requested that the Commission find additional bases to support an ultimate finding of no
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`violation of section 337 based on certain of their affirmative defenses.
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`The IA agreed with Respondents (although at times on different grounds) that the ID
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`warranted review and reversal and that there were multiple additional bases upon which the
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`Commission should make an ultimate finding of no violation of section 337.
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`Applica and Waters argued that if the Commission elected to review the ID, it should also
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`review several additional grounds not relied on in the ID that support the ultimate finding that
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`Respondents violated section 337. Complainants also filed a motion to strike a declaration
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`submitted with Lucky Litter's petition and any related text in that petition, which Lucky Litter
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`and the IA opposed.
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`4
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`

`

`PUBLIC VERSION
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`On February 9,2009, the Commission determined to review the ID in part. 74 Fed. Reg.
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`7263 (Feb. 13,2009). The Commission determined to review the ID's construction of the
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`following terms: "comb drive" (asserted claims 8, 13,31-33); "comb drive means" (asserted
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`claims 27, 41-42); "drive means" (asserted claims 24-25); "discharge position adjacent the
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`discharge end wall" (asserted claims 8, 13); "comb ... coupled to the comb drive" (asserted
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`claims 31-33); and "mode selector switch ... moveable between a manual operation position ...
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`and an automatic operation position" (asserted claim 33).2 The Commission determined to
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`review the following corresponding issues: direct and contributory infringement; invalidity due
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`to anticipation; and invalidity due to obviousness.3 The Commission also determined to grant
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`Complainants' motion to strike, and set a schedule for the filing of written submissions on the
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`issues under review, including certain questions posed by the Commission,4 and on remedy, the
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`2 The Commission thus declined to review the other petitioned claim constructions,
`including to "means for selecting" or "mode selector means," "manual operation mode,"
`"automatic operation mode" (claim 27), "automatic operation position" (claim 33), "motor
`mounted on the carriage" (claims 8, 13), "comb path," "track member defining comb path"
`(claim 8), and "moving means" (claim 24).
`
`3 The Commission thus declined to review other petitioned issues such as the ALJ's
`rejection of the affirmative defenses of best mode and inequitable conduct. The ALJ's findings
`and determinations that were not reviewed became the Commission's final determinations under
`Commission rule 21 0.42(h).
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`4 The Commission asked the following questions:
`
`(1)
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`Did the ALJ err in finding that the specification of the '847 patent contains no
`disavowal that limits the claimed comb drive? If the patentee disavowed certain
`drives, what is the correct scope of the disavowal? Does it include, for example,
`worm drives of any configuration, or only the drive disclosed in the Carlisi prior
`art reference, which has a "worm" along the side of the litter box that turns and
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`5
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`

`

`PUBLIC VERSION
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`thereby drives the rake or comb on its path in the litter box?
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`(2) What are the differences or similarities in the patent's use of "comb drive" in
`asserted claim 8, "comb drive means" in asserted claim 27, and "comb drive" in
`asserted claim 3 3?
`
`(3)
`
`Is there a difference in function between the "guide" wheels and "guide" pins
`referenced in the specification in connection with figures 1-3 of the '847 patent
`and the "drive" wheels and "drive" pins referenced in claim 10?
`
`(4) What result should the Commission reach on infringement ifit were to find that
`the '847 patent disavows all worm drives or that it disavows only the Carlisi
`drive?
`
`(5) What result should the Commission reach on infringement ifit were to find that
`the synonyms for "adjacent" cited in the ID at 143-44 incorrectly narrow the
`limitation "discharge position adjacent the discharge end wall" in asserted claim
`8?
`
`(6)
`
`(7)
`
`(8)
`
`(9)
`
`Is the limitation "comb ... coupled to the comb drive" in asserted claims 31-33
`met in OurPet's SmartS coop under a broader construction that includes, as
`Complainants argue, an "indirect" connection? Should the infringement analysis
`that follows from the correct construction of this limitation be different in claim
`31 than it is in claim 33? Did the ID err in finding claim 33 infringed on the one
`hand and, on the other, that the same limitation is not met for purposes of claim
`31?
`
`How does a finding of disavowal of all worm drives, or the Carlisi drive, impact
`the consideration of obviousness under § 103 and anticipation under § 102? Do
`the broader constructions of "discharge position adjacent the discharge end wall"
`and "comb ... coupled to the comb drive" advocated by Complainants impact
`either validity analysis?
`
`Did the ID err in finding that the Strickland prior art reference does not disclose a
`"mode selector switch" to one of ordinary skill in the art?
`
`Please describe and analyze the intrinsic evidence of record that is pertinent to the
`construction of "mode selector switch ... moveable between a manual operation
`position ... and an automatic operation position" of claim 33. Please identify
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`6
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`

`

`PUBLIC VERSION
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`public interest, and bonding. The parties have filed their submissions and reply submissions. No
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`comments were received from others regarding the public interest, remedy or bonding.
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`IV. DISCUSSION
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`1.
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`Standard of Review
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`When, as here, the Commission determines to review an initial determination, its review
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`is conducted de novo. Certain Polyethylene Terephthalate Yarn and Prods. Containing Same,
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`Inv. No. 337-TA-457, Comm'n Op. at 9 (June 18,2002). Upon review, the "Commission has
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`'all the powers which it would have in making the initial determination,' except where the issues
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`are limited on notice or by rule." Certain Flash Memory Circuits and Prods. Containing Same,
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`Inv. No. 337-TA-382, USITC Pub. 3046, Comm'n Op. at 9-10 (July 1997) (quoting Certain
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`Acid-Washed Denim Garments and Accessories, Inv. No. 337-TA-324, Comm'n Op. at 5 (Nov.
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`1992)). Commission practice in this regard is consistent with the Administrative Procedure Act.
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`Certain EPROM, EEPROM, Flash Memory, and Flash Microcontroller Semiconductor Devices
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`and Prods. Containt~g Same, Inv. No. 337-TA-395, Comm'n Op. at 6 (Dec. 11,2000)
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`(EPROM); see also 5 U.S.C. § 557(b).
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`Upon review, "the Commission may affirm, reverse, modify, set aside or remand for
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`further proceedings, in whole or in part, the initial determination of the administrative law judge.
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`record evidence of whether each accused device contains a "mode selector
`switch" which is "moveable between a manual operation position ... and an
`automatic operation position." In addition, please address the relevance of
`Overhead Door Corp. v. Chamberlain Group, Inc., 194 F.3d 1261 (Fed. Cir.
`1999), to the claim construction, infringement and invalidity analyses of the
`"mode selector switch" limitation.
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`7
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`

`

`PUBLIC VERSION
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`The Commission may also make any findings or conclusions that in its judgment are proper
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`based on the record in the proceeding." 19 C.F.R. § 210.45. This rule reflects the fact that the
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`Commission is not an appellate court, but is the body responsible for making the final agency
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`decision. On appeal, only the Commission's final decision is at issue. See EPROM at 6, citing
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`Fischer & Porter Co. v. Int '[ Trade Comm 'n, 831 F.2d 1574, 1576-77 (Fed. Cir. 1987).
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`2.
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`Claim Construction
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`As set forth below, we modify the ALl's construction of "discharge position adjacent the
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`discharge end wall" (asserted claims 8, 13), supply a construction of "comb ... coupled to the
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`comb drive" (asserted claims 31-33), and otherwise affirm the claim construction under review.
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`A.
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`"comb drive"
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`The term appears in asserted claims 8, 13, and 31-33. The ALJ adopted the following
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`construction: "a motor and gear train for driving the comb." ID at 14. In reaching this
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`conclusion, the ALJ found that the patent specification contains no disavowal that limits the
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`claimed comb drive. He found that the reference in the specification to "worm drives" (JX-l col.
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`8:9-12 ("The gear drive connecting motor 55 to shaft 41 is not subject to fouling by the litter,
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`which often includes powdery material that is likely to interfere with operation of other drive
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`mechanisms such as a worm drive.")), read in the context of the entire patent, is "clearly
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`secondary and equivocal at best." ID at 20.
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`Complainants argue that the ALl's claim construction was correct and that the ALJ did
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`not err in finding that the specification contains no disavowal that limits the claimed comb drive.
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`See, e.g., Complainants' Br. at 29,32-69.
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`8
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`

`

`PUBLIC VERSION
`
`Respondents argue that the ALJ erred in finding no disavowal of the claimed "comb
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`drive." In their view, the disavowal extends not simply to any type of worm drive, but to any
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`drive other than as identified in the preferred embodiment of the patent. Thus they argue that the
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`correct construction of "comb drive" is a reversible electric motor mounted on and connected in
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`driving relationship to the shaft through a gear train as found in the preferred embodiment. See,
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`e.g., Respondents' Br. at 6-13; Respondents' Resp. Br. at 9, 11-15.
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`The IA contends that the ALJ erred in finding no disavowal of worm drives. In his view,
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`"comb drive" covers a motor and gear train, but not worm drives because they were disavowed in
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`the specification. In his view, the disavowal covers all worm drives because that is what the
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`patent specifically identified as not being part of the invention. See, e.g., oun Br. at 13-15.
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`We affirm the ALJ's claim construction of "comb drive." The claim language indicates
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`that the "comb drive" is the structure for driving the comb, not all of the structure involved in
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`moving and guiding the comb. Based on the claim language, the ALJ correctly tied the definition
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`to the basic structure that performs a general drive function, at a minimum the motor in
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`combination with a gear train. The ALJ properly declined to read limitations from the
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`specification into the use of the term comb drive. ID at 15-16.
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`The more difficult question is whether the ALJ erred in finding no disavowal of the
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`claimed comb drive in the specification. This is the first question the Commission put to the
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`parties in its notice of review. The parties' positions fall into three categories: no disavowal
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`(Complainants), a disavowal of any drive (including all worm drives) other than that in the
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`preferred embodiment (Respondents), and a disavowal of all worm drives (OUn). No party
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`9
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`

`

`PUBLIC VERSION
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`contends that there is a disavowal limited to the Carlisi drive, noted as prior art in the '847
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`patent, or gear drives subject to fouling by litter during operation.
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`Upon review, we conclude that the ALJ committed no error and affirm the finding of no
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`disavowal. As the ALJ properly determined, claim scope cannot be disavowed unless the
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`disavowal is clear and unequivocal. See Paice LLC v. Toyota Motor Corp., 504 F.3d 1293, 1310
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`(Fed. Cir. 2007). "'[W]ords or expressions of manifest exclusion or 'explicit' disclaimer in the
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`specification are necessary to disavow claim scope." Gillette Co. v. Energizer Holdings, Inc.,
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`405 F.3d 1367, 1374 (Fed. Cir. 2005). See also Home Diagnostics, Inc. v. Lifescan, Inc., 381
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`F.3d 1352, 1358 (Fed. Cir. 2004) ("Absent a clear disavowal or contrary definition in the
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`specification or the prosecution history, the patentee is entitled to the full scope of its claim
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`language.").
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`The cornerstone of the argument for disavowal is the following language found in the
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`specification discussing drawings that depict a certain kind of gear train. The specification
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`states:
`
`The gear drive connecting motor 55 to shaft 41 is not subject to fouling by the litter,
`which often includes powdery material that is likely to interfere with operation of other
`drive mechanisms such as a worm drive.
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`JX-1 at 8:9-12. The language is directed to the preferred embodiment and so finding this
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`sentence to be a disavowal would limit the scope ofthe "comb drive" to the preferred gear drive.
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`The plain language ofthe sentence compares the preferred gear drive to all other drive
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`mechanisms, with the worm drive identified as one example. The evidence in the record,
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`however, is that many types of drive mechanisms were known to persons of ordinary skill in the
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`10
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`

`

`PUBLIC VERSION
`
`art at the time of the invention, including many different kinds of worm drives. Tr. at 322-24;
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`CDX-372. Any alleged disavowal articulated by this sentence would therefore encompass all of
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`these "other drive mechanisms." As a result, the only drive mechanism that is not an "other"
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`drive mechanism within the scope of the purported disavowal would be the preferred gear drive.
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`On its face, therefore, the sentence would not act as a disavowal that is limited to worm
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`drives or to the Carlisi drive because the sentence literally precludes the possibility, and it cannot
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`act as a disavowal of all other drives because that would improperly limit the claimed "comb
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`drive" to the preferred embodiment. The Federal Circuit has repeatedly warned against
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`restricting claims to the preferred embodiment. See, e.g., Ventana Med. Sys., Inc. v. Biogenex
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`Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006); Johnson Worldwide Assoc., Inc. v. Zebco, 175
`
`F.3d 985,992 (Fed. Cir. 1999). Even in the Honeywell case cited by Respondents in which a
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`disavowal was found, the Court pointed out that the disavowal did not restrict the claims to the
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`preferred embodiment.5 Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1320 (Fed. Cir.
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`2006).
`
`The sentence concerning gear drives instead describes an advantage of the preferred gear
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`5 leU Medical, Inc. v. Alaris Medical Systems, Inc.,
`F.3d _,2009 WL 635630 (Fed.
`Cir. 2009), cited to us by Respondents on March 27,2009, is not to the contrary. First, the case
`does not involve an alleged disavowal. Second, the specification of the patent at issue
`"repeatedly and uniformly" described the claim term "spike" as a "pointed instrument for the
`purpose of piecing a seal inside the valve." The Court affirmed the district court's construction
`of spike to be "an elongated structure having a pointed tip for piercing the seal, which tip may be
`sharp or slightly rounded." !d. at *2-*4. The '847 patent specification, on the other hand,
`nowhere "repeatedly" or "uniformly" describes "comb drive" as a structure that excludes all
`other drive mechanisms including a worm drive. In fact, it does not even state this a single time.
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`11
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`

`

`PUBLIC VERSION
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`drive over other known drive mechanisms, including worm drives. It conveys that the preferred
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`gear drive is not subject to fouling by litter, whereas litter may interfere with the operation of
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`other drive mechanisms, such as worm drives. However, such a statement merely illustrates this
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`embodiment's identification as the preferred embodiment, and does not clearly disavow all gear
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`drives other than that in the preferred embodiment. Cf Gillette Co. v. Energizer Holdings, Inc.,
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`405 F.3d at 1371 ("[a] patentee typically claims broadly enough to cover less preferred
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`embodiments as well as more preferred embodiments, precisely to block competitors from
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`marketing less than optimal versions ofthe claimed invention"); id. at 1374 (while four-bladed
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`razors are a less preferred embodiment they are not excluded from the claim scope despite
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`consistent reference to a three-bladed razor and criticism of other razor blade configurations with
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`more than two blades); N Telecom Ltd. v. Samsung Elec. Co., 215 F.3d 1281, 1292-93 (Fed. Cir.
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`2000) (while patent expressed a clear preference for reducing or eliminating "ion bombardment,"
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`references to "ion bombardment" tended to evidence inclusion of that technique rather than
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`exclusion).
`
`In addition, the preferred gear drive sentence does not specifically identify the Carlisi
`
`prior art, or any other prior art reference for that matter. Nor does it even refer to the "comb
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`drive," which is the limitation whose scope is at issue. Cf Verizon Servs. Corp. v. Vonage
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`Holdings Corp., 503 F.3d 1295, 1303 (Fed. Cir. 2007) (rejecting an invitation to limit a claim
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`term based on a "discussion ofthe 'present invention'" where the actual claim term was not
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`specifically referenced).
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`Finally, Respondents' attempt to link the preferred gear drive sentence in the specification
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`12
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`

`

`PUBLIC VERSION
`
`with other references in the patent to improvements of the "present invention" over the prior art
`
`is too attenuated and the statements cited too general to demonstrate the patentee's manifest
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`exclusion of certain gear drives. For example, the third paragraph in the background identifies
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`improvements of the "present invention" over the prior art as follows:
`
`The present invention provides effective improvement for the rake drive of
`the Carlisi device so that movement of the comb or rake through the litter
`can be made responsive to entry and exit of the cat from the litter box ....
`The invention also provides for improvements in the disposal receptacle,
`which may also serve as a container for new litter supply. Alarms are also
`provided for an insufficient litter supply and a full disposal receptacle.
`
`JX-l at col. 1 :47-56. There is no mention in these statements of a disavowal of certain gear
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`drives and, where Carlisi is specifically called out, it is in reference to the '847 patent invention's
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`responsiveness to cat exit, not the type of gears utilized in its drive system.
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`Similarly, the summary section contains four paragraphs identifying obj ects of the
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`invention. The first, the "principal" object, is identified as an improved drive that is "directly
`
`responsive to the exit of a cat from the litter box." JX-l at col. 1 :59-62. The second paragraph
`
`refers to the improvement that the drive does not operate on a periodical basis so that there is no
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`substantial possibility that the comb mechanism will carry out a cleaning operation while a cat is
`
`present in the litter box. JX-l at col. 1 :63-2:2. The third paragraph states as follows:
`
`Another object ofthe present invention is to provide a new and improved
`drive for an automated self-cleaning cat litter box that is simple and
`economical in construction and that can afford an extended operating life,
`requiring little or no attention apart from battery replacement.
`
`JX-l at col. 2:3-7.
`
`While this language tracks language that appears in connection with the preferred gear
`
`13
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`

`

`PUBLIC VERSION
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`drive sentence appearing later in the specification, it fails to support a disclaimer. JX-l at col.
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`8:14-17. To the contrary, its generality and lack of any criticism of the gear drive used in Carlisi
`
`or any other prior art undermines Respondents' argument that the sentence that later refers to the
`
`gear drive of the preferred embodiment was intended to limit the invention to the preferred
`
`embodiment and operate as a complete surrender of known drive mechanisms. There is similarly
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`no support for finding that the specification supports a more limited disclaimer that operates to
`
`exclude all worm drives, as the IA contends. The most that the preferred gear drive sentence
`
`could be read for is that the claimed comb drive excludes gear drives that are exposed to fouling
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`by litter. Fouling by litter, after all, is the criticism in the preferred gear drive sentence, and
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`glossing over it robs the provision of meaning.
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`We determine that the ALJ applied the proper legal standard and correctly concluded that
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`there is no disavowal. Accordingly, we affirm his construction of the term "comb drive."
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`B.
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`"comb drive means"
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`The term appears in asserted claim 27, 41 and 42. The ALJ adopted the following
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`construction: the function is "driving the comb between the storage position and the discharge
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`position;" the structure is "a reversible electric motor 55 mounted on and connected in driving
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`relationship to the shaft 41 and the gear train that connects the motor 55 to the shaft 41" plus any
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`equivalents ofthat structure. ID at 23.
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`Complainants argue that this term should be construed the same as "comb drive" - a
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`motor and a gear train. They contend that the term is not a means-plus-function limitation under
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`§ 112, ~ 6. They argue that even if § 112, ~ 6 were to apply, the proper construction would be
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`14
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`

`

`PUBLIC VERSION
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`essentially the same, the motor and gear train plus equivalents thereof. See, e.g., Complainants'
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`Br. at 70-77.
`
`Respondents contend that this is a means-pIus-function limitation under § 112, ~ 6 that is
`
`properly interpreted by looking to the specification. In their view, it should be construed as a
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`reversible motor mounted on and connected in driving relationship to the shaft and gear train,
`
`plus, at a minimum, guide wheels and guide pins. See, e.g., Respondents' Br. at 16-18;
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`Respondents' Resp. Br. at 9-10, 16-21. The IA goes further, contending that this means-plus(cid:173)
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`function limitation also requires as part of the construction the tracks with apertures, and the
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`guide wheels and pins. See, e.g., oun Br. at 14.
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`We conclude that the ALJ properly construed the disputed limitation as a means-plus(cid:173)
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`function claim under 35 U.S.C. § 112, ~6. The patentee's use of the word "means," as the ALJ
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`held, creates a presumption that the element is a means-plus-function element under § 112, ~6.
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`See, e.g., Envirco Corp. v. Clestra Cleanroom, Inc, 209 F.3d 1360, 1364 (Fed. Cir. 2000). We
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`agree with the ALJ that Complainants have not rebutted that presumption. See, e.g., Sage Prods.,
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`Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427-28 (Fed. Cir. 1997). The claim language does
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`not identify sufficient structure to overcome the presumption. Complainants' own expert
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`admitted as much on cross-examination, stating in relation to defining "comb drive" that it is
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`necessary to look at the specification to understand it. See Tr. at 285 (Q. "So is it necessary to
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`look at the specification to understand what the comb drive is?" A. "To me that is necessary, for
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`one of ordinary skill in the art, they would have to look back at the spec to understand the
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`ambiguity here to correct that."). Moreover, Complainants' argument that the term "comb drive
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`15
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`PUBLIC VERSION
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`means" should be equated with "comb drive" ignores the patentee's use of very different
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`terminology and his purposeful functional claiming. The patentee refers to comb drive "means"
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`no fewer than three times in claim 27.
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`Construction of a limitation in means-plus-function form, as found here, requires the
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`court to identify first the function of the means-plus-function limitation and, second, the
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`corresponding structure in the specification necessary to perform that function. See, e.g., BBA
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`Nonwoven Simpsonville, Inc. v. Superior Nonwovens, LLC, 303 F.3d 1332, 1343-44 (Fed. Cir.
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`2002). In the event the court is unable to elucidate a corresponding structure from the
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`specification or claim in a means-plus-function format, that claim fails for indefiniteness. See,
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`e.g., Aristocrat Techs. Austl. PTY Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1338 (Fed. Cir. 2008).
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`The ALJ properly identified the function here: "driving the comb between the storage
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`position and the discharge position." JX-1 at 13:28-29. Turning to what is specifically disclosed
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`in the specification, which the statutory doctrine requires, the ALJ found that the corresponding
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`structure is all elements or equivalents of the following description: "a reversible electric motor
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`55 mounted on and connected in driving relationship to the shaft 41 and the gear train that
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`connects the motor 55 to the shaft 41.,,6 ID at 23. Had the patentee not wished to include this
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`6 Specifically, the specification states that:
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`The improved self-cleaning cat litter box 20, FIGS. 1-3, includes a comb drive
`that comprises a reversible electric motor 55 mounted on and connected in driving
`relationship to the shaft 41 that supports comb 43; the final gear 57 of the gear
`train that connects motor 55 to shaft 41 is the only gear that appears in the
`drawings, FIGS. 1-3.
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`16
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`PUBLIC VERSION
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`structure within the claim limitations, he could have elected not to use the functional claiming.
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`Instead, he elected to claim by function. We therefore find that Complainants' allegation of error
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`is not demonstrated.
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`We also find that the ALl's claim construction is not too broad for failure to include the
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`various additional items the Respondents and IA propose. All are referred to in the specification,
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`but were rejected by the ALI as improperly importing limitations into the claim because they are
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`unnecessary to drive the comb. He finds that they are part ofthe guidance system and provide no
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`driving force to the comb. ID at 23; see also id. at 15-16 (differentiating between the two
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`functions). That finding appears well-supported by the claim language and specification
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`language, as well as expert testimony the ALI appears to have credited at least in part,
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`differentiating between drive and guide functions in the specified system. We note, however,
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`that the patent itself uses "drive" or "guide" to refer to the wheels with pins that travel on the
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`track. In un-asserted claim 10, the wheels are referred to as "drive wheels," and the pins are
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`referred to as "drive pins." IX-l at 10:56-57, 59-60.7 The parties were asked to comment on
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`whether these wheels performed different functions. 8 We agree with Complainants that even if
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`IX-l at 3:31-36. Per the specification, the shaft is clearly included in the corresponding structure
`for performing the identified function of driving the comb between a storage position and
`discharge position.
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`7 The abstract also refers to "drive wheels": "In the improved construction the comb path
`refers includes multi-perforate track members on opposite sides of the litter chamber; those
`tracks are engaged by rotatable drive wheels connected to the comb."
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`8 Complainants responded that the drive wheels and guide wheels are presumed to have
`different functions, but identified none. They also argued that, in any event, there is no evidence
`that the guide wheels or "drive wheels" supply