GENUINE ENABLING TECHNOLOGY LLC v. SONY GROUP CORPORATION

Authored by: Jeremy J. Gustrowsky

When a patent claim uses “means-plus-function” language, it doesn’t describe a specific physical structure. Instead, it describes a *function*, and the patent’s specification fills in the blanks by identifying the structure that performs that function. To prove infringement, the patent owner must show that the accused product contains either the identical structure or an equivalent one. In this case, Genuine Enabling Technology LLC (GET) sued Sony over U.S. Patent No. 6,219,730, alleging that PlayStation 3 and 4 controllers and consoles infringed claims directed to combining data streams from different input devices. The Federal Circuit affirmed summary judgment of noninfringement, finding that GET’s expert took an impermissible shortcut in his equivalence analysis.

The case revolved around an “encoding means for synchronizing” two data streams — one from user inputs like buttons and another from sensors like accelerometers. The district court construed this as a means-plus-function limitation and identified the corresponding structure as “logic block 34” in the patent’s Figure 4A — a detailed logic circuit containing multiple components, including a data selector, clock generator, oscillator, and codec. To prove infringement, GET needed to show that the Bluetooth module inside Sony’s controllers was structurally equivalent to the entirety of logic block 34.

The problem was that GET’s expert, Dr. Fernald, progressively whittled down his analysis. His original report identified three components — the data selector, codec, and bit-rate clock — as performing the synchronization function. But during a Daubert hearing, GET narrowed this further, arguing that the “way” block 34 synchronizes data was simply by clocking both streams to a common bit-rate clock. This stripped away most of block 34’s components without any explanation for why those other elements could be ignored. Making matters worse, GET never obtained schematics of the Bluetooth module inside the accused PlayStation controllers, leaving the accused structure as essentially a “black box.”

The Federal Circuit agreed with the district court that this approach was fatally incomplete. Citing its earlier decision in Traxcell Technologies, the court explained that when a patent owner chooses to focus its equivalence analysis on only part of the identified structure, it must meaningfully explain why the omitted elements can be disregarded. GET never did so — and Dr. Fernald even acknowledged at points that the data selector and codec “play roles” in synchronization, undermining the later claim that only the bit-rate clock mattered. The court also rejected GET’s broader theory that all logic circuits performing the same operation are automatically equivalent, noting this would collapse the well-established “function-way-result” test into a mere “function-result” test.

The takeaway for patent owners asserting means-plus-function claims is clear: You cannot cherry-pick favorable components from a detailed disclosed structure while ignoring the rest. If the specification identifies a complex structure as performing the claimed function, your infringement analysis must account for that full structure — or at least offer a well-supported explanation for why certain elements are unimportant. Failing to do so can be grounds for both excluding expert testimony and losing on summary judgment.