Friday, March 21, 2008

The CAFC addresses the meaning of "unmistakable disavowal"


CDSC appeals the district court’s construction of the portable computer and all
connections limitations, its grant of summary judgment on both limitations, and its denial
of CDSC’s Rule 56(f) motion. Defendants appeal the district court’s denial of the motion
for attorney fees.

As to claim construction, the CAFC cited to both Vitronics and Phillips:

The words of the claims define the scope of the patented invention. Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “It is well-settled that,
in interpreting an asserted claim, the court should look first to the intrinsic evidence of
record, i.e., the patent itself, including the claims, the specification and, if in evidence,
the prosecution history.” Id. Claim terms are generally given their ordinary and
customary meaning, which is “the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the invention.” Phillips v. AWH Corp.,
415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (citations omitted). However, the
person of ordinary skill is deemed to read the claim terms in the context of the entire
patent, including the specification and prosecution history. Id.

The topic of "unmistakable disavowal" came up:

Statements made during prosecution may also affect the scope of the claims.
Rexnord, 274 F.3d at 1343. Specifically, “a patentee may limit the meaning of a claim
term by making a clear and unmistakable disavowal of scope during prosecution.”
Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006).

The court got into the details of disavowal:

Nonetheless a disavowal, if clear and unambiguous, can lie in
a single distinction among many. See Andersen Corp. v. Fiber Composites, LLC, 474
F.3d 1361, 1374 (Fed. Cir. 2007); Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1362
(Fed. Cir. 2005) (“[W]e have not allowed [patentees] to assert that claims should be
interpreted as if they had surrendered only what they had to.”). Moreover, the
examiner’s citation of the single connection limitation in the reasons for allowability does
not erase the applicants’ clear disavowal of laptops. Cf. Laitram Corp. v. Morehouse
Indus., Inc., 143 F.3d 1456, 1462 (Fed. Cir. 1998) (finding prosecution statements
relevant to claim construction although the examiner did not rely on them). Of course,
a multitude of distinctions may serve to make any single distinction in the group less
clear and unmistakable as the point of distinction over prior art and as a critical defining
point for the invention as a whole.

The topic of limitations from the preamble came up:

As a threshold matter, neither party disputes that the terms “portable computer”
and “portable computer microprocessing system,” as used in the preambles of the
asserted claims, limit their scope. “In considering whether a preamble limits a claim, the
preamble is analyzed to ascertain whether it states a necessary and defining aspect of
the invention, or is simply an introduction to the general field of the claim.” On Demand
Mach. Corp. v. Ingram Indus., 442 F.3d 1331, 1343 (Fed. Cir. 2006).

The 56(f) issue was NOT reached:

Because Defendants’ laptops and docking stations do not infringe the portable
computer limitation, this court does not reach the issues related to the all connections
limitation, including the district court’s denial of CDSC’s Rule 56(f) motion.


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