CAFC vacates decision of Garrett Brown, DNJ
The outcome of Craig Thorner v. Sony, et al.:
Craig Thorner and Virtual Reality Feedback Corporation (Appellants, collectively) accused Sony Computer Entertainment America LLC and a number of other Sony entities (Sony, collectively) of infringing claims of U.S. patent no. 6,422,941 (’941 patent) relating to a tactile feedback system for computer video games. The district court construed disputed claim terms and the parties stipulated to a judgment of noninfringement. Because the district court improperly limited the term “attached to said pad” to mean attachment only to an external surface and erred in its construction of the term “flexible”, we vacate and remand.
Of being one's own lexicographer:
To act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must “clearly express an intent” to redefine the term. Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); see also Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347-48 (Fed. Cir. 2009). “[T]he inventor’s written description of the invention, for example, is relevant and controlling insofar as it provides clear lexicography . . .” C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (emphasis added). For example, in 3M Innovative Properties Co. v. Avery Dennison Corp., we held that the patentee acted as its own lexicographer when the specification stated: “‘Multiple embossed’ means two or more embossing patterns are superimposed on the web to create a complex pattern of differing depths of embossing.” 350 F.3d 1365, 1369, 1371 (Fed. Cir. 2004).
Of disavowal:
The standard for disavowal of claim scope is similarly exacting. “Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001). “The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restric- tion, representing a clear disavowal of claim scope.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002); see also Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“Absent a clear disavowal in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language.”). For example, in Scimed, the patentee described two different types of catheters in the prior art, those with dual lumens (side-by-side) and those with coaxial lumens. 242 F.3d at 1339. In discussing the prior art, the patentee disparaged the dual lumen configuration as larger than necessary and less pliable than the coaxial type. Id. at 1342.
AND
Mere criticism of a particular embodiment encom- passed in the plain meaning of a claim term is not suffi- cient to rise to the level of clear disavowal. Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (holding that even a direct criticism of a particular technique did not rise to the level of clear disavowal). In Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., we explained that even where a particular structure makes it “particularly difficult” to obtain certain benefits of the claimed invention, this does not rise to the level of disavowal of the structure. 620 F.3d 1305, 1315 (Fed. Cir. 2010). It is likewise not enough that the only embodi- ments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specifica- tion into claims; we do not redefine words. Only the patentee can do that. To constitute disclaimer, there must be a clear and unmistakable disclaimer.
As to the meaning of "attached" -->
Our case law is clear, claim terms must be given their plain and ordinary meaning to one of skill in the art. Phillips, 415 F.3d at 1316. The plain meaning of the term “attached” encompasses either an external or internal attachment. We must decide whether the patentee has redefined this term to mean only attachment to an exter- nal surface. As Sony argues, the specification repeatedly uses the term “attached” in reference to embodiments where the actuators are “attached to [an] outer side.” ’941 patent col.33 ll.40-41. In fact, the specification never uses the word “attached” when referring to an actuator located on the interior of a controller. We hold that this does not rise to the level of either lexicography or disavowal. Both exceptions require a clear and explicit statement by the patentee. CCS Fitness, 288 F.3d at 1366; Teleflex, 299 F.3d at 1325. It is not enough that the patentee used the term when referencing an attachment to an outer surface in each embodiment. See Kara Tech., 582 F.3d at 1347- 48.
A district court judge who was "hands on"-->
Sony responds that although the specification uses the term to refer to a “semi-rigid” structure, that struc- ture is made out of foam in every embodiment. It argues that foam is capable of being noticeably flexed with ease and thus a rigid, barely bendable material should not be considered “flexible.” Sony also points to portions of the Markman hearing where the district court judge inspected one of the accused hard plastic controllers. The judge noted that the controller was rigid and “[i]f I try to flex this thing, I think that you’re going to see it snap.” J.A. 523-24.
We agree with the appellants that the district court improperly limited the term. Neither the claims nor the specification requires the “flexible pad” to be noticeably flexed with ease. The specification says only that the flexible pad must be a semi-rigid structure. The task of determining the degree of flexibility, the degree of rigidity that amounts to “semi-rigid,” is part of the infringement analysis, not part of the claim construction. The district court is of course free on summary judgment to decide that there is no genuine issue of material fact that the accused products in this case do not meet the plain and ordinary meaning of the term “flexible.” We do not mean to suggest that summary judgment is improper in this case, only that claim construction is the wrong venue for this determination.
**Note that the case caption included:
GREGORY S. GEWIRTZ, LERNER DAVID LITTENBERG KRUMHOLTZ & MENTLIK, LLP, LARRY C. RUSS, MARC A. FENSTER, AND RUSS AUGUST & KABAT, Defendants.
_____
Craig Thorner and Virtual Reality Feedback Corporation (Appellants, collectively) accused Sony Computer Entertainment America LLC and a number of other Sony entities (Sony, collectively) of infringing claims of U.S. patent no. 6,422,941 (’941 patent) relating to a tactile feedback system for computer video games. The district court construed disputed claim terms and the parties stipulated to a judgment of noninfringement. Because the district court improperly limited the term “attached to said pad” to mean attachment only to an external surface and erred in its construction of the term “flexible”, we vacate and remand.
Of being one's own lexicographer:
To act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must “clearly express an intent” to redefine the term. Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008); see also Kara Tech. Inc. v. Stamps.com, 582 F.3d 1341, 1347-48 (Fed. Cir. 2009). “[T]he inventor’s written description of the invention, for example, is relevant and controlling insofar as it provides clear lexicography . . .” C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (emphasis added). For example, in 3M Innovative Properties Co. v. Avery Dennison Corp., we held that the patentee acted as its own lexicographer when the specification stated: “‘Multiple embossed’ means two or more embossing patterns are superimposed on the web to create a complex pattern of differing depths of embossing.” 350 F.3d 1365, 1369, 1371 (Fed. Cir. 2004).
Of disavowal:
The standard for disavowal of claim scope is similarly exacting. “Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001). “The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restric- tion, representing a clear disavowal of claim scope.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002); see also Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“Absent a clear disavowal in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language.”). For example, in Scimed, the patentee described two different types of catheters in the prior art, those with dual lumens (side-by-side) and those with coaxial lumens. 242 F.3d at 1339. In discussing the prior art, the patentee disparaged the dual lumen configuration as larger than necessary and less pliable than the coaxial type. Id. at 1342.
AND
Mere criticism of a particular embodiment encom- passed in the plain meaning of a claim term is not suffi- cient to rise to the level of clear disavowal. Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (holding that even a direct criticism of a particular technique did not rise to the level of clear disavowal). In Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., we explained that even where a particular structure makes it “particularly difficult” to obtain certain benefits of the claimed invention, this does not rise to the level of disavowal of the structure. 620 F.3d 1305, 1315 (Fed. Cir. 2010). It is likewise not enough that the only embodi- ments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specifica- tion into claims; we do not redefine words. Only the patentee can do that. To constitute disclaimer, there must be a clear and unmistakable disclaimer.
As to the meaning of "attached" -->
Our case law is clear, claim terms must be given their plain and ordinary meaning to one of skill in the art. Phillips, 415 F.3d at 1316. The plain meaning of the term “attached” encompasses either an external or internal attachment. We must decide whether the patentee has redefined this term to mean only attachment to an exter- nal surface. As Sony argues, the specification repeatedly uses the term “attached” in reference to embodiments where the actuators are “attached to [an] outer side.” ’941 patent col.33 ll.40-41. In fact, the specification never uses the word “attached” when referring to an actuator located on the interior of a controller. We hold that this does not rise to the level of either lexicography or disavowal. Both exceptions require a clear and explicit statement by the patentee. CCS Fitness, 288 F.3d at 1366; Teleflex, 299 F.3d at 1325. It is not enough that the patentee used the term when referencing an attachment to an outer surface in each embodiment. See Kara Tech., 582 F.3d at 1347- 48.
A district court judge who was "hands on"-->
Sony responds that although the specification uses the term to refer to a “semi-rigid” structure, that struc- ture is made out of foam in every embodiment. It argues that foam is capable of being noticeably flexed with ease and thus a rigid, barely bendable material should not be considered “flexible.” Sony also points to portions of the Markman hearing where the district court judge inspected one of the accused hard plastic controllers. The judge noted that the controller was rigid and “[i]f I try to flex this thing, I think that you’re going to see it snap.” J.A. 523-24.
We agree with the appellants that the district court improperly limited the term. Neither the claims nor the specification requires the “flexible pad” to be noticeably flexed with ease. The specification says only that the flexible pad must be a semi-rigid structure. The task of determining the degree of flexibility, the degree of rigidity that amounts to “semi-rigid,” is part of the infringement analysis, not part of the claim construction. The district court is of course free on summary judgment to decide that there is no genuine issue of material fact that the accused products in this case do not meet the plain and ordinary meaning of the term “flexible.” We do not mean to suggest that summary judgment is improper in this case, only that claim construction is the wrong venue for this determination.
**Note that the case caption included:
GREGORY S. GEWIRTZ, LERNER DAVID LITTENBERG KRUMHOLTZ & MENTLIK, LLP, LARRY C. RUSS, MARC A. FENSTER, AND RUSS AUGUST & KABAT, Defendants.
_____
posted by Lawrence B. Ebert at 12:42 AM
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