Friday, May 02, 2014

GE Lighting v. AgiLight: introduced evidence becomes adverse to the proponent [ however, it was AgiLight’s own expert who provided the cross-sectional images of the AgiLight devices ]

The case GE Lighting v. AgiLight involved issues of claim construction at the summary judgment stage.

One learns at classes on patent law not to refer to one embodiment as "the invention". Text in the case includes:

We also have found disclaimer when the
patent repeatedly disparaged an embodiment as “antiquated,”
having “inherent inadequacies,” and then detailed
the “deficiencies [that] make it difficult” to use.
Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC,
677 F.3d 1361, 1372 (Fed. Cir. 2012). Likewise, we have
used disclaimer to limit a claim element to a feature of
the preferred embodiment when the specification described
that feature as a “very important feature . . . in an
aspect of the present invention,” and disparaged alternatives
to that feature. Inpro II Licensing, S.A.R.L. v. TMobile
USA Inc., 450 F.3d 1350, 1354–55 (Fed. Cir. 2008).
Such circumstances are not present in this case. The
specifications consistently refer to the IDC connector of
Figure 6 merely as a “depicted embodiment.” See, e.g.,
’140 patent col. 4 ll. 5–7, 16–17. They do not describe the
depicted IDC connector—or any of the various limitations
set forth by the district court—as the present invention,
as essential, or as important.

As to excluding the preferred embodiment in a claim construction

We normally do not construe claims in a manner that
would exclude the preferred embodiment, especially
where it is the only disclosed embodiment. See MBO
Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323,
1333 (Fed. Cir. 2007). In particular, “where claims can
reasonably [be] interpreted to include a specific embodiment,
it is incorrect to construe the claims to exclude that
embodiment, absent probative evidence on the contrary.”
Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir.
2008). No such evidence exists in this case that would
require us to construe “substantially ellipsoidal inner
profile” in a manner that would exclude the Figure 7
embodiment. There are no statements during prosecution
or in the specification that indicate the patentee’s intent
to limit his claim to an entire inner profile that is substantially
ellipsoidal. And the specification makes clear
that the patentee considered Figure 7 to have an “ellipsoidal
inner profile.” We conclude that district court erred
when it required the entire inner profile to be substantially
ellipsoidal. The “substantially ellipsoidal inner profile”
limitation can be met if a portion of the inner profile is
substantially ellipsoidal determined in accordance with
the stipulation.

As to shooting oneself in the foot

We agree with AgiLight that attorney argument,
alone, may not create a material question of fact regarding
technical evidence. Here, however, it was AgiLight’s
own expert who provided the cross-sectional images of the
AgiLight devices. Those images are evidence.
attorney merely placed an image of an undisputedly
substantially ellipsoidal inner profile over AgiLight’s
cross-sectional images. These cross-sectional images
point to a genuine dispute as to whether AgiLight’s accused
devices include a substantially ellipsoidal inner
profile. We thus reverse the district court’s grant of
summary judgment with regard to the ’896 patent and
remand. (…)

For similar reasons, we find that the drawings of the
accused products point to a genuine factual dispute as to
whether the AgiLight structure’s outer profile is generally
spherical. Again, the cross-sectional images came from
AgiLight’s own expert and are themselves evidence. GE’s
attorney merely overlaid an undisputedly circular image
over AgiLight’s expert’s cross section.

The outcome

We affirm the grant of summary judgment with regard
to the ’055 patent. We reverse the grant of summary
judgment with regard to the ’140, ’771 and ’896 patents
and remand.


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