Monday, July 14, 2014

Apple wins in Golden Bridge case

Apple, represented by Cooley, prevailed.

Golden Bridge Technology, Inc. (GBT) appeals from
the district court’s grant of summary judgment that Apple
Inc. (Apple) does not infringe the asserted claims of U.S.
Patent Nos. 6,574,267 (the ’267 patent) and 7,359,427 (the
’427 patent). We affirm.

Some legal preface:

We review claim construction de novo. Lighting Ballast
Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d
1272, 1276–77 (Fed. Cir. 2014) (en banc). Claim terms
are generally given their plain and ordinary meanings to
one of skill in the art when read in the context of the
specification and prosecution history. See Phillips v.
AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en
banc). “There are only two exceptions to this general rule:
1) when a patentee sets out a definition and acts as his
own lexicographer, or 2) when the patentee disavows the
full scope of the claim term either in the specification or
during prosecution.” Thorner v. Sony Computer Entm’t
Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Prosecution
disclaimer or disavowal must be clear and unmistakable.
Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,
1325–26 (Fed. Cir. 2003).

As to submissions in an IDS

contends that, under PTO rules, submissions in an IDS
are not admissions that the cited information is material.
37 C.F.R. §§ 1.56(b)(2), 1.97(h); see also Abbott Labs. v.
Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1279 (Fed. Cir.
2003) (“[W]ith the mere listing of references in an IDS,
the applicant has admitted no more than that references
in the disclosure may be material . . . .”). Therefore, GBT
argues that its stipulated construction of preamble in the
Texas Litigation does not control the meaning of preamble
in the reexamined ’267 patent and new ’427 patent.

However, the CAFC noted

It is correct that “mere disclosure of potentially material
prior art to the [PTO] does not automatically limit the
claimed invention.” Abbott Labs., 334 F.3d at 1279.
However, this is not a typical IDS, and GBT did more
than simply disclose potentially material prior art. It
submitted its own stipulated construction of a claim term
in the context of the particular patents being reexamined
(’267 patent) and prosecuted (’427 patent). This is a clear
and unmistakable assertion by the patentee to the PTO of
the meaning and scope of the term preamble. The fact
that the stipulation was contained in documents accompanying
an IDS does not change this result. We have
held that “an applicant’s remarks submitted with an
[IDS] can be the basis for limiting claim scope.” Uship
Intellectual Props., LLC v. United States, 714 F.3d 1311,
1315 (Fed. Cir. 2013); see also Ekchian v. Home Depot,
Inc., 104 F.3d 1299, 1303 (Fed. Cir. 1997) (“An IDS is part
of the prosecution history on which the examiner, the
courts, and the public are entitled to rely.”).


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