CAFC gives a mixed ruling in Convolve/MIT vs. Compaq
In Convolve and MIT vs. Compaq, a case appealed to the CAFC from SDNY, the beginning of the opinion states:
This case returns to us after a remand to the Southern
District of New York. In the first appeal, we reversed
the district court’s summary judgment ruling that no
accused products met the patent’s “selected unwanted
frequencies” limitation and remanded for further proceedings.
On remand, the district court granted summary
judgment on alternative grounds. Because we agree with
the district court that Seagate’s disk drives do not possess
a user interface, but conclude that the district court erred
by importing limitations into the “command” steps and in
granting summary judgment based on intervening rights,
we again affirm-in-part, vacate-in-part, reverse-in-part,
and remand for further proceedings.
As to different courts finding different claim constructions,
note footnote 1:
A jury determination in a parallel proceeding in
the Eastern District of Texas applying a different claim
construction does not compel a different result. Cf. J.A.
5051–52; J.A. 5063–65.
Of error by SDNY:
The district court erred by granting summary judgment
that Compaq’s F10 BIOS interface does not meet
the “commands” limitation of the asserted claim. In its
summary judgment ruling, the district court treated all
asserted claims as having the same scope, and concluded
that the recited “commands” must be “shaped when
issued from the processor in order to satisfy the claim
limitation[s],” J.A. 42, and therefore Compaq’s F10 BIOS
interface cannot infringe because it itself does not issue
shaped commands. Implicit in this ruling is a claim
interpretation that requires a singular processor associated
with the user interface that issues commands, and
excludes the existence of a second processor capable of
issuing those commands, such as one integrated into the
data storage device. This overlooks the differences among
the asserted claims.
Of the use of indefinite articles in claims:
Claims 9 and 15 pose a greater challenge, however,
because they recite an apparatus comprising “a processor”
that executes certain process steps “to generate a user
interface,” “to alter settings in the user interface,” and “to
output commands to the data storage device.” See, e.g.,
’473C1 patent col 2 ll. 7–22 (reexamined claim 9). This
court has “repeatedly emphasized that an indefinite
article ‘a’ or ‘an’ in patent parlance carries the meaning of
‘one or more’ in open-ended claims containing the transitional
phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts,
Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). The
exceptions to this rule are “extremely limited: a patentee
must ‘evince [ ] a clear intent’ to limit ‘a’ or ‘an’ to ‘one.’”
Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338,
1342 (Fed. Cir. 2008). Thus, absent a clear intent in the
claims themselves, the specification, or the prosecution
history, we interpret “a processor” as “one or more processors.”
(...)
To the extent the examiner suggested in a later office
action that “the user interface runs on the processor of the
host computer, but not on the processor of the disk drive,”
the applicant objected and argued that the ’473 patent
discloses that “the user interface can run (i) on the processor
of the host computer, (ii) on the processor of the
disk drive, (iii) or both.” J.A. 5046. The examiner subsequently
allowed the claims. Although there is some
evidence that the examiner also understood the claims to
require that all functions occur on a user interface “running
on the processor external to the data storage device,”
J.A. 4218–19, it is not clear from the record that allowance
was based on this understanding, or that the patentee
disclaimed this claim scope. Thus, we conclude that
the district court did not err in granting summary judgment
that Compaq’s F10 BIOS does not meet the “commands”
limitation in claims 1, 3, and 5. But, we find the
district court erred by interpreting the remaining asserted
claims as requiring the processor associated with the
user interface to also generate the claimed commands.
Of claim construction:
The proper claim construction 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, i.e., as of the
effective filing date of the patent application.” Phillips,
415 F.3d at 1313. The specification “is the single best
guide to the meaning of a disputed term” and is usually
“dispositive.” Id. at 1315 (citation omitted). On their
face, the original claims recite only “acoustic noise,” which
could encompass any manner of acoustic noise, including
that generated from the spindle. But when read in conjunction
with the remaining claim limitations and in light
of the specification and prosecution history, a person of
ordinary skill in the art would understand the claims to
be limited to seek acoustic noise.
(...)
While the specification, in and of itself, may not require
the “seek acoustic noise” construction, the prosecution
history of the ’473 patent before the 2008
reexamination demonstrates that acoustic noise is limited
to “seek” acoustic noise. In an office action dated March
26, 2001, the Patent Office rejected several of the claims
as anticipated or obvious in light of two prior art references:
Rowan and Koizumi. The Patent Office determined
that Rowan teaches a mechanism for controlling seek
time and both electrical noise and acoustic noise from the
spindle motor, J.A. 1893, and that Koizumi teaches
“reduc[ing] the spindle speed to achieve the quiet mode,”
J.A. 1896. In response, on April 2, 2001, the patentee
amended the claims “to state explicitly that the noise to
be controlled is acoustic noise as opposed to electrical
noise.” J.A. 1909. In explaining the reasoning for the
amendment, the applicant went further and made clear
that the acoustic noise problems addressed by the claims
and the specification are limited to those generated by the
seek function, not the spindle motor. See J.A. 1910 (explaining
that “as now claimed, it is the acoustic noise level
of the data storage device that is controlled by changing
seek trajectory shape to reduce unwanted frequencies by
shaping input signals to the data storage device”).
(...)
To the extent the specification alone does not limit the
claims to seek acoustic noise, these prosecution history
statements show a clear intent to limit the scope of the
claims to seek acoustic noise—i.e., acoustic noise generated
by the movement of the drive’s arm and read/write
head during the seek process. We note further that the
appellees themselves submitted a proposed construction
for the term “acoustic noise level of the data storage
device” that expressly excluded “audible noise emanating
from the spindle motor of the ‘data storage device.’” J.A.
656.
Of the intervening rights analysis
In the intervening rights analysis, our task is to interpret
the scope of the claims per the Phillips standard,
see Laitram IV, 163 F.3d at 1346–47, and under the
correct standard, the specification “is the single best guide
to the meaning of the disputed term,” and is usually
dispositive, Phillips, 415 F.3d at 1313. “In addition to
consulting the specification, we have held that a court
should also consider the patent’s prosecution history, if it
is in evidence.” Id. at 1317 (citations and internal quotation
marks omitted). Thus, the examiner’s finding under
the broadest reasonable interpretation that the claims are
not limited to “seek acoustic noise” cannot be dispositive.
To the extent that the district court adopted this reasoning
wholesale without accounting for the differences
between the broadest reasonable interpretation standard
and Phillips, the court erred.
In sum, we conclude that the addition of the term
“seek” before “acoustic noise” did not alter the scope of the
claim. In so concluding, we decline to give significant
weight to the patentee’s and the examiner’s use of the
term “clarify” or “clarifying” in describing the amendment
in prosecution. The inquiry must focus on a case-by-case
analysis of the scope of the claims before and after claim
amendment, which gives rise to the intervening rights
challenge. See Laitram I, 952 F.2d at 1360–61 (rejecting
a per se rule and emphasizing that each case is decided on
its facts). Here, the language of the claims, read in light
of the specification and prosecution history, especially the
applicant’s 2001 remarks and amendment, compel a
conclusion that the claims as originally drafted were
limited to seek acoustic noise despite the lack of an express
recitation in the claims.
link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1732.Opinion.2-8-2016.1.PDF
This case returns to us after a remand to the Southern
District of New York. In the first appeal, we reversed
the district court’s summary judgment ruling that no
accused products met the patent’s “selected unwanted
frequencies” limitation and remanded for further proceedings.
On remand, the district court granted summary
judgment on alternative grounds. Because we agree with
the district court that Seagate’s disk drives do not possess
a user interface, but conclude that the district court erred
by importing limitations into the “command” steps and in
granting summary judgment based on intervening rights,
we again affirm-in-part, vacate-in-part, reverse-in-part,
and remand for further proceedings.
As to different courts finding different claim constructions,
note footnote 1:
A jury determination in a parallel proceeding in
the Eastern District of Texas applying a different claim
construction does not compel a different result. Cf. J.A.
5051–52; J.A. 5063–65.
Of error by SDNY:
The district court erred by granting summary judgment
that Compaq’s F10 BIOS interface does not meet
the “commands” limitation of the asserted claim. In its
summary judgment ruling, the district court treated all
asserted claims as having the same scope, and concluded
that the recited “commands” must be “shaped when
issued from the processor in order to satisfy the claim
limitation[s],” J.A. 42, and therefore Compaq’s F10 BIOS
interface cannot infringe because it itself does not issue
shaped commands. Implicit in this ruling is a claim
interpretation that requires a singular processor associated
with the user interface that issues commands, and
excludes the existence of a second processor capable of
issuing those commands, such as one integrated into the
data storage device. This overlooks the differences among
the asserted claims.
Of the use of indefinite articles in claims:
Claims 9 and 15 pose a greater challenge, however,
because they recite an apparatus comprising “a processor”
that executes certain process steps “to generate a user
interface,” “to alter settings in the user interface,” and “to
output commands to the data storage device.” See, e.g.,
’473C1 patent col 2 ll. 7–22 (reexamined claim 9). This
court has “repeatedly emphasized that an indefinite
article ‘a’ or ‘an’ in patent parlance carries the meaning of
‘one or more’ in open-ended claims containing the transitional
phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts,
Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). The
exceptions to this rule are “extremely limited: a patentee
must ‘evince [ ] a clear intent’ to limit ‘a’ or ‘an’ to ‘one.’”
Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338,
1342 (Fed. Cir. 2008). Thus, absent a clear intent in the
claims themselves, the specification, or the prosecution
history, we interpret “a processor” as “one or more processors.”
(...)
To the extent the examiner suggested in a later office
action that “the user interface runs on the processor of the
host computer, but not on the processor of the disk drive,”
the applicant objected and argued that the ’473 patent
discloses that “the user interface can run (i) on the processor
of the host computer, (ii) on the processor of the
disk drive, (iii) or both.” J.A. 5046. The examiner subsequently
allowed the claims. Although there is some
evidence that the examiner also understood the claims to
require that all functions occur on a user interface “running
on the processor external to the data storage device,”
J.A. 4218–19, it is not clear from the record that allowance
was based on this understanding, or that the patentee
disclaimed this claim scope. Thus, we conclude that
the district court did not err in granting summary judgment
that Compaq’s F10 BIOS does not meet the “commands”
limitation in claims 1, 3, and 5. But, we find the
district court erred by interpreting the remaining asserted
claims as requiring the processor associated with the
user interface to also generate the claimed commands.
Of claim construction:
The proper claim construction 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, i.e., as of the
effective filing date of the patent application.” Phillips,
415 F.3d at 1313. The specification “is the single best
guide to the meaning of a disputed term” and is usually
“dispositive.” Id. at 1315 (citation omitted). On their
face, the original claims recite only “acoustic noise,” which
could encompass any manner of acoustic noise, including
that generated from the spindle. But when read in conjunction
with the remaining claim limitations and in light
of the specification and prosecution history, a person of
ordinary skill in the art would understand the claims to
be limited to seek acoustic noise.
(...)
While the specification, in and of itself, may not require
the “seek acoustic noise” construction, the prosecution
history of the ’473 patent before the 2008
reexamination demonstrates that acoustic noise is limited
to “seek” acoustic noise. In an office action dated March
26, 2001, the Patent Office rejected several of the claims
as anticipated or obvious in light of two prior art references:
Rowan and Koizumi. The Patent Office determined
that Rowan teaches a mechanism for controlling seek
time and both electrical noise and acoustic noise from the
spindle motor, J.A. 1893, and that Koizumi teaches
“reduc[ing] the spindle speed to achieve the quiet mode,”
J.A. 1896. In response, on April 2, 2001, the patentee
amended the claims “to state explicitly that the noise to
be controlled is acoustic noise as opposed to electrical
noise.” J.A. 1909. In explaining the reasoning for the
amendment, the applicant went further and made clear
that the acoustic noise problems addressed by the claims
and the specification are limited to those generated by the
seek function, not the spindle motor. See J.A. 1910 (explaining
that “as now claimed, it is the acoustic noise level
of the data storage device that is controlled by changing
seek trajectory shape to reduce unwanted frequencies by
shaping input signals to the data storage device”).
(...)
To the extent the specification alone does not limit the
claims to seek acoustic noise, these prosecution history
statements show a clear intent to limit the scope of the
claims to seek acoustic noise—i.e., acoustic noise generated
by the movement of the drive’s arm and read/write
head during the seek process. We note further that the
appellees themselves submitted a proposed construction
for the term “acoustic noise level of the data storage
device” that expressly excluded “audible noise emanating
from the spindle motor of the ‘data storage device.’” J.A.
656.
Of the intervening rights analysis
In the intervening rights analysis, our task is to interpret
the scope of the claims per the Phillips standard,
see Laitram IV, 163 F.3d at 1346–47, and under the
correct standard, the specification “is the single best guide
to the meaning of the disputed term,” and is usually
dispositive, Phillips, 415 F.3d at 1313. “In addition to
consulting the specification, we have held that a court
should also consider the patent’s prosecution history, if it
is in evidence.” Id. at 1317 (citations and internal quotation
marks omitted). Thus, the examiner’s finding under
the broadest reasonable interpretation that the claims are
not limited to “seek acoustic noise” cannot be dispositive.
To the extent that the district court adopted this reasoning
wholesale without accounting for the differences
between the broadest reasonable interpretation standard
and Phillips, the court erred.
In sum, we conclude that the addition of the term
“seek” before “acoustic noise” did not alter the scope of the
claim. In so concluding, we decline to give significant
weight to the patentee’s and the examiner’s use of the
term “clarify” or “clarifying” in describing the amendment
in prosecution. The inquiry must focus on a case-by-case
analysis of the scope of the claims before and after claim
amendment, which gives rise to the intervening rights
challenge. See Laitram I, 952 F.2d at 1360–61 (rejecting
a per se rule and emphasizing that each case is decided on
its facts). Here, the language of the claims, read in light
of the specification and prosecution history, especially the
applicant’s 2001 remarks and amendment, compel a
conclusion that the claims as originally drafted were
limited to seek acoustic noise despite the lack of an express
recitation in the claims.
link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1732.Opinion.2-8-2016.1.PDF
posted by Lawrence B. Ebert at 12:07 PM
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