Wednesday, February 17, 2016

Secure Web loses to Microsoft at CAFC

Secure Web Conference Corporation (“Secure Web”)
appeals the district court’s construction of several patent
claim terms in a patent infringement lawsuit it initiated
against Microsoft Corporation (“Microsoft”). Secure Web
argues that the district court improperly imported limitations
from specific embodiments into the challenged
constructions. Because the district court correctly construed
the terms at issue by considering the language of
the claims themselves and by looking to the patent specification
for guidance on claim term meaning, we affirm.

Teva is discussed, but is not relevant to this case:

The “ultimate interpretation” of a claim term, as well
as interpretations of “evidence intrinsic to the patent (the
patent claims and specifications, along with the patent’s
prosecution history),” are legal conclusions, which this
court reviews de novo. Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S. Ct. 831, 841 (2015). Where a district court
“make[s] factual findings about . . . extrinsic evidence[,
however,] th[e] subsidiary factfinding must be reviewed
for clear error on appeal.” Id. Because the district court
relied only on intrinsic evidence in this case, our review is
de novo.

In part, the CAFC relies on the background section:

First, the Background of the Invention section characterizes
the security device as an add-on component to
existing microprocessor-based devices, explaining that “as
many users already possess telephones, facsimile machines
and computers, it is desirable to provide a security
device capable of performing [security] functions in connection
with these existing devices.” ’686 patent col. 1
ll. 43–48. The remainder of the specification reinforces
that using a stand-alone security device is not mere

Not limiting the invention to the preferred embodiment arises:

We are mindful not to limit claims to preferred embodiments,
but in this case, the district court did not err
in concluding that Figures 1 and 2 depict the essence of
the claimed invention rather than a preferred embodiment.
Particularly, the specification describes Figure 1 as
depicting “a communication system according to the
present invention” and Figure 2 as depicting “a telecommunications
security device according to the instant
invention.” Id. col. 2 ll. 16–19. While the specification
later describes Figure 2 as “a block diagram of a preferred
form of the security device according to the instant invention”
(Id. col. 3 ll. 7–9), this statement does not change the
understanding of “security device” at least because the
specification repeatedly notes the importance of using an
external security device, reinforcing that the security
device of the invention is limited to stand-alone security

The use of dictionary definitions arises:

Even were we to rely on dictionaries in this case, we
would not likely find the definition of “device” useful
because our construction does not hinge on the word
“device” used in isolation. See IGT v. Bally Gaming Int’l,
Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011) (“Extracting a
single word from a claim divorced from the surrounding
limitations can lead construction astray. Claim language
must be construed in the claim in which it appears.”).

Of judicial economy:

The parties stipulated to a final judgment of noninfringement
of the ’686 patent under the construction of
“security device” adopted by the district court. Because
we adopt the district court’s construction of “security
device,” we do not address the construction underlying the
alternative stipulated ground for noninfringement as we
need not decide more than is necessary to dispose of the
case regarding to the ’686 patent. See Network Commerce,
Inc. v. Microsoft Corp., 422 F.3d 1353, 1357 n.3
(Fed. Cir. 2005) (declining to construe claim term when
noninfringement judgment is affirmed on other claim
construction ground).


Based on the intrinsic evidence, we conclude that the
district court correctly construed “network communications
device” and “input/output device.” Per the stipulated
final judgment entered by the parties, each of these
constructions is a ground for noninfringement of the ’687
patent for Microsoft.



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