CAFC finds D. Del. erred in claim construction in Blackbird v. ELB; Judge Reyna dissents

The outcome was that the D. Delaware decision of Judge Andrews of noninfringement was vacated:


Blackbird Tech LLC (“Blackbird”) appeals the U.S.
District Court for the District of Delaware’s entry of
judgment of noninfringement of claim 12 of U.S. Patent
No. 7,086,747 (“’747 patent”) based on its construction of
“attachment surface.” Because the court erred in construing
“attachment surface,” we vacate and remand.



This was an appeal by the patentee Blackbird, owner of the ’747 patent, which is directed to
energy efficient lighting apparatuses.

This case went to the CAFC so that a claim construction issue could
be resolved:


The parties disputed the meaning of “attachment surface,”
specifically whether the attachment surface must be
secured to the ballast cover. Blackbird proposed construing
“attachment surface” as “layer of the housing to which
the illumination surface is secured,” and Defendants
proposed “layer of the housing that is secured to the
ballast cover and to which the illumination surface is
secured.” J.A. 7. The district court construed “attachment
surface” as “layer of the housing that is secured to
the ballast cover.” J.A. 7–9.

Following claim construction, Blackbird stipulated to
noninfringement, and the district court entered judgment
in favor of Defendants. Blackbird timely appeals. We
have jurisdiction under 28 U.S.C. § 1295(a)(1).



By a vote of 2-1, the CAFC found D. Delaware erred:



We conclude that the district court erred in construing
“attachment surface” to be secured to the ballast cover.
By its plain language, claim 12 does not require the
attachment surface to be secured to the ballast cover.


Judge Reyna dissented:


Claim 12 does not expressly require that the attachment
surface be attached to anything other than to the
illumination surface. However, claim 12 does expressly
describe a lighting apparatus “for retrofit with an existing
light fixture having a ballast cover.” ’747 patent col. 11 ll.
26–27 (emphases added). The majority fails to give
meaning to these claim terms by holding that “attachment
surface” means “layer of the housing to which the
illumination surface is secured,” and concludes that the
patent owner is entitled to patent scope that is neither
described in nor supported by the specification.
The plain language of claim 12, read in the context of
the specification, implicitly requires that the attachment
surface be secured to the ballast cover to achieve the
retrofit function. Apart from the preamble, which the
parties agree is limiting, claim 12 contains no reference to
the ballast cover, the existing light fixture, or where or
how the apparatus is retrofit with the existing light
fixture. Because the only feature of the existing light
fixture described in claim 12 is the ballast cover, a person
of ordinary skill would necessarily conclude that the
attachment surface is secured to the ballast cover of the
existing light fixture. This would not be a big leap.

(...)

Taken collectively, these disclosures in the claims
and the specification—and the lack of any reference in the
intrinsic record showing the attachment surface being
secured to anything other than the ballast cover—teach a
skilled artisan that the attachment surface described in
claim 12 is secured to the ballast cover of the existing
light fixture. See MBO Labs., Inc. v. Becton, Dickinson &
Co., 474 F.3d 1323, 1329 (Fed. Cir. 2007) (“The words of
patent claims have the meaning and scope with which
they are used in the specification and the prosecution
history.”).



Judge Reyna also noted:


The majority’s construction thus opens the door for
the ’747 patent to be subsequently invalidated for failure
to satisfy the written description requirement. Stated
differently, the majority’s construction is a route towards
rendering the patent invalid. See Carman Indus., Inc. v.
Wahl, 724 F.2d 932, 937 (Fed. Cir. 1983) (“Claims should
be so construed, if possible, as to sustain their validity. If
such a construction would result in invalidity of the
claims, the appropriate legal conclusion is one of noninfringement,
not invalidity.”). The majority likewise
invites an enablement challenge; under the majority’s
approach, the retrofit aspect of the invention is merely an
afterthought, one for which a skilled artisan must figure
out for themselves the means by which the retrofit function
of the invention shall be achieved, without any guidance
from the patent. See Maj. Op. at 9. This result is
absurd, given that when the patent is read as a whole,
such guidance is clearly provided.
Worse still, because the majority’s construction “does
not recite how the lighting apparatus is installed into an
existing light fixture,” id., the majority effectively reads
the retrofit function out of claim 12 and claim 29, the
retrofitting method claim. Claim 29, while not at issue in
this case, is instructive. See Phillips v. AWH Corp., 415
F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“Because claim
terms are normally used consistently throughout the
patent, the usage of a term in one claim can often illuminate
the meaning of the same term in other claims.”).
Claim 29 contains the same “attachment surface” limitation
at issue in claim 12: