WD Washington reversed by CAFC in GENUINE ENABLING TECHNOLOGY v. NINTENDO CO., LTD.
The outcome:
Genuine Enabling Technology LLC sued Nintendo Co., Ltd. and Nintendo of America, Inc. accusing five products of infringing certain claims of U.S. Patent No. 6,219,730. The U.S. District Court for the Western District of Washington construed the term “input signal,” which appears in all the asserted claims, consistent with the defendants’ proposed construction, and on that basis granted summary judgment of non-infringement in favor of the defendants. Genuine appeals, arguing that the district court erred in construing the limitation by improperly relying on extrinsic evidence and by improperly finding that the inventor, Mr. Nguyen, disclaimed certain claim scope during prosecution. We conclude that the district court erred in its construction of “input signal” and construe the term to mean “a signal having an audio or higher frequency.” Accordingly, we reverse the district court’s grant of summary judgment and remand for further proceedings consistent with this opinion.
The inventor's argument
Mr. Nguyen then reiterated that distinction between Yollin and his inventions: [Yollin] utilizes . . . a controller to receive positional change information, user selection information and physiological change information to generate . . . a composite signal but does not anticipate its use with signals containing audio or higher frequencies. Using a controller to generate the composite control signal out of the information changes, which are slow-varying, is standard and not worth [being] mentioned in Yollin’s description. Difficulties will arise when one signal runs asynchronously relative to another signal and fast. Yollin’s patent does not teach or suggest any method for the controller to receive and recover such signals. In contrast, this invention describes, in its representative embodiments, how to combine the data from a UID (mouse) and from a high-frequency signal, via a framer, which is unique and novel. J.A. 1785 (emphasis added). Mr. Nguyen made this essential argument a third time: Yollin’s method of using the controller to generate a composite signal only works for slow varying signals. In contrast, this invention teaches the artisan the ways of synchronizing and encoding two sources of signals into a combined data, via a framer, before sending onto a communication link, and of recovering from the received combined data the original information of the respective signals.
There was a matter of expert opinion
see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996) (“[E]xpert testimony . . . may not be used to vary or contradict the claim language. Nor may it contradict the import of other parts of the specification.” (citation omitted)); Aqua-Aerobic Sys., Inc. v. Aerators Inc., 211 F.3d 1241, 1245 (Fed. Cir. 2000) (stating that expert testimony “may not correct errors or erase limitations or otherwise diverge from the description of the invention as contained in the patent documents”); Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1332 (Fed. Cir. 2003) (“Yet, Omega submits its expert declarations not to shed light on this field of art, but to rewrite the patent’s specification and explicitly provide for the laser splitting device, lenses, and prisms to strike the center of the energy zone. That we cannot accept.”); U.S. Indus. Chems. v. Carbide & Carbon Chems. Corp., 315 U.S. 668, 678 (1942) (“It is inadmissible to enlarge the scope of the original patent by recourse to expert testimony to the effect that a process described and claimed in the reissue, different from that described and claimed in the original patent, is, because equally efficacious, in substance that claimed originally.”). (...) Accordingly, the intrinsic record “must be considered and where clear must be followed.” See Mantech Env’t Corp. v. Hudson Env’t Servs., Inc., 152 F.3d 1368, 1373 (Fed. Cir. 1998); see also Vitronics, 90 F.3d at 1584 (“[W]here the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight.”). “Any other rule would be unfair to competitors who must be able to rely on the patent documents themselves, without consideration of expert opinion that then does not even exist, in ascertaining the scope of a patentee’s right to exclude.” Vitronics, 90 F.3d at 1584.
Of prosecution disclaimer
The doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution.” Omega, 334 F.3d at 1323. “As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public’s reliance on definitive statements made during prosecution.” Id. at 1324. For a statement during prosecution to qualify as a disavowal of claim scope, it must be “so clear as to show reasonable clarity and deliberateness,” and “so unmistakable as to be unambiguous evidence of disclaimer.” Id. at 1325 (citations omitted); see also Tech. Props. Ltd. LLC v. Huawei Techs. Co., 849 F.3d 1349, 1358 (Fed. Cir. 2017) (“The patentee’s disclaimer may not have been necessary, but its statements made to overcome Magar were clear and unmistakable.”). If the challenged statements are ambiguous or amenable to multiple reasonable interpretations, prosecution disclaimer is not established. See Tech. Props., 849 F.3d at 1358 (citing Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016)). “The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art.” Shire, 839 F.3d at 1119 (citation and quotation marks omitted).
(...)
We conclude that the only disavowal of claim scope that is clear and unmistakable in the record before us is Mr. Nguyen’s disavowal of signals below the audio frequency spectrum. Omega, 334 F.3d at 1325–26 (prosecution history disclaimer must be clear and unmistakable). Mr. Nguyen repeatedly distinguished his inventions from Yollin on the grounds that Yollin taught “slow-varying signals” whereas his inventions involved “audio or higher frequency” signals. See J.A. 1784–85. The examiner’s acceptance of that distinction and resulting decision to allow the claims suggest that Mr. Nguyen and the examiner reached an understanding on that point.
The result
We hold that the district court erred in construing the term “input signal.” In particular, the district court erred in finding that Mr. Nguyen disclaimed subject matter other than signals below the audio frequency spectrum during prosecution, and it further erred in relying on extrinsic evidence to limit the claim scope to signals above 500 Hz. We therefore conclude that the proper construction of “input signal” is “a signal having an audio or higher frequency.” Accordingly, we reverse the district court’s grant of summary judgment of non-infringement and remand for further proceedings consistent with this opinion.
Genuine Enabling Technology LLC sued Nintendo Co., Ltd. and Nintendo of America, Inc. accusing five products of infringing certain claims of U.S. Patent No. 6,219,730. The U.S. District Court for the Western District of Washington construed the term “input signal,” which appears in all the asserted claims, consistent with the defendants’ proposed construction, and on that basis granted summary judgment of non-infringement in favor of the defendants. Genuine appeals, arguing that the district court erred in construing the limitation by improperly relying on extrinsic evidence and by improperly finding that the inventor, Mr. Nguyen, disclaimed certain claim scope during prosecution. We conclude that the district court erred in its construction of “input signal” and construe the term to mean “a signal having an audio or higher frequency.” Accordingly, we reverse the district court’s grant of summary judgment and remand for further proceedings consistent with this opinion.
The inventor's argument
Mr. Nguyen then reiterated that distinction between Yollin and his inventions: [Yollin] utilizes . . . a controller to receive positional change information, user selection information and physiological change information to generate . . . a composite signal but does not anticipate its use with signals containing audio or higher frequencies. Using a controller to generate the composite control signal out of the information changes, which are slow-varying, is standard and not worth [being] mentioned in Yollin’s description. Difficulties will arise when one signal runs asynchronously relative to another signal and fast. Yollin’s patent does not teach or suggest any method for the controller to receive and recover such signals. In contrast, this invention describes, in its representative embodiments, how to combine the data from a UID (mouse) and from a high-frequency signal, via a framer, which is unique and novel. J.A. 1785 (emphasis added). Mr. Nguyen made this essential argument a third time: Yollin’s method of using the controller to generate a composite signal only works for slow varying signals. In contrast, this invention teaches the artisan the ways of synchronizing and encoding two sources of signals into a combined data, via a framer, before sending onto a communication link, and of recovering from the received combined data the original information of the respective signals.
There was a matter of expert opinion
see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996) (“[E]xpert testimony . . . may not be used to vary or contradict the claim language. Nor may it contradict the import of other parts of the specification.” (citation omitted)); Aqua-Aerobic Sys., Inc. v. Aerators Inc., 211 F.3d 1241, 1245 (Fed. Cir. 2000) (stating that expert testimony “may not correct errors or erase limitations or otherwise diverge from the description of the invention as contained in the patent documents”); Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1332 (Fed. Cir. 2003) (“Yet, Omega submits its expert declarations not to shed light on this field of art, but to rewrite the patent’s specification and explicitly provide for the laser splitting device, lenses, and prisms to strike the center of the energy zone. That we cannot accept.”); U.S. Indus. Chems. v. Carbide & Carbon Chems. Corp., 315 U.S. 668, 678 (1942) (“It is inadmissible to enlarge the scope of the original patent by recourse to expert testimony to the effect that a process described and claimed in the reissue, different from that described and claimed in the original patent, is, because equally efficacious, in substance that claimed originally.”). (...) Accordingly, the intrinsic record “must be considered and where clear must be followed.” See Mantech Env’t Corp. v. Hudson Env’t Servs., Inc., 152 F.3d 1368, 1373 (Fed. Cir. 1998); see also Vitronics, 90 F.3d at 1584 (“[W]here the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight.”). “Any other rule would be unfair to competitors who must be able to rely on the patent documents themselves, without consideration of expert opinion that then does not even exist, in ascertaining the scope of a patentee’s right to exclude.” Vitronics, 90 F.3d at 1584.
Of prosecution disclaimer
The doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution.” Omega, 334 F.3d at 1323. “As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public’s reliance on definitive statements made during prosecution.” Id. at 1324. For a statement during prosecution to qualify as a disavowal of claim scope, it must be “so clear as to show reasonable clarity and deliberateness,” and “so unmistakable as to be unambiguous evidence of disclaimer.” Id. at 1325 (citations omitted); see also Tech. Props. Ltd. LLC v. Huawei Techs. Co., 849 F.3d 1349, 1358 (Fed. Cir. 2017) (“The patentee’s disclaimer may not have been necessary, but its statements made to overcome Magar were clear and unmistakable.”). If the challenged statements are ambiguous or amenable to multiple reasonable interpretations, prosecution disclaimer is not established. See Tech. Props., 849 F.3d at 1358 (citing Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016)). “The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art.” Shire, 839 F.3d at 1119 (citation and quotation marks omitted).
(...)
We conclude that the only disavowal of claim scope that is clear and unmistakable in the record before us is Mr. Nguyen’s disavowal of signals below the audio frequency spectrum. Omega, 334 F.3d at 1325–26 (prosecution history disclaimer must be clear and unmistakable). Mr. Nguyen repeatedly distinguished his inventions from Yollin on the grounds that Yollin taught “slow-varying signals” whereas his inventions involved “audio or higher frequency” signals. See J.A. 1784–85. The examiner’s acceptance of that distinction and resulting decision to allow the claims suggest that Mr. Nguyen and the examiner reached an understanding on that point.
The result
We hold that the district court erred in construing the term “input signal.” In particular, the district court erred in finding that Mr. Nguyen disclaimed subject matter other than signals below the audio frequency spectrum during prosecution, and it further erred in relying on extrinsic evidence to limit the claim scope to signals above 500 Hz. We therefore conclude that the proper construction of “input signal” is “a signal having an audio or higher frequency.” Accordingly, we reverse the district court’s grant of summary judgment of non-infringement and remand for further proceedings consistent with this opinion.
posted by Lawrence B. Ebert at 3:57 PM
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