Monday, May 25, 2009

Timex loses in Paragon case

An assertion of infringement by Timex of claims of Paragon's US 6,736,759 got back on track, as the CAFC vacated the judgment of noninfringement by Judge Michael R. Barrett and remanded for further proceedings consistent with this opinion.

Of disavowal of claim scope:

“[A] patentee may limit the meaning of a claim term by making a clear and
unmistakable disavowal of scope during prosecution.” Cohesive Techs., Inc. v. Waters
Corp., 543 F.3d 1351, 1361 (Fed. Cir. 2008) (quoting Computer Docking Station Corp.
v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008)). By amending the claims to require
a separate data acquisition unit and display unit, and by remarking that this
distinguished the “unitary structure” of Root, the applicants clearly and unmistakably
disavowed a single structure that encompassed an electronic positioning device, a
physiological monitor, and a display unit. The claimed exercise monitoring system must
be at least two structures. However, there is nothing in the amendment or the
applicants’ comments that clearly and unmistakably disavows a monitoring system with
more than two structures. Thus, there was no clear and unmistakable disavowal of a
“data acquisition unit” made up of physically separate structures.

Of consistency of a term used in different claims:

“We apply a ‘presumption that the same terms appearing in
different portions of the claims should be given the same meaning unless it is clear from
the specification and prosecution history that the terms have different meanings at
different portions of the claims.’” PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359, 1366
(Fed. Cir. 2007) (quoting Fin Control Sys. Pty., Ltd. v. OAM, Inc., 265 F.3d 1311, 1318
(Fed. Cir. 2001)); see also, e.g., Phillips, 415 F.3d at 1314 (“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.”).

Of apparatus claims:

The problem with construing “displaying real-time data” as used in the claims of
the ’759 patent to preclude “contextually meaningful delay” is that such a construction
injects a use limitation into a claim written in structural terms. “[A]pparatus claims cover
what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb,
Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).


See, e.g., Catalina Mktg. Int’l, Inc. v.,
Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (holding that “a patent grants the right to
exclude others from making, using, selling, offering to sale, or importing the claimed
apparatus or composition for any use of that apparatus or composition” (emphasis
added)); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (“The inventor of a machine
is entitled to the benefit of all the uses to which it can be put, no matter whether he had
conceived the idea of the use or not.”). Construing a non-functional term in an
apparatus claim in a way that makes direct infringement turn on the use to which an
accused apparatus is later put confuses rather than clarifies, frustrates the ability of both
the patentee and potential infringers to ascertain the propriety of particular activities,
and is inconsistent with the notice function central to the patent system. See, e.g. PSC
Computer Prods., Inc. v. Foxconn Int’l, Inc., 355 F.3d 1353, 1361 (Fed. Cir. 2004)
(emphasizing “the important public notice function of patents—the mechanism whereby
the public learns which innovations are the subjects of the claimed invention, and which
are in the public domain”); see also Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d
1244, 1255 (Fed. Cir. 2008) (emphasizing that claim language should “provide a clear-
cut indication of the scope of subject matter embraced by the claim” and noting “that the
patent drafter is in the best position to resolve the ambiguity in the patent claims”).


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