Tuesday, July 26, 2011

Aerotel v. Telco: SDNY reversed as to missing structure

The case involved a consent judgment:

Where, as here, the parties stipulate to noninfringement and invalidity after a claim construction ruling, the court “need only address the district court’s construction of the claims.” See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1368 (Fed. Cir. 2003). We review claim con- struction de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). To interpret the claims, we look first to the intrinsic evidence in the record, including the claim language, the written descrip- tion, and the prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Although it is less significant than intrinsic evidence, a court can consider extrinsic evidence in the record, which “consists of all evidence external to the patent and prose- cution history, including expert and inventor testimony, dictionaries, and learned treatises.” Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (citation omitted).

The outcome:

The parties agree that the Consent Judgment must stand unless this court disagrees with the district court’s construction of: (1) the function and structure for the “means for monitoring the credit;” and (2) the structure for the “means for coupling.”6 We address each limitation in turn. Because we agree with the district court’s con- struction of the “means for monitoring the credit,” the Consent Judgment is affirmed as it relates to noninfringement. For the reasons discussed below, however, we vacate the portion of the Consent Judgment finding Claim 9 invalid as indefinite.

Footnote 6:

At oral argument, counsel for Aerotel noted that: “Aerotel needs to win on both issues on appeal so if you rule against us on either one then we lose.” Oral Argu- ment at 14:00, available at http://www.cafc.uscourts.gov/oral-argument- recordings/2010-1515/all. Similarly, Telco’s brief ex- plained that, if the court agrees with the district court’s construction on either the “means for coupling” or the “means for monitoring the credit,” then the Consent Judgment must be affirmed. Appellees’ Br. at 19.

Of the reversal:

We find that, based on Figure 3 and the corresponding description in the specification, a person of ordinary skill in this field would know that the “regular telephone system” performs the coupling function. At a minimum, Telco did not meet its burden of showing by clear and convincing evidence that a person of ordinary skill in the art would be unable to identify the disclosed structure, which is, standing alone, sufficient to warrant reversal of the district court’s construction. See Budde, 250 F.3d at 1376-77. Accordingly, we find that the district court erred in concluding that the ‘275 Patent does not disclose a structure corresponding to the “means for coupling.” As such, the district court’s conclusion, which rendered Claim 9 invalid as indefinite, is reversed.

Keywords: oral argument recordings


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