Wednesday, December 28, 2016

CAFC affirms claim construction of ND Cal in NORTHPEAK WIRELESS case; Northpeak loses

The technical area was wifi [IEEE 802.11 (commonly referred to as “WiFi”). ]
The CAFC upheld the claim construction related to US Patent 4,977,577 of the
ND Cal district court:

The substance of both stipulations is essentially the same: under
the district court’s constructions of several terms, North-
Peak could not prove infringement of the asserted claims
of the ’577 patent. The district court entered final judgment
of non-infringement as to both groups of accused
infringers (now, collectively, “the Appellees”).
NorthPeak appeals the district court’s constructions of
four claim terms/groupings: (1) “register”; (2) “[preamble/
address/data] register”; (3) “storing/stored”; and (4)
three related means-plus-function terms. Pursuant to the
parties’ stipulations—and as confirmed during oral argument—
if we affirm any one of the district court’s constructions
for “register,” “[preamble/address/data]
register,” or “storing/stored,” we must also affirm the
judgments of non-infringement.
For the following reasons, we affirm.

Of the law:

“The ultimate construction of the claim is a legal
question and, therefore, is reviewed de novo.” Info-Hold,
Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1265
(Fed. Cir. 2015); see also Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (“[W]hen the
district court reviews only evidence intrinsic to the patent
(the patent claims and specifications, along with the
patent’s prosecution history), the judge’s determination
will amount solely to a determination of law, and the
Court of Appeals will review that construction de novo.”).

Of the issue over the term "register"

Starting with this last point, we note that, although
the district court primarily relied on prosecution disclaimer
in reaching its construction, this case does not
require invoking the prosecution disclaimer doctrine. It is
well established that we are to give claim terms their
“ordinary and customary meaning,” with reference to the
intrinsic evidence, including the prosecution history.1 See
Phillips v. AWH Corp., 415 F.3d 1303, 1313, 1317 (Fed.
Cir. 2005). Although consulting the prosecution history
often serves to identify ways in which the inventor may
have narrowed a claim’s definition in order to obtain
allowance, it may also simply “inform the meaning of the
claim language by demonstrating how the inventor understood
the invention.” See id. at 1317; see also Shire
Dev., LLC v. Watson Pharm., Inc., 787 F.3d 1359, 1366
(Fed. Cir. 2015) (explaining that prosecution history
statements “do inform the claim construction,” even when
they “do not rise to the level of unmistakable disavowal”).
In this case, contrary to NorthPeak’s unsubstantiated
assertions, there is no hint in the term “register” itself
that would suggest the plain and ordinary meaning
necessarily encompasses types of regular memory such as
RAM or buffers. Therefore, we are not faced with the
question of whether NorthPeak unambiguously disclaimed
the full scope of the term during reexamination.
Rather, the only intrinsic evidence informing the plain
and ordinary meaning of register comes from the prosecution
history—including the definition NorthPeak itself
provided during reexamination:

The term “register” should be construed as “a designated
or specific region of memory in a computer
processor.” This construction is consistent with
the plain and customary meaning to one of ordinary
skill in the art. See, e.g., COMPUTER
DICTIONARY at 334, Microsoft Press (2d. Ed. 1994)
(defining “register” as “[a] small named region of
high-speed memory located within a microprocessor
or any electronic device capable of storing binary
data. A register is usually large enough to
hold only a few bytes of information and is referenced
in programs by a name such as AX or SF.

The decision turned on the meaning assigned to "register":

The intrinsic evidence fully supports the district
court’s construction as representing the plain and customary
meaning of the term “register.” Even assuming
the full scope of the plain meaning of “register” were
broader than that which we assign, we would, like the
district court, find that NorthPeak unambiguously disclaimed
a broader scope during reexamination. The
proper construction of “register” is: “a small, named
region of high speed memory located within a microprocessor
or any electronic device capable of storing binary
data. A register is usually large enough to hold only a few
bytes of information and is referenced in programs by a
name, rather than an address.”

As stated above, because we affirm the district court’s
construction of “register,” we need not address the remaining
claim terms. The judgment of the district court
is affirmed.


Post a Comment

<< Home