Friday, March 03, 2017

CAFC vacates decision of ND Cal in Huawei case

From the beginning of the decision:

The present appeals arise from five cases in the
Northern District of California. Technology Properties
Limited LLC, Phoenix Digital Solutions LLC, and Patriot
Scientific Corp. (collectively “Technology Properties”)
asserted U.S. Patent No. 5,809,336 (the “’336 patent”)
against Huawei Technologies Co., Ltd., Futurewei Technologies,
Inc., Huawei Device Co., Ltd., Huawei Device
USA Inc., Huawei Technologies USA Inc., ZTE Corp., ZTE
USA, Inc., Samsung Electronics Co., Ltd., Samsung
Electronics America, Inc., LG Electronics, Inc., LG Electronics
U.S.A., Inc., Nintendo Co., Ltd., and Nintendo of
America Inc. (collectively “Appellees”) in five separate
litigations. After claim construction, the parties stipulated
to non-infringement based on the district court’s construction
of “an entire oscillator disposed upon said
integrated circuit substrate.” Technology Properties
appealed, and our court consolidated the appeals. Because
the district court erred in a portion of its construction
of “entire oscillator,” we vacate and remand.

Prosecution disclaimer was at issue:

An applicant’s statements to the PTO characterizing
its invention may give rise to prosecution disclaimer.
Uship Intellectual Props., LLC v. United States, 714 F.3d
1311, 1315 (Fed. Cir. 2013). Prosecution disclaimer can
arise from both claim amendments and arguments made
to the PTO. Biogen Idec, Inc. v. GlaxoSmithKline LLC,
713 F.3d 1090, 1095 (Fed. Cir. 2013). The doctrine does
not apply unless the disclaimer is “both clear and unmistakable
to one of ordinary skill in the art.” Elbex Video,
Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371
(Fed. Cir. 2007) (quotations omitted). When determining
whether disclaimer applies, we consider the statements in
the context of the entire prosecution. MIT v. Shire
Pharm., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016). If the
challenged statements are ambiguous or amenable to
multiple reasonable interpretations, prosecution disclaimer
is not established. Id

Technology Properties presented clear and concise arguments
about the distinctions between Magar and the
’336 patent in its briefing to our court. Had those same
arguments been made to the Patent Office, our construction
may have been different because the patentee likely
disclaimed more than was necessary to overcome the
examiner’s rejection. But the scope of surrender is not
limited to what is absolutely necessary to avoid a prior art
reference; patentees may surrender more than necessary.
See Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1361–62
(Fed. Cir. 2005); Fantasy Sports Props., Inc. v., Inc., 287 F.3d 1108, 1114–15 (Fed. Cir.
2002). When this happens, we hold patentees to the
actual arguments made, not the arguments that could
have been made. Norian, 432 F.3d at 1361–62. The
question is what a person of ordinary skill would understand
the patentee to have disclaimed during prosecution,
not what a person of ordinary skill would think the patentee
needed to disclaim during prosecution.


The district court erred by holding that the patentee
disclaimed any use of a command signal by the entire
oscillator. Instead, the patentee disclaimed a particular
use of a command signal—using a command signal to
change the clock frequency. The patentee argued during
prosecution that Sheets was distinguishable from the
’336 patent claims because Sheets requires “a command
input . . . to change the clock speed.” J.A. 2127.


We hold that “an entire oscillator disposed upon said
integrated circuit substrate” is “an oscillator located
entirely on the same semiconductor substrate as the
central processing unit that does not require a command
input to change the clock frequency and whose frequency
is not fixed by any external crystal.” Although this minor
modification to the district court’s construction likely does
not affect the outcome in this case, because the parties
stipulated to non-infringement under the district court’s
construction, the proper course of action is for us to vacate
and remand. We vacate the district court’s construction
and remand for further proceedings.



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