Tuesday, August 13, 2019

Iridescent Networks loses appeal at CAFC

The outcome was affirmance of an ED Texas claim construction; defendants win:

Iridescent Networks, Inc. sued AT&T Mobility, LLC
and Ericsson Inc. in the U.S. District Court for the Eastern
District of Texas for infringement of U.S. Patent
No. 8,036,119. Following claim construction, the parties
jointly stipulated to noninfringement, and the district
court entered judgment in favor of AT&T Mobility, LLC
and Ericsson Inc. Iridescent Networks, Inc. appeals on the
ground that the district court erred in its construction of
the term “high quality of service connection.” Because the
district court correctly construed this term, we affirm.

The claim construction went back to the opinion of a

Iridescent subsequently objected to the magistrate
judge’s construction, raising the same arguments it renews
on appeal. Iridescent Networks, Inc. v. AT&T Mobility,
LLC, No. 6:16-CV-01003, 2017 WL 10185852, at *1–3 (E.D.
Tex. Dec. 1, 2017) (“Order Adopting Constructions”). The
district judge overruled Iridescent’s objections,
determining that the magistrate judge’s construction was not clearly
erroneous or contrary to law. Id. at *3.

[Note the proper terminology is that of
overruling and objection.]

Of standards of review:

Whether a district court’s construction of a claim is correct presents
a legal question that we review de novo. InfoHold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262,
1265 (Fed. Cir. 2015). We review underlying factual findings related to extrinsic evidence for clear error. E.I. du
Pont De Nemours & Co. v. Unifrax I LLC, 921 F.3d 1060,
1067 (Fed. Cir. 2019). When claim construction is based
solely upon intrinsic evidence, as in this case, our review is
de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct.
831, 841 (2015).

Claim construction seeks to ascribe the meaning to a
claim term as understood by a person of ordinary skill in
the art at the time of invention. Phillips v. AWH Corp., 415
F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). The meaning of a term
“must be considered in the context of all the
intrinsic evidence, including the claims, specification, and
prosecution history.” Biogen Idec, Inc. v. GlaxoSmithKline
LLC, 713 F.3d 1090, 1094 (Fed. Cir. 2013) (citing Phillips,
415 F.3d at 1314).

The issue here:

This appeal turns on whether the term “high quality of
service connection” is a term of degree that is limited to the
minimum connection parameter requirements disclosed in
Figure 3 of the ’119 patent. We conclude that it is.


Iridescent argues that the term “high quality of service
connection” is a mere requirement that the connection assure
the level of quality that meets the service parameter
needs of a particular service or application.

Of disavowal:

We have
explained that “[a]ny explanation, elaboration, or qualification
presented by the inventor during patent examination is relevant,
for the role of claim construction is to
‘capture the scope of the actual invention’ that is disclosed,
described, and patented.” Fenner Invs., Ltd. v. Cellco
P’ship, 778 F.3d 1320, 1323 (Fed. Cir. 2015) (quoting Retractable Techs.,
Inc. v. Becton, Dickinson & Co., 653 F.3d
1296, 1305 (Fed. Cir. 2011)); see also Aptalis Pharmatech,
Inc. v. Apotex Inc., 718 F. App’x 965, 971 (Fed. Cir. 2018)
(relying on the prosecution history to inform a claim construction
analysis without finding a disavowal of claim
scope). Although the prosecution history may not in some
cases be as clear a guide as the specification, it nonetheless
“can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention
and whether the inventor limited the invention in the
course of prosecution, making the claim scope narrower
than it would otherwise be.” Phillips, 415 F.3d at 1317

The hazards of coined terms

The question here, however, is not whether Iridescent narrowed
the scope of the disputed term during prosecution
from its full ordinary and customary meaning. Rather,
because the disputed term is a coined term, meaning it has
no ordinary and customary meaning, the question is
whether the intrinsic evidence provides objective boundaries to the scope of the term. Interval Licensing LLC v.
AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). In these
circumstances, where there is no clear ordinary and customary meaning of a coined term of degree, we may look to
the prosecution history for guidance without having to first
find a clear and unmistakable disavowal.

Of enablement rejections

Iridescent argues that unlike an indefiniteness rejection,
an enablement rejection is not issued “to force the applicant to define the metes and bounds of the claim.”
Appellant’s Br. 27. This is not correct. It is long-settled
that “[e]nablement serves the dual function in the patent
system of ensuring adequate disclosure of the claimed invention
and of preventing claims broader than the disclosed invention.
This important doctrine prevents both
inadequate disclosure of an invention and overbroad claiming that
might otherwise attempt to cover more than was
actually invented.” MagSil Corp. v. Hitachi Glob. Storage
Techs., Inc., 687 F.3d 1377, 1380–81 (Fed. Cir. 2012) (internal citation omitted);
see also Nat’l Recovery Techs., Inc. v.
Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195–96
(Fed. Cir. 1999). Thus, Iridescent’s statements made to
overcome the examiner’s enablement rejection inform the
claim construction analysis by demonstrating how Iridescent understood the scope of the disputed term.

Of the word "high"

Iridescent also argues that this court’s precedent forecloses
limiting the term “high” to numerical values. We
disagree. In each case on which Iridescent relies, this court
concluded that importing numerical limits into the independent claim
at issue would have rendered a dependent
claim meaningless. See Honeywell Int’l Inc. v. Universal
Avionics Sys. Corp., 488 F.3d 982, 993–94 (Fed. Cir. 2007);
In re Cruciferous Sprout Litig., 301 F.3d 1343, 1348–49
(Fed. Cir. 2002); Am. Seating Co. v. USSC Grp., Inc., 91 F.
App’x 669, 676 (Fed. Cir. 2004). That is not a concern here.
Additionally, in American Seating, the claim language itself defined
the disputed term. 91 F. App’x at 675. By contrast, the claims here provide no clear meaning or
definition of “high quality of service connection.”


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