Monday, January 13, 2020

ARM loses at the CAFC; judicial disagreement over imputation of a negative claim limitation


This case involved each party suing the other for infringement of the patent of the party.

On one side, ARM owns "the ’320 patent [US 8,720,320], which describes an adaptor
device for use with Keurig® single-brew coffee machines or
similar brewers. The ’320 patent describes single-brew coffee machines
as generally accepting one of two cartridge
formats: “pods,” which are “small, flattened disk-shaped filter packages of beverage extract” and “larger cup-shaped
beverage filter cartridges.” ’320 patent, col. 1, ll. 17–21. "

The jury found that claims 8 and 19
of the ’320 patent were invalid for obviousness, and the CAFC,
by a 2-1 vote, affirmed.

The key point in the split vote was over the construction of the term "passageway," and, within this,
was the adoption by the majority of a negative limitation.

Judge Reyna began his partial dissent:

The district court erred in its construction of “passageway”
by rewriting the claims, including adding a negative
limitation that is unsupported by the specification
. The
district court further erred when it granted summary
judgement of noninfringement and an award of attorney’s
fees based on its erroneous construction. I would vacate
the district court’s grant of summary judgement, reverse
the award of attorney’s fees, and remand for further proceedings.

Judge Reyna:

The district court construed the term “passageway” as
“a narrow space of some depth or length connecting one
place to another.” J.A. 12. This construction is not supported by the specification.
The district court also interpreted “passageway” to exclude a receptacle “that utilized
a broad, thin mesh.” Id. This exclusion was raised sua
sponte by the court and not argued by either party. As
shown below, the district court relied on its construction of
passageway to base, erroneously, its grant of summary
judgment and attorney’s fees.
To properly determine the meaning of a claim limitation, a court must consider the claim term in view of the
specification. Phillips v. AWH Corp., 415 F.3d 1303, 1315
(Fed. Cir. 2005) (en banc) (quoting Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979 (1996)). A claim term
carries its ordinary meaning “unless the patentee unequivocally imparted” a new or different meaning or “expressly
relinquished claim scope during prosecution.” Omega
Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1322-23 (Fed.
Cir. 2003) (citing Teleflex, Inc. v. Ficosa N. Am. Corp., 299
F.3d 1313, 1325–26, 63 USPQ2d 1374, 1380–81 (Fed.
Cir. 2002)).

Here, the district court’s construction of “passageway”
to mean a “narrow space of some depth or length connecting one place to another” is
not supported by the specification. Unlike other portions of its claim construction order
where the district court refers to the claims, written description, figures, and prosecution
history to support it construction (see, e.g., J.A. 7-8, 9-11), the district court fails to
identify any support for its construction of “passageway.”
Instead, the district court construed “passageway” “in light
of the intrinsic evidence.” J.A. 12. Neither the claims nor
the written description, however, impose dimensional limitations (i.e., narrowness, length, or depth)
on “passageway.” While the specification describes a “passageway” on
sixteen occasions, it only twice describes exemplary diameter and length parameters. ’320 patent col. 4 ll. 37-39,
col. 5 ll. 28-30. Those examples alone cannot limit the
claimed invention as a whole. See, e.g., ScriptPro LLC v.
Innovation Assocs., Inc., 833 F.3d 1336, 1341 (Fed. Cir.
2016) (“[A] specification’s focus on one particular embodiment or purpose cannot limit the described invention
where that specification expressly contemplates other embodiments or purposes.”). On this basis alone, the district
court’s construction of “passageway” is erroneous.

Of the "negative limitation" issue:

The district court also erred by interpreting “passageway” to exclude a receptacle
“that utilized a broad, thin mesh.” This
aspect of the district court’s construction constitutes a negative claim limitation
that is unsupported by the specification.
Negative limitations added during claim construction
must find support either in the specification or the prosecution history.
Omega Eng’g, Inc., 334 F.3d at 1322-23. A
specification adequately supports the addition of a negative
limitation where the limitation is expressly disclaimed or
where “independent lexicography in the written description” justifies adding it. Id.
In Omega Eng’g, Inc., the district court construed “periphery” to mean “projection of the
laser light toward the surface,” but the court added that
periphery “does not encompass light striking the center or
interior portion of the energy zone.” Id. at 1321. On appeal, we rejected that negative limitation, reasoning that
there was no “express disclaimer or independent lexicography in the written description that would justify adding
[it].” Id. at 1322-23. We concluded that the negative limitation was not inherent to the claim term by relying on its
dictionary definition. Id. at 1322. We also concluded that
the negative limitation had no support in the prosecution
history. Id.; see also id. at 1327. In Linear Tech. Corp. v.
Int’l Trade Comm’n, we similarly reversed a claim construction that
incorporated an unsupported negative limitation. 566 F.3d 1049, 1059-60 (Fed. Cir. 2009).
The Administrative Judge (“AJ”) construed the phrase
“monitoring the current” to exclude “monitoring voltage.” See id.
at 1059. We found that the AJ erred by adding the negative
limitation because the specification provided no support for
it. Id. at 1060 (citing Omega Eng’g, Inc., 334 F.3d at 1323).

Here, the district court’s exclusion of “a broad, thin
mesh” from the meaning of “passageway” writes into the
claim an unsupported negative limitation. Neither the
claims nor the written description of the ’320 patent mention a mesh, let alone a broad, thin mesh, and there is no
express disclaimer supporting the negative limitation.
There also is no independent lexicography in the written
description upholding the negative limitation. The ’320 patent includes
no definition of “passageway.” And the dictionary definition of “passage”—“a way of exit or entrance:
a road, path, channel, or course by which something
passes”1—does not inherently require the exclusion of a
broad, thin mesh. Nor is there any record evidence to suggest that
the prosecution history supports the exclusion.
The only record evidence, or mention of “broad, thin mesh”
is in relation to Eko Brands’ accused product.

Footnote 1 of the dissent:

See Merriam-Webster’s Collegiate Dictionary
(11th ed. 2003) (defining “passageway” as “a way that allows passage”).

Footnote 6 of the majority:

We note that a legally erroneous jury instruction
can only be harmless error if it “could not have changed the
result.” Verizon, 503 F.3d at 1307 n.7 (quoting Ecolab, Inc.
v. Paraclipse, Inc., 285 F.3d 1362, 1374 (Fed. Cir. 2002)).


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