Thursday, June 03, 2021

Speedtrack loses at CAFC. Interesting text: That can’t be right.

The outcome was that appellant lost:

SpeedTrack, Inc. (“SpeedTrack”) appeals the United States District Court for the Northern District of California’s final judgment of noninfringement, which hinged on the court’s claim construction. We affirm.

The usual words on claim construction were enumerated:

The words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Claim terms “must be read in view of the specification.” Id. at 1315. And “the prosecution history 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.” Id. at 1317. “A patentee may, through a clear and unmistakable disavowal in the prosecution history, surrender certain claim scope to which he would otherwise have an exclusive right by virtue of the claim language.” Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1324 (Fed. Cir. 2009). We review claim construction based on intrinsic evidence de novo and review any findings of fact regarding extrinsic evidence for clear error. Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331–32 (2015).

(...) “Prosecution disclaimer can arise from both claim amendments and arguments.” Tech. Props. Ltd. v. Huawei Techs. Co., 849 F.3d 1349, 1357 (Fed. Cir. 2017). Here, we have both. On this prosecution record, we agree with the district court’s assessment. In no uncertain terms, “the applicant[]s argued that Schwartz had a ‘hierarchical’ relationship between fields and values that fell outside the scope of the amended claims.” J.A. 13. Therefore, the claims exclude predefined field-and-value relationships as explained by the district court. They are disclaimed. SpeedTrack interprets the prosecution record differently. According to SpeedTrack, the applicants indicated merely that the “category descriptions” of the ’360 patent are not the fields of Schwartz and that the hierarchical limitation precludes predefined hierarchical relationships only among category descriptions.5 Appellant’s Br. at 49, 59. We disagree. The ’360 patent applicants repeatedly highlighted predefined hierarchical field-and-value relationships as a difference between Schwartz and the ’360 patent.

Oral argument is cited:

Oral Arg. at 6:09–18 (recognizing that “Schwartz had a hierarchical relationship between the field and the values” but “did not have a hierarchical relationship between different values.”).6 This could not have distinguished Schwartz. But that is the import of SpeedTrack’s position. E.g., Oral Arg. at 3:45–4:18 (“‘Language’ would be a category and ‘French’ would be an example of that category. That relationship becomes excluded because of the court’s construction. It shouldn’t have been excluded. It wasn’t disclaimed.”); see Appellant’s Br. at 34–35. That can’t be right.

Footnote 6
6 No. 20-1573,

Note also

SpeedTrack also contends that the applicants distinguished Schwartz on other grounds. But that changes nothing. “An applicant’s argument that a prior art reference is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds as well.” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007). Plus, as Cross-Appellants point out, SpeedTrack’s position contradicts its other litigation statements. For example, SpeedTrack stated the following in a motion: The purpose of the amendment was to clarify that the claims, as amended, are distinguished from Schwartz’s and Cochran’s “field”/“attribute” configuration, which requires a “hierarchical” relationship between values and fields, i.e., each value must correspond to an associated field type (e.g., the term “English” (a value) must be related to the term “Language” (a field)).


Post a Comment

<< Home