by Dennis Crouch
Superior Industries v. Masaba (Fed. Cir. 2014)
Superior Indus. is an interesting short non-precedential opinion from the Federal Circuit. Judge Clevenger wrote the opinion whose holding is simply a remand for clarification. However, the case raises important constitutional questions of justiciability and advisory opinions.
At the lower court, the parties argued over construction of the terms "channel beam," "C-shaped channel beam," and "elongate opening." After district court Judge Donovan Frank construed those terms, the patentee (Superior) admitted that it could not prove infringement. Judge Frank then awarded summary judgment of non-infringement without substantive opinion other than noting Superior's admission of liability.
On appeal, Superior challenged the claim construction of those disputed terms, but the Federal Circuit has refused to hear the case because it the record was unclear as to whether a modified claim construction would change the outcome.
It is impossible for us to determine from this opinion which of the thirteen contested claim constructions would "actually affect" the infringement analysis. This poses a risk that our review of at least some of the constructions would amount to an advisory opinion.
The implicit logic here begins with the reality that the dispute is over infringement and validity and the only reason to construe claim terms is when the asked-for construction impacts those dispute end-points. Claim construction decisions that do not impact the final outcome are then advisory opinions barred by both judicial practice and the US Constitution. Often courts must be their own counsel on justiciability questions such as these because they are not waivable even when agreed-to by both parties.
Wither Early Claim Construction?: If we take this logic back to the district court level, the opinion offers important prerequisite to a district court's claim construction – namely that no claim terms should be construed unless & until the district court determines that the construction is meaningful to the outcome of the case at hand. This plays-out with the pending patent reform bills as well that call for early claim construction. To the extent that those bills would force courts to make advisory opinions, they are unconstitutional. See Hayburn's Case, 2 U.S. 408 (1792) "neither the legislative nor the executive branches can constitutionally assign to the judicial branch any duties but such as are properly judicial, to be performed in a judicial manner."
= = = = =
Judge Rader wrote a short concurring opinion tied to Superior's claim in question. Here, Superior's patent claims a dump truck that has a support frame that is "configured to support an end of an earthen ramp." The term is relevant because at least some of Masaba's accused products are not really designed to work on earthen ramps.
Judge Rader writes:
I agree with, and join in, the majority opinion. However, in reviewing the claim constructions articulated by the district court, I observe that it read a great deal into the claims in the process of construing them. Thus, I write separately to articulate a couple claim construction principles that may assist the district court on remand when it revisits its constructions. First, in claim construction, one must not import limitations from the specification that are not part of the claim. Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed.Cir.2012). Indeed, claims generally are not limited to any particular embodiment disclosed in the specification, even where only a single embodiment is disclosed. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed.Cir.2004). Second, and relevant to this case, a system claim generally covers what the system is, not what the system does. Hewlett–Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.Cir.1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) ("The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not."). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed .Cir.2009).
This framework is an important addition to the ongoing debate over functional claim language.
= = = = =