Toshiba v. Imation: Claim Construction Three Ways

By Jason Rantanen

Toshiba Corporation v. Imation Corp. (Fed. Cir. 2012) Download 11-1204
Panel: Moore (author), Schall, and Dyk (concurring-in-part and dissenting-in-part)

Dissents in Federal Circuit opinions dealing with claim construction often reflect disagreements over the correct methodology or execution.  Judge Dyk's dissent in Toshiba goes a step further, proposing a claim construction different from those advanced by either side. 

The technology in Toshiba involves DVDs. Toshiba's patent No. 5,831,966 claims a recording medium containing a "management region" that contains information about the structure of the medium – specifically, "number-of-recording planes identifying information that represents the number of recording planes of the recording medium." The district court construed this as "information whose purpose is to identify the number of recording planes on the recording medium."  Slip Op. at 15 (emphasis in CAFC opinion).  This "purpose" construction mattered because the patent holder accused single-sided DVDs of infringing the '966 patent.  These single-sided DVDs contain information that identifies the number of planes on that side – effectively providing information on the disc as a whole.  Because the purpose of the information on the single-sided DVDs is only to identify the planes on one side of the disc, however, the district court concluded that the accused discs do not infringe.

On appeal the majority disagreed with the district court's construction, agreeing with Toshiba that the limitation should be given its plain and ordinary meaning as recited in the claim itself.  "The language of the claim only requires that the information "represents" the number of recording planes."  Slip op. at 17.  The majority declined to read the embodiments of the specification into the claims.  "Absent disclaimer or lexicography, the plain meaning of the claim controls."  Slip Op. at 19.

Judge Dyk, writing in dissent, saw the issue differently.  In his view, the "number of recording planes" limitation requires the identification of both the number of disc sides and the number of layers per side, a construction neither party advanced.  To support this construction, he took a stronger view of the effect of the specification and the prosecution history than the majority.  In his opinion, "the specification and the prosecution history of the ’966 patent make clear that the central objective of the patent was to identify whether an optical disc was a one-sided disc or a two-sided disc."  Slip Op. at 27.  Given this construction, he would have affirmed the district court's grant of summary judgment of non-infringement. 

Indirect Infringement: The district court granted summary judgment of no indirect infringement of a second patent, No. 5,892,751, based on the conclusion that recording a DVD without finalizing it (the step necessary to allow the DVD to be played on drives other than it was recorded) was a substantial noninfringing use.  On appeal, the Federal Circuit affirmed in the context of contributory infringement but reversed for inducement of infringement.  Here, Toshiba failed to present any evidence that the recording and playing of unfinalized DVDs – which does not infringe the '751 patent – is "unusual, far-etched, illusory, impractical, occasional, aberrant, or experimental." Slip Op. at 8 (quoting Vita-Mix, 581 F.3d 1317, 1327 (Fed. Cir. 2009).  Furthermore, merely recommending an infringing use (finalizing the DVD) is not evidence that a non-infringing use is not a substantial use.  The substantial noninfringing use thus supported the grant of summary judgment of no contributory infringement.   However, the district court erred in holding that the existence of a such a use precludes a finding of inducement of infringement.  Nor could summary judgment of no inducement be affirmed on the ground that the patentee did not provide evidence of specific acts of infringement: circumstantial evidence can suffice.  Here, the circumstantial evidence was stronger than the "capable of infringing" evidence involved in Fujitsu v. Netgear, 620 F.3d 1321 (Fed. Cir. 2010) and ACCO Brands v. ABA Locks, 501 F.3d 1307 (Fed. Cir. 2007).  

37 thoughts on “Toshiba v. Imation: Claim Construction Three Ways

  1. 37

    The HTC One X is a handsome, speedy handset with power and versatility. You can see that a lot of thought has been applied to key features – the OS, the camera, the Beats Audio – but also to details such as the carefully milled holes that form the earpiece and rear speakers. If you can live with the size, this is currently the best Android smartphone around. Furthermore, older caveats about range and quality of apps and functionality compared to iPhones barely apply anymore. Okay, the App Store and iTunes Store are better than Google Play and Amazon MP3, but really not by much. Similarly, while the experience of iOS could be described as a little slicker, what was a gulf in quality is now more like a narrow alleyway. The sound is all processed via Dr Dre Beats Audio software and hardware, giving improved sonics on everything from the The Byrds to Angry Birds. It’s actually difficult to find things to criticise here. Some might balk at the lack of a microSD slot, but 32GB of built-in storage is plenty, and you also get access to bonus Dropbox storage for two years. Similarly, some don’t like non-removable batteries but if the result, as here, is greater longevity, it’s pretty hard to complain. The web browser works well, including a well-executed, Apple-style Read button that strips out images to leave just text. Zoom in on this and the words reformat to fit the screen. The menu button offers neat extras like a tab option that makes incognito browsing easy and one-press access to Flash player or desktop versions of sites. Battery life hasn’t always been HTC’s strongest suit, the One X rights that. It gives a good 12 hours of power usage, making it to its nightly recharges with few alarms. It’s also one of the first to market with Android 4.0 Ice Cream Sandwich, the latest version of Android. As ever with HTC, its overlaid with the company’s Sense skin. Sense is far better than similar overlays from LG, Sony and Motorola. HTC Sense is all-encompassing, with really well thought out apps and features. Take the lock screen. There, you drag a ring up the screen to wake the phone, but you can also drag one of four, user-selected icons – defaults are phone, mail, messages and camera – into the ring, to launch that app or function. Lists and menus on Android phones used to have an elastic spring to them as you scrolled. Now when you reach the top of a menu, contacts or missed call list, say, a blue light seeps out to tell you you’re at the end. On the One X, the list’s entries separate like carefully arranged slips of paper sliding apart. It’s really rather satisfying.

  2. 36

    If your beef is that the safeguards are not applied rigorously enough, you are not stating this clearly enough, and you are conflating issues.

    Man, this blog has the d-mbest trolls.

  3. 35

    Yes, becuase social security lawyers know so much about patent law.

    [eye roll]

  4. 33

    Do you think people only sue when they have a good chance of winning?

    No. But is that really even a worthwhile question to ask, sinking to some lowest common denominator of who would sue whom? It is rather besides the point under discussion.

    Do you think people only sue with the intention of going to trial/appeal on the merits? Do you think people never demand and collect money from infringers based on an empty threat of suit?

    No. But what is the point here? If a suit is brought without merit, the system has safeguards to be applied (e.g. Rule 11). If your beef is that the safeguards are not applied rigorously enough, you are not stating this clearly enough, and you are conflating issues. Try to stay focused.

    Do you think every defendant has the resources to contest the validity of a clearly invalid patent that it clearly infringes?

    Again, your beef is being misapplied if your beef is with the general legal system that we have. If the patent is so clearly invalid, put it into reexam (I am sure most everyone has enough resources for that).

    Do you think it’s logically possible for a granted patent to not have a presumption of validity?

    It is not logically possible for a granted patent to not have a presumption of validity. This is the law and has been recently affirmed in the i4i case. But then again, you are well aware of that.

  5. 32

    What do you think the chances would be of a registrant suing on this claim, if the claim did NOT carry any presumption of validity?

    You’re joking, right?

    Do you think people only sue when they have a good chance of winning? Do you think people only sue with the intention of going to trial/appeal on the merits? Do you think people never demand and collect money from infringers based on an empty threat of suit? Do you think every defendant has the resources to contest the validity of a clearly invalid patent that it clearly infringes? Do you think it’s logically possible for a granted patent to not have a presumption of validity? Check all that apply.

    Here, I have a thousand “patents” that your client infringes. Just bought them from the New And Improved PTO. Would your client like to go to the trouble of invalidating them all, or will he suddenly find he has too much money lying around?

  6. 31

    Good question IANAE. I would suggest that the better way to stop frivolous and vexatious suits is a Loser Pays rule but I do understand that this solution is not possible in the USA (politics being the art of the possible).

    Germany has two sorts of patents, those which mature from applications that are examined for patentability, and those which are not. The unexamined rights issue within 3 or 4 months of the application date.

    Of course, plaintiff patent owners assert both. Of course German courts enjoin infringers of both sorts, so competitors have to be wary of both sorts of patent. It is just that the presumption of validity is stronger for the examined rights. You pays your money and you takes your choice.

  7. 30

    Judge Richard Posner is sitting by designation as a trial court judge in a pending infringement lawsuit between Apple and Motorola. (N.D.Ill. 11–cv-8540). Judge Posner’s opinions are always interesting to read and this case is no exception. In a recent order, Judge Posner canceled the jury trial scheduled for this week and instead opined that the case is moot because there are no damages and therefore, “neither party can establish a right of relief.” In the order, Judge Posner indicated that a full opinion would be forthcoming, likely within the week.

  8. 29

    IANAE:

    What do you think the chances would be of a registrant suing on this claim, if the claim did NOT carry any presumption of validity?

  9. 28

    Nice strawman,

    Except no one said anything about anything about whether or not anybody would be willing to waste billions in litigation. It’s a totally unconnected point to the matter.

  10. 27

    It’s time to save innovators Billion$ of dollars and go with a pure registration system.

    LOL, because this case is proof that nobody would ever waste billions of dollars litigating frivolous patents if they were easy to get.

  11. 26

    The institution cannot do its job properly.

    It’s time to save innovators Billion$ of dollars and go with a pure registration system.

  12. 25

    Malcolm, good post that about cassettes. One would think that after that post any self-respecting commissioner would order reexamination of this patent.

    I, as well, would ask for a review of just how the PTO allowed such a patent to issue in the first place. The people responsible may be long gone by now. But the problem may not be one of people, but one of an institution not doing its job properly.

  13. 23

    Do I need to read the opinion to know that Judge Dyk’s construction is incorrect?

    Answer: no.

    number-of-recording-planes identifying information that represents the number of recording planes of the recording medium and

    recording-plane identifying information that uniquely identifies that recording plane.

    One does not need an army of lawyers or a judge to understand what this claim language means to one “skilled in the art”. The “art” of “identifying” how many sides a disc has and which side is which is an “art” that most humans master when they are seven years old.

  14. 22

    But isn’t Timothy using his initiative

    Yes, but so what? The other two judeges did the same thing and came up with different results (that just so happened to align with the same task as performed by the parties).

    And with more and more re-exams

    The point is not to engage in a full re-exam, but rather, bring the power best suited to make the PHOSITA judgment into the court.

  15. 21

    But isn’t Timothy using his initiative, and the PTO wrapper, to discern what the Examiner (vaguely a disinterested PHOSITA) thought the writer of the claim was using the language of the claim to mean?

    And with more and more re-exams, are we not seeing, de facto, the PTO opining more and more on what the writer of the claim was using the language of the claim to mean?

  16. 20

    Simply ask the PHOSITA

    Alas, a judge is not a PHOSITA.

    This would be a perfect opportunity for the court to request the USPTO to weigh in with what a PHOSITA would think.

    But that would necessitate the Office having common sense, and since they already had one bite at the application and deemed it PHOSITA approved,…

  17. 19

    Thanks for the Link. Having skimmed the majority and dissent opinions I am reminded of the UK Supreme Court method of construing a claim. Simply ask the PHOSITA: What was the writer of the claim using the language of the claim to mean?

    On that basis, Dyk, J. seems to be on the right road.

    Interstingly, his journey leads him to a construction not urged upon him by the patent owner and not urged upon him by the accused infringer. That reinforces my suspicion that he has planted his flag closer, than did any of the other judges or litigators involved, to the commonsense view of an impartial but well-informed specialist technical reader of the patent in suit what the writer of the claim was using the language of the claim to mean.

  18. 17

    “A recording medium comprising:

    at least one recording plane, wherein each recording plane on which data is recorded includes:

    a data region in which data is recorded; and

    a management region including

    number-of-recording-planes identifying information that represents the number of recording planes of the recording medium and

    recording-plane identifying information that uniquely identifies that recording plane.”

    How does this differ from a DVD with one 1 thereon and having only one side and having some other data on that one side?

    The “regions” are arbitrarily defined so far as I can see.

    Defense attorneys are apparently horrendous in this case.

  19. 16

    You’re not being serious though, are you?

    Only as serious as your comment. You decide.

  20. 14

    Maybe if the judges did this we could save billions that innovators pay to a decrepit federal agency, close the doors and have a pure registration system.

    Hmmmmm.

  21. 13

    even ultra vires

    MaxDrei,

    My guess is that the body to whom you would charge this task understands the proper function of law in the US (our beloved case or controversy) and realizes that if neither party below makes validity an issue, then there is no case of validity to be decided – no matter how obvious such a case may be.

    Some courts do not like to run amuck.

  22. 12

    Because there is no quick link to the Decision I have not yet read it. This in haste.

    I read a lot about abuse of the patent system by trolls, but how about the abuse which occurs when the Big Manufacturing Corp owner of a manifestly obvious claim nevertheless asserts it aggressively against a little guy? As Paul Morgan observes, obviousness is only ever an issue if the case goes to trial. With no Loser Pays rule either, why should BigCorp do anything other than pursue its business interests relative to Little Guy by asserting with full vigour even claims that it can readily see are hopelessly invalid?

    I’m wondering why the CAFC didn’t include in its decision here some Robin Jacob-like comment or other about the dysfunction. At least that utterance they could have made unanimously. The comment would have been obiter, even ultra vires, but if the utterances of the CAFC have some sort of declaratory function, then why not? Too political, I suppose.

  23. 11

    I am in total, complete, unequivocal, and absolute agreement with MM.

    I would have said exactly the same thing, had I looked at this thread before s/he commented.

    Paul–“Brief initial PTO prior art searches”? Are the examiners even cognating? I don’t think so. I think their procedure is entirely mechanistic, and that there isn’t even the simplest of thinking involved in many instances. Certainly there are exceptions, but NOT in this case.

    I’ll go further than MM: the court should have addressed the obviousness issue sua sponte, and those directly responsible for the initial grant of the patent should be disciplined up to and including dismissal, because this represents not a failure to do their job properly, but a failure to do any job at all, that could not be done more efficiently by a machine–and a simple machine, at that.

    Please forgive the hyperbole. Seeing things like this makes my blood boil–an initial failure, exacerbated by multiple subsequent failures, for all of which the taxpayer is paying. Don’t be fooled by the PTO’s b.s. accounting–they externalize an unbelievable percentage of their overall costs to create the impression they are returning money to the system.

    And litigants don’t pay anywhere near the costs of maintaining the court system.

    We all bear the costs of this cascade of increasingly-more-expensive, and needless, failures.

  24. 10

    Malcolm thinks that his complaining will work miracles because he gets to send his message on the Internets.

  25. 8

    P.S. Even if a timely reexamination cannot be concluded before a judicial claim interpretation [and that delay is supposed be ending starting three months from now when the AIA-expedited reexams kick in], file history arguments made by the patent owner to distinguish cited prior art in a reexamination well before it ends can in some cases reduce litigation “nose of wax” claim scope interpretations to thereby assist non-infringement summary judgments or reduce their Fed. Cir. reversals.

  26. 7

    Complaining about the brief initial PTO prior art searches of patent applications is pointless after the patent issues.

    One difference between you and me, Paul, is that I don’t assume that the litigants, lawyers or judges in this case are very intelligent or creative. I assume only (1) that the litigants are stubborn (2) that the lawyers are overpaid and (most likely) making everything more difficult and complicated than it actually is (thereby increasing profits).

    The fact that claims as obvious as these were issued in the first place, and the fact such claims are not incredibly easy to destroy on summary judgment illustrates serious flaws with both the US patent system and the legal system generally. That is “the point” of my comments above. If you disagree with these conclusions, feel free to disagree and explain why you disagree.

    In the meantime, gramps, welcome to the Internets.

  27. 5

    When, as happens so often now, a case is on appeal at the Fed Cir. from a summary judgment of non-infringement [because it is much easier to get than a summary judgment of obviousness] then obviousness is not even in issue. Typically obviousness will not ever get considered in patent litgation unless it is one of the very small percentage of patent suits that go all the way to trial. Complaining about the brief initial PTO prior art searches of patent applications is pointless after the patent issues. The logical question is why was a patent reexamination not filed by a defendant as soon as it was threatened?

  28. 3

    A recording medium comprising:

    at least one recording plane, wherein each recording plane on which data is recorded includes:

    a data region in which data is recorded; and

    a management region including

    number-of-recording-planes identifying information that represents the number of recording planes of the recording medium and

    recording-plane identifying information that uniquely identifies that recording plane.

    Commercial cassettes and phonograph recordings were manufactured (and still are manufactured) with information that identifies the presence (or absence) of content on each side of the tape and/or phonograph recording.

    Information indentifying the recording plane (e.g., side 1/4, 2/4, 3/4, 4/4, for a double LP) has appeared, and continues to appear, in the “recording planes” of phonographs for years (usually in the so-called “run-out groove”).

    How can the broad concept of putting such information in “machine-readable form” be non-obvious decades after computer technology was developed and universally adopted?

    Once again: when it comes to digital technology, the USPTO is a complete joke. Who was the commissioner when this p.o.s. was granted? Heckuva job.

  29. 2

    “the central objective of the patent was to identify whether an optical disc was a one-sided disc or a two-sided disc.”

    Because prior to 1996 nobody had ever contemplated indexing media for the purpose of identifying where information on the media was located. This must have been an extraordinarly difficult problem for Toshiba’s engineers to solve. And what a fantastically ingenious solution!!!!!!

  30. 1

    The spec, and the applicant during prosecution in response to a 112 rejection, equated “recording plane” disc side, i.e. The number of recording planes could be 1 or 2 depending on the number of sides recorded.

    The examiner seem to understand that a disc could have more than one plane per side, but where that idea came from is not clear. He at one point entered a 112 rejection that the term was not supported at all. The applicant responded that “recording plane” limitation was supported by the specification’s discussion of disc sides.

    I haven’t read the patent or the full prosecution history, but my gut feeling is that “recording plane” had only one meaning, and it was not the meaning given it by the majority here. It meant side.

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