Harris Corp. v. Ericsson (Fed. Cir. 2005).

Harris owns the patent on a signal decoder that uses an estimator to compensate for transmission interference.  A jury found that Ericsson infringed the Harris patent.  Ericsson appealed — arguing for JMOL based on faulty claim construction.

On appeal, Ericsson asked the CAFC to take a fresh look at claim construction — arguing that the Means-Plus-Function term “time domain processing means” had been improperly interpreted in light of a case (WMS Gaming) that was decided at the Federal Circuit after the claim construction.  Harris, on the other hand, argued that Ericsson waived the WMS Gaming argument by failing to advance it at trial or object to the jury instructions.

Choice of law: The CAFC determined that waiver of a claim construction argument to be intimately associated with patent rights, and thus, that Federal Circuit law should apply to such questions.

Waiver Analysis: The CAFC found that it has “case-by-case discretion over whether to apply waiver” but that if Ericsson’s arguments on appeal was “the same concept” as that argued before the district court then there would be no waiver.  Following Gaus v. Conair. Because the appellate panel found Ericsson’s claim construction argument on appeal to be only a “slight change” from that argued at the district court and thus that there was no waiver.

Dissent: In a dissenting opinion, Judge Gajarsa argued that Ericsson’s argument on appeal was a complete “paradigm shift” from what it argued at trial and that Ericsson had at least “ten opportunities . . . to make its [new] claim construction arguments.”

Now, on appeal, Ericsson awakens to the benefit of WMS Gaming and argues for the first time that it controls. . . . The verdict of a jury will not ordinarily be set aside for error not brought to the attention of the trial court.”

Concluding with a policy analysis, Judge Gajarsa finds that the majority holding “improperly encourages parties to take their chances on a high stakes, potentially cost saving argument at trial, while proliferating new arguments on appeal. For various reasons this court already has a high reversal rate on claim construction issues, which tends to encourage appeals and, perhaps, discourage trial courts from heavily investing in claim constructions below. The court’s holding will only intensify this problem, and further distort the proper trial-appellate relationship regarding claim construction.”

Collegent v. ApplyYourself (Fed. Cir. 2005).

In one of the first claim construction cases following the landmark Phillips v. AWH case, the CAFC has reversed a district court’s construction of the phrase "a format specified by the institution."  In its decision, the panel cited Phillips for the proposition that the lower court had improperly given the term an overly broad customary meaning.  Id. ("‘customary meaning’ refers to the ‘customary meaning in [the] art field’").

NOTE: This week I have been on vacation at our family ranch in Kansas and blogging through my TREO.  Sorry for the typos.

SanDisk v. Memorex (Fed. Cir. 2005).

SanDisk holds a patent on Flash EEPROM with an improved architecture that extends the useful life of the device. 

When construing the claims, the trial court ruled that the claims did not cover systems with any memory cells grouped into non-partitioned sectors.  Because the accused devices included many sectors of memory cells that included non-partitioned sectors, the lower court granted defendants’ summary judgment motion that the devices did not infringe.

On appeal, the CAFC reviewed claim construction de novo, and reversed. First, the court looked at the plain language of the claim:

A method of operating a computer system including a processor and a memory system, wherein the memory system includes an array of non-volatile floating gate memory cells partitioned into a plurality of sectors that individually include a distinct group of said array of memory cells that are erasable together as a unit . . .

The appellate court found that the “including” transition, which is “a patent law term of art [meaning] ‘comprising.’”

Second, the appellate court rejected the district court’s finding that SanDisk had, during prosecution of the patent, disclaimed any cells grouped into non-partitioned sectors — finding that although the patent had been distinguished based on the partitioning, the disclaimer only applies to elements “subject to the claimed method, and no more.”  Thus, with open claim language, a device may be found to infringe a patent even if the device includes elements that were disclaimed during prosecution.

[T]here is no prior reason why that memory cell array or the discussion of it should be presumed to exhaust every cell on every EEprom in the “memory system” recited in the claim preambles. Given the open language in the claims, there is no reason for the court to read the prosecution argument with such a presumption in mind. Put differently, the reference to “each sector” means “each sector” subject to the claimed method, and no more. In short, SanDisk’s reading of this prosecution argument is at least reasonable. Thus, focusing on this passage alone, there is no “clear and unmistakable surrender” within the meaning of Golight.

Summary Judgment of Noninfringement Vacated and Remanded

Izumi Products v. Koninklijke Philips (Fed. Cir. 2005) (NONPRECEDENTIAL)

In the wake of the CAFC’s recent foray into disposable razors, the appellate panel has now made its mark on the world of electric rotary razors.

In 2002, Izumi sued Philips for infringement of its electric razor patent that discloses a specialized recess in the blade that helps ensure that “shaving debris” don’t adhere to the blades. After construing the claims, the district court granted summary judgment of non-infringement in Philips favor. On appeal, the CAFC (Lourie, Newman, JJ.) found an error in the district court’s claim construction based on their review of the patent specification and logical analysis, but without any mention of a dictionary analysis.

In a concurring opinion, Judge Linn remarked the disputed term, “recess,” should be given the “full scope of its ordinary and customary meaning” and not be limited by definitions “improperly read” from the specification. 

SeaChange Int’l. v. C-Cor (Fed. Cir. 2005).

In another warning to attorneys, the CAFC has limited the term “network for data connection” to include point-to-point connections based on a patent applicant’s response to a first office action.

Seachange sued C-Cor for infringement of its patent on a computer cluster for redundantly storing data. After claim construction in favor of Seachange, C-Cor stipulated to infringement and then lost invalidity issues at trial. 

On appeal, C-Cor argued that the lower court’s improperly applied an ordinary meaning to claim terms whose scope had been disclaimed during prosecution. The CAFC agreed with C-Cor, finding that “Applicant’s response to the First Action was a deliberate surrender of claim scope, unmistakable in its effect because it is not suitable to multiple interpretations.”  Interestingly, the court rejected SeaChange’s arguments to distinguish claim 1 that specifically called out the point-to-point system from claim 37 that did not do so — finding that applicant’s “global arguments” in the Office Action Response applied to all the claims.

As Professor Joseph Miller correctly states, this case also shows that the use of dictionaries “appears to be alive and well in Federal Circuit claim construction.  In this case, the court relied extensively on The New IEEE Standard Dictionary of Electrical and Electronics Terms.

Boss Control v. Bombardier and Sports Cars, Inc. (Fed. Cir. 2005).

In a dispute over a power interrupter, the CAFC affirmed a summary judgment of noninfringement, finding that the patentee had given a special limiting definition to a disputed claim term during prosecution.

Specifically, the court looked to how the patentee had distinguished the invention from prior art and incorporated that distinguishing feature into the claim language.

File Attachment: Boss Control.pdf (56 KB)

Brembo v. Alcon Components (N.D. Ill. 2005).

Danica Patrick has been in the media spotlight since her fourth-place finish in this weekend’s Indianapolis 500.  Now, the Brembo brakes on her Indy-car are the subject of a patent infringement lawsuit. 

One disputed claim term was “single part.”  Interestingly, because Alcon provided “no definition for the word ‘single,’ . . . the Court infer[red] that Alcon does not dispute Brembo’s proposed definition.” 

As with virtually all claim construction decisions.  This one is expected to be appealed. 

File Attachment: Brembo.claim.construction.pdf (103 KB)

Nazomi Communications v. ARM Holdings (Fed. Cir. 2005)

In a dispute over a patented “Java hardware accelerator” for translating Java bytecode into native instructions for a CPU, the district court construed the claim term “instruction” and found that ARM’s accused device did not infringe.

On appeal, the Federal Circuit found that the lower court had not been detailed enough in its claim construction ruling:

This court’s review of a district court’s claim construction, albeit without deference, nonetheless is not an independent analysis in the first instance. Moreover, in order to perform such a review, this court must be furnished "sufficient findings and reasoning to permit meaningful appellate scrutiny." Gechter v. Davidson, 116 F.3d 1454, 1458 (Fed. Cir. 1997). This requirement for sufficient reasoning applies with equal force to issues of law, such as claim construction, and issues of fact, such as infringement. Id.

This opinion was written by Judge Rader and the panel members include Chief Judge Michel and Judge Proust.  Harold Wegner has noted, and I tend to agree, that this opinion appears to be written as a foreshadow of where Rader would take the Phillips decision — a decision that not expected until late this summer.

Links:

• File Attachment: Nazomi Communications.pdf (66 KB)

Nellcor Puritan Bennett, Inc. v. Masimo Corp. (Fed. Cir. 2005)

by Baltazar Gomez

Appellant Nellcor owns U.S. Patent No. 4,934,372 (“the ‘372 patent”), which covers a pulse oximeter and method for using signals from red and infrared light, and processing the signals to measure blood oxygen saturation noninvasively. Appellee Masimo also makes pulse oximeters of the same type as Nellcor.

Nellcor filed suit in the U. S. District Court for the Central District of California alleging that Masimo products infringed the ‘372 patent. The district court granted summary judgment of noninfringement. On appeal, CAFC vacated and remanded for further proceeding because the district court erred in interpreting the claims.

Claim 1 of the ‘372 patent covers a method for detecting, digitizing, and processing the signals, separating much of the aperiodic noise from the signal, and calculating the oxygen saturation from the processed signal. Claim 1 describes the processing and separating step as follows:

processing the time-measure collectively to determine a composite waveform having a relative maximum and minimum amplitude corresponding to a composite periodic waveform of the periodic information in the time-measure so that the aperiodic information present in the time-measure is attenuated and filtered from the composite; (emphasis added)

The district court construed the phrase “attenuated and filtered” to mean “reduced and removed,” and concluded that Masimo did not infringe the ‘372 patent.

On appeal, Nellcor argued that the district court erred by construing “filtered” to mean removal rather than simply reduction. In determining the meaning of the phrase “attenuated and filtered,” CAFC examined the meaning the patentee used in the specification of the ‘372 patent. The ‘372 patent describes the relative reduction of the impact of the aperiodic noise by the small relative weight assigned to it that results in it being “quickly and effectively attenuated, and thus filtered out.” The ‘372 patent further describes that the claimed phrase “attenuated and filtered from the composite” is used to refer to “effective removal” of data, rather than the absolute removal of unwanted data. Further, CAFC also looked at the meaning of “filter” in the IEEE standard dictionary which defines “filter” as separation of data, signals, or material in accordance with specified criteria and elimination of certain portions of a signal. The CAFC agreed that the definition from the IEEE dictionary was consistent with the meaning given in the specification of the ‘372 patent. Thus, the CAFC concluded that the district court misinterpreted the claims of the ‘372 patent because the phrase “attenuated and filtered from the composite” means “reduced in comparison to the desired information.”

Vacated and remanded to evaluate whether Masimo infringes based on the new claim construction

Note: Dr. Baltazar Gomez is a scientific advisor at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. Dr. Gomez obtained his PhD in biochemistry from the University of Texas and researched retrovirology as a PostDoc at Cornell University.

Links:

• File Attachment: Nellcor v. Masimo (45 KB)
• In a parallel case, a jury recently found that Nellcor illegally excluded its competitors from the market for pulse oximeters, a device which monitors oxygen levels in blood. [AP Article]

Outlast Technologies v. Frisby Technologies (Fed. Cir. 2005)(Nonprecedential).

Most of you arrived at this post looking for information on patents on Frisbee discs and disc golf.  Unfortunately this is not a Frisbee case.  

However, it does involve temperature-resistant, phase changing materials that resist temperature change by changing between their solid and liquid state. (Remember latent heat from physics 101).

After claim construction, the district court awarded summary judgment of noninfringement to the defendant Frisby.  Specifically, the court found that the patentee had, during prosecution, clearly disclaimed certain ‘impregnated materials’ from the claim scope.  On Rule 54(b) certified appeal, Outlast argued for an alternative claim construction.

The Appellate Panel found that the district court had erred by finding disclaimer.  The rule, of course, is that a disclaimer must be unequivocal and unambiguous.  In this case, the patentee made one statement that is easily read as a disclaimer, but also made another statement that tends to contradict a disclaimer. 

The Panel found that such contradictory statements are ambiguous of the patentee’s desire to disclaim the subject matter, and thus cannot serve as such a disclaimer.

These seemingly contradictory statements do not unequivocally or unambiguously disclaim articles in which the microcapsules are impregnated within the interstices of the substrate. On the contrary, such contradictory statements are indicative of ambiguity.

The court remanded for a determination of infringement under its newly constructed claim construction using an ordinary meaning approach.