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Claim construction and finding of noninfringement affirmed
June 20, 2008

In a decision Wednesday, the Federal Circuit affirmed a district court's claim construction and grant of summary judgment of non-infringement. The patent holder's proposed claim interpretation relied heavily on means-plus-function language and an embodiment in the specification not covered by the claim construction.

The Federal Circuit found that the failure to use clear "means-plus-function language" created a rebuttable presumption that the language recited structural limitations. The court was not troubled by the excluded embodiment and held that the district court's interpretation was well-supported by the specification.

The patent holder also argued that the district court erred by finding no infringement under the doctrine of equivalents. The Federal Circuit affirmed the district court, holding the patent holder's application of the doctrine of equivalents improper as it would have completely eliminated one or more limitations of the claims.

More concerning TIP Sys. v. Phillips & Brooks/Gladwin, Inc. after the jump.

TIP owns two related patents, U.S. Patent Nos. 6,009,169 and 6,512,828, for wall-mounted telephones intended for use in correctional facilities. Two goals met by the invention included preventing inmate abuse of the phone and preventing the inmates from using the phone as a weapon. As a result, the phone is constructed such that the inmate must put his head next to two openings in the wall (for the mouthpiece and the earpiece) in order to use the phone. The '169 patent accomplished this through the use of a bracket which held a conventional telephone handset up to the two openings, the '828 patent mounted a speaker and microphone with no conventional telephone headset required. An example of such a phone is showin in the figure below:

Figure 1

The defendant companies sold two phones, also intended for use at correctional facilities, and also wall-mounted with holes for the mouthpiece and earpiece. TIP contested many of the district court's claim definitions, two of which are set out below.

The district court defined "handset" as "a handle with an earpiece at one end and a mouthpiece as the opposite end." Because the two phones at issue did not contain a headset with a "handle" the court determined that there could not be infringement. TIP raised several arguments for excluding the term "handle" from the definition, including the argument that the changed "handset" to "earpiece and mouthpiece" in prosecuting a prior application. TIP claimed that this demonstrated that they considered a handset to be the earpiece/mouthpiece combination regardless of whether a handle was present. The Federal Circuit dismissed this argument, finding that there was no clear disavowal or disclaimer regarding the definition of handset and that the language in the present application was sufficient to support the district court's interpretation. The district court was also free to discount TIP's proffered extrinsic evidence of industry usage of the term, as the construction was sufficiently clear from the intrinsic evidence.

The district court interpreted "said mouthpiece and said earpiece extending outward from said housing through said aural apertures" to mean that "both the earpiece and mouthpiece pass through apertures in the front wall such that they project out from the front wall" of the telephone. The phones at issue did not have protrusions for the apertures. TIP argued that this definition was improper as it excluded one embodiment of the invention included in the specification. The Federal Circuit dismissed this argument stating that "the mere fact that there is an alternative embodiment disclosed in the '828 patent that is not encompassed by [the] district court's claim construction does not outweigh the language of the claim."

TIP also attempted to overcome this interpretation by claiming that the language was "means-plus-function language" such that it should cover the embodiments in the specification under 35 U.S.C. § 112. The Federal Circuit noted "the term 'means' is not the only way to invoke § 112, ¶ 6" however, failure to use the term 'means created a rebuttable presumption that § 112 did not apply. In overcoming the presumption the court was to decide if sufficiently definite structure was recited. Finding that the claim elements recited clear and definite structures such as mouthpiece, earpiece, dialing pad, etc. The Federal Circuit dismissed the means-plus-function argument.

TIP argued the construction of two additional terms in the patents, but the court rejected these arguments as well, affirming the district court's construction on both.

TIP also claimed infringement of the "handset" limitation under the doctrine of equivalents, claiming that "the earpiece, mouthpiece, electrical wires, and phone housing elements of the accused devices perform substantially the same function in substantially the same way to obtain the same result as the claimed handset." The Federal Circuit noted that "the essential inquiry is whether the accused product or process contain elements identical or equivalent to each claimed element of the patented invention." The court further stated that "while the accused devices each contain an earpiece and a mouthpiece, there is no structure in the accused devices that serves the equivalent to a handle." Continuing, the court noted although "there need not be a one-to-one correspondence between elements of the accused device and the claimed invention, that does not condone ignoring a claimed limitation in assessing infringement under the doctrine of equivalents."

Based on this reasoning, the Federal Circuit affirmed the district court's grant of summary judgment of non-infringement with respect to both patents.

For the full decision in TIP Sys. v. Phillips & Brooks/Gladwin, Inc., click here.

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