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Claim construction and noninfringement affirmed on one patent, vacated on another

May 13, 2008
Post by Blog Staff

In a decision last week, the Federal Circuit vacated a district court's grant of summary judgment of noninfringement of one patent and affirmed summary judgment of noninfringement of another. The determinations turned on the construction of one claim element in each patent.In the first patent, the court held that there was sufficient disclosure in the specification to permit the broader construction of the critical term advanced by the patentee. Judge Lourie dissented from this portion of the opinion, and would have affirmed the district court's construction and, therefore, its summary judgment of noninfringement.For the second patent, although the only embodiment disclosed in the specification was outside the scope of the district court's construction, nevertheless the court affirmed the construction as it was clear from the claim language, as well as supported by the prosecution history. As a result, this was a case where there was "highly persuasive evidentiary support" for a construction that excluded the preferred embodiment.

More detail of Lucent Techs., Inc. v. Gateway, Inc. after the jump.Lucent owns two patents covering unrelated technologies that it asserted against Gateway, Dell, and Microsoft. The first is directed to a communications protocol that facilitates information exchange between a terminal device and the host processor. The second is directed towards methods of digitizing or encoding speech by compressing speech by removing redundant pitch information.The '131 patentIn this patent, the host processor is described as "a computer that communicates with multiple users to provide services such as transaction processing (e.g., online banking services) or database access. The claims of the patent encompass methods for exchanging messages between the terminal device and the host processor. The district court construed the term "terminal device" contained in the '131 patent's claims to mean:

[A] computing device such as a data terminal, workstation, portable computer, or smart phone that enables a user to communicate with a host processor. It manages its associated display itself and manages its internal memory with the assistance of the host processor.
The district court later refined its definition to "exclude[] arrangements where the host processor controls the positioning of objects on the display of the terminal device." Based on this construction, the district court granted summary judgment of noninfringement, as in the accused systems, the host processor dictated the position of objects on the terminal display.On appeal, the Federal Circuit first noted that the abstract of the '131 specification did not support the district court's claim construction of the term "terminal device." The abstract "indicates that the host processor plays a role in specifying at least relative information for object display on the terminal device." Likewise, the summary of the invention describes the invention as "a communications protocol between the host processor and the terminal device that functions independent of the operating characteristics of a specific terminal device." Further, the court noted while the specification "indicates that the terminal device may exercise control over the form of objects, it is silent with respect to other aspects of display, including the placement or location of objects." Several other passages in the specification described the host processor as having a role in controlling the object display, including the relative positioning of objects as well as the host processor controlling how the terminal device displays text. As a result, the court held the district court's claim construction of "terminal device" conflicted with the specification. The Federal Circuit then turned to the prosecution history to determine whether there was a clear disavowal of claim scope. During prosecution to distinguish a prior art reference, the applicants argued that the host process did not exercise control of actual object locations, in contrast to the cited prior art. The Federal Circuit cited the applicants' argument that the host processor "transmit[s] an object type and an independent identifier assigned to the object" to the terminal device as "consistent with the notion that the host process exercises some control over object display."Based on all this evidence, the Federal Circuit held that proper construction of "terminal device" was:
A computing device such as a data terminal, workstation, portable computer, or smart phone that enables a user to communicate with a host processor. It manages the actual positioning of objects on its associated display itself and manages its internal memory with the assistance of the host processor.
Accordingly, the Federal Circuit remanded the case for a determination of infringement of the patent based on its revised construction of the term. Judge Lourie dissented from this portion of the majority opinion. He argued that "[i]t is disingenuous for the inventors to say now that allowing the host processor to specify some limited relative positioning was an important aspect of their invention that they did not intend to surrender when they made absolutely no effort to provide such clarity in the prosecution of their patent." As a result, he would have affirmed the district court's claim construction and summary judgment of noninfringement.

The '954 patent
In this patent, the applicable claim includes a 5-step process, and the critical limitation was "each successive iteration including the steps of." The district court construed the claims to require that "all of the steps following this clause must each be performed in forming each pulse." The district court later clarified that "its claim construction required that each of the five steps actually be performed during each pulse forming iteration, and did not allow for an interpretation where one or more of the step(s) is performed in one pulse-forming iteration and then the results of the step(s) are used in subsequent iterations." Based on this construction, there was no disputed issue of fact regarding literal infringement, and the district court granted summary judgment. The court also granted summary judgment of noninfringement under the doctrine of equivalents, holding the equivalent was not tangentially related to the reason for the narrowing amendment during prosecution.On appeal, the Federal Circuit noted that the claim language clearly supported the construction of the district court requiring performance of "all of steps 1-5 during each pulse-forming iteration." The Federal Circuit cited claim 6 as representative, and noted that it recited a series of steps forming an excitation signal for each time frame, the last step being "generating a multipulse excitation code having a sequence of n=1, 2, . . . , N pulses for each time frame . . . by iteratively forming a sequence of pulses for said time frame." This claim language indicated that "the generation of the multipulse excitation code clearly involves pulse-forming iterations." The Federal Circuit then noted that the claim then recited "each successive iteration including the steps of," followed by steps 1-5. Further, the Federal Circuit noted that it had consistently interpreted "including" and "comprising" as having equivalent meanings, so the use of "including" did not cause a contrary result. The Federal Circuit further noted that the district court's claim construction of the "each successive iteration including the steps of" term excluded the only embodiment described in the specification. Even though a construction that excludes a preferred embodiment requires highly persuasive evidentiary support, here the claim language clearly supported the district court's construction. The court noted that "when the claims are susceptible to only one reasonable construction, we will construe the claims as the patentee drafted them." Further, where the claim language is unambiguous, the court can interpret claims as excluding all disclosed embodiments. The court further noted that the prosecution h


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