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Recent Cases
United States
Court of Appeals for the Federal Circuit
02-1491
ACTV, INC. and HYPERTV NETWORKS, INC.,
Plaintiffs-Appellants,
v.
THE WALT DISNEY COMPANY,
AMERICAN BROADCASTING COMPANIES, INC.,
and ESPN, INC.,
Defendants-Appellees.
Kenneth
W. Starr, Kirkland & Ellis, of Washington, DC, argued for plaintiffs-appellants. With him on the brief were David
P. Swenson, Kannon K. Shanmugam, and Gregory F. Corbett. Of counsel was Robert G. Krupka,
Kirkland & Ellis, of Los Angeles, California.
Matthew
D. Powers, Weil, Gotshal & Manges LLP, of Redwood Shores, California, argued for defendants-appellees. With him on the brief were James
W. Quinn, Steven D. Glazer, Steven J. Rizzi, and Beth
A. Oliak, Weil, Gotshal & Manges LLP, of New York, New York.
Appealed from: United States District Court for the Southern
District of New York
Judge Jed S. Rakoff
United States Court of Appeals for
the Federal Circuit
02-1491
ACTV, INC. and
HYPERTV NETWORKS, INC.,
Plaintiffs-Appellants,
v.
THE WALT DISNEY
COMPANY,
AMERICAN
BROADCASTING COMPANIES, INC., and ESPN, INC.,
Defendants-Appellees.
__________________________
DECIDED: October 8, 2003
__________________________
Before LINN, Circuit Judge, FRIEDMAN, and PLAGER,
Senior Circuit Judges.
LINN, Circuit Judge.
ACTV, Inc., and HyperTV Networks, Inc., (collectively
“ACTV”) appeal an order of the United States District Court for
the Southern District of New York, dismissing ACTV’s complaint after
deciding, on motion for summary judgment, that The Walt Disney Company,
American Broadcasting Companies, Inc., and ESPN, Inc., (collectively
“Disney”) did not infringe the claims of U.S. Patent Nos.
5,774,664 (“the ’664 patent”), 5,778,181 (“the
’181 patent”), and 6,018,768 (“the ’768
patent”). ACTV, Inc. v.
Walt Disney Co., 204 F. Supp. 2d 691, 693 (S.D.N.Y. 2002) (“Order”). Because we conclude that the
district court erroneously construed various disputed claim limitations and
further failed to properly consider infringement under the doctrine of
equivalents, we vacate the district court’s grant of summary judgment
in Disney’s favor and remand for further proceedings consistent with
this opinion.
BACKGROUND
The present case concerns technology for the
synchronization of television information with information from the
Internet. ACTV owns the
’664, ’181, and ’768 patents-in-suit, which disclose and
claim various aspects of this technology. Each of these patents issued from
continuation-in-part applications that depend, ultimately, from a common
parent application. As such,
the written descriptions of the patents are, with some modifications,
substantially the same.
The ’181 patent specification discloses a
system that “combines the rich visual capabilities of television with
the vast resources of the Internet.” ’181 patent, col. 3, ll.
39-41. As distinguished from a
prior art system known as “Intercast,” which embedded Internet
content within the video blanking interval (“VBI”) of an analog
video signal, the system disclosed in the ’181 patent uses the VBI
merely to transmit an identifier known as a uniform resource locator
(“URL”), specifying the location of content on the
Internet. Id.
at col. 2, ll. 9-64. The VBI is
the short period of time when the electron beam of a television cathode ray
tube is turned off and redirected back to the top left corner of the
television screen in preparation for the display of the next image. Because video information is not
being sent during this interval, the television may receive other data,
such as closed-caption text. In
the Intercast system, the Internet content transmitted during the VBI must
be “stripped down” because the relatively short duration of the
blanking interval limits the effective bandwidth available – thereby
limiting the amount of information that may be sent. Id. at col. 2, ll.
53-57. In addition, Intercast
requires special hardware both to embed the Internet content in the VBI and
to extract the content once it is received by the end user. Id. at col. 2, ll. 57-61.
In contrast, the ’181 system is “a much
more flexible, but less complex system.” Id. at col. 2, ll.
65-66. The information sent by
the ’181 system is not the information content itself, but rather a
short text string—a URL—that identifies and locates the content
on the Internet. Thus, the
system uses only a small amount of the VBI bandwidth and does not require
specialized hardware to embed or extract the Internet content. Id. at col. 4, ll. 4-11. At the desired time and using the
received URL, the ’181 system uses certain programs to retrieve the
desired content from the Internet.
Id. at col. 5, ll. 9-12.
In an alternative embodiment, as disclosed in the ’664 patent,
the system does not place URLs in the VBI, but instead, enables
broadcasters to transmit to end users a “link file” containing
a list of pre-scheduled URL Internet addresses. ’664 patent, col. 3, ll.
41-67. In another embodiment,
as disclosed in the ’768 patent, the URLs are encoded within a
digital video signal and received either by digital cable boxes or digital
televisions. ’768 patent,
col. 9, ll. 36-42, col. 10, ll. 10-15.
ACTV initiated
an action against Disney, asserting that Disney’s Enhanced TV
(“ETV”) system infringes claims 1-3 of the ’664 patent;
claims 1, 12, and 13 of the ’181 patent; and claims 1, 3, and 19 of
the ’764 patent. Claim 1
of the ’181 patent is illustrative of the asserted claims and
recites, with disputed terms underlined:
1. A system for
presenting integrated television programming and corresponding related
Internet information segments obtained from Web sites on the Internet, the
system comprising:
a means for receiving
programming, wherein the programming contains a video signal, an audio
signal and one or more uniform resource locators, wherein the uniform
resource locators specify one or more Internet addresses of the information
segments which relate specifically to the content of the video and
audio signals of the programming;
a means for decoding,
connected to the receiving means, the uniform resource locators to
determine the specified Internet addresses;
a controller means,
connected to the decoding means, for interpreting the uniform resource
locators;
a web browser,
connected to the decoding means and the controller means, for sending message
requests to specific Internet sites located at the Internet addresses
corresponding to the uniform resource locators and consequently
receiving the one or more requested Internet information segments residing
at the determined Internet addresses, the browser retrieves the requested
Internet information segments under the direction and control of the
controller means; and
a display means,
connected to the controller and receiving means, for presenting the video
and audio signals concurrently with the Internet information segments;
whereby the Internet
information segments are synchronized to the video signal and displayed at
predetermined times during the program.
Each of the claims asserted by ACTV includes at
least: (1) a means for receiving a URL; and (2) a means for decoding the
URL. Each asserted claim,
except for claim 3 of the ’664 patent, also contains a means for
interpreting the URL.
On March 13,
2002, the district court issued a Markman Memorandum
detailing its construction of thirteen disputed claim terms. ACTV, Inc. v. Walt Disney Co.,
204 F. Supp. 2d 650 (S.D.N.Y. 2002) (“Markman Memorandum”). The district court noted that all of
the asserted claims are drafted with certain limitations in
means-plus-function format as defined in 35 U.S.C. § 112, ¶
6. Id. at 652. Although the district court did not
explicitly identify the functions associated with each of the
means-plus-function claim limitations, it identified a general function of
the claims as “synchroniz[ing] video and TV programming with web
pages . . . in ways corresponding to the kinds of structures described in
the [specification.]” Id. The district court construed the
functional terms of two of the means clauses—namely the
“decoding” and “interpreting” clauses. The district court construed
“decoding” as the “extraction or retrieval of data from
any data stream – not necessarily a video or audio signal –
based on a predetermined format or encoding stream.” Id. at 655. It construed
“interpreting” as “any kind of analyzing and translating
utilized to enable the browser to effectively retrieve the relevant Web
page.” Id. at 656.
Within the
text of the “decoding” and “interpreting” (as well
as “receiving”) clauses, the district court construed
“uniform resource locator,” or URL, as “the complete
address of a site on the Internet specifying both a protocol type and a
resource location.” Id.
at 654. The district court
determined that an address consisting of a protocol type (such as
“http://”) and a resource location (such as “www.fedcir.gov”)
is known as an “absolute URL.” Id. It also determined that, in
contrast, a URL consisting of less than a protocol type and resource
locator is known as a “relative URL.” Id. The district court then concluded
that the term URL, as contemplated by the patent, includes only absolute
URLs. Id.
Relevant to
the discussion that follows, the district court construed “Internet
address” to mean “a particular host on the Internet, specified
by a uniform resource locator that is unique to that host,” id.,
and “Internet information segments” to mean “parts into
which information on the Internet is commonly divided, such as a Web
page.” Id. at
653.
Based on the district court’s construction of
the term “uniform resource locator” in the functional statements
of the means-plus-function claim limitations, Disney moved for summary
judgment, arguing that its ETV system transmits only file names, not
absolute URLs. Because absolute
URLs are not transmitted, the ETV system necessarily does not receive, decode,
or interpret URLs as defined by the district court. In a very short memorandum
order, the district court concluded that Disney’s ETV system does not
perform the identical functions of the asserted claims, i.e., ETV does not
receive or decode absolute URLs, and thus cannot literally infringe. Order, 204 F. Supp. 2d at
693. In addition, the court
foreclosed recourse to the doctrine of equivalents for these limitations
because “the presence of means to receive and to decode full Internet
addresses is a fundamental difference between the two systems.” Id. Finding no infringement, either
literally or under the doctrine of equivalents, the district court granted
Disney’s motion for summary judgment and dismissed ACTV’s
complaint. Id. ACTV appeals portions of the
district court’s claim construction and its grant of summary judgment
in favor of Disney. This court
has jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (2000).
DISCUSSION
I
We review a
district court’s grant of summary judgment de novo. Kemco Sales, Inc. v. Control
Papers Co., 208 F.3d 1352, 1359 (Fed. Cir. 2000). We make an independent evaluation of
whether the standards of summary judgment have been met. Id. Summary judgment is appropriate when
there are no genuine issues of material fact and the moving party is
entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986).
In answering
the question of infringement, a court conducts a two-step analysis. Generation II Orthotics, Inc. v. Medical
Tech., Inc., 263 F.3d 1356, 1363 (Fed. Cir. 2001) (“Gen II”). First, the claims are construed to
determine their scope. Id. Second, a court determines whether
the accused device falls within the scope of the claims as construed. Id. Claim construction, the first step,
is a question of law that this court reviews de novo. Cybor Corp. v. FAS Techs., Inc.,
138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). The determination of the claimed
function and corresponding structure of a means-plus-function claim
limitation is a question of law, reviewed de novo. Kemco Sales, 208 F.3d at
1360.
In construing
a means-plus-function limitation drafted in accordance with § 112,
¶ 6, the recited function within that limitation must first be identified. Gen II, 263 F.3d at
1363. Then, the written
description must be examined to determine the structure that corresponds to
and performs that function. Id. When identifying the claimed
function, this court has noted that § 112, ¶ 6 “does not
permit limitation of a means-plus-function claim by adopting a function
different from that explicitly recited in the claim.” Id. Correctly identifying the claimed
function is critical, because “an error in identification of the function
can improperly alter the identification of the structure . . .
corresponding to that function.”
Id.
II
In the present
case, neither party disputes that the receiving means, decoding means, and
interpreting means claim limitations of the patents are written in
means-plus-function form, as defined in 35 U.S.C. § 112, ¶
6. ACTV argues that the
district court construed the term URL too narrowly, as encompassing only
absolute URLs. It thus contends
that the district court erroneously restricted the receiving, decoding, and
interpreting functions of the means-plus-function claim limitations. ACTV asserts that the term URL
properly should be construed to encompass both absolute and relative URLs. Disney argues that the district
court correctly considered the evidence and properly construed URL as
encompassing only absolute URLs.
If this court adopts ACTV’s broad interpretation of URL,
Disney argues that summary judgment of non-infringement is still proper on
the alternative ground that the district court misconstrued the decoding
and interpreting means claim limitations.
As described
above, claim 1 of the ’181 patent recites, inter alia,
“a means for receiving . . . one or more uniform resource locators,
wherein the uniform resource locators specify one or more Internet
addresses of the information segments which relate specifically to the
content of the video and audio signals of the received
programming.” The
decoding means limitation in this claim reads “means for decoding . .
. the uniform resource locators to determine the specified Internet
addresses,” and the interpreting means claim limitation recites
“a controller means . . . for interpreting the uniform resource
locators.” Although the
term URL appears in a slightly different context in the functional
statement of each limitation, the district court determined that it had the
same meaning throughout the asserted claims of all of the asserted
patents. Because of this, the
district court disposed of the case wholly on its construction and analysis
of the term URL, concluding that this was “a simple issue that
resolves the case.” Order
at 2. We begin our analysis
with the construction of this critical term.
A
First and
foremost, the analytical focus of claim construction must begin, and remain
centered, on the language of the claims themselves. Tex. Digital Sys., Inc. v.
Telegenix, Inc., 308 F.3d 1193, 1201-02 (Fed. Cir. 2002) (quoting Interactive
Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir.
2001)). Because the claim
language is chosen by the patentee to “particularly point[ ] out and
distinctly claim[ ] the subject matter” of the invention, 35
U.S.C. § 112, ¶ 2, the claim terms chosen by the patentee carry a
presumption that “they mean what they say and have the ordinary
meaning that would be attributed to those words by persons skilled in the
relevant art.” Tex.
Digital, 308 F.3d at 1202.
In the absence of an express intent to impart a novel meaning to the
claim terms, the words are presumed to take on the ordinary and customary
meanings attributed to them by those of ordinary skill in the art. See, e.g., Teleflex, Inc.
v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). The
ordinary and customary meaning of a claim term may be determined by
reviewing a variety of sources, including the claims themselves, see
Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed.
Cir. 1999); dictionaries and treatises, Tex. Digital, 308 F.3d at
1202; and the written description, the drawings, and the prosecution
history, see, e.g., DeMarini Sports, Inc. v. Worth, Inc., 239
F.3d 1314, 1324 (Fed. Cir. 2001).
While certain terms may be at the center of the claim construction
debate, the context of the surrounding words of the claim also must be
considered in determining the ordinary and customary meaning of those
terms. See Brookhill-Wilk
1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1299 (Fed. Cir.
2003); Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369,
1374 (Fed. Cir. 1999).
ACTV, in arguing
that the ordinary and customary meaning of the term URL encompasses both
relative and absolute URLs, provides a document entitled Request for
Comments 1808 (“RFC 1808”), from the World Wide Web Consortium
(“W3C”), an industry working group, as authoritative support
for this position. RFC 1808
discusses both absolute and relative URLs, noting that a relative URL
“is a shortened form of that for [an] absolute [URL]” and that
a relative URL is “a compact representation of the location of a
resource.” In response,
Disney offers an earlier document entitled Request for Comments 1738
(“RFC 1738”), from the same organization, in support of its
argument that URL encompasses only absolute URLs. Specifically, RFC 1738 indicates
that a URL has a typical syntax requiring both a protocol type and a
resource locator. RFC 1738 also
distinguishes between “relative links,” in which the expression
of a related resource is described “in the same place as this one
except with the following relative path,” and general URL syntax,
which provides “an abstract identification of the resource
location.”
As this court
has previously noted,
[d]ictionaries,
encyclopedias and treatises, publicly available at the time the patent is
issued, are objective resources that serve as reliable sources of
information on the established meanings that would have been attributed to
the terms of the claims by those of skill in the art. Such references are unbiased
reflections of common understanding not influenced by expert testimony or
events subsequent to the fixing of the intrinsic record by the grant of the
patent, not colored by the motives of the parties, and not inspired by
litigation. Indeed, these
materials may be the most meaningful sources of information to aid judges
in better understanding both the technology and the terminology used by
those skilled in the art to describe the technology.
Tex. Digital, 308 F.3d at 1202-03.
As a preliminary matter, we consider whether the RFCs
presented by the parties rise to the level of unbiased, contemporaneous
reflection of the common understanding of the technical terms in question
as to be considered a reliable source of information on the meaning
attributed to those terms by those skilled in the art. The purpose of the W3C organization
is “to lead the World Wide Web to its full
potential by developing common protocols that promote its evolution and
ensure its interoperability.”
About the World Wide Web Consortium (W3C), at
http://www.w3c.org/Consortium/ (last visited Aug. 7, 2003) (“W3C
Website”). To this
end, members of W3C (including various industry groups, manufacturers, and
others, each with their own conceivable interests in the agenda) are
involved in developing standards to describe the various building blocks of
the Internet. Id. Both RFC 1738 and RFC 1808 are
working papers generated during standardization discussions by one subset,
or working group, within W3C. See,
e.g., Uniform Resource Locators (RFC 1738), at
http://www.w3.org/Addressing/rfc1738.txt (T. Berners-Lee et al. eds. Dec.
1994) (“This document specifies an Internet standards track protocol
. . . .”). The purpose of
the RFCs is thus to collect commentary and to select language to facilitate
a common understanding, or to select a standard, from a variety of
competing technologies and vocabularies and from a variety of potentially
competing interests. Indeed,
the acronym “RFC” suggests that end: “Request for Comments.” This purpose is in sharp contrast to
the role of dictionaries and treatises, which aim not to select or give
meaning to a word or phrase, but to report the meaning already established
and commonly understood by those skilled in the art. See, e.g., Samuel A. Thumma
& Jeffrey L. Kirchmeier, The Lexicon Has Become a Fortress: The United States Supreme Court’s
Use of Dictionaries, 47 Buff. L. Rev. 227, 291 (1999) (stating that
first resort to a dictionary may be appropriate in determining meaning
because “dictionaries are designed to reflect usage.”
(emphasis added)).
Both parties offer these
RFC documents as authoritative, unbiased sources relating to the meaning of
the expression URL. Because the
RFCs were not designed to reflect common usage, but rather to assign
language to facilitate further conversation, and because of the seeming
contradictions between RFC 1738 and RFC 1808, we conclude that both
documents are extrinsic evidence, and in light of the discussion below, we
decline to rely on them in our claim construction analysis. See Vitronics Corp.
v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[If] an analysis of the
intrinsic evidence alone will resolve any ambiguity in a disputed claim
term . . . it is improper to rely on extrinsic evidence.”). It should be understood, however,
that there is no general prohibition on the use of publications from
standards-setting organizations to aid in determining the ordinary and
customary meaning of technical terms.
Where such a document reflects common usage by those skilled in the
relevant art, the document may indeed be an appropriate reference. Where, as in this case, the
documents of the standards-setting organizations do not reflect common
usage, but purport to select language to be used in the future, elevation
of these Requests for Comments to the same authoritative, unbiased level as
dictionaries is improper.
In the present
case, the construction of URL is principally informed by the plain language
and surrounding context of the claims themselves. See Brookhill-Wilk,
334 F.3d at 1299. The claims
recite that a URL “specif[ies] one or more Internet addresses
of the information segments which relate specifically to the content
of the video and audio signals of the programming.” ’181 patent, col. 59, ll. 8-12
(emphasis added). In construing
the claim term URL, these additional terms contained in the claimed
means-plus-function expressions provide context for the term URL and must
themselves be construed. See,
e.g., Hockerson-Halberstadt, 183 F.3d at 1374 (“Proper
claim construction, however, demands interpretation of the entire claim in
context, not a single element in isolation.”). Thus, even though the district
court’s constructions of “Internet address” and
“information segments” were not explicitly appealed, we must
also construe those terms to properly construe the appealed term URL.
The district
court’s construction of “information segments” as
“simply refer[ring] to parts into which information on the Internet
is commonly divided” is supported by the claim language and the
specification. See Markman Memorandum,
204 F. Supp. 2d at 653; ’181 patent, col. 3, l. 6, col. 6, l. 12;
’664 patent, col. 3, l. 31, col. 8, l. 32; ’768 patent, col. 3,
l. 33, col. 8, l. 55. These
parts are exemplified by, but not limited to, items such as web pages,
audio clips, and images. See
id. However, the
district court’s construction of the term “Internet
address,” as “a particular host on the Internet, specified by a
uniform resource locator that is unique to that host,” Markman Memorandum,
204 F. Supp. 2d at 654, is not supported by the claim language or
specification, and relies on circular reasoning related back to URL. Rather, the context of the term
“Internet address” informs that it is simply a reference to a
location of the information segment on the Internet. There is no support for the district
court’s added requirements that the “Internet address” be
a particular host or that it be unique. A URL, then, as defined by the
language and context of the claims, is something that identifies the
location of relevant information segments. This can include web pages, audio
clips, images, and the like. It
can be an absolute URL or a relative URL, as long as it specifies one or
more Internet addresses of information segments relating to Internet
content.
B
The written description must also be examined,
because it is relevant to aid in the claim construction analysis, e.g., to
determine if the presumption of ordinary and customary meaning is
rebutted. See Renishaw
PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed.
Cir. 1998). The presumption
will be overcome where the patentee, acting as his or her own
lexicographer, has clearly set forth a definition of the term different
from its ordinary and customary meaning. See In re Paulsen, 30
F.3d 1475, 1480 (Fed. Cir. 1994); Intellicall, Inc. v. Phonometrics,
Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992). The presumption also will be
rebutted if the inventor has disavowed or disclaimed scope of coverage, by
using words or expressions of manifest exclusion or restriction,
representing a clear disavowal of claim scope. See Teleflex, 299 F.3d
at 1324.
Both parties
agree that the patents’ written descriptions do not explicitly define
URL, and thus, that the patentee has not set forth a definition of URL to
instruct our analysis. However,
each party draws different inferences about the breadth of the term from
the use of URL in context. ACTV
argues that the written descriptions do not limit the use of the term to
only absolute URLs. For
example, the abstract of the ’181 patent refers to URLs as “the
effective addresses of locations or Websites on the
Internet.” ’181
patent, Abstract. Disney
argues, however, that because the only examples in the written descriptions
use absolute URLs, and because the client software, as disclosed, is only
functional when receiving and decoding absolute URLs, then ACTV has
disclaimed coverage of anything but absolute URLs. After careful review of each of the
patents’ written descriptions, we note that they do not contain an
indication of the patentee’s clear intent to limit the term URL to
something less than the scope of the plain language. Instead, the abstract of each patent
describes URLs as “the effective addresses of locations or Web sites
on the Internet.”
Likewise, in the summary of the invention, the specification refers
generally to URL as “the relevant Internet Web page
addresses.” ’664
patent, col. 3, ll. 28-29.
Finally, in a preferred embodiment, the patentee describes URLs as
“direct[ing] the user’s computer 16 to address locations, or
Web sites, on the Internet 20 to retrieve related Web pages.” Id. at col. 4, ll.
32-35. In all, these are
general statements that are consistent with a broad construction of the
claim terms—the URLs merely specify the location of segments of
Internet information. Moreover,
as this court made clear in Teleflex, the existence of a single
embodiment in the written description does not necessarily constrain the
scope of the claims. 299 F.3d
at 1328. Where the written
description does not expressly limit the claim term and otherwise supports
a broader interpretation, “we are constrained to follow the language
of the claims,” id., and give the claim term its full breadth
of ordinary meaning as understood by persons skilled in the art. Rexnord Corp. v. Laitram Corp.,
274 F.3d 1336, 1342 (Fed. Cir. 2001).
Because the written descriptions of the patents lack an indication
of the patentee’s clear intent to limit the term URL to absolute
URLs, and because the written descriptions further support a broader
interpretation, we decline to impose such a limit.
C
Both parties disagree as to the significance of
prosecution history on the proper scope of the claims. The prosecution history must be
considered because it may demonstrate that a patentee intended to deviate from
a term’s ordinary and customary meaning or that the patentee
disclaimed or disavowed subject matter, narrowing the scope of the claim
terms. See, e.g., Teleflex,
299 F.3d at 1326.
During prosecution of the applications that issued as
the ’181 and ’664 patents, the patentee responded to an
anticipation rejection in light of U.S. Patent No. 5,589,892
(“Knee”) by stating:
[t]he so-called resource
locators disclosed in Knee provide information about a product or service, they
do not provide a uniform resource locators (URL) which are addresses
designated [sic] Web sites.
Further, Knee does not disclose a “means for decoding . . .
the uniform resource locators to determine the specified Internet
addressees,” as set forth in amended claims 5 and 6.
The Examiner states that Knee
shows a means for extracting identification data for retrieving a
user’s requested service.
However, there is a fundamental difference between Knee and
applicant’s invention. In
Knee, the user site does not send a request to remote Web sites requesting
information, as in applicant’s invention. Instead, all data feeds are received
at some single location, such as a cable headend. In Applicant’s invention, on
the other hand, Web page requests must be sent from each workstation to the
Internet sites disclosed by the URL’s for the Internet information
segments.
Based on this response, Disney
argues that the patentee distinguished the claimed invention from Knee by
invoking “uniform resource locators . . . which are addresses
designat[ing] Web sites.”
In doing so, Disney asserts that the patentee disclaimed any meaning
of URL short of an absolute URL.
ACTV argues that these statements do not foreclose a broad
construction of URL and that the Knee system is otherwise different from
the claimed invention.
We agree with
ACTV. Disney’s argument
is undermined by the specification of the Knee patent itself. Knee discloses a system where the
VBI of an analog signal is encoded with information concerning a product or
service associated with a program.
Knee, col. 40, ll. 30-33.
Knee defines this information as “a description of the
product(s) or service(s), price, and any other information
required.” Id. at
col. 39, ll. 45-47. In other
words, Knee’s specification clearly contemplates that the information
embedded in the VBI is raw data used as filler for blank “screen
formats.” Id. at
col. 41, ll. 10-15. Instead of
limiting the term URL, the patentee distinguishes Knee from the claimed
invention precisely because, in the ACTV invention, the VBI is not used to
encode raw data. The contrast
drawn by the patentee is between raw data and a method of identification,
and not between different methods of identification, i.e., relative versus
absolute URLs. Thus, we
conclude that the prosecution history does not inform a definition other
than the ordinary and customary meaning of the term URL, and further, does
not disclaim or disavow any interpretation of the term URL. See, e.g., Teleflex,
299 F.3d at 1326.
For the
foregoing reasons, we hold that the district court erred in construing the
term URL to encompass only absolute URLs. The district court thus improperly
adopted functions for each means-plus-function limitation different from
that explicitly recited in the claim.
See Gen II, 263 F.3d at 1363. Instead, we hold that the term URL,
as recited in the claims of the ’664, ’181, and ’768
patents, means a reference identifying the location of information
segments, such as web pages, audio clips, images, and the like. The URL need not be an absolute URL,
so long as it provides sufficient information for the system to identify a
relevant information segment, which need not be unique. The district court found that
Disney’s ETV system “transmits the much more limited file names
that identify specific information stored on one of two Disney
origin servers,” Order
at 3, and the system then accesses the Disney sites to obtain the specified
information. Id. Thus, we conclude that the file
names transmitted by the ETV system fall within the scope of the term URL,
as properly construed.
III
Disney
urges us, upon determining that a broader definition of URL is correct, to
find that the district court erroneously construed the terms
“interpreting” and “decoding,” and, thus, to affirm
the grant of summary judgment on that basis. In particular, Disney argues that
the district court ignored the ordinary meanings of these terms, accepted
definitions contrary to the patents’ written descriptions, and failed
to identify the corresponding structures. While we disagree that the district
court erroneously construed the terms “interpreting” and
“decoding,” we agree with Disney that the district court did
not identify the corresponding structures. Therefore, we remand to the district
court to determine the structures associated with the functions based on
the above definition of URL and the district court’s otherwise proper
claim constructions of the terms “interpreting” and
“decoding.”
IV
A
We further
hold that the district court erred as a matter of law in foreclosing
application of the doctrine of equivalents in this case. The district court foreclosed
application of the doctrine of equivalents to claim limitations written in
means-plus-function format, Order, 204 F. Supp. 2d at 693,
concluding that
the presence of means to
receive and decode full Internet addresses is a fundamental difference
between the two systems and goes to the heart of what makes ACTV’s
system a novel, useful, and patentable
invention[,
sic] especially in comparison with prior closed systems like Knee or
subsequent closed systems like Disney’s.
Id.
As an initial matter, the district court
characterized the claimed invention as “global in its reach and
methods” and the accused infringing system as “closed”
because it “transmits much more limited file names that identify
specific information stored on one or two Disney origin
servers.” Id. at
692. Although each system may
differ in overall scope and purpose, both parties agree before this court
that the claimed system and the accused system utilize the same basic
telecommunications infrastructure, the Internet. In that regard, both systems are
“open” and not “closed” systems as the underlying
end-to-end infrastructure of the Internet requires a user’s computer
to distinguish and select from multiple remote servers.
Based on its conclusion that there was a fundamental
difference between the claimed system and the accused system, the district
court barred application of the doctrine of equivalents to the receiving
means and decoding means limitations.
Id. at 693. The
district court relied on this court’s reasoning in SciMed
Life Systems v. Advanced Cardiovascular Systems, 242 F.3d 1337, 1364
(Fed. Cir. 2001). In SciMed,
we concluded that, “[h]aving specifically identified, criticized, and
disclaimed the dual lumen configuration [for a balloon dilation catheter],
the patentee cannot now invoke the doctrine of equivalents to
‘embrace a structure that was specifically excluded from the
claims.’” Id. at 1345 (quoting Dolly, Inc. v.
Spalding & Evenflo Cos., 16 F.3d 394, 400 (Fed. Cir. 1994)). Our reasoning in SciMed
is inapposite to the present case.
In SciMed, by
using the specification to define the claim in a way that clearly excluded
certain subject matter, the patentee disclaimed the subject matter and was
thereby barred from asserting infringement under the doctrine of
equivalents. Id. at
1346. In this case, the
patentee has not implicitly or explicitly disclaimed any subject matter by
using the expression “uniform resource locator” as that
expression is correctly construed.
Therefore, we conclude that application of the doctrine of
equivalents is not barred simply for that reason.
B
Although the analyses of insubstantial difference are
similar, a court must conduct a separate infringement analysis under the
doctrine of equivalents after conducting an analysis of literal
infringement for claim limitations written in means-plus-function format if
both literal infringement and infringement under the doctrine of
equivalents are asserted. Apex
Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1378 (Fed. Cir.
2003). For a limitation written
in means-plus-function form, evidence and arguments concerning equivalents
under § 112, ¶ 6 may substantially overlap with those concerning
the doctrine of equivalents.
However, the evidence and arguments concerning the two
“types” of equivalents, and their respective analyses, are by
no means perfectly coextensive.
See, e.g., Kemco Sales, Inc., 208 F.3d at 1364-65.
On remand, the district court should entertain
ACTV’s allegations of literal infringement and infringement under the
doctrine of equivalents, consistent with this opinion and the precedents of
this court.
CONCLUSION
For the
above-stated reasons, we vacate the district court’s grant of summary
judgment of non-infringement in favor of Disney and remand for further
proceedings consistent with this opinion.
VACATED AND
REMANDED.
COSTS
No
costs.
United States Court of Appeals for the Federal Circuit
05-1354, -1367
FLEX-REST, LLC,
Plaintiff-Appellant,
v.
STEELCASE, INC.,
Defendant-Cross Appellant.
Edmund J. Sease, McKee, Voorhees & Sease, P.L.C., of
Des Moines, Iowa, argued for plaintiff-appellant. With him on the brief
were Jeffrey D. Harty, Robert A. Hodgson, and John D. Goodhue.
George Pazuniak, Connolly Bove Lodge & Hutz LLP, of
Wilmington, Delaware, argued for defendant-cross appellant.
Appealed from: United States District Court for the
Western District of Michigan
Judge David W. McKeague
United States Court of Appeals for the Federal Circuit
05-1354, -1367
FLEX-REST, LLC,
Plaintiff-Appellant,
v.
STEELCASE, INC.,
Defendant-Cross Appellant.
__________________________
DECIDED: July 13, 2006
__________________________
Before BRYSON, LINN, and PROST, Circuit Judges.
LINN, Circuit Judge.
Flex-Rest, LLC appeals from a final judgment following a
jury verdict finding U.S. Patent No. 5,709,489 (’489 patent) invalid
for anticipation and obviousness and from a grant of summary judgment
finding that Steelcase, Inc. did not infringe U.S. Patent No. 5,961,231
(’231 patent). Flex-Rest, LLC v. Steelcase, Inc., No. 1:02-CV-537
(W.D. Mich. Nov. 10, 2003); Flex-Rest, LLC v. Steelcase, Inc., No. 1:02-CV-537
(W.D. Mich. Mar. 11, 2004). Steelcase cross-appeals the district
court’s order denying Steelcase’s motion for a determination of
inequitable conduct in procuring the ’489 patent. Flex-Rest, LLC v.
Steelcase, Inc., No. 1:02-CV-537 (W.D. Mich. Mar. 23, 2005)
(“Inequitable Conduct Decision”). Because we discern no error
in these decisions, we affirm.
I. BACKGROUND
Flex-Rest owns the ’489 and ’231 patents,
which relate to computer keyboard positioning systems. The ’489
patent involves a clamping system that allows adjustment of the keyboard to
a negative tilt position, with the palm rest adjusted above the plane of
the keys. The ’231 patent involves a tray system that positions the
keyboard in a similar negative tilt position. A view of this system is
shown in Figure 7 of the ’489 patent, reproduced below:
On April 17, 2002, Flex-Rest filed suit against
Steelcase, Office Details, Inc., and Office Concepts, Inc. asserting
infringement of both patents. Steelcase stipulated that it was liable for
Office Details, and the case was bifurcated against Office Concepts. The
claims against Office Details and Office Concepts were therefore dismissed,
and the case proceeded against Steelcase alone.
The claim terms at issue in this appeal were construed
in a Memorandum Opinion and Order of
November 10, 2003 following a hearing on claim construction. At issue in
the ’489 patent was a limitation related to keyboard position as
highlighted in claim 1 below:
1. A device for mounting a keyboard to a base and for
positioning the keyboard in a backward tilted position . . . , the device
comprises:
* * *
05-1354, -1367 2
(b) a clamp engaged with said bracket said clamp being
engagable with a keyboard such that the keyboard may be oriented in a backward
tilted position defined by the rear end of the keyboard being disposed
below the front end of the keyboard, to prevent the keyboard from falling
off when the keyboard is orientated in said backward tilted position; . . .
’489 patent, col. 4, ll. 41-54. The district court
construed this language to mean that “the support device permits the
bottom of a keyboard to be tilted backward (i.e., at any angle of less than
0 degrees).” At issue in the ’231 patent was the
“sidewall” limitation highlighted in claim 1 below:
1. A device for mounting a keyboard to a base and for
positioning the keyboard in a backward tilted position . . . , the device
comprising:
* * *
(c) a support tray comprising:
a support surface and
a keyboard stop member comprising a stop wall, said
support surface comprising a front portion, a rear portion, a first
sidewall, and a second sidewall, such that said stop wall extends from said
first side wall to said second side wall and wherein said stop wall is
disposed in said rear portion of said support surface, . . .
’231 patent, col. 9, ll. 38-54. The district court
construed “sidewall” to mean “a structure projecting or
extending upward, i.e., above the plane of the support surface, from either
side of the support tray.” Finding that Steelcase’s products
did not possess sidewalls that projected or extended upward, the district
court granted Steelcase’s motion for partial summary judgment of
non-infringement of the ’231 patent.
After a hearing on various pretrial motions, the district
court granted Steelcase’s motion in limine to exclude certain
portions of testimony by Dr. John C. Rosecrance, Flex-Rest’s
designated expert. Specifically, Dr. Rosecrance was allowed to testify to
his field of expertise, ergonomics, but was precluded from testifying as an
expert regarding designs of keyboard support systems and the prior art at
the time of the invention.
05-1354, -1367 3
As trial began on the ’489 patent, Steelcase
stipulated that its accused devices infringed. In turn, Flex-Rest stipulated
that Steelcase’s KBS device was conceived and reduced to practice
before Flex-Rest’s invention was conceived in November 1990, and that
the KBS device taught each limitation of the asserted claims. Thus, the
primary issue for trial was whether the KBS device anticipated the
’489 patent under 35 U.S.C. § 102(g) or qualified as prior art
for obviousness purposes.
With respect to the KBS device, Flex-Rest requested that
the jury be instructed that in order to constitute prior art under section
102(g), the prior inventor could not have suppressed or concealed the
invention. The district court found that there was not sufficient evidence
to support such an instruction and denied Flex-Rest’s request.
During deliberations, the jury requested clarification regarding
what is considered “public” and “prior art.” The
district court defined “public” as “information not
restricted by confidentiality.” As to “prior art,” the
court responded:
In answer to your question, anything made or built in
the United States by another person before the date of the claimed
invention can be prior art for purposes of ‘obviousness’ even
if it is not publically [sic] available before the date of the claimed
invention. . . . Keep in mind that you should consider what I have just written,
together with all the other instructions that I gave you earlier. All the
instructions are important, and you should consider them as a whole.
The jury returned a verdict for Steelcase, finding the
’489 patent invalid under both 35 U.S.C. § 102(g) and 35 U.S.C.
§ 103. Flex-Rest did not make a motion for judgment as a matter of law
(JMOL) or move for a new trial.
After entering judgment for Steelcase, the district
court considered Steelcase’s motion for a determination of
inequitable conduct in procuring the ’489 patent. Steelcase argued
that Flex-Rest received—but failed to disclose to the U.S. Patent
and
05-1354, -1367 4
Trademark Office (the Patent Office)—a letter and
photographs from a competitor that constituted prior art material to
patentability. Steelcase also argued that Flex-Rest failed to disclose the
KBS device to the Patent Office, and that Flex-Rest’s patent counsel
made a false declaration in his petition to make special because he did not
investigate the photographs or the KBS device in his search of the prior
art. The court concluded that Steelcase failed to show clear and convincing
evidence of an intent to deceive and therefore denied the motion.
On appeal, Flex-Rest challenges the district
court’s jury instructions, the court’s ruling limiting Dr.
Rosecrance’s expert testimony, and the court’s claim
construction of disputed terms in the ’489 and ’231 patents. On
cross-appeal, Steelcase challenges the district court’s finding that
clear and convincing evidence did not demonstrate inequitable conduct in
procuring the ’489 patent. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
II. DISCUSSION
A. Standard of Review
“Notwithstanding the absence of a motion for JMOL,
a party may still challenge a jury verdict by establishing that the judge
committed legal error” in instructing the jury. Advanced Display Sys.
v. Kent State Univ., 212 F.3d 1272, 1281 (Fed. Cir. 2000) (citing Biodex
Corp. v. Loredan Biomedical, Inc., 946 F.2d 850, 845 (Fed. Cir. 1991)). We
apply the law of the regional circuit, here the Sixth Circuit, in reviewing
generally whether jury instructions are erroneous. Eli Lilly & Co. v.
Aradigm Corp., 376 F.3d 1352, 1359 (Fed. Cir. 2004). Accordingly, we look
to the entire jury charge to determine whether the jury instructions
provided sufficient guidance on the legal principles, and we
05-1354, -1367 5
, 946 F.2d at 853. Importantly, “[u]nder this
standard, jury instructions must be both legally correct and sufficiently
comprehensive to address factual issues .” , 946 F.2d at 854
(emphasis added). Suppression or concealment is a legal question, supported
by underlying facts. alter judgment only if the error was prejudicial.
Bagherzadeh v. Roeser, 825 F.2d 1000, 1003 (6th Cir. 1987); see also
Biodexfor which there is disputed evidence of recordBiodexSee Fujikawa v.
Wattanasin, 93 F.3d 1559, 1567 (Fed. Cir. 1996) (“Suppression or
concealment of the invention is a question of law which we review de
novo.”)
A district court’s decision to preclude expert
testimony is an evidentiary issue that is reviewed for an abuse of
discretion. Gen. Elec. Co. v. Joiner, 522 U.S. 136, 141-43 (1997)
(“[A]buse of discretion is the proper standard of review of a
district court’s evidentiary rulings.”).
This court reviews the district court’s grant of
summary judgment of non-infringement de novo. Hilgraeve Corp. v. McAfee
Assocs., Inc., 224 F.3d 1349, 1352 (Fed. Cir. 2000). Summary judgment is
proper only if there are no genuine issues of material fact and the movant
is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c);
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). Claim construction is an issue of
law, see Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir.
1995) (en banc), aff’d, 517 U.S. 370 (1996), that we review de novo.
See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998)
(en banc); Phillips v. AWH Corp., 415 F.3d 1303, 1328 (Fed. Cir. 2005) (en
banc). Infringement, whether literal or under the doctrine of equivalents,
is a question of fact. Ferguson Beauregard v. Mega
Sys., Inc., 350 F.3d 1327, 1338 (Fed. Cir. 2003).
05-1354, -1367 6
Inequitable conduct is an equitable issue committed to
the discretion of the trial court and reviewed by this court under an abuse
of discretion standard. Kingsdown Med.
Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867, 876 (Fed. Cir. 1988)
(en banc in relevant part). “To overturn a discretionary ruling of a
district court, the appellant must establish that the ruling is [1] based
upon clearly erroneous findings of fact or [2] a misapplication or
misinterpretation of applicable law or that [3] the ruling evidences a
clear error of judgment on the part of the district court.” Id.
(quoting PPG Indus. v. Celanese Polymer Specialties Co., 840 F.2d 1565,
1572 (Fed. Cir. 1988) (Bissel, J., additional views)). In reviewing factual
findings for clear error, they “are not to be disturbed unless we
have a definite and firm conviction that a mistake has been
committed.” Critikon v. Becton Dickinson Vascular Access, Inc., 120
F.3d 1253, 1255 (Fed. Cir. 1997).
B. Analysis
1. Jury Instructions
The district court found that Flex-Rest had failed to
establish “a sufficient evidentiary basis for a reasonable jury to find
. . . that there was suppression or abandonment by Steelcase in connection
with the KBS [device]” under 35 U.S.C. § 102(g).
Relying on Lutzker v. Plet, 843 F.2d 1364 (Fed. Cir.
1988), and Young v. Dworkin, 489 F.2d 1277 (C.C.P.A. 1974), Flex-Rest argues
that sufficient evidence supports a prima facie case of suppression or
concealment under section 102(g). Flex-Rest contends that Steelcase
intentionally kept the KBS device a secret from the time of its reduction
to practice in mid-November 1990 until its disclosure at a trade show
in
05-1354, -1367 7
June 1991, while making only modest improvements for
commercialization purposes. Flex-Rest points to Shindelar v. Holdeman, 628
F.2d 1337 (C.C.P.A. 1980), for support that three months is a reasonable time
to draft and file a patent application, as opposed to the nearly seven
months involved in drafting the application for the KBS device. Flex-Rest
adds that because the KBS device was suppressed, it was not prior art for
§ 103 purposes. Moreover, Flex-Rest asserts that the district
court’s responses to the jury’s questions compounded this
error.
Steelcase responds that Checkpoint Systems, Inc. v.
United States International Trade Commission, 54 F.3d 756 (Fed. Cir. 1995),
and Dow Chemical Co. v. Astro-Valcour, Inc., 267 F.3d 1334 (Fed. Cir.
2001), control and that suppression or concealment is negated as a matter
of law by either the commercialization of the KBS device or by the filing
of a patent application on May 31, 1991. Alternatively, Steelcase argues
that suppression or concealment is an equitable determination for the
judge. Steelcase adds that Flex-Rest failed to proffer a correct jury
instruction.
We must first determine if there is disputed evidence of
record supporting an instruction on suppression or concealment of the KBS
device. We conclude that there is none and agree with the district court
and Steelcase that Flex-Rest did not make out a prima facie case of
suppression.
Patent law provides that: “[a] person shall be
entitled to a patent unless—. . . before such person’s
invention thereof, the invention was made in this country by another
inventor who had not abandoned, suppressed, or concealed it.” 35
U.S.C. § 102(g)(2) (2004); Dow Chemical, 267 F.3d at 1339. If prior
invention has been established, the burden shifts to the patentee to
produce sufficient evidence to create a
05-1354, -1367 8
genuine issue of material fact as to whether the prior
inventor abandoned, suppressed, or concealed the invention. Dow Chemical,
267 F.3d at 1339. There are two types of suppression or concealment: cases
in which the inventor intentionally suppresses or conceals his invention,
and cases in which a legal inference of suppression or concealment can be
drawn based on an unreasonable delay in making the invention publicly
known. Id. at 1342; Fujikawa, 93 F.3d at 1567.
Flex-Rest first argues that the KBS device was
intentionally suppressed or concealed. Intentional suppression occurs when
an inventor “designedly, and with the view of applying it
indefinitely and exclusively for his own profit, withholds his invention
from the public.” Paulik v. Rizkalla, 760 F.2d 1270, 1273 (Fed. Cir.
1985) (en banc) (quoting Kendall v. Winsor, 62 U.S. 322, 328 (1858)); see
also Fujikawa, 93 F.3d at 1567. The only evidence Flex-Rest offers for this
argument is the time taken to file the patent application for the KBS
device and the fact that the device was kept secret during that time.
“Intentional suppression, however, requires more than the passage of
time. It requires evidence that the inventor intentionally delayed filing
in order to prolong the period during which the invention is maintained in
secret.” Fujikawa, 93 F.3d at 1567 (emphasis added). The record
demonstrates that after reduction to practice, Steelcase moved almost
immediately towards both filing a patent application and commercially
disclosing the KBS device at a trade show, actions which indicate an intent
to make a public disclosure. Both the patent application and
commercialization efforts came to fruition about six and one-half months
later. That the device was kept secret during this time is not, by itself,
indicative of intentional suppression or concealment. See E.I. Du Pont de
Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1436 n.5 (Fed.
Cir.
05-1354, -1367 9
1988) (“Because work is ‘secret’ does
not necessarily mean that it has been ‘abandoned, suppressed or
concealed.’”). Because Flex-Rest did not offer any evidence
indicating a designed intent to withhold the KBS device from the public, we
conclude that there is not sufficient evidence to support a jury
instruction regarding intentional suppression or concealment.
Flex-Rest next argues that the delay in filing a patent
application for the KBS device supports an inference of suppression or concealment.
“The failure to file a patent application, to describe the invention
in a published document, or to use the invention publicly, within a
reasonable time after first making the invention may constitute
abandonment, suppression, or concealment.” Dow Chemical, 267 F.3d at
1342 (citations omitted); see also Checkpoint, 54 F.3d at 761-62. There is
no particular length of delay that is per se unreasonable, Checkpoint, 54
F.3d at 761, and “[m]ere delay, without more, is not sufficient to
establish suppression or concealment.” Young, 489 F.2d at 1281.
“[E]ach case involving the issue of suppression or concealment must
be considered on its own particular set of facts.” Paulik, 760 F.2d
at 1275 (quoting Shindelar, 628 F.2d at 1343).
Our case law provides guidance on what constitutes a
reasonable delay when an invention is disclosed to the public by
commercializing the invention. In Dow Chemical, we held that a delay of two
and one-half years between reduction to practice and the commercialization
of an invention did not constitute a prima facie case of suppression or
concealment where the first inventor made “reasonable efforts to
bring the invention to market.” 267 F.3d at 1343 (quoting Checkpoint,
54 F.3d at 762). In that case, the first inventor “actively and
continuously took steps towards [] commercialization . . . including
05-1354, -1367 10
the procurement of financing to build a new production
plant and [] attention to safety considerations.” Id. We noted that
the fastest route to commercialization was not required, only reasonable
efforts. Id. Similarly, in Checkpoint, we agreed with an administrative law
judge’s determination that a delay of four years between reduction to
practice and commercialization was reasonable when the first inventor took
steps to bring the invention to market such as disclosing it to his
employer, conducting further tests, purchasing supplies from vendors, and
helping develop a system for mass production. 54 F.3d at 762.
In this case, Flex-Rest offered no evidence to indicate
that Steelcase’s delay of six and one-half months between reduction
to practice and commercialization of the KBS device was not the result of
reasonable steps to bring the invention to market. After reduction to
practice, Steelcase resolved design issues and spent $775,000 on tooling
for the parts to the KBS device. The lead times for creating the tooling
varied from four weeks to approximately six months. Therefore, it does not
appear that Steelcase could have brought the KBS device to market much sooner
than the trade show unveiling in June 1991.
At the same time, Steelcase’s patent counsel began
drafting a patent application for the KBS device, submitting a first draft
to Steelcase in March 1991. The draft was
05-1354, -1367 11
reviewed by the four named inventors and filed in May
1991. No evidence indicated that this amount of time was unreasonably
long.1
Because Flex-Rest offered no evidence to demonstrate
that Steelcase failed to take reasonable steps toward market, and because
Flex-Rest offered no evidence that a delay of six and one-half months from
reduction to practice to filing an application was unreasonable, we
conclude that there is not sufficient evidence to support a jury
instruction regarding an inference of suppression or concealment.
We disagree with Flex-Rest’s contention that
Lutzker and Young command a different result. First, both Lutzker and Young
address disclosing a prior invention only by filing a patent application;
they do not address—as is the case here—disclosure through commercialization.
In an interference context, we have held that delayed filing due to
commercialization efforts or improvements not reflected in the patent
application are inexcusable. Lutzker, 843 F.3d at 1367; Young, 489 F.2d at
1281-82. However, we have expressly distinguished Lutzker and Young from
situations in which public disclosure occurred by bringing the invention to
market. See Dow Chemical, 267 F.3d at 1343 (distinguishing Lutzker and
Young from cases in which an invention is disclosed to the public by
commercialization); Checkpoint, 54 F.3d at 762 (distinguishing Lutzker
because “[h]ere, . . . Kaltner’s invention was brought to the
public by marketing”).
1
Flex-Rest’s argument that Shindelar identifies a reasonable
amount of time for drafting when the court stated that “a period of
approximately three months could possibly be excused” takes that
quote out of context. In reviewing the outcome of an interference
proceeding, the Court of Customs and Patent Appeals stated that the evidence
submitted to support a twenty-nine month delay in filing only supported, at
most, three months of the delay. Shindelar, 628 F.2d at 1341-42. What
constitutes a reasonable time for drafting a patent application will vary
with the technology and the particular set of facts involved in each
case.
05-1354, -1367 12
are applicable here. Therefore, the “reasonable
steps to market” identified in Dow Chemical and Checkpoint
Flex-Rest had the burden to produce sufficient evidence
to create a genuine issue of material fact as to whether the KBS device was
suppressed or concealed. We conclude that no evidence of record supports
such an instruction. We also conclude that the district court fairly stated
the legal principles in answering the jury’s questions on “public”
and “prior art” and did not commit prejudicial error.
2. Expert Testimony
The district court found that one skilled in the art of
the invention was a keyboard designer. Accordingly, the court excluded testimony
by Dr. Rosecrance on the issues of anticipation and obviousness, finding
that his area of expertise was in ergonomics rather than keyboard design
support systems. Flex-Rest argues that the invention applies ergonomic
principles to keyboard design, and that Dr. Rosecrance is qualified in the
ergonomics field.
The district court held a hearing to fully investigate
Dr. Rosecrance’s qualifications to testify about designs of keyboard
systems and prior art. The court considered Dr. Rosecrance’s expertise
in ergonomics, but concluded that he was not one of ordinary skill in the
art at the time of the invention. There is no indication that the district
court abused its discretion in arriving at this conclusion.
Because the district court did not err in instructing
the jury or abuse its discretion in precluding Dr. Rosecrance’s
testimony, we affirm the jury verdict finding the ’489 patent
invalid.
05-1354, -1367 13
3. Summary Judgment of Non-Infringement
Flex-Rest challenges the district court’s construction
of the “backward tilted position” language in claim 1 of the
’489 patent and the term “sidewall” in claim 1 of the
’231 patent. Flex-Rest, however, stipulated that the KBS device
taught each limitation of the ’489 patent and disputed only whether
the KBS device met the requirements of 35 U.S.C. § 102(g). Because
that stipulation was not limited to a specific construction, and because we
have affirmed the jury’s invalidity finding, there is no need to
address the court’s construction of the ’489 patent. Our claim
construction inquiry is therefore limited to the term
“sidewall” in the ’231 patent.
The district court construed the “sidewall”
limitation to mean “a structure projecting or extending upward, i.e.,
above the plane of the support surface, from either side of the support
tray.”
Flex-Rest argues that “sidewall” does not
include a directional limitation and can therefore be met by a projection
extending downwards. Flex-Rest characterizes the sidewall term as
“minor,” “inconsequential,” and “unimportant,”
and asserts that there is no basis in the intrinsic record for importing a
directional limitation. Steelcase counters that the specification and
prosecution history make clear that “sidewall” is part of the
“support surface” and can only serve its function if it extends
upward from the “support surface.”
In determining the meaning of the disputed claim
limitation, we look principally to the intrinsic evidence of record,
examining the claim language itself, the written description, and the
prosecution history, if in evidence. See Phillips, 415 F.3d at 1312-17.
Here, the language of claim 1 recites a support surface “comprising a
front position,
05-1354, -1367 14
, 520 U.S. 17, 29 (1997) (“Each element contained
in a patent claim is deemed material to defining the scope of the patented
invention . . . .”). We therefore agree with the district
court’s construction that “sidewalls” must extend
upwardly. a rear position, a first sidewall, and a second sidewall, such
that the said stop walls extend from said first side wall to said second
side wall.” ’231 patent, col. 9, ll. 47-53. The sidewalls
therefore form part of the support surface. The written description
mentions this structure only in describing Figure 13, which depicts side
walls 127 and 129 as extending above the support surface to help keep the
keyboard in place. Id., col. 5, ll. 26-52. The claim language and the
specification clearly indicate that “sidewalls” are elements of
the support surface. The written description makes clear that in order for
a “sidewall” structure to support the keyboard, it must extend
upwardly; if “sidewalls” extend downwardly, they would not
interact with or play any role in supporting the keyboard. Indeed,
downwardly extending “sidewalls” would be entirely superfluous.
Such a requirement does not improperly read a limitation from the
specification into the claim. Rather, the written description and the
drawings make clear that when the claim refers to “sidewalls”
of a support surface, the claim language refers to upward-extending walls.
Phillips, 415 F.3d at 1316 (“‘The construction that stays true
to the claim language and most naturally aligns with the patent’s
description of the invention will be, in the end, the correct
construction.’” (citation omitted)). The prosecution history is
consistent with this interpretation and provides no further guidance.
Flex-Rest’s attempt to avoid the sidewall limitation by
characterizing it as “inconsequential” disregards the basic
patent law doctrine that every limitation of a claim is material. See
Warner-Jenkinson Co. v. Hilton Davis Chem. Co.
05-1354, -1367 15
Because there is no dispute that the accused devices do
not meet the “sidewall” limitation under this construction,
summary judgment of non-infringement of the ’231 patent was
appropriate.
4. Inequitable Conduct
Steelcase challenges the district court’s
inequitable conduct ruling based on two of the three grounds argued below.
First, Steelcase argues that Steven Fox, Flex-Rest’s patent counsel,
withheld prior art by not disclosing to the Patent Office a letter from a
competitor which included photographs of a keyboard support system (the
Ergo photographs). Steelcase argues that the Ergo photographs were highly
material to patentability, were not cumulative of information already
disclosed, and that Flex-Rest’s intent to deceive the Patent Office
can be inferred from the surrounding circumstances. Second, Steelcase
argues that Fox made a false representation to the Patent Office when he
filed a declaration accompanying a petition to make special, which stated
he had “conducted a careful and thorough search of the prior
art.” Steelcase argues that this statement was false based on
Fox’s failure to investigate the Ergo photographs.
The district court found that the Ergo photographs were
“of uncertain import and reliability,” that Fox was justified
in concluding they were cumulative of a patent already disclosed to the
Patent Office, and that the facts triggering a duty to investigate in
Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp., 267 F.3d 1370 (Fed. Cir.
2001), were not present in this case. The court concluded that Flex-Rest
failed to show clear and convincing evidence that Fox’s failure to
disclose the Ergo photographs was accompanied by an intent to mislead the
Patent Office. The district court also found that clear and convincing
evidence did not demonstrate that Fox’s declaration was false.
05-1354, -1367 16
“[Fox’s] failure to [investigate the Ergo
photographs], under the circumstances, does not mean that he did not
conduct a careful and thorough search of the prior art.” Inequitable
Conduct Decision, slip op. at 6. Because “Fox knew the Ergo keyboard
support represented a commercial embodiment of an invention already
disclosed to the Patent Office,” the court concluded that Fox’s
statement was not false, regardless of how it appeared in hindsight after
protracted litigation. Id.
Steelcase argues that the district court erred in
finding that the Ergo photographs were of uncertain import and reliability,
that Fox concluded the photographs were cumulative, and that Brasseler is
distinguishable. Steelcase also argues that the district court erred in
finding that Fox’s declaration was not false because the photographs
were not cumulative and Fox was therefore not excused from investigating
them further.
Flex-Rest counters that the district court was correct
in its findings because the Ergo photographs were received more than five
years from the priority date for the ’231 patent and were not dated;
the photographs were described in the letter as an embodiment of U.S.
Patent No. 5,041,770 (the Seiler patent), which Fox disclosed in an
Information Disclosure Statement (IDS); and Fox believed the photographs
were not “prior art” subject to investigation.
Failing to disclose material information, or submitting
false material information or statements, coupled with an intent to mislead
or deceive the Patent Office, constitutes inequitable conduct. Purdue
Pharma L.P. v. Endo Pharms. Inc., 438 F.3d 1123, 1128 (Fed. Cir. 2006);
Kingsdown, 863 F.2d at 872; 37 C.F.R. § 1.56(a) (2004). Materiality
and intent must both be proven by clear and convincing evidence. Kingsdown,
863 F.2d at 872. “Once threshold findings of materiality and intent
are established, the trial
05-1354, -1367 17
court must weigh them to determine whether the equities
warrant a conclusion that inequitable conduct occurred.” Purdue
Pharma, 438 F.3d at 1128.
The district court did not abuse its discretion in
denying Steelcase’s motion. The Ergo photographs are undated and
identified in the letter as showing equipment that embodied the Seiler
patent. The letter containing the Ergo photographs is dated May 14, 1996;
Fox submitted an IDS that disclosed the Seiler patent on October 21, 1996.
In deposition, Fox stated that “the Seiler patent teaches anything
and everything that may or may purportedly have been contained in those
photographs.” To be sure, some of the photographs plainly depict a
keyboard with a negative tilt, and thus Fox’s statement in his
deposition seems at odds with his statement to the Patent Office during
prosecution of the ’489 patent that the Seiler patent contains
“no teaching of positioning the keyboard in a negative tilt position.
. . . It does not disclose or teach that the wrist rest may be moved to a
position above a substantial portion of the keys of the keyboard.”
However, the main thrust of Fox’s deposition explanation for not
disclosing or conducting a further investigation of the photographs was
that in the context in which the photographs were presented to him, he did
not regard them as constituting credible evidence of prior art that was in
existence as of the priority date of the ’489 patent.
Steelcase was required to prove by clear and convincing
evidence that Fox possessed an intent to deceive or mislead the Patent
Office. On this record, we do not have a definite and firm conviction that
the court was mistaken in finding the photographs were “of uncertain
import and reliability” and that Fox believed them to be, “in
the main, cumulative.” We are further not persuaded that the court
was mistaken in finding—in light of Fox’s testimony that the
photographs were not credible and largely
05-1354, -1367 18
had knowledge of a potential on-sale bar by their client,
had no rational basis to support their contention of when the sale had
occurred, and offered no credible evidence or explanation for their failure
to inquire about the sale before or after an application was filed. 267
F.3d at 1381-82. The district court found that the facts at issue here were
distinguishable from the facts in cumulative—that the facts were
distinguishable from those in Brasseler. The patent attorneys in Brasseler
Brasseler, and we do not perceive clear error in that finding.
As to Fox’s declaration, Fox stated in deposition
that he considered the Ergo photographs not credible and cumulative of the
Seiler patent he later disclosed in the submitted IDS. We therefore do not
believe that the district court clearly erred in finding that Fox’s
declaration was not false and not made with intent to mislead the Patent
Office.
When materiality of information is close—as it
appears to be here with the Ergo photographs—a patent applicant
should err on the side of disclosure. See Critikon, 120 F.3d at 1257
(“It is axiomatic that ‘[c]lose cases should be resolved by
disclosure, not unilaterally by the applicant.’”) (quoting
LaBounty Mfg., Inc. v. U.S. Int’l Trade Comm’n, 958 F.2d 1066,
1076 (Fed. Cir. 1992)). “A very deferential standard of review,
however, governs inequitable conduct determinations.” LNP Eng’g
Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347, 1361 (Fed. Cir.
2001). The district court found that Fox believed the Ergo photographs were
cumulative of the Seiler patent and therefore lacked intent. Because that
finding was not clearly erroneous, and because the cou |