Authored by Joyce Craig
In Computer Docking Station Corp. v. Dell, Inc., Nos. 07-1169, -1316 (Fed. Cir. Mar. 21, 2008), the Federal Circuit affirmed the district court's entry of summary judgment of noninfringement where the patentee disavowed an interpretation of "portable computer" that would encompass a computer with a built-in display or keyboard, such as a laptop. The Court also affirmed the district court's finding that the case was not exceptional and that attorney fees were not warranted under 35 U.S.C. § 285.
Computer Docking Station Corporation's ("CDSC's") U.S. Patent No. 5,187,645 ("the '645 patent") claims a portable microprocessor system that is capable of connecting to peripheral devices, such as a keyboard or mouse, either through individual connectors or through a docking connector. The patent's specification explains that a keyboard and visual display are optional. Each of the asserted patent claims requires a "portable computer" or "portable computer microprocessing system" ("the portable computer limitation") and a "single connector for making all connections from the microprocessor to said specific computer peripheral devices" ("the all connections limitation"). Defendants Dell, Inc., Gateway, Inc., Toshiba America, Inc., and Toshiba America Information Systems, Inc. produce various computer devices, including laptops and docking stations, which CDSC identified as infringing. Each accused laptop computer has a built-in display or keyboard.
During prosecution of the '645 patent, the examiner rejected several claims as anticipated and obvious in view of U.S. Patent No. 5,030,128 to Herron, et al. The Herron patent discloses a laptop computer and a docking module, to which each peripheral is connected. Attempting to distinguish the Herron patent, the applicants of the '645 patent emphasized the differences between their invention and laptop computers. The applicants also expressly listed a keyboard and display as peripheral devices.
The district court determined that the prosecution history and the specification distinguished the claimed invention from a laptop computer. Specifically, the district court found the applicants' statements made to overcome the examiner's rejections based on the Herron patent amounted to a clear and unmistakable disavowal of computers with built-in displays or keyboards. Accordingly, the district court construed the phrases "portable computer" and "portable computer microprocessing system" to mean "a computer without a built-in display or keyboard that is capable of being moved or carried about." The district court also construed the phrase "said single connector for making all connections for the microprocessor to said computer peripheral devices" to require "that all individual peripheral device connection on the housing that connect to the microprocessor also pass through the single connector."
Based on these claim interpretations, CDSC moved for entry of final judgment of non-infringement, conceding that none of the accused products meets the court's construction of the portable computer limitation. CDSC also noted that some of the accused products do not satisfy the all connections limitation. Defendants opposed the motion because the parties could not agree on the form of judgment for the all connections limitation. The district court denied CDSC's motion. Defendants then moved for summary judgment of non-infringement based on both limitations. Because Defendants introduced new documents in support of their motion, CDSC filed a Rule 56(f) motion for additional discovery related to the all connections limitation. The district court denied CDSC's Rule 56(f) motion, granted Defendants' motion for summary judgment, and denied Defendants' motion for attorney fees and costs under 35 U.S.C. §285. CDSC appealed the district court's claim construction, its grant of summary judgment, and its denial of CDSC's Rule 56(f) motion. Defendants appealed the denial of the motion for attorney fees and costs.
On appeal, the Federal Circuit first addressed claim construction. As a threshold matter, the Court concluded, and the parties did not dispute, that the phrases "portable computer" and "portable computer microprocessing system" in the preambles of the asserted claims limit the scope of the asserted claims for purposes of infringement analysis. Turning to the construction of these phrases, the Court agreed with the district court that the sum of the applicants' statements during prosecution clearly and unambiguously disavowed computers with built-in displays and keyboards, such as laptops, for several reasons. First, the applicants explained that interface connectors for the keyboard and display are located on the rear of the housing. The Court found that if the keyboard and display were built-in, such peripheral connections would not be necessary. Next, the applicants told the examiner that the invention concedes portability of displays and keyboards in favor of processing power and memory. Further, the applicants distinguished their system from the Herron laptop computer, which had its own flat panel display and keyboard, arguing that the laptops did not have the memory capacity, utility and functionalities of the applicants' system. Finally, the applicants described their system as able to fit vertically in the docking station, which the Court concluded it could not do if the keyboard and display were built into it.
In finding that the applicants disavowed laptops, the Court reiterated that a disavowal can lie even if the disavowal was not cited by the examiner as necessary for patentability. Here, the examiner cited the single connection limitation, not the portable computer limitation, in the reasons for allowing the patent claims. The Court concluded this did not preclude the applicants' disavowal of laptops because the applicants distinguished their invention from the prior art in multiple ways. The Court also noted that the specification of the '645 patent does not cut against the clear disavowal of laptops because the specification does not provide an express definition of "portable computer" that would override or make the distinctions in the prosecution history ambiguous. Indeed, the Court found that the specification contrasts the microcomputer system with a laptop computer and explains that a keyboard and visual display are optional. Accordingly, the Court affirmed the district court's determination that the portable computer limitation requires "a computer without a built-in display or keyboard that is capable of being moved or carried about."
CDSC stipulated that, if the claims are construed to require a computer without a built-in display and keyboard, Defendants' accused laptops and docking stations do not infringe. Because there was no factual dispute regarding the portable computer limitation, which was required by every asserted claim, the Court found that Defendants were entitled to summary judgment of non-infringement. The Court declined to reach the issues related to the all connections limitation, including the district court's denial of CDSC's Rule 56(f) motion.
Turning next to the issue of attorney fees, the Court detected no clear error in the district court's finding that the case is not exceptional under 35 U.S.C. § 285. The Court found support in the record for the district court's findings that the applicants' disavowal of laptops was not self-evident at the beginning of the claim construction analysis and that CDSC engaged in a serious effort to evaluate the likelihood of success on its patent claims. The Court also found that, if the district court's construction of the portable computer limitation were reversed on appeal, CDSC might have been able to prevail on the all connections limitation. Thus, the Court concluded that the district court's finding that CDSC's lawsuit was not objectively baseless was not clearly erroneous and the Court affirmed the denial of attorney fees and costs under 35 U.S.C. § 285.
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