Claims Need Not Be Construed to Encompass All Disclosed Embodiments When the Claim Language Is Clearly Limited to One or More Embodiments
June 18, 2008
Last Month at the Federal Circuit - July 2008
Judges: Judges: Michel, Prost (author), Pogue (U.S. Ct. of Int’l Trade, sitting by designation)
[Appealed from: S.D. Tex., Judge Gilmore]
In TIP Systems, LLC v. Phillips & Brooks/Gladwin, Inc., Nos. 07-1241, -1279 (Fed. Cir. June 18, 2008), the Federal Circuit affirmed the district court’s claim construction and its holding that the accused devices of Independent Technologies, Inc. (“Independent Technologies”), and TZ Holdings, Inc., T-Netix Telecommunications Services, Inc., T-Netix, Inc., Evercom Holdings, Inc., Evercom Systems, Inc., and Evercom Inc. (collectively “Evercom”) do not infringe the patents-in-suit literally or under the DOE. TIP Systems, LLC (“TIP”) owns U.S. Patent Nos. 6,009,169 (“the ’169 patent”) and 6,512,828 (“the ’828 patent”), which are related patents directed to wall-mounted, cordless telephones designed for use in correctional facilities. The district court issued an order construing the terms of both patents and then granted Independent Technologies’ and Evercom’s motion for SJ of noninfringement.
TIP appealed the construction of several claim terms in each patent, but the Federal Circuit affirmed all of the district court’s claim constructions. First, TIP challenged the district court’s construction of the claim term “handset” to mean “a handle with an earpiece at one end and a mouthpiece at the opposite end.” TIP argued the term should be construed to mean “an earpiece and mouthpiece and equivalents.” The district court principally relied on the claim language, which stated: “a telephone handset being a handle with an earpiece at one end and a mouthpiece at an opposite end.” The Court found that the district court did not err in relying heavily on the claim language to construe the claim, recognizing that “the claims themselves provide substantial guidance as to the meaning of particular claim terms.” Slip op. at 6 (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005)). Moreover, the Court rejected TIP’s claim construction arguments, finding no support in the specification for a definition of “handset” that is contrary to the express definition in the claim. The Court also found no error in the district court’s determination that a “handle” is a required structural component of the claim term “handset.”
TIP also argued that the applicants’ amendment of the claims to replace “handset” with “earpiece and mouthpiece” during the prosecution of the ’828 patent application demonstrated how the applicants defined the term “handset.” Furthermore, TIP cited as support the examiner’s rejection of the ’828 patent application claims, which did not disclose or claim a handle, as obvious over the claims of the ’169 patent. The Federal Circuit noted that the prosecution history of related patent applications may inform construction of a claim term when the two applications are directed to the same subject matter and a clear disavowal or disclaimer is made during prosecution. Here, however, the specification of the ’169 patent and that of the ’828 patent were distinct, and the applicants distinguished the inventions disclosed in the patents. Thus, the Court held that the fact that the examiner found the claims of the ’828 patent application obvious over the claims of the ’169 patent has no bearing on the construction of the term “handset” in the ’169 patent. Finally, in response to TIP’s complaint that the district court did not consider its extrinsic evidence, the Court held that the district court did not err in finding the clear intrinsic evidence outweighed the extrinsic evidence of industry practice.
Next, TIP challenged the district court’s construction of the phrases “the earpiece positioned at top and the mouthpiece positioned at bottom will permanently extend out through the front wall of the housing,” and
“said mouthpiece and said earpiece extending outward from said housing through said aural apertures” to require that both the earpiece and the mouthpiece pass through apertures in the front wall such that they project out from the front wall. TIP argued that the district court’s construction impermissibly excluded an alternative embodiment disclosed in the ’828 patent. The Court found that the mere fact that there is an alternative embodiment that is not encompassed by the district court’s claim construction does not outweigh the language of the claim, especially when the district court’s construction is supported by the intrinsic evidence. Furthermore, the Court found that TIP had not successfully rebutted the presumption that § 112, ¶ 6 does not apply and could not see how applying § 112, ¶ 6 would affect claim construction.
TIP also appealed the district court’s construction of “said earpiece and said mouthpiece presenting an external relief surface for positioning said ear and a mouth of said user” to mean “the earpiece and the mouthpiece present a raised surface on the outside of the phone for positioning said ear and mouth of said user.” Again, TIP argued that the district court’s construction impermissibly excluded an alternative embodiment in the ’828 patent. And again, the Federal Circuit concluded that the claims need not be construed to encompass all disclosed embodiments when the claim language is clearly limited to one or more embodiments.
Finally, TIP challenged the district court’s construction of “said dial tone actuating switch electronically connected to said phone line and said electronic circuit” to mean “said dial tone actuating switch electronically connected to both the said phone line and said electronic circuit board, such that electricity can pass among these elements.” TIP contended that the actuating switch need not be between the phone line and the circuit board, provided that electricity can pass between the three components. In response, the Court noted the claim’s use of the conjunction “and,” together with the specification’s disclosure that the actuating switch was located between the phone line and the electronic circuit. In light of this support, the Federal Circuit affirmed the district court’s construction.
Under the district court’s construction, TIP conceded that the accused devices did not literally infringe the claims of the ’169 patent. On appeal, TIP contended that the accused devices infringe under the DOE. The Federal Circuit, however, agreed with the district court that the accused devices do not infringe the “handset” limitation under the DOE because no structural equivalent to a handset is found in the accused devices. Accordingly, the Court affirmed the grant of SJ that neither accused device infringes the claims of the ’169 patent, literally or under the DOE.
TIP also appealed the district court’s holding that one of the accused devices did not infringe the ’828 patent under the DOE. TIP argued that the difference between the single electrical connection in the accused device and the two electrical connections in the claims was insubstantial. The Federal Circuit disagreed, finding that the claim required an electrical connection between the phone line and the actuating switch. The Court found that there was no such connection, or an equivalent, present in the accused device.
Finally, the Court found that TIP failed to show that the electronic circuit in the accused device functioned in substantially the same way to achieve substantially the same result. Accordingly, the Court held that the district court did not err in granting SJ of no literal infringement and no infringement under the DOE of the ’828 patent by either accused device.