Claim Term "Conventional" Implies Time Constraint on Claim Scope
May 06, 2005
Last Month at the Federal Circuit - June 2005
Judges: Lourie (author), Michel, and Prost
In PC Connector Solutions, LLC v. SmartDisk Corp., No. 04-1180 (Fed. Cir. May 6, 2005), the Federal Circuit affirmed a grant of SJ of noninfringement of U.S. Patent No. 5,224,216 ("the '216 patent").
PC Connector Solutions, LLC ("PC Connector") sued SmartDisk Corporation and Fuji Photo Film U.S.A., Inc. (collectively "SmartDisk") for infringement of the '216 patent, which is directed to the connection of peripherals to a computer via a coupler inserted into a diskette drive. The accused devices are diskette-shaped adapters for flash memories and smart cards. A flash memory or a smart card is inserted into the adapter, which is then inserted into a diskette drive to facilitate the transfer of data between the flash memory or smart card and the computer.
The appeal centered on a dispute of certain claim terms that the district court had construed as fixing the scope of the claims to products in existence at the time of the filing of the '216 patent, namely, 1988. Specifically, the claims in question used the phrases "normally connectable," "conventional," "traditionally connectable," and "standard" to define the input/output port of a computer.
On appeal, PC Connector argued that these terms did not impose a time-based limitation on the input/ output technologies covered by the claim. The Federal Circuit disagreed, however, concluding that the terms in question, under their ordinary and customary meanings, implicitly include a time dependence as ruled by the district court. Otherwise, the Court concluded, claims filed in 1988 might be found to include present-day technology, such as USB ports, which did not exist in 1988. Having resolved the claim construction issue in Defendants' favor, the Court affirmed the finding of no infringement.