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The Claim Terms “Portable Computer” and “Portable Computer Microprocessing System” Did Not Encompass Laptops Where Laptops Were Disclaimed During Prosecution

07-1169
March 21, 2008

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Last Month at the Federal Circuit - April 2008

Judges: Michel, Plager, Rader (author)

[Appealed from: W.D. Wis., Judge Crabb]

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 grant of SJ of noninfringement because the patentee disavowed an interpretation of “portable computer” that would encompass a computer with a built-in display or keyboard, i.e., a laptop. The Court also affirmed the district court’s finding that the case was not exceptional and that attorneys’ fees were not warranted under 35 U.S.C. § 285.

Computer Docking Station Corporation (“CDSC”) owns U.S. Patent No. 5,187,645 (“the ’645 patent”). The ’645 patent is directed to 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 specification explains that a keyboard and visual display are optional. CDSC sued Dell, Inc., Gateway, Inc., Toshiba America, Inc., and Toshiba America Information Systems, Inc. (collectively “Defendants”), alleging that laptops and docking stations produced by them infringed the ’645 patent. Each accused laptop has a built-in display or keyboard.

Each of the claims of the ’645 patent that CDSC asserted 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”). The district court determined that the prosecution history and the specification of the ’645 patent 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 U.S. Patent No. 5,030,128 to Herron et al. (“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 specific computer peripheral devices” to require “that all individual peripheral device connections 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 noninfringement, conceding that none of the accused products met the court’s construction of the portable computer limitation. CDSC also noted that some of the accused products did 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 SJ of noninfringement 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 SJ, and denied Defendants’ motion for attorneys’ fees and costs under section 285. CDSC appealed the district court’s claim construction, its grant of SJ, and its denial of CDSC’s Rule 56(f) motion. Defendants appealed the denial of the motion for attorneys’ 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 limited the scope of the asserted claims. Turning to the construction of these phrases, the Federal Circuit 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, during prosecution, the applicants explained that interface connectors for the keyboard and display were 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 conceded portability of displays and keyboards in favor of processing power and memory. Further, the applicants distinguished their system from the laptop computer of the Herron patent, 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-in.

The Court added that the examiner’s citation of the single connection limitation, and not the portable computer limitation in the reasons for allowabilty, did not “erase the applicants’ clear disavowal of laptops.” Slip op. at 15. The Court reasoned that the applicants distinguished their invention from the prior art in multiple ways and a disavowal, if clear and unambiguous, could lie in a single distinction among many. The Court also noted that the specification of the ’645 patent did not cut against the clear disavowal of laptops because the specification did 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 contrasted the microcomputer system with a laptop computer and explained that a keyboard and visual display were optional. Accordingly, the Court affirmed the district court’s determination that the portable computer limitation required “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 would not infringe. Because there was no factual dispute regarding the portable computer limitation, which was required by every asserted claim, the Federal Circuit found that Defendants were entitled to SJ of noninfringement. Given this conclusion, 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 attorneys’ fees, the Federal Circuit observed that a court may award reasonable attorneys’ fees to prevailing parties under 35 U.S.C. § 285, and that factors relevant to this inquiry include the closeness of the question, prefiling investigation and discussions with the Defendants, and litigation behavior. The Court, however, determined that the district court did not clearly err in finding that the case was not exceptional under section 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 affirmed the denial of attorneys’ fees and costs under section 285