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Specification Makes Clear That Claims Do Not Cover the Accused Products

00-1459
August 06, 2001

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Last Month at the Federal Circuit - September 2001

Judges: Judges: Rader (author), Mayer, and Friedman

In Innovad, Inc. v. Microsoft Corp., No. 00- 1459 (Fed. Cir. Aug. 6, 2001), the Federal Circuit affirmed a district court’s grant of SJ of  noninfringement of U.S. Patent No. 4,882,750 (“the ‘750 patent”). Innovad, Inc.

(“Innovad”) had charged Microsoft Corporation; Psion Inc.; Apple Computer, Inc.; The Ericsson Corporation; Hewlett-Packard Company; Philips Electronics North America; Everex Systems, Inc.; Sony Electronics, Inc.; LG Electronics U.S.A. Inc.; and Odyssey Computing Inc. with infringement of the ‘750 patent.

Claim 22 of the ‘750 patent is directed to a telephone dialer system comprising a case, reprogramming means, signal means, audiofrequency output means, at least one battery, and a single, bistate switch (these elements collectively form a dialer unit); a programming means; and a means for releasably electrically coupling the reprogrammable means (i.e., the dialer unit) to the programming means.

The accused devices are hand-held computers that automatically dial preprogrammed telephone numbers when loaded with appropriate software. Each of the hand-held computers has an integral keyboard with a numeric keypad that may be used to delete, edit, or replace any stored telephone number.

Before discovery, Microsoft Corporation, Psion Inc., and Apple Computer, Inc. (collectively “Microsoft”) moved for SJ of noninfringement, which the district court granted.

On appeal, the Federal Circuit affirmed the district court’s construction of the claim terms on the point that distinguishes the accused systems from the claimed system. Specifically, the district court had construed “means for releasably electrically coupling said reprogramming memory means and said programming means only during said programming mode” to mean that the dialer is linked to the programming means only temporarily during programming. Based on its construction of claim 22, the district court concluded that the claimed system could not include a keypad.

The Federal Circuit noted that the district court may have confused the terms “telephone dialer system” and “dialer unit,” concluding that the district court must have been referring to the dialer unit when it referred to the absence of a keypad. The Federal Circuit then noted that the ‘750 specification repeatedly emphasizes that the dialer has no keypad. In addition, the Federal Circuit pointed out that the specification stresses that a keypad renders prior art dialers useless as specialty advertising give-away items, which is a purpose of the invention. The Federal Circuit therefore concluded that the dialer unit within the claimed telephone dialer system of claim 22 does not include a keypad.

Because the dialer unit does not contain a keypad, the Federal Circuit reasoned, the dialer unit must be coupled to the programming means for programming, so that the programming mode only occurs during the temporary coupling of the programming means to the dialer unit. The Federal Circuit also indicated that the dialer unit of the accused devices includes a keypad and can therefore be programmed even when a programming means is not releasably coupled to the dialer unit. Due to this difference between claim 22 and the accused devices, the Federal Circuit concluded that the accused devices do not infringe claim 22, either literally or under the DOE.

The Federal Circuit also noted that the district court had misconstrued the terms “small volume” and “a single, bi-state switch,” and had erred in suggesting that the entire telephone dialer system does not include a keypad. Because the district court’s construction of the claim terms on the point that distinguishes the accused systems from the claimed system was correct, however, the Federal Circuit held that the record contains no genuine issues of fact regarding infringement of claim 22.