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Claims to “Electronic Multifunction Card” Are Not Limited to Card Size

August 20, 2003

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Last Month at the Federal Circuit - September 2003

Judges: Dyk (author), Clevenger, and Linn

In E-Pass Technologies v. 3Com Corporation, No. 02-1593 (Fed. Cir. Aug. 20, 2003), the Federal Circuit rejected the district court’s claim construction of the phrase “electronic multifunction card” and reversed its SJ of noninfringement. The Federal Circuit remanded the case with a broader claim construction and ruled that under this new claim construction, the Plaintiff, E-Pass Technologies (“E-Pass”), may be able to prove infringement of its patent claims by 3Com Corporation (“3Com”).

E-Pass is the assignee of U.S. Patent No. 5,726,311 (“the ‘311 patent”) directed to a method for substituting multiple credit cards with a single, electronic multifunction card. E-Pass accused 3Com’s “Palm Pilot” device of infringing claim 1 of the ‘311 patent. The claim language in dispute was the phrase “electronic multi-function card,” which the district court construed to mean a device having the standard credit-card dimensions according to the American National Standards Institute (”ANSI”), i.e., 3.375 inches long, 2.215 inches high, and 0.030 inches thick. The district court granted 3Com’s motion for SJ of noninfringement because the accused Palm Pilot is substantially larger than a standard credit card and no reasonable jury would find infringement under the DOE.

In construing claim 1, the Federal Circuit first consulted a dictionary to determine the ordinary meaning of the term “card.” That dictionary defines “card” as a “flat, stiff, usually small and rectangular piece of material,” but does not provide specific dimensions. The Federal Circuit also concluded that the phrase “electronic multifunction card” and the claim in its entirety do not suggest any size limitations. Further, the Federal Circuit concluded that the ANSI standard does not intend to provide a definition for all cards or electronic multifunction cards.

The Federal Circuit found error in the district court’s reliance on the patent specification to limit the card size. The ‘311 patent states that “the simple form of the electronic multi-functioncard . . . has the outer dimensions of usual credit or check cards,” and “[credit] cards . . . normally have standardized dimensions.” While the district court concluded that these teachings limited the scope of the invention, the Federal Circuit concluded that these teachings showed that only some embodiments might have certain size limitations.

The district court had also incorrectly concluded that the purpose of the claimed card was to perform the functions of various credit cardsized cards and inferred from this that the claimed multipurpose card should therefore be the same size. The Federal Circuit rejected this reasoning, noting that claimed inventions may have several purposes, but that should not limit the claims.

The Federal Circuit therefore reversed the grant of SJ of noninfringement as being based on an incorrect claim construction and remanded for further proceedings.