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Court “Construes” Role of Dictionaries, Treatises, and Encyclopedias in Claim Construction

October 16, 2002

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Last Month at the Federal Circuit - November 2002

Judges: Linn (author), Michel, and Schall

In Texas Digital Systems, Inc. v. Telegenix, Inc., No. 02-1032 (Fed. Cir. Oct. 16, 2002), the Federal Circuit vacated the district court’s judgment and remanded for a new trial on both liability and damages. In particular, the Court held that the district court had erroneously construed limitations of the asserted claims and, thus, the jury instructions containing the incorrect claim constructions constituted prejudicial legal error.

The patents-in-suit relate to methods and devices for controlling the color of pixels in a light emitting diode (“LED”) display. Within the display, each pixel comprises at least two elements of differing primary colors. Blending the light signal of each primary color yields a composite signal of variable color for the pixel.

Following a jury trial, the district court held that Telegenix, Inc. (“Telegenix”) literally infringed claims in the four asserted patents. The district court also held that the patents were not invalid and that Telegenix had willfully infringed Texas Digital Systems, Inc.’s (“TDS”) patents. Accordingly, it awarded Telegenix a reasonable royalty of 20% on $30 million of infringing sales as well as enhanced damages of $6 million.

The Federal Circuit took the opportunity to consider the role of dictionaries, treatises, and encyclopedias in construing claims. The Court stated that a claim term has the full range of its ordinary meaning as commonly understood by persons of ordinary skill in the art. In examining the ordinary meaning, the Court stated, contemporaneous references, such as dictionaries, treatises, and encyclopedias, available prior to the patent’s issuance, provide reliable sources of the disputed term’s established definition. The Court concluded that in construing claims, the proper analysis is to use such references to determine the ordinary meaning of a term, and to then consult the specification and prosecution history to determine whether the patentee has clearly and explicitly defined a term differently from its ordinary meaning or has manifestly disavowed a claim’s scope of coverage.

With this framework in mind, the Federal Circuit construed several claim limitations, including five means-plus-function limitations. With respect to four nonmeans- plus-function limitations, the Court reversed all but one of the district court’s constructions, relying on the ordinary meaning as taught, for example, in contemporaneous dictionaries.

As to the means-plus-function limitations, the Federal Circuit ruled that the district court had repeatedly failed to identify the proper function claimed and to identify properly the corresponding structures in the specification. The district court improperly relied on expert testimony in identifying corresponding structure in the specification and incorrectly included “hardware, firmware, and software” when none was disclosed. The Court, therefore, vacated the decision of the district court and remanded for a new trial consistent with the claim constructions provided.

The Federal Circuit further advised that the district court did not abuse its discretion in making two evidentiary rulings. First, the district court properly excluded testimony from a third-party engineer who had developed a variable-color LED display, because this evidence would have been unreliable and potentially confusing to the jury. Telegenix proffered the testimony as evidence of an invalidating prior public use of the invention. Because the testimony was not specific regarding a date of public use, the Federal Circuit found no abuse of discretion in refusing to admit it.

Second, the Federal Circuit found that the district court had properly admitted expert testimony from J. Carl Cooper, because he was competent and qualified as a damages expert as he owned and managed two patent-licensing companies and had worked in the video-display industry.