Inventor Defines “Contiguous” in Prosecution History
August 01, 2002
Last Month at the Federal Circuit - September 2002
Judges: Bryson (author), Gajarsa, and Dyk
In Honeywell Inc. v. Victor Co. of Japan, No. 01- 1436 (Fed. Cir. Aug. 1, 2002), the Federal Circuit reversed a SJ of noninfringement, affirmed the judgment that certain accused chips were licensed, and remanded.
Honeywell Inc. (“Honeywell”) is the owner of U.S. Patent No. 4,425,501 (“the ‘501 patent”), which claims an aperture mask for an autofocus system for use in cameras and videocameras. Honeywell sued Victor Company of Japan, Ltd. and U.S. JVC Corporation (collectively “JVC”), alleging that components in JVC’s videocameras, known as charged-coupled device imaging chips, infringed claims 1 and 2 of the ‘501 patent. JVC moved for SJ of noninfringement and argued that some of the chips were sold to JVC by a licensed supplier, Matsushita Electric Industrial Company, Ltd. (“MEI”).
The infringement issue turned on the construction of the term “contiguous.” Honeywell proposed that “contiguous” should be defined by the definition appearing in the prosecuting history of the application. There, the inventor offered the following definition: “an actual contact; touching; also, near, though not in contact; neighboring, adjoining; next in succession.” The inventor further explained that the two elements would be “contiguous” if they were placed in actual contact or if they were “near, though not in contact.”
The Federal Circuit ruled that the district court had erred in not according more weight to the inventor’s definition. The Court ruled that because the inventor made clear that he intended to invoke the broadest meaning of the term “contiguous,” he should be given that meaning and not just the most common meaning. Accordingly, the Federal Circuit ruled that “contiguous,” as used in the claims, does not require actual contact between elements. The Court then remanded the infringement issue with additional guidance on how to apply this construction to the issue of infringement where the claimed layers may have intervening structure.
As to the license issue, the Federal Circuit concluded that the accused imaging chips fall within the definition of “Products” in the license agreement (“Agreement”) between Honeywell and MEI. Since the Agreement was signed because of a dispute between Honeywell and MEI over the ‘501 and other Honeywell patents, it plainly intended to cover devices within the scope of the ‘501 patent.