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Plain Language of Claim Controls, Even if It Fails to Cover the Only Disclosed Embodiment

07-1334
May 08, 2008

Decision icon Decision

Last Month at the Federal Circuit - June 2008

Judges: Lourie (dissenting-in-part), Linn, Prost (author)

[Appealed from: S.D. Cal., Judge Brewster]

In Lucent Technologies, Inc. v. Gateway, Inc., Nos. 07-1334, -1337, -1376 (Fed. Cir. May 8, 2008), the Federal Circuit reversed the district court’s construction of the term “terminal device” in U.S. Patent No. 5,649,131 (“the ’131 patent”), vacated its grant of SJ of noninfringement with respect to that patent, and remanded. At the same time, however, the Court affirmed the district court’s construction of the phrase “each successive iteration including the steps of” in U.S. Patent No. 4,701,954 (“the ’954 patent”) and its grant of SJ of noninfringement with respect to that patent.

Lucent Technologies, Inc. (“Lucent”) owns the ’131 and ’954 patents. The ’131 patent is directed to a communications protocol that facilitates the exchange of information between a host processor and a terminal device, and the ’954 patent is directed to digitizing or encoding speech. Lucent sued Microsoft Corporation (“Microsoft”), Dell Inc. (“Dell”), and Gateway, Inc. (“Gateway”) for infringement of both patents. The district court granted SJ of noninfringement with respect to both patents based on its construction of the term “terminal device” in the ’131 patent and the phrase “each successive iteration including the steps of” in the ’954 patent. Lucent appealed.

On appeal, the Federal Circuit first addressed the district court’s grant of SJ with respect to the ’131 patent based on its construction of the term “terminal device.” The district court construed “terminal device” as “a computing device such as a data terminal, workstation, portable computer, or smart phone . . . [that] manages its associated display itself” and as “exclud[ing] arrangements where the host processor controls the positioning of objects on the display of the terminal device.” Slip op. at 4. Lucent argued that the district court erred in defining “terminal “While it is true that we may construe claims to sustain their validity when the claims are amenable to more than one reasonable construction; when the claims are susceptible to only one reasonable construction, we will construe the claims as the patentee drafted them.” Slip op. at 26. 9 Last Month at the Federal Circuit device” to be a computing device that “manages its associated display itself” and to “exclude[] arrangements where the host processor controls the positioning of objects on the display of the terminal device.” The Federal Circuit agreed. The Court reviewed the claim language and the specification and found nothing that supported the district court’s construction. The Court also reviewed the prosecution history and found no clear disavowal. As a result, the Court modified the district court’s construction of “terminal device,” vacated its grant of SJ of noninfringement, and remanded the case for a determination of infringement based on the revised construction.

Dell argued that even if the Federal Circuit reverses the district court’s construction of “terminal device” and vacates its grant of SJ of noninfringement, it should reverse the district court’s denial of SJ that the accused devices do not infringe the “transmitting” step of the claims of the ’131 patent. The district court found that Lucent had raised genuine issues of material fact with respect to that limitation, and thus did not grant SJ. The Federal Circuit agreed with the district court that this issue was not amenable to resolution on SJ and was best resolved after weighing the evidence with respect to infringement presented by the parties. Accordingly, it declined to reverse the district court’s denial of SJ of noninfringement based on the “transmitting” step.

The Federal Circuit turned next to the district court’s grant of SJ of noninfringement with respect to the ’954 patent. The district court construed the phrase “each successive iteration including the steps of” in the ’954 patent to require that “all of the steps following this clause [steps 1-5] must each be performed informing each pulse.” Id. at 21. Because Lucent had presented no evidence that the accused devices performed each of the five steps in forming each pulse, the district court granted SJ of no literal infringement. The district court also granted SJ of noninfringement under the DOE, concluding that prosecution history estoppel barred Lucent from asserting infringement under the DOE.

Lucent argued that the term “including” in the phrase “each successive iteration including the steps of” should not be interpreted to mean “comprising” and that, as a result, a reasonable interpretation of the claim did not require all of steps 1-5 be performed in forming each pulse. The Federal Circuit disagreed. The Court noted that the claim language clearly supported the district court’s construction requiring all of steps 1-5 during each pulse-formation iteration. It explained that it has consistently interpreted “including” and “comprising” to have the same meaning, namely, that the listed elements are essential but other elements may be added. Although the Court agreed with Lucent that the district court’s construction was not supported by the sole embodiment described in the specification, it noted that the claim language clearly supported the district court’s construction and that where the claim language is unambiguous, it has construed the claims to exclude all disclosed embodiments. In this case, noted the Court, the claim language supported the district court’s construction and the specification did not redefine the claim term to have an alternative meaning. The Court added that the district court’s construction was supported by the prosecution history. Accordingly, the Court concluded that the district court’s construction was correct and that Lucent did not dispute the district court’s grant of SJ of no literal infringement under that construction.

Lucent also argued that there was infringement under the DOE because of the tangential exception to the presumption of prosecution history estoppel. The Federal Circuit disagreed, explaining that narrowing the claims in response to a rejection during prosecution creates a presumption that the applicant surrendered the territory between the original claims and the amended claims. The Court noted that the purpose for the amendment here was not unrelated to the alleged equivalent and, thus, there was more than a tangential relationship between the reason for the amendment and the accused equivalent. Accordingly, the Federal Circuit concluded that the district court did not err in holding that Lucent was barred by prosecution history estoppel from asserting infringement under the DOE.

Judge Lourie dissented from the majority’s conclusion that the district court erred in construing the “terminal device” limitation of the ’131 patent. According to him, the specification and the prosecution history supported the district court’s construction. Thus, he would have affirmed the district court’s construction of the “terminal device” limitation and its grant of SJ of noninfringement with respect to the ’131 patent.