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Party and Counsel Sanctioned for Rehashing Previously Decided Issues

February 12, 2003

Decision icon Decision

Last Month at the Federal Circuit - March 2003

Judges: Lourie, Schall, and Bryson (per curiam)

In Phonometrics, Inc. v. Westin Hotel Co., No. 02-1314 (Fed. Cir. Feb. 12, 2003), the Federal Circuit affirmed a SJ of noninfringement of Phonometrics, Inc.’s (“Phonometrics”) U.S. Patent No. 3,769,463 (“the ‘463 patent”) and ordered Phonometrics and its attorney to pay Westin Hotel Company (“Westin”) $3,000 as a sanction for making frivolously unmeritorious arguments.

Phonometrics has attempted to enforce the ‘463 patent against several companies, with little success, and this is one of many appeals. The ‘463 patent relates to a longdistance telephone call cost computer apparatus with a digital display. The Federal Circuit has construed several claim limitations in its previous opinions and warned Phonometrics that it would not welcome further appeals seeking to relitigate the meaning of certain phrases.

Phonometrics argued that its appeal is appropriate because two of the Federal Circuit’s previous decisions are contradictory and a third decision cannot resolve the difference because that opinion is nonprecedential.

The Federal Circuit reviewed its prior decisions, Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384 (Fed. Cir. 1992), and Phonometrics, Inc. v. Northern Telecom, Inc., 133 F.3d 1459 (Fed. Cir. 1998), and concluded that they were not contradictory as to whether or not the phrase “digital display” in the claims encompasses machine-readable information. The Court also indicated that it has twice previously held that the claim phrase “substantially instantaneous” does not mean “during the call.” Because it has twice so held previously and has rejected Phonometrics’s present contrary suggestions in a previous appeal, the Federal Circuit sanctioned Phonometrics and ordered payment of $3,000 to Westin.

The Federal Circuit then agreed that the evidence concerning Westin’s alleged infringement was insufficient to defeat SJ of noninfringement because Phonometrics had failed to produce any evidence that Westin used any particular model of telephone that contained the claimed features or any evidence of when any particular model existed during the alleged infringement.