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Federal Circuit Vacates SJ of Noninfringement After Finding Claim Construction Too Narrow

09-1146
January 15, 2010

Decision icon Decision

Judges: Linn (author), Friedman, Dyk (concurring in the result and dissenting-in-part)

[Appealed from: S.D.N.Y., Judge McMahon]

In Schindler Elevator Corp. v. Otis Elevator Co., No. 09-1146 (Fed. Cir. Jan. 15, 2010), the Federal Circuit concluded that the district court erred in construing the terms “information transmitter” and “recognition device” to exclude any “personal action” by an elevator user other than “walking into the monitored area.”  The Federal Circuit vacated the district court’s entry of SJ of noninfringement of U.S. Patent No. 5,689,094 (“the ’094 patent”) in favor of Otis Elevator Co. (“Otis”) and remanded for further proceedings. 

The ’094 patent is directed to an elevator system that recognizes a user when he or she enters a building, then dispatches an elevator to take the user to a destination floor based on user-specific data.  The system recognizes the user in one or two ways—either a user carrying an “information transmitter” brings the transmitter within range of a “recognition device” mounted in the building’s entry location, or the recognition device recognizes the user by “individual features,” such as facial contours.  Once the system has recognized the user, the system identifies the user’s destination floor, dispatches an elevator to the user’s starting floor, and informs the user which elevator to take.  The user thus arrives at a destination floor without having to press any button outside or inside the elevator to designate a floor. 

Schindler Elevator Corp. and Inventio AG (collectively “Schindler”) sued Otis for infringing all claims of the ’094 patent.  The district court construed the term “information transmitter” to mean “a device that communicates with a recognition device via electromagnetic waves, after being actuated by that recognition device, without requiring any sort of personal action by the passenger.”  The district court construed the term “recognition device” to mean “a device that actuates and reads data transmitted by an information transmitter without requiring any sort of personal action by the passenger.”  After claim construction, the parties cross-moved for SJ on the issue of infringement.  Otis argued, and the district court agreed, that neither of these claim limitations is met by the accused system because the use of a passenger’s hands to bring a radio frequency identification (“RFID”) card within the effective range of a card reader constitutes prohibited “personal action.”  In its SJ ruling, the district court refined its understanding of “personal action” to require something more than walking into the monitored area and granted SJ of noninfringement in favor of Otis. 

On appeal, Schindler argued that the district court improperly limited the terms “information transmitter” and “recognition device” by requiring those devices to operate “without any sort of personal action by the passenger” and by further defining “personal action” to mean any action “other than walking into the monitored area.”  The Federal Circuit agreed that the district court’s construction was too narrow.  The Court noted that relevant statements in the specification and prosecution history were directed to elevator operations that occur only after the information transmitter is already within range of the recognition device, not to the initial act of bringing the information transmitter within range of the recognition device.

The Federal Circuit focused its analysis on the claim language, the specification, and the prosecution history.  First, the Federal Circuit found that the district court overlooked several important aspects of the claim language, which shed light on whether and to what extent an elevator user undertakes “personal action” in the invention.  The Court, for example, found that claim 1 explicitly provides that the transmitter is “carried by an elevator user” and that carrying a transmitter is thus a type of “personal action” that is expressly required in the claims.  Further, the Court found that claim 7, which depends from claim 1, is directed to an embodiment in which the recognition device may be mounted near a “time clock,” and an elevator is dispatched when a user clocks in or out of work.  The Court found that, because a user would need to use his hands to bring the transmitter key within range of the recognition device to unlock the door, or to clock in or out of work, these types of personal action are implicitly permitted in claim 7 and, by extension, in claim 1.  Accordingly, the Court held that the claims appear to permit at least those types of personal action that are necessary to bring the information transmitter within range of the recognition device.

The Court also found that the one place that the phrase “personal action” appears in the specification provides no information about how the passenger initially brings the transmitter (or fingerprints) within recognition range, but merely that, once in range, the user need not use personal action to communicate a destination to the elevator control.  Moreover, contrary to the district court’s prohibition against all actions other than walking, the Court found that the specification itself provides examples where a user would need to do more than just walk to bring the transmitter into recognition range.  The Court noted that unlocking a door and pushing a cart are two “personal actions,” other than simply walking, which are disclosed in the specification as actions needed to bring a transmitter within range of the recognition device.  Once in range, the transmitter is actuated by the recognition device and transmits its encoded data without personal action by the user. 

Finally, the Federal Circuit looked to the prosecution history.  The Court noted that during prosecution, Schindler amended the claims in response to an obviousness rejection, adding the “information transmitter” limitation and requiring that the transmitter be “actuated” by the recognition device.  The district court read statements in the prosecution history as unambiguously disavowing the use of a passenger’s hands for any and all purposes.  The Federal Circuit disagreed, finding that the prosecution statements do not constitute a “clear and unmistakable” disavowal of personal action for the limited purpose of bringing the transmitter within range of the recognition device.  The Court, therefore, modified the district court’s construction of “information transmitter” and “recognition device” by striking the phrase “without requiring any sort of personal action by the passenger” from each construction. 

Under the modified constructions, the Court held that Schindler’s evidence was sufficient to create a genuine issue of material fact that the RFID cards of the accused system communicate with a card reader via electromagnetic waves after being actuated by the card reader, and that the card reader actuates and reads data transmitted by the RFID cards.  Thus, the Court vacated the grant of SJ and remanded for further proceedings. 

In a concurring opinion, Judge Dyk agreed that the “without requiring any sort of personal action” construction imposed by the district judge unduly limited the scope of the claims.  Judge Dyk disagreed with the majority, however, that there is no requirement of hands-free or automatic action until the transmitter is within range of the recognition device.  Judge Dyk found that the specification and prosecution history make no such distinction and consistently emphasize the hands-free and automatic nature of the device without regard to whether it is in range or not.  In Judge Dyk’s view, the majority’s claim construction artificially eliminates any disclaimer by limiting it to actions taken after the transmitter is in range of the recognition device.

Summary authored by Jin Zhang, Esq.