Clear and Explicit Statements Are Required to Redefine Claim Terms or Disavow Claim Scope
February 01, 2012
Last Month at the Federal Circuit - March 2012
Judges: Rader, Moore (author), Aiken (district judge sitting by designation)
[Appealed from: D.N.J., Chief Judge Brown]
In Thorner v. Sony Computer Entertainment America LLC, No. 11-1114 (Fed. Cir. Feb. 1, 2012), the Federal Circuit vacated and remanded the district court’s construction of two claim terms on which the parties had based their stipulation of noninfringement.
Craig Thorner and Virtual Reality Feedback Corporation (collectively “Thorner”) accused Sony Computer Entertainment America LLC and a number of other Sony entities (collectively “Sony”) of infringing claims of U.S. Patent No. 6,422,941 (“the ’941 patent”). The ’941 patent relates to a tactile feedback system for video games by which a user receives feedback in response to certain game activities. Independent claim 1 requires “a flexible pad,” “a plurality of actuators attached to said pad,” and a control circuit that activates the actuators in response to game activity. Slip op. at 3.
The district court construed the terms “flexible pad” and “attached to said pad.” It held that “flexible” in the ’941 patent meant “capable of being noticeably flexed with ease,” and not simply “capable of being flexed.” Id. at 3-4. The district court also held that actuators “attached to said pad” encompassed only actuators “affixed to the exterior surface of the pad” and did not include actuators embedded within the pad. Id. at 4. Following this claim construction, the parties stipulated to a judgment of noninfringement.
On appeal, the Federal Circuit first explained that there are only two exceptions to the general rule that words of a claim must be given their ordinary and customary meaning: (1) when a patentee acts as his own lexicographer, and (2) when a patentee disavows the full scope of a claim term. The Court noted that both exceptions require a clear and explicit statement by the patentee, and found that the use of the term “attached” in the specification did not meet either of these exceptions.
Proceeding under these guidelines, the Court first considered the term “attached to said pad.” Thorner argued that “attached” should be given its plain and ordinary meaning and that an actuator can be attached to both the interior and the exterior of an object. Thorner pointed to language in the specification that “a vibratory actuator can be attached to [the] outer side of the throttle handle,” arguing that this statement showed the applicant used deliberate, express language when distinguishing an internal from an external attachment. Id. at 8 (alteration in original) (citation omitted). Sony responded that because the specification used the term “attached” only when referring to an actuator affixed to the outer surface and the term “embedded” only when referring to an actuator placed within a housing, the term “attached” was limited to affixation to the exterior surface of the pad.
The Federal Circuit agreed with Thorner, holding that the plain meaning of the term “attached” encompassed either an external or an internal attachment. That the specification never used the word “attached” when referring to an actuator located on the interior of a controller did “not rise to the level of either lexicography or disavowal.” Id. at 9. Nor did the specification’s use of the terms “attached” and “embedded” as alternatives require a different result. The Court held that the use of two terms as alternatives may only amount to an implicit redefinition of the terms if the implied redefinition is “so clear that it equates to an explicit one.” Id. at 10. Thus, the Court found that simply referring to two terms as alternatives or disclosing embodiments that all use the term the same way is not sufficient to redefine a claim term.
The Court also noted that other parts of the claims and specification supported its construction. If the Court were to construe the term “attached” to mean only “attached to an outer surface,” it would have been unnecessary for the specification to include the language “attached to [an] outer surface.” Id. at 9 (alteration in original) (citation omitted). Moreover, because the only embodiment in the specification that included a flexible material recited actuators “embedded” within the foam structure, such construction would exclude the only flexible embodiment disclosed in the specification.
The Federal Circuit next considered the term “flexible pad.” The Court first disagreed with Sony that it was precluded from deciding claim construction issues that were not implicated by the district court’s judgment. Because the term “flexible” was fully briefed, argued, and decided below, as well as fully briefed and argued on appeal, the Court found that it would waste judicial resources to refuse to decide the issue on appeal.
Thorner argued that the term “flexible” meant “capable of being flexed” and not “capable of being noticeably flexed with ease.” Thorner pointed out that the specification only used the term “flexible pad” when referring to a “semi-rigid” structure, arguing that a “semi-rigid” structure would not be “noticeably flexed with ease.” Sony responded that although the specification used the term to refer to a “semi-rigid structure,” the structure was made out of foam in every embodiment, and that a rigid, barely bendable material should not be considered “flexible.” Sony also pointed to the district court judge’s observation that one of the accused plastic controllers was rigid and would “snap” if he tried to flex it.
The Federal Circuit agreed with Thorner that the district court improperly limited the claim term. The specification only required that the “flexible pad” be a “semi-rigid” structure, and neither the claims nor the specification required the “flexible pad” to be “noticeably flexed with ease.” The Court also noted that the task of determining the degree of rigidity that amounts to “semi-rigid” was part of the infringement analysis and not part of claim construction.
Accordingly, having vacated the district court’s construction of the two claim terms, the Court remanded the case for further proceedings.
Summary authored by Cora R. Holt, law clerk at Finnegan.