Claim Term “Extending” Is an Active Verb
October 07, 2003
Last Month at the Federal Circuit - November 2003
Judges: Newman (author), Rader, and Dyk
In ACCO Brands, Inc. v. Micro Security Devices, Inc., No. 02-1567 (Fed. Cir. Oct. 7, 2003), the Federal Circuit affirmed a district court’s grant of SJ of noninfringement of U.S. Patent No. 5,502,989 (“the ‘989 patent”).
The ‘989 patent, owned by ACCO Brands, Inc. (“ACCO”), relates to a locking mechanism for portable electronic devices, such as computers. ACCO sued Micro Security Devices, Inc. (“Micro Security”) for infringement of the ‘989 patent. Claim 10, the only claim at issue, recites “a pin . . .for extending into said security slot . . . when said slot engagement member is in said locked position to thereby inhibit rotation of said slot engagement member to said unlocked position.” The district court construed this limitation to require that the pin actively extends into the security slot at or during the time the slot engagement member is in the locked position, thereby inhibiting rotation to the unlocked position.
Both parties’ technical witnesses agreed that in Micro Security’s accused products, the pin extends into the slot before the slot engagement member is placed in the locked position. On this basis, the district court granted SJ of no literal infringement. In addition, based on arguments made during prosecution, the district court also found that claim 10 could not cover the accused products under the DOE.
On appeal, the parties framed the issue as whether the term “extending” was an “active verb,” requiring that the pin extends into the slot at or during the time that the slot engagement member is in the locked position, or a “state of being” that includes a pin that extends into the slot either before or after locking. The Federal Circuit held that “extending” refers to an action occurring when the slot engagement member is rotated to and in the locked position. In so holding, the Court noted that during prosecution, the patentee specifically distinguished the claims of
the ‘989 patent over the prior art based on the fact that the claimed invention required that the pin extend into the slot at or during the time of locking.
ACCO argued that this interpretation was incorrect because it excluded several embodiments disclosed in the specification. The Federal Circuit noted, however, that the ‘989 patent was a divisional application and its parent application included claims that encompassed the excluded embodiments. The Court held that the presence of embodiments in the ‘989 patent carried over from its parent application and claimed in other patents did not broaden the scope of the claims of the patent.
Based on this construction, and the fact that the structure of the accused products at issue was not in dispute, the Federal Circuit agreed with the district court that the accused products did not literally infringe claim 10 of the ‘989 patent. The Federal Circuit also held that due to the statements made during the prosecution of the ‘989 patent, the patentee could not claim that a device that did not meet the “extending” limitation was equivalent. Therefore, the Court affirmed the district court’s finding that there could be no infringement under the DOE.