June 2014
During Claim Construction, Reading Limitations from a Preferred Embodiment and Importing Limitations Conflicting with a Preferred Embodiment Are Improper
| Judges: Rader, Moore (author), Reyna (concurring-in-part and dissenting-in-part) |
| [Appealed from N.D. Ohio, Judge Gwin] |
In GE Lighting Solutions, LLC v. AgiLight, Inc., No. 13-1267 (Fed. Cir. May 1, 2014), the Federal Circuit affirmed-in-part and reversed-in-part the district court’s claim construction and associated SJ of noninfringement.
GE Lighting Solutions, LLC (“GE”) sued AgiLight, Inc. (“AgiLight”) for infringement of U.S. Patent Nos. 7,160,140 (“the ’140 patent”); 7,520,771 (“the ’771 patent”); 7,832,896 (“the ’896 patent”); and 7,633,055 (“the ’055 patent”). The ’140 and ’771 patents are directed to light-emitting diode (“LED”) string lights that include an LED, an insulated electrical conductor (e.g., a wire), and an insulation displacement connector (“IDC connector”). The ’896 patent is directed to an optical element that houses an LED and interacts with the light emitted therefrom to increase its viewing angle. The ’055 patent is directed to an overmolding process that applies a protective sealant over the printed circuit board (“PCB”) to which an LED is attached.
The district court construed three claim terms. For the ’140 and ’771 patents, the district court construed the term “IDC connector” in the claims as requiring certain specialized features, despite recognizing that “IDC connector” is commonly used in electrical engineering to connote a range of devices. The district court relied on a disclosed embodiment and limitations of several dependent claims in making this determination. For the ’896 patent, the district court construed the claim term, “[an] optical element having a substantially ellipsoidal inner profile and generally spherical outer profile,” as requiring the entire inner profile of the optical element to be substantially ellipsoidal, with an outer three-dimensional surface where the points on the surface are generally equidistant from a center point. For the ’055 patent, the district court construed the claim term “annular gasket” to be “a three-dimensional deformable material used to make a pressure-tight joint between stationary parts, with an opening in its center capable of sealing off its center area when bonded statically between stationary parts on its top and bottom. Slip op. at 14 (citation omitted). Based on the construction of these claim terms, the district court granted AgiLight’s motion for SJ of noninfringement for all four patents. GE appealed.
“[T]he specification and prosecution history only compel departure from the plain meaning in two instances: lexicography and disavowal.” Slip op. at 5 (citing Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
On appeal, the Federal Circuit reversed the district court’s construction of “IDC connector” in the ’140 and ’771 patents and “substantially ellipsoidal inner profile” in the ’896 patent, and reversed the district court’s SJ of noninfringement with regard to those patents. The Court affirmed the district court’s construction of “annular gasket” in the ’055 patent and affirmed SJ of noninfringement of that patent.
The Court reasoned that while claim terms must be construed in light of the patent’s specification and prosecution history, they “only compel departure from the plain meaning in two instances: lexicography and disavowal.” Id. at 5 (citing Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365
(Fed. Cir. 2012)). The Court noted that to act as its own lexicographer, a patentee must “‘clearly set forth a definition of the disputed claim term,’ and ‘clearly express an intent to define the term.’” Id. at 5-6 (quoting Thorner, 669 F.3d at 1365). The Court also noted that disavowal requires “the specification [or prosecution history] make[] clear that the invention does not include a particular feature.” Id. at 6 (alterations in original) (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc.,
242 F.3d 1337, 1341 (Fed. Cir. 2001)). The Court further stated that the doctrine of claim differentiation creates a presumption that the limitations of dependent claims are not included in the independent claims, although such presumption can be overcome by a contrary construction required by the specification or prosecution history, such as via a disclaimer.
Regarding the term “IDC connector” in the ’140 and ’771 patents, the Court found that it had a plain meaning of “a connector that displaces insulation surrounding an insulated conductor to make electrical contact with the conductor.” Id. at 5 (citations omitted). The Court concluded that the ’140 and ’171 patents’ specifications and their prosecution histories did not define “IDC connector” or include any indication that the inventors intended to act as their own lexicographers, even though only a single embodiment of an IDC connector was depicted. The Court also concluded that there was no disavowal, as the specifications did not describe the depicted IDC connector as the present invention, as essential, or as important; nor did the specifications disparage other IDC connectors. The Court further held that the district court erred by incorporating the dependent claim limitations of the ’140 patent into the construction of “IDC connector,” as nothing in the specification or the prosecution history of the ’140 patent rebutted the presumption of claim differentiation.
The Court then considered the district court’s construction of “substantially ellipsoidal inner profile” in the ’896 patent. The Court noted that a construction that required the entire inner profile to be substantially ellipsoidal would exclude the only disclosed embodiment of the ’896 patent. The Court noted that such a construction is typically incorrect unless the patentee expressed intent to limit the claim terms to exclude disclosed embodiments. The Court found no such intent in either the specification or the prosecution history of the ’896 patent, and thus held that the “substantially ellipsoidal inner profile” only required a portion of the inner profile to be substantially ellipsoidal. Based on this construction, the Court held that there was a genuine factual dispute as to whether AgiLight’s accused product infringed the ’896 patent, as evident from cross-sectional images of the AgiLight device. The Court also held that there was a genuine factual dispute as to whether the accused product included the claimed “generally spherical outer profile,” also evident from the cross-sectional images.
Lastly, the Court considered the district court’s construction of “annular gasket” in the ’055 patent. The Court agreed with the district court’s conclusion that the accused product, which has a concave inner surface, did not have an opening in the context of an annular gasket. The Court held that such a construction is consistent with the plain and ordinary meaning of “gasket” and with the annular gaskets disclosed in the ’055 patent. The Court thus reversed the district court’s claim construction and SJ of noninfringement with regard to the ’140, ’771, and ’896 patents, and affirmed the district court’s claim construction and SJ of noninfringement with regard to the ’055 patent.
Judge Reyna wrote separately, concurring with the majority’s opinion regarding the construction of “IDC connector” in the ’140 and ’771 patents and “annular gasket” in the ’055 patent, and thus concurring with the majority’s resolution of the issues regarding those patents. Judge Reyna disagreed, however, with the majority’s interpretation of the terms “substantially ellipsoidal inner profile” and “generally spherical outer profile” in the ’896 patent, and therefore dissented from the majority’s outcome concerning that patent.
