In Openwave Systems, Inc v Apple Inc (2015-1108, Fed Cir, December 15 2015), the Federal Circuit has upheld a district court finding that a patent specification disparaging a prior art embodiment constituted a disavowal sufficient to exclude that embodiment from the scope of the claims.
In Openwave, three related patents with the same specification were at issue: US Patents 6,405,037, 6,430,409 and 6,625,447 (the '037 patent, the '409 patent and the '447 patent, respectively).(1) Openwave Systems, Inc, also known as NKA Unwired Planet, Inc filed suit in the District of Delaware and also initiated an action with the International Trade Commission (ITC). The Delaware District Court stayed the suit in light of the ITC action. After Unwired Planet obtained an unfavourable claim construction ruling from the ITC, it informed the Delaware District Court that if that court adopted the same construction, Unwired Planet would concede non-infringement of its patents.
District court claim construction
The Delaware District Court construed three claim terms: 'mobile device' in the '037 patent, 'wireless mobile telephone' in the '409 patent and 'two-way communication device' in the '447 patent. As agreed by the parties, these terms were construed together. The issue was whether the disputed terms, when properly construed, covered mobile devices that contain a small microcontroller in order to facilitate communications between a server and a user device, or whether the claims were broader and encompassed mobile devices including a computer module.
The court determined that statements in the specification clearly disparaged mobile devices containing computer modules and thus found that there was a disavowal of such subject matter by the patentee. In particular, it noted that "repeated derogatory statements… reasonably may be viewed as a disavowal of that subject matter from the scope of the [p]atent's claims".(2) The terms at issue therefore were construed to mean a "portable wireless two-way communication device that does not contain a computer module". Unwired Planet thereafter filed a stipulation of non-infringement. The court entered final judgment of non-infringement and Unwired Planet appealed to the Federal Circuit.
Federal Circuit opinion
The Federal Circuit reviewed the district court's claim construction *de novo*, as that construction was based entirely on intrinsic evidence. In so doing, the Federal Circuit noted its precedent that the specification is usually dispositive in determining proper claim construction. The court further noted generally that the description in a patent specification of a preferred embodiment is insufficient to constitute disavowal of subject matter, even if it is the only embodiment described.(3) The court then focused on determining "whether and to what extent the specification disparages mobile devices that include 'computer modules'".
The Federal Circuit observed that the specification was "rife" with "remarks that disparage and, therefore, disclaim mobile devices that incorporate computer modules". It pointed to several examples throughout the specification of such remarks. Moreover, it held that it was clear from the specification that combining mobile devices with computer modules was itself the problem with the prior art, and that the solution to the problem required a movement away from that combination. While the Federal Circuit said that there was a "high bar to finding disavowal of claim scope through disparagement of the prior art in the specification", it concluded that, in light of the repeated disparagement of the prior art computer module embodiment in the specification, the patents in suit could not be read to cover mobile devices containing computer modules. The Federal Circuit thus affirmed the district court's claim construction.
For further information on this topic please contact Elizabeth F Holowacz or Stephanie S DelPonte at Fitzpatrick, Cella, Harper & Scinto by telephone (+1 212 218 2100) or email (firstname.lastname@example.org or email@example.com). The Fitzpatrick, Cella, Harper & Scinto website can be accessed at www.fitzpatrickcella.com.
This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.