Fenner Investments, Ltd. v. Cellco Partnership; Pacing Technologies, LLC v. Garmin Int’l, Inc. et al.
Two appeals following the Supreme Court’s modification of the standard of appellate review on claim construction in Teva Pharm. USA, Inc. v. Sandoz, Inc. (IP Update,Vol. 18, No. 1) indicate that it is largely business as usual for the U.S. Court of Appeals for the Federal Circuit, at least where it construes claim terms based solely on intrinsic evidence; i.e., de novo review largely persists.
In Fenner Investments, Ltd. v. Cellco Partnership, Case No. 13-1640 (Fed. Cir., Feb. 12, 2015) (Newman, J.) the Federal Circuit affirmed the lower court’s claim construction and grant of summary judgment of no infringement. The Court construed the term at issue entirely from the intrinsic evidence. The disputed term, “personal identification number” (PIN), in the asserted claim related to a method for providing personal communication service (PCS) systems, for example, in a cellular network. The Court agreed that the PIN is associated with an individual user and not a particular device. The Court arrived at this conclusion through its review of the specification and prosecution history.
The Court noted that the written description stated that “[t]he personal identification numbers [. . .] are not associated with any particular communications unit or physical location but are associated with individual users.” The patent further distinguished the invention from non-PCS systems in explaining that (in non-PCS systems) “billing and system management procedures are associated with the telephones present in a household or business” and “billing charges are associated with the telephone and not with the individual making the call.” The Court further found that the user-centric PIN was a stated basis in the patent for distinguishing the invention from device-centric systems. The patentee made similar arguments to overcome prior art rejections as part of the prosecution history. Thus, the Court concluded that even if the patentee’s representations regarding the unique user-centric features as compare to the device-centric prior art were not the basis of patentability, the public at large should be able to rely on such prosecution statements to understand the claim limitations.
The Federal Circuit rejected argument that the district court’s construction made its claimed invention inoperable. The Court also rejected patent owner’s argument that the doctrine of claim differentiation could be used in a manner to contradict the clear meaning of the claims as determined from the written description or the prosecution history.
In Pacing Technologies, LLC v. Garmin Int’l, Inc. et al., Case No. 14-1396 (Fed. Cir., Feb. 18, 2015) (Moore, J.), the Court also affirmed the district court’s summary judgment of no infringement in view of an affirmed claim construction. The asserted patent describes aiding a user’s pacing during exercise by providing a tempo (for example, the beat of a song or flashes of light) corresponding to the user’s desired pace. The parties disputed the meaning of claim term “playback device.” The defendants (collectively, Garmin) argued that its products do not have a playback device as construed by the district court; that is, a device capable of playing audio, video or a visible signal. Instead, the Garmin devices only displayed information about the user’s desired pace. The district court found that Pacing’s claim limitations did not cover such functionality.
The Federal Circuit reviewed, de novo, the intrinsic evidence presented to the district court, and concluded that the preamble of the asserted method claim (“A repetitive motion pacing system for pacing a user comprising . . .”) was limiting because the preamble provided an antecedent basis for terms in the body of multiple claims, including a separate dependent claim. The Court then concluded that while the ordinary meaning of the preamble language did not require playback, the patentee had made a clear and unmistakable statement of disavowal or disclaimer, thus modifying the plain and ordinary meaning.
The Federal Circuit noted the patentee’s use of the popular practice of repetitively reciting “an object of the present invention” in listing various features of the claims, and found that, although not the case here, in some instances that practice alone could create a disclaimer or disavowal. However, in this instance, the Court found that reciting the many objectives of the invention in combination with the patentee’s additional statement that the 19 listed objects were actually accomplished “by a repetitive motion pacing system that includes . . . a data storage and playback device adapted to producing the sensible tempo,” clearly and unmistakably limited the claims to the specified device. The Court also rejected the plaintiff’s argument that the limiting construction was in error because it excluded a preferred embodiment. The Court explained that it was not clear that the embodiment would actually be excluded, but, even if was, that every claim does not need to cover every embodiment where the patent describes multiple embodiments.