Federal Circuit No 2012-1694
In Starhome GMBH v. AT&T Mobility LLC, the Federal Circuit affirmed the district court's claim construction and affirmed the district court's judgment of noninfringement because the asserted patent's specification failed to provide clear intent to depart from the ordinary meaning of the term "intelligent gateway."
The patent at issue in Starhome was U.S. 6,920,487 (the '487 patent), directed to systems and a method for global access to services for mobile telephone subscribers. At the district court, the parties presented different proposed constructions of "the intelligent gateway" as used in claims 10 and 40 of the '487 patent. Starhome proposed that "the intelligent gateway" should be construed as "a network element that uses knowledge implemented in databases or the like and application logic to perform its operations," while AT&T proposed that the term should be construed as "a network element that transfers information to and from a mobile network and another network external to the mobile network." (Emphasis added).
The district court looked to the definition of the term "gateway" in the Institute of Electrical and Electronics Engineers (IEEE) dictionary, which defined the term as a device connecting two or more networks. Based on the IEEE dictionary definition and lack of a clear redefinition of the term in the specification, the district court construed "the intelligent gateway" as proposed by AT&T, which required multiple interconnected networks. Starhome stipulated to noninfringment based on the district court's claim construction and appealed the district court's construction.
Starhome argued at the Federal Circuit that the '487 specification describes that the intelligent gateways utilize local databases to perform functions and that Figures 1 and 2 of the '487 patent provide separate embodiments. Specifically, Starhome argued that Figure 2 shows an intelligent gateway connected solely to an internal network. In response, the defendants argued that Figure 2 was merely a call flow diagram of the embodiment shown in Figure 1. Furthermore, the defendants pointed to statements made by Starhome in a related foreign prosecution that "a gateway provides access to an external environment beyond the immediate network," and that "the term 'intelligent gateway' is defined in this way."
The Federal Circuit agreed with the district court's dictionary use and noted that dictionaries and treatises can be helpful in claim construction "so long as the dictionary definition does not contradict any definition found or ascertained by a reading of the patent documents." (Citing Philips v. AWH Corp., 415 F.3d 1303, 1322-1323 (Fed. Cir. 2005) (en banc). Regarding Starhome's Figure 2 argument, the court believed that the figure at best was ambiguous as to whether the patentees intended to depart from the ordinary meaning of "intelligent gateway." Furthermore, the Federal Circuit noted that Starhome's statements made in the related foreign prosecution were evidence that the patentees did not intend to depart from the ordinary meaning of the term gateway. Thus, the Federal Circuit found no error in the district court's construction of "the intelligent gateway" and therefore affirmed the district court's judgment of noninfringment with respect to the asserted claims.