When applying the doctrine of prosecution disclaimer to reexaminations, an inventor must make a clear and unmistakable disavowal of scope, and additionally, a complete patent infringement analysis on summary judgment requires a district court to place the accused device alongside each asserted claim.
The patentee invented a platform that stabilizes a camera for filming motion pictures from moving vehicles. Two years after the patentee filed its infringement suit, the district court held a Markman hearing and construed the claim term “payload platform.” Prior to the hearing, the parties agreed, should the court adopt the alleged infringer’s construction of the term “payload platform,” there would be no infringement by the accused device. Thus, after construing the term in the alleged infringer’s favor, the district court sua sponte concluded that the alleged infringer did not infringe any asserted claim—including claims that did not include the term at issue. The patentees filed a motion to vacate the district court’s summary judgment order, which was denied. Then the district court issued its final judgment of noninfringement and the patentees timely appealed to the Federal Circuit, which had jurisdiction under 28 U.S.C. §§ 1292(c)(1) and 1295(a)(1).
The Federal Circuit, notably, reviewed two of the district court’s decisions. First, it reviewed the district court’s claim construction without deference and concluded that the district court erred in construing the claim term “payload platform.” Second, it reviewed the district court’s decision concerning summary judgment under the law of the regional circuit—here the Ninth Circuit—which reviews a grant of summary judgment without deference; ultimately vacating the district court’s grant of noninfringement summary judgment.
Before the Markman hearing, the parties proposed competing constructions of the terms “payload platform.” Relying heavily on the reexamination history and prior art, the district court construed the claim term “payload platform” to mean “the horizontal plate, piece of surface upon which the device (e.g., a camera) is directly mounted upon or affixed to.” Most notably, the district court emphasized the patentee’s following statements distinguishing his invention from the prior art: 1) explaining that the prior art does not teach “the second sensor package being fixed to the payload platform;” 2) asserting that the prior art “never uses the word ‘fixed to’ or ‘mounted on’...and are clearly not ‘fixed to’ and most definitely not ‘wholly fixed to’ the platform structure;” and 3) arguing that the prior art “clearly discloses [that the sensor system] is not fixed to the payload platform as suggested by requestor and listed as part of the examiner’s rejection.” In vacating the district court, the Federal Circuit held that these statements made during reexamination do not unambiguously focus on the “payload platform” characteristics nor distinguish it from the prior art. Rather, they refer to the placement of the prior art sensors in relation to the “payload platform.” Thus, the reexamination commentary cannot fairly limit the characteristics of the claim term.
Next, the Federal Circuit acknowledged that the district court’s power to enter summary judgment sua sponte, but noted that this power does not allow it to bypass performing a complete patent infringement analysis. Specifically, the Federal Circuit held that there was concern with the dispositive nature of the proposed claim construction because the alleged infringer stated that “virtually every claim except for maybe five or six require the payload platform.” Thus, a construction in the patentee’s favor would not necessarily mean that there was no infringement by the alleged infringer. As such, the Federal Circuit concluded that the district court only conducted the first step—determined the scope and meaning of the asserted patent claims—of the two-step analysis for finding patent infringement. It, however, failed to perform the second step, because—as mentioned above—several claims did not include the construed term. For that reason, the court highlighted that “the trial court did not place the accused device alongside each asserted claim for a complete comparison.”
A copy of the opinion can be found here.