Federal Circuit No. 2013-1340

The Federal Circuit affirmed the ITC’s determination that Intel had not violated 19 U.S.C. § 1337 with importation of its microprocessor products, since X2Y’s asserted patents carried a disavowal of scope.

X2Y Attenuators filed a complaint with the ITC claiming that Intel, Apple, and HP’s imports infringed on its patents 7,609,500 (‘500), 7,916,444 (‘444), and 8,023,241 (‘241). The ITC resolved the dispute in favor of Intel by adopting the Administrative Law Judge’s construction of the term ‘electrode’ as requiring “a common conductive pathway electrode positioned between paired electromagnetically opposite conductors.” This narrow construction was based on disavowal of scope in the patent specifications. The ‘500 patent specification, for example, included the phrase “an essential element among all embodiments or connotations of the invention” (col 19 lines 22-23). Additionally, the ‘500 patent incorporated by reference a related patent that described the particular configuration as being “universal to all the embodiments.”

In a unanimous decision, the Federal Circuit affirmed, saying that the ITC’s construction of the electrode terms was correct. The Federal Circuit found the language in the specification describing the “essential” nature of the element to rise to the level of a disavowal of claim scope. The Federal Circuit also referenced the Manual of Patent Examining Procedure to explain that “unless indicated otherwise, incorporation by reference of a patent renders 'the entire contents' of that patent’s disclosure a part of the host patent.” The Federal Circuit cited to the standard for finding a disclaimer in GE Lighting Solutions, LLC v. AgiLight, Inc. to conclude that “the standard for finding disavowal, while exacting, was met in this case.”

Judge Reyna penned a concurring opinion discussing procedural errors the ITC made in claim construction, even though the ITC arrived at the correct claim construction. These errors included setting a priority date before construing the claims and holding to a priority date before resolving invalidity issues.

This case demonstrates the risk of using words such as ‘essential’ and ‘universal’ in patent specifications, as well as mandatory language, such as ‘No matter what material is used, ___ is present.’ Patentees should be careful to avoid such language and to be aware of any disclaimers in parent applications when incorporating other patents by reference.

Subramanian Iyer