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District Court Erred in Adopting Narrow Constructions Where the Specification Did Not Restrict Otherwise Broad Claim Language

February 18, 2015

District Court Erred in Adopting Narrow Constructions Where the Specification Did Not Restrict Otherwise Broad Claim Language

February 18, 2015

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Papst Licensing GmbH & Co. KG v. Fujifilm Corp., __ F.3d ___ (Fed. Cir. Feb. 2, 2015) (TARANTO, Schall, Chen) (D.D.C.: Collyer) (2 of 5 stars)

Federal Circuit reverses noninfringement judgment and five underlying claim constructions.  The patents were directed to an “interface device” that permits a “transmit/receive device” to transfer data to a host and that works with a variety of devices without requiring installation of specialized drivers.  The parties agreed the noninfringement judgment could not stand if the constructions were reversed.

Standard of Review:  “In this case, we review the district court’s claim constructions de novo, because intrinsic evidence fully determines the proper constructions.  As we have noted, the district court relied only on the intrinsic record, not on any testimony about skilled artisans’ understandings of claim terms in the relevant field, and neither party challenges that approach.”  Slip op. at 8 (citation omitted).

Claim Construction:  The district court’s constructions were all too narrow.  First, the claimed “interface device” need not be physically separate from the “transmit/receive device.”  The claim language did not require it, and the stated purpose of the invention could still be achieved if the two are attached.  Another term—“second connecting device”—was not limited to the preferred embodiment, a physical plug.  “[W]e see nothing to take that embodiment outside the reach of the usual rule that claims are generally not limited to features found in what the written description presents as mere embodiments, where the claim language is plainly broader.”  Id. at 16-17.

The term “data transmit/receive device” did not require a device capable of transmitting or receiving data “when connected to the host device by the interface device.”  The patentee had not waived its right to challenge this construction by pointing out a clerical error in the district court’s initial opinion.  “In the district court, Papst opposed the construction it now opposes, and it was not required to state its opposition twice.”  Id. at 18.  Moreover, the term’s ordinary meaning did not suggest a temporal limitation, and the specification disclosed the device had a memory.  It did not matter that the specification included no example of transfer where the devices were not connected:  “This assertion does not suggest a disclaimer of any sort; it merely asserts an absence of something in the written description.”  Id. at 20.

Limitations involving “virtual files” did not require them to be not physically stored on the interface device.  The intrinsic evidence didn’t impose that restriction, and the invention’s stated benefit did not depend on where the files were physically stored. “To impose the district court’s requirement tied to physical location is to introduce a meaning of ‘virtual’ that is foreign to what is described as the invention’s advance.”  Id. at 23.

Finally, the term “input/output device customary in a host device” was not limited to a device normally present “within the chasis” of a computer.  The claim language gave little guidance on the issue.  But the specification “clearly evinces the intended meaning—and meets even the standard for overriding a seemingly plain meaning of the claim language.”  Id. at 26.  The patent gave a printer as an example of such a device, and printers aren’t inside a computer chasis.  Moreover, a narrow construction would exclude the preferred embodiment, and the specification did not even equate a “host device” with a computer.

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.

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