DOE May Not Vitiate Claim Limitations
Duncan Parking Technologies, Inc. v. IPS Group, Inc., __ F.3d __, 2019 WL 386013 (Fed. Cir. Jan. 31, 2019) (LOURIE, Dyk, Taranto) (PTAB/S.D. Cal.: Bencivengo) (2 of 5 stars)
In consolidated appeals, Fed Cir reverses PTAB’s confirmation of IPS’s claims in one patent, affirms district court’s summary judgment of no infringement as to that patent, and vacates district court’s summary judgment of noninfringement as to a separate IPS patent. IPS’s patents relate to credit card-enabled, solar powered parking meters.
PTAB appeal: The PTAB erred in concluding that certain portions of a reference patent cited by DPT were invented solely by an individual listed as an inventor on IPS’s patent, and so those portions were not “by another,” as § 102(e) requires. The opinion analyzes the sections of the reference patent, and the record, and concludes, “the anticipating embodiment [of the reference patent] was the joint invention of [IPS’s inventor and another individual], an inventive entity different from that of the ’310 patent[.]” Op. at 18. Thus those sections comprised § 102(e) prior art and, as there was no dispute that they disclosed each limitation of the claims, “we hold those claims . . . unpatentable as anticipated.” Id.
S.D. Cal. SJ of noninfringement #1: This appeal concerns a non-identical set of claims of the same patent as in the PTAB appeal. The district court did not err in its claim construction or its infringement analysis. Per Warner-Jenkinson, 520 U.S. 17 (1997), the district court correctly rejected IPS’s equivalence analysis as vitiating a claim limitation. That IPS’s expert had given an infringement opinion did not bar summary judgment, as the expert’s opinion was “clearly foreclosed” by the claim construction. Per TechSearch, 286 F.3d 1360 (Fed. Cir. 2002), such an opinion is insufficient to avoid summary judgment.
S.D. Cal. SJ of noninfringement #2: As to a second IPS patent, the district court erred in its claim construction. The opinion discusses how the construction read out a preferred embodiment, and was more narrow than the term’s ordinary meaning, as given in a dictionary. Citing Thorner, 669 F.3d 1362 (Fed. Cir. 2012), the opinion reasons that the patentee is entitled to such meaning absent redefinition or disavowal. It rejects DPT’s argument that the district court’s construction was supported by disavowal in the file history, finding no “clear disavowal.” Op. at 29. The case is remanded for further proceedings.
KEYWORDS: PRIOR ART; INVENTORSHIP; SUMMARY JUDGMENT; NONINFRINGEMENT (YES); NONINFRINGEMENT (NO); DOCTRINE OF EQUIVALENTS; CLAIM CONSTRUCTION; ORDINARY MEANING