Darrin Auito | May 9, 2014
GE Lighting Solutions, LLC v. AgiLight, Inc.
May 2, 2014
Panel: Rader (Chief Judge), Moore (Author), and Reyna
Appeal from U.S. District Court for the Northern District of Ohio.
GE Lighting Solutions, LLC (GE) appealed the district court’s grant of summary judgment that AgiLight, Inc.’s (AgiLight) accused products and processes do not infringe asserted claims of GE’s U.S. Patent Nos. 7,160,140, 7,520,771, 7,832,896, and 7,633,055. The issues mostly involved claim construction. After resolving the claim construction issues, the CAFC reversed and remanded the grant of summary judgment with regard to the ’140, ’771 and ’896 patents and affirmed the grant of summary judgment with regard to the ’055 patent.
Re: the ‘140 and ‘771 patents
“After claim construction, the parties stipulated to non-infringement of the ’140 and ’771 patents on the grounds that AgiLight’s products do not include an “IDC connector” (Insulation Displacement Connector) as construed by the court.”
On appeal, the CAFC, reviewing claim construction de novo, held that the district court incorrectly construed “IDC connector” as a “more specialized IDC connector,” e.g., IDC connector required “(1) four electrical terminals; (2) a two-part housing that snaps together to enclose three insulated conductors; (3) the snapping together allows the terminals to cut or pierce through the conductor’s insulation while preventing the conductor from moving out of the housing; and (4) a conductive connection between the terminal and the insulated conductor.” The CAFC proceeded to construe the term in accordance with the framework set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
1. The plain meaning of IDC connector is “a connector that displaces insulation surrounding an insulated conductor to make electrical contact with the conductor;” and
2. “nothing in the intrinsic record requires a departure from this plain and ordinary meaning.
Thus, the CAFC held that the district court erred by importing the structural limitations of the preferred embodiment and the structural limitations of the dependent claims into the term IDC connector.
Error to import structural limitations of the preferred embodiment
The CAFC explained that that the specification and prosecution history only compel departure from the plain meaning in two instances: (1) lexicography and (2) disavowal. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The CAFC concluded that there is no lexicography or disavowal here because (1) in order to act as its own lexicographer, a patentee must (a) clearly set forth a definition of the disputed claim term, and (b) clearly express an intent to define the term; and (2) in order to disavow, the specification or prosecution history must make clear that the invention does not include a particular feature. SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001).
Likewise, the CAFC explained that a patent that discloses only one embodiment is not necessarily limited to that embodiment. Saunders Grp., Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1332 (Fed. Cir. 2007). In this case, although the patent discloses a single embodiment of an IDC connector in Figure 6, the inventors did not disavow or disclaim the plain meaning of IDC connector or otherwise limit it to that single embodiment. The CAFC refused to read limitations from Fig. 6 into the claim construction, because “it is improper to read limitations from a preferred embodiment described in the specification—even if it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
Next, the CAFC acknowledged that there are cases where it has found disavowal or disclaimer based on clear and unmistakable statements by the patentee that limit the claims, but no such statements were made in the disputed patents. The statements made in other cases include:
- The specification recites “the present invention includes …” or “the present invention is …” or “all embodiments of the present invention are …” See, e.g., Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1316–19 (Fed. Cir. 2006); SciMed Life Sys., Inc., 242 F.3d at 1343–44.
- The specification recites that for “successful manufacture” a particular step was “require[d].” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1367 (Fed. Cir. 2007).
- The specification recites that the invention operated by “pushing (as opposed to pulling) forces,” and then characterized the “pushing forces” as “an important feature of the present invention.” SafeTCare Mfg., Inc. v. Tele-Made, Inc., 497 F.3d 1262, 1269–70 (Fed. Cir. 2007).
- The patent repeatedly disparaged an embodiment as “antiquated,” having “inherent inadequacies,” and then detailed the “deficiencies [that] make it difficult” to use. Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361, 1372 (Fed. Cir. 2012).
- The specification described that feature as a “very important feature . . . in an aspect of the present invention,” and disparaged alternatives to that feature. Inpro II Licensing, S.A.R.L. v. T- Mobile USA Inc., 450 F.3d 1350, 1354–55 (Fed. Cir. 2008).
Error to import structural limitations of the dependent claims
Next, the CAFC explained that the “doctrine of claim differentiation” creates a rebuttable presumption that dependent claim limitations are not included in the independent claim. Liebel-Flarsheim, 358 F.3d at 909.
The CAFC held that the district court also erred by importing limitations from the dependent claims of the ’140 patent into the construction of IDC connector, because nothing in the specification or prosecution history rebuts the presumption of claim differentiation.
Re: the ‘896 patent
The CAFC grappled with the questions of whether “substantially ellipsoidal inner profile” requires the entire inner profile to be substantially ellipsoidal or merely a portion of the inner profile to be substantially ellipsoidal. The CAFC was quick to point out that the former would exclude the only disclosed embodiment.
The CAFC acknowledged that this is a “close case” and that neither the claim language, “the optical element having a . . . substantially ellipsoidal inner profile,” nor the stipulated construction, “an inner three-dimensional surface . . .” directly addresses this issue.
The CAFC remarked: “We normally do not construe claims in a manner that would exclude the preferred embodiment, especially where it is the only disclosed embodiment. See MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007). In particular, “where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence on the contrary.” Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008).
Therefore, because no evidence exists that would require “substantially ellipsoidal inner profile” to be construed in a manner that would exclude the Figure 7 embodiment, the CAFC held that the district court erred when it required the entire inner profile to be substantially ellipsoidal.
J. Reyna dissented from this portion of the majority opinion, specifically the interpretation of the terms “substantially ellipsoidal inner profile” and “generally spherical outer profile.” J. Reyna believed the majority construction to be “an improper view of the scope of the claims because it is inconsistent with the context provided by the claim language, the plain meaning of the term “profile,” and GE’s disclaimer during prosecution.”
Re: the ‘055 patent
Similar to the ‘896 patent, the CAFC had to construe a term within a stipulated claim construction. The district court construed “annular gasket” to be “a three-dimensional deformable material used to make a pressure-tight joint between stationary parts, with an opening in its center capable of sealing off its center area when bonded statically between stationary parts on its top and bottom.” Claim Construction Order at 8 (emphasis added).
The CAFC agreed with the district court’s conclusion that AgiLight’s product does not infringe because the inside of a concave surface on its dome-shaped lens cannot be an “opening” in the context of its construction of “annular gasket.” Id. at 8.
The CAFC remarked that while the volume inside a dome may be considered an “opening” in a general sense, it is not an opening in the context of an “annular gasket,” which the CAFC argued is consistent with plain and ordinary meaning of a “gasket” and with the annular gaskets disclosed in the ’055 patent.
The CAFC affirmed the grant of summary judgment with regard to the ’055 patent and reversed and remanded the grant of summary judgment with regard to the ’140, ’771 and ’896 patents.
This case is yet another reminder that the default for construing a claim term is the plain and ordinary meaning as understood by a person having ordinary skill in the art at the time of the invention. The plain meaning must conform to the invention as set forth in the specification. Absent special circumstances, such as a lexicographic definition or a clear and unmistakable disavowal of claim scope (which may be implied or unintentional), the plain meaning is not limited by the specification or prosecution history.
Consequently, you should consider the examples of disavowal-like language discussed above when preparing your specification in order to avoid unintentionally narrowing the scope of your claimed invention.