It all begins with Claim Construction
| February 15, 2019
Duncan Parking v. IPS Group
January 31, 2019
Before Lourie, Dyk, and Taranto. Decision by Lourie.
Summary:
The trial judge construed the claims and subsequently granted summary judgment in favor of Defendant Duncan that the accused parking meters do not infringe U.S. Patent No. 8,595,054 owned by Plaintiff IPS. On appeal the CAFC determined that the trial judge had misconstrued the claims, vacated the summary judgment of non-infringement, and remanded the case to the trial judge for reconsideration of the infringement issue in light of the proper claim construction.
Details:
Claim 1 of the ‘054 patent recites:
- A parking meter device that is receivable within a housing base of a single space parking meter, the parking meter device including:
a timer;
a payment facilitating arrangement operable in cooperation with a non-cash payment medium for effecting payment of a monetary amount for a parking period;
a display configured to visually provide a balance remaining of the parking period;
a power management facility that supplies power to the timer, payment facilitating arrangement, and display;
a wireless communications subsystem configured to receive information relating to the non-cash payment medium in respect of the payment facilitating arrangement;
a keypad sensor that receives input comprising manipulation by the user;
a coin slot into which coins are inserted for delivery to the coin sensor and then to a coin receptacle; and
a lower portion and an upper portion;
wherein the keypad sensor operates the parking meter and determines parking time amount for purchase in accordance with the received input from the user;
wherein the display provides the amount of time purchased in response to the received input from the user;
wherein the upper portion of the parking meter device includes a solar panel that charges the power management facility;
wherein the lower portion of the parking meter device is configured to have a shape and dimensions such that the lower portion is receivable within the housing base of the single space parking meter; and
wherein the upper portion of the parking meter device is covered by a cover that is configured to accommodate the upper portion and that is engageable with the housing base of the single space parking meter such that the payment facilitating arrangement is accessible by the user for user manipulation effecting the payment of the monetary amount for the parking period when the lower portion of the parking meter device is received within the housing base and the upper portion is covered by the cover.
10 – parking meter device
34 – housing
36 – cover
41 – window
Duncan’s accused parking meter is shown below.
The trial judge court construed “receivable within” as “capable of being contained inside,” and applied this construction to require that the “entire lower portion” of the infringing product be “receivable within the housing base.” The trial judge granted summary judgment of non-infringement because it found that the keypad of the accused meter extends through an opening in the lower portion of the housing and, as a result, the lower portion of Duncan’s meter is not “receivable within” its housing base.
On appeal IPS argued that the trial judge had
- construed the claim term “receivable within,” in the claim limitation “a lower portion [of the parking meter device] . . . receivable within the housing base” too narrowly, requiring that the entire lower portion of the parking meter device be contained inside the parking meter housing;
- erroneously construed claim 1 to exclude a potential unclaimed “middle portion” of the device between the upper and lower portions; and
- excluded the preferred embodiment from the scope of claim.
On the latter point, IPS explained that the card slot and the coin slot (both parts of the device itself) cannot be part of the upper portion of the device because the upper portion must be covered by the cover panel. But they also cannot be a part of the lower portion of the device because they are not “receivable within” the housing base as per the district court’s claim construction. Instead, they are accessible through openings in the housing. Thus, either the coin slot and card slot comprise a “middle portion” not defined by the ‘054 claims or the ‘054 specification, or the trial judge’s construction of “receivable within” is too narrow.
DPT replied
- that the plain meaning of “within” is “inside,” and IPS choose not to modify the term with the words “generally” or “substantially”;
- that the trial judge’s claim construction does not actually exclude the preferred embodiment because the coin slot is still inside the housing base; while the coin slot of the preferred embodiment is accessible through an opening in the housing, it does not actually protrude through that opening; and
- that prosecution history estoppel bars IPS from asserting that claim 1 includes parking meter devices that are not entirely contained within a housing.
The CAFC touched on familiar issues, commenting on the trial judge’s approach to claim construction and then addressing the parties’ argument.
The Trial Judge’s Approach:
The trial judge construed the term “receivable within” as “capable of being contained inside,” but upon applying the claim construction in its infringement analysis added a requirement that the “entire” lower portion of the device must be contained within the housing, id. at 8, effectively altering the construction to “capable of being contained entirely inside.”
Dictionaries:
A reasonable meaning of the term “receivable within” in the context of the ’054 patent is “capable of being contained inside.” Receive, The New Oxford American Dictionary (2d ed. 2005) (defining “receive” as “to act as a receptacle for” and “receptacle” as “an object or space used to contain something”).
The suffix “-able” implies that the lower portion of the device is capable of being contained within the housing base. But this definition contains no limitation to “completely” or “entirely” contained, nor is there any evidence that persons of skill in the art would understand it to be so limited. Indeed, Duncan touted its accused meter because it “fits within” existing parking meter housings.
The ‘054 Specification:
The only use of the term “receivable” in the ‘054 specification does not imply any limitation to devices “entirely” contained by the housing (“The parking meter device in accordance with the invention may be receivable in a conventional single space parking meter housing, such as that supplied by Duncan Industries, POM or Mackay.”).
The trial judge’s claim construction did indeed exclude the preferred embodiment. The specification defines the coin slot as a part of the lower portion, even though it is not located “within” the housing base but is instead accessible through an opening. Whether the coin slot “protrudes” or not is beside the point; it is a part of the lower portion of the parking meter device but is not “capable of being contained [entirely] within” the housing base as required by the trial judge’s claim construction.
The ‘054 Prosecution History:
Duncan argued that a narrow construction was warranted by the ‘054 prosecution history because IPS had disavowed parking meter devices not fully enclosed by a housing in its response to an office action. Thus Duncan contended that by differentiating the prior art on the basis that it discloses an embodiment exposed to the elements, rather than one enclosed within a housing, IPS disavowed parking meter devices not entirely enclosed within a housing. IPS’s statements fall far short of a claim scope disavowal. IPS distinguished the cited prior art—an actual parking meter, not an insertable device—on the basis that it discloses a “self-contained unit,” as opposed to the claimed device, which is “a retro-fit upgrade to existing parking meters.”
Conclusion:
Because the CAFC agreed with IPS that the district court’s claim construction of “receivable within” was erroneous, it vacated the trial judge’s grant of summary judgment of non-infringement of the ’054 patent and remanded the case to the trial judge for further proceedings.
Takeaways:
The scope of claims is determined on the basis of how they are written, not as how they might have been written.
Dictionaries are almost always important.
A claim construction that excludes a preferred embodiment in the specification from the claim scope is usually wrong.
Disavowal of claim scope in a prosecution history is rare.
