'079 claims interfacing/docking personal digital assistants (PDA) modules. In court...

T-Mobile counterclaimed for a declaration of noninfringement and invalidity. The district court held a Markman hearing and construed all eight disputed terms of the '079 claims. Inpro stipulated that it could not prevail on either direct or indirect infringement of any of the asserted claims, either literally or under the doctrine of equivalents, on the district court's construction of some of the claim terms. The district court entered final judgment of noninfringement in favor of T-Mobile with respect to all of the patent claims in Inpro's complaint. The court dismissed without prejudice T-Mobile's counterclaim of invalidity of the '079 patent, granting T-Mobile permission to reinstate the counterclaim in the event the case were to be remanded to the district court on this appeal.

The parties appeal the construction of three of the eight terms construed by the district court: "host interface," "docking with the host computer," and "digital assistant module." The parties agree that if the district court correctly construed "host interface" or "docking with the host computer," infringement does not lie. The parties debate whether the district court's construction of "digital assistant module" is so broad as to render the patent subject to invalidity.

Claim Construction

The problem for Inpro was that it had only disclosed a single type of host interface, a direct parallel bus interface, even disparaging another type (serial) in the background of the specification. That naturally lends towards narrow claim scope. And the prosecution history concurred.

The boundaries of patented inventions are set forth in the claims, construed in light of the description in the specification, as well as by the prior art and the prosecution history. Phillips v. AWH Corp. 415 F.3d 1303 (Fed. Cir. 2005) (en banc)... The district court correctly observed that the only host interface described in the specification is a direct parallel bus interface, and that the specification emphasizes the importance of a parallel connection in solving the problems of the previously used serial connection. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001) ("Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.") Claims are construed in light of the specification, of which they are a part. See Phillips, 415 F.3d at 1315-16. Although claims need not be limited to the preferred embodiment when the invention is more broadly described, "neither do the claims enlarge what is patented beyond what the inventor has described as the invention." Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001).

As Inpro's spec read:

A very important feature of the ìPDA in an aspect of the present invention is a direct parallel bus interface with a connector allowing the unit to be docked by plugging it into a docking bay in a host unit.

Dennis Crouch's commentary: "This case reinforces the trend of intentional obscurity in patent drafting. Based on this case and others, patent drafters would do well to ensure that nothing in the patent document is “important,” “essential,” “required,” or the like. Those terms do help the patent readers better understand your preferred embodiment, but in court they will only limit your claim scope." Dennis has a point, up to a point.

Every claimed invention has lynchpin features/limitations. Leaving a claim term open to broad interpretation can backfire. If an inventor intended claim term 'x' to include 'a', excluding 'b', but wasn't sufficiently explicit in the disclosure, a court could construe 'x' to include 'a' & 'b'. That could kill the patent if 'b' is in the prior art. Better to be clear about what's essential and what's not, and be up front about crucial distinctions. If something has optional embodiments, mention a few, so as to help ensure getting a broad interpretation on a claim term. But, if an inventor thinks 'x' = 'a', not 'b', being candid is the best policy. Know what's essential and what's not. Lay out alternative embodiments whenever appropriate. Compare, but don't disparage, unless you intend to exclude. And, most important, check that the critical claim terms have the coverage you want in the specification; if not, use a different term, and describe its intended scope within the claim.

The simple fact is that Inpro should never have taken this to court. Inpro should have seen this narrow claim construction coming; the evidence is overwhelming. This is a sorry instance of "the best day for the plaintiff is the day they file."

Excluding Expert Testimony

The district court wasn't interested in hearing an expert witness regarding claim construction, and the CAFC agreed that was okay.

This court has recognized that extrinsic evidence and expert testimony can help to educate the court concerning the invention and the knowledge of persons of skill in the field of the invention, see Phillips, 415 F.3d at 1319, even as we have cautioned against undue reliance on experts. The decision as to the need for and use of experts is within the sound discretion of the district court. See Key Pharm. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998) ("trial courts have broad discretion in this regard"). We discern no abuse of discretion in the court's decision to exclude expert testimony on the issues presented in the Markman hearing.

Infringement

We have confirmed the district court's construction of "host interface" as requiring direct parallel connection between the PDA and the host computer. Upon Inpro's stipulation that such a host interface is absent from the accused devices, the judgment of noninfringement is affirmed. In view of our affirmance on this ground, we need not reach the other disputed claim terms.

A Job Left Undone

Judge Newman had a very good dissenting viewpoint: the majority opinion quit too soon; it should have completed analysis of the disputed terms. As it is, Inpro doesn't know whether its patent is strong enough to stand up again in court.

[W]hen a cloud of uncertainty is placed on a patent's claims, "the patentee may have lost the practical value of a patent that should be enforceable against different infringing devices." Id. at 102. Such may be the case here, for our refusal to review the district court's possibly overly broad construction of "digital assistant module" may place a cloud of uncertainty on the validity of the '079 patent. See N. Am. Vaccine, 7 F.3d at 1579 (the proceedings should not leave "a cloud on the patent"). There is a "strong public interest" in the finality of issues that may be relevant to patent validity. Cardinal Chemical, 508 U.S. at 100; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 330 (1945) (courts should inquire "fully" into the validity of a patent, for as between infringement and validity, "validity has the greater public importance"). My colleagues' refusal to review the disputed claim terms imposes "ongoing burdens on competitors," Cardinal Chemical, 508 U.S. at 101, as well as on the patentee. See Carroll Touch, Inc. v. Electro Mech. Sys., 15 F.3d 1573, 1579 (Fed. Cir. 1993) (reviewing validity issue "so that neither Carroll Touch nor the public are left with unnecessary uncertainty concerning the validity of the claims at issue").

It is not optimum appellate policy to require the patentee to endure another Markman proceeding, "past the entirety of discovery, past the entire trial on the merits, past post trial motions, past briefing and argument to the Federal Circuit -- indeed past every step in the entire course of federal litigation, except Supreme Court review" -- before obtaining appellate review of the disputed questions that are now presented for our review.