LSI Industries v. ImagePoint and Marketing Displays Inc. (MDI); ImagePoint v. Keyser Industries (aka Florida Plastics International) v. MDI (CAFC 2007-1292, -1293, -1294, -1295)

The patents in suit were: 5,983,543; 6,125,565; 6,298,589; 6,631,576; 6,843,011.

Senior Judge William O. Bertelsman, the district court judge, was self-admittedly overwhelmed.

At the claim construction hearing, the district court judge communicated his lack of familiarity with patent law, J.A. at 282 ("I get a patent case about every three years. In the 27 years, I've only had about five of them. And this seems to be the most complex so far."), and repeatedly requested guidance from counsel on both sides on how to construe the claims, id. at 285, 286, 292. The record reveals that counsel made little effort to simplify the case, but instead presented the district court with a firestorm of issues and arguments, fueled by the voluminous reexamination record and an aggressive use of statements in that record to support multiple contentions that subject matter was disavowed. In the end, counsel for LSI was successful in persuading the district court to adopt constructions for each of the disputed terms that, in most instances, inappropriately imported limitations from the specifications and prosecution histories into the claims. The victory was short-lived, however, and warrants our reemphasizing that an attorney has a duty not only to zealously advocate on behalf of his client, but also to aid the court in the fair and efficient administration of justice. Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1356 (Fed. Cir. 2002) ("Counsel must remember that they are not only advocates for their clients; they are also officers of the court and are expected to assist the court in the administration of justice, particularly in difficult cases involving complex issues of law and technology."). The district court also has an obligation, despite any obfuscation or lack of assistance of counsel, to carefully consider, and independently decide, the issues in the case. Following the claim construction hearing, the district court adopted LSI's proposed findings of fact and conclusions of law verbatim. Compare Claim Construction Order, with J.A. at 2674-2738. While this practice is not prohibited, it is frowned upon because, in situations such as these, it gives the impression that there was insufficient independent evaluation of the parties' arguments and evidence. See Wyler Summit P'ship v. Turner Broad. Sys., Inc., 235 F.3d 1184, 1196 (9th Cir. 2000).

Claim construction is tricky business, the heart of patent litigation, and the major cause of appeal, and subsequent reversal. One of the most common claim construction flaws is reading too much in.

We have frequently noted that it is inappropriate to import limitations from the specification to limit facially broad claims "unless the patentee has demonstrated a clear intention to limit the claim scope using 'words or expressions of manifest exclusion or restriction.'" Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (citation omitted). It is similarly inappropriate to read statements or actions during prosecution to disclaim subject matter encompassed by the literal scope of the claims unless "the alleged disavowing actions or statements made during prosecution [are] both clear and unmistakable." Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325-26 (Fed. Cir. 2003); see also id. at 1325 ("[W]e have thus consistently rejected prosecution statements too vague or ambiguous to qualify as a disavowal of claim scope."). In this case, each of the claim terms at issue was limited, despite facially broad language, based on statements in the specifications or the prosecution histories.

The district court judge pretty much had potluck, limiting some terms properly, others not.

Summary judgment was vacated, the matter remanded. The record was undeveloped in instances, so the CAFC was unable to clean up the whole mess. Costs were awarded to MDI and ImagePoint.

This case is another example of forum shopping, in the worst way.

One of the most telling messes in the pending patent legislation, portending the paucity of wisdom by Congress on the subject, relates to the issue of economizing patent litigation. The proposed venue limits are absurd. What this country needs is a dedicated IP court circuit.