Computer Docking Station v. Dell and Gateway and Toshiba (CAFC 2007-1169, -1316)

'645 disclosed a portable brick computer, without display or keyboard.

The specification explains that a keyboard and visual display are "options available with the system." Id. col.2 ll.8-11. Figures 13-15 illustrate these options.

Prosecution estoppel to overcome prior art had the claims focus on being brick computer with redundant connectors, not at all what CDSC tried to assert against the defendants.

During prosecution, the examiner rejected several claims as anticipated and obvious in view of U.S. Patent No. 5,030,128 to Herron et al. ('128 patent or Herron). Herron discloses a laptop computer and a docking module that facilitates operation on a desktop. Herron connects each peripheral to the docking module. '128 patent col.2 ll.3-38. Attempting to distinguish Herron, the applicants expressly defined their invention in different terms. In addition, the applicants amended the claims. After an interview, the examiner found that the amended "claims directed to redundant connectors (one set plural & one a single connector) would be allowable."

Based on the claim constructions excluding laptops with built-in displays or keyboards, and requiring a "single connector for making all connections from the microprocessor to... computer peripheral devices," "CDSC itself sought entry of final judgment of non-infringement, conceding that none of the accused products meets the court's construction of the portable computer limitation."

Still, CDSC persisted to appeal, giving the CAFC a chance to spin some case law on claim scope in light of the specification and prosecution history.

The words of the claims define the scope of the patented invention. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). "It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history." Id. Claim terms are generally given their ordinary and customary meaning, which is "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (citations omitted). However, the person of ordinary skill is deemed to read the claim terms in the context of the entire patent, including the specification and prosecution history. Id.

Occasionally specification explanations may lead one of ordinary skill to interpret a claim term more narrowly than its plain meaning suggests. Nonetheless, this court will not countenance the importation of claim limitations from a few specification statements or figures into the claims, see id. at 1323 (warning against importing limitations from specification and noting that "although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments"), particularly if those specification extracts describe only embodiments of a broader claimed invention, see, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1302-03 (Fed. Cir. 2007) (examples of translation in specification involving change in protocol from higher to lower level did not support importing a high-to-low limitation into claims); Liquid Dynamics Corp. v. Vaughan Co., 355 F.3d 1361, 1366, 1369 (Fed. Cir. 2004) (subset of figures from specification depicting perfectly helical flow of slurry in a slurry tank did not limit claim, which required "substantial[ly] helical" flow, to perfectly helical flow). By the same token, "the specification 'is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'" Phillips, 415 F.3d at 1315 (quoting Vitronics, 90 F.3d at 1582). The specification may show that "the patentee has disclaimed subject matter or has otherwise limited the scope of the claims." Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1343 (Fed. Cir. 2001). For example, repeated and definitive remarks in the written description could restrict a claim limitation to a particular structure. See Watts v. XL Sys., 232 F.3d 877, 882 (Fed. Cir. 2000).

Statements made during prosecution may also affect the scope of the claims. Rexnord, 274 F.3d at 1343. Specifically, "a patentee may limit the meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution." Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006). A patentee could do so, for example, by clearly characterizing the invention in a way to try to overcome rejections based on prior art. See, e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349 (Fed. Cir. 2004) (limiting the term "transmitting" to require direct transmission over telephone line because the patentee stated during prosecution that the invention transmits over a standard telephone line, thus disclaiming transmission over a packet-switched network); Alloc v. Int'l Trade Comm'n, 342 F.3d 1361, 1372 (Fed. Cir. 2003) (finding the patentee expressly disavowed floor paneling systems without "play" because the applicant cited the feature during prosecution to overcome prior art); Bell Atl. Network Servs. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1273 (Fed. Cir. 2001) (limiting operation of the "transceiver" to the three stated modes because of clearly limiting statements made by the patentee to try to overcome a prior art rejection). The doctrine of prosecution disclaimer "protects the public's reliance on definitive statements made during prosecution" by "precluding patentees from recapturing through claim interpretation specific meanings [clearly and unmistakably] disclaimed during prosecution." Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323-24 (Fed. Cir. 2003) (citing in part Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 220-21 (1940)) (bracketed material added). Claims should not be construed "one way in order to obtain their allowance and in a different way against accused infringers." Chimie v. PPG Indus., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (citation omitted).

Prosecution disclaimer does not apply to an ambiguous disavowal. See N. Telecom Ltd. v. Samsung Elec. Co., 215 F.3d 1281, 1293-95 (Fed. Cir. 2000) (holding that prosecution disclaimer did not "support the judicial narrowing of a clear claim term" because the inventors' statements were amenable to multiple reasonable interpretations); Pall Corp. v. PTI Techs. Inc., 259 F.3d 1383, 1393-94 (Fed. Cir. 2001) (remanding because the scope of disclaimer over the prior art reference was ambiguous), vacated on other grounds, 535 U.S. 1109 (2002). Prosecution disclaimer does not apply, for example, if the applicant simply describes features of the prior art and does not distinguish the claimed invention based on those features. See Eolas Techs., Inc. v. Microsoft Corp., 399 F.3d 1325, 1337 (Fed. Cir. 2005). And if the specification expressly defines a claim term and "remarks made to distinguish claims from the prior art are broader than necessary to distinguish the prior art, the full breadth of the remark is not 'a clear and unambiguous disavowal of claim scope as required to depart from the meaning of the term provided in the written description.'" 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1373 (Fed. Cir. 2003) (quoting Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 833 (Fed. Cir. 2003)).

A careful reading of the prosecution history leaves little doubt that the distinctions between the invention and Herron are more extensive than only the single connector limitation. This court observes that the applicants distinguished their invention from the prior art in multiple ways. Nonetheless a disavowal, if clear and unambiguous, can lie in a single distinction among many. See Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007); Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1362 (Fed. Cir. 2005) ("[W]e have not allowed [patentees] to assert that claims should be interpreted as if they had surrendered only what they had to."). Moreover, the examiner's citation of the single connection limitation in the reasons for allowability does not erase the applicants' clear disavowal of laptops. Cf. Laitram Corp. v. Morehouse Indus., Inc., 143 F.3d 1456, 1462 (Fed. Cir. 1998) (finding prosecution statements relevant to claim construction although the examiner did not rely on them). Of course, a multitude of distinctions may serve to make any single distinction in the group less clear and unmistakable as the point of distinction over prior art and as a critical defining point for the invention as a whole.

Moreover, the prosecution history must always receive consideration in context. For instance, in 3M Innovative Props., 350 F.3d at 1373, this court held that the patentee had "expressly defined a term in the specification," and that the definition would control over broad remarks during prosecution. In this case, however, the specification of the '645 patent does not provide an express definition of "portable computer" that would override or make the distinctions in the prosecution history ambiguous.

A preamble may be limiting.

As a threshold matter, neither party disputes that the terms "portable computer" and "portable computer microprocessing system," as used in the preambles of the asserted claims, limit their scope. "In considering whether a preamble limits a claim, the preamble is analyzed to ascertain whether it states a necessary and defining aspect of the invention, or is simply an introduction to the general field of the claim." On Demand Mach. Corp. v. Ingram Indus., 442 F.3d 1331, 1343 (Fed. Cir. 2006). The terms at issue here clearly recite a necessary and defining aspect of the invention, specifically its portability. The written description and applicants' statements during prosecution emphasize this feature of the invention, yet this limitation does not appear in the body of the claims. As a result, this court finds that the terms "portable computer" and "portable computer microprocessing system" limit the scope of the asserted claims.

The claims do not recite the term "microcomputer." This point, however, does not alone expand the claims beyond the microcomputer embodiment described in the specification. To the contrary, a person of ordinary skill is deemed to read the claim terms in the context of the entire patent, including the specification and prosecution history. Phillips, 415 F.3d at 1313. Thus, the specification does not suggest that the claimed invention encompasses laptops. Rather the written description emphasizes differences between the claimed invention and laptops. At a minimum, the specification does not cut against the applicants' clear disavowal of laptop computers in the June 15, 1992 Response.

As noted above, the "totality of the prosecution history" informs the disavowal inquiry. Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1326 (Fed. Cir. 2002). Here the sum of the patentees' statements during prosecution would lead a competitor to believe that the patentee had disavowed coverage of laptops. Cf. Seachange Int'l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1372 (Fed. Cir. 2005) (prosecution disclaimer protects the right of competitors to rely on representations made by the patentee during prosecution to guide their conduct). CDSC cannot recapture claim scope disavowed during prosecution to prove infringement. See Chimie, 402 F.3d at 1384. The trial court correctly determined that the portable computer limitation requires "a computer without a built-in display or keyboard that is capable of being moved or carried about."

The defendants felt put upon for CDSC pushing junk, pressing for attorneys fees. The courts couldn't take it that far. Each party bore its own costs.

This court detects no clear error in the district court's finding that this case is not exceptional. With respect to CDSC's decision to file suit, the district court found that the applicants' disavowal of laptops "did not seem self-evident at the beginning of the claim construction analysis." Fees Order, 2007 U.S. Dist. LEXIS 24045, at *12. The district court also found that CDSC "engaged in a serious effort to evaluate the likelihood of success on its patent claims." Id. at *13... Although this court agrees with the district court that the applicants clearly disavowed laptops in the prosecution history, based on the evidence of pre-filing activities in the record, the district court's finding that the action was not objectively baseless was not clearly erroneous. See Serio, 459 F.3d at 1322; see also Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 974 (Fed. Cir. 2006) (affirming denial of attorney fees despite the patentee's knowledge that the claims did not cover salt forms of copolymer and that the accused infringer's products used a salt form of polymer).

The bottom line remains that CDSC was pushing a junk patent; they should have known better.

Hal Wegner's perspective -

Today in Computer Docking Station Corp. v. Dell, Inc., __ F.3d __ (Fed. Cir. 2008)(Rader, J.), the court narrowed the scope of protection based upon prosecution disclaimer in an otherwise routine affirmance of a trial court finding of noninfringement.

Standard Oil v. American Cyanamid, Birth of Prosecution Disclaimer: Out of the blue, and without benefit of any citation of Supreme Court or other precedent, a careless comment was included in an early Federal Circuit case that "the prosecution history ... limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance." Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452 (Fed.Cir.1985)(Rich, J.).

Now, more than twenty years later, Standard Oil is frequently cited and quoted. Computer Docking says nothing new. The result of Standard Oil is to achieve a narrow reading of a claim not possible under pre-Federal Circuit case law.

A Fair Result at the Price of a Formalistic Inquiry: While the result of Standard Oil and Computer Docking may be fair and equitable, it comes with a price:

To interpret the scope of claims under Standard Oil and the literally dozens of following cases including Computer Docking, it is necessary to parse the wording of an often thick prosecution history.

As technology gets more complex, how is a district court judge without technical background or experience and a political science and history major as his two clerks to fathom whether there is or is not a prosecution disclaimer? It is no wonder that there is such a high reversal rate for claim construction rulings, given the formalistic doctrines that have evolved over the past generation.