April 10, 2008
Down to History
Luma sued Stryker and Karl Storz Endoscopy for infringing its medical imaging patent 5,740,801. The claim construction went to a special master, who construed the contested terms "graphical objects" and "still frame buffer." Summary judgment motions for noninfringement and invalidity followed and were granted. Luma appealed. The CAFC delved into the prosecution history to get to the bottom line.
Luma v. Stryker and Karl Storz Endoscopy (KSEA) (CAFC 2007-1353, -1378) non-precedential
We conclude that the district court correctly construed the limitation "graphical objects" to exclude text alone. We begin by considering the language of the claims because "the claims themselves provide substantial guidance as to the meaning of particular claim terms." Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (citations omitted).
We turn next to the specification in order to determine if it provides a clearer indication of the scope of "graphical objects." "[C]laims must be read in view of the specification, of which they are a part." Id. at 1315 (quotations and citation omitted). We find the specification to be indeterminate as to whether one of ordinary skill in the art would understand "graphical objects" to include text alone.
Turning to the prosecution history, we find information that is more conclusive that would influence one of ordinary skill in the art's understanding of "graphical objects." "[A] court should also consider the patent's prosecution history, if it is in evidence. . . . Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent." Philips, 313 F.3d at 1318.
Claim amendment led the CAFC to its conclusion.
Given that claim 22 that was limited to text was rejected as anticipated while claim 24 that was limited to graphical objects was not, the examiner clearly understood graphical objects not to include text alone. The patentee acquiesced in that understanding by amending his claims in the manner suggested.
Luma's protestation about "genuine issues of fact" was dismissed.
On the "still frame buffer" term, Luma wanted to read more into the term than it deserved, in an effort to avert prior art anticipation. That didn't work, failing support in the specification for the proposed construction.
KSEA wanted its attorneys fees paid. The CAFC slapped KSEA upside the head.
KSEA's arguments amount to a disagreement with the district court about the objective reasonableness of Luma's litigation positions and the vexatiousness of its litigation conduct. Such differences of opinion without sufficient underlying evidence fall far short of demonstrating either clear error in a finding requiring clear and convincing evidence in the first instance or an abuse of discretion in the second instance.
Hal Wegner is no fan of prosecution history probing for claim construction.
Keeping the door open to the prosecution history for claim construction should be unnecessary, as seen from the much more predictable claim construction case law of Germany and the U.K. where prosecution history is proscribed as a claim construction tool.
Prosecution history as a claim construction tool represents perhaps the single most important reason for the problems that the modern era has with claim construction and contributes to the uncertainties of patent law today. The panel, here, was merely following en banc precedent and in that sense cannot be faulted.
Patent Hawk disagrees. Any reference providing contextual insight should be of use, given priority of relevance to disposition. The CAFC largely got it right with Phillips v. AWH.
Posted by Patent Hawk at April 10, 2008 5:52 PM | Claim Construction
Hal is being a tad disingenuous. It is not as if nobody in DE or GB thinks of looking at the file history. Both sides give it intense scrutiny. Goes without saying. Both sides use it in litigation, to the full extent they can. Goes without saying. The court strives for the "correct" claim interpretation. Goes without saying. But we're trying to find out what a notional skilled reader of the issued patent thinks the inventor was using the language of the published patent to mean. For that task, the file wrapper is irrelevant. Hal Wegner has some experience, of how these things work in Europe. Then again, in Holland....................
Posted by: MaxDrei at April 10, 2008 10:44 PM