O2 Micro International v. Beyond Innovation Technology, SPI Electronic Company, FSP Group, and Lien Chang Electronic Enterprise (CAFC 2007-1302, -1303, -1304)

The patents in dispute were 6,259,615, 6,396,722, and 6,804,129.

The hubbub over "only if" was in the context of "only if" a feedback signal was above a predetermined threshold. The dispute was whether "only if" allowed exceptions. The defendants wanted no exceptions, so as to skirt infringement. O2 Micro contended that "only if" applied only during "steady state operation." The district court judge had let the controversy simmer before the jury by declaring "only if" to have a "well-understood meaning." The appeals court thought the judge should have settled the matter.

Words of a claim are generally given their ordinary and customary meaning, which is the meaning a term would have to a person of ordinary skill in the art after reviewing the intrinsic record at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). "In some cases, the ordinary meaning of claim language . . . may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314. However, in many cases, the meaning of a claim term as understood by persons of skill in the art is not readily apparent. Id.

A determination that a claim term "needs no construction" or has the "plain and ordinary meaning" may be inadequate when a term has more than one "ordinary" meaning or when reliance on a term's "ordinary" meaning does not resolve the parties' dispute. In this case, for example, the parties agreed that "only if" has a common meaning, but then proceeded to dispute the scope of that claim term, each party providing an argument identifying the alleged circumstances when the requirement specified by the claim term must be satisfied (e.g., at all times or during steady state operation). In this case, the "ordinary" meaning of a term does not resolve the parties' dispute, and claim construction requires the court to determine what claim scope is appropriate in the context of the patents-in-suit. This court has construed other "ordinary" words for these and other related reasons. See, e.g., Nystrom v. TREX Co., 424 F.3d 1136, 1143 (Fed. Cir. 2005) (construing "board" in light of intrinsic record); Unitherm Food Sys., Inc. v. Swift-Eckrich, Inc., 375 F.3d 1341, 1350 (Fed. Cir. 2004) (construing "golden brown" even though colors "are commonly used terms with well-accepted plain definitions that rarely need construction"), rev'd on other grounds, 546 U.S. 394 (2006); Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299 (Fed. Cir. 1999) (construing "cover," "included," "attachment," and "removable").

We, however, recognize that district courts are not (and should not be) required to construe every limitation present in a patent's asserted claims. See, e.g., Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001) (deciding that disputed issue was the proper application of a claim term to an accused process rather the scope of the term); U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (Claim construction "is not an obligatory exercise in redundancy."). Rather, "[c]laim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement." U.S. Surgical, 103 F.3d at 1568. When the parties present a fundamental dispute regarding the scope of a claim term, it is the court's duty to resolve it.

Figuring "the district court is in the best position to determine the proper construction of this claim term in the first instance, we remand for further proceedings consistent with this opinion."

In a footnote, the CAFC chided the litigants for shoddy work.

We note, in passing, that the parties' claim construction arguments are fraught with problems. First, an inventor's self-serving statements are rarely relevant to the proper construction of a claim term. Bell & Howell Document Mgmt. Prods v. Altek Sys., 132 F.3d 701, 706 (Fed. Cir. 1997). Second, the parties' claim construction arguments appear to contain no support from the intrinsic record. See Phillips, 415 F.3d at 1314-19 (emphasizing the importance of the intrinsic record in claim construction). These deficiencies support the rationale underlying the rule that the court, and not the jury, should resolve claim construction disputes. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-89 (1996) (explaining why judges "are the better suited to find the acquired meaning of patent terms").

The district court had allowed doctrine of equivalents (DOE) application. "Only if" had been added as a claim amendment during prosecution to overcome prior art. The CAFC agreed with the defendants "that prosecution history estoppel prevents application of the doctrine of equivalents for the "only if" limitation."

The parties agree that the "only if" limitation was added to the claims by a "narrowing amendment . . . made for a substantial reason relating to patentability." See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1367 (Fed. Cir. 2003) (en banc). Thus, the Festo presumption applies to this limitation, and, in order to avail itself of the doctrine of equivalents, O2 Micro must rebut the "presumption that the patentee has surrendered all territory between the original claim limitation and the amended claim limitation." Id.; accord Festo, 535 U.S. at 740 ("[T]he patentee should bear the burden of showing that the amendment does not surrender the particular equivalent in question."). The Supreme Court provided three vehicles6 through which a plaintiff may do so. Festo, 344 F.3d at 1368. Neither party has argued either that the equivalent was unforeseeable or that there was "some other reason" why the patentee could not have described the alleged equivalent. See id. Accordingly, we turn directly to the issue of whether the rationale behind the narrowing amendment was merely tangential (i.e., peripheral, or not directly relevant) to the alleged equivalent. See id.

"[T]he inquiry into whether a patentee can rebut the Festo presumption under the 'tangential' criterion focuses on the patentee's objectively apparent reason for the narrowing amendment." Id. at 1369 (emphasis added). In order to maintain the public notice function of a patent, "that reason should be discernible from the prosecution history record." Id.; see id. at 1371-72 (holding that amendment was not tangential to accused equivalent because the prosecution history reveals no reason for the amendment); Biagro W. Sales, Inc. v. Grow More, Inc., 423 F.3d 1296, 1306 (Fed. Cir. 2005) ("[W]hether the patentee has overcome the presumption on this ground is determined by the court on the basis of the public record."). "[I]f the patentee fails to rebut the Festo presumption, then prosecution history estoppel bars the patentee from relying on the doctrine of equivalents for the accused element." Festo, 344 F.3d at 1367.

The district court had found "only if" tangential, but had failed to explain its rationale, leaving the CAFC to tease it out that "only if" had some meat on its bones: a narrowing to overcome prior art. DOE DOA.

Jury verdict, infringement judgment, and injunction, all vacated. Remanded.