Lucent and Multimedia Patent Trust v. Gateway, Dell, and Microsoft (CAFC 2007-1334, -1337, -1376)

'131 missed by summary judgment of non-infringement. '131's dispute revolved around the construction of a claimed "terminal device."

The district court came up with a narrow construction.

After reviewing the specification and the prosecution history, the court then refined its definition of "terminal device" to "exclude[] arrangements where the host processor controls the positioning of objects on the display of the terminal device." Id. The court found that, in the accused devices, the host processors (web servers) participate in determining the location of objects on the display of the terminal device (computer).

Lucent avers... that the district court erred in further defining "terminal device" to be a computing device that "manages its associated display itself" and to "exclude[] arrangements where the host processor controls the positioning of objects on the display of the terminal device."

The CAFC noted that the claims lacked definition of a terminal. Bad claims drafting is the root of all claim construction evil. The CAFC found no support for the district court construction in the abstract or summary. The detailed description disclosed a germane smartphone embodiment.

We agree with Lucent that the Detailed Description indicates a role for the host processor in the control of how and where objects are displayed on the terminal device.

Accordingly, the definition ascribed by the district court to the term "terminal device" is in conflict with the teachings of the Detailed Description.

Finally, in further support of the district court's claim construction, the defendants argue that the prosecution history contains a clear disavowal of control by the host processor over the location of objects on the terminal display.

"[A] clear and unmistakable disavowal of scope during prosecution" may affect the construction of a claim term. Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006); Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1343 (Fed Cir. 2001). We agree with Lucent that the cited prosecution history does not contain a clear disavowal of any control by the host processor over object location.

'131 vacated and remanded in light of the new construction of "terminal device."

Judge Lourie dissented on '131, willing to have affirmed the district court construction.

It is disingenuous for the inventors to say now that allowing the host processor to specify some limited relative positioning was an important aspect of their invention that they did not intend to surrender when they made absolutely no effort to provide such clarity in the prosecution of their patent.

The fate of '954 hung on the phrase "each successive iteration including the steps of."

The district court construed the phrase "each successive iteration including the steps of" to require that "all of the steps following this clause [steps 1-5] must each be performed in forming each pulse." Lucent Techs., Inc. v. Gateway, Inc., Nos. 02-CV-2060, 03-CV-0699, 03-CV-1108, slip op. at 7 (S.D. Cal. Apr. 15, 2004). Lucent argues that the court erred in its construction. According to Lucent, only step 5 needs to be performed in forming each pulse, whereas steps 1-4 may be performed only once per frame.

Again, a cut of foul claim drafting wafts. Lucent tried to wave the stink away. But the malignance lingered.

We begin with the claim language itself. Lucent argues that the term "including" need not be interpreted to mean "comprising" because dictionary definitions suggest that it may also mean "considering" or "involving as a factor." Therefore, according to Lucent, a reasonable interpretation of the claim does not require that all of steps 1-5 be performed in each pulse-producing iteration. Rather, it contends that the phrase "including the steps of" may be read to mean that performance of steps 1-4 can occur outside the pulse loop provided that the results of those steps are used in the calculation of pulses in step 5.

The defendants, on the other hand, argue that the ordinary and plain meaning of the claim supports the district court's claim construction.

We agree with the defendants that the claim language clearly supports the district court's claim construction requiring performance of all of steps 1-5 during each pulse-forming iteration.

This court has consistently interpreted "including" and "comprising" to have the same meaning, namely, that the listed elements (i.e., method steps) are essential but other elements may be added. Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1344-45 (Fed. Cir. 2003); see also Cias, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1361 (Fed. Cir. 2007). Because the claims of the patent "provide substantial guidance as to the meaning of . . . claim terms," Phillips, 415 F.3d at 1314, we find that, here, the language of the claims strongly supports the district court's claim construction.

This court has repeatedly held that courts may not redraft claims to cure a drafting error made by the patentee, whether to make them operable or to sustain their validity. Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373 (Fed. Cir. 2004); Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002); Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999); Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir. 1995); Hoganas v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993). To do so "would unduly interfere with the function of claims in putting competitors on notice of the scope of the claimed invention." Hoganas, 9 F.3d at 951. While it is true that we may construe claims to sustain their validity when the claims are amenable to more than one reasonable construction; when the claims are susceptible to only one reasonable construction, we will construe the claims as the patentee drafted them. Process Control, 190 F.3d at 1356-57; see also Elekta Instrument S.A. v. O.U.R. Scientific Int'l, Inc., 214 F.3d 1302, 1309 (Fed. Cir. 2000) ("[H]aving concluded that the amended claim is susceptible of only one reasonable construction, we cannot construe the claim differently from its plain meaning in order to preserve its validity . . . ."). Indeed, we have limited application of the maxim that claims should be construed to preserve their validity to situations in which we conclude, after reviewing all the intrinsic evidence, that the claim language is ambiguous. Phillips, 415 F.3d at 1327. However, where we conclude that the claim language is unambiguous, we have construed the claims to exclude all disclosed embodiments. Chef Am., 358 F.3d at 1373-74; Elekta Instrument, 214 F.3d at 1308-09.

The construction by the district court is also supported by the prosecution history.

There was even a little Festo in the festivities.

We agree with the defendants that the district court did not err in holding that infringement under the doctrine of equivalents is barred by prosecution history estoppel. The applicant amended the claims in response to a rejection during prosecution to require performance of steps 1-5 during each pulse-forming iteration. Narrowing the claims in response to a rejection during prosecution creates a presumption that the applicant surrendered the territory between the original claims and the amended claims. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 740 (2002).

In determining whether the patentee can rebut the Festo presumption of surrender under the tangential exception, the focus is on the "patentee's objectively apparent reason for the narrowing amendment," and the inquiry is "whether the reason for the narrowing amendment is peripheral, or not directly relevant, to the alleged equivalent." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1369 (Fed. Cir. 2003) (en banc)... Accordingly, we hold that the district court did not err in holding that Lucent was barred by prosecution history estoppel from asserting infringement under the doctrine of equivalents.

'954 was a goner.