May 22, 2008
Eastern Kentucky Senior Judge William O. Bertelsman needed some help with claim construction. His first stab was appealed and remanded, the CAFC unable to douse the conflagration owing to an undeveloped record. On second appeal, the CAFC again mops up and remands.
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)
A petition for panel rehearing was granted for construing a term, the appeals court not satisfied with its own handicraft. Tough business, claim construction.
The sound of one pissed CAFC panel -
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).
11 claims were disputed on appeal. On the hash made of the claims -
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. We have carefully reviewed the specifications and prosecution histories of the patents-in-suit and conclude that, for the "opposed retention members," "display member," and "removably secured" terms, the district court was correct to limit the claims because the statements at issue clearly and unmistakably disavowed claim scope by distinguishing prior art references to overcome the examiner's rejections. See, e.g., J.A. at 1591 (distinguishing claims of the '565 patent from the Greenstone reference on the basis of certain "distinct differences," including "display members having translucent portions"). With regard to the remainder of the terms, however, we conclude that vague and ambiguous statements were inappropriately interpreted to disavow claim scope.
Consequently, we affirm the district court's constructions of "opposed retention members," "display member," and "removably secured." We reverse the remainder of the district court's constructions.
District court summary judgment of non-infringement vacated.
There is no analysis, no citation to record evidence, nor any accompanying explanation as to why, despite MDI's vigorous and record-based arguments to the contrary, the district court concluded there was no genuine issue of material fact as to infringement, either literally or under the doctrine of equivalents.
Remanded for proceedings consistent with CAFC claim construction.
The opinion is non-precedential. One to sweep under the rug, because it too poignantly points out the need for a patent trial court circuit, and, failing that, the need for venue shopping to districts that do a decent job of patent litigation.
Posted by Patent Hawk at May 22, 2008 3:56 PM | Claim Construction
From Europe: Inexperienced district court judges need transparent rules of claim construction, not fog and obfuscation. When they read a claim, they should enjoy a WYSIWYG moment, no? Hawk, does the District Court Judge at the Markman Hearing get from the accused infringer the "squeeze" arguments that a narrow construction of the claim leaves it valid but not infringed while a wider reading, to embrace the accused embodiment, results in the claim including something that is old or obvious? Squeeze arguments (together with the English Loser Pays rule) are admirably affective for filtering vexatious litigants out of the system. Even more important, in combination with the SAME preponderance standard for BOTH infringement and validity, they allow the court to adopt deadly simple, common sense, WYSIWYG outcomes to the claim construction exercise. Note that, on a 2 x 2 matrix of possible outcomes, ranging from "valid and infringed" to "Not valid and not infringed", patent owner wins on only one of the 4 possible outcomes. To my way of thinking, a 25% success rate for patent owners is a sign that only 50:50 cases go to trial, which is as it should be. It is no coincidence, that the English patents jurisdiction is the "strongest" in the world.
Posted by: MaxDrei at May 23, 2008 3:14 AM