Epistar v. International Trade Commission (CAFC 2007-1457) precedential

'518 claims a particular LED configuration.

A tidbit of acknowledgement by the CAFC that the American regime of claim construction is at times a matter of splitting hairs.

Generally, this court gives claim terms their ordinary and customary meanings, according to the customary understanding of a person of ordinary skill in the art who reads them in the context of the intrinsic record. See Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). The specification "is the single best guide to the meaning of a disputed term." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). This court recognizes, however, "there is sometimes a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification." Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998).

Over the construction of a "transparent window layer," a reminder of where prosecution estoppel kicks in; the difference between disparage and disavowal.

To prevail, Epistar must establish the inventors "demonstrate[d] an intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope." Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002).

An ITO LED refers to an LED that uses a current-spreading layer of indium-tin oxide to enhance LED efficiency with higher light output.

Even if the patent specification did disparage the use of ITO as a window layer, this criticism does not rise to the level of a disavowal. Disavowal requires "expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope." Teleflex, 299 F.3d at 1325. A patentee's discussion of the shortcomings of certain techniques is not a disavowal of the use of those techniques in a manner consistent with the claimed invention.

For example, in Micro Chemical, Inc. v. Great Plains Chemical Co., the patentee explained in the background section of the patent that a prior art device using the "weigh dump method" was too slow and too inaccurate. 194 F.3d 1250, 1260 (Fed. Cir. 1999). The patent did not assert that the "weigh dump method" itself was the reason for the inaccuracies or slowness. Id. This court ruled that the patentee did not disavow the use of the "weigh dump method," even if the claim were construed as a step-plus-function claim under 35 U.S.C. § 112, ¶ 6. Micro Chem., 194 F.3d at 1259-60.

Moreover, this case does not present an instance where an inventor distinguishes an invention over the prior art in an unmistakable disavowal of those prior art features. In Phillips, this court recognized that in certain cases, "the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor." 415 F.3d at 1316. In such cases, this court interprets the claim more narrowly than it otherwise would to give effect to the inventor's intent to disavow a broader claim scope. Id.; Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1319-20 (Fed. Cir. 2006); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1342-44 (Fed. Cir. 2001). By the same token, this court also recognizes that disparaging comments alone do not necessarily show a manifest or express disavowal of the criticized subject matter. See, e.g., Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d 1173, 1180-81 (Fed. Cir. 2006) (finding that general comments distinguishing the prior art were not sufficient to limit the term "dispensing" to "direct dispensing"); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1365-67 (Fed. Cir. 2004) (finding descriptions of the deficiencies of using mainframe computers did not exclude mainframes from the term "user computer" because the specification as a whole did not express a clear disavowal of that subject matter). In this case, the single, passing reference to ITO as a relatively unsatisfactory transparent electrical contact in the specification does not disavow the use of ITO as a transparent window layer.

A specification need not disclose "every conceivable and possible future embodiment" to make a claim.

Epistar argues that the '718 patent "cannot be construed to encompass ITO [because] the patent does not actually disclose a means of using it," i.e., the use of ITO in the transparent window layer is not enabled in the '718 patent specification. See, e.g., Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) ("To be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation." (internal citations omitted)). This court has also held that "[a]n applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention." Cordis Corp. v. MedtronicAve Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003); see also Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534 (Fed. Cir. 1987) ("If an invention pertains to an art where the results are predictable, . . . a broad claim can be enabled by disclosure of a single embodiment . . . and is not invalid for lack of enablement simply because it reads on another embodiment of the invention which is inadequately disclosed." (internal citations omitted)).

Claiming the prior art does not require specification support.

Because ITO as a transparent conductive layer was already known to those of skill in the art, the '718 patent specification did not need to make further enabling disclosures about its prior art uses. See, e.g., Spectra-Physics, 827 F.2d at 1534 ("A patent need not teach, and preferably omits, what is well known in the art.").

In construing "substrate," to avert infringement, Epistar wanted the term limited to a single layer.

[T]he disclosure of a preferred or exemplary embodiment encompassing a singular element does not, without more, disclaim a plural embodiment. See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000); see also AbTox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997).

On the ITC overreaching -

This court in Kyocera Wireless held that the ITC lacks statutory authority to issue a LEO that excludes imported products by entities not named as respondents before the ITC. Kyocera Wireless, 545 F.3d at 1345, 1357-58. The Commission's LEO improperly excludes downstream "packaged LEDs containing the infringing LEDs and boards primarily consisting of arrays of such packaged LEDs," regardless of the manufacturer or importer of these products. Limited Exclusion Order, slip op. at 2. The Commission ordered this relief despite acknowledging that "Epistar does not itself manufacture downstream products," and "almost all of Epistar's LED sales are to foreign entities who then incorporate the infringing LEDs into packaged LED and LED boards for importation into the U.S." Commission Opinion, slip op. at 28. This court, therefore, vacates the current LEO and remands to the Commission for reconsideration.

Affirmed-in-part, reversed-in-part, and remanded.