Wavetronix v. EIS (2008-1129, 1160) precedential

The CAFC version of "aw shucks, just this once..."

Although claim construction is a question of law, we generally refuse to construe claims in the first instance. See, e.g., Metro. Life Ins. Co. v. Bancorp Servs., L.L.C., 527 F.3d 1330, 1336 (Fed. Cir. 2008); Electro Scientific Indus., Inc. v. Dynamic Details, Inc., 307 F.3d 1343, 1350 (Fed. Cir. 2002); Bayer AG v. Biovail Corp., 279 F.3d 1340, 1349 (Fed. Cir. 2002). But see Frank's Casing Crew & Rental Tools, Inc. v. PMR Techs., Ltd., 292 F.3d 1363, 1373 (Fed. Cir. 2002). We have explained that this court's review, although de novo, is not to function as an independent analysis in the first instance. See Nazomi Commc'ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1371 (Fed. Cir. 2005). In this case, however, we accept the parties' invitation to construe the "probability density function estimation" claim term, for three reasons. First, although the district court did not specifically construe the claim term, its opinion references the question of claim construction, and it is apparent that the district court's views on the matter have been exhausted. See id. (noting importance of taking into account views of trial judge); see also Fireman's Fund Ins. Co. v. United States, 909 F.2d 495, 499 (Fed. Cir. 1990) (addressing new argument in first instance where remand would serve no useful purpose). Second, both parties have agreed that we should construe the claim limitation. Third, we agree that the record, which includes considerable evidence and expert testimony, has been sufficiently developed to enable us to construe the claim term without prejudicing either party. See Fireman's Fund, 909 F.2d at 499; cf. Apex, Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1374-75 (Fed. Cir. 2003) (declining to construe claim terms where record had not been sufficiently developed, because prejudice could result).

All claim construction roads lead to the 2005 CAFC decision in Phillips v. AWH.

A claim term is construed according to its ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). "[T]he court looks to those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean," including "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Id. at 1314 (citations and internal quotation marks omitted). A dictionary definition may be relied upon "so long as [it] does not contradict any definition found in or ascertained by a reading of the patent documents." Id. at 1322-23 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996)).

As to the disputed term "PDFE", which, given the circumstance, should have rendered the claim indefinite, but the CAFC has eviscerated §112 ¶2...

The claim language itself provides little guidance on how to define "PDFE," and the parties have not relied upon the patent's prosecution history to define the proper scope of the claim limitations referencing a PDFE. The patent's specification does provide guidance, but its references to PDFE are not entirely consistent. Nowhere does the patent set forth an explicit definition of PDFE. See Phillips, 415 F.3d at 1316 (patentee may act as own lexicographer); Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 990 (Fed. Cir. 1999) (same). The specification refers variously to: a PDF "as estimated," '916 patent col.6 l.6; using a PDF "to estimate" lane boundaries, id. col.6 ll.14-15; "PDF estimation," id. col.6 l.32; a "PDF estimator," id. col.6 l.33; and "estimated PDFs," id. col.8 l.13. In some places, the specification appears to refer to PDF and PDFE interchangeably. Id. col.4 ll.1-7, col.7 ll.30-39.

In summary, what makes a PDFE an estimate of a PDF in the context of the '916 patent is the fact that a PDFE is based on actual data points, rather than a perfectly smooth, if hypothetical, mathematical function or model. But a PDFE, like a PDF, has the characteristic of comparing values across a range of positions. The court therefore construes a PDFE to be "a finite data set large enough to approximate a function of a continuous variable whose integral over a region gives the probability that a random variable falls within the region."

A little infringement case law was toted up, both literal and no-so-literal.

"Literal infringement of a properly construed claim is a question of fact." Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006). "We affirm a district court's grant of summary judgment of non-infringement only if, after viewing the alleged facts in the light most favorable to the non-movant, there is no genuine issue as to whether the accused device is encompassed by the claims." Combined Sys., Inc. v. Def. Tech. Corp. of Am., 350 F.3d 1207, 1210 (Fed. Cir. 2003) (citation omitted).

The essential inquiry under the doctrine of equivalents is whether "the accused product or process contain[s] elements identical or equivalent to each claimed element of the patented invention." Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997). As with literal infringement, infringement by equivalents is a question of fact. Id. at 38. "An element in the accused product is equivalent to a claim limitation if the differences between the two are 'insubstantial' to one of ordinary skill in the art." Eagle Comtronics, Inc. v. Arrow Commc'n Labs., Inc., 305 F.3d 1303, 1315 (Fed. Cir. 2002) (citing Warner-Jenkinson, 520 U.S. at 40); see also Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950). A plaintiff can prove equivalence by showing on a limitation-by-limitation basis that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product. Eagle Comtronics, 305 F.3d at 1315 (quoting Graver Tank, 339 U.S. at 608); see also Warner-Jenkinson, 520 U.S. at 39-40. A court may not apply the doctrine of equivalents where so doing would effectively eliminate a claim element in its entirety. Warner-Jenkinson, 520 U.S. at 29; Carnegie Mellon Univ. v. Hoffmann-La Roche, Inc., 541 F.3d 1115, 1129 (Fed. Cir. 2008).

Affirmed.