Schindler Elevator v. Otis Elevator (CAFC 2009-1146) precedential

Opinion penned by Linn, joined by Judge Friedman.

'094 turns an elevator into a personal valet.

The '094 patent is directed to an elevator system that recognizes a user when he or she enters an entry location of a building, then dispatches an elevator to bring the user to a destination floor based on user-specific data. The system recognizes the user in one of two ways. In a first embodiment, a user carrying an "information transmitter" brings his transmitter within range of a "recognition device" mounted in the building's entry location. Once in range, the transmitter is actuated by an electromagnetic field emitted from the recognition device and then transmits preprogrammed data regarding the user's destination floor. Alternatively, in a second embodiment, the recognition device recognizes the user by his "individual features," such as facial contours, fingerprints, iris, or voice. In either embodiment, once the system has recognized the user, the system identifies the user's destination floor based on the data it received, dispatches an elevator to the user's starting floor, and informs the user which elevator to take. The user thus arrives at a destination floor without having to press any button outside or inside the elevator to designate the destination floor.

The district court adopted a circular claim construction for key terms "information transmitter" and "recognition device."

On April 4, 2008, the district court construed nine disputed sets of claim limitations. Only the first set--"information transmitter" and "recognition device"--is challenged on appeal. The district court construed "information transmitter" to mean "a device that communicates with a recognition device via electromagnetic waves, after being actuated by that recognition device, without requiring any sort of personal action by the passenger." Claim Construction Order, 561 F. Supp. 2d at 362. It construed "recognition device" to mean "a device that actuates and reads data transmitted by an information transmitter without requiring any sort of personal action by the passenger." Id. In the claim construction order, the district court declined to specify the particular kind of "personal action" prohibited under its construction, but stated that it "rules out, not just standing in front of the recognition device, or inputting data into the information transmitter by hand, but any and all types of personal action by the passenger." Id. (emphasis added).

Cross-motions for infringement summary judgment left Schindler with the bum ride.

The district court issued its summary judgment ruling on November 17, 2008. Although it had previously said that "any and all types of personal action" were prohibited under its construction, the district court refined its understanding of "personal action" on summary judgment to expressly permit "walking into the monitored area." Summary Judgment Order, 586 F. Supp. 2d at 237. The district court went on to note that a user of the accused device must "do something in order to bring the card (not just themselves) to a point at which the device embedded in the turnstiles can read it," such as taking the card out of a pocket or holding the card over the glass surface of the turnstile. Id. at 238. Accordingly, the district court held that Otis's accused system could not meet the "information transmitter" and "recognition device" limitations and thus did not infringe the '094 patent as a matter of law.

The infringement two-step -

"An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly construed claims to the device accused of infringing." Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc) (citations omitted), aff'd, 517 U.S. 370 (1996).

Noninfringement naturally occurs with narrow claims, which Schindler argued against. A crucial issue is the scope of the claimed "personal action."

Schindler argues that the district court improperly limited the terms "information transmitter" and "recognition device" by requiring those devices to operate "without any sort of personal action by the passenger" and by further defining "personal action" to mean any action "other than walking into the monitored area." According to Schindler, nowhere does the intrinsic evidence prohibit a passenger from using his hands to simply bring an information transmitter within range of a recognition device. The phrase "personal action" appears only once in the specification. In Schindler's view, "personal action" encompasses the action of manually pressing buttons to actuate the transmitter or to select a destination floor, not to the initial act of bringing the transmitter within range of the recognition device. Schindler therefore requests that we remove any reference to "personal action" from each construction. ¹

A footnote indicated foot-in-mouth by Schindler, arguing against what it had previously proposed.

¹ Schindler also requests that we strike the phrase "via electromagnetic waves" from the district court's construction of "information transmitter." But the construction of "information transmitter" that Schindler proposed to the district court included that very phrase. We therefore decline to alter the district court's construction as it pertains to electromagnetic waves.

Based upon the spec and file history, the CAFC agreed with Schindler.

As we shall explain, we agree with Schindler that the district court's construction is too narrow. The statements in the specification and prosecution history on which the district court relied were directed to elevator operations that occur only after the information transmitter is already within range of the recognition device, not to the initial act of bringing the information transmitter within range of the recognition device.

The proposed constructions were entirely within intrinsic evidence, so the CAFC focused its "analysis on the claim language, the specification, and the prosecution history." Case law comprises the claim construction mantra of the simplest construction that works, not introducing anything extraneous.

A claim term is generally given its "ordinary and customary meaning," which is "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (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,' . . . . includ[ing] '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 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).

The ground floor -

1. An elevator installation having a plurality of elevators comprising:

a recognition device for recognizing elevator calls entered at an entry location by an information transmitter carried by an elevator user, initializing the entry location as a starting floor of a journey;

a control device receiving the recognized elevator call and allocating an elevator to respond to the elevator call, through a predetermined allocating algorithm;

a call acknowledging device comprising one of a display device and an acoustic device to acknowledge recognition of the elevator call and to communicate a proposed destination floor to the elevator user;

the recognition device, mounted in the access area in the vicinity of the elevators and spatially located away from elevator doors, actuating the information transmitter and comprising a unit that independently reads data transmitted from the information transmitter carried by the elevator user and a storage device coupled between the unit and the control device:

the recognition device one of transmitting proposed destination floor data, based upon the data transmitted from the information transmitter, to the control device, and, transmitting elevator user specific data. based upon individual features of the elevator user stored in the storage device, to the control device.

The district court overlooked rule number one of claim construction: look first to claim language itself. In this case, independent claim 1 told much of the story.

"Quite apart from the written description and the prosecution history, the claims themselves provide substantial guidance as to the meaning of particular claim terms." Id. Here, the district court overlooked several important aspects of the claim language which themselves shed light on whether and to what extent an elevator user undertakes "personal action" in the invention.

First, "the context in which a term is used in the asserted claim can be highly instructive." Id. In claim 1, the term "information transmitter" itself suggests that the transmitter is a thing, separate and apart from an "elevator user" (a separate limitation), which transmits information. The claim also provides that "elevator calls [are] entered at an entry location by an information transmitter." Thus, at least with regard to the transmission of information and the entry of calls, it is the information transmitter--not the elevator user--that performs these tasks. Similarly, the claim provides that a "recognition device . . . actuat[es] the information transmitter" and that "a unit . . . independently reads data transmitted from the information transmitter." Accordingly, the tasks of actuating the transmitter and reading data are performed by the recognition device and the unit, respectively, not by the elevator user. The claim also explicitly provides that the transmitter is "carried by an elevator user." Carrying a transmitter is thus a type of "personal action" that is expressly required in the claims. Nowhere does claim 1 limit the act of carrying to any specific manner of carrying.

Dependent claims can answer questions of the intent of a claimed invention.

Second, "[o]ther claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term." Id. Claim 7 depends from claim 1 and adds the phrase "wherein the recognition device reads a key having a code." A "key" is disclosed in the specification as a "building key," which is embedded with an information transmitter that is actuated by a recognition device mounted near a "door lock" of a building. '094 patent col.5 ll.30-32. The door lock recognizes the building key when the passenger uses his key to open the door. Id. col.5 ll.32-33. The specification, in describing a variation of this information transmitter "key" embodiment, notes that the recognition device may be mounted near a "time clock," and an elevator is dispatched when a user clocks in or out of work. Id. col.5 ll.33-35. Because a user would need to use his hands to bring the transmitter key within range of the recognition device to unlock the door, or to clock in or out of work, these types of personal action are implicitly permitted in claim 7 and, by extension, in claim 1. Thus, the claims appear to permit at least those types of personal action that are necessary to bring the information transmitter within range of the recognition device.

Into the spec for confirmation or revelation otherwise -

"[C]laims 'must be read in view of the specification, of which they are a part.'" Phillips, 415 F.3d at 1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996)). "[T]he specification 'is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'" Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).

The phrase "personal action" is used only once in the specification, in the following sentence:

The advantages achieved by the invention reside in the fact that the desired journey destination is communicated automatically to the elevator control by [(1)] the information transmitters carried by the elevator users or by [(2)] the recognition of features of the elevator users without any personal action being required by the passenger.

'094 patent col.2 ll.49-54 (emphases and bracketed numbers added).

Whatever it takes to be recognized can't fall within the scope of excluding "personal action." The claim's point is that the user doesn't need to indicate destination.

The sentence says nothing about how the passenger initially brings his transmitter (or fingerprints) within recognition range, but merely that, once in range, he need not use personal action to communicate his journey destination to the elevator control.

Contrary to the district court's prohibition against all actions other than walking, the specification itself provides examples where a user would need to do more than just walk to bring his transmitter into recognition range... Once in range, the transmitter is actuated by the recognition device and transmits its encoded data without personal action by the user.

The prosecution history was relevant, and the subject of dissent.

"[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Phillips, 415 F.3d at 1317.

During prosecution, Schindler amended the claims in response to an obviousness rejection over U.S. Patent No. 5,304,752 ("Hayashi") in view of U.S. Patent No. 4,685,538 ("Kamaike"). It was at this time that Schindler first added the "information transmitter" limitation to the claims, and further required that the transmitter be "actuat[ed]" by the recognition device. J.A. 314-17 ("the recognition device . . . actuating the information transmitter" (amendment emphasized))... The examiner allowed the claims to issue in amended form.

For the appeals majority, the district court went too far in adopting a posture of prosecution disclaimer.

An argument made to an examiner constitutes a disclaimer only if it is "clear and unmistakable." Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006). An "ambiguous disavowal" will not suffice. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1375 (Fed. Cir. 2008).

The district court reviewed the prosecution history and concluded that Schindler had surrendered coverage of its originally claimed invention and, through its arguments, had disavowed any coverage of elevator systems that do not operate "automatically" and "hands-free." Claim Construction Order, 561 F. Supp. 2d at 361. We agree with the district court that Schindler is not entitled to any interpretation that it disclaimed during prosecution. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) ("The purpose of consulting the prosecution history in construing a claim is to 'exclude any interpretation that was disclaimed during prosecution.'" (quoting ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1580 (Fed. Cir. 1988))). But we disagree as to the extent of that disclaimer.

The doctrine of prosecution disclaimer attaches where an applicant, whether by amendment or by argument, "unequivocally disavowed a certain meaning to obtain his patent." Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003). For example, an amendment that clearly narrows the scope of a claim, such as by the addition of a new claim limitation, constitutes a disclaimer of any claim interpretation that would effectively eliminate the limitation or that would otherwise recapture the claim's original scope. Here, the district court construed the term "recognition device" as a device that "actuates and reads data transmitted by an information transmitter." Because this construction already provides that the recognition device--not the elevator user--actuates the transmitter, there is no risk that Schindler would recapture a broader claim scope than that existing before it added the "information transmitter" and "actuating" language to the claims.

Here, the district court found statements in the prosecution history, similar to those in the specification, which describe the invention as operating "automatically, contactlessly, and independently of the orientation of the information transmitter." The district court read these statements as unambiguously disavowing the use of a passenger's hands for any and all purposes. We disagree.

[W]e read the prosecution history in this case "as support for the construction already discerned from the claim language and confirmed by the written description." 800 Adept, Inc. v. Murex Sec., Ltd., 539 F.3d 1354, 1365 (Fed. Cir. 2008).

The CAFC tool "personal action" out of the construction.

We therefore modify the district court's construction of "information transmitter" and "recognition device" by striking the phrase "without requiring any sort of personal action by the passenger" from each construction.

By doing so, the case opened up.

Under our modified construction of "information transmitter" and "recognition device," Schindler's evidence was sufficient to create a genuine issue of material fact that the RFID cards of the accused system communicate with a card reader via electromagnetic waves after being actuated by the card reader, and that the card reader actuates and reads data transmitted by the RFID cards. On that basis, the district court should not have granted summary judgment of noninfringement.

Vacated and remanded.

Judge DYK in dissent argued the panel majority gave Schindler too much a lift.

Contrary to the majority, it seems to me that the action of swiping a card to call the elevator separate from the action required to gain entry to the building is clearly within the disclaimer of both the specification and prosecution history.

How does the majority avoid this disclaimer? The majority's theory is that there is no requirement of hands-free or automatic action until the transmitter is within range of the recognition device. In other words, the device would be "hands-free" and "automatic" even though the user has to take elaborate action to bring the device within range. See Majority Op. at 16 ("[A] user ought to be able to use his hands, or take other personal action, to simply bring the transmitter within the effective range of the recognition device"). I find this reading of the disclaimer to be inherently improbable and quite inconsistent with the language of the specification and prosecution history. The specification and prosecution history make no such distinction, and consistently emphasize the hands-free and automatic nature of the device without regard to whether it is in range or not.

DYK put down Schindler's self-serving broadening.

The patentees, unlike the majority, argue that the disclaimer has no application to devices where the signal came from the recognition device. On this theory, the disclaimer is rendered entirely meaningless because the patent only covers devices in which the signal is initiated by the recognition device, and the disclaimer is read only to apply to devices in which the signal is initated by the transmitter.

The prior art device involved a system whereby the user activated a transmitter by entering a code that signaled the recognition device. The applicant could have distinguished this prior art solely on the ground that the signal here goes from the recognition device to the transmitter. The applicant did not choose to rest on this ground alone (likely because this was an obvious variant of the prior art), but instead emphasized that the patented device was distinguishable both because of the signal direction and because it was hands-free and automatic. The patentee agreed at oral argument that a card swipe was no less covered by the disclaimer than the pressing of buttons.

We have repeatedly held that a disclaimer cannot be avoided simply by pointing out that the prior art could have been distinguished on another ground. See, e.g., Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1361-62 (Fed. Cir. 2005) (holding that patentees must be held to the scope of what they ultimately claim, and are not allowed to assert that claims should be construed to surrender only what was necessary to avoid the prior art); Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1115 (Fed. Cir. 2002) ("Fantasy acquiesced in [the examiner's] rejections by canceling all claims that did not contain the 'bonus points' limitation at issue on appeal, and thus cannot now be heard to argue post hoc that it was the combination of the aforementioned limitations that rendered its invention patentable over the prior art."). Schindler's disclaimer must be based on what he said, not on what he could have said. Thus, I find Schindler's reading of the disclaimer to be just as untenable as the majority's reading.

A competitor reading the specification and the prosecution history is entitled to rely on the patent and prosecution history. In my view, the majority's claim construction artificially eliminates that disclaimer in limiting it to actions taken after the transmitter is in range of the recognition device.