Fifth General Computer v. IBM (CAFC 2010-1201) nonprecedential

On January 6, 2010, the court issued a detailed claim construction opinion, Fifth Generation, 678 F. Supp. 2d 184, and subsequently entered final judgment of noninfringement against Fifth Generation. J.A.1. The court held that the "root bus controller," as used in the '024 claims, connects the binary tree of bus controllers to the host computer. Fifth Generation, 678 F. Supp. 2d at 201. The court read the claims to mean that the root bus controller is necessarily the link between the binary tree of bus controllers and the host computer. Id. at 202.

That led to noninfringement. And appeal.

Patent claims function to delineate the precise scope of a claimed invention and to give notice to the public, including potential competitors, of the patentee's right to exclude. Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006); see also Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) ("In construing claims, the analytical focus must begin and remain centered on the language of the claims themselves, for it is that language that the patentee chose to use to particularly point out and distinctly claim the subject matter which the patentee regards as his invention.") (quotation and alterations omitted). This notice function would be undermined, however, if courts construed claims so as to render characteristics specifically described in those claims superfluous. Bicon, 441 F.3d at 950. As such, we construe claims to give effect to all of their terms. Id. Claims 1 and 7 of the '024 patent clearly state that the root bus controller is "for connecting said binary tree connected bus controllers to said host computer."

Fifth took the fifth on the connection, arguing that "the claims do not require a direct connection between the root bus controller and the host computer." That made no connection with the courts.

Fifth Generation's proposed broader construction of the disputed terms relies heavily on its argument that the '024 patent incorporated the '201 and '540 patents by reference and that a disclosure of subtrees in those earlier patents supports such a construction. Whether, and to what extent, material has been incorporated by reference into a host document, is a question of law that we review de novo. Adv. Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1283 (Fed. Cir. 2000). We agree with Fifth Generation that the '024 patent specification does not need to expressly recite concepts disclosed in the earlier Stolfo patents in order to incorporate them into the later patent specification. The clear incorporation by reference suffices to serve that purpose here. See Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007) ("Incorporation by reference provides a method for integrating material from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.") (quotation omitted). To the extent the district court imposed a contrary requirement by holding that the Stolfo patents were not incorporated by reference because of the '024 patent's criticism of those earlier inventions, Fifth Generation, 678 F. Supp. 2d at 197, we conclude that it erred. However, we do not agree with Fifth Generation that every concept of the prior inventions is necessarily imported into every claim of the later patent. See Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1553 (Fed. Cir. 1996) ("[I]ncorporation by reference does not convert the invention of the incorporated patent into the invention of the host patent."), overruled on other grounds by Festo Corp. v. Shoketsu Kinzoku Kabushiki Co., Ltd., 234 F.3d 558 (Fed. Cir. 2000). Here, the '024 patent claims are clear in claiming a complete computer system, including specific functionality of the single root bus controller within that computer system. In light of such clear claim language, it is inappropriate to look to the incorporated references to arrive at a stretched reading of those claim limitations. Interactive Gift Express, 256 F.3d at 1331 ("If the claim language is clear on its face, then our consideration of the rest of the intrinsic evidence is restricted to determining if a deviation from the clear language of the claims is specified."); see also Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1563 (Fed. Cir. 1991) ("When the language of a claim is clear, as here, and a different interpretation would render meaningless express claim limitations, we do not resort to speculative interpretation based on claims not granted.").

Affirmed.