January 10, 2011
St. Clair sued Fuji Photo Film and seven other digital camera makers for infringing four digital photo format patents: 5,138,459; 6,094,219; 6,233,010; and 6,323,899. The district court found infringement based upon claim construction. The negative of that was found on appeal.
St. Clair Intellectual Property Consultants v. Canon and Fuji Photo Film (CAFC 2009-1052, 2010-1137, -1140) nonprecedential
The parties agree that if Fuji's construction of the claims is correct, there is no infringement. Claim construction is a question of law, which we review de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc).
In light of the claim language and the ubiquitous and consistent correspondence between data formats and computer architectures throughout the specification and prosecution history, we hold that the term "computer apparatus" refers to computer architecture. Each data format code "corresponds respectively to one of a like plurality of different data formats for different types of computer apparatus" only if "each data format" corresponds on a one-to-one basis to a different type of computer architecture (e.g., in the way that GIFF corresponds to IBM and PICT corresponds to Apple).
So went infringement of asserted claims for '459 and '219. The backstory goes to problem being solved. The claimed "data format" was an issue of computer architecture (OS), not just format of the data.
In 1990, the problem the inventors sought to solve was one of computer architecture incompatibility, not data format incompatibility... Here, the specification uniformly describes the solution to this problem as involving the selection of data formats that correspond to particular computer architectures. We have held that the consistent use of a claim term in the specification suggests that the scope of a claim is limited. See Nystrom v. Trex Co., 424 F.3d 1136, 1144- 45 (Fed. Cir. 2005). The specification expressly allows a user to select data formats for use with particular computer architectures, citing IBM and Apple PCs as exemplar architectures.
In construing claim terms, "the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention." Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005).
During prosecution, the inventors described the problem to be solved as one of computer architecture incompatibility....
The other two patents got the same treatment, even though St. Clair tried to brush up the image. Having the same spec meant that the picture looked the same to the CAFC.
St. Clair contends that the asserted claims of the '010 and '899 patents use different claim language than the asserted claims of the '459 and '219 patents, and that those claims should be construed differently.
Nonetheless, we conclude that the asserted claims of the '010 and '899 patents are limited to selecting formats for different types of computer architecture. Each patent shares the same specification and uses similar, and often identical, terminology.
Reexamination figured in.
Fuji's construction is also supported by remarks made by the examiner during reexamination. Reexamination statements "are relevant prosecution history when interpreting claims." E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1439 (Fed. Cir. 1988). The reexamination procedure serves an important role in providing a district court with an "expert view of the PTO." Gould v. Control Laser Corp., 705 F.2d 1340, 1342 (Fed. Cir. 1983).
Because an examiner in reexamination can be considered one of ordinary skill in the art, his construction of the asserted claims carries significant weight.
The overriding point is that a claimed invention should understood as one of skill in the art. Calling the PTO an "expert view" strikes this writer a bit rich, especially considering PTO examination appeal results before the CAFC. More importantly, as the dissent pointed out, prosecution disclaimer is based on prosecutor argument, not what an examiner understood, or misunderstood, as the case may be. The majority was wrong here, dangerously so.
Judge Moore dissented (from Judges DYK and Mayer) over "plain meaning" of "data format," which she construed broadly, like the district court. Judge Moore also saw a difference in data format claim terms between the patents.
I cannot agree, however, that a "plurality of different data formats for different types of computer apparatus" is similar to "a plurality of computer file formats," and St. Clair clearly argues that they should be construed differently. Appellee's Br. 24. I believe therefore that St. Clair is entitled to have this court independently construe each term. For me, at least, such a process leads to different constructions.
Judge Moore found fault with the majority's spec finding, and reliance upon reexamination.
I do not agree that the specification includes clearly narrowing language as in SciMed.
I also do not agree with the majority's reliance on the reexamination history because St. Clair did not clearly disavow claim scope during reexamination. On the contrary, during reexamination of the '010 and '889 patents, St. Clair traversed the examiner's narrow claim construction prior to overcoming the asserted art. During reexamination of the '459 and '219 patents, the examiner confirmed all claims on the first office action. Hence, St. Clair argued nothing in these reexaminations that could be construed as a disavowal. In fact, in a post-allowance submission, St. Clair made clear its view that these terms were not limited in the manner the majority now does.
Posted by Patent Hawk at January 10, 2011 2:09 PM | Claim Construction
I agree with Judge Moore's reliance on what the patentee said in reexamination, as opposed to what the reexamination examiner said. While reexamination proceedings, like routine prosecutions, are relevant to claim construction, the examiner's comments are not. This is because the examiner, in both routine and reexamination prosecution, employs the broadest reasonable interpretation of the claims, as examiners remind us on a daily basis.
Westerman Hattori Daniels & Adrian
Posted by: Scott Daniels at January 11, 2011 4:06 AM