02-1303
APEX INC.,
Plaintiff-Appellant,
v.
RARITAN COMPUTER, INC.,
Defendant-Appellee.
James D.
Berquist, Nixon & Vanderhye
P.C., of
John F.
Ward, Ward & Olivo, of
Appealed from:
Senior Judge Milton Pollack
02-1303
APEX INC.,
Plaintiff-Appellant,
v.
RARITAN COMPUTER, INC.,
Defendant-Appellee.
______________________
DECIDED:
______________________
Before NEWMAN, RADER,
and GAJARSA, Circuit Judges.
GAJARSA, Circuit Judge.
Plaintiff-Appellant, Apex Inc. ("Apex"), seeks review of the final judgment by the United States District Court for the Southern District of New York holding that United States Patent Nos. 5,884,096 ("the '096 patent"), 5,937,176 ("the '176 patent"), and 6,112,264 ("the '264 patent") (collectively "the patents") were not infringed and dismissing all of Defendant-Appellee's, Raritan Computer, Inc. ("Raritan"), counterclaims without prejudice. Apex Inc. v. Raritan Computer, Inc., 187 F. Supp. 2d 141 (S.D.N.Y. 2002). Because the district court erred as a matter of law in the construction of the disputed claim limitations of the patents, we vacate and remand for further proceedings consistent with this opinion.
I. BACKGROUND
Apex
markets and sells computer switching systems for connecting computer
workstations to remote computers. Apex
is the owner, by assignment, of the patents at issue.
The
'096, '176, and '264 patents are all continuations of a patent application
filed on November 12, 1997 that ultimately issued as United States Patent No.
5,721,842 ("the '842 patent").
The '842 patent is not asserted by Apex in this action.
The patents in this action disclose and claim computerized switching systems, known in the art as keyboard, video, mouse ("KVM") switches, that allow centrally located network administrators to operate multiple server computers without requiring a complicated wiring scheme. '096 patent, col.1, ll. 49-65. Figure 1 from the '264 patent provides a general overview of the KVM switches disclosed and claimed in the patents.
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The
computerized switching system allows for a number of server computers 52, 54,
56 to be coupled to a number of workstations 62, 64, 66. Each workstation includes a video monitor 63,
a keyboard 65, and a cursor control device such as a mouse 67. Signals from the keyboard 65 and the mouse 67
are received by a signal conditioning circuit or pod 70. The pod transmits the keyboard and mouse
signals over a communication link 72 to a programmable, or central crosspoint, switch 60.
After being routed through the switch, the keyboard and mouse signals
are retransmitted through another communication link 74 to a pod 76, which is
coupled to the remotely-located server computer 52. The pod 76 supplies the keyboard and mouse
signals through appropriate connectors to keyboard and mouse input ports of the
remote computer, just as if the keyboard 65 and mouse 67 were directly coupled
to the keyboard and mouse input ports. '096 patent, col. 3, ll. 1-18. An important aspect of the invention relates
to the use of an on-screen programming display feature that allows the user to
select any particular server from any particular workstation. At the user's request, the switch displays a
menu of services on the screen of the user's monitor. The user then can select a particular server
from the visual menu using a cursor control device or the keyboard.
Apex
asserts Raritan's MasterConsole products and Paragon
products infringe claims 1, 6, 7, 10, 11, 20, 26 and 32 of the '096 patent and
claims 1-10, 14,m and 16 of the '264 patent.
Apex also asserts
Before the district court, the parties disputed fourteen claim limitations within various claims of the patents in this action. Each of the contested limitations from the respective patents and claims is reproduced below.
The '096 patent
Claims 1, 11, 20, 26
a programmable switch
for routing keyboard and cursor control signals from the workstation to a
selected computer and for routing video signals from the selected computer to
the video monitor of the workstation;
a first interface circuit
for receiving keyboard and cursor control device signals from the workstation;
an on-screen programming circuit that produces video signals for display on the video
monitor;
a second interface circuit
disposed between the programmable switch and the selected computer for
supplying the keyboard and cursor control device signals routed through the
programmable switch to the selected computer
Claim 1
a
programmed logic circuit coupled to
the first interface that transmits the keyboard and cursor control device
signals to the programmable switch and controls the on-screen programming
circuit to produce the video signals upon the detection of a predefined input
from a user of the workstation, the programmed logic circuit further operating
to detect keyboard or cursor control device signals received while the on-screen
programming circuit is producing video signals on the video monitor and to
control the programmable switch in response to the keyboard or cursor control
device signals detected;
Claims 6-7, 10 and 32
producing
overlaid video signals for display on the video monitor of the
workstation;
The '176 patent
a
plurality of first signal conditioning units coupled to the workstations
for receiving electronic signals produced by the keyboard and mouse and for
creating a serial data packet that includes the electronic signals;
a
central crosspoint switch including a number
of bidirectional inputs and outputs, said central crosspoint switch receiving the serial data packets from an
input and routing the serial data packet to one or more of said outputs;
a
plurality of second signal conditioning units coupled to the remote
computer systems, for receiving the serial data packets transmitted on one of
the plurality of second communication links switch and for supplying the data
packets to a keyboard and mouse input of the remote computer, the plurality of
second signal conditioning units receiving video signals produced by the remote
computer systems and transmitting the video signals to the central switch on
one of the plurality of second communication links;
The '264
patent
a
computer-side interface for simultaneously physically connecting to
independent, dedicated cables of respective keyboard and analog video outputs
of plural computers;
a
user-side interface for physically connecting to a first set of independent,
dedicated cables of a first keyboard and an analog video input of a first
monitor;
an
analog video overlay image generating circuit, disposed between the
computer-side interface and the user-side interface, for producing an analog
overlay video signals internal to the switching system; and
an
analog video overlay circuit, disposed between the computer-side
interface and the user-side interface, for combining (1) a portion of the
analog video signals received by the analog video receiving circuit and (2) the
analog overlay video signals generated internally to the switching system to
form a combined analog signal that is output to the first monitor via the
user-side interface.
After a seven-day bench trial, the district court construed
all fourteen of the disputed limitations as follows.
Means-plus-function limitations
The
district court held that the limitations including the terms "first
interface circuit," "on-screen programming circuit,"
"programmed logic circuit," "second interface circuit,"
"first signal conditioning unit," "second signal conditioning
unit," "computer-side interface," "user-side
interface," "analog video overlay image generating circuit," and
"analog video overlay circuit" were all means-plus-function
limitations. Apex, 187 F. Supp.
2d at 160. Despite Apex's contentions
that the disputed limitations contained additional adjectives that, as a whole,
further qualify and describe the particular structure recited, id. at
158, the district court determined that the claim limitations "using the
words 'circuit,' 'interface,' and 'units' do not simply by the use of these
words connote sufficient structure to perform the relevant functions recited in
the element."
"Serial data packet"
The
district court interpreted the term "serial data packet" as "one
that can, but need not, include both keyboard and mouse signals."
a
plurality of first signal conditioning units coupled to the workstations for
receiving electronic signals produced by the keyboard and mouse and for
creating a serial data packet that includes the electronic signals.
The
CPU 80 then reads the digitally buffered keyboard and mouse signals from the
keyboard mouse interface 82 and converts the signals into a data packet that is
transmitted to the remote computer.
Apex, 187 F. Supp. 2d at 155. Lastly,
the district court looked to the prosecution history relying on the examiner's
reasons for allowance which stated:
The
prior art of record does not teach nor fair [sic] suggest the system
arrangement as claimed with circuitry for creating serial data packet from
keyboard and mouse electronic signals, and crosspoint
switch for connecting keyboard/
mouse/video monitor from a number of workstations to plurality of remote
computer systems.
"Overlay"
and "overlaid video signals"
The
district court interpreted the terms "overlay" and "overlaid
video signals" to "require the ability to place two separate images
(or video signals) on top of one another such that they would both be at the
same spot on the screen at the same time."
In light of its claim construction, the district court found that none of the accused products infringes any of the asserted claims in the patents literally or under the doctrine of equivalents. The district court simply stated that there is no infringement of the patents because "the accused devices do not, but must, embody every element of any of the claims as properly interpreted." Id. at 170. Apex timely appealed the district court's final judgment and we have jurisdiction over this appeal pursuant to 28 U.S.C. § 1295(a)(1).
II. DISCUSSION
A. Standard of
Review
A determination of infringement requires a two-step analysis. "First, the court determines the scope and meaning of the patent claims asserted . . . [and second,] the properly construed claims are compared to the allegedly infringing device." Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454, 46 USPQ2d 1169, 1172 (Fed. Cir. 1998) (en banc) (citations omitted). Step one, claim construction, is a question of law, Markman v. Westview Instruments, Inc., 52 F.3d 967, 979, 34 USPQ2d 1321, 1329 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996), that we review de novo, Cybor, 138 F.3d at 1456, 46 USPQ2d at 1172. "Whether the language of a claim is to be interpreted according to 35 U.S.C. § 112, ¶ 6, i.e., whether a claim limitation is in means-plus-function format, is a matter of claim construction and is thus a question of law, reviewed de novo." Kemco Sales, Inc. v. Control Papers Co., Inc., 208 F.3d 1352, 54 USPQ2d 1308, 1312 (Fed. Cir. 2000).
Step two, comparison of the claim to the accused device, requires a determination that every claim limitation, or its equivalent, be found in the accused device. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997). Those determinations are questions of fact, Bai v. L & L Wings Inc., 160 F.3d 1350, 1353, 48 USPQ2d 1674, 1676 (Fed. Cir. 1998), reviewed for clear error, Ultra-Tex Surfaces, Inc. v. Hill Bros. Chem. Co., 204 F.3d 1360, 1363, 53 USPQ2d 1892, 1895 (Fed. Cir. 2000). "A finding is 'clearly erroneous' when although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed." Amhil Enters. Ltd. v. Wawa Inc., 81 F.3d 1554, 1562, 38 USPQ2d, 1471, 1476 (quoting United States v. United States Gypsum Co., 333 U.S. 364, 395 (1948)).
B. Claim Construction
When
construing the claims, we begin with an examination of the intrinsic evidence,
i.e., the claims, the other portions of the written description, and the
prosecution history (if any, and if in evidence). Gart
v. Logitech, Inc., 254 F.3d 1334, 1339, 59 USPQ2d 1290, 1293-94 (Fed. Cir.
2001). Additionally, dictionary
definitions may be consulted in establishing a claim term's ordinary
meaning. Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202, 64 USPQ2d 1812,
1818 (Fed. Cir. 2002). In analyzing the intrinsic evidence, we start with the
language of the claims and engage in a "strong presumption" that
claim terms carry their ordinary meaning as viewed by one of ordinary skill in
the art. Tate Access Floors, Inc. v.
Interface Architectural Resources, Inc., 279 F.3d 1357, 1369, 61 USPQ2d
1647, 1656 (Fed. Cir. 2002); CCS Fitness Inc. v. Brunswick Corp., 288
F.3d 1359, 1366, 62 USPQ2d 1658, 1662 (Fed. Cir. 2002) (stating there is a
"heavy presumption" that claim terms carry their ordinary meaning as
viewed by one of ordinary skill in the art).
Courts may also review extrinsic evidence to assist them in
comprehending the technology in accordance with the understanding of skilled
artisans and as necessary for actual claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co.,
182 F.3d 1298, 1309, 51 USPQ2d 1161, 1168 (Fed. Cir. 1999). Extrinsic evidence
may not be relied upon, however, to vary or contradict the clear meaning of
terms in the claims. Markman, 52 F.3d at 981,
34 USPQ2d at 1331.
1. Means-plus-function limitations
Title
35, section 112, paragraph 6 of the United States Code provides that:
An element in a claim for a combination may be expressed as
a means or step for performing a specified function without the recital of
structure, material, or acts in support thereof, and such claim shall be
construed to cover the corresponding structure, material, or acts described in
the specification and equivalents thereof.
35 U.S.C. § 112, ¶ 6
(2000). Such limitations are generally
known as "means-plus-function" or "step-plus-function"
limitations. Through use of
means-plus-function limitations, patent applicants are allowed to claim an
element of a combination functionally, without reciting structures for
performing those functions. Envirco Corp. v. Clestra
Cleanroom, Inc., 209 F.3d 1360, 1364, 54 USPQ2d
1449, 1452 (Fed. Cir. 2000).
It
is well settled that "[a] claim limitation that actually uses the word
'means' invokes a rebuttable presumption that
§ 112, ¶ 6 applies. By
contrast, a claim term that does not use 'means' will trigger the rebuttable presumption that § 112, ¶ 6 does not
apply." CCS Fitness, 288
F.3d at 1369, 62 USPQ2d at 1664.
"[T]he term 'means' is central to the analysis." Personalized Media Communications v. Int'l
Trade Comm'n, 161 F.3d 696, 703, 48 USPQ2d 1880,
1886 (Fed. Cir. 1998).
From
a procedural standpoint, this presumption "imposes on [Raritan] the burden
of going forward with evidence to rebut . . . the presumption, but does not
shift to such party the burden of proof in the sense of the risk of nonpersuasion, which remains throughout the trial upon the
party on whom it was originally cast."
Fed. R. Evid. 301. Raritan can rebut this presumption "if
it demonstrates that the claim term fails to 'recite sufficiently definite
structure' or else recites a 'function without reciting sufficient structure
for performing that function.'" CCS
Fitness, 288 F.3d at 1369, 62 USPQ2d at 1665 (quoting Watts v. XL Sys.,
Inc., 232 F.3d 877, 880, 56 USPQ2d 1836, 1838 (Fed. Cir. 2000)). This burden must be met by a preponderance of
the evidence. A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1045, 22 USPQ2d 1321, 1332
(Fed. Cir. 1992) ("In civil cases litigants are generally required to
prove facts by a preponderance of the evidence.") If the party who must bring forth evidence
fails to proffer sufficient evidence to meet its burden, the presumption,
either for or against the application of § 112, ¶6, prevails.
This
presumption can collapse when a limitation lacking the term "means"
nonetheless relies on functional terms rather than structure or material to
describe performance of the claimed function.
Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1257,
52 USPQ2d 1258, 1263 (Fed. Cir. 1999).
Conversely, when a claim uses the term "means," the focus is
on whether the claim term recites no function corresponding to the means or
recites sufficient structure or material for performing that function. Rodime
PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302, 50 USPQ2d 1429, 1434 (Fed.
Cir. 1999).
"To
help determine whether a claim term recites sufficient structure, we examine
whether it has an understood meaning in the art." Watts, 232 F.3d
at 880-81, 56 USPQ2d at 1838. As an aid
in making this determination, this court inquires into whether the "term,
as the name for the structure, has a reasonably well understood meaning in the
art," keeping in mind that a claim term "need not call to mind a
single well-defined structure" to fall within the ambit of § 112,
¶ 6. Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583, 39
USPQ2d 1783, 1786 (Fed. Cir. 1996) (holding that "detent mechanism"
limitation was not a means-plus-function limitation). "[T]he fact that a
particular [claim term] is defined in functional terms is not sufficient to
convert a claim [limitation] into a 'means for performing a specified function'
within the meaning of 112(6)." Id.
As
an initial matter, none of the claim limitations asserted by Raritan to
be means-plus-function limitations contains the term "means," which,
as noted, is central to the analysis.
While the district court correctly acknowledged this fact and stated that
the limitations were presumed not to be means-plus-function limitations, it
nevertheless determined that all but two of the limitations were
means-plus-function limitations. In
doing so, the district court erred as a matter of law. The primary source of this error lies in the
district court's reliance on single words of the limitations, e.g.,
"circuit," as opposed to the limitations as a whole, e.g., "a
first interface circuit for receiving keyboard and cursor control device
signals from the workstation." See
United States v. Telectronics, Inc., 857 F.2d
778, 781, 8 USPQ2d 1217, 1220 (Fed. Cir. 1988) (holding that district court's
interpretation of the term "avoid" based on the dictionary definition
without regard to the rest of the limitation was error).
a. "circuit" limitations
The
"circuit" limitations are contained in the asserted claims of the
'096 and '264 patents as identified in section I, supra. Initially, all the claim limitations at issue
lack the term "means," accordingly, we presume that § 112 ¶ 6 does not
apply. CCS Fitness, 288 F.3d at
1369, 62 USPQ2d at 1664. We next must
determine whether Raritan has shown that the limitation, as understood by one
of ordinary skill in the art, demonstrates that the claim term fails to recite
sufficiently definite structure or else recites a function without reciting
sufficient structure for performing that function. Id.
In the absence of sufficient evidence, the presumption stands. Raritan failed to meet this evidentiary
burden.
The
threshold issue for all the limitations involving the term "circuit"
is whether the term itself connotes sufficient structure to one of ordinary
skill in the art to perform the functions identified by each limitation. The district court determined this term, by
itself, did not connote sufficient structure and prematurely ended its analysis
at this threshold issue. While we do not
find it necessary to hold that the term "circuit" by itself always
connotes sufficient structure, the term "circuit" with an appropriate
identifier such as "interface," "programming" and "logic,"
certainly identifies some structural meaning to one of ordinary skill in the
art.
The
term "circuit" is defined as "the combination of a number of
electrical devices and conductors that, when interconnected to form a
conducting path, fulfill some desired function." Dictionary of Computing, 75 (4th ed.
1996).[1]
In
light of this definition, it is clear that the term "circuit," by
itself connotes some structure. In the
absence of any more compelling evidence of the understanding of one of ordinary
skill in the art, the presumption that § 112, ¶ 6 does not apply is
determinative. Raritan's evidence
consisted of district court decisions addressing the meaning of the term
"circuit means" and Apex's description of the preferred embodiments
in the specification. We find that this
evidence is not sufficient to rebut the § 112, ¶ 6 presumption. This evidence fails to show by a
preponderance of the evidence that one of ordinary skill in the art believes
the term does not recite sufficiently definite structure.
Moreover,
claims are interpreted in light of the specification and with the knowledge of
one of ordinary skill in the art. Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582, 39 USPQ2d 1573, 1576-77 (Fed. Cir. 1996). The written description
discloses only the preferred embodiments of the various circuit limitations and
does not use these terms "in a manner clearly inconsistent with the
ordinary meaning" as
understood by one of ordinary skill in the art.
Tex. Digital, 308 F.3d at 1204, 64
USPQ2d at 1819 (stating if the specification uses the words in a manner clearly
inconsistent with the ordinary meaning of a dictionary definition, the
inconsistent dictionary definition must be rejected).
The
prosecution history also does not suggest that the ordinary meaning of the term
"circuit" does not apply.
Lastly, the expert testimony submitted by Raritan, including the
testimony of Drs. Hoff and Liaw shows only that the
term "circuit" is understood by one of ordinary skill in the art as a
very broad term and that one of the accused products included several of the
circuit elements.
Moreover, every use of the term in the asserted claims
includes additional adjectival qualifications further identifying sufficient
structure to perform the claimed functions to one of ordinary skill in the
art. See Personalized Media,
161 F.3d at 705, 48 USPQ2d at 1888 ("An adjectival qualification
('digital') placed on an otherwise sufficiently definite structure ('detector')
does not make the sufficiency of that structure any less sufficient for
purposes of § 112, ¶ 6.
Instead, it further narrows the scope of those structures covered by the
claim and makes the term more definite.").
The district court therefore erred in its interpretation of all the
limitations as means-plus-function limitations by failing to consider the
limitations as a whole.
While this court is plainly aware that claim construction is
a question of law, we decline to construe every claim limitation because the
record has not been sufficiently developed.
As is the case with other aspects of patent law, e.g. obviousness, a
proper determination of whether the claim limitations should be construed as
means-plus-function limitations requires an understanding of one of ordinary
skill in the art. In this situation, it
is appropriate to look to extrinsic evidence, including but not limited to
dictionaries and expert testimony to assist the trier
of fact in understanding the evidence. Greenberg,
91 F.3d at 1583, 39 USPQ at 1786. In
particular, the record should reflect the ordinary meaning of the claim
limitations, as a whole, and whether these limitations suggest sufficiently
definite structure to one of ordinary skill in the art. Despite this need for further development,
the record does contain sufficient evidence to address the "first
interface circuit" and "second interface circuit"
limitations.
The relevant definition of the
term "interface" is: "[t]he signal connection and associated
control circuits that are used to connect devices." Dictionary of Computing, 250 (4th ed.
1996). Moreover, an "interface
circuit" is defined as "a circuit that links one type of logic family
with another or with analog circuitry."
Rudolf F. Graf, Modern Dictionary of Electronics, 385 (7th
ed. 1999). This dictionary definition
specifically provides several examples of an interface circuit, including a
line driver and analog to digital converters.
Thus, the ordinary meaning of this term connotes specific structures to
one of ordinary skill in the art. The written
description and prosecution history provide no evidence that the inventors
intended the term "interface circuit" to have a meaning contrary to
this ordinary meaning. Raritan relies
solely on its arguments that the term "interface circuit" is a generic
term and that the written description, by only showing one embodiment, clearly
sets forth a limited definition of "interface circuit." We reject Raritan's classic attempt to limit
the scope of a claim limitation to the preferred embodiment. See Comark
Communications, Inc. v. Harris Corp., 156 F.3d 1182, 48 USPQ2d 1005 (Fed.
Cir. 1998).
Because Raritan has failed to rebut the presumption that
§ 112, ¶ 6 does not apply, we hold that the terms "first
interface circuit" and "second interface circuit" are not
means-plus-function limitations. The
term "interface circuit" means any circuit that links one type of
logic system with another.
The district court should conduct a similar analysis with
respect to the remaining "circuit," "interface," and
"unit" limitations. Upon
remand, the district court must determine the ordinary meaning of these
limitations and whether this ordinary meaning defines sufficiently definite
structure. Raritan has the burden of
going forward with evidence to prove that § 112, ¶ 6 applies. Raritan must prove by a preponderance of the
evidence that the limitations, as a whole, do not connote sufficiently definite
structure to one of ordinary skill in the art.
We decline to conduct this analysis for the district court because the
record is underdeveloped as to the ordinary meaning of these limitations as a
whole and construing the claims based on this limited record could be
prejudicial to the parties.
2. "Serial data packet"
The
district court interpreted the term "serial data packet" in the
claims of the '176 patent as "one that can, but need not, include both
keyboard and mouse signals." The district court determined that the
specification and Examiner's Reasons for Allowance of the '176 patent
"required" the serial data packet to be capable of including both
keyboard and mouse signals. The
Examiner's Reasons for Allowance stated:
The prior art of record does not teach nor fair [sic]
suggest the system arrangement as claimed with circuitry for creating serial
data packet from keyboard and mouse electronic signals, and crosspoint
switch for connecting keyboard/
mouse/video monitor from a number of workstations to plurality of remote
computer systems.
This
standard reason for allowance, however, states only that the prior art does not
teach or suggest the claimed system arrangement. This reason for allowance merely summarizes
the claimed invention and fails to specifically state that patentability
is based on the serial data packet including both keyboard and mouse
signals.
According
to claim 1, a serial data packet "includes the electronic
signals." The electronic signals
are produced by the keyboard and mouse.
A "data packet" is defined as "a unit of information
transmitted as a whole from one device to another on a network." Microsoft
Computer Dictionary, (4th ed. 1999).
This definition suggests that a data packet, contrary to the district
court's decision, need not be capable of including both keyboard and mouse
signals.
Moreover,
claims are interpreted in light of the written description and with the
knowledge and understanding of those of ordinary skill in the art. Vitronics,
90 F.3d at 1582, 39 USPQ2d at 1576-77.
Nothing in the written description suggests that a keyboard signal must
accompany a mouse signal. In fact, while
the district court interpreted "serial data packet" to require the
capability of including both keyboard and mouse signals, it recognized that the
packet could include only mouse or only keyboard signals. In other words, the district court recognized
that one of ordinary skill in the art would understand that a signal data
packet includes a mouse signal, a keyboard signal, or both. The prosecution history does not evidence a
need to depart from the ordinary meaning supported by the written description. Accordingly, the term should be given its
ordinary meaning. Inverness Med. Switz. Gmbh v. Princeton Biomeditech Corp., 309 F.3d 1365, 64 USPQ2d 1926 (Fed.
Cir. 2002). The ordinary meaning of
serial data packet is a unit of information transmitted as a whole from one
device to another on a network that includes a keyboard signal, a mouse signal,
or both. Therefore, we reverse the
district court's claim construction of the term "serial data packet."
3. Overlay/overlaid
The
district court interpreted the terms "overlay" and "overlaid
video signals" to "require the ability to place two separate images
(or video signals) on top of one another such that they would both be at the
same spot on the screen at the same time." (emphasis added). As support for this interpretation, the
district court relied on the prosecution history of the '842 patent, the parent
of the first patent in the priority chain of the patents. Specifically, the district court relied upon
the preamble of a claim in the Second Preliminary Amendment in the '193
application on January 14, 1997, which recited a "circuit for producing
video signals over video signals that are produced by a remote
computer." The district court held
"[w]ithout question, this indicates that Plaintiff understood that
'overlay' means having the ability to physically place one signal over
another."
Turning
first to the claim language, the plain language of the limitations do not
require display of two separate images at the same time. Instead, the language requires circuitry for
producing "overlay" or "overlaid" signals. Again, claims are to be interpreted in light
of the written description and with the knowledge and understanding of those of
ordinary skill in the art. Vitronics, 90 F.3d at 1582, 39 USPQ2d at
1576-77. The Microsoft Computer Dictionary cites
the definition of the term "overlay" as:
1. In computer graphics, to superimpose one
graphic image over another. 2. In video, to superimpose a graphic image
generated on a computer over video signals, either live or recorded.
This definition does not require
simultaneous display of two separate video images, as the district court
required.
The
written description supports the ordinary meaning by providing numerous methods
for displaying "overlaid" images in accordance with the present
invention. '176 patent, col. 12, l. 39 –
col. 13, l. 12. The prosecution history,
contrary to the district court's decision, does not limit the ordinary meaning
of the terms "overlay" and "overlaid." The district court looked to the prosecution
history and determined that language in the preamble of a preliminary amendment
of a grandparent application required a narrowed construction of the terms
"overlay" and "overlaid."
This single instance of "evidence" does not overcome the
presumption that claim language takes on its ordinary meaning.
In
short, nothing appears within the written description or the prosecution
history that limits the ordinary meaning of the terms "overlay" or
"overlaid" as the district court held. The terms "overlay" and
"overlaid" have their ordinary meanings, to superimpose one graphic
image over another. They do not require
the two images to be present on the same spot on the monitor at the same
time. Therefore, we reverse the district
court's claim construction of the term "serial data packet."
4. "Switch"
The
district court interpreted the term "switch" in as a device that
opens or closes a circuit to form a direct path between inputs and
outputs. The district court adopted this
narrow interpretation at the behest of Raritan, without explanation. In the art of networking, the ordinary
meaning of the term "switch" is "a device capable of forwarding
packets directly to the ports associated with particular network
addresses." Microsoft Computer
Dictionary, (4th ed. 1999). According to the written description of the patents in
suit, a signal conditioning unit receives mouse and keyboard signals from a
workstation. The signal conditioning
unit generates a serial data packet and sends
the mouse/keyboard packet to a central crosspoint
switch. The central crosspoint
switch routes the data packet to another signal conditioning unit coupled to
the remote server that decodes the mouse/keyboard
packet. '176 patent, col
1, ll. 54-64. The written description
discloses one embodiment of this "crosspoint switch" or
"programmable switch." Id. at col. 6, ll. 15-61. This switch includes a master CPU and a
number of input and output cards for transmitting and receiving signals. The written description does not limit the
term switch to a device that opens or closes a circuit to form a direct
path. Nothing was identified in the
prosecution history to suggest this direct path. Thus, properly construed, a
"programmable switch" or "crosspoint switch" is a
programmable device capable of forwarding packets from one
computer/workstation/server to another.
Therefore, we reverse the district court's claim construction of the
term "switch."
Lastly,
Raritan argues that even if the claim limitations are not found to be
means-plus-function limitations, the limitations are still limited to the only
embodiment disclosed in the written description. We disagree.
As support for its argument, Raritan states that "Apex has admitted
that the preferred embodiment of its patents is nothing more than the invention
itself." The record clearly shows
that Apex made no such "admission."
The evidence Raritan cites to, the trial testimony of one of the
inventors of the patents, Danny Lynn Beasley, instead suggests that the overall
concept of using an on-screen display in conjunction with KVM switches to
facilitate management of various servers or workstations from various computers
was believed to be novel. The testimony
in no way suggests that the particular embodiment described in the patents is
the entire invention.
Raritan
further attempts to limit the claims to the preferred embodiment by stating
that "since, the Apex patents do not teach any alternatives, the
patent-in-suit [sic] must therefore be limited to this one embodiment." This is not the law. While it is true that a court may limit the
meaning of a claim term if the patentee clearly set forth a definition of the
claim term in the written description, see e.g., Johnson Worldwide
Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 990,
50 USPQ2d 1065, 1068-69 (Fed. Cir. 1998), such is clearly not the case
here. The description of the preferred
embodiment is one particular example of the claimed invention that is
consistent with the ordinary meaning of the claim terms as we currently
understand them.
Claim
terms take on their ordinary and accustomed meanings unless the patentee
demonstrated an intent to deviate from the ordinary and accustomed meaning of a
claim term by redefining the term or by characterizing the invention in the
intrinsic evidence using words or expressions of manifest exclusion or
restriction, representing clear disavowal of claim scope.
Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1327, 63 USPQ2d
1374, 1382 (Fed. Cir. 2002) (emphasis added).
The written description contains no "words or expressions of
manifest exclusion or restriction, representing clear disavowal of claim
scope."
C. Infringement
The second step of the infringement analysis is comparing
the properly construed claims with the allegedly infringing devices. Cybor, 138 F.3d at 1467, 46 USPQ2d at 1184. This
comparison is a question of fact, id., that we review for clear
error. Ultra-Tex Surfaces, 204
F.3d at 1360, 53 USPQ2d at 1895.
In
light of its claim construction, the district court found that none of the
accused products infringe any of the asserted claims in the patents literally
or under the doctrine of equivalents.
The district court simply stated that there is no infringement of the
patents because "the accused devices do not, but must, embody every
element of any of the claims as properly interpreted." Based on the errors in claim interpretation
as discussed, and the further development of the evidence to determine the
ordinary meaning of a number of the disputed claim limitations, we vacate the
district court's infringement determination.
Upon remand, the district court should conduct an infringement analysis
consistent with the precedents of this court.
In particular, the district court should provide an analysis under both
literal infringement and infringement under the doctrine of equivalents. See Lear Siegler,
Inc. v. Sealy Mattress Co., 873 F.2d 1422, 1425, 10 USPQ2d 1767, 1770 (Fed.
Cir. 1989) (holding that infringement analysis under the doctrine of
equivalents requires a separate analysis from literal infringement –
"[t]he evidence and argument concerning the doctrine [of equivalents]
cannot merely be subsumed in plaintiff's case of literal infringement.").
III. CONCLUSION
Accordingly, we vacate the district court's grant of summary judgment of non-infringement and remand for further proceedings consistent with this opinion.
VACATED AND REMANDED
IV. COSTS
Costs to appellant.