Dennis Crouch's Patently-O: In re Papst Licensing: Federal Circuit Speaks on Claim Construction |  |
| In re Papst Licensing: Federal Circuit Speaks on Claim Construction Posted: 03 Feb 2015 10:53 AM PST By Jason Rantanen In re Papst Licensing Digital Camera Patent Litigation (Fed. Cir. 2015) (Download In re Papst) In its first precedential opinion addressing claim construction after Teva v. Sandoz, a panel of Judges Taranto, Schall and Chen take the approach that it is business at usual for the court—at least, as long as only intrinsic evidence is involved. The most significant aspect of this opinion is the relationship between this appeal and Teva. Here, the district court heard from the parties’ experts on the technical background, but “declined to admit expert testimony or to rely on an expert declaration from Papst, stating that ‘the intrinsic evidence—the claims, the specification, and the prosecution history—provide the full record necessary for claims construction.” Slip Op. at 7. Given this posture, the Federal Circuit comfortably applied a de novo standard of review. From the opinion: We review the grant of summary judgment of noninfringement de novo, applying the same standard used by the district court. See Bender v. Dudas, 490 F.3d 1361, 1366 (Fed. Cir. 2007). The infringement inquiry, which asks if an accused device contains every claim limitation or its equivalent, Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997), depends on the proper construction of the claims. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). In this case, we review the district court's claim constructions de novo, because intrinsic evidence fully determines the proper constructions. See Teva Pharm. U.S.A. Inc. v. Sandoz, Inc., 135 S. Ct. 831, 840–42 (2015). As we have noted, the district court relied only on the intrinsic record, not on any testimony about skilled artisans' understandings of claim terms in the relevant field, and neither party challenges that approach. Slip Op. at 8. Operating within this framework, the court drew upon its “familiar approach to claim construction”: "We generally give words of a claim their ordinary meaning in the context of the claim and the whole patent document; the specification particularly, but also the prosecution history, informs the determination of claim meaning in context, including by resolving ambiguities; and even if the meaning is plain on the face of the claim language, the patentee can, by acting with sufficient clarity, disclaim such a plain meaning or prescribe a special definition."…We apply, in particular, the principle that "[t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Slip Op. at 9-10 (internal citations omitted). Using that approach, the Federal Circuit reversed all of the district court’s claim constructions at issue. While this appeal appears to involve Teva‘s paradigmatic scenario in which de novo review is appropriate, future appeals are less likely to offer such a relatively simple posture. Rather, the expectation is that district judges will seek to insulate themselves from review by relying upon evidence that the Supreme Court said is due deferential review. This increasing reliance on extrinsic evidence by district courts will result in appeals that intertwine the intrinsic with the extrinic. That said, the above sections of the opinion suggest to me that the court is probably going to focus its review on the intrinsic evidence first and, if that is clear, will decide the appeal on that ground alone. There’s another layer of complexity going on here that relates to the starting meaning* of words. In Teva, the Court observed that: Construction of written instruments often presents a “question solely of law,” at least when the words in those instruments are “used in their ordinary meaning.”…But sometimes, say when a written instrument uses "technical words or phrases not commonly understood," id., at 292, those words may give rise to a factual dispute. If so, extrinsic evidence may help to "establish a usage of trade or locality." []. And in that circumstance, the "determination of the matter of fact" will "preced[e]" the "function of construction."…This factual determination, like all other factual determinations, must be reviewed for clear error. Teva v. Sandoz at 5-6 (internal citations omitted). A tension that emerges from this passage is the tension between “ordinary meaning” and “technical words or phrases not commonly understood.” The latter, the Court’s opinion states, may be due deference; but when “ordinary meaning” is involved, it is a “question solely of law.” Here, the claim construction did require some discussion of the ordinary meaning of words. At issue was the meaning of the claim term “virtual files,” which the district court construed as meaning "files that appear to be but are not physically stored; rather, they are constructed or derived from existing data when their contents are requested by an application program so that they appear to exist as files from the point of view of the host device." Slip Op. at 21. This construction, in the district court’s eyes, limited “the "virtual files" of the "virtual file system" to files "not physically stored on the interface device," whose content is data "originating from the data transmit/receive device." Id. In reversing the district court’s construction, the Federal Circuit began with its —not the district court’s—ordinary meaning. “‘Virtual’ conveys some kind of as if action, one thing emulating another; the term was prominently used that way in the computer field at the time of the inventions here. See CardSoft v. Verifone, Inc., 769 F.3d 1114, 1117–18 (Fed. Cir. 2014) (discussing Java Virtual Machine in patent dating to 1998).” Slip Op. at 22. With this meaning as the starting point, the CAFC concluded that the patent identifies this emulation as not turning “on whether data in a ‘virtual file’ is physically located in the interface device or a data device when the host seeks it.” Id. The district court, however, relied on a different source for its starting meaning: The 1993 New IEEE Dictionary defined the term similarly to the construction proposed by the Camera Manufacturers. In the context of a "virtual record," "virtual" was defined as: "a record that appears to be but is not physically stored; rather, it is constructed or derived from existing data when its contents are requested by an application program….The Court adopts the definition from the New IEEE Dictionary as the most clear and pertinent…." In re Papst Licensing GmbH & Co. KG Litig., 670 F. Supp. 2d 16, 60 (D.D.C. 2009). It’s unclear why the Federal Circuit didn’t address the district judge’s choice of starting meaning, substituting its own with no explanation of why. It’s also not clear to me that the different starting point really matters for the ultimate issue of whether the claim term excludes files stored on the interface device. But this kind of dispute, where a district judge relied on an extrinsic source for its starting point when construing a claim term, seems to be one that parties will try to make hay with in future appeals on claim construction. *I’m using “starting meaning” to refer to the meaning that the party construing the claim term begins with; it may or may not be the “ordinary meaning.” For some words, that may be our individual “mental lexicons,” as Kristen Osenga has described ; for other words, those meanings may come about when we look up the word in a dictionary. For court opinions on claim constructions, the court will sometimes, but not always, state what it’s using as the starting meaning for a term. Here, the Federal Circuit started with its meaning from the cited case, while the district court began from the point of the IEEE dictionary and the OED.  |
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