United States: During Claim Construction, Neither Importing Limitations From Nor Reading Out A Preferred Embodiment Is Proper

In EPOS Technologies Ltd. v. Pegasus Technologies Ltd., No. 13-1330 (Fed. Cir. Sept. 5, 2014), the Federal Circuit vacated the district court's constructions of four claim terms and the district court's SJ of noninfringement under the DOE. The Federal Circuit also reversed the district court's SJ of noninfringement for certain of the patents-in-suit and remanded to the district court.

EPOS Technologies Ltd. ("EPOS") filed suit against Pegasus Technologies Ltd. ("Pegasus"), seeking DJ of noninfringement of U.S. Patent Nos. 6,326,565 ("the '565 patent"); 6,392,330 ("the '330 patent"); 6,724,371 ("the '371 patent"); and 6,841,742 ("the '742 patent"). Pegasus counterclaimed for infringement of U.S. Patent Nos. 6,266,051 ("the '051 patent") and 6,501,461 ("the '461 patent"). The patents relate to pens that digitize writing and devices for retrofitting writing surfaces so that writing can be digitally captured. After claim construction, EPOS moved for SJ of invalidity and noninfringement. The district court granted the motion as to noninfringement and declined to address invalidity. Pegasus appealed the district court's construction of four claim terms and SJ of noninfringement.

On appeal, the Federal Circuit held that the district court erroneously imported limitations from preferred embodiments into the construction of two claim terms and misconstrued the other two terms to exclude preferred embodiments. The Court explained that "it is improper to read limitations from a preferred embodiment described in the specification—even if it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited." Slip op. at 4 (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004)). On the other hand, the Court explained, "[a] claim construction that excludes a preferred embodiment . . . is rarely, if ever correct and would require highly persuasive evidentiary support." Id. at 14 (quoting Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1308 (Fed. Cir. 2003)). In each of the four instances discussed below, the Court concluded that the district court committed one error or the other.

Turning to the district court's construction of "drawing implement" as "a conventional writing utensil that can be used alone or together with the invention," the Federal Circuit explained that in the '565 and '742 patents, the disclosed embodiments all included conventional writing implements. Id. at 7 (citation omitted). The Court further explained, however, that the claims themselves only stated that the "drawing implement" must have at least a body and an operative tip, not that the "drawing implement" must be conventional. Thus, the Court concluded that the district court erred by importing the limitation "conventional" from the preferred embodiments into its construction of the term "drawing implement."

The Federal Circuit next turned to the district court's construction of the term "given time interval." The district court, while noting that the claims of the '565 and '742 patents do not recite time interval limits, nevertheless construed "given time interval" as "fixed at a few seconds or less." Id. at 8 (citation omitted). The district court further found that all evidence suggested that there must be an upper bound to the interval. The Federal Circuit found, however, that the '565 and '742 patents described their embodiments as only "preferably" or "typically" using lower-bound time intervals. Thus, the Court concluded that the district court imported limitations from the preferred embodiments. The Court also considered EPOS's arguments directed to its construction and its indefiniteness arguments, but found none to be persuasive.

The Court then turned to the term "marking implement," which the district court construed to mean "an implement that has a marker tip (and not a pen tip)." Id. at 11 (citation omitted). The Federal Circuit found that "[n]othing in the '461 patent limits a 'marking implement' to an implement with 'a marker tip (and not a pen tip).'" Id. The Court noted that the '461 patent referred to the "marking implement" interchangeably as a "marker" and a "pen," referred to the marking implement's tip as a "pen tip," and disclosed that the marking implement could be an eraser. Id. The Court inferred from these disclosures that the patentee intended a broad definition for "marking implement." Thus, the Court concluded that the district court's construction excluded a preferred embodiment.

Finally, the Federal Circuit turned to the district court's construction of "temporary attachment" as "an element that can be removed from the device's 'retrofittable apparatus.'" Id. at 14 (citation omitted). The Court explained that, "[o]n its face, claim 1 requires that the 'temporary attachment' is an element of the 'retrofittable apparatus.' So the 'temporary attachment' is not something that can be removed from the retrofittable apparatus." Id. Further, the Court clarified, the '051 patent specification disclosed preferred embodiments where the temporary attachment was "affixed to" the retrofittable apparatus or "associated therewith." Id. at 14-15 (citations omitted). Thus, the Court concluded that the district court's construction was incorrect because it excluded preferred embodiments.

Addressing the entry of SJ of noninfringement of the '371 patent under the DOE, the Federal Circuit noted that the district court provided only two sentences for its reasoning that continuous ultrasound signals are not equivalent to "intermittent" signals, as claimed in the '371 patent. Accordingly, the Court concluded that the district court improperly shortcutted the function-way-result inquiry and vacated the district court's grant of SJ so that the district court could consider the issue on remand.

Accordingly, the Court vacated the district court's constructions of the four claim terms and the district court's grant of SJ of noninfringement under the DOE. The Court also reversed the district court's SJ of noninfringement of the '565, '742, '461, and '051 patents, and remanded for further proceedings.

Judges: Hughes (author), Bryson

[Appealed from D.D.C., Judge Nickerson]

This article previously appeared in Last Month at the Federal Circuit, October 2014

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