United States: District Court Erred In Its Claim Construction By Importing Limitations Unsupported By The Intrinsic Record

In In re Papst Licensing Digital Camera Patent Litigation, No. 14-1110 (Fed. Cir. Feb. 2, 2015), the Federal Circuit held that the district court erred in applying and elaborating on its claim constructions for five claim terms and vacated the district court's entry of SJ of noninfringement.

Papst Licensing GmbH & Co. KG ("Papst") owns U.S. Patent Nos. 6,470,399 ("the '399 patent") and 6,895,449 ("the '449 patent"), both titled "Flexible Interface for Communication Between a Host and an Analog I/O Device Connected to the Interface Regardless the Type of the I/O Device." The '399 and '449 patents have similar written descriptions and are directed to interface devices designed to facilitate the transfer of data between a host computer and connected data devices, such as digital cameras. The devices known at the time of invention had limitations in that they often required tradeoffs between data transfer and flexibility. The '399 and '449 patents overcame these limitations by employing an interface device that, when communicating with the host, would appear to be a type of device with which the host was already familiar (such as a hard drive) and for which it already possessed driver software. The interface device would then also translate the communications from the host device into a form understandable by the connected data device.

Papst asserted its patents against a variety of defendants who manufacture cameras. The district court construed the disputed claim terms in an initial claim construction order and then subsequently issued a modified claim construction order after additional briefing. The district court then ruled on eight motions for SJ, during which the court clarified some of its constructions, and in which the court treated the defendants as two distinct groups—one group consisted of Hewlett-Packard Co. and the other group consisted of all of the other defendants ("the Camera Manufacturers"). The district court entered findings of noninfringement for all defendants. Papst appealed the district court's rulings on the basis that five of the terms were construed incorrectly.

The Federal Circuit addressed each of the five claim terms in turn, after first noting that because the district court relied only on the intrinsic record, the review was de novo. The Federal Circuit agreed with Papst with regard to all five claim terms and vacated the judgment.

"As explained supra, the described advance over the prior art was the elimination of the need for special drivers to be placed on the host computer by instead having the host computer use a single, already-present, fast, reliable driver to communicate with the interface and, through it, with the data device, which need not be of a particular type. Nothing about that advance suggests exclusion of a permanent attachment of such an interface to the data device—a construction that is 'unmoored from, rather than aligned with' what is described as the invention's advance." Slip op. at 13 (quoting World Class Tech. Corp. v. Ormco Corp., 769 F.3d 1120, 1124 (Fed. Cir. 2014)).

The Federal Circuit first considered the term "interface device," found in the preamble of both the '399 and '449 patents, which the district court construed to be limited to "stand-alone devices" by noting that the data transmit/receive device must be a separate device from the claimed interface device. The district court clarified during the SJ proceedings that the interface device could not be a permanent part of either the data transmit device or the host device, or be permanently located within the housing of either of those devices under its construction. The Federal Circuit first rejected the Camera Manufacturers' argument that it should not reach this issue because the district court's SJ ruling did not depend on this construction. The Court disagreed, noting several instances in which the district court cited to and relied on the construction of "interface device" in reaching its SJ ruling. The Federal Circuit then held that "interface device" as used in the '399 and '449 patents was not limited to a "stand-alone device." The Court found that "[n]either the claim language nor the rest of the intrinsic record supports the district court's exclusion of a device that performs the required interface functions and is installed permanently inside the housing of a particular data device." Slip op. at 12. The Federal Circuit found the district court's reliance on separate claim language misplaced, noting that nothing in the claim language, written description, or prosecution history forbids a single instance of the claimed interface device being permanently attached to a particular data device.

The second claim term the Federal Circuit considered on appeal was "second connecting device," present in both patents, which the district court construed as meaning "a physical plug or socket for permitting a user readily to attach and detach the interface device with a plurality of dissimilar data transmit/receive devices." Id. at 15-16 (citation omitted). The district court again tied its construction of this claim term to its interpretation of interface device as being a stand-alone device. The Federal Circuit rejected this construction for the same reasons it rejected the first construction, noting that it saw "nothing to take that embodiment outside the reach of the usual rule that claims are generally not limited to features found in what the written description presents as mere embodiments, where the claim language is plainly broader." Id. at 16-17 (citing Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc)).

The third claim term considered by the Federal Circuit was "data transmit/receive device," which the district court construed as "a device that is capable of either (a) transmitting data to or (b) transmitting data to and receiving data from the host device when connected to the host device by the interface device." Id. at 17 (citation omitted). The Court rejected the district court's construction, finding that the data transmit/receive device need not be capable of communicating "when connected to the host device by the interface device." Id. at 19. The Court noted that the ordinary meaning of the claim term did not suggest a temporal constraint on the transferring data and that, to the extent some claim language may suggest such a restraint, the focus is on the communications between the interface device and the host computer, not between the data device and the host computer.

The fourth claim term considered by the Court was "virtual files" as used in the '399 patent, which the district court understood to be limited to files not physically stored on the interface device whose content is data originating from the data transmit/receive device. The district court similarly construed the phrase "simulating a virtual file system" in the '449 patent as "appearing to be a system of files, including a directory structure, that is not physically stored; rather, it is constructed or derived from existing data when its contents are requested by an application program so that it appears to exist as a system of files from the point of view of the host device." Id. at 21 (citation omitted). The primary question on appeal was whether the existing data from which the virtual files are constructed may already exist on the interface device when the host requests the virtual file. The Court found that "[n]othing in the claims or written description limits a 'virtual file' to one whose content is stored off the interface device, though it includes such files." Id. at 22. The Federal Circuit again turned to what the patent described as the advance over the prior art (using the host-native driver to obtain access to data) and reasoned that this advance did not depend on the specific physical memory units holding the data. Also, when considering the written description, the Court noted that while the examples described the organizational structure that the interface device conveys to the host, none mentions where the data physically reside.

The fifth term considered by the Federal Circuit was "input/output device customary in a host device" as used in the '399 patent, which the district court construed as a "data input/output device that was normally present within the chassis of most commercially available computers at the time of the invention." Id. at 25 (citation omitted). The Court also considered the term "storage device customary in a host device" as used in the '449 patent with the almost identical construction, except that the words "data input/output" are replaced with the word "storage." Id. (citation omitted). Though the Court found the claim language somewhat ambiguous, it found the written description was clear that the intended meaning of the claim language did not imply physical location within the computer chassis. Accordingly, the Federal Circuit found that the district court was incorrect in importing that limitation.

Accordingly, having overturned all five of the appealed claim constructions, the Federal Circuit vacated the district court's entry of final judgment and remanded for further proceedings.

Judges: Taranto (author), Schall, Chen

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

This article previously appeared in Last Month at the Federal Circuit, March 2015.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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