Interpreting a claim preamble and related statements made during prosecution, the U.S. Court of Appeals for the Federal Circuit affirmed a district courts summary judgment that the defendants did not infringe a patent directed to a portable microprocessor system. Computer Docking Station Corp. v. Dell, Inc., Case Nos. 07-1169, -1316 (Fed. Cir., March 21, 2008) (Rader, J.)
Computer Docking Station (CDS), a subsidiary of patent company Acacia Research, filed suit against computer companies Dell, Gateway, Toshiba America and Toshiba America Information Systems in the U.S. District Court for the Western District of Wisconsin for infringement of U.S. Patent No. 5,187,645 (the 645 patent). The 645 patent is directed to a portable microprocessor system for business applications. The system includes the ability to connect peripheral devicessuch as a keyboard, mouse or monitorthrough either individual connectors for each device or through a docking connector. The specification of the 645 patent adds that a keyboard and visual display are "options available with the system," explaining that they may be coupled to the system using individual connectors and thumbscrews. At issue in the case was the claim terms "portable computer," "portable computer microprocessing system" and a "single connector for making all connections from the microprocessor to said specific computer peripheral devices."
In response to a rejection during prosecution, CDS made statements distinguishing its invention from a laptop computer with a built-in monitor and keyboard. After reviewing the prosecution history, the district court construed the preamble claim terms "portable computer" and "portable computer microprocessing system" to be limiting and to exclude computers with built-in displays or keyboards. The district court determined that CDS had disavowed an interpretation of "portable computer" that would encompass a computer with a built-in display or keyboard. The district court also denied the defendants motion for attorneys fees and costs under 35 U.S.C. § 285.
On appeal, the Federal Circuit affirmed the district courts decision, holding that a patentee may limit the meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution. The Court also noted that the specification of the 645 patent does not provide an express definition of "portable computer" that would override or make the distinctions in the prosecution history ambiguous. The Court explained that although the terms "portable computer" and "portable computer microprocessing system" are only used in the preambles of the claims, the terms clearly recite a necessary and defining aspect of the invention and as a result, limit the scope of the asserted claims.
Finally, in response to the defendants motion for attorneys fees and costs, the Federal Circuit affirmed the district courts finding that this case is not exceptional. The Federal Circuit held that CDSs disavowal of laptops did not seem self-evident at the beginning of the claim construction analysis and CDS had put forth sufficient effort to evaluate the likelihood of success on its patent claims.
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