St. Clair Intellectual Property Consultants, Inc. v. Canon, Inc.
Docket Nos. 2009-1052, 2010-1137, -1140
Jan. 10, 2011
DYK, MAYER, and MOORE (dissent)
Fuji appealed DC judgment that it infringed St. Clair’s patents relating to digital cameras. The FC held the DC erred in construing the claims and reversed. The argument centered on whether the phrase “plurality of different data formats for different types of computer apparatus” was limited to different computer architectures (e.g., IBM or Apple PCs (Fuji’s argument)) or if it also encompassed different computer applications (e.g., different operating systems that could run on multiple architectures). After a Markman hearing, the DC rejected Fuji’s proposed construction (which it would not infringe). Another argument related to whether still pictures and movies were covered (“plurality of different data formats”). The FC found that the claims referred to computer architecture, consistent with the description found throughout the specification (describes only a single invention meant to solve computer architecture problem) and prosecution history (citing Nystrom, FC 2005 (the consistent use of a claim term in the specification suggests that the scope of a claim is limited); Philips, FC 2005 (prosecution history)). It found this construction also consistent with the Examiner’s statements made during reexamination (E.I. DuPont, FC 1988; Gould, FC 1983) and earlier litigation regarding the same terms (which was considered by the Examiner). St. Clair argued that because it filed comments disagreeing with the Examiner’s Reasons for Allowance and the Examiner did not answer, the same should be given evidentiary weight, but the FC disagreed (Biogen, FC 2003 (“Failure by the examiner to respond to any statement commenting on reasons for allowance does not give rise to any implication.”)). Moore’s dissent argued that the panel’s conclusions “deviate from the plain meaning of these claim terms” and that the specification did not narrow any of those terms.