Docket No. 2013-1267
RADER, MOORE, REYNA (concur/dissent in part)
May 1, 2014
Brief Summary: DC grant of SJ of noninfringement affirmed-in-part, reversed-in-part and remanded because “[n]othing in the intrinsic record requires a departure from [the] plain and ordinary meaning” of the claims (no new lexicography or disavowel) and DC error in importing limitations of dependent claims into the independent claims.
Summary: GE appealed DC grant of SJ to AgiLight that its accused light-emitting diode (LED) string lights do not infringe four of GE’s patents; the FC affirmed the decision as to four of the patent and reversed it as to one. The patents relate to the use of an insulation displacement connector (IDC) that provides power to the LED. The DC found that while IDCs are “commonly used in electrical engineering to connote a range of devices”, two of the patents “were limited to a ‘more specialized IDC connector’” but the FC disagreed (“[n]othing in the intrinsic record requires a departure from [the] plain and ordinary meaning…the specification and prosecution history only compel departure from the plain meaning in two instances: lexicography and disavowel” (citing Phillips, FC 2005; Thorner, FC 2012; SciMed Life Sys., FC 2001 (clearly set forth a definition of the disputed claim term”, “clearly express an intent to define the term”, “specification [or prosecution history] makes clear that the invention does not include a particular feature”); Saunders Grp., FC 2007 (A patent that discloses only one embodiment is not necessarily limited to that embodiment)). It also found the DC erred by importing limitations of dependent claims into the independent claims (citing Liebel-Flarsheim, FC 2004). The opinion also determined that the DC erred in requiring the “entire inner profile” of the light element to be “substantially ellipsoidal”. The FC concluded that there was a genuine factual dispute as to whether AgiLight’s product included “a portion of the inner profile” that is “substantially ellipsoidal” and the grant of SJ on this basis was reversed. AgiLight’s proposed alternative basis for affirming SJ with respect to the “generally spherical outer profile” was rejected based on expert testimony. Judge Rader disagreed with this part of the opinion, in part because “[t]he specification says the depicted inner profile [in Figure 7] is ‘ellipsoidal’ when the full profile clearly is not” and “this flaw” as settled “in favor of the patentee by parsing the claimed profiles to any portion thereof”. Judge Rader explained “[w]hile…express ambiguity in a patent document that affects the scope of the clsims should typically be resolved in favor of the public over the patentee, the ambiguity here is most directly resolved from the amendments and remarks made by the patentee during prosecution.” The DC also granted SJ of non-infringement because the AgiLight lens lacks the “opening” required by the definition of “annular gasket”. The FC panel agreed with this definition as “consistent with the plain and ordinary meaning” and therefore affirmed the decision on this point.