Docket Nos. 2013-1340
MOORE, REYNA, WALLACH
July 7, 2014
Brief Summary: ITC claim construction affirmed based on disavowel in specification that disputed limitation is “an essential element”.
Summary: X2Y appealed ITC final determination that Intel did not violate 19 USC § 1337 (unfair practices in import trade) because its products are not covered by X2Y’s US Pat. Nos. 7,609,500; 7,916,444 and 8,023,241 regarding structures for reducing electromagnetic interference in electrical circuits. The ITC resolved the claim construction dispute for Intel (and, therefore, the infringement decision), finding the “electrode” claim terms were limited to a “sandwich configuration” (“an arrangement of three electrodes in which a center conductor is flanked by paird differential, or oppositely charged, conductors”). The construction was based on “specification disavowel-for example, the statement in the ‘500 patent that the sandwich configuration is ‘an essential element among all embodiments or connotations of the invention’” and “a statement incorporated by reference into the ’444 patent that this configuration is a ‘feature universal to all the embodiments’”. X2Y argued in this appeal “that the ITC improperly read several functional and structural limitations into the meaning of the term ‘electrode’”, “improperly relied on the alleged disclaimers in some of the priority patents in some of the priority patents because the asserted patents are only related” as CIPs, and that there was no disavowel. The FC panel agreed with the ITC, finding “[t]he standard for finding disavowel, while exacting, was met in this case” since “labeling an embodiment or an element as ‘essential’ may rise to the level of disavowel” (citing GE Lighting (FC 2014) and Teleflex (FC 2002)). The opinion explained that the argument regarding CIPs is “without merit on the facts of this case” because the asserted ‘500 patent includes the “‘essential element’ disavowel” and the ‘444 patent incorporates by reference another patent which includes the same disavowel (“The incorporated patents are ‘effectively part of the host [patents] as if [they] were explicitly contained therein.” Telemac, FC 2001, MPEP § 608.01(p) (6th ed. 1996)). The opinion also noted that “a clear and unmistakable disavowel in an incorporated patent” may not be relevant “when placed in the context of the disclosure of the host patent” (not so in this case). As X2Y conceded noninfringement based on the ITC construction, the FC panel did not consider the other issues. Judge Reyna concurred with the decision but wrote that “the ALJ and the Commission failed to objectively construe the asserted claims before deciding whether the claims were entitled to priority” (“While the scope of the claims may be limited by statements in the specification of the patent, it does not follow that claims of a continuation-in-part patent are necessarily limited by the specification of a patent to which the continuation-in-part claims priority…it is erroneous to assume…that disclaimers of scope necessarily apply across patents” and “entitlement to priority is decided on a claim-by-claim basis”).