EPOS Technologies Ltd. et al. v. Pegasus Technologies Ltd. et al.

Docket No. 2013-1330

September 5, 2014

Brief Summary: DC claim constructions vacated because definitions improperly imported limitations from preferred embodiments and the DOE analysis was only a “shortcut”.

Summary: Pegasus appealed DC grant of SJ of noninfringement of is patents relating to digital pens and receiver devices based on claim construction of “drawing implement”, “given time interval”, “marking implement” and “temporary attachment”. The DC construed a “drawing implement” to be “a conventional writing utensil that can be used alone or together with the invention”. But the FC panel concluded that “the correct construction should exclude the word ‘conventional’” because “[t]he claims do not state [it] must be conventional”, “the specifications expressly disclose a variety of drawing implements” and “[t]he district court erred by importing the word ‘conventional’ from preferred embodiments” (Liebel-Flarsheim (FC 2004)). The DC constructed “given time interval” as “fixed at a few seconds or less” because “all evidence suggests there must be some upper-bound to the interval”. The FC panel disagreed, however, because “the intrinsic evidence does not limit” as defined by the DC (“the district court erroneously imported a limitation from a preferred embodiment”, Liebel-Flarsheim). The DC defined “marking implement” to be “an implement that has a marker tip (and not a pen tip).” But the FC panel disagreed, finding “[n]othing in the…patent limits” the “marking limit” as defined by the DC since “the specification interchangeably refers to ‘marking implement’ as a ‘marker’[,]…as a ‘pen’”, and as a “pen tip”. The DC construed “temporary attachment” as “an element that can be removed from the device’s ‘retrofittable apparatus’” (for, e.g., attaching the device to a whiteboard). The FC panel again concluded that the DC definition “reads out preferred embodiments” (citing Anchor Wall Sys., FC 2003). Pegasus also appealed the grant of SJ of noninfringement of one of its patents under DOE. However, the FC concluded that the DC “shortcut” the DOE inquiry by devoting “only two sentences to its decision” which reasoned “that allowing continuous ultrasound signals to be equivalents [to “intermittent”] would eliminate the intermittent limitation entirely”. A proper analysis requires the court to “ask whether an asserted equivalent is an ‘insubstantial difference’ from the claimed element, or whether it matches the ‘function, way, and result of the claimed element” (Deere, FC 2012). Thus, the DC constructions and the DOE decision were vacated. 

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