Docket Nos. 2013-1459
REYNA, MAYER (d), CHEN
November 5, 2014
Brief Summary: DC decision that Tri-County lacked standing because its exclusive license was effectively an assignment affirmed. The decision was reversed with respect to the DC claim construction (“‘heavy presumption’ that claim terms ‘carry their accustomed meaning in the relevant community at the relevant time…has not been overcome here.”)
Summary: Azure and Tri-County Excelsior Foundation sued CSR for infringement of US 7,756,129 relating to a network for wireless communications between a central hub device and peripheral devices in close proximity therewith. The DC granted a motion to dismiss Tri-County for lack of standing because it had effectively assigned the patent to Azure. The FC panel affirmed this decision because in an exclusive license agreement it “reserved no right to have control over, to veto, or to be notified of any of Azure’s licensing or litigation activities” (a “key factor” in determining whether all, or substantially all patent rights have been transferred (Aspex, FC 2006); “[I]t is clear that Azure is holding all the strings…the Agreement constitutes an effective assignment.”) In addition, Tri-County’s retained non-exclusive right to make, sell, and use patented products did not confer standing on it because “a nonexclusive license confers no standing on the licensee because the licensee does not have a legally protected interest conferred by the Patent Act” (Fieldturn, FC 2004; Propat, FC 2007). The DC also construed the term “MAC address” as “a device identifier generated by the hub device” because the patentee acted as his own lexicographer in the specification. Azure stipulated to a judgment of noninfringement in view of this construction and appealed the decision. The FC opinion explained that “[t]here is a ‘heavy presumption’ that claim terms ‘carry their accustomed meaning in the relevant community at the relevant time’” (Home Diagnostics, FC 2004) which “has not been overcome here.” The customary meaning was evidenced by “[i]ndustry literature and dictionaries at the time of invention” and the claims used the term “consistently with the well-understood industry meaning”. The FC panel found the “single, cursory use of ‘Media Access (MAC) address’-dropping the word ‘Control’-the specification did not re-coin an established term of art by redefining it to have a narrower definition than the traditional MAC address” (the patentee did not “clearly set forth a definition of the disputed term…with ‘reasonable clarity, deliberateness, and precision sufficient to narrow the definition of the claim term” (CCS Fitness, FC 2002; Abbott, FC 2003)). It also found nothing in the specification or the prosecution history to support a definition other than the industry standard (no “attempt to distinguish over prior art for lacking a hub-generated MAC address”). The judgment of noninfringement was therefore vacated and remanded. Judge Mayer dissented from the claim construction opinion, arguing that “[t]he specification…repeatedly and unambiguously indicates the term” is as defined by the DC (“The specification typically provides ‘the primary guide to claim interpretation.” ArcelorMittal, FC 2012; Retractable Techs., FC 2011 (“Claim language must always be read in view of the written description.”)).