Papst Licensing GmbH v. FujiFilm Corp. et al.

Docket No. 2014-1110

February 2, 2015

Brief Summary: Five DC claim constructions were vacated as being unsupported by the claims per se, the specification and / or the file history.

Summary: Papst appealed five claim constructions supporting the DC grant to FujiFilm SJ of non-infringement of its patents (6,470,399 and 6,895,449) relating to an interface device for transferring data between an input/output device and a host computer. The decision was based on five claim term constructions, which the FC panel rejected in this opinion. It first held that the term “interface device” is not limited to a “stand-alone device” as determined by the DC because “[n]either the claim language[,] the intrinsic record”, the written description (DC construction “fundamentally mistakes what the description makes clear is the stated advance over the prior art”), or the prosecution history supports that conclusion. The DC construction of “second connecting device” was also rejected as it was based on “mere embodiments, where the claim language is plainly broader.” Construction of the preamble limitation “data transmit/receive device” was also rejected none of the claim language, specification or prosecution history required the limitation “when connected to the host device by the interface device”. Similarly, the FC panel found “[n]othing in the claims or written description limit[ing] a ‘virtual file’ to one whose content is stored off the interface device, though it includes some files” (“The point is reinforced by ‘[o]ther claims of the patent[s] in question’” (Phillips, FC 2005)). The construction of the term “input/output device customary in a host device” was also rejected as being unsupported by the specification “which clearly evinces the intended meaning-and meets even the standard for overriding a seemingly plain meaning of the claim language” (“The written description shows that the ‘in’ from ‘customary in’ does not imply physical location inside a computer chasis.”) Thus, the DC decision was vacated and remanded.

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