Docket No. 2013-1528
REYNA, WALLACH, TARANTO
April 24, 2015
Brief Summary: DC claim construction of the term “transmit” reversed as being limited to a preferred embodiment.
Summary: Info-Hold appealed DC decision that AMTC does not infringe US 5,991,374 relating to systems, apparatuses, and methods for playing music and messages such as advertisements using telephones (e.g., music that plays while callers are on hold) and public speaker systems and a remote server. The ‘374 was reexamined (ex parte) and reexamined claim 7 described as representative. The litigation had been stayed during the reexamination. During the reexamination proceeding, Info-Hold separately sued Muzak LLC in the same court with the same judge presiding. Info-Hold and AMTC agreed to be bound by the claim construction findings of the Muzak case. The DC construed the terms “when a caller is placed on hold”, “transmit”, “message playback device”, “operable to generate and transmit control signals to it” in a way favorable to AMTC. Info-Hold and AMTC then filed a joint stipulation of noninfringement. The FC opinion first explained that the DC’s evaluation of the intrinsic record is reviewed de novo and extrinsic evidence for clear error, while “[t]he ultimate construction of the claim is a legal question and, therefore, is reviewed de novo” (Teva, US 2015). The DC had relied on a patent cited in the ‘374 Notice of Allowability which the FC panel noted did not “call[] for clear-error review” (NOA is intrinsic evidence); thus, all of the constructions were review de novo. The opinion began by reversing the DC construction of the term “transmit” as being limited to a preferred embodiment (Enzo, FC 2010; Liebel-Flarsheim, FC 2004 (expressly rejecting “the contention that if a patent describes only a single embodiment, the claims…must be construed as being limited to that embodiment”; Tex. Digital Sys., Inc., FC 2002 (presumption favoring ordinary meaning will be overcome b the inventor’s use of words that represent “a clear disavowel of claim scope”); unlike Bell Atl. Networs Servs., FC 2001 (patentee may define a term “by implication” where term used throughout the specification in a way that was consistent with only one meaning) and Wang Labs., FC 1999 (only one possible meaning)). Construction of “message playback device” was also reversed as it depends on construction of “transmit”. The court also declined to adopt a different construction of “when a caller is placed on hold” from that rendered in the Muzak case since the parties agreed to be bound by it.
Federal Circuit summaries 