Docket No. 2015-1071, 2015-1105
MOORE, REYNA, TARANTO
October 29, 2015
Brief Summary: DC decision of non-infringment affirmed based on claim construction. Arguments invoking the doctrine of claim differentiation were not persuasive. DC decision of no invalidity for anticipation or obviousness reversed due to erroneous claim construction (required “context-based interpretation”).
Summary: Atlas appealed DC non-infringement ruling regarding its US 5,371,734 claiming a protocol for controlling wireless network communications between a hub and remotes. Medtronic cross-appealed DC finding of no invalidity for anticipation or obviousness. Atlas alleged the way certain components of Medtronic’s cardiac defibrillators and insulin pumps communicate with each other infringe the ‘734 claims (although only claim 21 is at issue on appeal). The FC opinion first explained that the question of whether it has jurisdication is determined on the basis of “[o]ur own law, rather than regional-circuit law” because “[w]e apply our own law to issues unique to patent law” (Midwest Indus., FC 1999). Since the DC dismissed “all pending counterclaims without prejudice, after fully adjudicating some of the claims”, the decision was final and the FC concluded it has jurisdiction under § 1295(a)(1). The grant of SJ was reviewed de novo, as were the claim construction rulings since “there are no underlying factual issues”. The judgment of non-infringement was affirmed because the FC panel agreed with the DC that “the information must be sent before the remotes transmit” (“To fulfull the core claimed function of power saving, each remote must know when its receiver and transmitter can be off and must be on, which naturally, perhaps necessarily, calls for scheduling information to arrive before any remote transmissions begin.”) This conclusion was reached after considering the meaning of the terms “establishing” and “transmitting” in view of the specification, a dictionary definition of “establish”, and its context in the claims. Atlas’s arguments based on the doctrine of claim differentiation were not persuasive because “[t]he claims invoked do not at all suggest any notion of establishing as mere initiating” and “each of the invoked claims contains language that, under Atlas’s arguments, avoids a conclusion of superfluousness”. In addition, citing World Class Tech. (FC 2014) and Kraft (FC 2000), the panel explained the court has “been cautious in assessing the force of claim differentiation…discounting it where it is invoked based on independent claims rather than the relation of an independent and a dependent claim, and not permitting it to override the strong evidence of meaning supplied by the specification.” However, the panel reversed the DC decision of no anticipation or obviousness because it was based on erroneous claim construction regarding the “communication cycles” in claim clause [b], finding the construction “ambiguous on its face” (“The claim language does not have the decisive plain meaning the district court found, and contextual considerations point compellingly the other way…The need for context-based interpretation is confirmed by the imprecisions about plurals and conjunctions found in claim language other than claims [b].”)