Convolve, Inc. et al. v. Compaq Computer Corp., et al.


Docket No. 2014-1732

DYK, TARANTO, HUGHES
February 10, 2016

Brief Summary: DC grant of SJ based on its construction of “user interface” affirmed; grant of SJ based on its construction of “controller” reversed; and finding “liability is precluded by intervening rights” (claims before and after reexamination) reversed.

Summary: This case was previously appealed (Convolve, FC 2013) and the FC reversed the DJ grant of SJ that the accused products did not met the “selected unwanted frequencies” limitation of US 6,314,473 relating to computer hard drives. This appeal results from the DJ’s grant of SJ that Seagate’s products do not meet the “user interface” limitation and Compaq’s computers do not meet the “commands” limitation. The opinion explains that in determining whether a patent is infringed, the court must first ‘determine[] the scope and meaning of the patent claims asserted,’ and then compare[] the claims ‘to the allegedly infringing devices’” (Ericsson, FC 2014; Grober, FC 2012). “[U]ser interface” was determined not to be “limited to a graphical user interface or mechanical switches, which were both disclosed in the specification” and concluded “[t]he plain meaning of ‘user interface’ requires a user”. The FC panel agreed, finding the specification to be consistent with that meaning. Convolve argued the prosecution history, the amendment of “graphical user interface” or “controller” to “user interface” “broadened the asserted claims to include Seagate’s hard drives” but the FC panel disagreed, finding “[t]he only evidence that these amendments were meant to encompass Seagate’s product is a declaration by one of the inventors submitted in this litigation” (“This post-hoc explanation is not enough to overcome the language of the claims and the disclosures in the specification.”) But the FC panel also found the DC erred in granting SJ that Compaq’s product does not meet the “commands” limitation, as the DC’s definition of the term “overlooks differences among the asserted claims” (e.g., “Claims 7, 8 and 10-14 do not plainly require the ‘user interface’ to perform the ‘outputting commands’ function”…“‘outputting commands’is part of the third step of a three-step claim and is not tied “to a particular processor or to the antecedent user interface”). Claims 9 and 15 are directed to an “apparatus comprising…a processor”. The FC panel explained that “[t]his court has ‘repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising’” (KCJ Corp. FC 2012) and that “exceptions to this rule are ‘extremely limited: a patentee must ‘evince [] a clear intent’ to limit ‘a’ or ‘an’ to ‘one’” (Baldwin, FC 2008). “[A]bsent a clear intent in the claims themselves, the specification, or the prosecution history, we interpret ‘a processor’ as ‘one or more processors.’” Claims 1, 3 and 5 claim a “[u]ser interface for operatively working with a processor” which the FC panel concluded “require[s] the user interface to work with a single processor in performing all of the claim steps” (“”[C]laim 1 recites ‘a processor’ in the preamble before recitation of ‘comprising,’ and the claim body uses the definite article ‘the’ to refer to the ‘processor’. This reference to ‘the processor,’ referring back to the ‘a processor’ recited in the preamble, supports a conclusion that the recited user interface is ‘operatively working with’ the same processor to perform all of the recited steps.”), and the prosecution history did not clearly disclaim the alternative. The issue of intervening rights relating to reexamination was also considered (“patentee…only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of the reexamined claims if the original and the reexamined claims are ‘substantially identical’” (R&L Carriers, FC 2015)). Under the Phillips (FC 2005) claim construction framework (plain language of the claims read in view of the specification and prosecution history), it was determined that “the addition of the word ‘seek’ did not alter the scope of the claims” (“the claims as originally drafted were limited to seek acoustic noise despite the lack of an express recitation in the claims”). The DC decision that “liability is precluded by intervening rights” was reversed.

This entry was posted in Claim Construction, Infringement, Preamble, Prosecution History Estoppel, Reexamination. Bookmark the permalink.

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