Brief Summary: DC claim construction of the term “mountable” and grant of SJ for noninfringment affirmed.
Summary: Profectus appealed DC claim construction order and finding of non-infringement of its US 6,975,308 claiming “a mountable picture frame adapted to digitally display at least one still image thereon”. The DC construed “mountable” to mean “having a feature for mounting” (“must have some intrinsic mounting feature-not just a feature that could potentially render the frame or display capable of being mounted” but not requiring that it “include all components needed to mount the frame or display”), noting that “the parties did not dispute that a mounting feature is not a preferred embodiment”. Profectus argued to the DC and in this appeal that the correct meaning of “mountable” in the claims is “capable of being mounted”, pointing to dependent claims reciting a “wall mountable display” whereby mounting occurs through the frame, not the display itself; a dictionary definition of “-able” (“capable of, fit or worthy of”); an argument that the DC definition excludes preferred embodiments; and that its definition “comports with the plain and ordinary meaning” (Thorner, FC 2012). The FC panel agreed with the DC’s definition when the claims are properly construed (“we first look to the actual words of the claims and then read them in view of the specification” (Phillips, FC 2005)). It concluded “[t]he term ‘mountable’ is a modifying word in the claims” which do not include “words that embrace broader meaning, such as ‘capable of,’ ‘adapted to,’ or ‘configured to’” (“The claim language is tailored to, characterizes, and delimits the claimed ‘picture frame’ and ‘picture display.’”) It found the DC definition to be confirmed by “every embodiment” in the specification and “no reason to depart from the intrinsic record” (e.g., dictionary definition (Cambrian Sci., FC 2015)). It also explained that in Thorner (FC 2012) “imported an erroneous term of degree” which did not happen here. The FC panel also concluded that under this construction, SJ of noninfringement was appropriate and Judge Moore dissented on this point (evidence was not viewed in the light most favorable to Profectus as required for SJ).