Docket No. 2016-1477, -1481
MOORE, WALLACH, STOLL
December 28, 2016
Brief Summary: DC claim construction affirmed because “NorthPeak unambiguously disclaimed a broader scope during reexamination.”
Summary: Northpeak appealed DC claim construction of terms of its (twice ex parte reexamined) US 4,977,577 relating to wireless warning systems (e.g., decentralized sensors located throughout a space such as fire alarms in an office) that led to its stipulations of non-infringement. The disputed terms include “register”, “[preamble/address/data] register”, “storing/stored”, and three means-plus-function terms. The “preamble” is not a claim preamble but a device that “acts to synchronize the transmitter with the receiver (or tell the receiver to turn on so that it can receive the signal).” Northpeak’s asserted claims “are largely directed to the circuitry of the transmitters that effects the spreading transmission” to the “receiver”. NorthPeak argued the DC misunderstood statements it made during reexamination and therefore incorrectly relied on a dictionary definintion of “register” as opposed to that NorthPeak proposed to the PTO in order to “capture NorthPeak’s arguments distinguishing certain types of memory found in the prior art.” It argued its proposed construction is the same the PTO adopted in the second reexamination and that its statemetns “were not unequivocal disavowels, such that they constituted a disclaimer of the full scope of the plain and ordinary meaning of ‘register’” (Omega Eng’g, FC 2003; Krippelz, FC 2012 (“[s]tatements made during reexamination procedures…are part of the prosecution history”)). However, the FC panel disagreed, finding that “although the [DC] primarily relied on prosecution disclaimer in reaching its construction, this case does not require invoking the prosecution disclaimer doctrine” (PH “may also simply ‘inform the meaning of the claim language by demonstrating how the inventor understood the invention” (Phillips, FC 2005; Shire Dev., FC 2015). It found, “contrary to NorthPeak’s unsubstantiated assertions, there is no hint in the term ‘register’ itself that would suggest the plain and ordinary meaning necessarily encompasses types of regular memory such as RAM or buffers”, “the only intrinsic evidence informing the plain and ordinary meaning of register comes from the prosecution history-including the definition NorthPeak itself provided during reexamination”, and “NorthPeak’s additional statements during the second reexamination [distinguishing the claims from the prior art] conclusively establish that the dictionary better conveys the inventors’ understanding of the plain and ordinary meaning”. Thus, it found “NorthPeak unambiguously disclaimed a broader scope during reexamination.” Since affirming any claim construction would be consistent with non-infringement, the FC panel did not address the other disputed terms.