Docket No. 2016-1306, -1307, -1309, -1310, -1311
MOORE, WALLACH, CHEN
March 3, 2017
Brief Summary: DC claim construction modified due to prosecution history disclaimer, and decision vacated and remanded. Disclaimer not found where arguments were made to the court but not the PTO.
Summary: Technology Properties (TP) appealed DC decision regarding US 5,809,336 related to a microprocessor with a variable frequency system clock connected to a central processing unit (CPU) and a fixed frequency clock connected to the input/output (I/O) interface. The parties stipulated to non-infringement based on the DC’s construction of “an entire oscillator disposed upon said integrated circuit substrate” as “an oscillator located entirely on the same semiconductor substrate as the central processing unit that does not require a control signal and whose frequency is not fixed by any external crystal.” The parties disagreed with the second part of the construction beginning with “that does not require a control signal….” Huwai argued that “the second half of the construction is proper because the patentee disclaimed certain claim scope during prosecution to overcome rejections based on” the prior art. The DC found several such statements “constituted disclaimers” (by, e.g., “distinguishing their ‘present invention’” from the prior art, leaving “no doubt that, unlike ‘all cited references,’ the claimed oscillator is completely free of inputs and extra components”, and “distinguished Sheets repeatedly”). The FC panel opinion explained that “[p]rosecution disclaimer can arise both claim amendments and arguments” and must be “both clear and unmistakable to one of ordinary skill in the art” (Biogen, FC 2013; Elbex, FC 2007; MIT, FC 2016) and that claim construction is reviewed “de novo except for subsidiary fact findings, which we review for clear error” (Teva, US 2015). Regarding disclaimer with respect to the Magar reference, the FC panel opinion noted that TP “presented clear and concise arguments about the distinctions” therefrom to the FC but not the PTO and affirmed the DC’s determination regarding the “entire oscillator” (“Had those same arguments been made to the Patent Office, our construction may have been different because the patentee likely disclaimed more than was necessary to overcome the examiner’s rejection…The question is what a person of ordinary skill would understand the patentee to have disclaimed during prosecution, not what a person of ordinary skill would think the patentee need to disclaims during prosecution.” Norian, FC 2005; Fantasy Sports, FC 2002). And it modified the DC’s construction of “that does not require a control signal” to “one ‘that does not require a command input to change the clock frequency” because “the patentee disclaimed a particular use of a command signal” in distinguishing the Sheets reference during prosecution but that “[n]one of these statements disclaim an entire oscillator receiving a command input for any purpose.” It noted that “this minor modification to the [DC’s] construction likely does not affect the outcome in this case” but nonetheless wrote that “the proper course of action is for us to vacate and remand.”