Docket No. 2016-2324
PROST, CHEN, HUGHES
November 22, 2017
Brief summary: DC claim construction and finding of no infringement by Apple affirmed.
Summary: Rembrandt appealed DC grant of SJ of noninfringement by Apple’s “mobile products” (iPhone, iPad, and iTouch) of US 6,185,679 relating to “techniques for securely initializing, or ‘bootstrapping,’ a computer system.” The FC panel opinion explains that “Apple’s noninfringement arguments hinge on whether the claimed recovery step must be performed automatically without human interaction, as Apple argues” (and the DC agreed), “or whether there is not such a requirement, as Rembrandt argues.” The DC concluded the ‘679 specification “clearly limited” manual recovery “to instances when several attempts at automatic recovery have failed”, “Apple’s recovery process did not solve the same problem purported to be solved by the ‘678 patent”, and making “Apple’s recovery procedure…equivalent to automatic recovery…would vitiate the automatic limitation”.
The FC panel explained that it reviews a grant of SJ under the law of the regional circuit (Classen, FC 2015), here the Ninth Circuit which reviews such decision de novo “in the light most favorable to the opposing party” (Matsushita, US 1986). Claim constructions based solely on intrinsic evidence, as here, are reviewed de novo for clear error (Teva, FC 2015), and “begin with the words of the claims themselves…read in view of the specification” (Virtnex, FC 2014; Phillips, FC 1995; Markman, FC 1995; Vitronics, FC 1996 (“specification….‘is the single best guide to the meaning of a disputed term”)). The FC panel agreed with the DC construction of the term based on the specification and its decision to disregard Rembrandt’s contrary expert testimony. Regarding the specification, the FC panel noted that the ‘679 specification (abstract, field of the invention, Summary of the Invention and Detailed Description of the Preferred Embodiment) “repeatedly characterizes the recovery process of the ‘present invention’ as being ‘automated’” (Verizon, FC 2007 (“when a patent ‘describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention”); Honeywell, FC 2006), “reinforced by its criticism of prior art recovery methods that involved human intervention” (Poly-America, FC 2016 (“an inventor may disavow claims lacking a particular feature when the specification distinguishes or disparages prior art based on the absence of that feature”) that is not “[m]ere criticism of a particular embodiment encompassed in the plain meaning of a claim term” (Thorner, FC 2012) (Straight Path IP, FC 2015 (“surrender claim scope…may be implicit, as long as it is sufficiently clear”)) Thus, “[t]he exclusion of non-automated recovery processes is inextricably interwoven into descriptions of the primary purposes of the invention and how the invention overcomes problems in the prior art.”
On infringement, the FC panel agreed with the DC that Apple’s products do not infringe the claims literally as those products require user-initiated recovery (Akzo Nobel, FC 2016) or under DOE since “the concept of equivalency cannot embrace a structure that is specifically excluded” and “fails if it ‘renders a claim limitation inconsequential or ineffective’” (Dolly, FC 1994; Ethicon, FC 1998; Akzo Nobel, FC 2016; Power Integrations, FC 2016). The FC panel explained that “Rembrandt cannot recapture under the doctrine of equivalents what the specification clearly gives up” (J&M Corp., FC 2001; Augme Techs., FC 2014).