Docket No. 2017-2357
REYNA, WALLACH, HUGHES
April 9, 2018
Brief summary: DC grant of SJ of noninfringement to MSFT et al. based on its construction of the claim term “remote” based in part on prosecution history estoppel affirmed.
Summary: Mr. Baker sued the Defendants (MSFT et al.) for infringement by the Xbox (MSFT) and Wii (Nintendo) systems of his US 5,486,001 describing “an instructional aid intended to provide users with feedback on their body movements relating to a given activity, such as golf swing.” The ‘001 claims require storage of “initial visual image signals representative of a particular movement at a first location” and “preferred image signals…at a second location remote from said first location in a data base of a computer”, regenerating further images, and “transmitting said regenerated signals from said computer at said remote second location to said first location”. These limitations were added during prosecution in response to an anticipation rejection, and the ‘001 claims were allowed after the amendments were made. The DC granted SJ of noninfringement to the Defendants based on these amendments. The FC panel explained that it applied the law of the regional circuit (Ninth), which reviews DC grants of SJ de novo, and that SJ “is appropriate when, viewing the evidence in the light most favorable to the nonmoving party, there is ‘no genuine dispute as to any material fact’” (FRCP 56(a); Zetwick, 9th Cir. 2017). Mr. Baker argued the DC erred in construing “‘remote’ to mean that the separate locations cannot be in the same room” (“requiring ‘more than physical separation in the same location’”). The DC found that the specification indicates “the image capturing device may either be ‘discrete’ from the signal transceiver, or the two components ‘may be one in the same’”, indicating “that the term ‘remote’ must require something more than mere physical separation.” The DC also “noted that during prosecution, Mr. Baker overcame” the prior art “and achieved patentability by adding the limitation of two separate locations to his pending claims” (he “disavowed the interpretation of ‘remote’ he now seeks to use when he amended [the claims]”). The FC panel agreed “Mr. Baker made these amendments to distinguish” the ‘001 claims and that he “clearly and unmistakably disavowed any portion of his claim scope” relating to having the computers in “a single location or a single computer-like device” as disclosed in the prior art (Computer Docking Station, FC 2008). The FC panel also agreed the “accused products do not literally infringe” (e.g., “the accused products only employ a single game console”) (Advanced Steel Recovery, FC 2015; Southwall, FC 1995), and that “prosecution history estoppel barred Mr. Baker from pursuing his infringement claim under the doctrine of equivalents”. The DC decision was therefore affirmed.