Blackbird Tech LLC et al. v. ELB Electronics, Inc. et al.

Docket No. 2017-1703

July 16, 2018

Brief summary: DC decision of non-infringement based on its claim construction vacated and remanded because, e.g., the FC panel disagreed that the “fastener limitation should be imported into the claim”.

Summary: Blackbird appealed DC entry of judgment of non-infringement of claim 12 of Blackbird’s US 7,086,747 directed to energy efficient lighting apparatuses. The claimed apparatus has “a ballast cover, comprising: a housing having an attachment surface and an illumination surface…and a fastening mechanism for securing the attachment surface of the lighting apparatus to the illumination surface”. “The parties disputed…whether the attachment surface must be secured to the ballast cover”, as required by the DC’s construction. As the DC’s construction was based “solely on intrinsic evidence”, the FC panel reviewed it de novo (Poly-Am, FC 2016), giving “[t]he words…their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history” (Thorner, FC 2012). The FC panel concluded that “[b]y its plain language, claim 12 does not require the attachment surface to be secured to the ballast cover” and “expressly recites a fastening mechanism for securing the attachment surface to the illumination surface” but “does not require” it to “be secured to anything other than the illumination surface.” “[T]he specification”, the FC panel explained, “discloses an embodiment…that…describes a fastener that connects the ballast cover to the attachment surface” but disagreed with the DC “that this fastener limitation should be imported into the claim”. The FC panel also found “no suggestion in the specification or prosecution history that this fastener is important in any way that would merit reading it into claim 12” (“It…never refers to this run-of-the-mill fastener as the ‘present invention’ or ‘an essential element’ of uses any other language that would cause the ordinary skilled artisan to believe” it “is an important component of the invention that it is critical to the invention for any reason.” (Luminara Worldwide, FC 2016 (“we have found disavowel or disclaimer based on statements such as ‘the present includes’ or ‘the present invention’”); X2Y Attenuators, FC 2014 (“labeling an embodiment or element as ‘essential’ may constitute disavowel”); Fenner, FC 2015 (“We look at what an ordinarily skilled artisan would understand about claim scope from reading the prosecution history.”)). “To the contrary,” the FC panel explained, “the specification explains the embodiment in Figure 5 is exemplary and non-limiting.” The FC panel also disagreed with ELB that “the preamble…requires reading in the disclosed fastener for the claim to achieve its ‘retrofit’ function”, noting that while “[t]he apparatus disclosed in claim 12” (“an apparatus claim, not a method claim”) “is structurally incomplete as claimed” but that “[a]n apparatus claim is not required to include all elements necessary for the claimed structure’s installation.” Thus, the DC decision was vacated and remanded. Judge Reyna’s dissent argued that the DC correctly construed the claim because “[t]he plain language of claim 12, read in the context of the specification, implicitly requires that the attachment surface be secured to the ballast cover to achieve the retrofit function.”

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