Docket No. 2018-1076
LOURIE, LINN, TARANTO
February 8, 2019
Brief summary: DC judgment that Intel did not infringe CC’s asserted patents vacated and remanded due to DC’s erroneous claim construction (e.g., no clear disavowel of claim scope).
Summary: CC appealed DC judgment that Intel did not infringe CC’s US 7,501,582; 8,278,560; 8,581,105; and 9,374,912 (with substantially identical specifications (FN1)) relating to a “‘multilayer electrical device…having a tooth structure’ and methods for making the same.” The DC construed the claims to require that the ‘surface,’ ‘removal,’ or ‘etching’ of the dielectric material be ‘produced by a repeated desmear process’”, finding “that the specification not only ‘repeatedy distinguishe[d] the process covered by the patent from the prior art and its use of a ‘single desmear process’…but also characterized ‘the present invention’ as using a repeated desmear process”, “that the prosecution history corroborated its construction” (e.g., expert declaration submitted during prosecution “clearly describe[d] the patented method as involving two etching processes”), and “extrinsic documents produced by the inventors” that “were ‘not reliable enough to be dispositive,’ but…‘provide[d] helpful corroboration.’” Based on the DC’s claim construction, “the parties stipulated to noninfringement”. The FC panel explained that “[c]laim construction is ultimately a question of law that we review de novo” and that “[a]ny subsidiary factual findings based on extrinsic evidence ‘must be reviewed for clear error’” (Teva, US 2015). And claim terms are to be given “their ordinary and customary meaning, which is ‘the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention’” which can come from the claims, the specification, the prosecution history, “and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art” (Phillips, FC 2005 (citing Innova, FC 2004 and Vitronics, FC 1996) (e.g., “the claims do not stand alone”)). The FC panel agreed with Continental that the DC erred “in limiting the claims to require a repeated desmear process” because e.g., “based on the plain language, the claims are not limited to a repeated desmear process”, “none of the statements” of the specification “relied upon by the [DC] rises to the level of ‘a clear and unmistakable disclaimer’” (Thorner, FC 2012 (“patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain meaning”); CCS Fitness, FC 2002; Retractable Techs., FC 2011). It found that “[o]verall,” the statements in the specification “simply describe how to make the claimed invention using the preferred Probelec XB 7081 in a ‘new’ way that is different from the prior art process and are not statements clearly limiting the claimed ‘electrical device’ to require a repeated desmear process” (e.g., “phrases such as ‘one technique,’ ‘can be carried out,’ and ‘a way’…does not automatically lead to finding a clear disavowel” (Phillips; Liebel-Flarsheim, FC 2004 (inclusion of only a single embodiment does not mean the claims must be read restrictively); “[m]ere criticism of a particular embodiment…is not sufficient to rise to the level of clear disavowel” (Thorner); “the descriptions of ‘the present invention’…are not limiting here” (Verizon, FC 2007; Absolute Software, FC 2011); clear disavowel does not exist in the prosecution history; no statements “that the repeated desmear process is ‘an essential part’ of the claimed electrical device” (Andersen, FC 2007)). The DC decision was therefore vacated and remanded.