The devil is in the details when it comes to claim construction, and courts need to use scalpel-like precision when they interpret claim terms. Sometimes we might forget that, but the Federal Circuit is always ready to remind us. These cases are 2 examples.
You’re the Top
In re Rehrig Pacific Co., No. 2011-1159 (Fed. Cir. Jan. 30, 2012) (Chief Judge Rader, Judges Prost and Moore) (nonprecedential)
Sometimes, Michael Scott, the loveable but management-challenged manager from “The Office” actually asks the $64,000 question:
“What is a pallet?” That’s what the Federal Circuit had to answer in this claim construction case. Or, put more specifically, how is a pallet different from a top frame?
Rehrig’s patent, which was in reexamination, claims pallet assemblies and top frame assemblies. To answer Michael’s question, pallets are moveable platforms on which a lot of boxes can be stacked and moved at once. They’re usually used with forklifts, and they look something like this:
Top frame assemblies, according to the patent, are “used to help stabilize the top of a shipment of objects in conjunction with a pallet at the bottom of the shipment.” Here’s an example of a top frame from the patent:
The dispute here is what “top frame” means in the patent. Rehrig argued that a top frame, in its ordinary meaning, doesn’t include the same structural elements as a pallet, like slots for forklift tines. The Board of Patent Appeals and Interferences (BPAI) acknowledged that a top frame is different from a pallet, but it didn’t agree that a top frame necessarily excludes those structural features. The BPAI said the top frame just has to be “capable of being used on top of a pallet of goods to stabilize them.” Based on this construction, the BPAI concluded that the patent claim at issue is anticipated by a German patent disclosing a pallet.
The Federal Circuit disagreed with the BPAI. Although the court didn’t go all the way to Rehrig’s side, it said that “capable of being used” was too broad. A top frame, according to the Federal Circuit, must be used on top of objects. The distinction between “capable of” and “must” might seem like a minor difference, but it was a big deal for Rehrig. Under the Federal Circuit’s construction, Rehrig’s patent claim is valid because the German patent’s pallet doesn’t have to be used on top of goods.
The Federal Circuit reversed the BPAI’s anticipation decision. Looks like it worked out in the end for Rehrig (much like Michael Scott’s Golden Ticket scheme.)
Here’s the Rehrig opinion, if you’d like to read the whole thing.
Thorner v. Sony Computer Entertainment America LLC, No. 2011-1114 (Fed. Cir. Feb. 1, 2012) (Chief Judge Rader, Judge Moore, and District Chief Judge Ann L. Aiken of the District of Oregon, sitting by designation)
Back in my day, video game controllers were simple, just a cross-shaped movement pad and a couple of buttons that guided your character as it jumped and shot things. RIP, 8-bit. Controllers these days are more complicated. They do all sorts of things, like vibrate when your car crashes in a racing game. These fancy controllers are the source of the fight in this patent infringement case.
Here’s the technical part, so stay with me. Thorner sued Sony for infringing its patent, which covers a “tactile feedback system for computer video games,” i.e., controllers that move or have some response a player can feel while playing a video game. The district court interpreted 2 key phrases in its claim construction order: “attached to [a] pad” and “a flexible pad.” The district court said that “flexible” means “capable of being noticeably flexed with ease,” and that “attached to [a] pad” means that the attaching has to occur only on the outside of the pad. The district court said that the patent implicitly redefined “attached.” The parties agreed that, under this claim construction, Sony’s controllers don’t infringe, and Thorner appealed to the Federal Circuit.
The Federal Circuit’s opinion mostly focused on the construction of “attached to [a] pad.” The patent used two different phrases—“attached to” and “embedded within”—in the patent claims. Thorner proposed that “embedded” is a narrower term that means connected inside, but “attached” can mean connected inside or outside. Sony argued that “attached to” means connected on the outside, and “embedded within” means connected on the inside. Did you follow that? (I wasn’t kidding when I said the devil is in the details!)
The court laid out the cardinal rule of claim construction: “The words of a claim are generally given 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.” But there are 2 exceptions to the general rule: (1) when a patent owner “acts as his own lexicographer” and provides his own definition, or (2) when a patent owner actively and clearly gives up the full meaning of the term in the specification or the prosecution history.
The court said the plain meaning of “attached” includes both an inside and an outside connection, as Thorner proposed. Then it looked for evidence of the exceptions. Even though the patent specification uses the word “attached” only when it refers to an outside connection, the court said this usage alone isn’t enough to meet either exception. As the law currently stands, there needs to be clear intent to alter the ordinary meaning of a word, and the district court’s conclusion that the patent implicitly changes the definition doesn’t cut it. The Federal Circuit didn’t find that clear intent in the patent or the prosecution history, so the court rejected the district court’s narrower interpretation and gave “attached to [a] pad” its plain meaning.
On the meaning of “flexible,” the Federal Circuit was rigid in its approach. The district court had said that “flexible” shouldn’t mean “capable of being flexed,” remarking that “A steel I-beam is capable of being of being flexed, but no one would call it ‘flexible.’” The Federal Circuit said, though, that the degree of flexibility is an infringement question, not a claim construction question. In terms of claim construction, the specification says only that a “flexible” pad is a “semi-rigid” structure, and that’s the only limitation. The Federal Circuit also rejected the district court’s construction of “flexible,” and sent the case back.
Looks like Sony’s warp-zone success at the district court didn’t get it past the final boss at the Federal Circuit level. I hope it saved some power-ups!
Feel free to read the Thorner opinion here.