Characterization as “Essential Element” Amounts to a Disavowal of Scope

by McDermott Will & Emery
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X2Y Attenuators, LLC v. International Trade Commission

Addressing the impact of an alleged disclaimer made in a patent on which asserted patents relied for priority, the U.S. Court of Appeals for the Federal Circuit affirmed a final determination of the U.S. International Trade Commission (ITC, the Commission) that respondent and intervenors did not violate 19 U.S.C. § 1337, finding that the ITC’s decision to limit the scope of the claim language based on disavowal in the specification of the patent was proper.  X2Y Attenuators, LLC v. International Trade Commission, Case No. 13-1340 (Fed. Cir., July 7, 2014) (Moore, J.) (Reyna, J., concurring).

X2Y Attenuators filed a complaint in the ITC accusing Intel of unlawful importation of products that infringed X2Y’s patents.  The patents related to structures for reducing electromagnetic interference in electrical circuits.  The patented inventions disclose shielding electrodes to reduce the undesirable buildup of charge, known as “parasitic capacitance,” between electrodes used for conduction.

At the ITC, the administrative law judge (ALJ) construed the disputed “electrode” terms as requiring “a common conductive pathway electrode positioned between paired electromagnetically opposite conductors.”  X2Y conceded non-infringement on the basis of this construction, and the ALJ found no violation.  The ITC agreed, and X2Y appealed.

X2Y argued that the ITC improperly read several functional and structural limitations into the meaning of the term “electrode.”  According to X2Y, under the plain meaning of the term “electrode,” the proper construction should simply be a single conductor.  However, the Federal Circuit agreed with the ITC that the standard for finding disavowal was met in this instance.

More specifically, X2Y argued that the asserted claims simply required a set of electrodes, but did not expressly indicate their relative configuration.  The Federal Circuit disagreed, noting that the patent specification stated that the “center common conductive pathway electrode” positioned between paired electromagnetically opposite conductors was not only “universal to all the embodiments” but also an “essential element along all embodiments or connotations of the invention.”  (Emphasis added.)  The Federal Circuit concluded that this characterization of the conductors constituted clear and unmistakable disavowal of claim scope.

X2Y further argued that disclaimers (if any) were inapplicable because they appeared only in priority patents to which the asserted patents were only related as continuations-in-part. The Federal Circuit rejected that argument, explaining that the “essential element” disavowal explicitly appeared in one of the asserted patents.  Moreover, the asserted patents incorporated by reference the priority patent—which included the disavowal.  Accordingly, the Federal Circuit held that the disclaimer of the incorporated patent was part of the asserted patents.  In light of the clear disavowal, the Federal Circuit affirmed the ITC’s construction of the disputed claim term.

In his concurring opinion, Judge Reyna agreed with majority that “the relevant intrinsic record contains sufficient clear and unmistakable disavowal of claim scope.”  However, he observed an “error in the claim construction approach adopted by the ALJ and the Commission.”  Specifically, he noted that the ALJ and the ITC “assumed a specific priority date that X2Y asserted as a defense to an invalidity challenge . . . [and] then determined that the scope of the asserted claims was limited by ‘the invention’ disclosed in earlier patents in the priority chain.”

According to Judge Reyna, “[t]his was [an] error because the asserted claims derive from multiple continuation-in-part applications, and because the ALJ and the Commission failed to objectively construe the asserted claims before deciding whether the claims were entitled to priority.”  However, he noted that the construction reached by the ALJ and the Commission was correct because X2Y agreed to treat all “electrode” terms consistently across the asserted patents.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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