Intrinsic Feature in All Described Embodiments Makes Claim Insurmountable **WEB ONLY**

McDermott Will & Emery

McDermott Will & Emery

Addressing issues of claim construction, the US Court of Appeals for the Federal Circuit affirmed a district court, finding that that no reasonable juror could find infringement where none of the accused products contained features that met the disputed claim limitation. Profectus Technology LLC v. Huawei Technologies Co., Ltd., Case Nos. 15-1016; -1018; -1019 (Fed. Cir., May 26, 2016) (Reyna, J) (Moore, J, dissenting).

The patent owner sued manufactures and sellers of tablet computer devices for infringement of patent claims directed to a mountable digital picture frame for displaying digital images. The disputed claim language of the asserted independent claims included “[a] stand alone and mountable picture display for displaying still digital pictures,” and “a mountable picture frame adapted to digitally display at least one still image thereon.” Relying on a general dictionary definition, the plaintiff asked for the plain and ordinary meaning of “mountable,” which the plaintiff asserted only requires something that is “capable of being mounted.” The defendant proposed a construction that would require “a support for affixing on a wall.” Adopting neither party’s proposal, the district court instead construed the term to mean “having a feature designed for mounting,” and found that the picture frame or display must have some intrinsic mounting feature—not just a feature that could potentially render the frame or display capable of being mounted. Finding that the accused products lacked an intrinsic mounting feature, the district court granted summary judgment of no infringement. The patent owner appealed.

The Federal Circuit affirmed the district court’s claim construction, and a majority affirmed the grant of summary judgment. The Federal Circuit found that the plaintiff’s argument for “plain and ordinary meaning,” supported by dictionary definitions, could not overcome the intrinsic evidence where every disclosed embodiment of the claimed picture display or frame in the specification includes an intrinsic feature for mounting the device to a wall or on a tabletop. The panel majority also rejected the patent owner’s assertion that genuine issues of material fact precluded a finding of summary judgment. Specifically, the patent owner argued that a jury should be permitted to consider whether the general size, shape, lightweight nature and thinness of the accused devices are features for mounting. Plaintiff also argued that communication or charging ports of the devices intended to be used with a docking station are features for mounting.

Regarding the ports, the Federal Circuit found that just because an external component can utilize ports intended primarily for power, data and communication to help prop up an accused device does not convert the port into an inherent feature for mounting. The Court explained that while the accused devices are capable of “mounting” by exploiting the communication ports and being easy to prop up because of their size and weight, those characteristics do not make the accused devices “mountable” as claimed, and the infringement issue does not rise to the level of a factual dispute. The Court also found that if the accused devices remained upright, it is only because the docking stations created an environment to prevent the otherwise featureless devices from toppling over.

The dissent would not have affirmed summary judgment. According to Judge Moore, the record evidence, when viewed in the light most favorable to the plaintiff, raised a genuine dispute over whether the communication ports are a feature for mounting. In support, she explained that the construction does not require having a feature that is exclusively for mounting, that the manufacturers’ intended purpose of the ports’ design should not affect the infringement analysis, and that the specification expressly contemplates the use of additional parts to achieve mounting, which may implicate the alleged role of the docking stations. In her opinion, the facts raised by the patent owner should be presented to a jury.


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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