Espresso Yourself: When Prosecution History as a Whole Doesn’t Demonstrate Clear, Unmistakable Disclaimer

By on January 4, 2024
Posted In Patents

The US Court of Appeals for the Federal Circuit reversed and remanded a district court’s claim construction and related summary judgment rulings after determining that the district court erred in construing a claim term by improperly limiting the plain and ordinary meaning of the term. K-fee System GmbH v. Nespresso USA, Inc., Case No. 22-2042 (Fed. Cir. Dec. 26, 2023) (Taranto, Clevenger, Stoll, JJ.)

K-fee filed a lawsuit against Nespresso alleging infringement of three K-fee patents directed toward coffee machine portion capsules that use a barcode. The district court issued a claim construction order construing the term “barcode,” which was present in every asserted claim. In the claim construction order, the district court characterized the dispute as “whether statements made by K-fee System GmbH . . . before the EPO [European Patent Office] concerning the meaning of ‘barcode’ should influence the plain and ordinary meaning of that limitation in these proceedings.”

In the EPO, Nespresso’s foreign affiliate had challenged the validity of K-fee’s related European patent, and K-fee had responded seeking to distinguish a particular piece of prior art (Jarisch/D1). Because the statements made to the EPO were submitted to the US Patent & Trademark Office during prosecution of the asserted patents, the district court analyzed the statements as part of the intrinsic record. The district court concluded that K-fee had “argued strenuously before the EPO for a particular ‘plain and ordinary meaning,’ which excluded ‘bit codes’—codes made up of two binary symbols.” Based on the EPO submissions, the district court construed the claim term “barcode” to:

its plain and ordinary meaning (i.e., a code having bars of variable width, which includes the lines and gaps), the scope of which is understood by the clear and unequivocal statements K-fee made to the EPO (i.e., the scope of barcode does not include the type of bit code disclosed in Jarisch/D1).

Based on that construction of “barcode,” Nespresso moved for summary judgment of noninfringement. It argued that its accused products operated identically to Jarisch capsules, which K-fee distinguished before the EPO, since both use a machine-readable code with only two binary symbols. The district court agreed. When applying its construction at summary judgment, the district court clarified that using “the type of bit code disclosed in Jarisch” … means “a binary code containing only ‘0s’ and ‘1s.’” Thus, the district court read K-fee’s EPO statements “to mean that a barcode must ‘contain more than only two binary symbols’ and, by extension, that any code that contains only two binary symbols could not be a barcode.” Because the court found that “there was no dispute that Nespresso’s accused products used a code having only two symbols,” it granted Nespresso’s motion for summary judgment of noninfringement. K-fee appealed.

Considering the issue de novo, the Federal Circuit reviewed K-fee’s statements to the EPO in context and disagreed “that the ordinary meaning of ‘barcode’ excludes ‘bit codes’ (in some sense, two-value codes) or even bit codes of ‘the type . . . disclosed in Jarisch’ to the extent that the latter is different.” This was because, looking at the whole of K-fee’s statements to the EPO, “K-fee’s remarks all suggest that K-fee understood the relationship between barcodes and bit codes to be more complex than simply that bit codes cannot be barcodes.” For example, K-fee stated in the same EPO submission that “while the barcode is a ‘bit code,’ it is also a ‘special case’ and therefore represents a subset of the ‘bit code.’” The Court also pointed to K-fee’s example to the EPO of retail barcodes that it stated fell within the claim based on the code’s presentation of bars of visually varying widths, which was “consistent with K-fee’s explicit representation to the EPO that ‘the [relevant artisan] at all times defines the term “barcode” as a line code constructed of bars having variable widths.’” The Court concluded that “a relevant artisan identifies a barcode by appearance and not by other criteria such as a particular encoding of data of the sort reflected in the district court’s claim construction,” and “would understand ‘barcode’ to refer to line-code messages, displaying bars, that are characterized by the varying-width visual appearance of the bars in the messages.”

The Federal Circuit further determined that K-fee did not surrender the scope of the “barcode” claim term, concluding that “K-fee did not act with the clarity required either to prescribe a new meaning for ‘barcode’ or to disclaim any portion of the apparent meaning.” First, the Court disagreed with Nespresso’s argument that K-fee acted as its own lexicographer. Second, the Court disagreed with Nespresso’s argument that K-fee made “repeated, unequivocal, and unambiguous” statements to the EPO sufficient to support disclaimer, citing authority that disclaimer or disavowal of claim scope “must be both clear and unmistakable,” and that even if one statement may suggest subject matter disclaimer, the prosecution history as a whole may demonstrate that the patentee committed no clear and unmistakable disclaimer. The Court concluded that “Jarisch was distinguished not through any clear disavowal of claim scope, but because it was never within the scope of the claim.”

Accordingly, the Federal Circuit held that the full scope of the ordinary meaning of “barcode” should apply, reversed the district court’s claim construction of “barcode” and its related summary judgment determination, and remanded for further proceedings.

Katherine Pappas
Katherine (Kathy) Pappas focuses her practice on intellectual property matters, particularly in patent litigation within the life sciences sector. Kathy handles matters involving a large variety of technologies, ranging from mechanical inventions (e.g., microfluidic devices; injector pens) to pharmaceutical litigation under the Hatch-Waxman Act. Read Katherine Pappas's full bio.