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Use of Negative Claim Construction is Unsound

The US Court of Appeals for the Federal Circuit vacated a district court’s noninfringement decision that was based on a negative claim construction and remanded with instructions for the district court to determine what affirmative claim construction should be adopted. Sound View Innovations, LLC v. Hulu, LLC, Case No. 21-1998 (Fed. Cir. May 11, 2022) (Prost, Mayer, Taranto, JJ.)

Sound View owns a now-expired patent directed to streaming multimedia information over public networks. Sound View asserted the patent against Hulu based on Hulu’s use of a central content server that’s connected to end users through intermediate edge servers. The asserted claim recites downloading streaming content from a buffer in a helper server to an end user while concurrently retrieving more streaming content from a content server. During claim construction, the district court construed the downloading/retrieving limitation to require using the same buffer, as opposed to two different buffers.

With that claim construction in hand, Hulu sought summary judgment that, in the edge servers of its content delivery networks, no single buffer hosts both the video portion downloaded to the client and the retrieved additional portion. In response, Sound View argued that a factual dispute remained about whether “caches” in the edge servers met the concurrency limitation as construed. The district court held, however, that a “cache” cannot be a “buffer,” and on that basis granted summary judgment of noninfringement. The district court also excluded Sound View’s expert testimony on reasonable royalty damages. Sound View appealed.

The Federal Circuit first reviewed construction of the downloading/retrieving limitation, which was reviewed de novo since the district court relied on only the intrinsic evidence. The Court first analyzed the claim, noting that its wording “reasonably suggests allocating a single buffer” and did not suggest additional buffers. When reviewing the specification, the Court found that it was not inconsistent with reading the claims requiring that the same buffer be used for both downloading and retrieving and observed that it disclosed an embodiment with only one buffer. The Court also reviewed the prosecution history, noting that the applicants added the limitation at issue to distinguish prior art and specifically emphasized the “concurrent[]” limitation. Thus, the Court affirmed the district court’s construction of the downloading/receiving limitation.

Turning to the noninfringement finding, the Federal Circuit rejected the district court’s finding that a “cache” was a different, distinct physical component when compared to a “buffer.” In particular, the Court took issue with this interpretation because it was a negative construction, and the district court never provided an affirmative construction to be used in the infringement analysis. The Court also found that the intrinsic evidence did not support determining that “buffers” and “caches” were mutually exclusive. The Court thus reversed and remanded for the district court to determine an affirmative construction of “buffer.”

The Federal Circuit next addressed the district court’s decision to exclude evidence from Sound View’s expert on reasonable royalty damages. First, the Court determined that the expert could not rely on a study performed in Sydney, Australia [...]

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Game Reset: Extrinsic Evidence Can’t Limit Claim Scope Beyond Scope Based on Unambiguous Intrinsic Evidence

The US Court of Appeals for the Federal Circuit reversed a district court’s grant of summary judgment of noninfringement after concluding that the district court erred by relying on expert testimony to construe a claim term in a manner not contemplated by the intrinsic evidence. Genuine Enabling Tech. LLC v. Nintendo Co., Ltd., et al., Case No. 20-2167 (Fed. Cir. Apr. 1, 2022) (Newman, Reyna, Stoll, JJ.)

Genuine owns a patent directed to a user interface device (UID) that, in the process of synchronizing and merging data streams into a combined data stream, directly receives microphone speech input and transmits speech output via a speaker. During prosecution, the inventor distinguished “slow varying” physiological response signals discussed in a prior art reference from the “signals containing audio or higher frequencies” in his invention, arguing that the latter posed a signal “collision” problem that his invention solved. In distinguishing the prior art, the inventor explained that his invention “describes, in its representative embodiments, how to combine the data from a UID (mouse) and from a high-frequency signal, via a framer, which is unique and novel.”

Genuine subsequently filed a lawsuit against Nintendo, accusing Nintendo’s Wii Remote, Wii Remote Plus, Nunchuk, WiiU GamePad, Switch Joy-Con Controller and Switch Pro Controller of infringing the patent. During claim construction, the parties asked the district court to construe the term “input signal.” Genuine proposed the construction of the disputed claim term to be “a signal having an audio or higher frequency,” whereas Nintendo proposed the narrower construction of “[a] signal containing audio or higher frequencies.” Relying on expert testimony, Nintendo also argued that the inventor “disclaimed signals that are 500 [Hz] or less . . . generated from positional change information, user selection information, physiological response information, and other slow-varying information.”

The district court found that the inventor’s arguments amounted to a disclaimer. Crediting Nintendo’s expert testimony, the district court construed “input signal” as “signals above 500 Hz and excluding signals generated from positional change information, user selection information, physiological response information, and other slow-varying information.” The district court subsequently granted summary judgment of noninfringement, finding that the accused controllers produced the types of slow-varying signals that the inventor had disclaimed during prosecution. Genuine appealed.

Genuine argued that the district court erred in construing “input signal” by improperly relying on extrinsic evidence and improperly finding that the inventor disclaimed certain claim scope during prosecution. The Federal Circuit agreed, reiterating that although extrinsic evidence can be helpful in claim construction, “the intrinsic record ‘must be considered and where clear must be followed,’” such that “where the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight.” In this case, although the parties agreed that the inventor had disavowed claim scope during prosecution, there was a dispute as to the scope of the disclaimer beyond signals below the audio frequency spectrum.

The Federal Circuit explained that for a statement made during prosecution to qualify as a disavowal of claim scope, it [...]

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Nailed It: Expert Must at Least Meet Ordinary Skill Level to Testify from POSITA Perspective

Addressing a US International Trade Commission (ITC) decision finding a § 337 violation as to one patent but no violation as to four other patents, the US Court of Appeals for the Federal Circuit reiterated that a technical expert must at least meet the level of ordinary skill in the art of the asserted patents to testify from the perspective of a person of ordinary skill in the art (POSITA), whether for claim construction, validity or infringement. Kyocera Senco Indus. Tools Inc. v. ITC, Case Nos. 20-1046, -2050 (Fed. Cir. Jan. 21, 2022) (Moore, C.J.; Dyk, Cunningham, JJ.)

In 2017, Kyocera filed a complaint at the ITC seeking a § 337 investigation based on infringement allegations for six patents directed to battery-powered gas spring nail guns. The investigation was assigned to the Chief Administrative Law Judge (ALJ), who, in the context of a Markman order, adopted Koki Holdings America Ltd.’s uncontested level of skill in the art as including “experience in powered nailer design.” After claim construction, Kyocera dropped one patent from the investigation and went forward with infringement under the doctrine of equivalents as the sole basis for violation for four other patents.

Prior to the evidentiary hearing, Koki moved to exclude Kyocera’s expert’s testimony due to their admission during deposition that they did not have the experience in powered nailer design required by the adopted level of ordinary skill in the art. The Chief ALJ held that the Federal Circuit’s decision in AquaTex Indus. v. Techniche Sols. expressly required that Kyocera’s expert’s testimony be excluded as to infringement under the doctrine of equivalents but permitted the expert to testify as to literal infringement on one patent and on claim construction. After the evidentiary hearing, the Chief ALJ issued an initial determination that relied, in part, on Kyocera’s expert to find a particular element satisfied on the one remaining patent where literal infringement was asserted, but ultimately found no infringement due to other claim limitations. The Chief ALJ’s noninfringement decision as to the one remaining patent was then overturned on review by the full ITC, which found a § 337 violation and issued a limited exclusion order.

Kyocera appealed the Chief ALJ’s exclusion of its expert’s testimony on doctrine of equivalents, and Koki cross-appealed on the Chief ALJ’s decision to allow Kyocera’s expert to testify as to literal infringement and claim construction. The Federal Circuit reversed the ITC’s decision, holding that it was error to permit any infringement testimony from Kyocera’s expert and explaining that a witness must at least have ordinary skill in the art to offer testimony from the perspective of a skilled artisan for claim construction, validity or infringement, whether literal or under the doctrine of equivalents.

Alexander Ott was a member of Koki’s ITC trial team and the Federal Circuit appeal team in this case.




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