The opinion of the court was delivered by: Savage, J.
In this patent infringement action, SIPCO, LLC and Advanced Sensor Technology, Inc. (collectively, "SIPCO")allege that the defendants The Toro Company, JLH Labs, LLC and Jason Hill (collectively, "Toro") infringed United States Patent No. 7,103,511 ("'511 patent"), entitled "Wireless Communication Networks for Providing Remote Monitoring of Devices" by themanufacture, distribution and sale of Toro's Turf Guard System used to monitor golf greens and fairways. Toro insists that its system does not incorporate all the elements of the '511 Patent.
As is typical in a patent case, the parties disagree on the meaning of several terms in the patent claims. Accordingly, pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996), the claims language must be construed.
Patent infringement analysis proceeds in two steps: first, the meaning of the claim language is construed; and second, the accused product or process is viewed in light of the construed claims. The patent claims, which delineate the metes and bounds of the exclusive rights claimed by the patent applicant, are found in the patent specification,*fn1 which is one element of a patent application. 37 C.F.R. § 1.77.
In this case, there are three categories of claims construction: (1) language about which there is no dispute because the parties agree upon the construction; (2) language that is not really disputed but one of the parties seeks to add additional language for clarification purposes; and (3) claims that the parties dispute.
Central to the dispute is the prosecution history. Toro contends that positions taken by the patentee before the Patent and Trademark Office ("PTO") and the Board of Patent Appeals and Interferences ("Board") contradict and are inconsistent with positions taken by SIPCO now. Thus, the claims construction will turn, in part, on the significance of the prosecution history.
Claim construction is a matter for judicial determination. Markman, 517 U.S. at 372. The analysis begins and remains focused on the language of the claims themselves because that is what the inventor used to describe his invention. Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (citing 35 U.S.C. § 112, ¶ 2).
Claim language is generally given its "ordinary and customary meaning." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Patents are "addressed to and intended to be read by" those skilled in the field of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005), cert. denied, 546 U.S. 1170 (2006) (citations omitted). Thus, a term's "ordinary and customary meaning" is what it would be to a "person of ordinary skill in the art in question at the time of the invention." Id. (citing Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). See also Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F. 3d 1366, 1371 (Fed. Cir. 2007) ("Claim terms are entitled to a 'heavy presumption' that they carry their ordinary and customary meaning to those skilled in the art in light of the claim term's usage in the patent specification.").
Claim terms should be construed to preserve their validity. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1356 (Fed. Cir. 1999) (citations omitted). The context in which a term is used in the claim can be "highly instructive." Phillips, 415 F.3d at 1314.The words surrounding a disputed term may help suggest whether a proposed construction is redundant or incorrect. Additionally, the use of a term in other claims of the patent is informative because terms are normally used consistently throughout the patent. Id.
The Federal Circuit has emphasized the importance of the specification in claim construction. See id. at 1315. "[C]laims must be read in view of the specification, of which they are a part." Markman, 52 F.3d at 979 (citations omitted). The specification's written description of the invention "must be clear and complete enough to enable those of ordinary skill in the art to make and use it." Vitronics, 90 F.3d at 1582. Indeed, the specification is the "'single best guide to the meaning of a disputed term.'" Phillips, 415 F.3d at 1315 (quoting Vitronics, 90 F.3d at 1582).
However, if during prosecution before the PTO a patent applicant has argued a limitation of the scope of a claim (usually with the purpose of overcoming prior art), the ordinary and customary meaning of a claim term may not apply. Vitronics, 90 F.3d at 1582-83. Although the prosecution history often lacks the clarity of the specification and thus is less useful for claim construction purposes . . . . the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.
Phillips, 415 F.3d at 1317 (citations omitted). Accordingly, the court examines "the patent's prosecution history, when placed in evidence, to determine whether the inventor disclaimed a particular interpretation of a claim term during the prosecution of the patent." Ventana Medical Systems, Inc. v. Biogenex Labs., 473 F.3d 1173, 1182 (Fed. Cir. 2006).
Where the patentee has unequivocally disavowed a certain meaning to obtain his patent, the doctrine of prosecution disclaimer prevents it from later expanding the scope of the invention. 800 Adept, Inc. v. Murex Secs., Ltd., 539 F.3d 1354, 1364 (Fed. Cir. 2008) (citing Omega Eng'g v. Raytek Corp., 334 F.3d 1314,1324-25 (Fed. Cir. 2003)).*fn2 When applied, prosecution disclaimer narrows the ordinary meaning of the claim congruent with the scope of the surrender. Id.; N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1345 (Fed. Cir. 2005) (to overcome an obviousness rejection, applicant distinguished his invention based on prior art disclosing "slightly concave" inner walls; the "inescapable consequence of such an argument is that the scope of applicant's claims cannot cover inner walls that are 'slightly concave'"); Seachange Int'l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1372-73 (Fed. Cir. 2005) ("Where an applicant argues that a claim possesses a feature in order to overcome a prior art rejection, the argument may serve to narrow the scope of otherwise broad claim language.").
Conversely, the doctrine is not applied where the alleged disavowal of claim scope is ambiguous or vague. See N. Telecom Ltd. v. Samsung Electrs. Co., Ltd., 215 F.3d 1281, 1295 (Fed. Cir. 2000) (where the inventors' statements were amenable to multiple reasonable interpretations, court deemed the remarks too ambiguous to apply doctrine); Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1347 (Fed. Cir. 2001) (refusing to limit the ordinary meaning of the claim because the alleged disclaimer in the file wrapper was at best "inconclusive"); Schwing GmbH v. Putzmeister Aktiengesellschaft, 305 F.3d 1318, 1324 (Fed. Cir. 2002) (Prosecution history "cannot be used to limit the scope of a claim unless the applicant took a position before the PTO that would lead a competitor to believe that the applicant had disavowed coverage of the relevant subject matter."). In sum, for prosecution disclaimer to attach, the alleged disavowing actions or statements made during prosecution must be clear and unmistakable, as well as demonstrate reasonable deliberateness. Omega Eng'g, 334 F.3d at 1326; N. Telecom, 215 F.3d at 1294-95.
Because a claim's ordinary and customary meaning often is not readily apparent, sources that shed light on how a person of ordinary skill in the art would understand the claim language may be helpful. Phillips, 415 F.3d at 1314. In the claim construction process, "the words of the claims themselves, the remainder of the specification, [and] the prosecution history" are considered intrinsic evidence of primary importance. Id. In addition, "extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art" may be consulted. Id. However, because the universe of extrinsic evidence is boundless and such evidence is not created at the time of the patent or for the purpose of explaining the patent's scope, it is considered less reliable than intrinsic evidence. Id. at 1318-19. Therefore, extrinsic evidence should be used only when intrinsic evidence is insufficient to resolve claim interpretation disputes.
In claim construction, the patent language must not be rewritten even when it may be clearer if done so. Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir. 2008). A court must not attempt to say what it believes the inventor meant to say. The language is what it is. An attempt to clarify could mistakenly add or subtract requirements. If the inventor or his attorney could not get it right, it is not for a court to correct. See K-2 Corp.v. Salomon S.A., 191 F.3d 1356, 1364-65 (Fed. Cir. 1999). Nor can language be engrafted onto existing language to accommodate the dispute solely for the purpose of aiding jury comprehension. See 800 Adept Services, 539 F.3d at 1366-67 (trial court erred when, in an effort to help the jury better understand a claim, it added a sentence to its original claim construction, and the modified construction was incorrect).
In other words, courts should avoid the temptation to write claim language in what appears to be a better way. Adherence to the original meaning of the patentee whenever possible is the paramount principle. See Resonate, Inc. v. Alteon Websystems, Inc., 338 F.3d 1360, 1365 (Fed. Cir. 2003); Texas Instruments, Inc. v. U.S. Int'l Trade Comm'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) ("Courts can neither broaden nor narrow the claims to give the patentee something different than what he has set forth."). On the other hand, the patentee cannot use claim construction to expand the scope of the original patent to curtail or prevent the development and use of similar and improved products.
The '511 patent "generally relates to systems for monitoring and/or controlling a plurality of remote devices via a host computer connected to a wide area network," and "provides wireless communication networks for providing remote monitoring of devices." (Col. 1:31-36; Col. 2:28-29). It focuses on ways to monitor remote devices using wireless communications technology.
Remote devices that could be employed under this patent include sensors, actuators, smoke detectors, thermostats, utility meters and security devices. (Col. 4:52-55; Col. 6:49-51). The other primary components of the wireless communication networks disclosed in the patent are: wireless communication devices, consisting of wireless transceivers, transmitters or repeaters; a site controller; a wide area network ("WAN"), which is the internet or intranet; and an application server or host, such as a laptop or workstation. One embodiment of the invention is an automated monitoring system that may include sensors to be monitored by being read, and actuators to be controlled through an applications server via a site controller. (Col. 2: 29-37).
Of the 29 claims in the patent, five are independent. In four of the five independent claims, each of the plurality of wireless transceivers (or wireless communication means) is to be configured to do, at a minimum, two things: (1) receive a sensor data signal from a remote device and transmit an original data message using a predefined wireless communication protocol, the original data message comprising the corresponding unique identifier and sensor data signal; and (2) receive the original data message transmitted by one of the other wireless transceivers and transmit a repeated data message using the predefined wireless communication protocol, the repeated data message including the sensor data signal and the corresponding unique identifier.
The parties agree on the meaning of eight terms appearing throughout the claims, and dispute the construction of nineteen terms. Thus, where necessary, we shall construe the disputed terms.
Construction of Claim Terms in Dispute "Wireless Transceivers Having Unique Identifiers" (Claims 1, 13 and 20)
SIPCO proposes a construction of the entire phrase "wireless transceivers having unique identifiers," whereas Toro wants the terms "wireless transceiver" and "unique identifiers" construed separately.
SIPCO's proposed construction is: "two-way wireless communications devices known as radio frequency (RF) transceivers each having their own identifier that uniquely identifies the wireless transceiver vis-a-vis other wireless transceivers in the wireless communication network." With respect to the definition of "wireless transceiver," Toro agrees with SIPCO that it is a "two-way wireless communications device known as a radio frequency (RF) transceiver," but wants to add specific language regarding three different concepts. Specifically, Toro proposes to: (1) give examples of additional components/accessories that could complement the device, (2) state that the transceiver "is not a stand-alone repeater," and (3) state that the transceiver is "integrated with a remote device such as a sensor." With respect to the meaning of "unique identifier," Toro wants: "an identifier, such as an address, that is different from all of the other identifiers in the wireless communication network."
Toro wants the definition of "wireless transceiver" to include structure beyond a radio-frequency transceiver because all of the independent claims require the wireless transceivers to be configured to perform several recited functions, which they cannot do without additional structures. It reaches into the written description (i.e., Figure 2) and imports components into the claims that are found only in the preferred embodiment of the disclosed wireless transceiver.
Toro's reading examples into the claim violates the preferred embodiment rule. Under this rule, claim terms are not limited to a preferred embodiment described in the specification. Phillips, 415 F.3d at 1323; SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1286 (Fed. Cir. 2005); RF Delaware, Inc. v. Pacific Keystone Techs., Inc., 326 F.3d 1255, 1264 (Fed. Cir. 2003) (a basic canon of claim construction is that one may not read a limitation into a claim from the written description).
By importing components into the claims that are found only in the preferred embodiment, Toro's proposed language goes beyond what is necessary to define "transceiver" in violation of the preferred embodiment rule. Thus, the court rejects its proposal to construe a "wireless transceiver" as "complemented by" various devices.
In support of its proposal that "wireless transceiver" be construed as "not a stand-alone repeater," Toro points to several sources that purportedly distinguish between the "wireless transceivers" and "repeaters" in the claims. First, it argues that because the term "repeater" is found only in the dependent claims, and the relevant dependent claims contain both the terms "repeaters" and "wireless transceivers," construing them to be the same structures fails to give effect to all the terms in the claim. Second, relying on the doctrine of claim differentiation,*fn3 it contends that the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation is not present in the independent claim. Third, it argues that the Summary distinguishes between "wireless transceivers" and "repeaters" when it states that "sensors and/or actuators are in communication with the plurality of wireless transceivers, . . . Additional communication devices, such as wireless repeaters, may relay information between the wireless transceivers." (Col. 2:39-47).
Finally, and most heavily relied upon by Toro to argue that "wireless transceiver" be construed as "not a stand-alone repeater," it contends that the prosecution history reveals that the patentee unambiguously distinguished the "wireless transceivers" of the invention from "stand-alone repeaters" of the prior art (the '491 patent). Specifically, Toro contends that the patentee argued that in the '491 patent, only stand-alone repeaters could transmit a repeated data message, whereas in the '511 patent, the wireless transceivers were configured to both receive an original data message and transmit a repeated data message from another wireless transceiver.
In response, SIPCO contends that not only was there no "prosecution disclaimer" regarding the meaning of this term, but that Figure 1 in the '511 patent directly contradicts the distinction that Toro is trying to make. It asserts that the only distinction between the "transceivers" and "repeaters" of the '511 patent is in the content of the messages they transmit. Specifically, the independent claims require a first group of two-way wireless communication devices called "wireless transceivers" to: (i) have a unique identifier; (ii) receive a sensor data signal from a remote device; (iii) transmit an original data message (comprising the corresponding unique identifier and sensor data signal); (iv) receive the original data message transmitted by one of the other wireless transceivers; and (v) transmit a repeated data message. The dependent claims require a second group of twoway wireless communication devices called "repeaters" to (i) have a unique identifier; (ii) receive the original data message transmitted by one of the other wireless transceivers; and (iii) transmit a repeated data message, which are the same as (i), (iv) and (v) of the above independent claims. Therefore, SIPCO argues, if a wireless communication device in a system receives and transmits the content described in the above dependent claims, such a device is a "repeater" of the dependent claims.
SIPCO asserts that the patentee made the same "content-based" argument in distinguishing the prior art. It asserts that he argued that stand-alone devices in the '491 patent could not meet all of the limitations of the independent claims because they could not communicate with each other and could transmit only original data messages but not repeated data messages, and the independent claims of '511 require the transceiver to be able to transmit both original and repeated data messages. Its argument was essentially that no device in the '491 patent could receive and transmit both an original data message and a repeated message; and, therefore, the '491 patent did not meet the content requirements of the claims. The patentee did not disclaim coverage of transceivers on the basis that they are "stand-alone" or called "repeaters."
SIPCO also points out that the dependent claims that recite "repeaters" are open-ended, as shown by the word "comprising."*fn4 Therefore, the use of the term "comprising" shows that the claim recites the minimum set of attributes a "repeater" must have, and does not exclude the presence of other attributes, such as the ability to receive sensor data signals from a remote device. Additionally, because "stand-alone" is not mentioned in the claims, Toro is trying to impose a negative limitation.
Finally, SIPCO points to Figure 1, which shows both repeaters and transceivers that are both stand-alone and not stand-alone, demonstrating that transceivers are ...