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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Friday
Jan152010

Federal Circuit Panel Disagrees Regarding Scope of Disclaimer

Schindler Elevator Corp. v. Otis Elevator Co. (Fed. Cir. Jan. 15, 2010)

In this case, the Federal Circuit, in an opinion by Judge Linn, vacated the district court's grant of summary judgment of noninfringement as the district court erred in construing two claim terms.  Judge Dyk filed a separate opinion concurring in the result but dissenting in part.

The patent at issue related to "an elevator system that recognizes a user when he or she enters an entry location of a building, then dispatches an elevator to bring the user to a destination floor based on user-specific data."  At issue on appeal were the district court's constructions of the terms "information transmitter" and "recognition device."  The district court, relying on statements in the specification and prosecution history that described "hands-free," "automatic," and "contactless" elevator operations, construed both terms as excluding any "personal action" by an elevator user other than "walking into the monitored area."  The defendant argued successfully on summary judgment that the accused system did not infringe as the system required "use of a passenger's hands to bring an RFID card within [a] 3.5-inch effective range of a card reader" and such action was a "personal action" not covered by the patent claims.

On appeal, plaintiff argued that the district court improperly limited the scope of the claim terms and argued that "personal action" encompassed the action of "manually pressing buttons to actuate the transmitter or to select a destination floor, not to the initial act of bringing the transmitter within range of the recognition device."  Defendant argued that the district court correctly relied on limiting statements in the specification and prosecution history.

The Federal Circuit found that the district court's construction was "too narrow" and "[t]he statements in the specification and prosecution history on which the district court relied were directed to elevator operations that occur only after the information transmitter is already within range of the recognition device, not to the initial act of bringing the information transmitter within range of the recognition device."  In its decision the Court relied on the claim language itself, the specification, and the prosecution history.

Looking first to the claim language, the Federal Circuit found that the "claims appear to permit at least those types of personal action that are necessary to bring the information transmitter within range of the recognition device" as the claims allowed for personal actions such as carrying the transmitter, unlocking a door, and clocking in or out of work.  Next considering the specification, the Court found that "unlocking a door and pushing a cart are two 'personal actions,' other than simply walking, which are disclosed in the specification as actions needed to bring a transmitter within range of the recognition device."

Finally, the Court examined the prosecution history, where the patentee added the "information transmitter" limitation to the claims after the claims were rejected as obvious and described the invention during prosecution as operating "automatically, contactlessly, and independently of the orientation of the information transmitter."  While the district court read the prosecution history as "unambiguously disavowing the use of a passenger's hands for any and all purposes," the Federal Circuit disagreed, stating that the actions taken during prosecution did not rise to a "clear and unmistakable" disavowal of scope and instead related to "actions that take place only after the passenger has brought the transmitter within range of the recognition device." 

Ultimately, the Federal Circuit modified the district court construction of the terms at issue by striking the phrase "without requiring any sort of personal action by the passenger" from each construction.  The Court then vacated the grant of summary judgment and remanded.

Judge Dyk, in a separate opinion, concurred with the result but dissented in part.  While he agreed that the district court's construction "unduly limited the scope of the claims," he understood "the action of swiping a card to call the elevator separate from the action required to gain entry to the building is clearly within the disclaimer of both the specification and prosecution history."  He explained that, while the applicant could have distinguished the prior art on other grounds, the applicant "instead emphasized [during prosecution] that the patented device was distinguishable both because of the signal direction and because it was hands-free and automatic … [the applicant's] disclaimer must be based on what he said, not on what he could have said."