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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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Wednesday
Dec072016

Federal Circuit Relies on Non-Claim Construction Language in Markman Order in Affirming Summary Judgment of Non-Infringement

Impulse Tech. Ltd. v. Microsoft Corp. (Fed. Cir. Dec. 7, 2016) (nonprecedential)

This case concerned the construction of the term "defined physical space" in a patent directed to the use of three-dimensional motion tracking for interactive fitness and gaming applications. The district court held that the construction of this term is an "indoor or outdoor space having size and/or boundaries known prior to the adaptation of the testing and training system." The district court subsequently granted Microsoft's motion for partial summary judgment of non-infringement based on this claim construction.

On appeal, Impulse argued both that the district court's claim construction was incorrect, and summary judgment of non-infringement should not have been granted under the claim construction adopted by the district court. 

On appeal, Impulse argued that "[e]ach of the accused products has software code that specifies the size of a physical space within which the user can play the game." Impulse then argued that since those hardcoded values are fixed, the "size" of the physical space is known prior to adaptation (i.e. prior to game play), and though the location is not known in advanced, the district court's construction provides that the "size and/orboundaries [are] known prior to the adaptation" so the district court should not have granted summary judgment of non-infringement.

In response, Microsoft pointed to language in the district court's Markman order explaining that the district court adopted the "and/or" phrase in its construction solely to account for the "defined physical space" lacking a vertical boundary, as some of the examples of physical spaces disclosed in the specification were outdoor spaces.

The Federal Circuit agreed with Microsoft and "reject[ed] Impulse's interpretation of the district court's construction that a physical space with eithera known size or a known set of boundaries would constitute a 'defined physical space.'" (emphasis in original). The Federal Circuit explained that "[a]s the district court explained, the 'and/or' phrase in its construction was adopted to 'account for the possibility that an outdoor physical space would have no vertical boundary.'" The Federal Circuit then concluded "that both the size and the location of any boundaries that exist must be known prior to adaptation of the system in order to constitute a 'defined physical space.'"

It is interesting that the Federal Circuit interpreted the scope of the district court's claim construction by relying on other language in the Markman order.  The court could have instead, for example, modified the construction itself to expressly include the idea of "boundaries that exist" for situations where there is no vertical boundary. This is interesting as it is quite possible that, if such a case were to have been presented to a jury, the parties may have been precluded from referencing at trial any language in the Markman order other than the claim constructions themselves.  Thus, a jury may not have had the benefit of the additional language the Federal Circuit referenced in its decision.