Prosecution disclaimer can be tough to prove. Practiced prosecution counsel seem to know how to phrase things in such a way that a patent examiner understands them to be different from the claimed invention, but a later court may still find the opposite.
In an opinion today, Judge Andrews reversed a prosecution disclaimer finding by Magistrate Judge Fallon. The patent claims involves a "tethered digital butler" that can perform smartphone-like functions in a lower-cost way by using cheaper hardware that may be "tethered" to a desktop computer, which takes care of the heavy lifting.
Specifically, the claims discuss a "palm held remote," and the parties disputed whether a smartphone—the very thing that the specification distinguished—could be the subject of the claims.
Based on the patent's use of the words "the present invention" and on prosecution disclaimer, Judge Fallon found that a "palm held remote" excludes a smartphone:
The ’130 patent differentiates smartphones as devices that are “untethered, packing many features into a small form factor, not requiring a console.” . . . By describing “[t]he present invention” as a “tethered digital butler,” the applicant expressly distinguishes the invention from untethered smartphones operating independent from a console.
. . .
[T]he applicant expressly disavowed a palm held remote having “elaborate decoders for IPTV and IP Phone built in,” and instead explained that the invention connects to a set top box or similar device which “performs the extensive decoding required for IPTV, IP Phone, Flash Media and similar signals” before relaying a simplified signal to the remote. . . . The applicant consistently characterized the invention in terms of its simplicity and low cost resulting from its reliance on a master device for complex processing . . . [T]he applicant’s express disavowal of a palm held device capable of decoding IPTV, VoIP, or other complex signals led to the examiner’s allowance of the ’130 patent . . . .
As a result, Judge Fallon construed the claim to exclude smartphones, specifically:
a simple handheld device that, in contrast to a smartphone, cannot decode complex data streams, such as IPTV or VoIP
Judge Andrews reversed. In his view, just because the "palm held remote" can be tethered does not mean that it must be tethered:
I have read the sections of the specification that the magistrate judge relied upon to limit the palm held remote. I do not agree with the magistrate judge's analysis of the specification. . . . I do not think the description of the console necessarily means that the palm held remote does not have some or all of the features of the console; it merely means that whether or not the palm held remote has them, the console has to have them . . . I do not read the references to the cost or power of a smartphone as disparaging them such that they are disclaimed; rather, they are not required. The magistrate judge cites claim 10 for the proposition that the palm held remote "depends" upon the console for processing power. If that is correct, and a smart phone does not so depend in the accused system, then it won't infringe, but it won't be because it's a smart phone, it will be because it does not meet another limitation. Ditto for the limitation that the console has "resources adapted to" "decode VoIP to a remote control device format . . . . " The console has to have those resources. That does not mean that they are excluded from being a part of the palm held remote.
. . . I think the prosecution history is saying that the system works with a simple remote control. That is why it is an improvement over the prior art. That is why it can be a lot cheaper. But the system does not require that the simple remote control have no additional features. It just doesn't need to have any additional features. If those features are in an accused product, it won't matter that they are, because they are simply additional unclaimed features.
Judge Andrews instead construed "palm held remote" to have its plain meaning:
Thus, . . . I reject the magistrate judge's construction. I agree with I Plaintiff that " palm held remote" does not need construction. Jurors will understand the plain meaning of the term.
I'll be curious to see whether there is some motion practice closer to trial about whether the defendant can argue to the jury that a "smartphone" doesn't fit the plain meaning of a "palm held remote."
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