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

The US Court docket of Appeals for the Federal Circuit reversed a district courtroom’s grant of abstract judgment of noninfringement after concluding that the district courtroom erred by relying on skilled testimony to construe a declare time period in a fashion not contemplated by the intrinsic proof. Real Enabling Tech. LLC v. Nintendo Co., Ltd., et al., Case No. 20-2167 (Fed. Cir. Apr. 1, 2022) (Newman, Reyna, Stoll, JJ.)

Real owns a patent directed to a consumer interface machine (UID) that, within the means of synchronizing and merging information streams right into a mixed information stream, instantly receives microphone speech enter and transmits speech output by way of a speaker. Throughout prosecution, the inventor distinguished “slow varying” physiological response alerts mentioned in a previous artwork reference from the “signals containing audio or higher frequencies” in his invention, arguing that the latter posed a sign “collision” downside that his invention solved. In distinguishing the prior artwork, the inventor defined 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.”

Real subsequently filed a lawsuit in opposition to Nintendo, accusing Nintendo’s Wii Distant, Wii Distant Plus, Nunchuk, WiiU GamePad, Change Pleasure-Con Controller and Change Professional Controller of infringing the patent. Throughout declare building, the events requested the district courtroom to construe the time period “input signal.” Real proposed the development of the disputed declare time period to be “a signal having an audio or higher frequency,” whereas Nintendo proposed the narrower building of “[a] signal containing audio or higher frequencies.” Relying on skilled testimony, Nintendo additionally 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 courtroom discovered that the inventor’s arguments amounted to a disclaimer. Crediting Nintendo’s skilled testimony, the district courtroom 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 courtroom subsequently granted abstract judgment of noninfringement, discovering that the accused controllers produced the kinds of slow-varying alerts that the inventor had disclaimed throughout prosecution. Real appealed.

Real argued that the district courtroom erred in construing “input signal” by improperly relying on extrinsic proof and improperly discovering that the inventor disclaimed sure declare scope throughout prosecution. The Federal Circuit agreed, reiterating that though extrinsic proof might be useful in declare building, “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.” On this case, though the events agreed that the inventor had disavowed declare scope throughout prosecution, there was a dispute as to the scope of the disclaimer past alerts beneath the audio frequency spectrum.

The Federal Circuit defined that for an announcement made throughout prosecution to qualify as a disavowal of declare scope, it have to be “so clear as to show reasonable clarity and deliberateness,” and “so unmistakable as to be unambiguous evidence of disclaimer.” The Court docket discovered that the one clear and unmistakable disavowal of declare scope within the file was the inventor’s disavowal of alerts beneath the audio frequency spectrum. The Court docket famous that the inventor distinguished his innovations on the grounds that the prior artwork reference taught “slow-varying signals,” whereas his innovations concerned “audio or higher frequency” alerts. The Court docket discovered that the examiner’s acceptance of that distinction and ensuing determination to permit the claims steered that the inventor and the examiner reached an understanding on that time. The Court docket defined that the inventor’s different statements (alerts of frequency as much as 500 Hz) didn’t rise to the extent of building a “clear and unmistakable” disavowal. The Court docket discovered that the district courtroom subsequently erred by relying on skilled testimony (which relied in flip on one other reference not discovered within the intrinsic proof) to restrict the declare scope over 500 Hz in a fashion not contemplated by the intrinsic file. The Court docket concluded that the district courtroom erred in its building of “input signal” and as a substitute construed the time period to imply “a signal having an audio or higher frequency.” The Court docket reversed the district courtroom’s grant of abstract judgment and remanded for additional proceedings in step with the brand new declare building.

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