Federal Circuit Clarifies Test For Claim Scope Disavowal
On Thursday, December 12, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a final determination and vacating exclusion orders from the International Trade Commission (ITC) against appellant garage door opener importers. Techtronic Indus. Co. v. Int’l Trade Comm’n, —F.3d— (Fed. Cir. Dec. 12, 2019). The CAFC held that the ITC erred in its claim construction, and confirmed that, where a patentee consistently describes an invention as having a particular feature, the patentee’s claims must be construed as including that feature.
In July 2016, the owner of U.S. Patent No. 7,161,319 (“the ’319 patent”) filed a complaint in the ITC alleging, inter alia, that appellants violated Section 337(a)(1)(B) by the “importation into the United States, the sale for importation, and the sale within the United States after importation” of certain garage door openers that infringe the ’319 patent.
The ’319 patent specification explains that passive infrared detectors had been used in prior art garage door openers for the detection of a person in a particular vicinity and for automatically controlling functionality—such as the motion of the garage door—accordingly. According to the ’319 patent specification, passive infrared detectors were often associated with the head unit of the garage door opener, an approach described as “expensive,” “fragile,” “deficient,” and even potentially unsafe.
The ’319 patent goes on to describe its invention as a passive infrared detector for a garage door operator, where the infrared detector is contained in a wall control unit. The wall control unit communicates with a garage door opener head unit. Representative claim 1 of the ’319 patent recites “an improved garage door opener comprising a motor drive unit … and a wall console, said wall console [connected to the motor drive unit] by means of a digital data bus.”
An Administrative Law Judge (ALJ) at the ITC issued a claim construction order deciding that, under the CAFC’s holding in Poly-America, L.P. v. API Industries, Inc., 839 F.3d 1131 (Fed. Cir. 2016), patent owner had disavowed wall consoles lacking a passive infrared detector. Thus, the ALJ construed “wall console,” as “wall-mounted control unit including a passive infrared detector.”
The ITC reversed the ALJ’s claim construction ruling and entered remedial orders against the appellants, concluding that the patentee is not required to recite in each claim all features described as important in the written description. The ITC distinguished Poly-America on the basis that the prosecution history of the ’319 patent lacked “the clear prosecution history disclaimer” present in that case.
On appeal to the CAFC, the appellants argued, under Poly-America, that the ITC erred in reversing the ALJ’s claim construction, because patent owner’s description of the invention as a whole served as a disavowal of coverage of garage door openers with wall consoles lacking a passive infrared detector. Patent owner, in response, highlighted portions of the specification that describe the invention more broadly as relating in general to movable barrier operators and to programming a microcontroller.
The CAFC, siding with appellants, held that the patent owner disavowed coverage of wall consoles without a passive infrared detector. The CAFC explained that disavowal may be inferred from clear limiting descriptions of the invention in the specification or prosecution history, and that an inventor may also disavow claim scope by distinguishing the claimed invention over the prior art.
According to the CAFC, the ’319 patent disavows coverage of wall consoles lacking a passive infrared detector because the specification, in each of its sections, discloses as the invention a garage door opener improved by moving the passive infrared detector from the head unit to the wall console. And, citing Poly America, the CAFC stated it is axiomatic that, where the specification describes “the present invention” as having a feature, that representation may disavow contrary embodiments.
Responding to patent owner’s argument, the CAFC stated that the patent’s recitation of another invention—related to programming the microcontroller—in no way undermines the conclusion that the infrared detector must be on the wall unit.