Convolve, Inc. v. Compaq Computer Corp.
812 F.3d 1313
Fed. Cir.2016Background
- Dispute over U.S. Patent No. 6,314,473 covering methods to reduce acoustic noise from hard‑drive seek (arm/head) motion by altering seek trajectory via user selection of a quiet vs. performance mode.
- Representative claim (claim 10) requires: providing a user interface to control seek time or seek acoustic noise; operating that interface; and outputting commands that shape input signals to reduce selected unwanted frequencies.
- Accused products: (1) Seagate disk drives with onboard ATA/SCSI device‑to‑device interfaces that accept host commands to change drive mode; (2) Compaq computers with an F10 BIOS GUI that lets users select drive seek/noise settings but does not itself issue shaped commands to the drive.
- Lower court (on remand) granted summary judgment for defendants on three bases: Seagate’s ATA/SCSI interfaces are not a “user interface”; Compaq’s F10 BIOS does not meet the “commands” limitation; and, alternatively, intervening rights from a 2008 reexamination amendment (addition of the word “seek”) barred liability.
- This appeal reviews claim construction and summary judgment rulings; the Federal Circuit affirms in part, vacates in part, reverses in part, and remands for further proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Seagate’s ATA/SCSI interface satisfies the claim term “user interface” | Convolve: the user may select mode via intermediaries; “indirectly” should allow inclusion of device interfaces like ATA/SCSI | Seagate: “user interface” requires the site where a person actually selects operating mode; device‑to‑device ATA/SCSI merely executes selection and is not a user interface | Held: Affirmed for Seagate — ATA/SCSI are device‑to‑device interfaces and do not meet the “user interface” limitation |
| Whether Compaq’s F10 BIOS satisfies the claim limitation “outputting commands” (claims 7–15) | Convolve: the claims do not require the user‑interface processor itself to issue shaped commands; the storage device or another processor can output shaped commands | Compaq: F10 issues only generic commands and does not issue the claimed shaped commands; thus no infringement | Held: Reversed for claims 7–15 — district court erred; F10 BIOS can meet the “commands” limitation because claims allow the shaped commands to originate from the storage device or another processor |
| Whether Compaq’s F10 BIOS satisfies the “commands” limitation in claims 1, 3, and 5 (where claim language ties the processor to the user interface) | Convolve: argues broader reading allowing multiple processors or device‑side command generation | Compaq: claim language requires the user‑interface processor to output shaped commands; F10 does not do so | Held: Affirmed for Compaq on claims 1, 3, 5 — claim text ties “the processor” to the user interface, so F10 does not meet this limitation |
| Whether reexamination amendment adding the word “seek” to “acoustic noise” triggers intervening rights (i.e., materially changed claim scope) | Convolve: addition was clarifying; original claims already limited to seek‑generated noise | Defendants: amendment substantively narrowed the claims to seek acoustic noise, creating intervening rights that bar liability for pre‑amendment products | Held: Reversed — court finds original claims, read in light of the specification and prosecution history, were limited to seek acoustic noise; addition of “seek” did not substantively change claim scope, so intervening rights do not apply |
Key Cases Cited
- Grober v. Mako Prods., Inc., 686 F.3d 1335 (Fed. Cir. 2012) (summary judgment review and patent infringement framework)
- Major League Baseball Props., Inc. v. Salvino, Inc., 542 F.3d 290 (2d Cir. 2008) (Second Circuit standard for de novo review of summary judgment)
- Ericsson, Inc. v. D‑Link Sys., Inc., 773 F.3d 1201 (Fed. Cir. 2014) (patentee must show each claim limitation for literal infringement)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015) (deference to district court’s subsidiary factual findings in claim construction)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim‑construction framework; primacy of specification)
- R & L Carriers, Inc. v. Qualcomm, Inc., 801 F.3d 1346 (Fed. Cir. 2015) (intervening rights and focus on examiner’s reason for allowance)
- Laitram Corp. v. NEC Corp., 952 F.2d 1357 (Fed. Cir. 1991) (amendments in reexamination do not automatically change claim scope; case‑by‑case inquiry)
- KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351 (Fed. Cir. 2000) (the indefinite article “a” ordinarily means "one or more" in claims)