Info-Hold, Inc. v. Applied Media Technologies Corp.
783 F.3d 1262
| Fed. Cir. | 2015Background
- Info-Hold sued AMTC (and separately Muzak) alleging infringement of U.S. Patent No. 5,991,374, directed to remotely controlled message/music playback devices used for on‑hold audio and public address systems.
- The patent was partially reexamined; reexamined claim 7 recites a remote computer that generates and transmits control signals via a communication link to message playback devices that store and play messages when a caller is placed on hold.
- The district court in the Muzak case construed “when a caller is placed on hold” as “at the moment a caller is placed on hold”; Info‑Hold/AMTC agreed to be bound by those Muzak constructions in the AMTC case.
- In the AMTC case the district court adopted AMTC’s constructions for three terms—“transmit,” “message playback device,” and “operable to generate and transmit control signals”—reading them to require server‑initiated communications.
- After claim construction, the parties stipulated noninfringement; Info‑Hold appealed the constructions (and reiterated objection to the Muzak “when a caller is placed on hold” construction).
- The Federal Circuit reviewed claim construction de novo, and considered whether the district court improperly limited claim scope to server‑initiated transmissions based on the specification and prosecution materials.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Construction of “transmit” — whether it requires server‑initiated contact | “Transmit” should have its ordinary meaning and be neutral as to which endpoint initiates transmission | Claims/specification and preferred embodiment show only server‑initiated transmissions, so limit term to initiation by server | Court reversed district court: “transmit” is neutral; not limited to server‑initiated transmissions |
| Construction of “message playback device” — whether device must be adapted only to receive after server initiates contact | Device can both send and receive; not limited to only receiving after server initiation | Device is receive‑only in the disclosed embodiment, so claim should require receiving after server initiation | Reversed: term cannot be limited to receiving after server initiation because it depends on “transmit” construction |
| Construction of “operable to generate and transmit control signals” — whether computer must be able to initiate contact | Phrase is compatible with ordinary meaning; does not require initiation capability beyond transmitting control signals | Phrase implies capability to initiate contact and send control signals | Reversed: cannot import initiation requirement; dependent on neutral “transmit” meaning |
| Reliance on later patent/prosecution (’683 Notice of Allowability) and extrinsic materials | Such documents do not justify narrowing claims here; intrinsic record controls | District court relied on ’683 Notice to inform PHOSITA understanding of initiation behavior | Court declined to give weight that would overcome ordinary meaning; reviewed constructions de novo and found no disavowal limiting initiation |
Key Cases Cited
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (claim construction: legal question reviewed de novo; subsidiary factual findings reviewed for clear error)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claims given ordinary and customary meaning to a PHOSITA in context of intrinsic record)
- Liebel‑Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004) (rejection of limiting claims to a single disclosed embodiment absent clear intent)
- Wang Labs. v. Am. Online, Inc., 197 F.3d 1377 (Fed. Cir. 1999) (limitation to a single disclosed meaning where specification/prosecution establish unique meaning/disclaimer)
- Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325 (Fed. Cir. 2010) (patentee’s disclosure of embodiments does not automatically limit claim scope)
- Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002) (ordinary‑meaning presumption can be overcome only by clear disavowal)
- Bell Atl. Network Servs. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258 (Fed. Cir. 2001) (term defined by implication only when used consistently in one sense in the specification)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (primacy of intrinsic evidence in claim construction)