Profectus Technology LLC v. Huawei Technologies Co., Ltd.
823 F.3d 1375
| Fed. Cir. | 2016Background
- Profectus sued multiple tablet manufacturers alleging infringement of U.S. Patent No. 6,975,308, which claims a "stand alone and mountable picture display" or "mountable picture frame" for displaying still digital images.
- The disputed claim term was "mountable." Profectus proposed "capable of being mounted;" defendants urged "having a support for affixing on a wall or setting on a desk or table top."
- The district court construed "mountable" as "having a feature for mounting," explaining the claimed display/frame must include an intrinsic feature that enables mounting (though additional external components may be used).
- After claim construction, defendants moved for summary judgment of non-infringement; the district court held accused tablets lacked an intrinsic mounting feature and granted summary judgment in favor of defendants.
- The Federal Circuit affirmed the claim construction and the grant of summary judgment, concluding ports and physical characteristics relied on by Profectus were not intrinsic mounting features.
- A dissent agreed with the construction but would have vacated summary judgment for some defendants, finding genuine-fact disputes on whether communication ports together with docks created a mounting feature.
Issues
| Issue | Profectus' Argument | Defendants' Argument | Held |
|---|---|---|---|
| Proper construction of "mountable" | Means "capable of being mounted"; plain meaning and claims permit mounting via external components | Means "having a feature for mounting"; claims/specification show intrinsic mounting features in embodiments | Affirmed: "mountable" = "having a feature for mounting" |
| Whether construction improperly imported preferred embodiment | Construction excludes devices that rely on external components; reads-in mounting requirement | Construction reflects intrinsic record; does not preclude external accessories | Rejected: construction consistent with specification and claims |
| Whether accused tablets meet "mountable" limitation via size/shape/weight | Tablets' thin/light form-factor makes them mountable with external docks; jury should decide | Those physical traits are incidental; not inherent mounting features | Affirmed: traits do not create genuine dispute that a mounting feature exists |
| Whether communication/charging ports are features for mounting | Ports mate with docks and can hold tablets upright; evidence creates fact dispute | Ports serve power/data; docks provide support; ports not developed as mounting features | Affirmed (majority): ports not intrinsic mounting features; dissent would remand for some defendants |
Key Cases Cited
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015) (standard of review for claim construction; factual findings based on extrinsic evidence reviewed for clear error)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claims given ordinary meaning in view of specification)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (specification is primary guide to claim meaning)
- Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243 (Fed. Cir. 1998) (correct construction aligns with claim language and patent description)
- Thorner v. Sony Comput. Entm't Am. LLC, 669 F.3d 1362 (Fed. Cir. 2012) (caution against importing improper limitations or erroneous terms of degree)
- Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334 (Fed. Cir. 2016) (claim construction principles)
- In re Papst Licensing Digital Camera Patent Litig., 778 F.3d 1255 (Fed. Cir. 2015) (infringement requires every claim limitation be present)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) (summary judgment standard; draw all reasonable inferences for non-movant)