St. Clair Intellectual Property Consultants, Inc. v. Canon Inc.
412 F. App'x 270
| Fed. Cir. | 2011Background
- Fuji appeals a judgment of infringement of four StClair patents: '459, '219, '010, and '899.
- Patents claim data formats that are selectable to suit different computer architectures for still image data.
- Markman construction imposed a broad interpretation; district court held formats align with IBM/Apple architectures.
- The district court found infringement under its construction; the jury verdicts and damages were later appealed.
- The court now holds error in the construction, focusing on ‘computer apparatus’ as computer architecture and restricting formats to architecture-specific formats.
- The court also addresses whether movie formats are within the claimed ‘plurality of different data formats’ and whether reexamination statements inform claim scope.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does 'computer apparatus' mean computer architecture? | StClair argues it means architectures (IBM vs Apple). | Fuji contends broader, including hardware/software variations, not limited to architecture. | Yes; term limits to computer architecture; no infringement under Fuji. |
| Do 'plurality of different data formats' include movie formats? | StClair contends both still and moving formats contemplated. | Fuji asserts only still-picture formats; moving formats not within the claim. | No; movie formats do not satisfy the limitation. |
| Should '010' and '899' claim terms be construed the same as '459'/'219'? | StClair argued uniform construction; claims align across patents. | Fuji argues distinct language requires consistent architecture-based interpretation. | Yes; limited to different computer architectures; applies similar construction. |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (prosecution-history and specification inform claim meaning)
- Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (de novo review of claim construction)
- Nystrom v. Trex Co., 424 F.3d 1136 (Fed. Cir. 2005) (use of specification and prosecution history to limit claim scope)
- Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132 (Fed. Cir. 2003) (comments in prosecution history do not alter examiner's reasons for allowance)
- E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430 (Fed. Cir. 1988) (reexamination statements as part of prosecution history)
- Gould v. Control Laser Corp., 705 F.2d 1340 (Fed. Cir. 1983) (examiner’s view on ordinary skill in the art is relevant)