Technology Properties Limited v. Huawei Technologies Co., Ltd.
849 F.3d 1349
| Fed. Cir. | 2017Background
- Technology Properties sued multiple manufacturers asserting U.S. Patent No. 5,809,336, which claims a microprocessor with an on-chip variable-frequency CPU clock (a ring oscillator) and an off-chip fixed-frequency I/O clock (crystal).
- Representative claim 6 requires “an entire oscillator disposed upon said integrated circuit substrate” that enables the CPU processing frequency to track the clock frequency as fabrication/operational parameters vary.
- The district court construed “entire oscillator” as: an oscillator located entirely on the same semiconductor substrate as the CPU that does not require a control signal and whose frequency is not fixed by any external crystal.
- The parties stipulated to noninfringement under that construction; Technology Properties appealed the claim-construction ruling.
- The district court based two narrowing limitations on prosecution statements distinguishing two prior patents: Magar (an off-chip crystal-driven clock) and Sheets (a clock changed via command/control inputs).
- The Federal Circuit affirmed part of the district court’s narrowing (excluding oscillators fixed by an external crystal) but modified the other narrowing to apply only to command inputs used to change clock frequency.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether statements in prosecution disclaim oscillators whose frequency is fixed by an external crystal | Patentee (Technology Properties) argued Magar is distinguishable because its oscillator function is off-chip and the on-chip generator in Magar is not itself an oscillator | Appellees argued patentee disclaimed oscillators fixed by an external crystal during prosecution | Held: Prosecution statements clearly disclaimed oscillators fixed by an external crystal; construction includes “whose frequency is not fixed by any external crystal.” |
| Whether prosecution disclaimer forbids any oscillator that receives control inputs | Patentee argued it only distinguished Sheets as relying on external frequency-control inputs and did not disclaim all oscillators that accept inputs | Appellees argued prosecution statements disclaimed use of control signals generally | Held: Patentee disclaimed command inputs used to change clock frequency; construction limited to oscillators that do not require a command input to change frequency (but not a total ban on any input). |
| Standard of review for claim construction and prosecution disclaimer | (not disputed by parties) | (not disputed by parties) | Held: Claim construction reviewed de novo; subsidiary fact findings for clear error; prosecution disclaimer requires clear and unmistakable statements considered in context. |
| Remedy given parties had stipulated noninfringement under prior construction | Technology Properties urged vacatur/remand because part of construction was erroneous | Appellees relied on stipulation outcome | Held: Court vacated and remanded for further proceedings because construction was modified (even if outcome likely unchanged). |
Key Cases Cited
- Uship Intellectual Props., LLC v. United States, 714 F.3d 1311 (Fed. Cir. 2013) (prosecution statements can give rise to disclaimer)
- Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090 (Fed. Cir. 2013) (disclaimer may arise from arguments as well as amendments)
- Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366 (Fed. Cir. 2007) (disclaimer must be clear and unmistakable)
- MIT v. Shire Pharm., Inc., 839 F.3d 1111 (Fed. Cir. 2016) (prosecution statements must be read in context)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (claim construction review de novo with clear-error review for subsidiary facts)
- Norian Corp. v. Stryker Corp., 432 F.3d 1356 (Fed. Cir. 2005) (patentees may surrender more than necessary during prosecution)
- Fantasy Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108 (Fed. Cir. 2002) (scope of surrender is defined by actual prosecution statements)