X2Y Attenuators, LLC v. International Trade Commission
757 F.3d 1358
| Fed. Cir. | 2014Background
- X2Y Attenuators sued at the ITC, alleging Intel products infringed three related patents ('500, '444, '241) directed to arrangements of electrodes that reduce parasitic capacitance using shielding electrodes.
- Central disputed claim terms (treated across patents) concerned "electrode" or "center ground plane" terms describing a central conductive pathway positioned among other conductors; parties called these "electrode terms."
- Intel argued the claims require a three-conductor "sandwich" configuration (a central common conductive pathway between paired, electromagnetically opposite conductors); X2Y argued for plain-meaning (single conductor) construction and no such limitation.
- The ALJ and the ITC construed the electrode terms to require "a common conductive pathway electrode positioned between paired electromagnetically opposite conductors," based on specification language in the asserted patents and incorporated priority patents stating the sandwich configuration is "essential" or "universal to all embodiments."
- X2Y conceded noninfringement under that construction; the ITC found no violation of 19 U.S.C. § 1337. X2Y appealed; the Federal Circuit affirmed the ITC’s construction and no-violation finding.
- Concurring opinion agreed with the result but criticized the ALJ/Commission procedure: they improperly relied on priority-patent disclosures before first construing claims and resolving invalidity/priority questions in the correct order (especially given continuation-in-part relationships).
Issues
| Issue | X2Y's Argument | Intel's Argument | Held |
|---|---|---|---|
| Claim construction of "electrode"/"center ground plane" terms — whether limited to a sandwich (three-conductor) configuration | "Electrode" should have its plain meaning (a single conductor); claims do not impose a three-conductor/sandwich structural or electrical limitation | Claims are limited by specification disavowal to a common conductive pathway positioned between paired electromagnetically opposite conductors (sandwich) | Court affirmed ITC: specification language constitutes clear and unmistakable disavowal; claims limited to sandwich configuration |
| Use of priority/incorporated patents in construing claims — whether ALJ/Commission could rely on earlier patents and priority positions before independent claim construction | Disavowals in incorporated/priority patents and permissive language do not negate plain claim meaning; some disclaimers appear only in priority patents or CIPs, so scope should not be automatically limited | Statements in asserted patents and patents incorporated by reference manifestly disclaim broader scope; incorporation makes earlier disclosures part of the intrinsic record | Court held incorporation by reference made the priority-patent disclaimers part of the intrinsic record and that disavowal was clear. Concurring judge agreed result but said it was error to assume priority/limit claims based on earlier patents before independent claim construction and invalidity analysis |
Key Cases Cited
- GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304 (Fed. Cir. 2014) (labeling an element as "essential" can be clear disavowal)
- Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313 (Fed. Cir. 2002) (claim-limitations may arise from specification language of manifest exclusion)
- Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316 (Fed. Cir. 2001) (incorporation by reference imports contents of referenced patent into host patent)
- Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545 (Fed. Cir. 1996) (incorporation by reference does not convert incorporated invention into host invention)
- Gemstar-TV Guide Int’l, Inc. v. Int’l Trade Comm’n, 383 F.3d 1352 (Fed. Cir. 2004) (appellate review of ITC claim construction is de novo)
- Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333 (Fed. Cir. 2010) (priority/written-description analysis depends on proper claim construction)