On July 31, 2012, in 01 Communique Laboratory, Inc. v. LogMeIn, Inc., the United States Circuit Court for the Federal Circuit (“Federal Circuit”), reversed a decision of noninfringement issued by Senior Judge Claude M. Hilton of the Eastern District of Virginia based on a faulty claim construction. Part of the Court’s decision took issue with a limitation to the claim language imposed by Judge Hilton based upon an alleged disclaimer made by the Plaintiff’s expert in reexamination proceedings. In doing so, the Court follows its recent trend in rejecting the use of so called disclaimers in all but the clearest of situations.
The claim term at issue in construction was “location facility.” Plaintiff sought a broad construction of this term arguing it could be created by several computers and LogMeIn argued it should be narrowly construed to exclude such a multiple computer set up. LogMeIn based its claim, in part, upon certain statements made by Plaintiff’s expert, Dr. Gregory Ganger, during the inters parties reexamination of the patent. Dr. Ganger opined that in the patented invention the location facility creates a communication channel between the remote computer and the personal computer, and that this “create” limitation would not be satisfied by a location facility “that is simply used by some other component that creates the communication channel.” Dr. Ganger emphasized that “the location facility, itself, [must] create the communication channel.” As a result, Judge Hilton read these statements to disclaim distribution of the location facility among multiple computers—the broader construction sought by Plaintiff. The Court disagreed with Judge Hilton, finding that Dr. Ganger’s statements did not limit the use of multiple computers but addressed another point entirely – he was differentiating between technology in which the location facility itself creates the communication channel and technology in which some component other than the location facility creates the communication channel.
In rejecting Judge Hilton’s findings the Court rebuked the district court and noted:
“When the patentee makes clear and unmistakable prosecution arguments limiting the meaning of a claim term in order to overcome a rejection, the courts limit the relevant claim term to exclude the disclaimed matter.” SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1286 (Fed. Cir. 2005). “A patentee’s statements during reexamination can be considered during claim construction, in keeping with the doctrine of prosecution disclaimer.” Krippelz v. Ford Motor Co., 667 F.3d 1261, 1266 (Fed. Cir. 2012). “An ambiguous disclaimer, however, does not advance the patent’s notice function or justify public reliance, and the court will not use it to limit a claim term’s ordinary meaning.” Sandisk, 415 F.3d at 1287.
Importantly, the Court held that “[t]here is no ‘clear and unmistakable’ disclaimer if a prosecution argument is subject to more than one reasonable interpretation, one of which is consistent with a proffered meaning of the disputed term.” Id. (emphasis added). As a result, the Court made clear that it will continue to look closely at claims that prosecution history statements, like those in specifications, are limiting and will, in cases where the patentee can proffer a reasonable alternative, not limit claim terms based on the alleged disclaimers.
Stephen E. Noona is the head of Kaufman & Canoles’ Trial Section and Co-chair of its Intellectual Property Law and Franchising Practice Group. He has been counsel in over ninety (90) patent cases in the Eastern District, is Fellow in the American College of Trial Lawyers, and has appeared before the judges in all four Divisions of the Eastern District on patent and intellectual property matters. –Stephen E. Noona