Federal Circuit gives narrow meaning to claim term “conventional” to be limited to then-existing technology and to exclude later developed technology

In PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359; 74 USPQ2d 1698 (Fed. Cir. 2005), PC Connector asserted that SmartDisk infringed patent claim which recite, among other features, “an input/output port normally connectible to a conventional computer input/output port” and “traditionally connectible to a computer by means of an input/output port of the computer and the standard input/output port of the particular separate computer peripheral.”  In its non-infringement defense, SmartDisk asserted that the recited terms “conventional,” “normal,” “traditionally,” and “standard”  limited the scope of the claims to the then-existing technologies since later arising technologies were not conventional, normal, traditional, or standard at the time of filing the application.  The Federal Circuit  reviewed the specification and determined that the only disclosed embodiment which corresponded to these terms related to a computer input/output port in existence in 1988.  While the Federal Circuit declined to limit the literal scope to the disclosed embodiments since the specification did not disclaim other types of ports, the Federal Circuit held that the meaning must be consistent over time.  As such, these terms must be limited to the understanding as of the effective filing date of the application.  Since the flash memory and smart cards of SmartDisk were not conventional at the time the application was filed, SmartDisk’s products were not covered by the literal scope of the claims.  As such, an applicant needs to be aware that, when incorporating standards or requirements for “conventional” technology into claims, the claims may not be given a meaning which covers later-developed technology not defined by that standard or not understood to be “conventional.”

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