Federal Circuit Finds Statements in Summary of Invention And Disclaimer Of Competing Devices Limits Scope of Term

In Wireless Agents LLC, v. Sony Ericsson Mobile Communications AB., Civ. Case. No. 06-1054 (Fed. Cir. July 26, 2006) (unpublished), Wireless Agents LLC (Wireless) appealed the holding of the United States District Court for the Northern District of Texas to the Federal Circuit.  The District Court denied Wireless’s motion for a preliminary injunction seeking to enjoin Sony from selling the accused products in theUnited States.  The Federal Circuit  affirmed the District Court’s ruling, denying the motion for a preliminary injunction against Sony Ericsson Mobile Communications AB (Sony). 

Wireless is the assignee of U.S. Patent No. 6,665,173 entitled “Physical Configuration of a Hand-Held Electronic Communication Device.”  The lone independent claim of the ‘173 patent provides, “A hand-held, electronic computing device having a physical configuration comprising…an alphanumeric keyboard carried by the body portion…”  The Federal Circuit stated the appeal for denial of a preliminary injunction would turn on the correct claim construction of the term “alphanumeric keyboard.”

Relying on the methodology set forth in Phillips v. AWH Corp., 423 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc), the Federal Circuit noted the scope of the term “alphanumeric keyboard” was not readily apparent from the face of the claim and that there was no common dictionary definition of the term.  The Court provided that the term must be read in view of the specification of which it is part.  The description of the invention in the Summary of Invention section stated that “The keyboard may be a keyboard with a layout such as the common QWERTY layout but not be limited to the particular layout…may include…any other alphanumeric layout that includes a substantially full set of alphanumeric keys.”  As a result, the Federal Circuit stated it could not allow Wireless to claim a keyboard with less than a substantially full set of keys “or risk injuring the public’s right to take the patentee at his word.”

The Federal Circuit also noted the specification explicitly referenced the disadvantages of keypads having only twelve digits when it stated, “the keypad is typically a twelve-digit keypad designed for numeric data entry…this method being extremely slow, awkward, error prone, and not appropriate for a device intended to transfer textual data on a regular basis.”  The Court stated, “where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” Thus, the specification disclaimed coverage for keyboards such as twelve digit keyboards through such statements. 

The Federal Circuit also considered extrinsic evidence including a statement by a Wireless expert witness but found that the expert’s statement was conclusory and unsupported by reference to any contemporaneous document and therefore of no value in the claim construction analysis.  As a result, the Federal Circuit held the District Court’s claim construction was correct, that the undisputed evidence established that the accused device utilized twelve keys instead of a substantially fully set of alphanumeric keys and thus affirmed the denial of a preliminary injunction against Sony.

Significance to Claims Drafting

In view of Phillips, the Federal Circuit is increasingly looking to statements in the specification which appear to disclaim certain features and include other features for what would otherwise be a broad claim term.  Therefore, it is important to review the Background of the Invention and the Summary of the Invention to ensure that desired embodiments are not accidentally disclaimed or discussed in a manner which limits the claims.  It is further important to ensure that, if a potential use is known but is disfavored, the specification explicitly states that this disfavored use is still within the scope of the invention.



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