MEMO
RE: Anascape, Ltd., v Microsoft Corp., and Nintendo of America, Inc., 2007 WL 4268788 (E.D. Tex.). 2007 U.S. Dist. LEXIS 88248
DATE: December 10, 2007
UPDATE: A jury awarded Anascape $21 million dollars in May of 2008. Microsoft settled the case.
This case is currently before the District Court for determination of how to construe certain claims in Anascape’s patents. Anascape filed a suit against Microsoft claiming infringement of six patents that relate to switches and buttons on controllers used in video games. Anascape then also enjoined Nintendo for infringement on two of the patents. The Court granted a stay pending reexamination before the PTO on three claims and the parties later agreed to a stay on the other three claims pending reexamination.
There are two terms that are closely related and contested in the patent claims. The first pressure-sensitive variable conductance (PSVC) material refers to a substance and in the second the PSVC sensor refers to a device. The main point of contention arising from this is whether the construction excludes the surface effect.
Claim construction is a matter of law, and the duty falls on the trial judge to determine the meaning of the claims and instruct the jury appropriately. The words in a claim are given their ordinary and customary meaning as interpreted by someone of ordinary skill in the art. The words are not only meant to be considered in the context of the claim but also in the specification. The sources used to determine claim construction include the claims, specification, prosecution history and extrinsic evidence of relevant scientific principles, meanings of technical terms, and state of the art. Specification is usually dispositive; a court may also use other sources for edification purposes. If the patentee provides his own definitions, this lexicography usually governs.
The Court finds nothing in the patent hints that the PSVC material is a device, but rather finds it is a substance or compound that is described in detail. The PSVC material changes its conductivity with applied pressure to alter the conductance of the electrical path. Microsoft argues to exclude material that utilizes a micro-protrusion surface area. The Court finds an issue with this definition because two figures and the text of the specification describe additional current flow through the PSVC material caused by greater surface area contact. Thus Microsoft’s definition limits the claim and excludes a preferred embodiment. The Court then provides its own definition of the term. Both parties found this definition acceptable.
With the second PSVC the issue is whether the sensor must utilize PSVC material. The patent uses the language and each embodiment includes PSVC material. The reason for this contention is based on the fact that certain claims expressly utilize PSVC material while other claims to not expressly state PSVC material is used. Here the debate is centered on whether limitations may be read in from the specification and whether a clear intention to limit the scope has been demonstrated. Microsoft states that the claim language cannot exceed that of the specification and supports this argument that every embodiment in the four patents is of a sensor with PSVC material.
As a result the Court finds that Anascape in the first claim was claiming a change in surface effect, and the second claim was not claiming material that was not PSVC material in the sensor. Rather, plaintiff should be arguing infringement by equivalents for the second claim. The remaining claims involved means-plus-function under 112(6). This involves two steps (1) identify the claimed function and (2) look to the specification to identify corresponding structure for the function. With the remaining patent claims the Court found some to link to different functions and others to clearly link the function to the PSVC material.
This case demonstrates the important considerations, which are necessary to properly construe a patent claim. It very efficiently lays out the standard of review, importance of a Markman hearing, and the steps to determine the meaning of a claim term. When construing a term the most important element is the specification. I think that by following the process outlined by the Court one can easily see why one claim construction was upheld and the other struck down. I believe the judge came to the correct conclusion and that this case is a good example of how to construe claims.
RE: Anascape, Ltd., v Microsoft Corp., and Nintendo of America, Inc., 2007 WL 4268788 (E.D. Tex.). 2007 U.S. Dist. LEXIS 88248
DATE: December 10, 2007
UPDATE: A jury awarded Anascape $21 million dollars in May of 2008. Microsoft settled the case.
This case is currently before the District Court for determination of how to construe certain claims in Anascape’s patents. Anascape filed a suit against Microsoft claiming infringement of six patents that relate to switches and buttons on controllers used in video games. Anascape then also enjoined Nintendo for infringement on two of the patents. The Court granted a stay pending reexamination before the PTO on three claims and the parties later agreed to a stay on the other three claims pending reexamination.
There are two terms that are closely related and contested in the patent claims. The first pressure-sensitive variable conductance (PSVC) material refers to a substance and in the second the PSVC sensor refers to a device. The main point of contention arising from this is whether the construction excludes the surface effect.
Claim construction is a matter of law, and the duty falls on the trial judge to determine the meaning of the claims and instruct the jury appropriately. The words in a claim are given their ordinary and customary meaning as interpreted by someone of ordinary skill in the art. The words are not only meant to be considered in the context of the claim but also in the specification. The sources used to determine claim construction include the claims, specification, prosecution history and extrinsic evidence of relevant scientific principles, meanings of technical terms, and state of the art. Specification is usually dispositive; a court may also use other sources for edification purposes. If the patentee provides his own definitions, this lexicography usually governs.
The Court finds nothing in the patent hints that the PSVC material is a device, but rather finds it is a substance or compound that is described in detail. The PSVC material changes its conductivity with applied pressure to alter the conductance of the electrical path. Microsoft argues to exclude material that utilizes a micro-protrusion surface area. The Court finds an issue with this definition because two figures and the text of the specification describe additional current flow through the PSVC material caused by greater surface area contact. Thus Microsoft’s definition limits the claim and excludes a preferred embodiment. The Court then provides its own definition of the term. Both parties found this definition acceptable.
With the second PSVC the issue is whether the sensor must utilize PSVC material. The patent uses the language and each embodiment includes PSVC material. The reason for this contention is based on the fact that certain claims expressly utilize PSVC material while other claims to not expressly state PSVC material is used. Here the debate is centered on whether limitations may be read in from the specification and whether a clear intention to limit the scope has been demonstrated. Microsoft states that the claim language cannot exceed that of the specification and supports this argument that every embodiment in the four patents is of a sensor with PSVC material.
As a result the Court finds that Anascape in the first claim was claiming a change in surface effect, and the second claim was not claiming material that was not PSVC material in the sensor. Rather, plaintiff should be arguing infringement by equivalents for the second claim. The remaining claims involved means-plus-function under 112(6). This involves two steps (1) identify the claimed function and (2) look to the specification to identify corresponding structure for the function. With the remaining patent claims the Court found some to link to different functions and others to clearly link the function to the PSVC material.
This case demonstrates the important considerations, which are necessary to properly construe a patent claim. It very efficiently lays out the standard of review, importance of a Markman hearing, and the steps to determine the meaning of a claim term. When construing a term the most important element is the specification. I think that by following the process outlined by the Court one can easily see why one claim construction was upheld and the other struck down. I believe the judge came to the correct conclusion and that this case is a good example of how to construe claims.