decided on May 8, 2018 by the Court of Appeals for the Federal Circuit
review by J. Matt Buchanan | published May 15, 2018 | updated May 15, 2018
In Chrimar Holding Company v. ALE USA, the Court of Appeals for the Federal Circuit considered several issues, ranging from claim construction to fraud under Texas law and damages to attorney fees. Claim construction garnered the most attention, though. The court considered the limiting effect of the term 'adapted' in the preamble, ignoring the plain and ordinary meaning of the term as meaningless because "generally, every apparatus may be described as 'designed, configured, or made'." Needing to find the preamble limiting because the parties had agreed that the preamble as a whole was limiting, the court took comfort in consistency between the usage of the term in the specification and the district court's construction of 'adapted' to mean 'modified.' On another issue, the court upheld the district court's refusal to apply 35 U.S.C §112, ¶6 to various infinitive phrases in the asserted claims, noting that terms that preceded the infinitive phrases, which lacked the term 'means', identified known structures in the art. With structure provided, and the failure of the infringement defendant to overcome the presumption against applying § 112, ¶6, the court refused to give the infinitive phrases means-plus-function treatment. On another claim construction issue, the court accepted the district court's reading of a "configured to" limitation into the the claim term "physically connect," based largely on a claim differentiation theory. Perhaps the most interesting aspect of Chrimar, though, is the seemingly inconsistent treatment given the claim term "Ethernet terminal equipment." When considering the term as part of the preamble issue, the court refused to view that phrase as limiting. However, when considering the effect of "Ethernet terminal equipment" as a term preceding an infinitive phrase, the court had no trouble accepting the term as providing sufficient structural meaning to avoid §112, ¶6 means-plus-function treatment. Chrimar is internally inconsistent and, fortunately, nonprecedential.
In light of parties' agreement that claim preamble is limiting, non-limiting plain and ordinary meaning of term is insufficient
The court considered the construction of the claim term 'adapted', which appears in the preamble of the claims. The district court had construed the term "consistently with its plain and ordinary meaning to mean 'designed, configured, or made.'"
On review, the Federal Circuit rejected this construction because it is non-limiting. The parties had agreed, "both before the district court and on appeal," that the preamble limits the claims. The district court's construction of the term 'adapted', though, doesn't: "generally, every apparatus may be described as 'designed, configured, or made'."
The preamble of claim 31 of the representative '012 patent reads "An adapted piece of Ethernet data terminal equipment comprising." The court summarily dismissed an argument by the patentee that the portion of the preamble after 'adapted' provided the basis for their willingness to agree that the preamble limits the claims, explaining only that "[t]he district court did not adopt that position" and "[the patentee] does not explain how [the rest of the preamble] is limiting."
It's not clear how the phrase 'piece of Ethernet data terminal equipment' can be viewed as non-limiting when the parties agreed that it, plus one additional word ('adapted') and a transition ('comprising'), limits the claims. It's also not clear why the Federal Circuit, conducting a de novo review of the district court's claim construction, points to the facts that the district court did not adopt that construction and the patentee did not explain it.
Instead, the court took comfort in the specification and its consistency "with giving 'adapted' a meaning tied to existing equipment to avoid stripping the concededly limiting claim language of meaning." Ultimately, the court construed the term 'adapted' to mean 'modified,' a construction proposed by the defendant in the infringement action.
The court's construction may be consistent with the specification, but the meaning given the term seems, really, to be the result of a reconciliation of the rejection of the "Ethernet" portion of the preamble as limiting with the agreement by the parties that the preamble as a whole is limiting. If the preamble is limiting, but the Ethernet portion is not, then the only remaining term— 'adapted'— must mean something more than its plain and ordinary meaning. Off to the specification we go!
Infinitive phrases lacking "means" but including preceding terms that identify known structures in the art do not overcome the presumption against applying means-plus-function treatment to those terms under 35 U.S.C §112, ¶6
The infringement defendant challenged the district court's refusal to apply 35 U.S.C §112, ¶6 to various infinitive phrases in the asserted claims. The district court properly recognized the presumption against applying 35 U.S.C §112, ¶6 based on the lack of the term "means" in each of the infinitive phrases—“to detect,” “to control,” “to provide,” and “to distinguish” from the '838 patent, for example—.
On review, the Federal Circuit noted that the district court "properly asked whether the terms preceding the infinitive phrases…identify structures or instead are, like 'means,' essentially place-holder nonce words." There was no dispute that those preceding terms identified known structures in the art. As a result, the infringement defendant "has not met its burden to overcome the presumption against applying §112, ¶6 for those infinitives."
"A claim term that has an understood meaning in the art as reciting structure is not a nonce word triggering §112, ¶6."
"Ethernet terminal equipment" — limiting…and not
The Federal Circuit seemed to afford the term "Ethernet terminal equipment" different statuses when reviewing different claim construction issues. First, when considering the effect of the term "Ethernet data terminal equipment" in the preamble of a claim, the court refused to view that phrase as limiting even though the parties had agreed that the preamble as a whole limited the claim. Despite construing the claims de novo, the court refused to view this term as providing a structural limitation to the claim.
Then, when considering whether an infinitive phrase should be given §112, ¶6 means-plus-function treatment, the court based its conclusion that such treatment is improper because the infringement defendant "did not dispute before the district court, and has not disputed on appeal, that those terms refer to known structures in the art." "Those terms" includes the phrase "Ethernet terminal equipment."
Thus, in one claim construction aspect of Chrimar, "Ethernet terminal equipment" failed to provide sufficient structural meaning to limit the claim. In another aspect, though, the term did provide sufficient structural meaning to avoid §112, ¶6 means-plus-function treatment.
Claim differentiation supports reading "configured to" into claim requiring that two items "physically connect"
The district court construed the claim term "physically connect" to require that the two items referenced by the term be configured to physically connect. In its construction, the district court relied on the presumption of claim differentiation, pointing to a dependent claim that required that the two items "are physically connected." On review, the Federal Circuit gave little attention to the claim differentiation aspect of the construction, noting only that the infringement defendant "has not provided any reason that overcomes the presumption in favor of claim differentiation."
Perhaps more interesting is the court's acceptance of the district court's reading "configured to" into the claim term "physically connect." The court accepted it without comment, focusing instead on the question of whether the full limitation "configured to physically connect" was meaningless. On that point, the court saw now room for debate:
"...requiring that a system be configured to physically connect is a meaningful limitation (it imports a meaningful capability), and such a system is operable (upon action by a user, the system makes the physical connection needed for actual operation). Not surprisingly, it is hardly uncommon for an apparatus or system claim, as a claim to a product rather than a process (or a forbidden mix), to be directed to capability, instead of actual operation."