Patent Law

Tip Off

By Gary Odom and Jordan Kuhn

TIP Systems got 6,009,169 and 6,512,828 for a cordless prison telephone. TIP sued Phillips & Brooks and others for infringement, losing on claim construction, and subsequently infringement, both literally and under the doctrine of equivalents. Affirmed on appeal. If lame arguments were a crime, plaintiff counsel would need their invention.

TIP Systems v. Phillips & Brooks and others (CAFC 2007-1241, -1279)

Both patents are directed to cord-free telephones for use in correctional facilities. The absence of a telephone cord enhances safety by preventing an inmate from hanging himself or using the cord as a weapon. '169 patent, col. 1, ll. 11-14; '828 patent, col. 1, ll. 30-33.

The problem for TIP was that the accused product didn't use a handset. Instead, there were separate ear and mouth pieces. So TIP wanted to construe a "handset" without a handle.

Citing Hockerson-Halberstadt, Inc. v. Converse, Inc., 183 F.3d 1369 (Fed. Cir. 1999), TIP argues that construction of a claim term requires interpretation of the entire claim in context and that the patentees may define a claim term in any way they choose. According to TIP, the term "handset" has been re-defined in the context of the hands-free nature of the patented invention to be nothing more than a mounted earpiece and mouthpiece, and "handle" is simply a means for mounting the earpiece and mouthpiece to the housing at a fixed distance apart.

In construing the term "handset," the district court principally relied on the language of the claim. The court noted that the claim expressly states: "a telephone handset being a handle with an earpiece at one end and a mouthpiece at an opposite end." Hence, the claim itself contains a precise definition of the term. By first looking to the claim language, the court recognized that "the claims themselves provide substantial guidance as to the meaning of particular claim terms." Phillips, 415 F.3d at 1314. We find no error by the district court in relying heavily on the claim language to construe the claim term. The court's construction is supported by an identical definition in the specification...

TIP does not point to any support in the specification for an alternative definition of the term "handset" that does not include a handle.

TIP argued claim form.

TIP also contends that the district court failed to appreciate that claim 1 is in Jepson format and that, therefore, the preamble defines not only the context of the claimed invention, but also its scope. Relying on Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997), TIP argues that whether the preamble recites structural limitations or merely states a purpose or intended use can only be gleaned from a review of the entire patent.

In Rowe, we held that the term "angioplasty" is a structural limitation on the phrase "balloon angioplasty catheter" which appeared in the preamble of the claim. Id. at 479. Similarly, here, we find that the phrase "handle with an earpiece at one end and a mouthpiece at an opposite end" is a structural limitation on the claim term "handset." Interpreting "handle" to be a structural limitation on the claim is supported by the repeated reference to "handle" in the specification. '169 patent, abstract, col. 3, ll. 32, 62, col. 4, ll. 27, 39, figs. 3-4.

TIP had a head-hurting argument that was answered thusly:

The fact that the patent examiner found the claims of the '828 patent application to be obvious in view of the claims of the '169 patent has no bearing on our construction of the term "handset" in the '169 patent. The meaning of the term can be discerned from the language of the claims themselves, and is fully supported by the specification, drawings, and prosecution history.

On the earpiece -

TIP, of course, is correct that the specification of the '828 patent discloses an alternative embodiment, wherein the earpiece and mouthpiece do not extend through the housing front wall. However, to construe the claim term to encompass the alternative embodiment in this case would contradict the language of the claims. Indeed, read in the context of the specification, the claims of the patent need not encompass all disclosed embodiments. PSN Ill., LLC v. Ivoclar Vivadent, Inc., No. 2007-1512, 2008 WL 1946550, at *5 (Fed. Cir. May 6, 2008). Our precedent is replete with examples of subject matter that is included in the specification, but is not claimed. Schoenhaus v. Genesco, Inc., 440 F.3d 1354, 1359 (Fed. Cir. 2006); Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1108 (Fed. Cir. 1996); Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562-63 (Fed. Cir. 1991).

TIP wanted a presumed liberty of means-plus-function claim construction without having a means claim.

Although use of the term 'means' is not the only way to invoke § 112, ¶ 6, when, as here, a claim element does not use 'means,' there is a rebuttable presumption that § 112, ¶ 6 does not apply. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002); Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1257 (Fed. Cir. 1999); Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999); , 161 F.3d 696, 703-04 (Fed. Cir. 1998). In deciding whether the presumption has been rebuttePersonalized Media Communications, LLC v. Int'l Trade Comm'nd, the focus is on whether the claim recites sufficiently definite structure. CCS Fitness, 288 F.3d at 1369; Al-Site, 174 F.3d at 1318; Personalized Media, 161 F.3d at 704. Each of the claim elements which TIP alleges invokes § 112, ¶ 6 recite clear and definite structures, namely, mouthpiece, earpiece, dialing pad, dialing tone actuating switch, and aperture. Therefore, TIP has not successfully rebutted the presumption that § 112, ¶ 6 does not apply. In any event, even if we were to construe these claim elements as means-plus-function claim terms, we cannot see how that construction under § 112, ¶ 6 would affect construction of the claim terms at issue here.

On another dispute about the relationship between the mouthpiece and earpiece -

The district court's construction of the claim term is consistent with the claims and the specification of the '828 patent... Although the alternative embodiment does not support the court's construction, for the reasons discussed above, the claims need not be construed to encompass all disclosed embodiments when the claim language is clearly limited to one or more embodiments. PSN Ill., 2008 WL 1946550, at *5.

The specification of the '169 patent, offered by TIP as support, has no bearing on our construction of a term that is neither claimed nor disclosed in the '169 patent.

The doctrine of equivalents as not applied in this case -

On appeal, TIP contends, however, that both phones infringe the "handset" limitation of claim 1 of the '169 patent under the doctrine of equivalents. According to TIP, the earpiece, mouthpiece, electrical wires and phone housing elements of the accused devices perform substantially the same function in substantially the same way to obtain the same result as the claimed handset. TIP asserts that the purpose of the accused devices, like the claimed handset, is to allow persons to communicate privately in a safer manner and with reduced maintenance costs. Further, TIP asserts that the key features of the accused devices are identical to the claimed handset--the earpiece and mouthpiece are vertically mounted to the phone housing at a fixed distance apart such that they are the only accessible parts. In fact, TIP contends the only function of the handle in the claimed invention is to space the earpiece and mouthpiece elements at a fixed distance apart. TIP proffers that this function is performed in the accused devices by the phone housing. The equivalency between the claimed invention and the accused devices is supported, according to TIP, by the examiner's obviousness-type double patenting rejection in the '828 patent application based on the '169 patent.

Infringement under the doctrine of equivalents may be found when the accused device contains an "insubstantial" change from the claimed invention. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 610 (1950). Whether equivalency exists may be determined based on the "insubstantial differences" test or based on the "triple identity" test, namely, whether the element of the accused device "performs substantially the same function in substantially the same way to obtain the same result." Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 38-40 (1997) (quoting Union Paper-Bag Mach. Co. v. Murphy, 97 U.S. 120, 125 (1877). The essential inquiry is whether "the accused product or process contain elements identical or equivalent to each claimed element of the patented invention[.]" Warner-Jenkinson, 520 U.S. at 40. In other words, the "all elements" rule is applicable to infringement under the doctrine of equivalents just as it is to literal infringement. PSN Ill., 2008 WL 1946550, at *6; DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1016-17 (Fed. Cir. 2006); Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1358 (Fed. Cir. 2005).

The district court found that the accused devices do not infringe the "handset" limitation under the doctrine of equivalents because no structural equivalent to a handset is found in either of the accused devices. We agree.

Happy to slap the plaintiff silly, the ruling patiently sifted through the foolishness, concluding with the reminder -

"[A]s between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure." Freedman Seating, 420 F.3d at 1361 (quoting Sage Products, 126 F.3d at 1425).

Next time you need to put a barrel of monkeys before the court, remember -

Gary M. Samms, Obermayer Rebmann Maxwell & Hippel LLP, of Philadelphia, Pennsylvania, argued for plaintiffs-appellants. With him on the brief were Jeffrey S. Batoff, Nicholas Poduslenko, and Matthew A. Kelly, III.

Full post as published by The Patent Prospector on June 18, 2008 (boomark / email).