Federal Circuit Vacates Lower Court Ruling in Elevator Patent Case
By: Helen (Ye) He – edited by Davis Doherty
Schindler Elevator Corp. v. Otis Elevator Co., No. 2009-1146 (Fed. Cir. Jan. 15, 2010)
The Federal Circuit vacated the District Court for the Southern District of New York’s grant of summary judgment of noninfringement in favor of Defendant Otis Elevator. The Federal Circuit concluded that the district court constructed Schindler Elevator’s patent claims too narrowly by construing the terms “hands-free,” “information transmitter” and “recognition device” “to exclude any ‘personal action’ by an elevator user other than ‘walking into the monitored area’.” The case was remanded in light of the Federal Circuit’s broadened claim construction.
The Schindler patent claims a system that identifies the user as he enters the building and sends an elevator to take the user to a preprogrammed floor. The identification mechanism involves a receiver at the entry location and a transmitter carried on the user’s person. When the transmitter comes within the effective range, the receiver reads the user’s personal information and sends it to the elevator controls.
Schindler alleges that Otis’ elevator system in 7 World Trade Center infringes on their patent. Users have to pass a RFID card (transmitter) over a turnstile, which houses the card reader (receiver), in order to gain access to the building.
The construction of the patent turned on the definition of terms such as “hands-free” and the scope of the phrase “without any personal action” as they appeared in claim 1. Otis contended that its system, which requires the user to bring the card within range of the reader, relies on a “personal action” prohibited by the terms of Schindler’s patent and does not fall within the definition of “hands-free.” The Federal Circuit agreed with Schindler’s argument that “no personal action” refers to subsequent actions by the user once the card is brought within range of the card reader, and that “hands-free” refers to operation of the elevator, not to the action required to bring the card within range.
In finding Schindler’s interpretation more appropriate, the court relied in large part on claim 7 of the patent. In claim 7 the transmitter also serves as a building key, and the receiver is activated when the user unlocks the door. Since claim 7 is dependent on claim 1, its scope must be narrower, and any limitation that does not apply to claim 7 thereby cannot apply to claim 1. Accordingly, the court found that the act of bringing the transmitter into position to be read by the receiver was not a “personal action” excluded in claim 1.
The court also relied on another embodiment of the invention described in the specification, whereby the elevator system identifies the user through his physical features, e.g., a fingerprint. Since the user must bring his finger up to the fingerprint reader, the court found that the drafters clearly intended the act of bringing one’s hands to a certain position to still be within the meaning of “without any personal action.”
In an opinion concurring with the result but dissenting in part, Judge Dyk expressed concern that the court broadened the construction of the patent so far as to render its disclaimer meaningless.