By Mengyi Wang – Edited by Suzanne Van Arsdale
X2Y Attenuators, LLC v. Int’l Trade Comm’n, No. 2013-1340 (Fed. Cir. July 7, 2014)
The United States Court of Appeals for the Federal Circuit unanimously affirmed a decision of the International Trade Commission (“ITC”), which had held that Intel Corporation and other intervenors (“Intel”) did not violate 19 U.S.C. § 1337, because patents held by X2Y Attenuators, LLC (“X2Y”) did not cover their products. X2Y Attenuators, LLC v. Int’l Trade Comm’n, slip op. at 2. While the language of the claims encompassed the accused products, the Federal Circuit affirmed the ITC’s narrow claim construction based on specification disavowal.
The dispute involved three of X2Y’s patents—U.S. Patents No. 7,609,500 (“the ’500 patent”), No. 7,916,444 (“the ’444 patent”), and No. 8,023,241 (“the ’241 patent”)—which relate to structures for reducing electromagnetic interference in electrical circuits. Id. at 2–3. X2Y initially filed a complaint with the ITC, alleging that Intel had illegally imported certain microprocessor products in violation of 19 U.S.C. § 1337. Id. at 5. The dispute centered on the construction of the electrode terms. While the patents disclose alternating arrangements of shielded and shielding electrodes, they do not specify their relative configuration. Id. at 3, 5. The ITC construed the claims narrowly to require the “sandwich” configuration, as “an arrangement of three electrodes in which a center conductor is flanked by paired differential, or oppositely charged, conductors.” Id. at 5–6. X2Y conceded non-infringement according to the ITC’s claim construction and appealed the determination. Id. at 6.
On appeal, the Federal Circuit endorsed ITC’s construction of the electrode terms based upon specification disavowal. Citing GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304 (Fed. Cir. 2014) and Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002), the court explained that the patents’ specification referring to the sandwich configuration as an “essential element among all embodiments or connotations of the invention” and“universal to all the embodiments” plainly indicates an intention to limit the claim scope. Id. at 7–8. This intention was buttressed by the passage stating that the general sandwich configuration stays the same regardless of change of material. Id. at 8. Accordingly, the exacting standard of finding disavowal was met. Id. at 8.
X2Y further contended that the disclaimers appearing only in priority patents were inapplicable to asserted patents related to them only as continuations-in-part. However, the court rejected that argument, noting that, not only does the ’500 patent explicitly contain the “essential element” label, but the ’500 and ’444 patents also incorporate, by reference, priority patents that include the “feature universal” and “essential element” disavowals. Id. at 8–9. Since the disclaimers of the incorporated patents become part of the asserted patents, and the context of the disclosure of the host patent is insufficient to rebut the disclaimers, the court found that ITC has correctly construed the electrode terms. Id. at 9–10.
Judge Reyna joined the court’s opinion in its entirety but wrote a concurrence, stating that the administrative law judge and the ITC reached the correct construction through an erroneous path by failing to “objectively construe the asserted claims before deciding whether the claims were entitled to priority.” Id. at 12 (Reyna, J., concurring).
Patently-O notes that the decision unfortunately reinforces the current patent drafting norm that decreases the disclosure value of a patent: no elements are disclosed as “necessary, critical, preferred, or even discouraged” so that patentees can conceal their inventions’ true characteristics to minimize their susceptibility to narrow constructions of claims.