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Patent Claim Construction: Beyond Plain Meaning into Contextual Considerations

In Atlas IP, LLC v. Medtronic, Inc, No. 2012-1071, 2015-1105 (Fed. Cir. October 2015), the United States Court of Appeals for the Federal Circuit found that where the claim language did not have a decisively plain meaning, the contextual considerations must be considered during claim construction. (Opinion Available Here).

Atlas IP, LLC owns US Patent 5,371,734, which describes and claims a protocol for controlling wireless network communications between a hub and remotes. In a related case, the District Court in the Southern District of Florida adopted claim construction that, by agreement, governs the present case. See Atlas IP, LLC v. St. Jude Medical, Inc., No. 14-21006 (S.D. Fla. 2014). The District Court in the present case issued two summary judgment orders concerning the only claim at issue, claim 21. The District Court granted summary judgment of non-infringement by Medtronic and the District Court granted summary judgment rejecting anticipation and obviousness challenges to claim 21.

Both rulings were appealed. Both appeals turned on the District Court’s claim construction. In the first instance, the Federal Circuit found that non-infringement must be affirmed if, under the “establishing” and “transmitting” limitations of clauses in claim 21, the endpoint of the communication cycle must be communicated to the remotes before any remote transmits frames to the hub. When construing claim terms, “[w]e generally give words of a claim their ordinary meaning in the context of the claim and the whole patent document; the specification particularly, but also the prosecution history, informs the determination of claim meaning in context, including by resolving ambiguities; and even if the meaning is plain on the face of the claim language, the patentee can, by acting with sufficient clarity, disclaim such a plain meaning or prescribe a special definition.” World Class Technology Corp. v. Ormco Corp., 769 F.3d 1120, 1123 (Fed. Cir. 2014). Following that approach, Federal Circuit rejected Atlas’s challenge to the District Court’s construction. The Court found that the information must be sent before the remotes begin transmitting. Both the District Court and the Federal Circuit concluded that, as long as the information must be sent before the remotes transmit, Medtronic’s devices do not infringe. The Federal Circuit affirmed the non-infringement ruling.

However, the summary judgment rejection of Medtronic’s invalidity challenge looked at a different, distinct aspect of the claim construction. The District Court had looked at the plain meaning of claim 21 and had held that clause b of claim 21 “communication cycles, each of which has intervals during which the hub and the remotes transmit and receive frames,” requires, that the hub and the remote transmit and receive frames during each communication cycle, not that the hub and the remotes simply may do so during a communication cycle. The Federal Circuit rejected this claim construction because the District Court’s claim construction was ambiguous on its face. Further, the District Court failed to consider the contextual considerations and that was error. The claim language does not necessitate that at least one remote must transmit in each cycle. Therefore the Federal Circuit rejected the District Court’s claim construction and reversed the grant of summary judgment of no anticipation or obviousness and remanded in light of the proper construction, requiring only that there be intervals in which remotes are permitted to transmit frames.

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