Rfid Tracker, Ltd. v. Wal-Mart Stores, Inc. ( 2009 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2008-1412
RFID TRACKER, LTD.,
Plaintiff-Appellant,
v.
WAL-MART STORES, INC.,
Defendant-Appellee,
and
THE GILLETTE COMPANY,
Defendant-Appellee,
and
TARGET CORPORATION,
Defendant-Appellee.
Edward W. Goldstein, Goldstein, Faucett & Prebeg, LLP, of Houston, Texas, for
plaintiff-appellant. With him on the brief were Corby R. Vowell and Alisa A. Lipski.
David G. Wille, Baker Botts L.L.P., of Dallas, Texas, for defendant-appellee
Wal-Mart Stores, Inc. With him on the brief was Samir A. Bhavsar.
Kenneth R. Adamo, Jones Day, of Cleveland, Ohio, for defendant-appellee The
Gillette Company. With him on the brief were Joseph D. Pollack and David M.
Maiorana. Of counsel was Lawrence D. Rosenberg, of Washington, DC.
Kenneth A. Liebman, Faegre & Benson, of Minneapolis, Minnesota, for
defendant-appellee Target Corporation.
Appealed from: United States District Court for the Eastern District of Texas
Judge Leonard Davis
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2008-1412
RFID TRACKER, LTD.,
Plaintiff-Appellant,
v.
WAL-MART STORES, INC.,
Defendant-Appellee,
and
THE GILLETTE COMPANY,
Defendant-Appellee,
and
TARGET CORPORATION,
Defendant-Appellee.
Appeal from the United States District Court for the Eastern District of Texas in case no.
6:06-CV-00363, Judge Leonard Davis.
___________________________
DECIDED: August 18, 2009
___________________________
Before RADER, LINN, and DYK, Circuit Judges.
PER CURIAM.
I.
The United States District Court for the Eastern District of Texas construed the
claim term “interrogator/reader” of claims 1 and 15 of U.S. Patent No. 6,967,563 (“the
’563 patent”) as “an interrogator/reader includes a field generator and a receiver, but not
a transmitter.” The parties do not dispute that the accused devices contain a
transmitter. Because the district court did not err in its construction, this court affirms
the final judgment of noninfringment .
II.
Plaintiff-Appellant RFID Tracker, Ltd. (“RFID”), filed a patent infringement suit
against Defendant-Appellees Wal-Mart Stores, Inc., the Gillette Company, and Target
Corporation (collectively referred to as “Defendant-Appellees”) on August 16, 2006, in
the Eastern District of Texas. RFID asserted claims 1 and 15 of the ’563 patent against
Defendant-Appellees. On February 11, 2008, the district court entered its claim
construction order. RFID stipulated to noninfringement based on this order. The district
court then entered its final judgment on March 19, 2008, dismissing this case.
The ’563 patent, issued on November 22, 2005, discloses an inventory control
system that includes radio frequency identification (“RFID”) tags attached to inventory
items, an interrogator/reader, and a computer. The interrogator/reader generates a
radio frequency (“RF”) field sufficient to activate every RFID tag within the field range.
Once activated, the RFID tags, which contain anti-collision capabilities, communicate
their unique code to the interrogator/reader. The interrogator/reader communicates the
unique code to the computer. The computer includes a list of identifiers for each
inventory item, unique codes for each RFID tag, and an item status for each inventory
2008-1412 2
item. It sets the item status to true or “present” for inventory items associated with
received unique codes and sets the item status to false or “absent” for inventory items
from which the computer does not receive unique codes.
RFID appeals the district court’s summary and final judgments and its claim
construction of “interrogator/reader.” This court has jurisdiction under 28 U.S.C. §
1295(a)(1).
III.
This court reviews a district court’s claim construction de novo. Bd. of Regents of
the Univ. of Tex. Sys. v. BenQ Am. Corp., 533 F.3d 1362, 1367 (Fed. Cir. 2008). The
same standard applies to this court's review of a district court’s grant of summary
judgment. Id. “A summary judgment motion is proper if there are no genuine issues of
material fact, while viewing the facts in a light most favorable to the non-moving party.”
Id.The prosecution history must be reviewed when interpreting a claim to “exclude
any interpretation” that was “disclaimed or disavowed during prosecution.” Computer
Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374-75 (Fed. Cir. 2008); ZMI Corp.
v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1580 (Fed. Cir. 1988). “A patentee may
limit the meaning of a claim term by making a clear and unmistakable disavowal of
scope during prosecution.” Computer Docking, 519 F.3d at 1374.
If the applicant unequivocally disavows claim scope, the doctrine of prosecution
disclaimer applies even if the disclaimer results in a negative claim limitation. See N.
Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005)
(affirming district court’s construction of claim term “generally convex” to require “a
2008-1412 3
majority of convex points along the inner wall and no concave points,” as the applicant’s
statements in the prosecution history disclaimed coverage of an inner wall with any
concavity). Prosecution disclaimer may also arise from an applicant’s statements in a
parent patent application if the parent application relates to the same subject matter as
the claim language at issue. Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1314
(Fed. Cir. 2007).
Claim 1 recites, in part, an “interrogator/reader” that includes a “field generator”
and a “receiver.” ’563 patent, col.9 ll.2–34. RFID argues that the claim uses the open-
ended term “including,” which, similar to “comprising,” raises a presumption that the
“interrogator/reader” is not limited to a “field generator” and a “receiver” and may include
a transmitter. RFID Br. at 11-16 (citing SanDisk Corp. v. Memorex Prods., Inc., 415
F.3d 1278, 1284 (Fed. Cir. 2005) (“As a patent law term of art, ‘includes’ means
‘comprising.’ Neither includes, nor comprising, forecloses additional elements that need
not satisfy the stated claim limitations.”)).
Claim 15 recites a method that, in part, requires “generating a field . . . with an
interrogator/reader.” ’563 Patent, col.10 l.55–col.11 l.16. The claim also requires the
step of “receiving periodic signals transmitted by each field activated apparatus
associated with each item within the range of the field.” Id. While it is possible another
structure could receive the periodic signals, claim 1 and the specification provide that
the interrogator/reader comprises a receiver that receives each field activated
apparatus’s periodic signal. Id., col.9 ll.2–34, col.3 ll.18–41 (describing the
interrogator/reader as designed to generate an RF field and receive signals from the
RFID tags).
2008-1412 4
The specification does not rebut RFID’s alleged presumption that the
interrogator/reader can include a transmitter. The specification, however, does not
strengthen RFID’s argument, as it only describes the interrogator/reader’s receiving and
field generation capabilities. See, e.g., ’563 Patent, col.3 ll.23–25 (stating the system
includes “an interrogator/reader designed to generate an RF field capable of activating
the RFID’s”); id., col.3 ll.32–38 (describing interrogator/reader capabilities as generating
a field and receiving signals from RFID tags); id., col.4 ll.36–40, col.5 ll.11–14
(describing interrogator/reader’s receiver capability); id., col.7 ll.7–23, ll.34–53, col.8
ll.13–18, ll.55–58 (describing interrogator/reader’s field generation capability).
During prosecution before the United States Patent and Trademark Office
(“PTO”), the patent examiner rejected claims 1 and 15 of the ’563 patent as obvious
under 35 U.S.C. § 103(a) in view of U.S. Patent No. 5,686,902 (“the Reis patent”) and
U.S. Pat. No. 5,539,394 (“the Cato patent”). The Reis and Cato patents disclose an
interrogator that contains a transmitter that communicates with RFID tags. See Reis
patent, Fig. 2, col.6 ll.39–61, col.9 l.39–col.11 l.53; Cato patent, Fig. 2, col.3 ll.31–64. In
both Reis and Cato, an interrogator sends polling commands to the tags. The applicant
differentiated its claims from this prior art on the ground that the claimed
interrogator/reader was simple, unlike the complex readers of the prior art that
contained and used a transmitter to send commands to the tags.
The district court found:
The applicant stressed, in the Preliminary Statement sections in its
responses to the 35 U.S.C. § 103(a) rejection, that the applicant’s
invention only requires a field to poll the inventory and the
interrogator/reader “is simply a receiver and field generator in its
simplest form.” Id. at Ex. 5D at 11; id. at 5F at 11 (“The present invention
does not require the interrogator/reader to do anything more than
2008-1412 5
receive transmitted signals from tags within the activation zone of a field
generated by the interrogator/reader.”); id. (stating “[t]he Reis and Cato
Patents simply do not disclose, teach or suggest an inventory system
where the interrogator/reader only received transmitted tag signals”); see
also id. at Ex. 5F at 9 (“the interrogator/reader is nothing more than a
receiver that receives a signal[], determines the unique code associated
with the signal and forwards the code to the computer for updating the
inventory list”). To specifically distinguish[] the present invention from the
Reis and Cato Patents to transverse the 35 U.S.C. § 103(a) rejection, the
applicant stated “[t]he [claimed] method . . . requires no polling and no
transmission from the interrogator/reader, the field performs the polling,
and the tags emit their uniquely modulated signals to the
interrogator/reader when activated by the field . . . .” Id. at Ex. 5D at 15.
Additionally, the applicant stated “[a]ll anticollision processing is handled
at the tag level and not at the interrogator/reader level,” which is
consistent with the applicant’s statements that distinguished the
interrogator/readers disclosed in the Reis and Cato Patents on the basis
that those interrogator/readers transmit data to the RFID tags. Id. at Ex.
5D at 11; id. at Ex. 5F at 9. In light of such distinctions, the applicant
concluded the Reis Patent, the Cato Patent, or the combination of the two
patents, does not disclose, teach, or suggest such a simple inventory
control system and as a result did not render obvious the applicant’s
claims. Id. at Ex. 5D at 15; id. at Ex. 5F at 14.
The applicant made similar statements in response to a similar
rejection during prosecution of the ‘563 Patent’s parent application
[analogous to the unamended application that became the ’563 patent],
which also claims an “interrogator/reader.” The applicant stated “[t]he
Reis [Patent] uses tag technology that requires the interrogator to send
signals to the tags and receive signals from the tags in such a way as to
minimize or eliminate simultaneous tag signal transmission.” Id. at Ex. 4E
at 12. With regard to the applicant’s invention, “[i]n distinction, the
present technology only requires that the interrogator generate a field
and receive tag signals . . . .” Id. The applicant further stressed that this
distinction was “fundamental.” Id. That the Examiner did not rely on
these statements, as the parent application never issued, does not negate
the effect of the applicant’s disclaimer. See Springs Window Fashions LP
v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed. Cir. 2003).
RFID Tracker, Ltd. v. Wal-Mart Stores, Inc., No. 6:06 CV 363, slip op. at 8-9 (E.D. Tex.
Feb. 11, 2008) (emphases added).
In light of these statements during prosecution, RFID cannot now contend that
the claimed interrogator/reader is anything more than “simply a receiver and a field
2008-1412 6
generator in its simplest form.” See Computer Docking, 519 F.3d at 1376-70 (“portable
computer” limitation in preamble of claim determined to mean “a computer without a
built-in display or keyboard” due to prosecution statements distinguishing prior art as
“requiring a portable display and keyboard,” whereas the invention did not require a
built-in display and keyboard); Innovad Inc. v. Microsoft Corp., 260 F.3d 1326, 1332
(Fed. Cir. 2001) (despite lack of explicit claim limitation prohibiting device from having a
keyboard, devices with keyboard were beyond scope of the claims due to disclaimer in
specification).
Accordingly, this court finds the district court properly found that the applicant’s
statements before the PTO, in total, clearly rebut RFID’s argument that the
interrogator/reader can include a transmitter and disclaim an interrogator/reader that
includes a transmitter. This court affirms the district court’s claim construction and
summary judgment of noninfringement, finding the claim term “interrogator/reader” to
mean “an interrogator/reader that includes a field generator and a receiver, but not a
transmitter.”
AFFIRMED
COSTS
No costs.
2008-1412 7