Fiber Optic Designs, Inc. v. Seasonal Specialties, LLC

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
05-1488
FIBER OPTIC DESIGNS, INC.
and HOLIDAY CREATIONS, INC.,
Plaintiffs-Appellants,
v.
SEASONAL SPECIALTIES, LLC,
Defendant-Appellee.
___________________________
DECIDED: March 3, 2006
___________________________
Before MAYER, RADER, and PROST, Circuit Judges.
Opinion for the court filed by Circuit Judge RADER. Dissenting opinion filed by Circuit
Judge MAYER.
RADER, Circuit Judge.
The United States District Court for the District of Minnesota denied the motion of
Fiber Optic Designs, Inc. and Holiday Creations, Inc. (collectively “Fiber Optic”) for a
preliminary injunction. After construing claims of U.S. Patent No. 6,830,358 (the ’358
patent), the district court concluded that Fiber Optic was not likely to prevail on the
merits of their patent infringement action against Seasonal Specialties, LLC (Seasonal).
Fiber Optic Designs, Inc. v. Seasonal Specialties LLC, Case No. 05-CV-660 RHK/JSM
(D. Minn. July 1, 2005) (Order). Because the district court erred in its claim
construction, this court vacates the denial of the motion for preliminary injunction and
remands for further proceedings.
I.
As described in the ’358 patent, light emitting diodes (LEDs) offer certain
advantages over standard incandescent or fluorescent lighting sources. The ’358
patent features LEDs in a decorative holiday light string. ’358 patent, col. 1, ll. 27-44. In
particular, the ’358 patent “matches the AC voltage rating of the LEDs coupled in series
to the AC power input without the need for additional power conversion.” Id. col. 2, ll. 4-
7. Claim 1 of the ’358 patent, the only independent claim asserted, recites:
1. A light string comprising:
a predetermined number of light emitting diodes (LEDs) and
sockets forming individual electrical components
electrically coupled in series to form at least one
series block, each electrical component defining
individual alternating current average drive voltages,
the series block having a first electrical component
and a last electrical component, and
an alternating current electrical power supply having an
average supply voltage,
wherein a summation of said individual alternating current
average drive voltages is substantially equal to said
average supply voltage.
’358 patent, col. 16, l. 64 – col. 17, l. 9.
The defendant, Seasonal, sells light strings that include LEDs and sockets.
Seasonal’s light strings also include chip resistors attached to the LEDs within the
individual sockets. On March 13, 2005, Fiber Optic sued Seasonal, alleging that
Seasonal’s light strings infringe claims 1, 2, 5, 6, and 16 of the ’358 patent. Fiber Optic
sought a preliminary injunction against Seasonal’s ongoing sales of its light strings.
05-1488 2
After concluding that Seasonal had raised a “substantial question” by suggesting that
the specification limited the scope of the ’358 patent to light strings without current-
limiting circuitry, the district court denied Fiber Optic’s motion for a preliminary
injunction. Order, slip op. at 15-16. Fiber Optic appeals.
II.
Ultimately this court reviews the district court’s decision to deny or grant a
preliminary injunction for an abuse of discretion, Globetrotter Software, Inc. v. Elan
Computer Group, Inc., 236 F.3d 1363, 1367 (Fed. Cir. 2001), but underlying legal
issues, such as claim construction, receive no deference. Jack Guttman, Inc. v.
Kopykake Enters., 302 F.3d 1352, 1356 (Fed. Cir. 2002).
As an initial matter, this court notes that the district court characterized its
decision as a determination that Seasonal raised a substantial question about claim
construction. Despite the ambiguities in that characterization, this court reads the
district court’s order as construing claim 1 to exclude any current limiting circuitry. The
district court’s order fully addresses the parties’ arguments on claim construction in
terms of the specification and the prior art. The district court’s order does not appear to
contemplate additional open questions or issues requiring further development on the
question of additional current limiting circuitry. Thus, this court proceeds to review the
district court’s claim construction without deference. Compare Int’l Commc’n Materials,
Inc. v. Ricoh Co., 108 F.3d 316, 318-19 (Fed. Cir. 1997) (stating, in an appeal from a
denial of a preliminary injunction motion: “where a district court . . . acknowledges that
there are substantial open issues and questions that must be litigated pertaining to
claim construction . . . our role as an appellate court, absent an abuse of discretion,
05-1488 3
should be to provide the district [court] and parties the opportunity to complete the
picture”) (quotes omitted).
On its face, claim 1 of the ’358 patent does not include any language excluding
current-limiting circuitry. Nevertheless, as this court recently explained in Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the descriptions in the
specification can limit the apparent breadth of a claim in two instances: (1) where the
specification reveals a special definition given to a claim term by the patentee that
differs from the meaning it would otherwise possess; and (2) where the specification
reveals an intentional disclaimer, or disavowal, of claim scope by the inventor. 415 F.3d
at 1316. This case does not feature either reason to read a limitation from the
specification into the claims. Thus, the standard rule that a claim construction should
decline to incorporate additional limitations from the specification governs. See Comark
Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186-87 (Fed. Cir. 1998).
In its order, the district court did not identify a specific term in claim 1 that
required interpretation. While Seasonal’s arguments to the district court, and to this
court at oral argument, referred generally to the third limitation of claim 1 as being the
limitation associated with the exclusion of additional circuitry, the district court did not
appear to embrace that argument in its decision. Instead, the district court construed
claim 1 without an apparent focus on any claim term. This court has explained that a
claim “must explicitly recite a term in need of definition before a definition may enter the
claim from the written description.” Renishaw PLC v. Marposs Societa’ Per Azioni, 158
F.3d 1243, 1248 (Fed. Cir. 1998).
05-1488 4
Without any apparent support in the trial court’s order, Seasonal attempts to
bolster that construction by arguing that the district court was interpreting “electrical
component.” Seasonal adds that the “summation” of claim 1 then requires the exclusion
of “electrical components” with current-limiting circuitry. Seasonal’s rather questionable
patina on the district court’s claim construction, however, does not save it. Claim 1’s
summation refers to “said individual alternating current average drive voltages.” The
claim further identifies these individual AC average drive voltages with the individual
electrical components. Accordingly, claim 1 provides that LEDs and sockets form the
individual electrical components, but does not exclude the possibility of additional
elements within the electrical components that would then appear as part of the
summation.
On the other hand, if claim 1 excluded light strings with current limiting circuitry in
addition to, but not within, the electrical components, that current limiting circuitry
outside the electrical components identified in the claim would not affect the summation
at all. After all, the claim specifically makes the summation depend solely on the
electrical components and their AC average drive voltages.
Thus, claim 1 could be interpreted, consistent with its language and the
specification, to permit current limiting circuitry within the electrical components. These
additional current limiting features would then count as part of the summation.
Alternatively, claim 1 could be interpreted, consistent with its language and the
specification, to permit current limiting circuitry outside the electrical components. In
that case, those additional current limiting features would have nothing to do with the
05-1488 5
summation of electrical components. Under either interpretation, the language of claim
1 does not exclude current-limiting circuitry.
Where the meaning of no particular claim term is in dispute, a patentee can
nevertheless limit a claim with an intentional disclaimer, or disavowal, of claim scope.
Phillips, 415 F.3d at 1316. As evidence of disclaimer of light strings having current
limiting circuitry, the district court appeared to rely on the following statements in the
’358 specification:
“In order to directly drive a network of diodes without current-limiting circuitry, the
voltage of each series block of diodes must be matched to the input source
voltage.” ’358 patent, Abstract.
“FIG. 10 shows the preferred embodiment of the invention, wherein a network of
diodes, consisting of LEDs, is directly driven by the AC source without any
current-limiting circuitry.” ’358 patent, col. 8, ll. 51-54.
“The invention in FIG 10 may have additional circuitry . . . to perform functions
other than current-limiting.” ’358 patent, col. 9, ll. 1-3.
“The only vital feature of the diode network is that all diodes are directly driven
from the AC power source, without any form of current-limiting circuitry.” ’358
patent, col. 9, ll. 10-13.
Order, slip op. at 16-18. In addition, the district court noted a statement made by Fiber
Optic’s attorney during oral argument before the trial court: “[The] [p]rior art talked
about adding up the DC summations, it didn’t work, you put in a resistor and you made
a best guess as to how to solve the problem.” Id. at 17. In the district court’s view, the
repetitious use of “without current-limiting circuitry” in the specification “bolster[ed] the
argument” that Fiber Optic “explicitly and unequivocally” disclaimed light strings with
current-limiting circuitry. Id. at 18.
In contrast to SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems,
Inc., 242 F.3d 1337 (Fed. Cir. 1998), and the related cases cited by the district court,
05-1488 6
the ’358 specification does not clearly disclaim any particular subject matter. Read in
context, the above statements show that the AC summation method described in the
’358 patent overcomes the need for current-limiting circuitry in LED light strings. These
statements, however, at no point express that commercial embodiments of the invention
will never include such circuitry. Rather, the specification provides for LED light strings
“either without any additional circuitry (AC drive), or with only minimal circuitry (DC
drive).” ’358 patent, col. 3, ll. 57-59. The reference to “minimal circuitry” suggests that
the invention actually envisions that embodiments could employ additional circuitry
affecting the current.
The ’358 patent also explains that “each LED may have internal circuitry to
provide for intermittent on-off blinking and/or intermittent LED sub-die color changes.”
’358 patent, col. 3, ll. 39-43. Additional circuitry that would intermittently turn off an LED
would necessarily be current limiting. Thus, the specification again described an
instance where the invention could feature current limiting circuitry. These examples
show that the specification describes an invention that operates without further current-
limiting circuitry, but that is very distinct from excluding all uses of that particular
additional feature.
Furthermore, most of the statements from the specification relied upon by the
district court come from the description of the preferred embodiment, rather than
applying to the invention as a whole. This case thus contrasts starkly with SciMed,
where the specification stated that “all embodiments of the present invention
contemplated and disclosed herein” used the disputed annular lumen structure.
SciMed, 242 F.3d at 1343. The district court is correct in noting that this statement was
05-1488 7
not the only basis for the SciMed court’s decision, and that there are a number of other
cases where the specification was found to limit the claims in the absence of
comparable explicit language. Order, slip op. at 19. Nonetheless, neither the
statements in the ’358 specification nor that of Fiber Optic’s attorney constitute such a
disclaimer, either individually or in the aggregate.
Finally, a comparison of dependent claim 2 with claim 1 also supports the
conclusion that claim 1 is not limited to light strings without current-limiting circuitry.
Claim 2 provides:
2. The light string of claim 1, where said first electrical
component is directly coupled intermediate a source end and
a terminal end of a first set of wires and the last electrical
component directly coupled intermediate the source end and
the terminal end of a second set of wires, the light string
being free from additional circuitry intermediate the first
electrical component and the source end of the first set of
wires, between each of the electrical components, and
intermediate the last electrical component and the source
end of the second set of wires, and
wherein a first connector is coupled to both the source
end of the first set of wires and the source end of the
second set of wires which connector facilitates a
direct connection between the first electrical
component and a first side of said alternating current
electrical power supply, and the last electrical
component and a second side of the alternating
current electrical power supply.
’358 patent, col. 17, ll. 10-24. While lengthy, claim 2 limits the structure to a plug, wires,
and electrical components. Thus, claim 2 expressly excludes additional circuitry
between individual electrical components or between the electrical components and the
power supply. Because much of the language of claim 2 would be superfluous if claim
1 were interpreted to require the absence of additional current limiting circuitry, claim
differentiation counsels against the district court’s construction. See Phillips, 415 F.3d
05-1488 8
1303, 1324 (Fed. Cir. 2005) (“The inclusion of . . . a specific limitation on the term
‘baffles’ in claim 2 makes it likely that the patentee did not contemplate that the term
‘baffles’ already contained that limitation.”). Although claim differentiation serves best
as a guideline, rather than a rule, see Fantasy Sports Props. v. Sportsline.com, 287
F.3d 1108, 1115-16 (Fed. Cir. 2002), this court has noted that it works best when
dependent claims show a distinction over related independent claims, as in this case.
See Curtiss-Wright Flow Control Corp. v. Velan, Inc., ___ F.3d ___ (Fed. Cir. 2006).
For these reasons, the district court erred in its conclusion that Seasonal had
raised a substantial question that claim 1 of the ’358 patent is limited to light strings
without current-limiting circuitry. Claim 1 is not so limited. This error in claim
construction necessitates reevaluation by the district court of the motion for preliminary
injunction as a whole. See generally Amazon.com, Inc. v. Barnesandnoble.com, Inc.,
239 F.3d 1343, 1351 (Fed. Cir. 2001) (“The court must properly interpret the claims,
because an improper claim construction may distort the infringement and validity
analyses.”).
CONCLUSION
Because the district court erred in its claim construction, this court vacates the
denial by the district court of appellants’ motion for preliminary injunction and remands
for further proceedings consistent with this opinion.
05-1488 9
NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is
not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
05-1488
FIBER OPTIC DESIGNS, INC.
and HOLIDAY CREATIONS, INC.,
Plaintiffs-Appellants,
v.
SEASONAL SPECIALTIES, LLC,
Defendant-Appellee.
MAYER, Circuit Judge, dissenting.
I would sustain the ruling of the district court because a hearing has not yet been
held to resolve claim construction issues, and because the decision pertained to a
preliminary injunction. Given the information available to the trial court at the time of the
ruling and the relatively undeveloped state of the record, it was not an abuse of
discretion to conclude that Seasonal raised a substantial question about infringement of
the 6,830,358 patent.