St. Clair Intellectual Property Consultants, Inc. v. Canon Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
ST. CLAIR INTELLECTUAL PROPERTY
CONSULTANTS, INC.,
Plaintiff-Cross Appellant,
v.
CANON INC. AND CANON U.S.A., INC.,
Defendants,
and
FUJI PHOTO FILM CO. LTD. (NOW FUJIFILM
CORPORATION), FUJI PHOTO FILM U.S.A. INC.
(NOW FUJIFILM NORTH AMERICA
CORPORATION), AND FUJIFILM AMERICA INC.
(NOW FUJIFILM HOLDINGS AMERICA
CORPORATION),
Defendants-Appellants.
__________________________
2009-1052, 2010-1137, -1140
__________________________
Appeals from the United States District Court for the
District of Delaware case no. 03-CV-0241, Judge Joseph J.
Farnan, Jr.
___________________________
Decided: January 10, 2011
___________________________
ST. CLAIR PROPERTY v. CANON INC 2
RONALD J. SCHUTZ, Robins, Kaplan, Miller & Ciresi
L.L.P, of Minneapolis, Minnesota, argued for plaintiff-
cross appellant. With him on the brief were JAKE M.
HOLDREITH, BECKY R. THORSON, SETH A. NORTHROP and
TREVOR J. FOSTER. Of counsel was DAVID P. SWENSON.
STEVEN J. ROUTH, Orrick, Herrington & Sutcliffe LLP,
of Washington, DC, argued for defendants-appellants.
With him on the brief were STEIN A. JENSEN; and E.
JOSHUA ROSENKRANZ and ALEX V. CHACHKES, of New
York, New York; and WILLIAM H. WRIGHT, of Los Angeles,
California.
__________________________
Before DYK, MAYER, and MOORE, Circuit Judges.
Opinion for the court filed by Circuit Judge DYK.
Dissenting opinion filed by Circuit Judge MOORE.
DYK, Circuit Judge.
Fuji Photo Film Co. Ltd., Fuji Photo Film U.S.A. Inc.,
and Fujifilm America Inc. (collectively “Fuji”) appeal a
judgment that Fuji infringed four patents owned by St.
Clair Intellectual Property Consultants, Inc. (“St. Clair”).
These are United States Patent Nos. 5,138,459 (“’459
patent”), 6,094,219 (“’219 patent”), 6,233,010 (“’010 pat-
ent”), and 6,323,899 (“’899 patent”). We hold that the
district court erred in construing the asserted claims, and,
accordingly, we reverse the judgment of infringement.
BACKGROUND
In 2003, St. Clair sued Fujifilm and seven other digi-
tal camera manufacturers for infringing the patents-in-
suit. All four patents share a common specification and
cover electronic “still video cameras” that save digital
photographs in user-determined memory formats for use
3 ST. CLAIR PROPERTY v. CANON INC
on personal computers (“PCs”). Primarily at issue was
claim 16 of the ’459 patent, which provides in relevant
part:
A process for storing an electronically sensed
video image comprising the steps of: . . . recording
in selectable addressible memory means at least
one of a plurality of different digital output data
format codes where each of said plurality of out-
put data format codes corresponds respectively to
one of a like plurality of different data formats for
different types of computer apparatus.
’459 Patent col.15 l.23–col.16 l.4 (emphasis added). St.
Clair also asserted dependant claim 17 of the ’459 patent.
Claim 10 of the ’219 patent similarly provides the identi-
cal “plurality of different data formats for different types
of computer apparatus” language. The parties disputed
whether this phrase was limited to formats related to
different computer architectures (e.g., IBM or Apple PCs)
or if it could also include formats related to different
computer applications (e.g., software that can run GIFF
or PICT). Fuji contended that the “different types of
computer apparatus” language refers to different types of
architecture (i.e., different operating systems combined
with hardware) such as IBM and Apple PCs, and not to
different applications that can run on multiple types of
architectures. In its August 31, 2004, Markman order,
the district court rejected Fuji’s construction, construing
the disputed claim term as follows:
(1) a ‘data format’ is the arrangement of digital
data in a file including image, audio, text or other
data and includes, at least, MPEG, JPEG, GIF,
TIFF, PICT, BMP, JFIF, DCF, TXT, DOC, WPD
and WAV, and (2) a ‘computer apparatus’ is a
computer and any operating system or application
ST. CLAIR PROPERTY v. CANON INC 4
software loaded on the computer. Computer appa-
ratus are ‘different types’ within the meaning of
the claims if they are loaded with different appli-
cation software, even if they are otherwise the
same.
St. Clair Intellectual Prop. Consultants, Inc. v. Canon,
Inc., No. 03-241, slip op. at 9–10, 2004 WL 1941340, at *4
(D. Del. Aug. 31, 2004) (emphasis added). Under the
district court’s construction, the accused Fuji cameras
infringed claims 16 and 17 of the ’459 patent and claim 10
of the ’219 patent because the cameras can save pictures
under multiple file formats accessible by various software
programs running on both IBM and Apple PCs. Fuji’s
cameras did not infringe under Fuji’s proposed construc-
tion of the claims.
A similar dispute arose with respect to claim 1 of the
’010 patent and claims 1 and 3 of the ’899 patent. Though
those claims use somewhat different language, the district
court concluded that “the parties agree[d]” to construe the
asserted claims consistently across all four patents, with
the result that the Fuji cameras also infringed those
claims. St. Clair, 2004 WL 1941340, at *4. As St. Clair’s
expert acknowledged at trial, however, none of the ac-
cused Fuji cameras has “different formats for different
types of computer apparatus where the different types of
computer apparatus are IBM on the one hand and Apple
on the other.” J.A. 7629.
During the Markman proceedings, the district court
also addressed a separate claim construction issue—
whether the claim term “plurality of different data for-
mats” included movie formats. This limitation or varia-
tions thereof appear in claim 16 of the ’459 patent; claims
1, 10, and 16 of the ’219 patent; claim 1 of the ’010 patent;
and claims 1 and 3 of the ’899 patent. St. Clair contended
5 ST. CLAIR PROPERTY v. CANON INC
that movie formats were covered under the district court’s
construction of “data formats” in claim 16. Fuji disagreed,
arguing that the invention only covered “still pictures”
and not movies. The district court’s Markman order
found that “neither the specification nor the language of
the claims impose[d] a still picture limitation.” St. Clair,
2004 WL 1941340, at *7. Under this construction, the
accused Fuji cameras, which had both a still picture and
movie mode, were found to satisfy the “plurality of differ-
ent data formats” limitation of the asserted claims.
In October 2004, under the district court’s claim con-
struction, a jury found that each of the asserted claims
was valid and infringed by Fuji’s products. In September
2005, the district court denied Fuji’s motion for judgment
as a matter of law. However, on June 19, 2006, before the
entry of judgment, the case was stayed. In 2008, the
district court lifted the stay and entered judgment on the
2004 verdicts. On November 19, 2009, the court denied
St. Clair’s motion for a new trial on damages and entered
an Amended Judgment. Fuji timely appealed, and we
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
The parties agree that if Fuji’s construction of the
claims is correct, there is no infringement. Claim con-
struction is a question of law, which we review de novo.
Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir.
1998) (en banc).
I
Under the district court’s construction of “computer
apparatus,” claims 16 and 17 of the ’459 patent and claim
10 of the ’219 patent encompass all permutations of
hardware, operating systems, and “different application
software.” St. Clair, 2004 WL 1941340, at *3. As St.
ST. CLAIR PROPERTY v. CANON INC 6
Clair’s expert stated during trial, a data format would be
“for” a different type of computer apparatus “if it’s possi-
ble to have a computer that can read that format and
another computer that cannot.” J.A. 7636.
In light of the claim language and the ubiquitous and
consistent correspondence between data formats and
computer architectures throughout the specification and
prosecution history, we hold that the term “computer
apparatus” refers to computer architecture. Each data
format code “corresponds respectively to one of a like
plurality of different data formats for different types of
computer apparatus” only if “each data format” corre-
sponds on a one-to-one basis to a different type of com-
puter architecture (e.g., in the way that GIFF corresponds
to IBM and PICT corresponds to Apple). Under this
construction, there is no infringement of claims 16 and 17
of the ’459 patent or claim 10 of the ’219 patent.
Claim language. On its face, the term “computer
apparatus” appears to refer to computer architecture.
The phrase “different data formats for different types of
computer apparatus” appears to refer to data formats that
correspond to particular computer architectures.
Specification. In 1990, the problem the inventors
sought to solve was one of computer architecture incom-
patibility, not data format incompatibility. Back then, the
proprietary nature of PC development—under which IBM
and Apple PCs were manufactured with different and
incompatible processors, operating systems, and memory
schemes—meant that digital images formatted for use on
an IBM PC could not be used on an Apple PC without
converting that data. This presented a computer architec-
ture incompatibility problem.
Here, the specification uniformly describes the solu-
tion to this problem as involving the selection of data
7 ST. CLAIR PROPERTY v. CANON INC
formats that correspond to particular computer architec-
tures. We have held that the consistent use of a claim
term in the specification suggests that the scope of a claim
is limited. See Nystrom v. Trex Co., 424 F.3d 1136, 1144–
45 (Fed. Cir. 2005). The specification expressly allows a
user to select data formats for use with particular com-
puter architectures, citing IBM and Apple PCs as exem-
plar architectures. The Abstract provides in relevant
part:
An electronic still camera . . . [that] selectively
formats the compressed digital image to a com-
patible format for either the IBM Personal Com-
puter and related architectures or the Apple
Macintosh PC architecture as selected by the op-
erator so that the digital image can be directly
read into most word processing, desktop publish-
ing, and data base software packages including
means for executing the appropriate selected de-
compression algorithm.
’459 Patent, at [57] (emphasis added). When a user
selects a format, he makes a decision based on the desired
architecture—not a particular data format. Moreover, the
specification describes the two preferred data formats,
GIFF and PICT, consistently as being “PC compatible
formats” that are respectively associated with IBM and
Apple PCs. See, e.g., ’459 Patent col.10 ll.9–10; col.11
ll.32–44.
The “format switch,” labeled (17) in the figures, was
the inventive solution for allowing users to select between
different data formats. ’459 Patent col.11 ll.32–36. Using
this switch, a user can select “IBM” to choose the pre-
ferred GIFF format corresponding to IBM PCs; “Apple” to
choose the preferred PICT format corresponding to Apple
PCs; or “Other” for architectures other than IBM and
ST. CLAIR PROPERTY v. CANON INC 8
Apple. ’459 Patent col.4 l.68–col.5 l.4 & col.12 ll.53–60.
Figures depicting “format switch (17)” consistently show a
one-to-one correspondence between computer architecture
and format code. For example, Figure 2A shows three
modes for “format signals (57)”: “Apple = 00”; “IBM = 01”;
“Other = 10.” ’459 Patent col.3 ll.8–11; see also id. fig.6
(showing control panel logic with two format choices: IBM
or Apple); id. fig.14A (listing options for format switch
(17) as “Apple V1”; “IBM V2”; and “Other PC V3”); id.fig.14B (showing how format switch (17) controls the
selection of an “image data” format that corresponds with
the desired PC format and memory format for the selected
PC architecture). These figures thus disclose how the
data format codes must correspond to computer architec-
ture.
Prosecution history. In construing claim terms,
“the prosecution history can often inform the meaning of
the claim language by demonstrating how the inventor
understood the invention.” Phillips v. AWH Corp., 415
F.3d 1303, 1317 (Fed. Cir. 2005).
During prosecution, the inventors described the prob-
lem to be solved as one of computer architecture incom-
patibility:
Applicants’ claimed improvement . . . solves a
long felt need by providing a low cost and efficient
solution for achieving flexible and selectable data
format compat[i]bility between the output of an
electronic still camera and the input to any one of
a plurality of personal computer-type appara-
tus. . . . [T]he prior art . . . has required relatively
expensive and cumbersome, multi-step conversion
processes to achieve input data format com-
pat[i]bility with any one of a plurality of types of
personal computers manufactured by different
9 ST. CLAIR PROPERTY v. CANON INC
companies, e.g. IBM PC, Apple, Sun Micro Sys-
tems, Digital Equipment, etc. . . .
As is well known to those skilled in the infor-
mation processing and computer arts, different
types of personal computers, e.g. IBM PC, Apple
Macintosh, DEC, Sun Microsystems, etc. each
have widely different, non-compatible in-
put/output data formats, line I/O discipline and
instruction command sets and therefore the in-
put/output data formats for one type [of] appara-
tus is not usable with or inputable into another
manufacturer’s apparatus. Since there is no in-
dustry standard generally recognized by all PC
manufacturers, . . . machines of one manufacturer
cannot exchange data or be interconnected with or
communicate with machines of another manufac-
turer. Therefore, data formatted for one such PC-
type machine must be converted to be compatible
with another machine.
J.A. 1557–59 (emphases added). In other words, the
invention “solve[d] a long felt need” by allowing data
format compatibility with a “plurality of types of personal
computers manufactured by different [personal computer]
companies, IBM PC, Apple, Sun Micro Systems, Digital
Equipment, etc.” J.A. 1558. Similarly thereafter, in the
words of the inventors, the patents-in-suit “solve[d] a long
felt need”:
[B]efore Applicants’ improvement there has not
been commercially available a simple apparatus
or process which permits the electronic still cam-
era to designate or select one of a plurality of digi-
tal data formats as the camera is being utilized to
ensure direct data format compat[i]bility for input
ST. CLAIR PROPERTY v. CANON INC 10
into a selected model personal computer appara-
tus.
J.A. 1557, 1559–60 (emphases added). In sum, to address
the architecture incompatibility problem, the applicants
created a camera that could output a plurality of formats
for computers “manufactured by different companies, e.g.
IBM PC, Apple, Sun Micro Systems, Digital Equipment,
etc.” J.A. 1558. Only by construing “different types of
computer apparatus” to mean “different types of computer
architecture” can we remain faithful to the invention
actually described in the prosecution history.
Because the accused Fuji cameras output data for-
mats that are not tailored to specific computer architec-
tures, Fuji does not infringe claims 16 and 17 of the ’459
patent or claim 10 of the ’219 patent.
II
However, St. Clair contends that the asserted claims
of the ’010 and ’899 patents use different claim language
than the asserted claims of the ’459 and ’219 patents, and
that those claims should be construed differently. Though
the district court found that “the parties agree[d]” to
construe the asserted claims consistently across all four
patents, St. Clair, 2004 WL 1941340, at *4, the record
seems to support St. Clair’s contention that it neither
agreed nor disagreed to affirmatively use claim 16 as a
representative claim.
Nonetheless, we conclude that the asserted claims of
the ’010 and ’899 patents are limited to selecting formats
for different types of computer architecture. Each patent
shares the same specification and uses similar, and often
identical, terminology. St. Clair’s brief also recognizes
that the asserted claims of the other patents include
“variations of [the] language” used in claim 16. Plaintiff-
11 ST. CLAIR PROPERTY v. CANON INC
Cross Appellant’s Br. 24. These “variations” are as fol-
lows:
• ’010 Patent, Claim 1: “formatting said
digital image signal in one of a plural-
ity of computer formats.” ’010 Patent
col.12 ll.59–60 (emphasis added).
• ’899 Patent, Claim 1: “formatting the
digital image signal in one of a plural-
ity of computer image file formats.”
’899 Patent col.12 ll.48–49 (emphasis
added).
• ’899 Patent, Claim 3: “formatting the
digital image signal in the selected
computer image file format.” ’899 Pat-
ent col.12 ll.60–61 (emphasis added).
The fact that the specification describes only a single
invention, and does not differentiate between the scope of
claims using very different language, suggests that the
limitations in claim 1 of the ’010 patent and claims 1 and
3 of the ’899 patent should have the same meaning as the
“different data formats for different types of computer
apparatus” language in claims 16 and 17 of the ’459
patent and claim 10 of the ’219 patent.
Fuji’s construction is also supported by remarks made
by the examiner during reexamination. 1 Reexamination
1 St. Clair argues that Fuji waived consideration of
the reexamination materials because it failed to raise in
its opening brief the issue of the district court striking the
reexamination materials from the record. See, e.g., In re
Cygnus Telecomm. Tech. LLC, 536 F.3d 1343, 1356 (Fed.
Cir. 2008). However, Fuji clearly relied on the examiner’s
statements in its briefs in this court, and this court can
take judicial notice of the reexamination record. See
Standard Havens Prods., Inc. v. Gencor Indus. Inc., 897
ST. CLAIR PROPERTY v. CANON INC 12
statements “are relevant prosecution history when inter-
preting claims.” E.I. du Pont de Nemours & Co. v. Phil-
lips Petroleum Co., 849 F.2d 1430, 1439 (Fed. Cir. 1988).
The reexamination procedure serves an important role in
providing a district court with an “expert view of the
PTO.” Gould v. Control Laser Corp., 705 F.2d 1340, 1342
(Fed. Cir. 1983). In this case, the reexamination occurred
against the backdrop of an earlier Sony litigation involv-
ing the same claim terms. See St. Clair Intellectual Prop.
Consultants, Inc. v. Sony Corp., No. 01-557, 2002 WL
31051605 (D. Del. Sept. 3, 2002). In Sony, the district
court defined the term “data format” to mean “the ar-
rangement of digital data in a file, including image, audio,
text or other data and includes, at least, MPEG, JPEG,
GIF, TIFF, PICT, BMP, JFIF, DCF, TXT, DOC, WPD and
WAV.” Id. at *2. The court construed the term “computer
apparatus” to mean “a computer and any operating sys-
tem or application software loaded on the computer.” Id.
at *3. During reexamination, five different examiners,
including three different Supervisory Patent Examiners,
rejected the Sony court’s interpretation of the claim
language. In addition to concluding that claims 16 and 17
of the ’459 patent and claim 10 of the ’219 patent were
limited to different data formats for different types of
computer architecture, the examiners, rejecting the Sony
court’s construction, concluded that the “computer archi-
tecture” construction also applied to the ’010 and ’899
patents:
• ’010 Patent: “[T]he claim limitation ‘.
. . formatting said digital image signal
in one of a plurality of computer for-
mats’ is interpreted to mean format-
F.2d 511, 514 n.3 (Fed. Cir. 1990) (taking notice of the
“adjudicative fact” of an office action on reexamination
rejecting the patentee’s claims).
13 ST. CLAIR PROPERTY v. CANON INC
ting the image signal as one of an IBM
PC/Clone, Apple Macintosh, or other
PC format. Office Action in Ex Parte
Reexamination of ’010 Patent, J.A.
9584.
• ’899 Patent: “[T]he claim limitation
‘formatting the digital image signal in
one of a plurality of computer image
file formats’ is interpreted to mean
formatting the image signal as one of
an IBM PC/Clone, Apple Macintosh,
or other PC format.” Office Action in
Ex Parte Reexamination of ’899 Pat-
ent, J.A. 9543.
Because an examiner in reexamination can be considered
one of ordinary skill in the art, his construction of the
asserted claims carries significant weight.
St. Clair contends, however, that the examiner actu-
ally accepted its construction of the claims in connection
with the examination of the ’899 patent. St. Clair’s ar-
gument relies on the fact that the examiner acknowledged
that at least one data format, the TIF image file format,
was “platform independent and could be used in either an
IBM PC/Clone or Apple Macintosh computer.” J.A. 9544.
This statement suggested to St. Clair that “the examiner
did not believe that the claims were limited to formats
that could only be read by one architecture.” Plaintff-
Cross Appellant’s Br. 49. This argument does not with-
stand scrutiny. The examiner was responding to a con-
tention that the Kühberger prior art was anticipatory.
While the examiner’s reasons for refusing to find anticipa-
tion were not entirely clear, the examiner plainly found
that the patents-in-suit did something different because
they did not disclose selecting among different data
ST. CLAIR PROPERTY v. CANON INC 14
formats. In doing so, he did not suggest that the non-
platform-specific TIF format was the type of format that
the claims were designed to accommodate. And the
examiner thereafter made clear that the language of the
’459 patent meant
the image file formats provided for selection
(PICT II or GIFF) are in one-to-one correspon-
dence with a particular type of computer system
(Apple Macintosh or IBM PC) respectively . . . . In
other words, [the applicants] DO NOT provide se-
lecting between various subspecies of the same
computer species (e.g. Species 1–A, Species 1–B,
or Species 1–C), rather [the applicants] DO pro-
vide selecting between various computer species
(e.g. Species 1, Species 2, or Species etc.).
J.A. 9612. The examiner explicitly rejected the Sony
claim construction on which the district court relied and
applied this construction not just to the ’459 and ’219
patents, but also the ’010 and ’899 patents, specifically
stating that, with respect to the ’899 and ’010 patents, the
“[e]xaminer is in agreement with the comments made by
the Requester . . . that . . . a very different interpretation
tha[n] that adopted by the [Sony] court must be made.”
J.A. 9542, 9583.
We also find that, although St. Clair submitted
“Comments on Statement for Reasons for Patentability
and/or Conformation” disagreeing with the examiner’s
construction, St. Clair’s comments “do[ ] not, indeed
cannot, change the examiner’s Reasons for Allowance.”
Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1139
(Fed. Cir. 2003); see also 37 C.F.R. § 1.104(e) (“Failure by
the examiner to respond to any statement commenting on
reasons for allowance does not give rise to any implica-
tion.”).
15 ST. CLAIR PROPERTY v. CANON INC
We conclude that the similar terms in the ’010 and
’899 patents should be construed as limited to different
computer architectures.
III
A second claim construction issue with respect to
claim 16 concerns the “plurality of data formats” limita-
tion. St. Clair argues that “different data formats” are
not limited to “still” pictures, but include moving images.
While the camera must produce a still image, the district
court construed the term “data formats” to also include a
movie mode. Because certain Fuji cameras have both a
still picture data format and a movie data format, under
the district court’s construction, these cameras would
satisfy the “plurality of different data formats” limitation.
The district court pointed to two references in the specifi-
cation to show that the data formats contemplated by the
inventors included movie formats: (1) a reference to
camera circuitry that allows “for approximately 20 images
to be captured in a one second period,” ’459 Patent col.8
ll.35–37; and (2) references to the MPEG and DVI com-
pression techniques, which were designed to compress
sequential images, id. col.10 ll.49–59.
However, we agree with Fuji’s argument that the use
of the words “still” and “image” throughout the patents-in-
suit limits the claims to a single image or picture. See,
e.g., id. fig.2; col.1 ll.7–25. The word “still” is included in
the title, the Abstracts of the ’459 and ’219 patents, the
Summary of the Invention, and throughout the specifica-
tion. In contrast, the word movie does not appear once in
the specification or the prosecution history. In addition,
all the terms describing formatting issues refer to images.
See, e.g., ’219 Patent col.12 ll.48–49 (formatting “each
digitized captured image”) (emphases added). Though the
specification describes an invention able to capture ”ap-
ST. CLAIR PROPERTY v. CANON INC 16
proximately 20 images . . . in a one second period,” this
appears to refer to a mode of capturing multiple, but
singular still images in sequence. ’459 Patent col.8 ll.35–
37 (emphasis added); see also id. col.2 ll.32–34 (“An addi-
tional object of this invention [is] to . . . rapidly capture a
series of images automatically as well as singularly.”)
(emphases added).
Finally, we note that, even if the MPEG and DVI
compression techniques referenced in the specification are
designed for movie formats, these ambiguous references
cannot overcome the explicit limitation to still picture
formats elsewhere in the specification. Accordingly, we
hold that movie formats do not satisfy the “plurality of
data formats” limitation.
IV
Under the correct claim construction, judgment as a
matter of law of non-infringement should have been
granted. In view of this disposition, there is no need to
address issues concerning damages.
REVERSED
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
ST. CLAIR INTELLECTUAL PROPERTY
CONSULTANTS, INC.,
Plaintiff-Cross Appellant,
v.
CANON INC. AND CANON U.S.A., INC.,
Defendants,
AND
FUJI PHOTO FILM CO. LTD. (NOW FUJIFILM
CORPORATION), FUJI PHOTO FILM U.S.A. INC.
(NOW FUJIFILM NORTH AMERICA
CORPORATION), AND FUJIFILM AMERICA INC.
(NOW FUJIFILM HOLDINGS AMERICA
CORPORATION),
Defendants-Appellants.
__________________________
2009-1052, 2010-1137, -1140
__________________________
Appeals from the United States District Court for the
District of Delaware case No. 03-CV-0241, Judge Joseph J.
Farnan, Jr.
__________________________
ST. CLAIR PROPERTY v. CANON INC 2
MOORE, Circuit Judge, dissenting.
Respectfully, I dissent. I would affirm the district
court’s construction of all but one claim term and affirm the
judgment of infringement in favor of the patentee. While I
agree with the district court’s construction under a de novo
standard of review, I note that were any deference given,
this would surely be a case in which the lower court con-
struction should be affirmed. Because my colleagues devi-
ate from the plain meaning of these claim terms, I
respectfully dissent.
I.
With regard to claim 16 of the ’459 patent and elsewhere
where this term appears, 1 the majority holds that the term
“plurality of different data formats” is limited to still images
– that it does not include multiple or moving images. The
district court held that the plain meaning of this language
included both still image file formats and moving (movie)
image file formats. The district court held that the plain
and ordinary meaning of “data format” is “the arrangement
of digital data in a file, including image, audio, text or other
data and includes, at least, MPEG, JPEG, GIF, TIFF, PICT,
BMP, JFIF, DCF, TXT, DOC, WPD and WAV.” I see no
error in the district court’s construction (and Fujifilm does
NOT appeal that construction). The term “plurality of
different data formats” is broad and the plain meaning
would certainly include movie file formats such as MPEG.
Moreover, the specification EXPRESSLY names MPEG and
DVI compression (used for movies) as “an alternative em-
1 This term or a similar one appears in claim 16 of the
’459 patent, claims 1, 10 and 16 of the ’219 patent, claim 1 of
the ’010 patent and claims 1 and 3 of the ’899 patent. All
four patents have the same specification.
3 ST. CLAIR PROPERTY v. CANON INC
bodiment of the present invention.” ’459 patent col.10 ll.46-
59; see also id. col.8 ll.35-37.
The majority bases its narrowing of the plain meaning
on the repeated use of the words still and image in the
patent. Even though still appears often, the specification
also lists MPEG and DVI as an alternative embodiment.
Unlike SciMed Life Systems, Inc. v. Advanced Cardiovascu-
lar Systems, Inc., 242 F.3d 1337 (Fed. Cir. 2001), or other
such cases, there is no narrowing language in this specifica-
tion to justify narrowing the claim scope. Here, the claim
language at issue is “plurality of different data formats.”
The plain meaning of this language includes MPEG (which
all parties agree is a data format), and the specification
discloses MPEG/DVI as an alternative embodiment of the
invention. I believe the district court’s construction was
correct and I would affirm the determination of infringe-
ment of this claim.
II.
Fujifilm also appealed the construction of the following
terms: “a plurality of computer image file formats” in
claims 1 and 3 of the ’899 patent; “plurality of computer
formats” in claim 1 of the ’010 patent; “a plurality of differ-
ent data file formats for different types of computer appara-
tus” in claim 10 in the ’219 patent; “a plurality of different
data formats for different types of information handling
systems [apparatus]” in claims 1 [and 16] of the ’219 patent;
and “plurality of different data formats for different types of
computer apparatus” in claim 16 of the ’459 patent. Based
on the district court’s construction, a jury found infringe-
ment.
As an initial matter, the majority erred because it
claims that “the district court concluded that the parties
ST. CLAIR PROPERTY v. CANON INC 4
agreed to construe the claims consistently across all four
patents.” Maj. Op. at 4, 10. The record shows no such
agreement and no such statement by the district court. The
district court stated that “the parties agree that the terms
and phrases of the various patents should be construed
consistently.” Read in context, the district court was ex-
plaining that the parties agreed to construe similar terms
and phrases consistently, not entire claims or dissimilar
phrases. The district court gives an example of phrases that
the parties agreed should have the same construction:
“plurality of different data formats for different types of
computer apparatus” and “a plurality of different data
formats for different types of information handling sys-
tems.” I can agree that these phrases are similar.
I cannot agree, however, that a “plurality of different
data formats for different types of computer apparatus” is
similar to “a plurality of computer file formats,” and St.
Clair clearly argues that they should be construed differ-
ently. Appellee’s Br. 24. I believe therefore that St. Clair is
entitled to have this court independently construe each
term. For me, at least, such a process leads to different
constructions.
For claims which contain the language “a plurality of
different file formats for different types of computer appara-
tus” or “a plurality of different data formats for different
types of information handling systems,” I agree with the
majority, these terms refer to a data format for use with a
particular architecture. The term “plurality of different file
formats” includes all the different files formats discussed
above and the term “for different types of computer appara-
tus” implicates the different computer architectures. There-
fore these claims are limited to different file formats for
different architectures by their plain language.
5 ST. CLAIR PROPERTY v. CANON INC
This “for different types of computer apparatus” limita-
tion, however, does not appear in the claims at issue in the
’010 and ’899 patents. Those claims recite formatting a
digital image signal “in one of a plurality of computer for-
mats” and “in one of a plurality of computer image file
formats.” Because the inventors omitted the “for different
types of computer apparatus” limitation, the plain language
of those claims is broader. In my opinion, neither the speci-
fication nor the prosecution history supports importing such
a limitation into these claims.
I do not agree that the specification includes clearly nar-
rowing language as in SciMed. On the contrary, the specifi-
cation explains that JPEG “was developed in 1985 in
response to the lack of interoperability between image and
processing equipment due to numerous proprietary stan-
dards held by each manufacturer.” ’459 patent col.10 ll.33-
39. In addition to its express disclosure of the platform-
independent JPEG and MPEG standards, the specification
discusses PICT and GIF formats. As Fujifilm’s own expert
explained, although PICT files were “most often” used by
Apples and “some applications” on IBMs could read GIFs,
those file types were not exclusively limited to particular
architectures. He further explained that, at the time of
filing, some applications for both Apples and IBMs could
read those file formats.
I also do not agree with the majority’s reliance on the
reexamination history because St. Clair did not clearly
disavow claim scope during reexamination. On the con-
trary, during reexamination of the ’010 and ’889 patents, St.
Clair traversed the examiner’s narrow claim construction
prior to overcoming the asserted art. During reexamination
of the ’459 and ’219 patents, the examiner confirmed all
claims on the first office action. Hence, St. Clair argued
nothing in these reexaminations that could be construed as
ST. CLAIR PROPERTY v. CANON INC 6
a disavowal. In fact, in a post-allowance submission, St.
Clair made clear its view that these terms were not limited
in the manner the majority now does.
Thus, I conclude that the majority erred in its construc-
tion of a “plurality of computer image formats.” First, it
erred in not construing that term separately from the for
different architectures term. Second, it erred by importing
a limitation regarding computer architecture into a claim
which had no such limitation. As I believe the district court
construction of these file format terms is correct, I would
affirm the judgment of infringement.