United States Court of Appeals for the Federal Circuit
04-1180
PC CONNECTOR SOLUTIONS LLC,
Plaintiff-Appellant,
v.
SMARTDISK CORPORATION
and FUJI PHOTO FILM U.S.A., INC.,
Defendants-Appellees.
Jonathan H. Steinberg, Irell & Manella LLP, of Los Angeles, California, argued for
plaintiff-appellant. With him on the brief were Morgan Chu and Jonathan S. Kagan.
Larry S. Nixon, Nixon & Vanderhye P.C., of Arlington, Virginia, argued for
defendants-appellees. With him on the brief was Mark E. Nusbaum.
Appealed from: United States District Court for the Middle District of Florida
Judge John E. Steele
United States Court of Appeals for the Federal Circuit
04-1180
PC CONNECTOR SOLUTIONS LLC,
Plaintiff-Appellant,
v.
SMARTDISK CORPORATION
and FUJI PHOTO FILM U.S.A., INC.,
Defendants-Appellees.
___________________
DECIDED: May 6, 2005
___________________
Before MICHEL, Chief Judge, LOURIE, and PROST, Circuit Judges.
LOURIE, Circuit Judge.
PC Connector Solutions LLC (“PC Connector”) appeals from the decision of the
United States District Court for the Middle District of Florida granting summary judgment
of noninfringement of United States Patent 5,224,216 in favor of SmartDisk Corporation
and Fuji Photo Film U.S.A., Inc. (collectively, “SmartDisk”). PC Connector Solutions
LLC v. SmartDisk Corp., No. 2:00-CV-539 (M.D. Fla. Nov. 10, 2003) (original judgment);
PC Connector Solutions LLC v. SmartDisk Corp., No. 2:00-CV-539 (M.D. Fla. Feb. 23,
2005) (amended judgment). Because the district court did not err in granting summary
judgment, we affirm.
BACKGROUND
PC Connector sued SmartDisk for infringement of the ’216 patent, which is
directed to the connection of peripherals to a computer via a coupler inserted into the
diskette drive. The salient features of the invention are set forth in claims 1 and 10, the
only claims at issue on appeal, which read in relevant part as follows:
1. In combination a computer having a diskette drive, an end user
computer peripheral device having an input/output port normally
connectible to a conventional computer input/output port, and a coupler
which couples the computer with the end user computer peripheral device
without using a conventional computer input/output port:
said coupler being sized and shaped for insertion within the diskette
drive of the computer . . . whereby data is transferred from said computer
to said end user computer peripheral device via said read/write head of
said computer, said coupler, and said input/output port of said end user
computer peripheral device.
’216 patent, col. 6, ll. 38-58 (emphasis added).
10. A method for forming a data transfer coupling between a computer
having a diskette drive having a read/write head and an input/output port
of one separate end user computer peripheral of a host of separate end
user computer peripherals where each separate end user computer
peripheral is traditionally connectable to a computer by means of an
input/output port of the computer and the standard input/output port of the
particular separate computer peripheral, said method comprising:
inserting a coupler having a stationary data transfer element into
the diskette drive . . . , and
connecting said coupler to the standard input/output port of the
separate computer peripheral . . . .
Id., col. 8, ll. 1-19 (emphasis added). The accused devices are various diskette-shaped,
sleeve-like adapters for flash memories and smart cards that allow such media to be
accessed through a diskette drive: a flash memory or a smart card is first inserted
wholly within the adapter, which is then inserted into a diskette drive, whereupon the
adapter facilitates data transfer between its resident flash memory or smart card and the
computer. (Martin Aff. ¶¶ 12-13; J.A. 264-65).
04-1180 2
SmartDisk moved for summary judgment of noninfringement. The matter was
referred to a magistrate judge who, relying on the analysis in Kopykake Enters., Inc. v.
Lucks Co., 264 F.3d 1377 (Fed. Cir. 2001), of the word “conventional” as referring to
technologies existing at the time of the invention, found no literal infringement of claim 1
on the basis that the flash memories and smart cards used with the accused devices
were not peripherals that were “normally connectible to a conventional computer
input/output port” in existence at the time of filing in 1988.1 Similarly, by construing the
terms “traditionally connectable” and “standard” in claim 10 as referring to input/output
(“I/O”) technologies existing in 1988, the magistrate judge found no literal infringement
of that claim. Adopting the magistrate judge’s report and recommendation, the district
court2 granted SmartDisk’s motion for summary judgment of noninfringement.
PC Connector appealed. We have jurisdiction3 pursuant to 28 U.S.C.
§ 1295(a)(1).
1
The ’216 patent issued from a continuation application whose parent had
been filed in 1988. The accused devices were developed in the 1990s. (Martin Aff. ¶
14; J.A. 265-66).
2
Because the district court adopted the magistrate judge’s report and
recommendation, we shall refer to the magistrate judge’s findings and conclusions as
those of the district court.
3
While SmartDisk’s counterclaims asserted both noninfringement and
invalidity, the ruling granting summary judgment of noninfringement initially contained
no reference to the invalidity counterclaim. During oral argument, counsel for both
parties recognized the pendency of the invalidity counterclaim, and the consequent
likelihood of a jurisdictional defect in the absence of a certification under Federal Rule of
Civil Procedure 54(b). The parties thereafter obtained an amended judgment from the
district court dismissing the counterclaim, nunc pro tunc, which ripened the appeal. See
Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 830 (Fed. Cir. 2003).
04-1180 3
DISCUSSION
We review de novo the district court’s grant of summary judgment of
noninfringement. Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 149 F.3d
1309, 1315 (Fed. Cir. 1998). Determining whether a claim has been infringed requires
a two-step analysis. Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576
(Fed. Cir. 1993). “First, the claim must be properly construed to determine its scope
and meaning. Second, the claim as properly construed must be compared to the
accused device or process.” Id. In seeking reversal, PC Connector charges that the
determination of noninfringement was: (1) premised on a flawed claim construction; and
(2) fatally deficient for failing to include an analysis under the doctrine of equivalents.
Our review of the record, however, reveals nothing that compels us to disturb the
judgment. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983)
(“We sit to review judgments, not opinions.”).
A. Claim Construction
Claim construction is a question of law that we review without deference. Cybor
Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). In
interpreting claims, a court “should look first to the intrinsic evidence of record, i.e., the
patent itself, including the claims, the specification and, if in evidence, the prosecution
history.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
PC Connector accuses the district court of having improperly construed the terms
“normally connectible” and “conventional” in claim 1, and “traditionally connectable” and
“standard” in claim 10, as fixing the peripherals and computer I/O ports described by
such terms to be those in existence at the time of filing in 1988. According to PC
04-1180 4
Connector, the terms merely clarify the manner of connecting peripherals to a
computer—i.e., through dedicated I/O ports typically clustered at the rear of the
chassis—without imposing a time-based limitation on the I/O technologies involved. We
disagree.
PC Connector essentially advances a construction that would require the words
“normally,” “conventional,” “traditionally,” and “standard” to be redefined as specifically
referring to—or, depending on the context, synonymous with being connectable to—a
dedicated computer I/O port. We conclude that the record is unable to support this
departure from the ordinary meanings of those words, whose descriptive properties are
implicitly time-dependent. A claim cannot have different meanings at different times; its
meaning must be interpreted as of its effective filing date. See Markman v. Westview
Instruments, Inc., 52 F.3d 967, 986 (Fed. Cir. 1995) (en banc) (“[T]he focus is on the
objective test of what one of ordinary skill in the art at the time of the invention would
have understood the term to mean.”), aff’d, 517 U.S. 370 (1996); see also Kopykake,
264 F.3d at 1383 (“[W]hen a claim term understood to have a narrow meaning when the
application is filed later acquires a broader definition, the literal scope of the term is
limited to what it was understood to mean at the time of filing.”). Furthermore, “unless it
appears from the specification or the file history that they were used differently by the
inventor,” the words of a claim are generally accorded their “ordinary and accustomed
meaning.” Carroll Touch, 15 F.3d at 1577; see also Vitronics, 90 F.3d at 1582 (“[A]
patentee may choose to be his own lexicographer and use terms in a manner other than
their ordinary meaning, as long as the special definition of the term is clearly stated in
the patent specification or file history.”).
04-1180 5
We find nothing in the written description that amounts to a clear attempt by the
patentee to impart any special meaning to the words “normally,” “conventional,”
“traditionally,” or “standard.” Likewise, in the prosecution history, we do not read the
patentability arguments that were made specifically to distinguish a test fixture as
having effected the particular redefinition now advanced on appeal. As a consequence,
the terms “normally,” “conventional,” “traditionally,” and “standard” are governed by their
ordinary and customary meanings, and that, in view of their implicit time-dependence,
the district court did not err in construing the literal scope of the claim limitations
qualified by those terms as being limited to technologies existing at the time of the
invention.
PC Connector’s argument that the dictionary definitions of “normally,”
“conventional,” “traditionally,” and “standard” contain no explicit reference to a time
limitation is not persuasive, as their time-related significance is implicit from their
ordinary usage—just as other words are implicitly not time-related. A comparison of the
words “conventional” and “dedicated” is instructive in this regard, as PC Connector’s
briefs appear to treat them as interchangeable and coterminous in claim scope, when,
in fact, they are not. To illustrate, a present-day USB port may be described as a
“dedicated” I/O port within the ordinary meaning of “dedicated” as that word would be
used to characterize the I/O ports found on a computer built in 1988, yet it would not be
considered “conventional” back then, even though it is “conventional” today. (Martin Aff.
¶ 11; J.A. 264). Thus, unlike the word “dedicated,” the word “conventional” necessarily
has a meaning specific to the time of filing. Accordingly, the district court did not err in
its claim construction.
04-1180 6
B. Infringement
Given its claim construction, the district court found no genuine issue of material
fact on the infringement question, and thus held that there was no literal infringement.
Summary judgment on the issue of infringement is proper when no reasonable jury
could find that every limitation recited in a properly construed claim either is or is not
found in the accused device either literally or under the doctrine of equivalents. Bai v. L
& L Wings, Inc., 160 F.3d 1350, 1353-54 (Fed. Cir. 1998).
Claim 1 requires that the peripheral device used with the claimed coupler have
“an input/output port normally connectible to a conventional computer input/output port,”
while claim 10 similarly requires the peripheral device to have a “standard input/output
port” that is “traditionally connectable to a computer.” Properly construed, these claim
limitations require the peripheral device to be connectable to a computer I/O port that
was in common use at the time of filing in 1988.
Because the flash memories and smart cards that are used with the accused
devices employ flat, planar surface contact electrodes at the I/O interface, (Martin Aff.
¶¶ 25-27; J.A. 273-74), which, to even a casual observer, cannot be connected to a
vintage 1988 computer I/O port that uses a multi-pin connector, there can be no literal
infringement.4 See Builders Concrete, Inc. v. Bremerton Concrete Prods. Co., 757 F.2d
255, 257 (Fed. Cir. 1985) (“Literal infringement requires that the accused device
embody every element of the claim.”).
4
Because connector incompatibility is dispositive of the infringement issue
for claim 10, we need not address SmartDisk’s argument regarding an alleged order of
the method steps, which it advances as an alternative ground for affirming the finding of
noninfringement.
04-1180 7
As for infringement under the doctrine of equivalents, that argument is not
properly before us. Having presented the district court with only conclusory statements
regarding equivalence, without any particularized evidence and linking argument as to
the “insubstantiality of the differences” between the claimed invention and the accused
device, or with respect to the “function, way, result” test, PC Connector is now
foreclosed from invoking the substantive application of the doctrine of equivalents.
Texas Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir.
1996); see also Lear Siegler, Inc. v. Sealy Mattress Co., 873 F.2d 1422, 1425 (Fed. Cir.
1989) (“The evidence and argument on the doctrine of equivalents cannot merely be
subsumed in plaintiff’s case of literal infringement.”). Moreover, conclusory statements
regarding equivalence are not enough to warrant a remand on that issue, as they do not
raise any genuine issues of material fact. See Intellicall, Inc. v. Phonometrics, Inc., 952
F.2d 1384, 1389 (Fed. Cir. 1992).
Even if there were not such a foreclosure, a finding of equivalence in this case
would effectively vitiate the time-related limitation on the I/O ports, if what is “normally
connectible,” “conventional,” “traditionally connectable,” and “standard” at the time of
filing were deemed to be equivalent to what is “normally connectible,” “conventional,”
“traditionally connectable,” and “standard” at a future date. As a matter of law, there
can be no infringement under the doctrine of equivalents “[i]f a theory of equivalence
would vitiate a claim limitation.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1160 (Fed. Cir.
1998). Accordingly, the district court’s failure to consider infringement under the
doctrine of equivalents was, at most, harmless error.
04-1180 8
We have considered the parties’ other arguments and conclude that they are
either unpersuasive or unnecessary for resolution of this appeal.
CONCLUSION
For the foregoing reasons, we conclude that the grant of summary judgment of
noninfringement was not error, and accordingly affirm.
AFFIRMED
04-1180 9