NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
LOCHNER TECHNOLOGIES, LLC,
Plaintiff-Appellant,
v.
VIZIO, INC.,
Defendant-Appellee,
AND
TOSHIBA AMERICA INFORMATION SYSTEMS,
INC. (formerly known as Toshiba America, Inc.),
Defendant-Appellee.
______________________
2013-1551
______________________
Appeal from the United States District Court for the
Central District of California in No. 12-CV-1659, Senior
Judge Mariana R. Pfaelzer.
______________________
Decided: June 27, 2014
______________________
BRIAN D. LEDAHL, Russ August & Kabat, of Los Ange-
les, California, argued for plaintiff-appellant. With him
on the brief were MARC A. FENSTER and FREDRICKA UNG.
2 LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC.
ADRIAN M. PRUETZ, Glaser Weil Fink Jacobs Howard
Avchen & Shapiro LLP, of Los Angeles, California, argued
for defendant-appellee Vizio, Inc. With her on the brief
was CHARLES C. KOOLE. Of counsel on the brief was
STEVEN R. HANSEN, Lee Tran & Liang LLP, of Los Ange-
les, California.
DORIS JOHNSON HINES, Finnegan Henderson Farabow
Garrett and Dunner LLP, of Washington, DC, argued for
defendant-appellee Toshiba America Information Sys-
tems, Inc. With her on the brief were J. MICHAEL JAKES
and JASON E. STACH.
______________________
Before O’MALLEY, TARANTO, and CHEN, Circuit Judges.
O’MALLEY, Circuit Judge.
Lochner Technologies, LLC filed suit against Vizio,
Inc. and Toshiba America Information Systems, Inc.
(collectively, “Defendants”) for infringement of claims 1-10
and 12 of U.S. Patent No. 7,035,598 (“the ’598 Patent”),
which is entitled “Modular Computer System.” Defend-
ants filed counterclaims seeking a declaration that the
’598 Patent is invalid and not infringed. Defendants
subsequently filed a motion for summary judgment of
invalidity under 35 U.S.C. § 112.
Lochner appeals from the district court’s final judg-
ment that the asserted claims are invalid for: (1) lack of
written description under 35 U.S.C. § 112, ¶ 1; and
(2) failure to claim what the applicants regard as their
invention under 35 U.S.C. § 112, ¶ 2. We conclude that
the district court erred in its claim construction analysis.
Because its written description and “regards as invention”
analyses were predicated on this flawed analysis, we
vacate the district court’s judgment of invalidity and
remand for further proceedings.
LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC. 3
BACKGROUND
A. The ’598 Patent
Lochner Technologies, LLC (“Lochner”) is owned and
operated by Scott J. Lochner who is the principal inventor
and the exclusive owner by assignment of the ’598 Patent.
The ’598 Patent claims priority through a series of divi-
sional and continuation applications to U.S. Patent Appli-
cation No. 07/642,831, which was filed on January 18,
1991. After a lengthy prosecution history, the ’598 Patent
issued on April 25, 2006.
The patent explains that, at the time the application
was filed, there was no system which would allow a
computer user “to move easily and quickly from one
location to another while enjoying all of the operating
capabilities of a full-sized microcomputer.” ’598 Patent
col. 1 ll. 41-44. Accordingly, Lochner and his co-inventor
sought to create a portable way to access a personal
computer and “to allow the user to change locations, at
least over a limited area, while exerting full control over
the computer.” Id. at col. 1 ll. 49-54.
Generally speaking, the ’598 Patent is directed to a
wireless two-part computer system, including: (1) a sta-
tionary base storage and control unit; and (2) a portable
input-output unit. These structurally separate units are
depicted in Figure 1:
4 LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC.
While the storage and control unit is similar to a
“conventional basic computer system” which includes a
“CPU with microprocessor,” the input-output unit is
limited to achieve portability. Id. at col. 2 ll. 22-25. The
written description explains that “one unit of the comput-
er need only include an input device, typically a keyboard,
and an output device, typically a display” while “the
central processing unit and any desired peripherals . . .
form parts of another unit which can be allowed to remain
stationary.” Id. at col. 2 ll. 5-12. It further states that
“the input-output unit differs from known devices in that
in its preferred form of construction, it consists only of a
keyboard and a display device, along with an associated
transceiver unit.” Id. at col. 2 ll. 29-32 (emphases added).
Independent Claim 1, which the parties agree is
representative, recites a base system including four
components: (1) a processor; (2) a non-volatile memory;
LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC. 5
(3) a display element; and (4) a wireless transceiver.
Relevant to this appeal, Claim 1 also recites a “portable
input-output system including”: (1) a wireless transceiver;
(2) a user interface; and (3) a display arrangement. Id. at
col. 6 ll. 20-38 (emphasis added).
The written description repeatedly emphasizes that
the portability of the input-output unit is achieved by
limiting the unit essentially to the three components
listed in Claim 1:
• “Since one unit of the computer need only in-
clude an input device . . . an output device. . .
[and] a transceiver unit . . . this unit can be
relatively light in weight and hence portable.”
’598 Patent col. 2 ll. 5-8 (emphasis added).
• “[The input-output system] is composed essen-
tially of three components, a keyboard, a. . .
display device and a wireless transceiver de-
vice.” Id. at col. 3 ll. 7-9 (emphasis added).
• “Because of the limited number of components
forming [the input-output unit], this can be
conveniently constructed to have the general
form of a briefcase, including a carrying han-
dle.” Id. at col. 3 ll. 20-22 (emphasis added).
Consistent with this language in the written descrip-
tion, Lochner made several limiting statements during
the course of the patent’s lengthy prosecution history. For
example, to overcome certain prior art, Lochner expressly
excluded features of a full-service computer, such as non-
volatile data storage and the ability to execute application
programs:
(1) Sandstedt totally fails to teach or suggest the
basic concept claimed by Applicant: a two-part
computer system comprising: (1) a base storage
and control unit that includes all necessary com-
6 LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC.
ponents for computing; and (2) a simple, light-
weight, and inexpensive remote input/output unit
essentially dedicated to only I/O functions (i.e.,
not for non-volatile data storage or execution of
application programs). As shown and described in
Fig. 4 and col. 4, line 16 over to col. 5, line 48 of
Sandstedt, he teaches a portable terminal 12 that
is essentially a self-contained computer having a
microprocessor, RAM, and ROM.
Decl. of Charles C. Koole in Support of Defs.’ Opening
Claim Construction Br. at Exhibit M, Lochner Techs.,
LLC v. Apple Inc., No. 8:12-cv-1659 (C.D. Cal. Jan. 25,
2013), ECF 310-14 (July 26, 1993 Amendment after Final
Rejection filed in Application No. 07/642,831, to which the
’598 Patent claims priority) (emphases in original).
Lochner subsequently explained that:
Applicants are not claiming a device that is a
stand-alone processing system that can remotely
communicate with a host computer. Rather, Ap-
plicants are claiming a system that includes a re-
mote input/output unit for interacting with a base
storage and control unit in which the remote unit
is essentially used only for data input to the base
unit and display of video information generated by
the base unit and communicated in essentially re-
al time from the base unit to the remote unit.
Limiting the functions of Applicant’s invention as
claimed means that the invention can be imple-
mented relatively inexpensively, since the remote
unit does not need to be a stand-alone computer
having communications capabilities, but only a
relatively “dumb” terminal that relies upon the
computing power of the base station.
Id. at ECF 310-3 (Exhibit B: August 31, 1994 Amendment
filed in Application No. 08/120,649, to which the ’598
Patent claims priority).
LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC. 7
B. Procedural History
In September 2011, Lochner filed suit against a
number of Defendants—including Vizio and Toshiba—
alleging infringement of claims 1-10 and 12 of the ’598
Patent. The accused products are tablets that incorporate
CPU and RAM, and have full processing capabilities. See
Oral Argument at 15:27, available at
http://www.cafc.uscourts.gov/oral-argument-
recordings/all/lochner.html.
In their claim construction briefing, Defendants ar-
gued, among other things, that the court should construe
the term “input-output system” to encompass only a “unit
composed essentially of an input device, an output device,
and a transceiver.” Defs.’ Opening Claim Construction
Br., Lochner Techs., LLC v. Apple Inc., No. 8:12-cv-1659
(C.D. Cal. Jan. 25, 2013), ECF 310 at 18. The district
court conducted a Markman hearing on February 28,
2013. During that hearing, Lochner’s counsel argued that
the inventors:
intended for the input/output system to simply in-
clude those three components. And it could in-
clude a processor, but not a processor that’s a full-
fledged processor that would execute the applica-
tions. It’s a processor that could perform simply
processing, as disclosed in the March 13, 1995,
amendment where it says it could include a local
processor to be used to control routing display and
transmission of information. It could also include
local storage, but not a significant amount of it.
Joint Appendix (“JA”) 783.
The district court issued a partial claim construction
order on April 23, 2013. Relevant to this appeal, the court
construed the claimed “input-output system” to mean “a
system primarily responsible for input and output tasks.”
Lochner Techs., LLC v. Apple, Inc., No. 12-cv-1659, 2013
8 LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC.
WL 8507730, at *6 (C.D. Cal. Apr. 23, 2013) (“Partial
Claim Construction Order”). Although it acknowledged
that the “only description of the input-output unit in the
specification states that it is ‘composed essentially of
three components, a keyboard, a . . . display device, and a
wireless transceiver device,” the court nonetheless con-
cluded that the claim was not limited to those three
elements given its use of the open-ended term “including.”
Id. The district court also construed the term “portable”
as “lightweight and easy to carry, like a laptop.” Id. at *8.
The court concluded, therefore, that the phrase “portable
input-output system”—as used in Claim 1—“requires an
input-output system which is ‘lightweight and easy to
carry, like a laptop.’” Id. at *9.
After the district court issued its partial claim con-
struction decision, it issued a separate order in which it
sua sponte invited the parties to brief the enablement,
written description, and “regards as invention” require-
ments of 35 U.S.C. § 112 (2006). 1 Specifically, the court
stated that:
Due to the patentee’s invocation of the transition
term “including,” the subsequently recited list of
components (wireless transceiver, input interface,
display arrangement) merely serves as a floor for
claim scope; the claim scope has no ceiling what-
soever. As such, the full scope of the claim ex-
pression “portable input-output system . . .
including . . . wireless transceiver . . . [input] in-
terface . . . and [a display] arrangement” has quite
1 The Leahy-Smith America Invents Act (“the AIA”)
amended section 112 by inserting subsection headings (a)-
(f). See Pub. L. No. 112-29, § 7(a)(1), 125 Stat. 284, 313
(2011). No substantive changes were made that would
have any relevance to this appeal. For consistency,
therefore, we use the prior designations.
LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC. 9
an expansive reach. It even reads on products
whose input-output system(s) include(s) full-
fledged microprocessors and non-volatile memory
chips. Indeed, the claim element “input-output
system” reads on any portable input-output sys-
tem so long as it features the three listed compo-
nents . . . no matter what else the input-output
system includes.
Order Permitting Further Motions, Lochner Techs., LLC
v. Apple Inc., No. 8:12-cv-1659 (C.D. Cal. Apr. 24, 2013),
ECF 333 at 1-2 (emphasis in original). Although the court
recognized that the “spirit of the invention is rendering
the input-output system ‘portable’ by limiting the type of
components that go inside it,” and cited various portions
of the specification supporting that understanding, the
court concluded that invocation of the term “including”
gave the claims a broader scope. Id. at 3. The court also
expressed concern “that the claims do not set forth what
the applicants regard as their invention because they do
not invoke the partially-closed claim term such as ‘con-
sisting essentially of.’” Id. at 5.
Pursuant to the district court’s order, Defendants
moved for summary judgment of invalidity on three
grounds: (1) lack of written description under 35 U.S.C.
§ 115, ¶1; (2) lack of enablement under 35 U.S.C. § 112,
¶1; and (3) failure to claim what the applicants regard as
their invention under 35 U.S.C. § 112, ¶2. Defendants
argued that the applicants’ own statements in the ’598
Patent and the file history indicate that they were not in
possession of, did not enable, and did not regard as their
invention a portable, application-executing input-output
system with a CPU, RAM, or non-volatile memory. 2
2 Defendants also argued that the asserted claims
were invalid under both the written description and
10 LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC.
In response, Lochner submitted expert declarations
from Dr. Arthur Brody and Dr. Glenn Reinman. Both
experts opined that one of skill in the art would under-
stand that, although the inclusion of additional compo-
nents—such as CPU, memory, and storage—are not
essential to the invention as claimed, they are also not
inconsistent with the claimed system.
On June 6, 2013, the district court granted Defend-
ants’ motion for summary judgment as to the written
description and “regards as invention” requirements, but
denied it as to enablement. Amended Order Granting-in-
Part and Denying-in-Part Defs.’ Motion for Summary
Judgment of Invalidity, Lochner Techs., LLC v. Apple Inc.,
No. 8:12-cv-1659 (C.D. Cal. June 6, 2013), ECF 353
(“Summary Judgment Decision”). The court found that
the specification of the ’598 Patent did not describe the
full scope of the open-ended claims, i.e., a portable input-
output system that includes non-volatile memory and
microprocessors. It further found the claims invalid
under the “regards as invention” requirement because the
claimed input-output system covers the claimed elements
and any other elements. Lochner timely appealed to this
court. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
enablement requirements because the specification does
not disclose or support the “display element” of the
claimed “base storage and control system” or the “ar-
rangement for providing a continuously-displayed full
screen display” of the claimed “portable input-output
system.” The district court did not address these issues in
its summary judgment decision, and we decline to do so
for the first time on appeal.
LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC. 11
DISCUSSION
Lochner maintains that the written description of the
’598 Patent adequately describes and enables each of the
three recited elements of the claimed portable input-out
system: a wireless transceiver, a user interface, and a
display arrangement. On appeal, Lochner contends that
the district court “based its ruling on a novel, but incor-
rect, principle that the ’598 patent specification must also
describe unclaimed elements of potential embodiments of
the claimed system.” Appellant Br. 9. According to
Lochner, the written description conveys to one of skill in
the art that the portable input-output system could in-
clude other components beyond the recited claim ele-
ments, including a CPU, non-volatile memory, or RAM. 3
In response, Defendants argue that the district court
correctly found the asserted claims invalid for inadequate
written description because the written description fails
to provide support for the full scope of the claims. De-
fendants maintain that the patent “repeatedly, consistent-
ly, and exclusively describes the invention as achieving
the portability of the input-output system by limiting its
components to a wireless transceiver, a keyboard, and a
monitor—and expressly excluding processors, RAM
memory, and non-volatile storage.” Appellees’ Br. 20-21.
During prosecution, moreover, the inventors repeatedly
stated that the written description should be read in this
limited way. Defendants also argue that the district court
was correct in its conclusion that the ’598 Patent claims
3 Lochner also argues that the district court incor-
rectly applied the summary judgment standard by failing
to draw inferences in its favor. Because we find that the
district court erred in its claim construction analysis, we
need not reach this alternative argument.
12 LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC.
are invalid for failure to claim what the inventors regard-
ed as their invention. 4
Although “[c]ompliance with the written description
requirement is a question of fact,” it is “amenable to
summary judgment in cases where no reasonable fact
finder could return a verdict for the non-moving party.”
Atl. Research Mktg. Sys. v. Troy, 659 F.3d 1345, 1353
(Fed. Cir. 2011) (quoting PowerOasis, Inc. v. T-Mobile
USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008)). We
review the district court’s decision granting summary
judgment of invalidity for lack of written description
without deference. Id. Whether a claim recites the
subject matter which the applicant “regards as his inven-
tion” is a question of law that we review de novo. Solo-
mon v. Kimberly-Clark Corp., 216 F.3d 1372, 1377 (Fed.
Cir. 2000).
As explained below, because the district court’s writ-
ten description and “regards as invention” analyses were
predicated on a flawed claim construction analysis, we
vacate the district court’s judgment and remand for
further proceedings consistent with this opinion.
4 Defendants assert several alternative grounds for
affirmance, all of which relate to the claimed “display
element” and “arrangement for providing a continuously-
displayed full screen display.” Although the parties
submitted their proposed claim constructions for “display
element” and the display arrangement, the district court
did not construe those terms in its partial claim construc-
tion decision, and we decline to do so for the first time on
appeal. See Nazomi Commc’ns, Inc. v. Arm Holdings,
PLC, 403 F.3d 1364, 1371 (Fed. Cir. 2005) (“This court’s
review of a district court’s claim construction, albeit
without deference, nonetheless is not an independent
analysis in the first instance.”).
LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC. 13
A. Written Description
The district court found the asserted claims of the
’598 Patent invalid for lack of written description. Section
112 of Title 35 provides, in part, that the “specification
shall contain a written description of the invention.” 35
U.S.C. § 112, ¶ 1. “An applicant complies with the
written description requirement ‘by describing the inven-
tion, with all its claimed limitations.’” Gentry Gallery,
Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir.
1998) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d
1565, 1572 (Fed. Cir. 1997) (emphasis in original)). To
satisfy the written description requirement, the specifica-
tion must “reasonably convey[] to those skilled in the art
that the inventor had possession of the claimed subject
matter as of the filing date.” Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). The “level of detail required . . . varies depending
on the nature and scope of the claims and on the complex-
ity and predictability of the relevant technology.” Id. We
have recognized that the test for sufficiency “requires an
objective inquiry into the four corners of the specification
from the perspective of a person of ordinary skill in the
art.” Id.
“[T]he hallmark of written description is disclosure.”
Id. Accordingly, the patent “must describe an invention
understandable to [a] skilled artisan and show that the
inventor actually invented the invention claimed.” Id.
“‘The purpose of the written description requirement is to
ensure that the scope of the right to exclude, as set forth
in the claims, does not overreach the scope of the inven-
tor’s contribution to the field of art as described in the
patent specification.’” Atl. Research, 659 F.3d at 1354
(quoting In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1319 (Fed. Cir. 2011)).
It is well-established that “‘claim construction is in-
herent in any written description analysis.’” Id. (quoting
14 LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC.
Katz, 639 F.3d at 1319); see also Koninklijke Philips Elecs.
N.V. v. Cardiac Sci. Operating Co., 590 F.3d 1326, 1336
(Fed. Cir. 2010) (“A district court must base its analysis of
written description under § 112, P 1 on proper claim
construction.”). Claim construction is a question of law
that this court reviews without deference. Lighting
Ballast Control LLC v. Philips Elecs. N. Am. Corp., 744
F.3d 1272, 1276-77 (Fed. Cir. 2014) (en banc). To deter-
mine the scope and meaning of a claim, we look to the
claim language, the written description, the prosecution
history, and any relevant extrinsic evidence. Phillips v.
AWH Corp., 415 F.3d 1303, 1315-17 (Fed. Cir. 2005) (en
banc). Although claim construction begins with the
language of the claims themselves, the claims “must be
read in view of the specification, of which they are a part.”
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979
(Fed. Cir. 1995) (en banc).
Here, the district court found that Claim 1 of the ’598
Patent recites a portable input-output system “including”
three components: (1) a wireless transceiver; (2) an input
interface; and (3) a display arrangement. Summary
Judgment Decision, Lochner Techs., LLC v. Apple Inc.,
No. 8:12-cv-1659 (C.D. Cal. June 6, 2013), ECF 353 at 6.
The district court interpreted the term “including” in
Claim 1 to mean that the “reach of the claim scope is
infinity once an accused product’s input-output system
features the recited components.” Partial Claim Con-
struction Order, 2013 WL 8507730, at *6. The court
therefore construed the claimed “input-output system” to
permit the addition of any components, even though it
recognized that the specification “repeatedly attributes
the portability (a claim limitation in and of itself) of the
input-output device to the absence of components ordinar-
ily found in a laptop.” Summary Judgment Decision,
Lochner Techs, LLC v. Apple Inc., No. 8:12-cv-1659 (C.D.
Cal. June 6, 2013), ECF 353 at 12. Because the open-
ended “claims do not limit themselves to a ‘limited num-
LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC. 15
ber of components,’” the court found that the written
description does not support the full scope of the claims.
Id. at 14.
On appeal, Lochner takes issue with the district
court’s belief that use of an open-ended term “including”
requires patentees to disclose the recited as well as unre-
cited elements that are present in the accused infringing
products. According to Lochner: (1) there is no precedent
requiring a patentee to disclose or enable unclaimed
elements; and (2) the written description inquiry “focuses
on a comparison between the specification and the inven-
tion referenced by the terms of the claim—not comparison
between how the product was made as disclosed in the
patent and future developments of this process that might
alter or even improve how the same product is made,”
Amgen Inc. v. Hoechst Marion Roussel, 314 F.3d 1313,
1331-32 (Fed. Cir. 2003). We agree.
The district court is correct that we have “consistently
interpreted ‘including’ and ‘comprising’ to have the same
meaning, namely, that the listed elements . . . are essen-
tial but other elements may be added.” Lucent Techs.,
Inc. v. Gateway, Inc., 525 F.3d 1200, 1214 (Fed. Cir.
2008). Accordingly, we have said that open ended claim
terms can “embrace[] technology that may add features to
devices otherwise within the claim definition.” Gillette
Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1371-72
(Fed. Cir. 2005) (“The addition of elements not recited in
the claim cannot defeat infringement”).
Although “including” is generally an open-ended term
that does not preclude additional elements, we have
recognized that it does not require additional, unspecified
elements. Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 288
F. App’x 697, 702 (Fed. Cir. 2008) (“‘Including’ is generally
an open-ended term that does not preclude additional
elements, but ‘including’ does not require additional,
unspecified elements as the district court found.”). In-
16 LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC.
deed, this court has held that, to satisfy the written
description requirement, “‘an applicant is not required to
describe in the specification every conceivable and possi-
ble future embodiment of his invention.’” Cordis Corp. v.
Medtronic AVE, Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003)
(quoting Rexnord Corp. v. Laitram Corp., 274 F.3d 1336,
1344 (Fed. Cir. 2001)). And, as Lochner argues, we have
held that “a patent claim is not necessarily invalid for
lack of written description just because it is broader than
the specific examples disclosed.” Martek Biosciences Corp.
v. Nutrinova, Inc., 579 F.3d 1363, 1371 (Fed. Cir. 2009).
After careful consideration, we find that the district
court erred when it assumed that use of the term “includ-
ing” somehow trumped consideration of the specification
and prosecution history and displaced application of
standard claim construction principles. In its post-claim
construction order inviting the parties to brief several
issues, the district court explained its belief that
[o]rdinarily, where a claim term is ambiguous and
can reasonably be construed in a way congruous
with the described invention or in a way broader
than the described invention, the Court can
properly issue a limiting construction so as to
abide by the mandate of construing claim terms in
light of the specification. But where, as here, the
patentee invokes an open-ended transition term,
the Court cannot rewrite the claims.
See Order Permitting Further Motions at 3-4. To the
contrary, it is well-established that claim terms must be
construed in light of the entire patent, including the
written description and prosecution history. Indeed, we
have recognized that “the specification is always highly
relevant to the claim construction analysis” and “is the
single best guide to the meaning of a disputed term.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996). Likewise, we have emphasized that
LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC. 17
courts should “consult the patent’s prosecution history,
which, like the specification, provides evidence of how the
PTO and the inventor understood the claimed invention.”
Advanced Fiber Techs. Trust v. J&L Fiber Servs., Inc.,
674 F.3d 1365, 1372 (Fed. Cir. 2012) (citing Phillips, 415
F.3d at 1317). If a patentee “makes a clear and unambig-
uous disavowal of claim scope during prosecution, that
disclaimer informs the claim construction analysis by
‘narrow[ing] the ordinary meaning of the claim congruent
with the scope of the surrender.’” Id. at 1372-73 (quoting
Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324
(Fed. Cir. 2003)).
Review of the district court’s partial claim construc-
tion order reveals that it focused exclusively on the term
“including” when arriving at its construction for “input-
output system.” In doing so, the court failed to properly
consider the limiting language in the written description
and the statements Lochner made over the course of the
prosecution history, including his own characterization of
the input-output unit as a “dumb terminal.” In other
words, the court gave controlling effect to the word “in-
cluding” without reference to the claim language following
it, the patent in which it appears, and the patent’s prose-
cution history.
Because the court’s written description analysis is
predicated on a fundamentally flawed claim construction,
we do not reach the merits of the parties’ arguments.
Instead, we vacate the court’s invalidity decision and
remand for further proceedings. On remand, the district
court should reconsider its claim construction analysis. If
a written description issue remains, the court should
reconsider that issue in light of this court’s precedent
providing that a patentee cannot be required to disclose
every possible embodiment, see Cordis, 339 F.3d at 1365;
Martek, 579 F.3d at 1371.
18 LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC.
B. Regards as Invention
The district court also found the asserted claims of the
’598 Patent invalid for failing to set forth what the appli-
cants regard as their invention. By statute, the specifica-
tion of every patent must “conclude with one or more
claims particularly pointing out and distinctly claiming
the subject matter which the applicant regards as his
invention.” 35 U.S.C. § 112, ¶ 2. We have recognized that
the “regards as invention” requirement is distinct from
the requirement that the claim be sufficiently clear to be
definite. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299
F.3d 1336, 1348 (Fed. Cir. 2002). “Where it would be
apparent to one of skill in the art, based on the specifica-
tion, that the invention set forth in a claim is not what
the patentee regarded as his invention, we must hold that
claim invalid under § 112, paragraph 2.” Id. at 1349; see
Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 739 (Fed.
Cir. 2014) (distinguishing Allen because there, “the pa-
tentee agreed that the claim language did not match what
he regarded as his invention, as the intrinsic record
unambiguously showed”).
Given its conclusion that “the word ‘including’ is not
amenable to narrowing,” the district court found that the
“full scope of the claim term ‘input-output system’ covers
the claimed elements and any other elements that could
enter the input-output system.” Summary Judgment
Decision, Lochner Techs, LLC v. Apple Inc., No. 8:12-cv-
1659 (C.D. Cal. June 6, 2013), ECF 353 at 16 (emphasis in
original). And, because use of “the term ‘portable’ does
not cabin the full scope of the overall claim so as to bring
it into compliance with what the specification establishes
the patentee regarded as the invention,” the court found
the asserted claims invalid under the “regards as inven-
tion” requirement. Id.
Lochner argues that the district court erred in its
analysis because: (1) it applied the wrong standard by
LOCHNER TECHNOLOGIES, LLC v. VIZIO, INC. 19
conflating the written description requirement of Section
112 paragraph 1 with the requirements of paragraph 2;
(2) Allen Engineering is distinguishable on its facts; and
(3) the specification of the ’598 Patent expressly discloses
that the input-output system can include additional
components, such as a graphics card.
Because the district court’s analysis stems from its er-
roneous approach to claim construction, we vacate its
decision finding the asserted claims invalid under the
“regards as invention” requirement. The court should
reconsider its “regards as invention” analysis after recon-
struing the claimed “portable input-output system” con-
sistent with the principles discussed herein.
CONCLUSION
For the foregoing reasons, we vacate: (1) the district
court’s order granting-in-part Defendants’ motion for
summary judgment of invalidity under 35 U.S.C. § 112;
and (2) the district court’s judgment of invalidity for lack
of written description and for failure to claim what the
applicants regards as their invention. We remand for
further proceedings consistent with this opinion, includ-
ing new claim construction.
VACATED AND REMANDED