United States Court of Appeals
for the Federal Circuit
__________________________
CRAIG THORNER AND,
VIRTUAL REALITY FEEDBACK CORPORATION,
Plaintiffs-Appellants,
v.
SONY COMPUTER ENTERTAINMENT AMERICA
LLC,
SONY COMPUTER ENTERTAINMENT INC.,
SONY ELECTRONICS INC., AND RILEY RUSSELL
Defendants-Appellees,
and
GREGORY S. GEWIRTZ, LERNER DAVID
LITTENBERG
KRUMHOLTZ & MENTLIK, LLP, LARRY C. RUSS,
MARC A. FENSTER, AND RUSS AUGUST & KABAT,
Defendants.
__________________________
2011-1114
__________________________
Appeal from the United States District Court for the
District of New Jersey in case no. 09-CV-1894, Chief
Judge Garrett E. Brown, Jr.
___________________________
Decided: February 1, 2012
___________________________
THORNER v. SONY COMPUTER 2
MATTHEW G. MCANDREWS, Niro, Haller & Niro, of
Chicago, Illinois, argued for plaintiffs-appellants. With
him on the brief was RAYMOND P. NIRO, JR.
DANIEL JOHNSON, JR., Morgan, Lewis & Bockius LLP,
of San Francisco, California, argued for defendants-
appellees.
__________________________
Before RADER, Chief Judge, MOORE, Circuit Judge and
AIKEN, District Judge. *
MOORE, Circuit Judge.
Craig Thorner and Virtual Reality Feedback Corpora-
tion (Appellants, collectively) accused Sony Computer
Entertainment America LLC and a number of other Sony
entities (Sony, collectively) of infringing claims of U.S.
patent no. 6,422,941 (’941 patent) relating to a tactile
feedback system for computer video games. The district
court construed disputed claim terms and the parties
stipulated to a judgment of noninfringement. Because the
district court improperly limited the term “attached to
said pad” to mean attachment only to an external surface
and erred in its construction of the term “flexible”, we
vacate and remand.
BACKGROUND
The ’941 patent describes a tactile feedback system for
use with video games. Figure 2 shows the many different
embodiments of the invention:
* The Honorable Ann L. Aiken, Chief Judge, United
States District Court for the District of Oregon, sitting by
designation.
3 THORNER v. SONY COMPUTER
Tactile feedback controller 110 is part of a larger gaming
system that operates one or more of the devices shown
above. Each device includes some type of actuator that
provides tactile feedback to a user in response to certain
game activities. ’941 patent col.2 ll.44-52. For instance,
the actuators in hand-held game controller 598 may
vibrate during a crash in a car racing game. Independent
claim 1 requires “a flexible pad,” “a plurality of actuators
attached to said pad” and a control circuit that activates
the actuators in response to game activity. The accused
products are hand-held game controllers.
Two claim limitations are relevant to this appeal,
“flexible pad” and “attached to said pad.” The district
court held that flexible does not mean simply “capable of
being flexed.” Thorner v. Sony Computer Entm’t Am.
LLC, No. 09-cv-1894, 2010 WL 3811283, at *3 (D.N.J.
Sept. 23, 2010). It reasoned that this definition was
inappropriate because “[m]any objects that are capable of
being flexed are not flexible. A steel I-beam is capable of
being flexed, but no one would call it ‘flexible.’” Id. The
THORNER v. SONY COMPUTER 4
court thus construed the term to mean “capable of being
noticeably flexed with ease.” Id.
The district court then turned to the construction of
“attached to said pad.” Id. at *5-7. Appellants argued
that attached should be given its plain and ordinary
meaning and that an actuator can be attached to the
inside of an object. Sony argued that “attached to said
pad” should be construed as affixed to the exterior surface
of the pad and does not include embedded within said
pad. The court held that “the specification redefines
‘attached’ by implication.” Id. at *6. The court held that
the word attached was limited to attached to the outside
of an object because the embodiments in the specification
consistently use the term “attached” to indicate affixing
an actuator to the outer surface of an object and use the
word “embedded” when referring to an actuator inside an
object. For additional support for the notion that at-
tached and embedded have different meanings, the court
pointed to claim 1 which uses the word “attached” and
dependent claim 10 which uses the word “embedded.” Id.
Following claim construction, the parties stipulated to
noninfringement by the accused products. They stated
that “under the Court’s construction of the phrase ‘at-
tached to said pad,’ Defendants have not infringed . . . .”
The stipulation further stated that the “parties reserve
their rights to challenge this or any other construction of
the disputed claim phrases of the ’941 patent on appeal.”
J.A. 14-15. We have jurisdiction over this appeal under
28 U.S.C. § 1295(a)(1).
DISCUSSION
We review claim construction de novo. Cybor Corp. v.
FAS Techs., Inc., 138 F.3d 1448, 1455-56 (Fed. Cir. 1998)
(en banc). The words of a claim are generally given their
ordinary and customary meaning as understood by a
5 THORNER v. SONY COMPUTER
person of ordinary skill in the art when read in the con-
text of the specification and prosecution history. See
Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
2005) (en banc). There are only two exceptions to this
general rule: 1) when a patentee sets out a definition and
acts as his own lexicographer, or 2) when the patentee
disavows the full scope of a claim term either in the
specification or during prosecution. Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996).
The use of the term “attached” in this specification does
not meet either of these exceptions.
To act as its own lexicographer, a patentee must
“clearly set forth a definition of the disputed claim term”
other than its plain and ordinary meaning. CCS Fitness,
Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir.
2002). It is not enough for a patentee to simply disclose a
single embodiment or use a word in the same manner in
all embodiments, the patentee must “clearly express an
intent” to redefine the term. Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir.
2008); see also Kara Tech. Inc. v. Stamps.com, 582 F.3d
1341, 1347-48 (Fed. Cir. 2009). “[T]he inventor’s written
description of the invention, for example, is relevant and
controlling insofar as it provides clear lexicography . . .”
C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862
(Fed. Cir. 2004) (emphasis added). For example, in 3M
Innovative Properties Co. v. Avery Dennison Corp., we
held that the patentee acted as its own lexicographer
when the specification stated: “‘Multiple embossed’
means two or more embossing patterns are superimposed
on the web to create a complex pattern of differing depths
of embossing.” 350 F.3d 1365, 1369, 1371 (Fed. Cir.
2004). Similarly, we limited a patentee to particular
examples of solubilizers when it stated in the specification
that “[t]he solubilizers suitable according to the invention
THORNER v. SONY COMPUTER 6
are defined below.” Astrazeneca AB v. Mutual Pharm.
Co., 384 F.3d 1333, 1339 (Fed. Cir. 2004).
The standard for disavowal of claim scope is similarly
exacting. “Where the specification makes clear that the
invention does not include a particular feature, that
feature is deemed to be outside the reach of the claims of
the patent, even though the language of the claims, read
without reference to the specification, might be considered
broad enough to encompass the feature in question.”
Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys.,
Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001). “The patentee
may demonstrate intent to deviate from the ordinary and
accustomed meaning of a claim term by including in the
specification expressions of manifest exclusion or restric-
tion, representing a clear disavowal of claim scope.”
Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325
(Fed. Cir. 2002); see also Home Diagnostics, Inc. v. LifeS-
can, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“Absent a
clear disavowal in the specification or the prosecution
history, the patentee is entitled to the full scope of its
claim language.”). For example, in Scimed, the patentee
described two different types of catheters in the prior art,
those with dual lumens (side-by-side) and those with
coaxial lumens. 242 F.3d at 1339. In discussing the prior
art, the patentee disparaged the dual lumen configuration
as larger than necessary and less pliable than the coaxial
type. Id. at 1342. Further, the specification repeatedly
described the “present invention” as a coaxial design. Id.
Finally, the specification stated: “The intermediate sleeve
structure defined above [coaxial design] is the basic sleeve
structure for all embodiments of the present invention
contemplated and disclosed herein.” Id. at 1343 (empha-
sis in original). This court held that collectively this
amounted to disavowal of the dual lumen design.
7 THORNER v. SONY COMPUTER
Mere criticism of a particular embodiment encom-
passed in the plain meaning of a claim term is not suffi-
cient to rise to the level of clear disavowal. Epistar Corp.
v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir.
2009) (holding that even a direct criticism of a particular
technique did not rise to the level of clear disavowal). In
Spine Solutions, Inc. v. Medtronic Sofamor Danek USA,
Inc., we explained that even where a particular structure
makes it “particularly difficult” to obtain certain benefits
of the claimed invention, this does not rise to the level of
disavowal of the structure. 620 F.3d 1305, 1315 (Fed. Cir.
2010). It is likewise not enough that the only embodi-
ments, or all of the embodiments, contain a particular
limitation. We do not read limitations from the specifica-
tion into claims; we do not redefine words. Only the
patentee can do that. To constitute disclaimer, there
must be a clear and unmistakable disclaimer.
It is the claims that define the metes and bounds of
the patentee’s invention. Phillips, 415 F.3d at 1313. The
patentee is free to choose a broad term and expect to
obtain the full scope of its plain and ordinary meaning
unless the patentee explicitly redefines the term or dis-
avows its full scope.
Claim 1 of the patent at issue includes the disputed
claim terms:
In a computer or video game system, apparatus
for providing, in response to signals generated by
said computer or video game system, a tactile sen-
sation to a user of said computer or video game
system, said apparatus comprising:
a flexible pad;
a plurality of actuators, attached to said pad, for
selectively generating tactile sensation; and
THORNER v. SONY COMPUTER 8
a control circuit . . . for generating a control signal
to control activation of said plurality of actua-
tors . . . .
(emphasis added).
I. “attached to said pad”
Appellants argue that the district court erred by hold-
ing that the specification implicitly defined “attached” to
mean “affixed to an exterior surface.” They argue that the
term does not require any construction and that the plain
and ordinary meaning includes affixing an item to either
an exterior or an interior surface. They contend that the
specification explicitly states whether an attachment is to
an interior or exterior surface: “a vibratory actuator can
be attached to [the] outer side of the throttle handle.”
Appellant’s Br. 13 (quoting ’941 patent col.39 ll.58-60).
They argue this shows that when the applicant wished to
distinguish an internal from an external attachment, he
did so with deliberate, express language. Thus, appellants
argue that the specification contemplates “attached” to
have its plain and ordinary meaning—attached to either
an interior or exterior surface. Finally, appellants argue
that the fact that claim 10 includes the word “embedded”
does not mean that “attached” can only mean connected to
an exterior surface. Rather, appellants argue that “em-
bedded” is merely a narrower term that includes only
attachment to an interior surface.
Sony responds that the patent clearly identified two
different connections, “attached to” and “embedded
within.” It argues that in every instance where the speci-
fication uses the term “attached,” it refers to an attach-
ment to an outer surface. Conversely, in every
embodiment where the actuator is placed inside a hous-
ing, the specification uses the term “embedded.” See, e.g.,
’941 patent col.32 l.66 (“embedded within or attached to”).
9 THORNER v. SONY COMPUTER
Our case law is clear, claim terms must be given their
plain and ordinary meaning to one of skill in the art.
Phillips, 415 F.3d at 1316. The plain meaning of the term
“attached” encompasses either an external or internal
attachment. We must decide whether the patentee has
redefined this term to mean only attachment to an exter-
nal surface. As Sony argues, the specification repeatedly
uses the term “attached” in reference to embodiments
where the actuators are “attached to [an] outer side.” ’941
patent col.33 ll.40-41. In fact, the specification never uses
the word “attached” when referring to an actuator located
on the interior of a controller. We hold that this does not
rise to the level of either lexicography or disavowal. Both
exceptions require a clear and explicit statement by the
patentee. CCS Fitness, 288 F.3d at 1366; Teleflex, 299
F.3d at 1325. It is not enough that the patentee used the
term when referencing an attachment to an outer surface
in each embodiment. See Kara Tech., 582 F.3d at 1347-
48. In fact, the specification explains that an actuator
was “attached to [an] outer surface.” See ’941 patent
col.33 ll.40-41. If the applicant had redefined the term
“attached” to mean only “attached to an outer surface,”
then it would have been unnecessary to specify that the
attachment was “to [an] outer surface” in the specifica-
tion. We conclude that the term attached should be given
its plain and ordinary meaning. The specification does
not redefine attached nor is there any disavowal.
The fact that the specification uses the two terms “at-
tached” and “embedded” as alternatives does not require a
different result. See, e.g., id. col.32 l.66. There is nothing
inconsistent about the applicant’s use of the narrower
term, “embedded,” to describe embodiments affixed to an
internal surface. The plain and ordinary meaning of
embedded, “attached within,” is narrower than “at-
tached.” Hence it makes sense that the applicant would
THORNER v. SONY COMPUTER 10
want to use embedded when it meant to explicitly claim
attached to the inside only. That does not mean the word
attached automatically means attached to the external
surface, as opposed to the broader plain meaning – at-
tached to either the interior or exterior.
It is true that in certain pre-Phillips cases, we held
that use of two terms as alternatives could amount to an
implicit redefinition of the terms. See Bell Atl. Network
Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258,
1271 (Fed. Cir. 2001). But the “implied” redefinition must
be so clear that it equates to an explicit one. In other
words, a person of ordinary skill in the art would have to
read the specification and conclude that the applicant has
clearly disavowed claim scope or has acted as its own
lexicographer. Simply referring to two terms as alterna-
tives or disclosing embodiments that all use the term the
same way is not sufficient to redefine a claim term.
Other parts of the claim and specification also support
this construction. The claim at issue requires a “flexible
pad.” The only embodiment in the specification that
includes flexible material is the seat cushion 510 shown in
Figure 2. The specification states that “the tactile feed-
back seating unit 510 is a semi-rigid flexible foam struc-
ture . . . with a plurality of actuators embedded within the
foam structure.” ’941 patent col.37 ll.6-10. Thus, the only
flexible embodiment in the specification has embedded
actuators. If we agreed with Sony that “attached” must
mean attached to an outer surface, then the claim would
exclude the only flexible embodiment disclosed in the
specification. This is further evidence that the term
“attached” should have its plain and ordinary meaning
which includes either internal or external attachments.
We hold that the term “attached to said pad” should
be given its plain and ordinary meaning which encom-
11 THORNER v. SONY COMPUTER
passes either internal or external attachment. Because
the parties based the stipulation of noninfringement on
the district court’s erroneous construction of this claim
term, we vacate and remand.
II. “flexible pad”
As an initial matter, Sony argues that our case law
precludes us from deciding claim construction issues that
are not implicated by the district court’s judgment.
Appellee’s Br. 25 (citing Mass. Inst. of Tech. v. Abacus
Software (MIT), 462 F.3d 1344, 1350 (Fed. Cir. 2006)). In
MIT, there was a stipulation of noninfringement. Despite
its success below, the accused infringer asked us to con-
strue a number of terms outside the stipulation on appeal
and this court declined to do so. Id. As an initial matter,
in this case, in contrast to MIT, the losing party has asked
us to review the claim construction. In MIT, it was the
prevailing party that made the request. As the court in
MIT recognized, the court has discretion to determine the
issues necessary for resolution of the appeal. Here the
term “flexible” was fully briefed and argued below, de-
cided by the district court and fully briefed and argued to
us on appeal. Moreover its claim construction is a ques-
tion of law properly before this court. We conclude that it
would waste judicial resources to refuse to decide this
issue on appeal.
Appellants argue that the term “flexible” simply
means “capable of being flexed” and that the district court
erred by requiring “capable of being noticeably flexed with
ease.” They note that the specification only uses the term
“flexible pad” when referring to a “semi-rigid” structure
and that a “semi-rigid” structure would certainly not be
“noticeably flexed with ease.” Appellant’s Br. 15-16
(citing ’941 patent col.37 ll.6-7, 24, 49).
THORNER v. SONY COMPUTER 12
Sony responds that although the specification uses
the term to refer to a “semi-rigid” structure, that struc-
ture is made out of foam in every embodiment. It argues
that foam is capable of being noticeably flexed with ease
and thus a rigid, barely bendable material should not be
considered “flexible.” Sony also points to portions of the
Markman hearing where the district court judge in-
spected one of the accused hard plastic controllers. The
judge noted that the controller was rigid and “[i]f I try to
flex this thing, I think that you’re going to see it snap.”
J.A. 523-24.
We agree with the appellants that the district court
improperly limited the term. Neither the claims nor the
specification requires the “flexible pad” to be noticeably
flexed with ease. The specification says only that the
flexible pad must be a semi-rigid structure. The task of
determining the degree of flexibility, the degree of rigidity
that amounts to “semi-rigid,” is part of the infringement
analysis, not part of the claim construction. The district
court is of course free on summary judgment to decide
that there is no genuine issue of material fact that the
accused products in this case do not meet the plain and
ordinary meaning of the term “flexible.” We do not mean
to suggest that summary judgment is improper in this
case, only that claim construction is the wrong venue for
this determination.
VACATED and REMANDED