United States Court of Appeals for the Federal Circuit
2009-1146
SCHINDLER ELEVATOR CORPORATION
and INVENTIO AG,
Plaintiffs-Appellants,
v.
OTIS ELEVATOR COMPANY,
Defendant-Appellee.
Joseph R. Re, Knobbe, Martens, Olson & Bear, LLP, of Irvine, California, argued
for plaintiffs-appellants. With him on the brief were Jon W. Gurka, Joseph S. Cianfrani,
and Cheryl T. Burgess.
Mark L. Levine, Bartlit Beck Herman Palenchar & Scott LLP, of Chicago, Illinois,
argued for defendant-appellee. With him on the brief were Sean W. Gallagher, and
Alan E. Littmann.
Appealed from: United States District Court for the Southern District of New York
Judge Colleen McMahon
United States Court of Appeals for the Federal Circuit
2009-1146
SCHINDLER ELEVATOR CORPORATION
and INVENTIO AG,
Plaintiffs-Appellants,
v.
OTIS ELEVATOR COMPANY,
Defendant-Appellee.
Appeal from the United States District Court for the Southern District of New York in
case no. 06-CV-5377, Judge Colleen McMahon.
__________________________
DECIDED: January 15, 2010
__________________________
Before LINN, FRIEDMAN, and DYK, Circuit Judges.
Opinion for the court filed by Circuit Judge LINN. Opinion concurring in the result and
dissenting in part filed by Circuit Judge DYK.
LINN, Circuit Judge.
Schindler Elevator Corp. and Inventio AG (collectively “Schindler”) appeal the
final decision of the U.S. District Court for the Southern District of New York, which
entered summary judgment in favor of Otis Elevator Co. (“Otis”) of noninfringement of
U.S. Patent No. 5,689,094 (“the ’094 patent”). Schindler Elevator Corp. v. Otis Elevator
Co., 586 F. Supp. 2d 231 (S.D.N.Y. 2008) (“Summary Judgment Order”); Schindler
Elevator Corp. v. Otis Elevator Co., 561 F. Supp. 2d 352 (S.D.N.Y. 2008) (“Claim
Construction Order”). Because we conclude that the district court erred in construing
the terms “information transmitter” and “recognition device” to exclude any “personal
action” by an elevator user other than “walking into the monitored area,” we vacate the
grant of summary judgment and remand for further proceedings.
BACKGROUND
The ’094 patent is directed to an elevator system that recognizes a user when he
or she enters an entry location of a building, then dispatches an elevator to bring the
user to a destination floor based on user-specific data. The system recognizes the user
in one of two ways. In a first embodiment, a user carrying an “information transmitter”
brings his transmitter within range of a “recognition device” mounted in the building’s
entry location. Once in range, the transmitter is actuated by an electromagnetic field
emitted from the recognition device and then transmits preprogrammed data regarding
the user’s destination floor. Alternatively, in a second embodiment, the recognition
device recognizes the user by his “individual features,” such as facial contours,
fingerprints, iris, or voice. In either embodiment, once the system has recognized the
user, the system identifies the user’s destination floor based on the data it received,
dispatches an elevator to the user’s starting floor, and informs the user which elevator to
take. The user thus arrives at a destination floor without having to press any button
outside or inside the elevator to designate the destination floor.
Figure 2, reproduced below, illustrates an exemplary elevator installation 30 with
recognition devices 5 mounted in access areas 33 and 34. When a passenger 35 is
recognized in access area 33, an elevator is dispatched, and a display device 18, which
is mounted above the elevator door and/or at an input device 19, tells the passenger
which elevator to take. A proposed destination floor is announced acoustically or is
2009-1146 2
displayed visually on display device 18. If the passenger wishes to change his
destination floor, he may do so manually at input device 19.
Schindler sued Otis for infringing all claims of the ’094 patent. Because the
patent’s two independent claims recite an “information transmitter carried by an elevator
user,” Schindler concedes that all claims are directed only to the “information
transmitter” embodiment, and not to the “individual features” embodiment. Br. of Pls.-
Appellants 8.
Claim 1 of the ’094 patent is representative of the asserted claims with respect to
the use of the terms “information transmitter” and “recognition device.” It recites:
2009-1146 3
1. An elevator installation having a plurality of elevators comprising:
a recognition device for recognizing elevator calls entered at an
entry location by an information transmitter carried by an elevator user,
initializing the entry location as a starting floor of a journey;
a control device receiving the recognized elevator call and
allocating an elevator to respond to the elevator call, through a
predetermined allocating algorithm;
a call acknowledging device comprising one of a display device and
an acoustic device to acknowledge recognition of the elevator call and
to communicate a proposed destination floor to the elevator user;
the recognition device, mounted in the access area in the vicinity of
the elevators and spatially located away from elevator doors, actuating
the information transmitter and comprising a unit that independently
reads data transmitted from the information transmitter carried by the
elevator user and a storage device coupled between the unit and the
control device: [sic: ;]
the recognition device one of transmitting proposed destination
floor data, based upon the data transmitted from the information
transmitter, to the control device, and, transmitting elevator user
specific data. [sic: ,] based upon individual features of the elevator user
stored in the storage device, to the control device.
Otis’s accused system is installed at 7 World Trade Center in New York City.
Each user carries a card embedded with a radio frequency identification (“RFID”) chip,
which is programmed with a user identification number. Upon entering the building, the
user approaches a bank of security turnstiles located in the building’s lobby. Each
turnstile is 37.5 inches high and contains an electronic card reader located 1 inch below
an upper glass surface of the turnstile. The maximum effective range of the card reader
is 4.5 inches, or 3.5 inches from the top of the glass surface. When a card is brought
within this range, the card transmits the user’s identification number to the card reader,
an elevator is dispatched, and the elevator’s number is displayed on the turnstile to let
the user know which elevator to take.
2009-1146 4
On April 4, 2008, the district court construed nine disputed sets of claim
limitations. Only the first set—“information transmitter” and “recognition device”—is
challenged on appeal. The district court construed “information transmitter” to mean “a
device that communicates with a recognition device via electromagnetic waves, after
being actuated by that recognition device, without requiring any sort of personal action
by the passenger.” Claim Construction Order, 561 F. Supp. 2d at 362. It construed
“recognition device” to mean “a device that actuates and reads data transmitted by an
information transmitter without requiring any sort of personal action by the passenger.”
Id. In the claim construction order, the district court declined to specify the particular
kind of “personal action” prohibited under its construction, but stated that it “rules out,
not just standing in front of the recognition device, or inputting data into the information
transmitter by hand, but any and all types of personal action by the passenger.” Id.
(emphasis added).
The parties then cross-moved for summary judgment on the issue of
infringement. Schindler argued that the RFID cards of the accused system are
“information transmitters” and that the card readers embedded in the security turnstiles
are “recognition devices.” Otis countered that neither of these limitations is met
because the use of a passenger’s hands to bring a RFID card within the 3.5-inch
effective range of a card reader constitutes prohibited “personal action.”
The district court issued its summary judgment ruling on November 17, 2008.
Although it had previously said that “any and all types of personal action” were
prohibited under its construction, the district court refined its understanding of “personal
action” on summary judgment to expressly permit “walking into the monitored area.”
2009-1146 5
Summary Judgment Order, 586 F. Supp. 2d at 237. The district court went on to note
that a user of the accused device must “do something in order to bring the card (not just
themselves) to a point at which the device embedded in the turnstiles can read it,” such
as taking the card out of a pocket or holding the card over the glass surface of the
turnstile. Id. at 238. Accordingly, the district court held that Otis’s accused system
could not meet the “information transmitter” and “recognition device” limitations and thus
did not infringe the ’094 patent as a matter of law.
Schindler appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1) (2006).
DISCUSSION
I. Standard of Review
“An infringement analysis entails two steps. The first step is determining the
meaning and scope of the patent claims asserted to be infringed. The second step is
comparing the properly construed claims to the device accused of infringing.” Markman
v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc) (citations
omitted), aff’d, 517 U.S. 370 (1996). Claim construction is a question of law, which we
review de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998)
(en banc). “While infringement is a question of fact, we review a district court’s grant of
summary judgment without deference.” Bd. of Regents of the Univ. of Tex. Sys. v.
BENQ Am. Corp., 533 F.3d 1362, 1367 (Fed. Cir. 2008) (internal citations omitted).
Summary judgment is proper only “if the pleadings, the discovery and disclosure
materials on file, and any affidavits show that there is no genuine issue as to any
material fact and that the movant is entitled to judgment as a matter of law.” Fed. R.
Civ. P. 56(c).
2009-1146 6
II. Analysis
Schindler challenges the district court’s construction of the terms “information
transmitter” and “recognition device.” Schindler also challenges the district court’s grant
of summary judgment of noninfringement, under the district court’s construction and
under Schindler’s proposed construction.
A. Claim Construction
Schindler argues that the district court improperly limited the terms “information
transmitter” and “recognition device” by requiring those devices to operate “without any
sort of personal action by the passenger” and by further defining “personal action” to
mean any action “other than walking into the monitored area.” According to Schindler,
nowhere does the intrinsic evidence prohibit a passenger from using his hands to simply
bring an information transmitter within range of a recognition device. The phrase
“personal action” appears only once in the specification. In Schindler’s view, “personal
action” encompasses the action of manually pressing buttons to actuate the transmitter
or to select a destination floor, not to the initial act of bringing the transmitter within
range of the recognition device. Schindler therefore requests that we remove any
reference to “personal action” from each construction. 1
Otis responds that the district court correctly relied on statements in the
specification and prosecution history that describe “hands-free,” “automatic,” and
“contactless” elevator operations, as clearly disavowing all “personal action.”
1
Schindler also requests that we strike the phrase “via electromagnetic
waves” from the district court’s construction of “information transmitter.” But the
construction of “information transmitter” that Schindler proposed to the district court
included that very phrase. We therefore decline to alter the district court’s construction
as it pertains to electromagnetic waves.
2009-1146 7
As we shall explain, we agree with Schindler that the district court’s construction
is too narrow. The statements in the specification and prosecution history on which the
district court relied were directed to elevator operations that occur only after the
information transmitter is already within range of the recognition device, not to the initial
act of bringing the information transmitter within range of the recognition device.
A claim term is generally given its “ordinary and customary meaning,” which is
“the meaning that the term would have to a person of ordinary skill in the art in question
at the time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
2005) (en banc). “[T]he court looks to ‘those sources available to the public that show
what a person of skill in the art would have understood disputed claim language to
mean,’ . . . . includ[ing] ‘the words of the claims themselves, the remainder of the
specification, the prosecution history, and extrinsic evidence concerning relevant
scientific principles, the meaning of technical terms, and the state of the art.’” Id. at
1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
1111, 1116 (Fed. Cir. 2004)). Because the parties do not rely on any extrinsic
evidence, we focus our analysis on the claim language, the specification, and the
prosecution history.
1. Claim Language
“Quite apart from the written description and the prosecution history, the claims
themselves provide substantial guidance as to the meaning of particular claim terms.”
Id. Here, the district court overlooked several important aspects of the claim language
which themselves shed light on whether and to what extent an elevator user undertakes
“personal action” in the invention.
2009-1146 8
First, “the context in which a term is used in the asserted claim can be highly
instructive.” Id. In claim 1, the term “information transmitter” itself suggests that the
transmitter is a thing, separate and apart from an “elevator user” (a separate limitation),
which transmits information. The claim also provides that “elevator calls [are] entered at
an entry location by an information transmitter.” Thus, at least with regard to the
transmission of information and the entry of calls, it is the information transmitter—not
the elevator user—that performs these tasks. Similarly, the claim provides that a
“recognition device . . . actuat[es] the information transmitter” and that “a unit . . .
independently reads data transmitted from the information transmitter.” Accordingly, the
tasks of actuating the transmitter and reading data are performed by the recognition
device and the unit, respectively, not by the elevator user. The claim also explicitly
provides that the transmitter is “carried by an elevator user.” Carrying a transmitter is
thus a type of “personal action” that is expressly required in the claims. Nowhere does
claim 1 limit the act of carrying to any specific manner of carrying.
Second, “[o]ther claims of the patent in question, both asserted and unasserted,
can also be valuable sources of enlightenment as to the meaning of a claim term.” Id.
Claim 7 depends from claim 1 and adds the phrase “wherein the recognition device
reads a key having a code.” A “key” is disclosed in the specification as a “building key,”
which is embedded with an information transmitter that is actuated by a recognition
device mounted near a “door lock” of a building. ’094 patent col.5 ll.30-32. The door
lock recognizes the building key when the passenger uses his key to open the door. Id.
col.5 ll.32-33. The specification, in describing a variation of this information transmitter
“key” embodiment, notes that the recognition device may be mounted near a “time
2009-1146 9
clock,” and an elevator is dispatched when a user clocks in or out of work. Id. col.5
ll.33-35. Because a user would need to use his hands to bring the transmitter key within
range of the recognition device to unlock the door, or to clock in or out of work, these
types of personal action are implicitly permitted in claim 7 and, by extension, in claim 1.
Thus, the claims appear to permit at least those types of personal action that are
necessary to bring the information transmitter within range of the recognition device.
2. Specification
“[C]laims ‘must be read in view of the specification, of which they are a part.’”
Phillips, 415 F.3d at 1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d
967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996)). “[T]he specification ‘is
always highly relevant to the claim construction analysis. Usually, it is dispositive; it is
the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
The phrase “personal action” is used only once in the specification, in the
following sentence:
The advantages achieved by the invention reside in the fact
that the desired journey destination is communicated
automatically to the elevator control by [(1)] the information
transmitters carried by the elevator users or by [(2)] the
recognition of features of the elevator users without any
personal action being required by the passenger.
’094 patent col.2 ll.49-54 (emphases and bracketed numbers added). Notably, this
sentence refers to the patent’s two disclosed embodiments: (1) the claimed “information
transmitter” embodiment and (2) the unclaimed “individual features” embodiment. 2 In
2
The concurring opinion asserts that, because the “individual features”
embodiment was “abandoned,” it would not be relevant to the scope of the disclaimer of
2009-1146 10
the latter, instead of actuating an information transmitter, the recognition device
“recognizes a passenger with the aid of an individual feature, for example in an optical
manner (facial contours, finger prints [sic], iris, etc.) or by reason of the speech thereof.”
Id. col.4 ll.48-51 (emphasis added). Because a passenger would need to place his
hand on the optical recognition device for it to read his fingerprints, this cannot be the
“personal action” to which the sentence refers. Instead, the structure of the sentence—
“communicated . . . by [(1)] . . . or by [(2)]”—makes clear that the two enumerated
embodiments are the means by which “the desired journey destination is
communicated,” and that the ultimate phrase “without any personal action being
required by the passenger” describes how the information is communicated. The
sentence says nothing about how the passenger initially brings his transmitter (or
fingerprints) within recognition range, but merely that, once in range, he need not use
personal action to communicate his journey destination to the elevator control.
The same is true of all statements in the specification describing “hands-free,”
“automatic,” and “contactless” elevator operations. Each time those terms are used,
they modify the elevator’s “call entry” operation, an operation that necessarily occurs
after the information transmitter has been brought within range of the recognition device
and after the transmitter has been actuated by the recognition device. Id. Abstract
(“[T]he call entry taking place automatically, contactless and independent of the
orientation of the information transmitter . . . .” (emphasis added)), col.4 ll.27-29 (“The
“personal action.” Post at 4 n.3. With all due respect, neither assertion is correct. The
embodiment was not “abandoned,” it simply was never claimed in the application that
led to this particular patent. Moreover, because the phrase “without any personal
action” applies equally to both embodiments, the latter embodiment is indeed relevant to
discerning what kinds of “personal action” this sentence prohibits.
2009-1146 11
entire operation of the call entry takes place hands-free, contactless and independent of
the orientation of information transmitter . . . .” (emphasis added)). As previously
discussed, the claims themselves provide that “elevator calls [are] entered at an entry
location by an information transmitter” rather than by the user, so the specification
merely confirms that the user does not manually enter the call.
Contrary to the district court’s prohibition against all actions other than walking,
the specification itself provides examples where a user would need to do more than just
walk to bring his transmitter into recognition range. As mentioned, the “key”
embodiment of claim 7 requires a user to unlock a door using a key, and only upon
“opening of the door” by the user will an elevator be dispatched. Id. col.5 ll.27-35. The
transmitter “can also be mounted on any desired object,” id. col.4 ll.64-65, like a
“luggage or shopping cart,” and an elevator is dispatched when the user pushes his cart
into the vicinity of the recognition device, id. col.5 ll.1-13. Thus, unlocking a door and
pushing a cart are two “personal actions,” other than simply walking, which are
disclosed in the specification as actions needed to bring a transmitter within range of the
recognition device. Once in range, the transmitter is actuated by the recognition device
and transmits its encoded data without personal action by the user.
3. Prosecution History
“[T]he prosecution history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and whether the inventor
limited the invention in the course of prosecution, making the claim scope narrower than
it would otherwise be.” Phillips, 415 F.3d at 1317.
2009-1146 12
During prosecution, Schindler amended the claims in response to an
obviousness rejection over U.S. Patent No. 5,304,752 (“Hayashi”) in view of U.S. Patent
No. 4,685,538 (“Kamaike”). It was at this time that Schindler first added the “information
transmitter” limitation to the claims, and further required that the transmitter be
“actuat[ed]” by the recognition device. J.A. 314-17 (“the recognition device . . .
actuating the information transmitter” (amendment emphasized)). Schindler argued that
Hayashi “fails to show calls for the elevator made by a transmitter identifying the
destination of the passenger,” J.A. 319, and that Kamaike, which requires a user to
manually actuate a transmitter by pressing buttons, “fails to disclose or suggest . . . a
recognition device actuating a transmitting device carried by the elevator user for
transmitting data,” J.A. 322. Schindler went on to explain:
Because the information transmitter of the present invention
is not equipped with user operable keys, it is not necessary
that the information transmitter be in the elevator user’s
hands to select the desired floor. Thus, the call commands
are pre-programmed to occur automatically, contactlessly,
and independently of the orientation of the information
transmitter.
J.A. 320. The examiner allowed the claims to issue in amended form.
The district court reviewed the prosecution history and concluded that Schindler
had surrendered coverage of its originally claimed invention and, through its arguments,
had disavowed any coverage of elevator systems that do not operate “automatically”
and “hands-free.” Claim Construction Order, 561 F. Supp. 2d at 361. We agree with
the district court that Schindler is not entitled to any interpretation that it disclaimed
during prosecution. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir.
2005) (“The purpose of consulting the prosecution history in construing a claim is to
‘exclude any interpretation that was disclaimed during prosecution.’” (quoting ZMI Corp.
2009-1146 13
v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1580 (Fed. Cir. 1988))). But we disagree
as to the extent of that disclaimer.
The doctrine of prosecution disclaimer attaches where an applicant, whether by
amendment or by argument, “unequivocally disavowed a certain meaning to obtain his
patent.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003). For
example, an amendment that clearly narrows the scope of a claim, such as by the
addition of a new claim limitation, constitutes a disclaimer of any claim interpretation
that would effectively eliminate the limitation or that would otherwise recapture the
claim’s original scope. Here, the district court construed the term “recognition device”
as a device that “actuates and reads data transmitted by an information transmitter.”
Because this construction already provides that the recognition device—not the elevator
user—actuates the transmitter, there is no risk that Schindler would recapture a broader
claim scope than that existing before it added the “information transmitter” and
“actuating” language to the claims.
An argument made to an examiner constitutes a disclaimer only if it is “clear and
unmistakable.” Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed.
Cir. 2006). An “ambiguous disavowal” will not suffice. Computer Docking Station Corp.
v. Dell, Inc., 519 F.3d 1366, 1375 (Fed. Cir. 2008). Here, the district court found
statements in the prosecution history, similar to those in the specification, which
describe the invention as operating “automatically, contactlessly, and independently of
the orientation of the information transmitter.” The district court read these statements
as unambiguously disavowing the use of a passenger’s hands for any and all purposes.
We disagree. As in the specification, those terms modify actions that take place only
2009-1146 14
after the passenger has brought the transmitter within range of the recognition device—
specifically, the actuation of the transmitter, the entry of call commands, and the
selection of a destination floor. J.A. 320 (“[I]t is not necessary that the information
transmitter be in the elevator user’s hands to select the desired floor.” (emphasis
added)); 320 (“Thus, the call commands are pre-programmed to occur automatically,
contactlessly, and independently of the orientation of the information transmitter.”
(emphasis added)); 322 (“[N]either applied document of record discloses or suggests,
inter alia, the unique hands-free, automatic, and contactless elevator call system recited
in the pending claims via a recognition device that actuates a transmitting device . . . .”
(emphases added)); 325 (“Because none of the applied documents of record disclose or
suggest actuation of the transmitting device by the recognized device, recited in the
combination of features in at least independent claim 1, to enable truly hands-free
operation of elevator calls, Applicants respectfully submit that no combination of the
applied documents of record can even arguably render obvious the present invention as
recited in claim 7.” (emphases added)). Significantly, the last of these prosecution
statements is specifically directed to dependent claim 7, which recites the “key” feature.
It is clear that “truly hands-free” modifies “operation of the elevator calls” and does not—
indeed, can not—refer to the initial act of bringing the key within range of the recognition
device. None of these statements speaks to the role a user plays in bringing a
transmitter within range of a recognition device; nor was the prior art distinguished on
that basis. These prosecution statements, which, contrary to the concurrence, the
applicant actually made and not merely could have made, do not constitute a “clear and
2009-1146 15
unmistakable” disavowal of personal action for the limited purpose of bringing the
transmitter within range of the recognition device.
Instead, we read the prosecution history in this case “as support for the
construction already discerned from the claim language and confirmed by the written
description.” 800 Adept, Inc. v. Murex Sec., Ltd., 539 F.3d 1354, 1365 (Fed. Cir. 2008).
That construction excludes coverage of systems in which an elevator user manually
presses buttons to actuate the information transmitter or to select a default journey
destination. Those types of personal action are properly excluded under the portions of
the district court’s existing construction specifying that the information transmitter is
what “communicates with a recognition device via electromagnetic waves, after being
actuated by that recognition device,” and that the recognition device is what “actuates
and reads data transmitted by an information transmitter.” However, a user ought to be
able to use his hands, or take other personal action, to simply bring the transmitter
within the effective range of the recognition device. 3 We therefore modify the district
court’s construction of “information transmitter” and “recognition device” by striking the
phrase “without requiring any sort of personal action by the passenger” from each
construction.
3
The concurring opinion would only allow a user to take personal action to
the extent that the action is “required to gain entry to the building,” but would prohibit a
user from otherwise taking personal action simply to bring the transmitter within range of
the recognition device. Post at 2. Respectfully, there is nothing in the language of the
claims, the specification, or the prosecution history that draws such a distinction. As
explained above, the intrinsic evidence speaks only to user actions taken after the
transmitter is within recognition range; it is entirely unconcerned with the way in which
the transmitter initially gets there.
2009-1146 16
B. Infringement
Under our modified construction of “information transmitter” and “recognition
device,” Schindler’s evidence was sufficient to create a genuine issue of material fact
that the RFID cards of the accused system communicate with a card reader via
electromagnetic waves after being actuated by the card reader, and that the card reader
actuates and reads data transmitted by the RFID cards. On that basis, the district court
should not have granted summary judgment of noninfringement.
Below, Otis also moved for summary judgment of noninfringement under the
district court’s construction of two other limitations (“in the vicinity of the elevators” and
“coupled between”), which the district court did not reach. The parties have not
challenged the construction of those limitations on appeal. Otis’s arguments that it does
not infringe under the district court’s construction of those two limitations thus remain
open for consideration on remand.
CONCLUSION
We modify the district court’s construction of “information transmitter” and
“recognition device” by striking the phrase “without requiring any sort of personal action
by the passenger” from each construction. We vacate the grant of summary judgment
of noninfringement and remand for further proceedings consistent with this opinion.
VACATED and REMANDED
COSTS
Costs to Schindler.
2009-1146 17
United States Court of Appeals for the Federal Circuit
2009-1146
SCHINDLER ELEVATOR CORPORATION
and INVENTIO AG,
Plaintiffs-Appellants,
v.
OTIS ELEVATOR COMPANY,
Defendant-Appellee.
Appeal from the United States District Court for the Southern District of New York in
case no. 06-CV-5377, Judge Colleen McMahon.
DYK, Circuit Judge, concurring in the result and dissenting in part.
I agree that the “without requiring any sort of personal action” construction
imposed by the district judge unduly limited the scope of the claims. As the majority
opinion points out, dependent claim 7 contemplates using a key (or a card swipe) to
enter the building and at the same time transmitting the user’s elevator data. See
Majority Op. at 9-10. Such an action is covered by the claims, as the specification also
makes clear. 1 Here, it is admitted that the same card swipe process gains entry to the
building and calls the elevator. Thus, the recognition device and information transmitter
1
The specification provides: “A further variation consists in that information
transmitter 1 is not carried along as a separate card, but executed as coded key means.
For example, in a residential or in an office building, the building key can be provided
with information transmitter 1. Recognition device 5 is then mounted at the door lock so
that elevator control 10 also receives the destination call upon the opening of the door.”
’094 patent col. 5 ll.27-33.
claim limitations are satisfied, because using the building key to call the elevator
requires no additional personal action by the user.
Unfortunately, the majority is not content to rest its decision on this simple point.
Rather, it interprets the claim broadly as including a swipe card device that is not tied to
building access and declines to give effect to the significant disclaimer appearing in both
the specification and prosecution history—disclaiming devices that are not “hands-free”
and “automatic.” Contrary to the majority, it seems to me that the action of swiping a
card to call the elevator separate from the action required to gain entry to the building is
clearly within the disclaimer of both the specification and prosecution history.
How does the majority avoid this disclaimer? The majority’s theory is that there
is no requirement of hands-free or automatic action until the transmitter is within range
of the recognition device. In other words, the device would be “hands-free” and
“automatic” even though the user has to take elaborate action to bring the device within
range. See Majority Op. at 16 (“[A] user ought to be able to use his hands, or take other
personal action, to simply bring the transmitter within the effective range of the
recognition device”). I find this reading of the disclaimer to be inherently improbable
and quite inconsistent with the language of the specification and prosecution history.
The specification and prosecution history make no such distinction, and consistently
emphasize the hands-free and automatic nature of the device without regard to whether
it is in range or not. The specification requires that “the desired journey destination [be]
communicated automatically to the elevator control by the information transmitters
carried by the elevator users . . . without any personal action being required by the
passenger,” ’094 patent col.2 ll.49-54 (emphasis added), and that the entire call entry
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take place “hands-free, contactless and independent of the orientation of the information
transmitter,” id. at col.4 ll.27-29. The prosecution history similarly distinguishes the prior
art on the ground that the call commands occur “automatically, contactlessly, and
independently of the orientation of the information transmitter.” J.A. 320. Neither the
specification nor the prosecution history distinguished between actions taken within
range or out of range of the recognition device.
The patentees, unlike the majority, argue that the disclaimer has no application to
devices where the signal came from the recognition device. 2 On this theory, the
disclaimer is rendered entirely meaningless because the patent only covers devices in
which the signal is initiated by the recognition device, and the disclaimer is read only to
apply to devices in which the signal is initated by the transmitter.
The prior art device involved a system whereby the user activated a transmitter
by entering a code that signaled the recognition device. The applicant could have
distinguished this prior art solely on the ground that the signal here goes from the
recognition device to the transmitter. The applicant did not choose to rest on this
ground alone (likely because this was an obvious variant of the prior art), but instead
emphasized that the patented device was distinguishable both because of the signal
direction and because it was hands-free and automatic. The patentee agreed at oral
2
At oral argument, appellant stated that “[i]f the signal is initiated from the
card, that is disclaimed by the amendment . . . . It doesn’t matter whether the actuation is
by buttons . . . . The point is, the initiation of the communication is initiated by the
recognition device so that the card can now be passive . . . . That was the distinction
[made in the prosecution history], not whether it was buttons or not, but the actuation no
longer came from the information transmitter.” Oral Arg. at 40:43-41:27 (emphasis
added).
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argument that a card swipe was no less covered by the disclaimer than the pressing of
buttons.
We have repeatedly held that a disclaimer cannot be avoided simply by pointing
out that the prior art could have been distinguished on another ground. See, e.g.,
Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1361-62 (Fed. Cir. 2005) (holding that
patentees must be held to the scope of what they ultimately claim, and are not allowed
to assert that claims should be construed to surrender only what was necessary to
avoid the prior art); Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., 287 F.3d
1108, 1115 (Fed. Cir. 2002) (“Fantasy acquiesced in [the examiner’s] rejections by
canceling all claims that did not contain the ‘bonus points’ limitation at issue on appeal,
and thus cannot now be heard to argue post hoc that it was the combination of the
aforementioned limitations that rendered its invention patentable over the prior art.”).
Schindler’s disclaimer must be based on what he said, not on what he could have said.
Thus, I find Schindler’s reading of the disclaimer to be just as untenable as the
majority’s reading.
A competitor reading the specification and the prosecution history is entitled to
rely on the patent and prosecution history. In my view, the majority’s claim construction
artificially eliminates that disclaimer in limiting it to actions taken after the transmitter is
in range of the recognition device. 3
3
The majority opinion also appears to rely on the unclaimed “individual
features” embodiment relating to finger print recognition. See Majority Op. at 10-11.
Given that this embodiment was abandoned, I do not think that it suggests anything
regarding the scope of the claims that were retained. In particular, the prosecution
history disclaimer cannot have been addressed to the abandoned claims.
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