TIP Systems, LLC v. Phillips & Brooks/Gladwin, Inc.

United States Court of Appeals for the Federal Circuit
2007-1241, -1279

TIP SYSTEMS, LLC and TIP SYSTEMS HOLDING COMPANY, INC.,

Plaintiffs-Appellants,

v.

PHILLIPS & BROOKS/GLADWIN, INC. (trading as PBG, Inc.),
ACOUSTICS DEVELOPMENT CORPORATION (trading as PBG, Inc.),
and PBG, INC.,

Defendants,
and

INDEPENDENT TECHNOLOGIES, INC., (trading as Wintel),

Defendant-Appellee,
and

TZ HOLDINGS, INC., T-NETIX TELECOMMUNICATIONS SERVICES, INC.,
T-NETIX, INC., EVERCOM HOLDINGS, INC., EVERCOM SYSTEMS, INC.,
EVERCOM, INC. (doing business as Texas Evercom, Inc.),

Defendants-Cross Appellants,
and

JCW ELECTRONICS, INC.,

Defendant,
and

MYRMIDON CORPORATION (trading as PBG, Inc.),

Defendant.

Gary M. Samms, Obermayer Rebmann Maxwell & Hippel LLP, of Philadelphia,
Pennsylvania, argued for plaintiffs-appellants. With him on the brief were Jeffrey S.
Batoff, Nicholas Poduslenko, and Matthew A. Kelly, III.
 John E. Schneider, Fulbright & Jaworski L.L.P., of Houston, Texas, argued for
defendant-appellee. Of counsel were Christopher R. Benson, of Austin, Texas, and William J.
Boyce, of Houston, Texas.

Aubrey ‘Nick” Pittman, The Pittman Law Firm, P.C., of Dallas, Texas, argued for
defendants-cross appellants. Of counsel on the brief were Jeffrey S. Lowenstein, Neal J. Suit,
and Matthew R. Scott, Bell Nunnally & Martin LLP, of Dallas, Texas.

Appealed from: United States District Court for the Southern District of Texas

Judge Vanessa D. Gilmore
 United States Court of Appeals for the Federal Circuit
2007-1241, -1279

TIP SYSTEMS, LLC and TIP SYSTEMS HOLDING COMPANY, INC.,

Plaintiffs-Appellants,

v.

PHILLIPS & BROOKS/GLADWIN, INC. (trading as PBG, Inc.),
ACOUSTICS DEVELOPMENT CORPORATION (trading as PBG, Inc.),
and PBG, INC.,

Defendants,

and

INDEPENDENT TECHNOLOGIES, INC., (trading as Wintel),

Defendant-Appellee,

and

TZ HOLDINGS, INC., T-NETIX TELECOMMUNICATIONS SERVICES, INC.,
T-NETIX, INC., EVERCOM HOLDINGS, INC., EVERCOM SYSTEMS, INC.,
EVERCOM, INC. (doing business as Texas Evercom, Inc.),

Defendants-Cross Appellants,

and

JCW ELECTRONICS, INC.,

Defendant,

and

MYRMIDON CORPORATION (trading as PBG, Inc.),

Defendant.

Appeals from the United States District Court for the Southern District of Texas in case
no. 04-CV-3718, Judge Vanessa D. Gilmore.
 __________________________

DECIDED: June 18, 2008
__________________________

Before MICHEL, Chief Judge, PROST, Circuit Judge, and POGUE, Judge. ∗

PROST, Circuit Judge.

This is a patent infringement case pertaining to wall-mounted telephones

designed for use by prison inmates. TIP Systems, LLC (“TIP”) filed suit in the United

States District Court for the Southern District of Texas against: Phillips &

Brooks/Gladwin, Inc., Acoustics Development Corporation, and PBG, Inc.; Independent

Technologies, Inc. (“Independent Technologies”); TZ Holdings, Inc., T-Netix

Telecommunications Services, Inc., T-Netix, Inc., Evercom Holdings, Inc., Evercom

Systems, Inc., and Evercom, Inc. (collectively “Evercom”); JCW Electronics, Inc.; and

Myrmidon Corporation for infringement of two patents. TIP appeals the district court’s

claim construction order, TIP Systems, LLC v. Phillips & Brooks/Gladwin, Inc., No. 04-

CV-3718 (S.D. Tex. Feb. 22, 2006) (“Claim Constr. Order”), and the district court’s grant

of Independent Technologies’ and Evercom’s motion for summary judgment of non-

infringement. TIP Systems, LLC v. Phillips & Brooks/Gladwin, Inc., No. 04-CV-3718

(S.D. Tex. Mar. 1, 2007) (granting Independent Technologies’ Mot. for Summ. J.)

(“Indep. Techs.’ Summ. J. Order”); TIP Systems, LLC v. Phillips & Brooks/Gladwin, Inc.,

No. 04-CV-3718 (S.D. Tex. Mar. 1, 2007) (granting Evercom’s Mot. for Summ. J.)

(“Evercom’s Summ. J. Order”). Because we find no error in the district court’s claim

∗
Honorable Donald Pogue, Judge, United States Court of International
Trade, sitting by designation.

2007-1241, -1279 2
construction and its holding that the accused devices do not infringe literally or under

the doctrine of equivalents, we affirm.

I

TIP is the owner of two related patents, U.S. Patent No. 6,009,169 (“the ’169

patent”) and U.S. Patent No. 6,512,828 (“the ’828 patent”). The ’828 patent application

is a continuation of another application, now abandoned, which is in turn a continuation-

in-part of the ’169 patent application. Both patents are directed to cord-free telephones

for use in correctional facilities. The absence of a telephone cord enhances safety by

preventing an inmate from hanging himself or using the cord as a weapon. ’169 patent,

col. 1, ll. 11-14; ’828 patent, col. 1, ll. 30-33. It also lowers maintenance costs. ’169

patent, col. 1, ll. 14-16; ’828 patent, col. 1, ll. 33-35. Claim 1 of the ’169 patent is

representative:

An inmate phone of the type having a housing in an interior wall of a
prison, a push-button dialing pad mounted within a front wall of the
housing with the push-button digits of the push-button dialing pad
extending out of the front wall, a telephone handset being a handle with an
earpiece at one end and a mouthpiece at an opposite end, a handset cord
electrically connected between the push-button dialing pad and the
telephone handset, wherein the improvement comprises means for
permanently mounting the telephone handset vertically within the front
wall of the housing, so that the earpiece positioned at top and the
mouthpiece positioned at bottom will permanently extend out through the
front wall of the housing to be used by inmates within the prison hands
free while the handset cord is also permanently maintained within the
housing, to prevent the inmates from having direct access to the
telephone handset and the handset cord, in which the inmates can no
longer hang themselves with the handset cord and break the handset cord
off and use the telephone handset as a weapon.

(Emphases added). Claim 1 of the ’828 patent is also representative and recites in

relevant part:

2007-1241, -1279 3
 A telephone for permanent mounting to a mounting surface in
environments wherein the telephone is subject to abuse, comprising:
a housing, a mouthpiece, an earpiece, an electronic circuit board, a
push-button dialing pad, a phone line and a dial tone actuating
switch;
said housing including a housing front wall;
said housing front wall including a front wall inner surface;
said housing front wall including a plurality of aural apertures, a
plurality of push-button apertures and a dial tone actuating switch
aperture;
said mouthpiece and said earpiece mounted to said front wall;
said mouthpiece and said earpiece extending outward from said
housing through said aural apertures such that a user places his
ear next to said aperture for said earpiece;
...
said earpiece and said mouthpiece presenting an external relief
surface for positioning said ear and a mouth of said user;
...
said dial tone actuating switch electrically connected to said phone line
and said electronic circuit board;
....
and said phone operable in said mounted position by access to said
mouthpiece, said earpiece, said dialing pad and said dial tone
actuating switch.

(Emphases added).

The two accused devices are Model 7090 CFSS (“CFSS”) and Model 7090

SPSS (“SPSS”). Neither device contains a conventional handset with a handle, but

each contains an earpiece and a mouthpiece. In the CFSS phone, both the earpiece

and the mouthpiece project beyond the wall of the housing. In contrast, in the SPSS

phone, the earpiece and mouthpiece are flush with the wall of the housing. In each

phone, the actuating switch is connected to the circuit board, but not to the phone line.

On February 22, 2006, following a hearing, the district court issued a claim

construction order, construing the terms of both patents. Claim Constr. Order.

Thereafter, on March 1, 2007, the court granted Independent Technologies’ and

Evercom’s motions for summary judgment of non-infringement. Indep. Techs.’ Summ.

2007-1241, -1279 4
J. Order; Evercom’s Summ. J. Order. TIP appealed. We have jurisdiction pursuant to

28 U.S.C. § 1295(a)(1).

II

We review a district court’s grant of summary judgment de novo. Innogenetics,

N.V. v. Abbott Labs., 512 F.3d 1363, 1378 (Fed. Cir. 2008). 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). In determining the meaning of a disputed claim

limitation, we look to the intrinsic evidence, including the claim language, written

description, and prosecution history, as well as to extrinsic evidence. Phillips v. AWH

Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc).

III

On appeal, TIP argues that the district court erred in its construction of several

terms in each patent. We take each claim term in turn.

A

First, TIP argues that the district court erred in its construction of the term

“handset” in claim 1 of the ’169 patent. The district court construed the term to mean “a

handle with an earpiece at one end and a mouthpiece at the opposite end.” Claim

Constr. Order, slip op. at 18. Instead, TIP argues, the term should be construed to

mean “an earpiece and mouthpiece and equivalents.” In other words, TIP contends that

the term should be construed to not require the presence of a handle. Citing

Hockerson-Halberstadt, Inc. v. Converse, Inc., 183 F.3d 1369 (Fed. Cir. 1999), TIP

argues that construction of a claim term requires interpretation of the entire claim in

context and that the patentees may define a claim term in any way they choose.

2007-1241, -1279 5
According to TIP, the term “handset” has been re-defined in the context of the hands-

free nature of the patented invention to be nothing more than a mounted earpiece and

mouthpiece, and “handle” is simply a means for mounting the earpiece and mouthpiece

to the housing at a fixed distance apart.

In construing the term “handset,” the district court principally relied on the

language of the claim. The court noted that the claim expressly states: “a telephone

handset being a handle with an earpiece at one end and a mouthpiece at an opposite

end.” Hence, the claim itself contains a precise definition of the term. By first looking to

the claim language, the court recognized that “the claims themselves provide

substantial guidance as to the meaning of particular claim terms.” Phillips, 415 F.3d at

1314. We find no error by the district court in relying heavily on the claim language to

construe the claim term. The court’s construction is supported by an identical definition

in the specification: “A telephone handset 24 is provided, being a handle 26 with an

earpiece 28 at one end and a mouthpiece 30 at an opposite end.” ’169 patent, col. 3, ll.

61-63. Thus, the intrinsic evidence supports the court’s construction of “handset.”

TIP contends that its proposed construction is supported by: the disclosure of

structures for permanently mounting a “handset” in Figures 1-5; the statement in the

specification that “[t]he improvement comprises a facility 34 for premanently [sic]

mounting the telephone handset 24,” ’169 patent, col. 3, ll. 66-67; and the preferred

embodiment, which includes “[a]t least one bracket assembly 40 [which] is secured

within the front wall 20 of the housing 12, for permanently retaining the earpiece 28 and

the mouthpiece 30 of the telephone handset 24.” Id., col. 4, ll. 17-20. Further, TIP

contends, the definition of “handset” depends on proper construction of the phrase

2007-1241, -1279 6
“means for permanently mounting the telephone handset vertically within the front wall

of the housing,” which should be construed as a means-plus-function claim limitation

pursuant to 35 U.S.C. § 112, ¶ 6. According to TIP, the structure in the specification

supporting this means-plus-function claim term is “[a]t least one bracket assembly 40

[which] is secured within the front wall 20 of the housing 12, for permanently retaining

the earpiece 28 and the mouthpiece 30 of the telephone handset 24.” Id., col. 4, ll. 17-

20. Notably, TIP contends, there is no mention of a handle. In addition, TIP asserts

that the only functional portions of the handset shown in Figures 1, 2, and 5 of the ’169

patent are the earpiece and mouthpiece. Citing Rexnord Corp. v. Laitram Corp., 274

F.3d 1336 (Fed. Cir. 2001), TIP avers that it is improper to limit the meaning of a claim

term to the preferred embodiment and that, in this case, the specification contemplates

the mounting of the earpiece and mouthpiece without a handle.

TIP’s argument, however, conflates construction of the term “handset” with

construction of the phrase “means for permanently mounting the telephone handset,”

which are separate elements of the claimed invention. As the district court noted, TIP’s

means-plus function analysis is flawed because the phrase “means for permanently

mounting the telephone handset” refers to a different structure than the handset itself.

While TIP identifies language in the specification that may assist in defining the claim

term “means for permanently mounting the telephone handset,” TIP does not point to

any support in the specification for an alternative definition of the term “handset” that

does not include a handle. Although a handle is not depicted in Figures 1, 2, and 5, the

figures are pictorials of the telephone from a perspective outside the housing where the

handle is not visible. Indeed, the only structure disclosed in the specification for

2007-1241, -1279 7
permanently mounting the handset is a bracket assembly that attaches directly to the

handle. Id., figs. 3-4, col. 4, ll. 26-28. Thus, a handle is clearly an essential component

of the handset. We find no support in the specification for a definition of “handset” that

is contrary to the express definition in the claim, namely, “a handle with an earpiece at

one end and a mouthpiece at an opposite end.”

TIP also contends that the district court failed to appreciate that claim 1 is in

Jepson format and that, therefore, the preamble defines not only the context of the

claimed invention, but also its scope. Relying on Rowe v. Dror, 112 F.3d 473 (Fed. Cir.

1997), TIP argues that whether the preamble recites structural limitations or merely

states a purpose or intended use can only be gleaned from a review of the entire patent.

In Rowe, we held that the term “angioplasty” is a structural limitation on the

phrase “balloon angioplasty catheter” which appeared in the preamble of the claim. Id.

at 479. Similarly, here, we find that the phrase “handle with an earpiece at one end and

a mouthpiece at an opposite end” is a structural limitation on the claim term “handset.”

Interpreting “handle” to be a structural limitation on the claim is supported by the

repeated reference to “handle” in the specification. ’169 patent, abstract, col. 3, ll. 32,

62, col. 4, ll. 27, 39, figs. 3-4. Accordingly, we find no error by the district court in its

determination that a “handle” is a required structural component of the claim term

“handset.”

TIP next asserts that the district court erred in concluding that during prosecution

of the related ’828 patent application, TIP eventually withdrew its argument that an

earpiece and mouthpiece constituted a “handset.” According to TIP, during prosecution

of the ’828 patent, the examiner required that “handset” be removed from the claims

2007-1241, -1279 8
because the term did not appear in the specification. In response, the applicants

amended the claims to replace “handset” with “earpiece and mouthpiece.” This

amendment, TIP avers, clearly demonstrates how the applicants defined the term

“handset.” Further, TIP contends, the examiner rejected the claims of the ’828 patent

application as being obvious over the claims of the ’169 patent and required the

applicants to file a terminal disclaimer. Thus, the invention claimed in the ’828 patent

application, which clearly did not disclose or claim a handle, was deemed to be obvious

over the ’169 patent.

This court has held that the prosecution history of a related patent application

may inform construction of a claim term, when the two applications are directed to the

same subject matter and a clear disavowal or disclaimer is made during prosecution of

the related application. Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1314 (Fed.

Cir. 2007); Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349-50 (Fed. Cir.

2004); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1333 (Fed. Cir. 2003); Wang

Labs., Inc. v. Am. Online, Inc., 197 F.3d 1377, 1384 (Fed. Cir. 1999). Here, however,

the specification of the ’828 patent and that of the ’169 patent are distinct. Whereas the

’828 patent depicts phones without a handle and does not use the term “handset” in the

specification, the ’169 patent depicts only phones with a handle and uses the term

“handset” repeatedly throughout the specification. Moreover, here, TIP does not urge

us to construe the term “handset” in the ’169 patent based on a clear disavowal or

definition of the term made during prosecution of the ’828 patent application, but rather

based on an amendment eliminating the term entirely from the claims of the ’828 patent

application. The district court correctly concluded that by amending the claims of the

2007-1241, -1279 9
’828 patent application to remove the term “handset,” the applicants conceded that

there was no support for the term in the specification. Moreover, at the time of the

amendment, the applicants explained the difference between the ’828 patent application

and the ’169 patent as follows:

The present application varies from [the ’169 patent] primarily in the
structure of the earpiece/mouthpiece. In the [’169 patent], the earpiece
and mouthpiece are integral in a standard telephone handset. In the
present application, the earpiece and mouthpiece are not integrated into a
single standard handset.

Thus, the applicants distinguished the ’169 patent, where the earpiece and mouthpiece

are integrated into a handset, from the ’828 patent application, where they are not. The

fact that the patent examiner found the claims of the ’828 patent application to be

obvious in view of the claims of the ’169 patent has no bearing on our construction of

the term “handset” in the ’169 patent. The meaning of the term can be discerned from

the language of the claims themselves, and is fully supported by the specification,

drawings, and prosecution history.

Finally, TIP asserts that the district court erred in not considering extrinsic

evidence in construing the term “handset.” TIP contends that it is accepted industry

practice to use the term “handset” to refer to separate earpiece and mouthpiece units.

Specifically, TIP refers to brochures, instructions, and practice manuals produced for

the accused devices that use the term “handset” to refer only to the earpiece and

mouthpiece. Based on this extrinsic evidence, TIP argues that the district court should

have construed the term to mean “an earpiece and mouthpiece and equivalents.”

“[W]hile extrinsic evidence can shed useful light on the relevant art . . . it is less

significant than the intrinsic record in determining the legally operative meaning of claim

2007-1241, -1279 10
language.” Phillips, 415 F.3d at 1317 (internal quotations and citations omitted). The

district court did not err in finding that the clear intrinsic evidence outweighed the

extrinsic evidence of industry practice.

In sum, we hold that the district court did not err in construing the term “handset”

to mean “a handle with an earpiece at one end and a mouthpiece at the opposite end.”

B

TIP next argues that the district court erred in its construction of the phrase “the

earpiece positioned at top and the mouthpiece positioned at bottom will permanently

extend out through the front wall of the housing” in claim 1 of the ’169 patent and the

phrase “said mouthpiece and said earpiece extending outward from said housing

through said aural apertures” in claim 1 of the ’828 patent. The court construed both

phrases to mean “both the earpiece and mouthpiece pass through apertures in the front

wall such that they project out from the front wall.” Claim Constr. Order, slip op. at 20-

21.

TIP contends that the court erred in limiting the meaning of “through” in both

claim terms to a physical or structural connotation even though dictionaries also give

“through” a functional connotation, such as, “to a conclusion or accomplishment” or

“among or between; in the midst of.” According to TIP, under a functional definition of

“through,” the claim terms could be construed to mean that the earpiece and

mouthpiece function “in the midst of” the housing and aural apertures so that the user

can utilize them, or that the earpiece and mouthpiece function to the “conclusion or

accomplishment” of allowing inmates to use the phone hands-free. Such a construction

is supported, according to TIP, by the alternative embodiment disclosed in the ’828

2007-1241, -1279 11
patent, wherein “aural communication to earpiece 28 and mouthpiece 30 is afforded

through a sound transparent section of housing front wall 20, such as a plurality of small

holes (not shown).” ’828 patent, col. 3, ll. 16-19. TIP argues that by adopting a

narrower definition of the claim term, the district court excluded the alternative

embodiment, wherein neither the earpiece nor the mouthpiece project out from the front

wall. Id., col. 3, ll. 12-15. In essence, TIP’s argument is that the earpiece and

mouthpiece need not project beyond the wall of the housing, but may be flush with the

housing.

TIP’s proffered functional definition of the word “through” does not aid in

construing the claim terms and, in fact, leads to a nonsensical result. For example,

adopting TIP’s construction of “through,” the relevant claim term in the ’169 patent

would read: “the earpiece positioned at top and the mouthpiece positioned at bottom will

permanently extend out [to a conclusion or accomplishment; among or between; in the

midst of] the front wall of the housing.” Similarly, the relevant claim term in the ’828

patent would read: “said mouthpiece and said earpiece extending outward from said

housing [to a conclusion or accomplishment; among or between; in the midst of] said

aural apertures.”

The most natural reading of the claim language “earpiece . . . and . . .

mouthpiece . . . permanently extend out through the front wall of the housing” in the ’169

patent and the claim language “mouthpiece . . . and . . . earpiece extending outward

from said housing” in the ’828 patent is that the earpiece and mouthpiece project out

from the wall of the housing. The specification of the ’169 patent supports such a

construction of the claim term in its recitation: “[T]he earpiece 28 positioned at the top

2007-1241, -1279 12
and the mouthpiece 30 positioned at the bottom will permanently extend out through the

front wall 20 of the housing 12 to be used by inmates within the prison 16 hands free.”

’169 patent, col. 4, ll. 1-5. In addition, Figures 1, 2, and 4 in the ’169 patent all depict

the telephone with the earpiece and mouthpiece extending out beyond the wall of the

housing. Similarly, in the preferred embodiment disclosed in the specification of the

’828 patent, “[a]ural output and input to inmate phone 10 is provided respectively by

earpiece 28 and mouthpiece 30, both being mounted to the interior of housing front wall

20 and extending outward from housing front wall 20 through aural apertures 38.” ’828

patent, col. 2, ll. 59-63. Figures 1 and 2 both depict the earpiece and mouthpiece

projecting out from the wall of the housing.

TIP, of course, is correct that the specification of the ’828 patent discloses an

alternative embodiment, wherein the earpiece and mouthpiece do not extend through

the housing front wall. However, to construe the claim term to encompass the

alternative embodiment in this case would contradict the language of the claims.

Indeed, read in the context of the specification, the claims of the patent need not

encompass all disclosed embodiments. PSN Ill., LLC v. Ivoclar Vivadent, Inc., No.

2007-1512, 2008 WL 1946550, at *5 (Fed. Cir. May 6, 2008). Our precedent is replete

with examples of subject matter that is included in the specification, but is not claimed.

Schoenhaus v. Genesco, Inc., 440 F.3d 1354, 1359 (Fed. Cir. 2006); Maxwell v. J.

Baker, Inc., 86 F.3d 1098, 1108 (Fed. Cir. 1996); Unique Concepts, Inc. v. Brown, 939

F.2d 1558, 1562-63 (Fed. Cir. 1991). Therefore, the mere fact that there is an

alternative embodiment disclosed in the ’828 patent that is not encompassed by district

court’s claim construction does not outweigh the language of the claim, especially when

2007-1241, -1279 13
the court’s construction is supported by the intrinsic evidence. ’169 patent, col. 3, l. 66

to col. 4, l. 5; figs. 1, 2, 4; ’828 patent, col. 2, ll. 59-63; figs. 1, 2.

TIP further avers that the proper meaning of the claim term can only be assessed

in the context of the means-plus-function claim limitations in claim 1 of the ’828 patent,

which must be construed according to 35 U.S.C. § 112, ¶ 6. Specifically, TIP points to

the following claim limitations: “said phone operable in said mounted position by access

to said mouthpiece, said earpiece, said dialing pad and said dial tone actuating switch”

and “a user places his ear next to said aperture for said earpiece.” According to TIP,

the function of using or operating the phone can be accomplished regardless of whether

the earpiece and mouthpiece are flush with the housing, are recessed from the housing,

or project out from the housing.

Although use of the term ‘means’ is not the only way to invoke § 112, ¶ 6, when,

as here, a claim element does not use ‘means,’ there is a rebuttable presumption that

§ 112, ¶ 6 does not apply. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369

(Fed. Cir. 2002); Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1257

(Fed. Cir. 1999); Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999);

Personalized Media Communications, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04

(Fed. Cir. 1998). In deciding whether the presumption has been rebutted, the focus is

on whether the claim recites sufficiently definite structure. CCS Fitness, 288 F.3d at

1369; Al-Site, 174 F.3d at 1318; Personalized Media, 161 F.3d at 704. Each of the

claim elements which TIP alleges invokes § 112, ¶ 6 recite clear and definite structures,

namely, mouthpiece, earpiece, dialing pad, dialing tone actuating switch, and aperture.

Therefore, TIP has not successfully rebutted the presumption that § 112, ¶ 6 does not

2007-1241, -1279 14
apply. In any event, even if we were to construe these claim elements as means-plus-

function claim terms, we cannot see how that construction under § 112, ¶ 6 would affect

construction of the claim terms at issue here.

Accordingly, we find no error in the district court’s construction of the phrase “the

earpiece positioned at top and the mouthpiece positioned at bottom will permanently

extend out through the front wall of the housing” in claim 1 of the ’169 patent and the

phrase “said mouthpiece and said earpiece extending outward from said housing

through said aural apertures” in claim 1 of the ’828 patent to mean that “both the

earpiece and mouthpiece pass through apertures in the front wall such that they project

out from the front wall.”

C

In a related argument, TIP contests the district court’s construction of the claim

term “said earpiece and said mouthpiece presenting an external relief surface for

positioning said ear and a mouth of said user” in claim 1 of the ’828 patent to mean “the

earpiece and the mouthpiece present a raised surface on the outside of the phone for

positioning said ear and mouth of said user.” Claim Constr. Order, slip op. at 25. TIP

contends that the court improperly limited the term to its meaning in the field of art and

architecture. Instead, TIP argues, the proper interpretation of the word “relief” in the

context of the claims and specification of the ’828 patent is “distinction or prominence

resulting from contrast.” TIP avers that such a construction would include raised-

surface, recessed-surface, and flush-surface earpiece and mouthpiece configurations,

provided the user can identify and access the earpiece and mouthpiece. Once again,

TIP argues that the district court, by limiting its definition of the claim term, excludes the

2007-1241, -1279 15
alternative embodiment disclosed in the specification of the ’828 patent, wherein the

earpiece and mouthpiece are flush with the wall of the housing. ’828 patent, col. 3, ll.

12-15. According to TIP, the specification and drawings of the ’169 patent support its

proposed construction in that the purpose of the invention is to prevent inmates from

having access to the telephone handset or the handset cord without restriction on the

mounting of the earpiece and mouthpiece. Finally, TIP contends that the first prototype

of the claimed invention has an external relief surface which is flush with, not raised

above, the phone housing.

The district court’s construction of the claim term is consistent with the claims

and the specification of the ’828 patent. As discussed above, proper construction of the

claim term “said mouthpiece and said earpiece extending outward from said housing

through said aural apertures” in claim 1 of the ’828 patent requires that “both the

earpiece and mouthpiece pass through apertures in the front wall such that they project

out from the front wall.” To be read consistently with that claim term, the only

reasonable interpretation of the phrase “said earpiece and said mouthpiece presenting

an external relief surface” is that the earpiece and mouthpiece present a raised surface

above the housing. The district court’s construction is also consistent with the preferred

embodiment disclosed in the specification. ’828 patent, col. 2, ll. 59-63, col. 4, ll. 11-18.

Furthermore, Figures 1 and 2 of the patent depict the earpiece and mouthpiece as a

raised surface above the housing. Although the alternative embodiment does not

support the court’s construction, for the reasons discussed above, the claims need not

be construed to encompass all disclosed embodiments when the claim language is

clearly limited to one or more embodiments. PSN Ill., 2008 WL 1946550, at *5.

2007-1241, -1279 16
 The specification of the ’169 patent, offered by TIP as support, has no bearing on

our construction of a term that is neither claimed nor disclosed in the ’169 patent.

Nonetheless, the only embodiment disclosed in the ’169 patent depicts an earpiece and

mouthpiece that extend out from the housing, thus creating a raised surface above the

housing, consistent with the court’s claim construction. Lastly, the prototype, as

extrinsic evidence, need be given little weight in the court’s claim construction if it is

outweighed by clear intrinsic evidence. Phillips, 415 F.3d at 1324.

For the reasons stated, we find no error in the district court’s construction of “said

earpiece and said mouthpiece presenting an external relief surface for positioning said

ear and a mouth of said user” in claim 1 of the ’828 patent to mean “the earpiece and

the mouthpiece present a raised surface on the outside of the phone for positioning said

ear and mouth of said user.”

D

Finally, TIP objects to the district court’s construction of “said dial tone actuating

switch electronically connected to said phone line and said electronic circuit” in claim 1

of the ’828 patent. The district court construed the claim term to mean “said dial tone

actuating switch electronically connected to both the said phone line and said electronic

circuit board, such that electricity can pass among these elements.” Claim Constr.

Order, slip op. at 22. TIP contends that the phrase should instead be construed to

mean “the dial tone actuating switch is electrically connected to said phone line and said

electronic circuit board, such that electricity can pass among these elements.” In other

words, TIP maintains that the actuating switch need not be between the phone line and

the circuit board, provided that electricity can pass between the three components.

2007-1241, -1279 17
 TIP contends that its proposed construction is consistent with the claims and the

specification of the ’828 patent, as well as the art of basic electrical circuitry. According

to TIP, the specification indicates that the invention utilizes conventional telephone

electronic circuitry, which for every payphone includes a connection between the phone

line and the circuit board and between the actuating switch and the circuit board. TIP

argues that the specification does not depict two separate, direct electrical connections

from the dial tone actuating switch to the phone line and to the circuit board. While TIP

concedes that Figure 3 shows a connection between the actuating switch and the circuit

board, it contends that neither Figure 3 nor Figure 4 shows a connection between the

actuating switch and the phone line. Thus, TIP avers that the specification only requires

that the actuating switch, the phone line, and the circuit board be connected such that

electricity can flow among them, and does not limit the manner of connection.

The district court’s construction, however, is supported by the language of claim

1 of the ’828 patent. The claim uses the conjunction “and,” indicating that the dial tone

actuating switch must be electronically connected to the phone line and it must be

electronically connected to the circuit board. Further, the specification provides that the

“[d]ial tone actuating switch 36 is electrically connected between phone line 58 and

electronic circuit board 19.” ’828 patent, col. 3, ll. 43-45 (emphasis added). Figure 4,

although not depicting electrical connections, indicates that the actuating switch is

physically located between the phone line and the circuit board.

Accordingly, we affirm the district court’s construction of the term “said dial tone

actuating switch electronically connected to said phone line and said electronic circuit”

in claim 1 of the ’828 patent to mean “said dial tone actuating switch electronically

2007-1241, -1279 18
connected to both the said phone line and said electronic circuit board, such that

electricity can pass among these elements.”

IV

Before the district court, TIP conceded that, under the district court’s claim

construction, neither of the accused devices literally infringe the claims of the ’169

patent. Indep. Techs.’ Summ. J. Order, slip op. at 10; Evercom’s Summ. J. Order, slip

op. at 10.

On appeal, TIP contends, however, that both phones infringe the “handset”

limitation of claim 1 of the ’169 patent under the doctrine of equivalents. According to

TIP, the earpiece, mouthpiece, electrical wires and phone housing elements of the

accused devices perform substantially the same function in substantially the same way

to obtain the same result as the claimed handset. TIP asserts that the purpose of the

accused devices, like the claimed handset, is to allow persons to communicate privately

in a safer manner and with reduced maintenance costs. Further, TIP asserts that the

key features of the accused devices are identical to the claimed handset—the earpiece

and mouthpiece are vertically mounted to the phone housing at a fixed distance apart

such that they are the only accessible parts. In fact, TIP contends the only function of

the handle in the claimed invention is to space the earpiece and mouthpiece elements

at a fixed distance apart. TIP proffers that this function is performed in the accused

devices by the phone housing. The equivalency between the claimed invention and the

accused devices is supported, according to TIP, by the examiner’s obviousness-type

double patenting rejection in the ’828 patent application based on the ’169 patent.

2007-1241, -1279 19
 Infringement under the doctrine of equivalents may be found when the accused

device contains an “insubstantial” change from the claimed invention. Graver Tank &

Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 610 (1950). Whether equivalency exists

may be determined based on the “insubstantial differences” test or based on the “triple

identity” test, namely, whether the element of the accused device “performs

substantially the same function in substantially the same way to obtain the same result.”

Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 38-40 (1997) (quoting

Union Paper-Bag Mach. Co. v. Murphy, 97 U.S. 120, 125 (1877). The essential inquiry

is whether “the accused product or process contain elements identical or equivalent to

each claimed element of the patented invention[.]” Warner-Jenkinson, 520 U.S. at 40.

In other words, the “all elements” rule is applicable to infringement under the doctrine of

equivalents just as it is to literal infringement. PSN Ill., 2008 WL 1946550, at *6; DePuy

Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1016-17 (Fed. Cir. 2006);

Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1358 (Fed. Cir. 2005).

The district court found that the accused devices do not infringe the “handset”

limitation under the doctrine of equivalents because no structural equivalent to a

handset is found in either of the accused devices. We agree. As discussed above, the

claim limitation “handset” is properly construed to mean “a handle with an earpiece at

one end and a mouthpiece at the opposite end.” While the accused devices each

contain an earpiece and a mouthpiece, there is no structure in the accused devices that

serves as an equivalent to a handle. Further, the examiner’s obviousness-type double

patenting rejection in the ’828 patent application based on the ’169 patent does not, in

2007-1241, -1279 20
the circumstances of this case, require a finding of equivalence between the accused

devices and the invention claimed in the ’169 patent.

We find no merit to TIP’s argument that the phone housing substitutes for the

handle, nor do we find merit to its argument that the district court ignored this court’s

holding in Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d 394 (Fed. Cir. 1994). The

housing is a separately claimed element in claim 1 of the ’169 patent. While we said in

Dolly that there need not be a one-to-one correspondence between elements of the

accused device and the claimed invention, that does not condone ignoring a claimed

limitation in assessing infringement under the doctrine of equivalents. Such a holding

would be contrary to the “all elements” rule. Indeed, we stated that “[t]he doctrine of

equivalents is not a license to ignore claim limitations.” Dolly, 16 F.3d at 398; see also

Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1424 (Fed. Cir. 1997) (“[T]he

doctrine of equivalents does not grant [a patentee] license to remove entirely [any of

the] limitations from the claim.”). Here, we cannot find that the housing in the accused

device functions as an equivalent of the “handle” in the patented invention without

rendering the “housing” limitation meaningless. See PSN Ill., 2008 WL 1946550, at *6;

Freedman Seating, 420 F.3d at 1362; Tronzo v. Biomet, Inc., 156 F.3d 1154, 1160

(Fed. Cir. 1998). Furthermore, we note that TIP fails to provide any evidence that the

housing functions in substantially the same way as the handle.

TIP further avers that the district court misinterpreted Toro Co. v. White

Consolidated Industries, Inc., 266 F.3d 1367 (Fed. Cir. 2001), in distinguishing it from

this case. In Toro, we reversed a grant of summary judgment of infringement after

finding that that there was a genuine issue of material fact as to whether the two-piece

2007-1241, -1279 21
ring and cover in the accused vacuum blower was insubstantially different from the

unitary ring and cover in the claimed invention. Id. at 1370. In so holding, we found that

the district court, in applying the function-way-result test, had improperly imported a

function from the specification into the claim limitation. Id. at 1371. On remand, we

instructed the court to instead determine whether the accused device performed the

same overall function as that recited in the patent claims. Id. at 1372. The holding in

Toro, however, is inapplicable to the facts of this case because, here, the dispute is not

about what function is performed by the claim limitation, but rather about whether the

accused device contains a functional equivalent to the claim limitation. Thus, the district

court did not err in finding that Toro was not relevant to this case. We agree with the

district court that neither of the accused devices infringe the “handset” limitation of the

’169 patent under the doctrine of equivalents. 1

Accordingly, we find no error by the district court in granting summary judgment

that neither the SPSS phone nor the CFSS phone infringes, literally or under the

doctrine of equivalents, the claims of the ’169 patent.

V

Before the district court, TIP conceded that, based on the court’s claim

construction, the SPSS phone does not literally infringe the claims of the ’828 patent.

Indep. Techs.’ Summ. J. Order, slip op. at 10; Evercom’s Summ. J. Order, slip op. at 10.

Indeed, the SPSS phone does not meet the limitation “said mouthpiece and said

1
Because we hold that neither accused device infringes the “handset”
limitation of claim 1 of the ’169 patent, we need not reach whether either accused
device infringes the limitation “the earpiece positioned at top and the mouthpiece
positioned at bottom will permanently extend out through the front wall of the housing”
of claim 1 of the ’169 patent under the doctrine of equivalents.

2007-1241, -1279 22
earpiece extending outward from said housing through said aural apertures” or the

limitation “said earpiece and said mouthpiece presenting an external relief surface for

positioning said ear and a mouth of said user” in claim 1 of the ’828 patent because the

earpiece and the mouthpiece of the SPSS phone do not project outward from the

housing to form a raised surface. Before the district court, TIP also conceded that the

SPSS phone does not infringe the ’828 patent under the doctrine of equivalents. Indep.

Techs.’ Summ. J. Order, slip op. at 21; Evercom’s Summ. J. Order, slip op. at 21.

TIP did not concede before the district court, however, that the CFSS phone

does not literally infringe the ’828 patent under the court’s claim construction. Indep.

Techs.’ Summ. J. Order, slip op. at 10; Evercom’s Summ. J. Order, slip op. at 10.

Nevertheless, the district court held that the CFSS phone does not meet the limitation

“said dial tone actuating switch electronically connected to said phone line and said

electronic circuit” in claim 1 of the ’828 patent because the actuating switch in the CFSS

phone is not connected both to the circuit board and to the phone line. 2 Indep. Techs.’

Summ. J. Order, slip op. at 11; Evercom’s Summ. J. Order, slip op. at 12. The district

court also held that the CFSS phone does not infringe that claim limitation under the

doctrine of equivalents. Indep. Techs.’ Summ. J. Order, slip op. at 21; Evercom’s

Summ. J. Order, slip op. at 21.

2
In so holding, the district court recognized that the CFSS phone does
meet the limitation “said mouthpiece and said earpiece extending outward from said
housing through said aural apertures” and the limitation “said earpiece and said
mouthpiece presenting an external relief surface for positioning said ear and a mouth of
said user” in claim 1 of the ’828 patent because the earpiece and the mouthpiece of the
CFSS phone do project outward from the housing.

2007-1241, -1279 23
 TIP does not appeal the district court’s holding of no literal infringement by the

CFSS phone, but rather appeals only the district court’s holding that the CFSS phone

does not infringe under the doctrine of equivalents. 3 Specifically, TIP contends that

because the CFSS phone functions as a telephone, the phone line, circuit board and

actuating switch must be electrically connected. Although there is one connection in the

CFSS phone, as opposed to two connections in the claims of the ’828 patent, TIP avers

that such a difference is insubstantial because in either case electricity passes among

the elements. Furthermore, according to TIP, the electrical elements in the CFSS phone

perform substantially the same function in substantially the same way to obtain the

same result as the claimed invention.

The district court correctly found that the CFSS phone does not infringe the

limitation “said dial tone actuating switch electronically connected to said phone line and

said electronic circuit” in claim 1 of the ’828 patent under the doctrine of equivalents. As

construed by the district court, the claim term means “said dial tone actuating switch

electronically connected to both the said phone line and said electronic circuit board,

such that electricity can pass among these elements.” Thus, the claim element requires

that “said dial tone actuating switch [is] electrically connected to said phone line.” The

actuating switch in the CFSS phone is, however, not connected to said phone line. As

the district court noted, TIP failed to point to an equivalent in the accused device that

3
Although TIP appears to argue that both phones infringe the limitation
“said dial tone actuating switch electronically connected to said phone line and said
electronic circuit” of claim 1 of the ’828 patent under the doctrine of equivalents, its
argument with respect to the SPSS phone is presumably premised on our reversing the
district court’s construction of other claim terms in the ’828 patent. Because we have
affirmed the district court’s construction of all claim terms, we deem TIP’s arguments
with respect to the SPSS phone to be moot.

2007-1241, -1279 24
satisfies that claim limitation. Under the “all elements” rule, to find infringement, the

accused device must contain “each limitation of the claim, either literally or by an

equivalent.” Freedman Seating, 420 F.3d at 1358 (citing Warner-Jenkinson, 520 U.S. at

29); see also PSN Ill., 2008 WL 1946550, at *6; Pennwalt Corp. v. Durand-Wayland,

Inc., 833 F.2d 931, 935 (Fed. Cir. 1987) (en banc). Although TIP argues that no claim

element is vitiated by application of the doctrine of equivalents, since the phone line,

actuating switch, and circuit board are all present in the CFSS phone, we disagree. The

claim specifically requires an electrical connection between the actuating switch and the

phone line. There is no such connection, or an equivalent, present in the CFSS phone.

Furthermore, TIP fails to show that the circuitry in the accused device functions in

substantially the same way to achieve substantially the same result.

TIP contends that in Gaus v. Conair Corp., 363 F.3d 1284 (Fed. Cir. 2004), this

court noted that an electrical operating system in an accused device could infringe a

claim element directed to a pair of probe networks under the doctrine of equivalents.

TIP’s reliance on Gaus is apparently to support its contention that the single electrical

connection in the CPSS phone is equivalent to the two electrical connections claimed in

the ’828 patent. In Gaus, however, we reversed the district court’s grant of summary

judgment of infringement under the doctrine of equivalents because we found that the

patent specification clearly excluded the accused device from the scope of the claimed

invention. 363 F.3d at 1290-92. Thus, Gaus does not assist TIP in showing

infringement under the doctrine of equivalents here.

As the district court held, an electrical arrangement wherein the actuating switch

is connected to both the circuit board and to the phone line is not equivalent to an

2007-1241, -1279 25
arrangement wherein the actuating switch is connected only to the phone line because

to find such would read the phrase “connected to said phone line” out of the claim. See

PSN Ill., 2008 WL 1946550, at *6; Freedman Seating, 420 F.3d at 1362; Tronzo, 156

F.3d at 1160. “[A]s between the patentee who had a clear opportunity to negotiate

broader claims but did not do so, and the public at large, it is the patentee who must

bear the cost of its failure to seek protection for this foreseeable alteration of its claimed

structure.” Freedman Seating, 420 F.3d at 1361 (quoting Sage Products, 126 F.3d at

1425). Therefore, we find no error in the district court’s holding that the CFSS phone

does not infringe the limitation “said dial tone actuating switch electronically connected

to said phone line and said electronic circuit” in claim 1 of the ’828 patent under the

doctrine of equivalents.

Accordingly, the district court did not err in granting summary judgment of no

literal infringement and no infringement under the doctrine of equivalents of the ’828

patent by either the SPSS phone or the CFSS phone. 4

VI

For the foregoing reasons, we affirm the district court’s grant of summary

judgment of non-infringement with respect to both the ’169 patent and the ’828 patent.

AFFIRMED

4
Because we affirm the district court’s claim construction and holdings of
non-infringement, we need not consider Evercom’s cross-appeal of the district court’s
denial of its motion for summary judgment on certain invalidity affirmative defenses and
denial of its motion for leave to amend its answer to add an inequitable conduct
affirmative defense. We note, however, that there is significant doubt as to whether
these issues were properly raised on cross-appeal. See Symantec Corp. v. Computer
Assocs. Int’l, Inc., 522 F.3d 1279, 1293-94 (Fed. Cir. 2008).

2007-1241, -1279 26