Tip Systems, LLC v. Phillips & Brooks/Gladwin

• Citation: 529 F.3d 1364
• Decision Date: 18 June 2008
• Docket Number: No. 2007-1279.,No. 2007-1241.,2007-1241.,2007-1279.
• Parties: 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.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

529 F.3d 1364

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.

No. 2007-1241.

No. 2007-1279.

United States Court of Appeals, Federal Circuit.

June 18, 2008.

Gary M. Samms, Obermayer Rebmann Maxwell & Hippel LLP, of Philadelphia, PA, 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, TX, argued for defendant-appellee. Of counsel were Christopher R. Benson, of Austin, TX, and William J. Boyce, of Houston, TX.

Aubrey "Nick" Pittman, The Pittman Law Firm, P.C., of Dallas, TX, 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, TX.

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 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:

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. 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. 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...