Profectus Tech. LLC v. Huawei Techs. Co.

• Decision Date: 26 May 2016
• Docket Number: 2015-1016,2015-1019,2015-1018
• Citation: 823 F.3d 1375,119 U.S.P.Q.2d 1188
• Parties: Profectus Technology LLC, Plaintiff–Appellant v. Huawei Technologies Co., Ltd., Huawei Technologies USA, Inc., Huawei Device USA, Inc., Futurewei Technologies, Inc., Defendants Dell Inc., Apple Inc., Samsung Telecommunications America, LLC, Samsung Electronics America, Inc., Motorola Mobility LLC, Hewlett-Packard Company, Hewlett-Packard Development Company, L.P., Defendants–Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

823 F.3d 1375

119 U.S.P.Q.2d 1188

Profectus Technology LLC, Plaintiff–Appellant

v. Huawei Technologies Co., Ltd., Huawei Technologies USA, Inc., Huawei Device USA, Inc., Futurewei Technologies, Inc., DefendantsDell Inc., Apple Inc., Samsung Telecommunications America, LLC, Samsung Electronics America, Inc., Motorola Mobility LLC, Hewlett-Packard Company, Hewlett-Packard Development Company, L.P., Defendants–Appellees.

2015-1016

2015-1018

2015-1019

United States Court of Appeals, Federal Circuit.

Decided: May 26, 2016

Thomas C. Wright, Cunningham Swaim, LLP, Dallas, TX, argued for plaintiff-appellant. Also represented by Steven Edward Ross, Ross IP Group PLLC, Dallas, TX.

Lauren B. Fletcher, Wilmer Cutler Pickering Hale and Dorr LLP, Boston, MA, argued for defendant-appellee Apple Inc. Also represented by William F. Lee, Kevin M. Yurkerwich; Brittany Blueitt Amadi, Washington, DC.

Ahmed Jamal Davis, Fish & Richardson, P.C., Washington, DC, argued for defendants-appellees Samsung Telecommunications America, LLC, Samsung Electronics America, Inc. Also represented by Michael J. McKeon; John Stephen Goetz, New York, NY.

Roger Fulghum, Baker Botts, LLP, Houston, TX, for defendant-appellee Dell Inc. Also represented by Michael Hawes, Tammy Pennington Rhodes.

Jonathan E. Retsky, Winston & Strawn LLP, Chicago, IL, for defendant-appellee Motorola Mobility LLC. Also represented by Kurt A. Mathas, Ivan Michael Poullaos; Andrew Ryan Sommer, Washington, DC.

Nickolas Bohl, Feinberg Day Alberti & Thompson LLP, Menlo Park, CA, for defendants-appellees Hewlett-Packard Company, Hewlett-Packard Development Company, L.P. Also represented by Margaret Elizabeth Day.

Before Moore, Reyna, and Wallach, Circuit Judges.

Dissenting opinion filed by Circuit Judge Moore

.

Reyna

, Circuit Judge.

Profectus Technology LLC (“Profectus”) appeals a district court's claim construction order and grant of summary judgment of non-infringement. The patent-in-suit is directed to a mountable digital picture frame for displaying digital images. Profectus asserted certain of the patent claims against manufacturers and sellers of tablet computer devices. After construing the term “mountable,” the district court granted summary judgment of non-infringement on grounds that the accused devices do not satisfy the “mountable” limitation. On appeal, Profectus argues that the district court erred in its claim construction of “mountable” and improperly resolved disputes of material fact at summary judgment. We discern no error in the district court's claim construction or grant of summary judgment. We affirm the judgment of the district court.

Background

Profectus owns U.S. Patent No. 6,975,308 (the “ '308 patent”)

. The '308 patent discloses a mountable digital picture frame for displaying still digital images. The specification discusses how a user can display digital images on a wall or desktop similar to conventional photographs. '308 Patent cols. 1–2 ll. 52–36. For example, Figure 1 shows a wall-mountable picture frame mounted to a wall, while Figure 4 shows a mountable frame resting on a flat surface.

The '308 patent

has 31 claims, including independent claims 1 and 29. The patent claims “[a] stand alone and mountable picture display for displaying still digital pictures.” See '308 Patent cols. 7–8 ll. 61–8 (claim 1), col. 10 ll. 7–22 (claim 29). Claims 1 and 29 recite the limitation that is relevant to this appeal: “a mountable picture frame adapted to digitally display at least one still image thereon.”

In September 2011, Profectus brought suit in the Eastern District of Texas against a large number of manufacturers and sellers of tablet computer devices, alleging infringement of independent claims 1 and 29 and dependent claims 2 and 4–9 of the '308 patent

.¹ Profectus accused devices with features that Profectus purported made the devices “mountable” picture frames.

During claim construction, the parties submitted proposals for the term “mountable.” Profectus proposed that “mountable” should be interpreted as “capable of being mounted,” while Defendants argued that the correct interpretation is “having a support for affixing on a wall or setting on a desk or table top.” On January 3, 2014, the district court issued a provisional claim construction order, construing the term to mean “having a feature designed for mounting.” J.A. 10. The parties submitted additional briefing on claim construction after entry of the provisional claim construction order.

On April 17, 2014, the district court issued a new claim construction order, construing “mountable” to mean “having a feature for mounting.” The district court observed that “mountable” appears in every independent claim, and noted that the parties did not dispute that a mounting feature is not a preferred embodiment. The district court concluded that “the picture frame or display must have some intrinsic mounting feature—not just a feature that could potentially render the frame or display capable of being mounted .” Profectus Tech. LLC v. Huawei Techs. Co., No. 6:11-cv-474 (Lead Case), 2014 U.S. Dist. LEXIS 53157, at *13–15 (E.D. Tex. Apr. 16, 2014) (emphasis in original). The district court did not require that the mounting feature include all components needed to mount the frame or display, noting that even the “wall-mountable preferred embodiment” required use of an additional component (e.g., nails) to mount the frame to a wall. Id. at *15.

Following the district court's claim construction order, Defendants moved for summary judgment of non-infringement on grounds that the accused devices do not satisfy the “mountable” limitation. On September 8, 2014, the district court granted the summary judgment motion. On September 15, 2014, the district court entered final judgment in favor of Defendants.

Profectus appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1) (2012)

.

Standard of Review

We review de novo the ultimate construction of a claim term. Teva Pharm. USA, Inc. v. Sandoz, Inc. , ––– U.S. ––––, 135 S.Ct. 831, 841, ––– L.Ed.2d –––– (2015)

. The construction of patent claim terms involves findings of fact and conclusions of law. District court factual findings based on the intrinsic record are considered legal issues that are reviewed de novo, while factual findings relying on extrinsic evidence are reviewed for clear error. Id. ; see also

Akzo Nobel Coatings, Inc. v. Dow Chem. Co. , 811 F.3d 1334, 1339 (Fed.Cir.2016). “A factual finding is clearly erroneous if, despite some supporting evidence, we are left with the definite and firm conviction that a mistake has been made.” Insite Vision, Inc. v. Sandoz, Inc. , 783 F.3d 853, 858 (Fed.Cir.2015) (citation omitted).

Among the facts that we review for clear error include “[u]nderstandings that lie outside the patent documents about the meaning of terms to one of skill in the art or the science or state of the knowledge of one of skill in the art.” Teva Pharm. USA, Inc. v. Sandoz, Inc. , 789 F.3d 1335, 1342 (Fed.Cir.2015)

. Legal error arises when a court relies on extrinsic evidence that contradicts the intrinsic record. See

Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp. , 790 F.3d 1329, 1338 (Fed.Cir.2015).

We review a grant of summary judgment in accordance with the law of the regional circuit, here the Fifth Circuit. Ineos USA LLC v. Berry Plastics Corp. , 783 F.3d 865, 868 (Fed.Cir.2015)

. The Fifth Circuit reviews de novo a district court's grant of summary judgment. Id. (citing Triple Tee Golf, Inc. v. Nike, Inc. , 485 F.3d 253, 261 (5th Cir.2007) ).

Claim Construction

Profectus argues that the district court erred in construing “mountable” to mean “having a feature for mounting.” Profectus asserts that the correct construction is “capable of being mounted.” We disagree.

Profectus contends that requiring a feature for mounting is an additional limitation unsupported in the record. Profectus points to claims 13 and 31, which recite a “wall mountable display” whereby mounting occurs through the frame, not the display itself. '308 Patent

col. 5 ll. 44–47. Profectus argues that one of ordinary skill in the art would understand that the claims contemplate a “picture frame” or “picture display” that is mountable through the use of other components or structures. Profectus cites display 12 of Figure 1 to illustrate characteristics, features, and components (e.g., light weight, low profile, certain frame dimensions, attachment apparatuses, and nails or screws) that render the display mountable. '308 Patent col. 4 ll. 26–28, col. 5 ll. 45–47, col. 6 ll. 21–23. Profectus references a dictionary definition of the common suffix “-able” as “capable of, fit or worthy of.” Merriam-Webster's Collegiate Dictionary 3 (10th ed. 1995). Profectus asserts that the district court erred in reading in certain preferred embodiments to exclude devices that can be mounted through the use of external components.

Profectus maintains that its proposed construction is not overbroad because the claim language limits what type of devices are mountable. Profectus argues that the claims are directed to “displaying digital pictures,” which means that Profectus's proposed construction of “capable of being mounted” cannot include any product capable of being mounted to a wall or tabletop. According to Profectus, the digital-picture limitation confines the invention only to mountable displays of still digital pictures. Profectus argues that its proposed construction comports with plain and ordinary meaning, citing Thorner v. Sony Comput. Entm't Am. LLC , 669 F.3d 1362 (Fed.Cir.2012)

to emphasize that terms like “mountable” should be given their plain and ordinary meaning.

Defendants argue that the district court's claim construction is supported by the intrinsic record. Each asserted claim recites “stand alone” together with “mountable,” indicating to a skilled artisan that those terms describe the claimed invention as a single unit for mounting because both terms modify “picture display” and ...