Acco Brands, Inc. v. Micro Sec. Devices, Inc.

• Decision Date: 07 October 2003
• Docket Number: No. 02-1567.,02-1567.
• Citation: 346 F.3d 1075
• Parties: ACCO BRANDS, INC. (doing business as Kensington Technology Group), Plaintiff-Appellant, v. MICRO SECURITY DEVICES, INC. (doing business as PC Guardian), Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1075

346 F.3d 1075

ACCO BRANDS, INC. (doing business as Kensington Technology Group), Plaintiff-Appellant, v. MICRO SECURITY DEVICES, INC. (doing business as PC Guardian), Defendant-Appellee.

No. 02-1567.

United States Court of Appeals, Federal Circuit.

DECIDED: October 7, 2003.

K.T. Cherian, Townsend and Townsend and Crew LLP, of San Francisco, California, argued for plaintiff-appellant. With him on the brief were Brian A.E. Smith, Robert A. McFarlane and Sean Paul Hodge.

John M. McCormack, Kolisch Hartwell, P.C., of Portland, Oregon, argued for defendant-appellee. With him on the brief was Owen W. Dukelow.

Before NEWMAN, RADER, and DYK, Circuit Judges.

PAULINE NEWMAN, Circuit Judge.

ACCO Brands, Inc., doing business as Kensington Technology Group, sued Micro Security Devices, Inc., doing business as PC Guardian, in the United States District Court for the Northern District of California, charging PC Guardian with infringement of United States Patent No. B1 5,502,989 (the '989 patent). The court granted summary judgment of noninfringement in favor of PC Guardian.¹ The judgment is affirmed.

DISCUSSION

The '989 patent is directed to a locking mechanism for portable electronic devices such as computers. Claim 10 is the only claim in suit:

10. A locking system, comprising:

a portable electronic device including an exterior wall defining a security slot;

cable means for attaching to a first object other than to the portable electronic device;

a housing, proximate to said electronic device and including a slot engagement member having a slot engaging portion provided with a locking member having a peripheral profile complementary to preselected dimensions of said security slot to thereby permit said locking member to extend into said slot, said slot engagement member being rotatable between an unlocked position wherein said locking member is removable from the slot, and a locked position wherein said locking member is retained within the slot;

a pin, coupled through said housing, for extending into said security slot proximate said slot engaging portion when said slot engagement member is in said locked position to thereby inhibit rotation of said slot engagement member to said unlocked position; and

means, coupled to said housing, for attaching said cable to said housing.

(Emphasis added.)

The accused PC Guardian devices are the Notebook Guardian 2000 and Notebook Guardian 2001. The district court construed the "pin" clause to require that the pin actively extends into the security slot when the slot engagement member is in the locked position, and that the pin thereby inhibits rotation to the unlocked position:

[The pin is] a post or peg, coupled through said housing, for extending into said security slot proximate said slot engaging portion at or during the time that said slot engagement member is in said locked position to thereby inhibit rotation of said slot engagement member to said unlocked position. ("Extending" being an active verb.)

ACCO, at *6. Kensington challenges this claim construction and its application to avoid infringement by the PC Guardian devices.

I

An infringement analysis requires that the court determine the scope and meaning of the claims asserted, and compare the construed claims to the allegedly infringing device. Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1454, 46 USPQ2d 1169, 1172 (Fed.Cir. 1998) (en banc). We give plenary review to the district court's claim construction, id. at 1455, 138 F.3d 1448, 46 USPQ2d at 1173, and to the summary judgment of non-infringement. Conroy v. Reebok International, Ltd., 14 F.3d 1570, 1575, 29 USPQ2d 1373, 1377 (Fed.Cir.1994).

A

The parties dispute whether the clause "for extending into said security slot proximate said slot engaging portion when said slot engagement member is in said locked position" describes a functional attribute of the pin or a purely structural one. At the district court the parties agreed that in this context "when" means "at or during the time that," and on appeal they frame the question as whether "extending" is an "active verb" or a "state of being." The district court ruled that "extending" is used as an active verb, and that the pin must extend at or during the time that the slot engagement member is in the locked position. Kensington states that the court's construction is inconsistent with the plain meaning of the claim language, that the court improperly excluded the embodiments of patent figures 11 and 13 from the scope of the claims, and that this construction violates the doctrine of claim differentiation because during reexamination "when" was amended to "after" in other claims, which are presumptively of different scope, but was not amended in claim 10.

The specification shows that in operation of the patented device the slot engagement member is first placed in the security slot and then rotated to reach the locked position. The pin extends into the slot and prevents rotation to the unlocked position. The specification describes some embodiments in which the pin is extended into the slot before the slot engagement member is rotated, and others wherein the pin is extended after the locked position is reached by rotation. The '989 patent, a divisional in a family of patents claiming priority to U.S. Application Ser. No. 07/824,964, is directed to the invention exemplified in Figure 14, depicting an embodiment in which the pin is extended after the slot engagement member is in locked position. Figure 14 is shown on the front page of the '989 patent. See 37 C.F.R. § 1.84(j) ("One of the [drawings] should be suitable for inclusion on the front page of the patent application publication and patent as the illustration of the invention.") The claim states that the pin is "for extending" when the slot engagement member is in locked position (that is, after it is in the slot and rotated). Viewed in light of the specification, the phrase "for extending" is a functional restriction on the pin. See, e.g., K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363, 52 USPQ2d 1001, 1004 (Fed. Cir.1999) ("The functional language is, of course, an additional limitation in the claim.") Kensington's argument that "for extending" describes a "state of being" that encompasses a pin that extends into the slot before locking is negated by the explanation and argument during prosecution. We conclude, as did the district court, that the participle "extending" refers to an action occurring when the slot engagement member is rotated to and in the locked position.

During prosecution of the reexamination application, in response to a rejection of independent claims 1, 10, and 11 under 35 U.S.C. § 103, the applicant described the device of the Jacobi reference with: "A pin 25 is movable when the locking member is in the locked position to prevent the locking member from rotating," and also distinguished the reference on other grounds. In addressing a rejection of claims 1-3 under 35 U.S.C. § 102 and § 103 based on the Young reference, the applicant distinguished the pin, argued that "for extending" is a functional recitation that must be given patentable weight, and identified "when said slot engagement member is in said locked position" as a limitation not present in the references. The examiner accepted this argument, which the applicant consistently applied to the pin element of independent claims 1, 10 and 11, and withdrew rejections related to the Young reference, stating: "In Young, the slot engagement member 60 is put into its locking position when the pin enters the slot.... Because Young fails to teach a pin coupled through the hous[ing] which extends into the security slot after the slot engagement member is in the locked position the 102 rejection was improper." Statements made during prosecution which clearly disclaim a particular claim interpretation will limit the scope of the claims. Ballard Medical Products v. Allegiance Healthcare Corp., 268 F.3d 1352, 1359, 60 USPQ2d 1493, 1498 (Fed. Cir.2001). See Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576, 34 USPQ2d 1673, 1676 (Fed.Cir. 1995) ("The prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution.")

The Young reference was cited against claims 1-3. Kensington then amended independent claim 1, changing "for extending... when" to "and extending ... after." Kensington also made changes to other aspects of claims 1 and 10 responsive to other rejections. The examiner then issued a Notice of Intent to Issue Reexamination Certificate, with a statement of Reasons for Allowance which reiterated his understanding that the pin is extended after the slot engagement member is in locked position:

The following is an examiner's statement of reasons for allowance: the instant invention is allowable over the prior art of record in that the prior art fails to teach or make obvious a computer locking system combining a computer having an aperture with a locking assembly as particularly claimed. In particular the prior art fails to teach or make obvious a computer locking assembly having a locking member which is rotatable to a locked position after being placed through an opening in a computer having a configuration matching that of the locking member and subsequently a pin being placed into the opening after the locking member is rotated to the locked position to hold the lock device within the computer such that the computer can be locked to another object using a cable to prevent theft of the computer.

Kensington did not respond to this statement. Although there is no obligation to respond to an examiner's statement of Reasons for Allowance, and the statement of an examiner will not necessarily limit a claim, Bell Atlantic Network Services, Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1273, 59 USPQ2d 1865, 1874 (Fed.Cir.2001), in this case the...