X2Y Attenuators, LLC v. Int'l Trade Comm'n

• Decision Date: 24 September 2014
• Docket Number: No. 2013–1340.,2013–1340.
• Citation: 757 F.3d 1358
• Parties: X2Y ATTENUATORS, LLC, Appellant, v. INTERNATIONAL TRADE COMMISSION, Appellee, and Intel Corporation, Intel Americas, Inc., Componentes Intel De Costa Rica S.A., Intel Technology SDN. BHD, Intel Products (Chengdu) Ltd., Apple Inc., and Hewlett–Packard Company, Intervenors.
• Court: U.S. Court of Appeals — Federal Circuit

757 F.3d 1358

X2Y ATTENUATORS, LLC, Appellant,

v. INTERNATIONAL TRADE COMMISSION, Appellee,andIntel Corporation, Intel Americas, Inc., Componentes Intel De Costa Rica S.A., Intel Technology SDN. BHD, Intel Products (Chengdu) Ltd., Apple Inc., and Hewlett–Packard Company, Intervenors.

No. 2013–1340.

United States Court of Appeals,Federal Circuit.

July 7, 2014.

Rehearing and Rehearing En Banc Denied Sept. 24, 2014.

John D. Haynes, Alston & Bird LLP, of Atlanta, Georgia, argued for appellant. With him on the brief was Patrick J. Flinn.

Sidney A. Rosenzweig, Attorney, Office of General Counsel, United States International Trade Commission, of Washington, DC, argued for appellee. With him on the brief were Dominic L. Bianchi, General Counsel, and Wayne W. Herrington, Assistant General Counsel.

William F. Lee, Wilmer Cutler Pickering Hale and Dorr LLP, of Boston, Massachusetts, argued for intervenors. With him on the brief were Michael J. Summersgill, Joseph J. Mueller, Mark C. Fleming and Lauren B. Fletcher; James L. Quarles, III, and Nina S. Tallon, of Washington, DC; and Mark D. Selwyn, of Palo Alto, California. Of counsel on the brief for intervenor Apple Inc. were Marcia H. Sundeen, Kenyon & Kenyon LLP, of Washington, DC, and Megan Whyman Olesek, of Palo Alto, California.

Before MOORE, REYNA, and WALLACH, Circuit Judges.

Concurring opinion filed by Circuit Judge REYNA.

MOORE, Circuit Judge.

X2Y Attenuators, LLC (X2Y) appeals from the final determination of the International Trade Commission (ITC) that Intel Corporation and other intervenors (Intel) did not violate 19 U.S.C. § 1337 because Intel's products were not covered by X2Y's asserted patents. Because the ITC correctly construed the relevant claim terms, we affirm.

Background

The asserted patents, U.S. Patent Nos. 7,609,500 ('500 patent), 7,916,444 ('444 patent), and 8,023,241 ('241 patent) are familially related. The technology disclosed in the asserted patents relates to structures for reducing electromagnetic interference in electrical circuits. The patented inventions use shielding electrodes to reduce the undesirable buildup of charge, known as “parasitic capacitance,” between electrodes used for conduction. '444 patent Abstract, col. 2 ll. 36–40, col. 4 ll. 60–65, col. 9 ll. 5–40. In particular, the patents disclose alternating arrangements of shielded and shielding electrodes. '500 patent Figs. 1A, 1B; see Intervenor's Br. 19 (annotated by Intel and reproduced below); Appellant's Br. 5 (annotated by X2Y and reproduced below).

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Although it is not asserted, the parties treat claim 26 of the ' 444 patent as illustrative:

An arrangement for energy conditioning, comprising: ...

a first electrode including a first shielding electrode portion, a third electrode including a third shielding electrode portion, and a fifth electrode including a fifth shielding electrode portion, wherein said first electrode, said third electrode and said fifth electrode are conductively coupled to one another;

a second electrode including a second shielded electrode portion; a fourth electrode including a fourth shielded electrode portion; wherein said second electrode and said fourth electrode are conductively isolated from each other; ...

wherein said second shielded electrode portion and said fourth shielded electrode portion are in a first superposed alignment with each other; ... and wherein said second shielded electrode portion is physically shielded from said fourth shielded electrode portion by said third shielding electrode portion.

'444 patent claim 26 (emphases added). At the ITC, the parties treated the '444 patent claim term “third electrode,” '241 patent claim term “center electrode” ( see, e.g., '241 patent claim 14), '500 patent claim term “first ground plane,” ( see, e.g., '500 patent claim 1), and several other claim terms collectively as “electrode terms” or “center ground plane terms.” See J.A. 131–32 (“[E]ach of the asserted claims contains a term from a group that X2Y characterizes as the ‘electrode’ terms, and respondents characterize as ‘central ground plane’ terms.”).

X2Y filed a complaint in the ITC accusing Intel of unlawful importation of certain microprocessor products. The parties disputed whether the electrode terms were limited to the so-called “sandwich” configuration—an arrangement of three electrodes in which a center conductor is flanked by paired differential, or oppositely charged, conductors. See '500 patent col. 10 ll. 20–22 (describing “electrostatic suppression or minimization of parasitics originating from the sandwiched differential conductors”); '444 patent col. 11 ll. 64–65 (describing “sandwiching pairs of electrically opposing complementary pathways”); see also '500 patent col. 14 ll. 4–11 (“The various attachment schemes describedherein will normally allow a ‘0’ voltage reference to develop with respect to each pair or plurality of paired differential conductors located on opposite sides of the shared central and common conductive pathway, and be equal yet opposite for each unit of a separated paired energy pathway or structure, between the centrally positioned interposing, common conductive shield pathway used.”). While Intel argued that the claims should be limited to the sandwich configuration, X2Y contended that the electrode terms require no construction and should be given their plain and ordinary meanings. See J.A. 139–44.

The ITC resolved the dispute in favor of Intel. It adopted the Administrative Law Judge's construction of the electrode terms as requiring “a common conductive pathway electrode positioned between paired electromagnetically opposite conductors.” J.A. 36; see J.A. 131–34. This construction was based on specification disavowal—for example, the statement in the '500 patent that the sandwich configuration is “an essential element among all embodiments or connotations of the invention,” '500 patent col. 19 ll. 22–23, and a statement incorporated by reference into the '444 patent that this configuration is a “feature[ ] universal to all the embodiments,” U.S. Patent No. 5,909,350 ('350 patent) col. 20 l. 16.¹ Because X2Y conceded noninfringement on the basis of this construction, the ITC found no violation. X2Y appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(6).

Discussion

We review de novo the ITC's legal determinations, including those relating to claim interpretation. Gemstar–TV Guide Int'l, Inc. v. Int'l Trade Comm'n, 383 F.3d 1352, 1360 (Fed.Cir.2004) (citation omitted).

X2Y argues that the ITC erred in its construction of the electrode terms. X2Y contends that the ITC improperly read several functional and structural limitations into the meaning of the term “electrode.” It contends that the plain meaning of “electrode” denotes a single conductor rather than three conductors, let alone a three-conductor sandwich structure having paired electromagnetically opposite conductors flanking the central conductor. X2Y argues that claim 26 of the '444 patent recites the physical role of each of the electrodes “separate and apart from any electrical characteristics ... created when the arrangement is connected in a circuit.” Appellant's Br. 27–28.

X2Y also argues that the specifications of the asserted patents contradict the constructions. X2Y contends that, for example, the '444 patent discloses that the electrodes on either side of a center conductor may be “electrically null, electrically complementary, ... or electrically opposite,” which, it argues, suggests that the claims should not be limited to “electrically opposite” conductors. '444 patent col. 5 ll. 7–11. X2Y further contends that the ITC improperly relied on the alleged disclaimers in some of the priority patents because the asserted patents are only related to those patents as continuations-in-part.

Finally, X2Y argues that the statements relied upon by the ITC do not constitute disavowal of claim scope. X2Y argues that the '500 patent's reference to the “common conductive pathway electrode” as the “essential element among all embodiments” does not limit the claims because it says nothing about the electromagnetic state of the conductors surrounding it when the circuit is energized. It contends that a priority patent's description of the sandwich configuration as “universal to all the embodiments” is also not a disclaimer because the passage that the ITC relied upon otherwise uses permissive rather than mandatory language. '350 patent col. 20 ll. 14–17, 36–41.

We conclude that the ITC correctly construed the electrode terms. The patents' statements that the presence of a common conductive pathway electrode positioned between paired electromagnetically opposite conductors is “universal to all the embodiments” and is “an essential element among all embodiments or connotations of the invention” constitute clear and unmistakable disavowal of claim scope. See GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1308–09 (Fed.Cir.2014). The standard for finding disavowal, while exacting, was met in this case. Id. at 1308.

Specifically, we have held that labeling an embodiment or an element as “essential” may rise to the level of disavowal. Id. at 1309. Here, not only does the specification state that the “center common conductive pathway electrode” flanked by two differential conductors is “essential,” but it also spells out that it was an “essential element among all embodiments or connotations of the invention.” '500 patent col. 19 ll. 22–23 (emphasis added); see id. Fig. 2; id. col. 18 l. 13, ll. 60–61; id. col. 19 ll. 24–25.

The '350 patent's statement that the sandwich configuration is a “feature [ ] universal to all the embodiments” reinforces this conclusion. '350 patent col. 20 l. 16. Like the “essential element” label, this phrase demonstrates a clear intention to limit the claim scope “using words or expressions of manifest exclusion or restriction.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313,...