PAPST LICENSING DIGITAL CAMERA PATENT LITIGATION
`Cite as 778 F.3d 1255 (Fed. Cir. 2015)
`
`1255
`
`missing characteristic is ‘‘necessarily pres-
`ent’’ in the first reference. Id. Here, the
`Sony Vaio press release does not disclose
`that the Sony Vaio C1 Picturebook is ca-
`pable of ‘‘streaming video’’ or ‘‘continuous
`video transmission.’’ The press release
`only discloses that the Sony Vaio C1 Pic-
`turebook can send out ‘‘digital video clips
`and still pictures TTT attached to e-mail
`messages.’’ Sending out an e-mail mes-
`sage with a video file attached does not
`disclose streaming video or, as construed,
`continuous video transmission. In fact,
`the 8423 application distinguishes between
`streaming video and sending a video file:
`‘‘a user may want to wirelessly communi-
`cate streaming video or a video file.’’
`8423 application p. 21 ll. 22–23 (emphasis
`added).
` The Sony Vaio press release
`does not discuss streaming or continuous
`transmission of anything—it merely dis-
`closes sending a video file as an attach-
`ment to an e-mail.
`Nowhere in the record did the examiner
`or the Board explain how implementing
`Knowles’s disclosed
`image transmission
`method on a Sony Vaio C1 Picturebook
`discloses streaming video or continuous
`video transmission.
` Instead, both the
`Board and
`the examiner
`found
`that
`Knowles discloses continuous image trans-
`mission and that Knowles can be imple-
`mented on the Sony Vaio C1 Picturebook,
`which is capable of sending video files via
`email. J.A. 6, 9–10, 154–55. These two
`findings do not provide substantial evi-
`dence that Knowles discloses, expressly,
`inherently, or even implicitly, streaming
`video capabilities. For these reasons, we
`hold that the Board erred in concluding
`that Knowles discloses the claimed ‘‘com-
`munications module TTT operable to wire-
`lessly communicate streaming video to a
`destination.’’
`
`CONCLUSION
`Because the Board incorrectly construed
`‘‘wireless’’ and its rejection of claims 1–5 is
`
`not supported under the correct construc-
`tion, and because the Board’s conclusion
`that Knowles discloses a communications
`module operable to wirelessly communi-
`cate streaming video to a destination is not
`supported by substantial evidence, we re-
`verse the rejections of claims 1–5 and 34–
`47 and remand.
`REVERSED AND REMANDED.
`
`,
`
`In re PAPST LICENSING DIGITAL
`CAMERA PATENT
`LITIGATION.
`
`Papst Licensing GMBH & Co.
`KG, Plaintiff–Appellant,
`
`v.
`Fujifilm Corporation, Fujifilm North
`America
`Corporation
`(formerly
`known as Fujifilm USA, Inc.), Hew-
`lett–Packard Company, JVC Company
`of America, Nikon Corporation, Ni-
`kon, Inc., Olympus Corp., Olympus
`Imaging America Inc., Panasonic Cor-
`poration (formerly known as Matsu-
`shita Electric Industrial Co., LTD.),
`Panasonic Corporation of North
`America, Samsung Opto–Electronics
`America, Inc., Samsung Techwin Co.,
`and Victor Company of Japan, Ltd.,
`Defendants–Appellees.
`
`No. 2014–1110.
`
`United States Court of Appeals,
`Federal Circuit.
`
`Feb. 2, 2015.
`Background: Competitor commenced ac-
`tion against patentee, seeking declaratory
`judgment that it did not infringe patents
`
`Papst Licensing GmbH & Co., KG.
`Petitioner - Huawei, LG and ZTE
`Patent Owner - Papst Licensing GmbH & Co., KG.
`IPR2017-00415
`EXH. 2002
`
`1
`
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`

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`on interface device for transferring data
`between input-output data device and host
`computer. Patentee commenced other ac-
`tions against other competitors, alleging
`infringement. Actions were consolidated by
`multi-district litigation panel and trans-
`ferred. The United States District Court
`for the District of Columbia, Rosemary M.
`Collyer, J., 967 F.Supp.2d 48 and 987
`F.Supp.2d 58, granted summary judgment
`of non-infringement. Patentee appealed.
`Holdings: The Court of Appeals, Taranto,
`Circuit Judge, held that:
`(1) de novo review applied to district
`court’s patent claim constructions;
`(2) term, ‘‘interface device,’’ was not limit-
`ed to ‘‘stand-alone device’’;
`(3) phrase ‘‘second connecting device,’’ did
`not require physical plug, socket, or
`other structure that permitted user to
`readily attach and detach something
`else;
`(4) interface device did not have to be
`capable of receiving data that moved
`from data device after connecting to
`host;
`(5) phrases, ‘‘virtual files’’ and ‘‘simulating
`a virtual file system,’’ allowed virtual
`files to be derived from data already
`physically stored on interface device
`when host requested relevant virtual
`file; and
`(6) term, ‘‘input/output device customary
`in a host device’’ and term ‘‘storage
`device customary in a host device,’’
`only required device to be one that was
`normally part of commercially avail-
`able computer systems at time of in-
`vention.
`Vacated and remanded.
`
`1. Patents O1555
`inquiry,
`infringement
`The patent
`which asks if an accused device contains
`every claim limitation or its equivalent,
`
`depends on the proper construction of the
`claims.
`
`2. Patents O1970(13)
`De novo review applied to district
`court’s patent claim constructions, since
`intrinsic evidence fully determined proper
`constructions.
`
`3. Patents O1311
`Generally, a court gives words of a
`claim their ordinary meaning in the con-
`text of the claim and the whole patent
`document.
`
`4. Patents O1328, 1338(1)
`The patent specification particularly,
`but also the prosecution history, informs
`the determination of claim meaning in con-
`text, including by resolving ambiguities.
`
`5. Patents O1343
`Even if the meaning is plain on the
`face of the claim language, the patentee
`can, by acting with sufficient clarity, dis-
`claim such a plain meaning or prescribe a
`special definition.
`
`6. Patents O1316, 1328
`Patent claim construction that stays
`true to the claim language and most natu-
`rally aligns with the patent’s description of
`the invention will be, in the end, the cor-
`rect construction.
`
`7. Patents O1853
`District court may revisit, alter, or
`supplement its patent claim constructions
`to the extent necessary to ensure that final
`constructions serve their purpose of genu-
`inely clarifying the scope of claims for the
`finder of fact.
`
`8. Patents O1393
`Term ‘‘interface device,’’ in patents on
`interface device for transferring data be-
`tween input-output data device and host
`computer, was not limited to ‘‘stand-alone
`device,’’ i.e., device that was physically sep-
`
`2
`
`

`

`PAPST LICENSING DIGITAL CAMERA PATENT LITIGATION
`Cite as 778 F.3d 1255 (Fed. Cir. 2015)
`
`1257
`
`arate and apart from, and not permanently
`attached to, data device or host computer.
`9. Patents O1393
`Phrase ‘‘second connecting device,’’ in
`patents on interface device for transferring
`data between input-output data device and
`host computer, did not require physical
`plug, socket, or other structure that per-
`mitted user to readily attach and detach
`something else.
`10. Patents O1332
`Patent claims generally are not limit-
`ed to features found in what the written
`description presents as mere embodi-
`ments, where the claim language is plainly
`broader.
`11. Patents O1393
`for
`in patents
`‘‘Interface device’’
`transferring data between
`input-output
`data device and host computer did not
`have to be capable of receiving data that
`moved from data device after connecting
`to host.
`12. Patents O1853
`Patentee was not required to state its
`opposition to court’s patent claim construc-
`tion twice when seeking modification, and
`thus properly limited its request to mani-
`fest error resting on plain misapprehen-
`sion of the record, rather than rehashing
`broader arguments on claim construction
`that court had fully considered; patentee’s
`limited approach in seeking a modification
`was commendably consistent with general
`anti-repetition principle governing re-
`quests for reconsideration.
`13. Patents O1393
`Phrases, ‘‘virtual files’’ and ‘‘simulat-
`ing a virtual file system,’’ in patents for
`transferring data between
`input-output
`data device and host computer, allowed
`virtual files to be derived from data al-
`ready physically stored on interface device
`when host requested relevant virtual file;
`although written description’s discussion of
`
`real-time input files showed that virtual
`file might be constructed from data resid-
`ing on data device, nothing in written de-
`scription limited virtual files to that ar-
`rangement.
`
`14. Patents O1393
`Term ‘‘input/output device customary
`in a host device’’ and term ‘‘storage device
`customary in a host device,’’ in patents for
`transferring data between
`input-output
`data device and host computer, only re-
`quired device to be one that was normally
`part of commercially available computer
`systems at time of invention; ‘‘in’’ from
`‘‘customary in’’ did not imply physical loca-
`tion inside computer chassis.
`
`15. Patents O1324
`Generally, a court does not construe
`the claims of a patent to exclude a pre-
`ferred embodiment.
`
`Patents O2091
`6,470,399, 6,895,449. Cited.
`
`John T. Battaglia, Fisch Sigler LLP, of
`Washington, DC, argued for plaintiff-ap-
`pellant. With him on the brief were Alan
`M. Fisch and Roy William Sigler.
`Rachel M. Capoccia, Alston & Bird
`LLP, of Los Angeles, CA, argued for de-
`fendants-appellees. With her on the brief
`for Panasonic Corporation, et al., was
`Thomas W. Davison. On the brief for
`Fujifilm Corporation, et al., were Steven J.
`Routh, Sten A. Jensen, John R. Inge and
`T. Vann Pearce, Jr, Orrick, Herrington &
`Sutcliffe LLP, of Washington, DC. On the
`brief for Nikon Corporation, et al., were
`David L. Witcoff and Marc S. Blackman,
`Jones Day, of Chicago, IL. Of counsel was
`Marron Ann Mahoney. On the brief for
`Olympus Corporation, et al., were Richard
`De Bodo and Andrew V. Devkar, Bingham
`
`3
`
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`

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`
`McCutchen LLP, of Santa Monica, CA. Of
`counsel was Susan Baker Manning, Mor-
`gan, Lewis & Bockius LLP, of Washing-
`ton, DC. On the brief for Samsung Te-
`chwin, Co., et al., was Patrick J. Kelleher,
`Drinker Biddle & Reath LLP, of Chicago,
`IL.
`Charlene M. Morrow, Fenwick & West
`LLP, of Mountain View, CA, argued for
`defendant-appellee Hewlett–Packard Com-
`pany. With her on the brief were David
`D. Schumann and Bryan A. Kohm, of San
`Francisco, CA.
`
`Before TARANTO, SCHALL, and
`CHEN, Circuit Judges.
`
`TARANTO, Circuit Judge.
`Papst Licensing GmbH & Co. KG owns
`U.S. Patent Nos. 6,470,399 and 6,895,449.
`The written descriptions are largely the
`same, the 8449 patent having issued on a
`divisional application carved out of the ap-
`plication that became the 8399 patent.
`The focus of both patents is an interface
`device for transferring data between an
`input/output data device and a host com-
`puter. The current appeal involves wheth-
`er certain digital-camera manufacturers in-
`fringe Papst’s patents. The district court,
`applying and elaborating on its construc-
`tions of various claim terms, entered sum-
`mary judgment of non-infringement, con-
`cluding that none of the manufacturers’
`accused products at issue here come within
`any of the asserted claims. Papst appeals
`five claim constructions. We agree with
`Papst that the district court erred in the
`identified respects. We therefore vacate
`the summary judgment of non-infringe-
`ment.
`
`BACKGROUND
`The 8399 and 8449 patents, both entitled
`‘‘Flexible Interface for Communication Be-
`
`1. Because the 8399 and 8449 patents have
`very similar written descriptions, we cite the
`8399 patent, and refer to a ‘‘written descrip-
`
`tween a Host and an Analog I/O Device
`Connected to the Interface Regardless the
`Type of the I/O Device,’’ disclose a device
`designed to facilitate the transfer of data
`between a host computer and another de-
`vice on which data can be placed or from
`which data can be acquired. 8399 patent,
`Title and Abstract.1 The written descrip-
`tion states that, while interface devices
`were known at the time of the invention,
`the existing devices had limitations, includ-
`ing that they tended to require disadvanta-
`geous sacrifices of data-transfer speed or
`of flexibility as to what host computers and
`data devices they would work with. 8399
`patent, col. 1, line 15, to col. 2, line 13.
`Thus, ‘‘standard interfaces’’—those ‘‘which,
`with specific driver software, can be used
`with a variety of host systems’’—‘‘general-
`ly require very sophisticated drivers’’ to be
`downloaded onto the host computer, but
`such drivers ‘‘are prone to malfunction and
`TTT limit data transfer rates.’’ Id. at col.
`1, lines 22–28. On the other hand, with
`interface devices that ‘‘specifically match
`the interface very closely to individual host
`systems or computer systems,’’ ‘‘high data
`transfer rates are possible,’’ but such in-
`terface devices ‘‘generally cannot be used
`with other host systems or their use is
`very ineffective.’’ Id. at col. 1, line 67, to
`col. 2, line 7. The fast, host-tailored inter-
`face also ‘‘must be installed inside the com-
`puter casing to achieve maximum data
`transfer rates,’’ which is a problem for
`laptops and other space-constrained host
`systems. Id. at col. 2, lines 8–13.
`The patents describe an interface device
`intended to overcome those limitations. It
`is common ground between the parties
`that, when a host computer detects that a
`new device has been connected to it, a
`normal course of action is this: the host
`
`tion’’ in the singular, except when there are
`important differences between the two.
`
`4
`
`

`

`PAPST LICENSING DIGITAL CAMERA PATENT LITIGATION
`Cite as 778 F.3d 1255 (Fed. Cir. 2015)
`
`1259
`
`asks the new device what type of device it
`is; the connected device responds; the
`host determines whether it already pos-
`sesses drivers for (instructions for commu-
`nicating with) the identified type of device;
`and if it does not, the host must obtain
`device-specific drivers (from somewhere)
`before it can engage in the full intended
`communication with the new device. In
`the patents at issue, when the interface
`device of the invention is connected to a
`host, it responds to the host’s request for
`identification by stating that it is a type of
`device, such as a hard drive, for which the
`host system already has a working driver.
`By answering in that manner, the interface
`device induces the host to treat it—and,
`indirectly, data devices on the other side of
`the interface device, no matter what type
`of devices they are—like the device that is
`already familiar to the host. Thereafter,
`when the host communicates with the in-
`terface device to request data from or
`control the operation of the data device,
`the host uses its native device driver, and
`the interface device translates the commu-
`nications into a form understandable by
`the connected data device. See id. at col.
`3, line 25, to col. 5, line 32.
`The interface device of the invention
`thus does not require that a ‘‘specially
`designed driver’’ for the interface device
`be loaded into a host computer—neither a
`‘‘standard’’ one to be used for a variety of
`hosts nor one customized for a particular
`host. Id. at col. 5, line 15. Instead, it
`uses a host’s own familiar driver, which (as
`for a hard drive) often will have been
`designed (by the computer system’s manu-
`facturer) to work fast and reliably. The
`result, says the written description, is to
`allow data transfer at high speed without
`needing a new set of instructions for every
`host—‘‘to provide an interface device for
`communication between a host device and
`a data transmit/receive device whose use is
`host device-independent and which deliv-
`
`ers a high data transfer rate.’’ Id. col. 3,
`lines 25–28.
`Claim 1 of the 8399 patent sets forth the
`specifics of the claimed interface device:
`1. An interface device for communica-
`tion between a host device, which com-
`prises drivers for input/output devices
`customary in a host device and a multi-
`purpose interface, and a data trans-
`mit/receive device, the data trans-
`mit/receive device being arranged for
`providing analog data, comprising:
`a processor;
`a memory;
`a first connecting device for interfacing
`the host device with the interface device
`via the multipurpose interface of the
`host device; and
`a second connecting device for inter-
`facing the interface device with the data
`transmit/receive device, the second con-
`necting device including a sampling cir-
`cuit for sampling the analog data provid-
`ed by the data transmit/receive device
`and an analog-to-digital converter for
`converting data sampled by the sam-
`pling circuit into digital data,
`wherein the interface device is config-
`ured by the processor and the memory
`to include a first command interpreter
`and a second command interpreter,
`wherein the first command interpreter is
`configured in such a way that the com-
`mand interpreter, when receiving an in-
`quiry from the host device as to a type
`of a device attached to the multi-purpose
`interface of the host device, sends a
`signal, regardless of the type of the
`data transmit/receive device attached
`to the second connecting device of the
`interface device, to the host device which
`signals to the host device that it is an
`input/output device customary in a
`host device, whereupon the host device
`communicates with the interface device
`by means of the driver for the input/out-
`
`5
`
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`

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`
`put device customary in a host device,
`and
`wherein the second command interpret-
`er is configured to interpret a data re-
`quest command from the host device to
`the type of input/output device signaled
`by the first command interpreter as a
`data transfer command for initiating a
`transfer of the digital data to the host
`device.
`Id. col. 12, line 42, to col. 13, line 13
`(emphases added to highlight language of
`particular significance to the issues on ap-
`peal). Claim 1 of the 8449 patent is simi-
`lar, but it does not require the data device
`to be an analog device, and it requires the
`interface device to respond to the host that
`it is a storage device. 8449 patent, col. 11,
`line 46, to col. 12, line 6. A few other
`differences between the claims are dis-
`cussed infra.
`Beginning in 2006, Papst sent letters to
`major digital-camera manufacturers, ac-
`cusing them of infringing its patents and
`requesting that they enter into negotia-
`tions to license its inventions. One of the
`manufacturers sued Papst in the United
`States District Court for the District of
`Columbia, seeking a declaratory judgment
`of non-infringement. In 2008, Papst filed
`infringement suits against the camera
`manufacturers in multiple district courts
`across the country. A multi-district litiga-
`tion panel then consolidated all cases and
`transferred them to the D.C. district court.
`In preparation for claim construction,
`the district court received a ‘‘tutorial’’ from
`the parties’ experts, whom the court asked
`to be ‘‘neutral’’ and who addressed the
`background of the technology, how the
`claimed inventions work, and other techni-
`cal understandings, but not whether any
`particular term in the patent or the prior
`art has a particular meaning in the rele-
`vant field. J.A. 1596–97; see In re Papst
`Licensing GmbH & Co. KG Litig., No. 07–
`mc–00493 (D.D.C. June 6, 2008) (order
`
`specifying scope of tutorial). The court
`then heard extensive argument from coun-
`sel, but it declined to admit expert testimo-
`ny or to rely on an expert declaration from
`Papst, stating that
`‘‘the
`intrinsic evi-
`dence—the claims, the specification, and
`the prosecution history—provide the full
`record necessary for claims construction.’’
`J.A. 1597.
`The court issued its initial claim-con-
`struction order in 2009. It issued a modi-
`fied claim-construction order after addi-
`tional briefing. The district court then
`ruled on eight summary-judgment motions
`filed by the camera manufacturers, treat-
`ing the manufacturers as two distinct
`groups—one group consisting of Hewlett–
`Packard Co. (‘‘HP’’), the other of all other
`accused manufacturers (‘‘Camera Manu-
`facturers’’). As detailed in our discussion
`infra, the court’s rulings on summary
`judgment clarified what
`it understood
`some of its claim constructions to mean.
`With respect to the accused products now
`at issue, the combined effect of the court’s
`summary-judgment rulings was a determi-
`nation of non-infringement by the Camera
`Manufacturers and HP. The court ulti-
`mately entered a final judgment of non-
`infringement under Federal Rule of Civil
`Procedure 54(b) for both HP and the Cam-
`era Manufacturers, In re Papst Licensing
`GmbH & Co. KG Litig., 987 F.Supp.2d 58,
`62 (D.D.C.2013), having severed certain
`other claims, In re Papst Licensing GmbH
`& Co. KG Litig., 967 F.Supp.2d 63, 65 n. 2,
`71 (D.D.C.2013).
`Papst appeals, arguing that the court’s
`summary-judgment orders should be re-
`versed because they rely on incorrect con-
`structions of five different terms from the
`8399 and 8449 patents. We have jurisdic-
`tion under 28 U.S.C. § 1295(a)(1).
`
`DISCUSSION
`[1, 2] We review the grant of summary
`judgment of non-infringement de novo, ap-
`
`6
`
`

`

`PAPST LICENSING DIGITAL CAMERA PATENT LITIGATION
`Cite as 778 F.3d 1255 (Fed. Cir. 2015)
`
`1261
`
`plying the same standard used by the dis-
`trict court. See Bender v. Dudas, 490
`F.3d 1361, 1366 (Fed.Cir.2007). The in-
`fringement inquiry, which asks if an ac-
`cused device contains every claim limita-
`tion or its equivalent, Warner–Jenkinson
`Co. v. Hilton Davis Chem. Co., 520 U.S.
`17, 29, 117 S.Ct. 1040, 137 L.Ed.2d 146
`(1997), depends on the proper construction
`of the claims. See Cybor Corp. v. FAS
`Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.
`1998) (en banc). In this case, we review
`the district court’s claim constructions de
`novo, because intrinsic evidence fully de-
`termines the proper constructions. See
`Teva Pharm. U.S.A., Inc. v. Sandoz, Inc.,
`––– U.S. ––––, 135 S.Ct. 831, 840–42, –––
`L.Ed.2d –––– (2015). As we have noted,
`the district court relied only on the intrin-
`sic record, not on any testimony about
`skilled artisans’ understandings of claim
`terms in the relevant field, and neither
`party challenges that approach.
`Two clarifications simplify our analysis
`so that it is enough for us to address the
`correctness of the district court’s construc-
`tions. First, the parties have not present-
`ed developed arguments other than argu-
`ments about the choice, on each issue,
`between the district court’s construction
`and the alternative construction by Papst
`that the district court rejected. Specifical-
`ly, for none of the issues have the parties
`identified a third possibility and both elab-
`orated an argument for such a possibility
`and explained the importance to the case
`of considering it. Second, it is appropri-
`ate, if we reject all five of the challenged
`constructions, to vacate the summary-judg-
`ment orders and remand.2
`[3–6] We reject the five constructions
`at issue. We do so following our familiar
`approach to claim construction. ‘‘We gen-
`erally give words of a claim their ordinary
`meaning in the context of the claim and
`
`the whole patent document; the specifica-
`tion particularly, but also the prosecution
`history, informs the determination of claim
`meaning in context, including by resolving
`ambiguities; and even if the meaning is
`plain on the face of the claim language, the
`patentee can, by acting with sufficient clar-
`ity, disclaim such a plain meaning or pre-
`scribe a special definition.’’ World Class
`Tech. Corp. v. Ormco Corp., 769 F.3d 1120,
`1123 (Fed.Cir.2014); see Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–17 (Fed.Cir.
`2005) (en banc); Thorner v. Sony Comput-
`er Entm’t Am. LLC, 669 F.3d 1362, 1365
`(Fed.Cir.2012). We apply, in particular,
`the principle that ‘‘[t]he construction that
`stays true to the claim language and most
`naturally aligns with the patent’s descrip-
`tion of the invention will be, in the end, the
`correct construction.’’ Renishaw PLC v.
`Marposs Societa’ per Azioni, 158 F.3d
`1243, 1250
`(Fed.Cir.1998), adopted by
`Phillips, 415 F.3d at 1316.
`
`[7] On remand, this case will proceed
`in light of our claim-construction reversals.
`For that reason, it is worth reiterating
`that a district court may (and sometimes
`must) revisit, alter, or supplement its claim
`constructions (subject to controlling appel-
`late mandates) to the extent necessary to
`ensure that final constructions serve their
`purpose of genuinely clarifying the scope
`of claims for the finder of fact. See O2
`Micro Int’l Ltd. v. Beyond Innovation
`Tech. Co., 521 F.3d 1351, 1359 (Fed.Cir.
`2008); Pfizer, Inc. v. Teva Pharm., USA,
`Inc., 429 F.3d 1364, 1377 (Fed.Cir.2005).
`That determination is to be made as the
`case moves forward.
`
`A
`[8] Papst first challenges the district
`court’s
`‘‘memory card’’ summary judg-
`
`2. If some aspects of the summary-judgment
`orders are unaffected by our claim-construc-
`
`tion rulings, they may, to that extent, be rein-
`stated on remand.
`
`7
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`
`ment as relying on an improper construc-
`tion of the term ‘‘interface device’’ found
`in the preamble of claims in both patents.
`The district court construed the term as
`limiting the claims’ coverage to ‘‘stand-
`alone device[s].’’ In re Papst Licensing
`GmbH & Co. KG Litig., 670 F.Supp.2d 16,
`31–35 (D.D.C.2009) (‘‘Claim Constr. Op.’’).
`In particular, the court held that ‘‘the
`data transmit/receive device must be a
`separate device from the’’ claimed ‘‘inter-
`face device.’’ Id. at 33. Subsequently, in
`granting summary judgment, the court
`explained that what it meant by this re-
`quirement is that the interface device may
`not be ‘‘a permanent part of either the
`data transmit/receive device or the host
`de-vice/computer,’’ by which it meant that
`it may not be located permanently inside
`the housing of either of those two devices.
`In re Papst Licensing GmbH & Co. KG
`Litig., 932 F.Supp.2d 14, 18, 21–22
`(D.D.C.2013).
`
`1
`As a threshold matter, the Camera Man-
`ufacturers argue that we should not reach
`this issue because the district court’s sum-
`mary-judgment rulings do not depend on
`the construction of
`‘‘interface device.’’
`They invoke principles stated in SanDisk
`Corp. v. Kingston Technology Co., 695
`F.3d 1348, 1354 (Fed.Cir.2012) (‘‘[W]here,
`as here, a party’s claim construction argu-
`ments do not affect the final judgment
`entered by the court, they are not reviewa-
`ble.’’), and Mangosoft, Inc. v. Oracle Corp.,
`525 F.3d 1327, 1330 (Fed.Cir.2008) (‘‘we
`review judgments, not opinions’’).
` We
`conclude, however, that the premise for
`invoking the cited principles is missing
`here.
`The district court’s summary-judgment
`order regarding memory-card devices
`shows that its final judgment did turn on
`the construction of
`‘‘interface device.’’
`The primary reason the court gave for
`rejecting Papst’s infringement contentions
`
`was that ‘‘[t]he Court made clear in its
`claims construction opinion that the inter-
`face device is separate and distinct from
`the data transmit/receive device.’’ Papst,
`932 F.Supp.2d at 21. The court cited re-
`peatedly to the portion of its claim-con-
`struction opinion addressing ‘‘interface de-
`vice.’’ E.g., id. at 18 (citing Claim Constr.
`Op. at 32–35); id. at 21 (citing Claim
`Constr. Op. at 34–35); id. at 23 (citing
`Claim Constr. Op. at 31–35). And in its
`opening paragraphs, the court summarized
`the Camera Manufacturers’ position on
`summary judgment as relying on that
`same construction. Id. at 16 (‘‘Because
`the invented ‘interface device’ is a stand-
`alone device that is separate and apart
`from any data transmit/receive device, the
`Camera Manufacturers contend that a
`memory card cannot be both part of the
`interface device and a data transmit/re-
`ceive deviceTTTT’’).
` In
`these circum-
`stances, we will consider whether the dis-
`trict court’s construction is correct.
`
`2
`We hold that the term ‘‘interface device’’
`is not limited to a ‘‘stand-alone device’’ in
`the district court’s sense relied on for sum-
`mary judgment: a device that is physically
`separate and apart from, and not perma-
`nently attached to, a data device (or a host
`computer). Representative claim 1 of the
`8449 patent begins, ‘‘[a]n interface device
`TTT comprising the following features,’’
`and then recites the necessary components
`of the claimed interface device. See supra
`pp. 1259–60. Neither the claim language
`nor the rest of the intrinsic record sup-
`ports the district court’s exclusion of a
`device that performs the required inter-
`face functions and is installed permanently
`inside the housing of a particular data
`device.
`The district court did not suggest that
`the term ‘‘interface device’’ by itself im-
`
`8
`
`

`

`PAPST LICENSING DIGITAL CAMERA PATENT LITIGATION
`Cite as 778 F.3d 1255 (Fed. Cir. 2015)
`
`1263
`
`plied its construction. Rather, it heavily
`relied for its construction on the specific
`claim requirement that (to paraphrase) a
`part of the interface, upon receiving an
`identification query from the host comput-
`er, send a signal identifying itself as a
`host-familiar device ‘‘regardless of the type
`of the data transmit/receive device at-
`tached to the second connecting device of
`the interface device.’’ 8449 Patent, col. 11,
`lines 63–65. The court concluded that the
`‘‘regardless’’ phrasing in the claim ‘‘strong-
`ly indicates that various kinds of data
`transmit/receive devices could be attached’’
`to the interface device. Claim Constr. Op.
`at 32–33.
`But the court’s construction does not
`follow from its understanding of the ‘‘re-
`gardless’’ phrase.
` Nothing about that
`phrase forbids any single instance of the
`claimed interface device to be permanently
`attached to a particular data device. It
`readily allows permanent attachment of
`each copy of the interface device to a
`particular data device, prescribing only
`that the same host-responsive identifica-
`tion signal be sent regardless of what type
`of data device the interface device is at-
`tached to. That is, there can be multiple
`copies of the same interface device, with
`each permanently attached to one of a
`variety of different data devices.
` The
`claim language, in short, does not limit
`‘‘interface device’’ to a device not perma-
`nently attached to (readily detachable
`from) a data device.
`The written description does not do so
`either. Critically, the district court’s con-
`struction, like the Camera Manufacturers’
`arguments supporting
`it, fundamentally
`mistakes what the description makes clear
`is the stated advance over the prior art.
`As explained supra, the described advance
`over the prior art was the elimination of
`the need for special drivers to be placed on
`the host computer by instead having the
`host computer use a single, already-pres-
`
`ent, fast, reliable driver to communicate
`with the interface and, through it, with the
`data device, which need not be of a partic-
`ular type. Nothing about that advance
`suggests exclusion of a permanent attach-
`ment of such an interface to the data de-
`vice—a construction that
`is
`‘‘unmoored
`from, rather than aligned with’’ what is
`described as
`the
`invention’s advance.
`World Class Tech., 769 F.3d at 1124.
`No passage in the written description
`says otherwise. The Camera Manufactur-
`ers cite passages that describe the inven-
`tion as ‘‘sufficiently flexible to permit at-
`tachment of very different electrical or
`electronic systems to a host device.’’ 8399
`patent, col. 1, lines 56–59; id., col. 7, lines
`45–49 (touting the ‘‘present invention’’ as
`allowing ‘‘an interface between a host de-
`vice and almost any data transmit/receive
`device’’).
` But that
`language does not
`speak to the connection between the in-
`terface and data devices. Rather, it ad-
`dresses the connection between the host
`computer and data devices, a connection
`facilitated by the interface device. Even
`as to that, the passage may be read mere-
`ly to assert the capability of one-to-one
`host-to-data-device connections, with the
`data device chosen from a wide variety of
`possible data devices. But even if it is
`read to assert a capability of one-to-many
`host-to-data-device connections,
`it says
`nothing to assert that a given copy of the
`interface device must be attachable to dif-
`ferent data devices either simultaneously
`or seriatim.
`The Camera Manufacturers also point to
`the written description’s statement that
`‘‘[i]n the interface device according to the
`present invention an enormous advantage
`is to be gained TTT in separating the actual
`hardware required to attach the interface
`device to the data transmit/receive device
`from the communication unit,’’ 8399 patent,
`col. 8, lines 23–28 (figure numbers re-
`
`9
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`778 FEDERAL REPORTER, 3d SERIES
`
`moved)—which they say means that per-
`mitting multiple data devices to attach to a
`single interface device is an integral part
`of the invention. But that passage does
`not support the district court’s limiting
`construction, and not only because it is
`part of the description of several preferred
`embodiments, rather than a clear declara-
`tion of what constitutes an essential part of
`the invention.
`The full passage makes clear that the
`‘‘hardware separation’’ is not between the
`interface and data device, but within the
`interface device itself—between the sec-