`
`
`778 F.3d 1255
`United States Court of Appeals,
`Federal Circuit.
`
`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.), Hewlett–Packard Company, JVC Company
`of America, Nikon Corporation, Nikon, Inc.,
`Olympus Corp., Olympus Imaging America Inc.,
`Panasonic Corporation (formerly known as
`Matsushita 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. | Feb. 2, 2015.
`
`Synopsis
`Background: Competitor commenced action against
`patentee, seeking declaratory judgment that it did not
`infringe patents on interface device for transferring data
`between input-output data device and host computer.
`Patentee commenced other actions against other
`competitors,
`alleging
`infringement. Actions were
`consolidated by multi-district
`litigation panel and
`transferred. 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
`“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;
`
`
`limited
`
`to
`
`[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 available computer systems at time of
`invention.
`
`
`
`Vacated and remanded.
`
`
`
`
`
`
`
`
`
`
`
`
`
`West Headnotes (16)
`
`[1]
`
`
`
`
`[2]
`
`
`
`
`[3]
`
`
`
`
`Patents
`In general;  comparison with patent claims
`
`
`The patent infringement inquiry, which asks if
`an accused device contains every claim
`limitation or its equivalent, depends on the
`proper construction of the claims.
`
`Cases that cite this headnote
`
`
`Patents
`Construction and Operation of Patents
`
`
`De novo review applied to district court’s patent
`claim constructions, since intrinsic evidence
`fully determined proper constructions.
`
`3 Cases that cite this headnote
`
`
`Patents
`Construction and Operation of Patents
`
`
`Generally, a court gives words of a claim their
`
`OLYMPUS et al. EX. 1008 - 1/13
`
`

`

`
`
`
`[4]
`
`
`
`
`
`
`
`[5]
`
`
`
`
`
`
`
`[6]
`
`
`
`
`ordinary meaning in the context of the claim and
`the whole patent document.
`
`3 Cases that cite this headnote
`
`
`Patents
`Specifications and Drawings;  Written
`Description
`Patents
`Rejection and Amendment of Claims;
` Prosecution History
`
`The patent specification particularly, but also the
`prosecution history, informs the determination
`of claim meaning in context, including by
`resolving ambiguities.
`
`Cases that cite this headnote
`
`
`Patents
`Contemporaneous construction
`
`
`Even if the meaning is plain on the face of the
`claim language, the patentee can, by acting with
`sufficient clarity, disclaim such a plain meaning
`or prescribe a special definition.
`
`2 Cases that cite this headnote
`
`
`Patents
`Language of claims in general
`Patents
`Specifications and Drawings;  Written
`Description
`
`Patent claim construction that stays true to the
`claim language and most naturally aligns with
`the patent’s description of the invention will be,
`in the end, the correct construction.
`
`4 Cases that cite this headnote
`
`
`
`
`
`
`
`
`[7]
`
`
`
`
`[8]
`
`
`
`
`
`
`
`[9]
`
`
`
`
`
`
`
`[10]
`
`
`
`
`Patents
`Rehearing or reconsideration
`
`
`District court may revisit, alter, or supplement
`its patent claim constructions to the extent
`necessary to ensure that final constructions serve
`their purpose of genuinely clarifying the scope
`of claims for the finder of fact.
`
`Cases that cite this headnote
`
`
`Patents
`Data processing
`
`
`Term “interface device,” in patents on interface
`device
`for
`transferring
`data
`between
`input-output data device and host computer, was
`not limited to “stand-alone device,” i.e., device
`that was physically separate and apart from, and
`not permanently attached to, data device or host
`computer.
`
`1 Cases that cite this headnote
`
`
`Patents
`Data processing
`
`
`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 permitted user to readily attach
`and detach something else.
`
`Cases that cite this headnote
`
`
`Patents
`Preferred embodiment
`
`
`Patent claims generally are not limited to
`features found in what the written description
`presents as mere embodiments, where the claim
`
`OLYMPUS et al. EX. 1008 - 2/13
`
`

`

`
`
`
`
`
`
`[11]
`
`
`
`
`[12]
`
`
`
`
`
`
`
`[13]
`
`
`
`
`language is plainly broader.
`
`Cases that cite this headnote
`
`
`Patents
`Data processing
`
`
`“Interface device” in patents for 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.
`
`Cases that cite this headnote
`
`
`Patents
`Rehearing or reconsideration
`
`
`Patentee was not required to state its opposition
`to court’s patent claim construction twice when
`seeking modification, and thus properly limited
`its request to manifest error resting on plain
`misapprehension 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
`requests for reconsideration.
`
`Cases that cite this headnote
`
`
`Patents
`Data processing
`
`
`Phrases, “virtual files” and “simulating 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 already 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 residing on data
`
`
`
`
`[14]
`
`
`
`
`device, nothing in written description limited
`virtual files to that arrangement.
`
`Cases that cite this headnote
`
`
`Patents
`Data processing
`
`
`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 required 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
`location inside computer chassis.
`
`1 Cases that cite this headnote
`
`
`[15]
`
`
`
`
`Patents
`Preferred embodiment in general
`
`
`Generally, a court does not construe the claims
`of a patent to exclude a preferred embodiment.
`
`Cases that cite this headnote
`
`
`[16]
`
`
`
`
`Patents
`In general;  utility
`
`
`US Patent 6,470,399, US Patent 6,895,449.
`Cited.
`
`Cases that cite this headnote
`
`
`
`
`
`
`
`
`
`
`
`Attorneys and Law Firms
`
`*1257 John T. Battaglia, Fisch Sigler LLP, of
`
`OLYMPUS et al. EX. 1008 - 3/13
`
`

`

`Washington, DC, argued for plaintiff-appellant. 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 defendants-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
`*1258 McCutchen LLP, of Santa Monica, CA. Of counsel
`was Susan Baker Manning, Morgan, Lewis & Bockius
`LLP, of Washington, DC. On the brief for Samsung
`Techwin, 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 Company. With her on the brief were
`David D. Schumann and Bryan A. Kohm, of San
`Francisco, CA.
`
`Before TARANTO, SCHALL, and CHEN, Circuit
`Judges.
`
`Opinion
`
`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 ′449 patent having issued on a
`divisional application carved out of the application that
`became the ′399 patent. The focus of both patents is an
`interface device
`for
`transferring data between an
`input/output data device and a host computer. The current
`appeal
`involves whether
`certain
`digital-camera
`manufacturers infringe Papst’s patents. The district court,
`applying and elaborating on its constructions of various
`claim
`terms,
`entered
`summary
`judgment
`of
`non-infringement,
`concluding
`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-infringement.
`
`
`
`BACKGROUND
`
`′449 patents, both entitled “Flexible
`′399 and
`The
`Interface for Communication Between 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 device on which data can be placed or from which
`data can be acquired. ′399 patent, Title and Abstract.1 The
`written description states that, while interface devices
`were known at the time of the invention, the existing
`devices had limitations, including that they tended to
`require disadvantageous sacrifices of data-transfer speed
`or of flexibility as to what host computers and data
`devices they would work with. ′399 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”—“generally
`require very
`sophisticated drivers” to be downloaded onto the host
`computer, but such drivers “are prone to malfunction and
`... 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 interface 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 interface also “must be installed inside
`the computer 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 *1259 asks the new device what type of
`device it is; the connected device responds; the host
`determines whether it already possesses drivers for
`(instructions for communicating 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
`interface 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
`
`OLYMPUS et al. EX. 1008 - 4/13
`
`

`

`communications 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
`manufacturer) 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 delivers
`a high data transfer rate.” Id. col. 3, lines 25–28.
`
`
`Claim 1 of the ′399 patent sets forth the specifics of the
`claimed interface device:
`
`1. An interface device for communication between a
`host device, which comprises drivers for input/output
`devices customary in a host device and a multi-purpose
`interface, and a data transmit/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
`the
`interfacing
`interface device with the data transmit/receive device,
`the second connecting device including a sampling
`circuit for sampling the analog data provided by the
`data transmit/receive device and an analog-to-digital
`converter for converting data sampled by the sampling
`circuit into digital data,
`
`wherein the interface device is configured 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 command interpreter, when
`receiving an inquiry 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/output *1260 device customary in a host device,
`and
`
`wherein the second command interpreter is configured
`to interpret a data request 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 appeal). Claim 1 of the ′ 449 patent is similar, 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. ′449 patent, col. 11, line 46, to
`col. 12, line 6. A few other differences between the claims
`are discussed infra.
`
`
`to major
`letters
`in 2006, Papst sent
`Beginning
`digital-camera manufacturers, accusing them of infringing
`its patents and requesting that they enter into negotiations
`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 litigation 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 technical understandings, but
`not whether any particular term in the patent or the prior
`art has a particular meaning in the relevant 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 counsel, but it declined to admit
`expert testimony or to rely on an expert declaration from
`Papst, stating that “the intrinsic evidence—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-construction order in
`2009. It issued a modified claim-construction order after
`additional briefing. The district court then ruled on eight
`
`OLYMPUS et al. EX. 1008 - 5/13
`
`

`

`the camera
`filed by
`summary-judgment motions
`manufacturers, treating the manufacturers as two distinct
`groups—one group consisting of Hewlett–Packard Co.
`(“HP”), the other of all other accused manufacturers
`(“Camera Manufacturers”). 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 determination of non-infringement by the
`Camera Manufacturers and HP. The court ultimately
`entered a final judgment of non-infringement under
`Federal Rule of Civil Procedure 54(b) for both HP and the
`Camera 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 reversed because they rely on incorrect
`constructions of five different terms from the ′399 and
`′449 patents. We have jurisdiction under 28 U.S.C. §
`1295(a)(1).
`
`
`
`DISCUSSION
`[1] [2] We review the grant of summary judgment of
`non-infringement de novo, applying *1261 the same
`standard used by the district court. See Bender v. Dudas,
`490 F.3d 1361, 1366 (Fed.Cir.2007). The infringement
`inquiry, which asks if an accused device contains every
`claim limitation 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
`determines 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 intrinsic 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 constructions. First, the parties have not presented
`developed arguments other than arguments about the
`choice, on each issue, between the district court’s
`
`construction and the alternative construction by Papst that
`the district court rejected. Specifically, for none of the
`issues have the parties identified a third possibility and
`both elaborated an argument for such a possibility and
`explained the importance to the case of considering it.
`Second, it is appropriate, if we reject all five of the
`challenged
`constructions,
`to
`vacate
`the
`summary-judgment orders and remand.2
`
`[3] [4] [5] [6] We reject the five constructions at issue. We do
`so following our familiar approach to claim construction.
`“We generally give words of a claim their ordinary
`meaning in the context of the claim and the whole patent
`document; the specification 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
`clarity, disclaim such a plain meaning or prescribe 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 Computer 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 description 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 appellate 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
`judgment *1262 as relying on an
`card” summary
`improper construction 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].”
`
`OLYMPUS et al. EX. 1008 - 6/13
`
`

`

`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 “interface device.”
`Id. at 33. Subsequently, in granting summary judgment,
`the court explained that what it meant by this requirement
`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 Manufacturers argue
`that we should not reach this issue because the district
`court’s summary-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 arguments do not affect the
`final judgment entered by the court, they are not
`reviewable.”), 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 interface device
`is separate and distinct from the data transmit/receive
`device.” Papst, 932 F.Supp.2d at 21. The court cited
`repeatedly to the portion of its claim-construction opinion
`addressing “interface device.” 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/receive device....”). In these circumstances, we
`will consider whether the district 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 summary judgment: a device that is physically
`separate and apart from, and not permanently attached to,
`a data device (or a host computer). Representative claim 1
`of the ′449 patent begins, “[a]n interface device ...
`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 supports the district court’s
`exclusion of a device that performs the required interface
`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 implied *1263 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
`computer, send a signal
`identifying
`itself as a
`host-familiar device “regardless of the type of the data
`transmit/receive device attached to the second connecting
`device of the interface device.” ′449 Patent, col. 11, lines
`63–65. The court concluded that the “regardless” phrasing
`in the claim “strongly 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 “regardless” 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
`identification signal be sent regardless of what type of
`data device the interface device is attached 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 permanently
`attached to (readily detachable from) a data device.
`
`
`The written description does not do so either. Critically,
`the district court’s construction,
`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-present,
`fast,
`reliable
`driver
`to
`communicate with the interface and, through it, with the
`
`OLYMPUS et al. EX. 1008 - 7/13
`
`

`

`data device, which need not be of a particular type.
`Nothing about that advance suggests exclusion of a
`permanent attachment of such an interface to the data
`device—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 Manufacturers cite passages that describe the
`invention as “sufficiently flexible to permit attachment of
`very different electrical or electronic systems to a host
`device.” ′399 patent, col. 1, lines 56–59; id., col. 7, lines
`45–49 (touting the “present invention” as allowing “an
`interface between a host device and almost any data
`transmit/receive device”). But that language does not
`speak to the connection between the interface and data
`devices. Rather, it addresses 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 merely 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 different 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 ... in separating the actual hardware
`required to attach the interface device to the data
`transmit/receive device from the communication unit,”
`′399 patent, col. 8, lines 23–28 (figure numbers removed)
`*1264 —which they say means that permitting 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 declaration of
`what constitutes an essential part of the invention.
`
`
`the “hardware
`that
`The full passage makes clear
`separation” is not between the interface and data device,
`but within the interface device itself—between the second
`connecting device, on one hand, and “the digital signal
`processor, the memory means[,] and the first connecting
`device,” on the other. Id., col. 8, lines 28–29 (figure
`numbers removed). When the passage states that this
`separation “allows a plurality of dissimilar device types to
`be operated
`in parallel
`in
`identical manner,”
`it
`immediately adds: “Accordingly, many interface devices
`can be connected to a host device which then sees many
`
`different ‘virtual’ hard disks.” Id. col. 8, lines 30–33
`(emphasis added). The suggestion is that distinct interface
`devices are used for distinct data devices, each interface
`device incorporating a “second connecting device” that
`works for its particular data device. This suggestion
`works against,
`rather
`than supports,
`the Camera
`Manufacturers’ view of multiple data devices attached to
`a single (separate) interface device, whether at once or in
`sequence, for it readily accommodates a one-to-one
`permanent attachment of an interface device to a data
`device. And the parallel operation of dissimilar device
`types is possible because the invention causes the host
`computer to use its native software to transfer data at high
`speed and because the invention creates a uniform
`interface from the host’s perspective for controlling the
`data device. See, e.g., ′399 patent, col. 7, lines 45–49.
`
`
`Finally, nothing in the prosecution history supports the
`district court’s narrow construction. The Camera
`Manufacturers point to an amendment that chang