May 20, 2020
Claim Terms Construed in the Context of the Entire Patent, including the Specification
In MCRO, Inc., v. Bandai Namco Games America Inc., [2019-1557] (May 20, 2020), the Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. 6,611,278, vacated judgment of invalidity because the specification failed to enable the full scope of the claims, and remanded to the district court to consider any appropriate further proceedings in light of, among other things, defendants’ offer to withdraw their invalidity counterclaims without prejudice.
With respect to the non-infringement determination, the Federal Circuit said that the district court was correct as a matter of law in ruling that a “vector,” in the context of the ’278 patent, must have “3-D magnitude and direction computed by pure subtraction/addition between the neutral and target models, with one vector corresponding to each set of two vertices.” Because the parties agreed that there is no infringement under this construction, the Federal Circuit affirmed the district court’s grant of summary judgment of non-infringement.
The Federal Circuit said that the proper claim construction is based “not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” The only meaning that matters in claim construction, the Court said, is the meaning in the context of the patent, and the specification here compels the three-dimensional geometric construction of “vector” as adopted by the district court.
On the issue of validity, the Federal Circuit agreed that the defendants failed to identify with particularity any method of animation that falls within the scope of the claims that was not enabled. Without any specific examples, the district court’s reasoning is too abstract and conclusory to support summary judgment. The Federal Circuit saw no reason to depart from its usual requirement that the challenger identify specifics that are or may be within the claim but are not enabled. Specifics have always mattered. A fuller set of fact-findings about what is within the scope of the claims is necessary to decide the enablement issue.