Latest Federal Court Cases – January 2024 | Schwabe, Williamson & Wyatt PC
In an appeal from a district court judgment of noninfringement, the Federal Circuit reversed the underlying claim construction ruling. The case concerned the import of statements made during the prosecution of a foreign counterpart application. Specifically, the issue was the meaning of the word “barcode.”
The case concerns patents for single-use pods used in coffee makers. The patents all claim a “barcode” on the pod that is used to encode brewing parameters (temperature, amount of water) to be read by the coffee maker. In Europe, Nespresso opposed K-fee’s application for a related patent. K-fee sought to distinguish prior art that used “bit codes,” or codes made up of two binary characters. In the instant lawsuit, the district court found this to have been intrinsic evidence, and found it to be sufficient disclaimer of “bit codes” as a form of “barcode.” The court issued a claim construction order that “barcode” has its plain and ordinary meaning, “which is understood by the clear and unequivocal statements K-fee made to the EPO (i.e., the scope of barcode does not include the type of bit code disclosed in” the prior art.
Because Nespresso’s system uses bit codes, the court issued summary judgment of non-infringement.
The Federal Circuit reversed, finding error in the district court’s claim construction. The Court first assumed that the foreign prosecution statements were intrinsic evidence, such that the Court’s review was de novo. It proceeded through a two-step analysis: first considering the ordinary meaning of the term “barcode,” then analyzing whether K-fee’s statements constituted disclaimer.
As to the first issue, the Court disagreed that “barcode” excluded bit codes. Bit codes can be characterized as black rectangles (to represent a “1,” for example), and thus bear an appearance similar to a traditional barcode. In the EPO application, K-fee made numerous statements that seemed to conflate barcodes and bit codes, and even used the terms interchangeably at times. The Court concluded that an ordinary artisan who reviewed these various statements would not conclude that no bit code could be a barcode. In the end, the Court concluded:
The evidence persuades us that a relevant artisan identifies a barcode by appearance and not by other criteria such as a particular encoding of data of the sort reflected in the district court’s claim construction. We conclude that the relevant artisan reading the asserted patents and their prosecution history (the latter now accepted by the parties to include the EPO opposition submission) would understand “barcode” to refer to line-code messages, displaying bars, that are characterized by the varying-width visual appearance of the bars in the messages.
Moving to the second question, the Court concluded that “K-fee did not act with the clarity required either to prescribe a new meaning for ‘barcode’ or to disclaim any portion of the apparent meaning.” The Court found the statements not to be “unequivocal” or “unambiguous.”
Ultimately, the Court held
that the full scope of the ordinary meaning of “barcode” should apply, and we conclude that the ordinary meaning that a relevant artisan would arrive at after reading the intrinsic evidence is that a barcode is defined by its visual appearance as lined-up bars of varying widths. We reverse the district court’s claim construction and construe “barcode” to refer to code messages consisting of a linearly arranged sequence of bars of visually non-uniform widths (or a coding system producing such messages).
The Court therefore reversed the district court’s grant of summary judgment of noninfringement.
The opinion can be found here.
By Nika Aldrich
