Wednesday, December 10, 2008

"Untenable" Claim Construction Leads to Plaintiff Rule 11 Sanctions

Triune Star Inc. v. The Walt Disney Co., Case No. 07-1256 (C.D. Ill., November 24, 2008)

Triune sued defendants over a patent relating to a “telecommunications locating system.” Defendants moved for summary judgment of noninfringement, claiming, among other things, that prosecution history estoppel unequivocally cleared them of any infringement whatsoever.

During prosecution, the independent claims recited "video means" that were rejected by the PTO. However, dependent claims recited that "the video means is a miniature infrared camera."
The Examiner indicated that the independent claims “would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.” An amendment was submitted to include the infrared camera, and the patent subsequently issued.

Defendants argued that (1) none of their devices used infrared cameras, (2) a conventional visible-light camera includes an IR cut filter to almost completely inhibit or block infrared radiation, and (2) had plaintiff conducted a reasonable Rule 11 inquiry, they would have known this.

During litigation, Triune alternatively construed the term “infra-red” as either: (1) “the mechanism by which the portions of the camera function” or (2) “a camera that has a spectral response sufficient to capture visible images of the area in the vicinity of the remote unit.” Defendants countered that such a construction is frivolous, as it effectively cuts-out "infra-red" from the claims.

Perhaps unsurprisingly, the district court agreed with the defendants on the claim construction issue, and granted SJ of noninfringement. However, the court took the remarkable step of imposing sanction against Triune for proposing an "untenable" claim construction:

[N]either of Triune’s constructions pass the red face test. There is simply no valid or remotely reasonable basis for ignoring the substantive addition that the specification of an infrared camera made to the claims in Triune’s patent.

Given the undisputed facts in this case, the intrinsic evidence of record, the Court’s construction of the claims . . . and the finding of noninfringement as a matter of law, the Court must conclude that any reasonable pre-suit investigation would have revealed that the allegedly infringing devices did not contain any type of miniature infrared camera and therefore could not have literally infringed Triune’s patent. Likewise, in light of the prosecution history and the doctrine of prosecution history estoppel, there is no nonfrivolous argument for the finding of infringement after applying the doctrine of equivalents.
The imposition of Rule 11 sanctions is therefore appropriate in this case against
both Triune and its counsel, who represented Triune during the prosecution of the [] patent and were directly involved in the amendment of the claims in question to require a miniature infrared camera in order to overcome the obviousness objection. The direct involvement of Triune’s counsel in the prosecution and amendment of the claims in question negates any reasonable suggestion that Triune’s position was merely erroneous rather than frivolous.
Read/download the order here (link)

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