X2Y Attenuators, LLC v. ITC: Claim Disavowal in Parent Patent Limits Scope of Claim in Child Patent

Category: Claim Construction 
By: Jesus Hernandez, Blog Editor/Contributor  
TitleX2Y Attenuators, LLC v. ITC, No. 2013-1340 (Fed. Cir. July 7, 2014).
IssueX2Y contends that the ITC improperly read several functional and structural limitations into the meaning of the term “electrode[“ based on statement on parent patents.] It contends that the plain meaning of “electrode” denotes a single conductor rather than three conductors, let alone a three-conductor sandwich structure having paired electromagnetically opposite conductors flanking the central conductor.
X2Y Attenuators, LLC at *6 (text added).
HoldingWe conclude that the ITC correctly construed the electrode terms. The patents’ statements that the presence of a common conductive pathway electrode positioned between paired electromagnetically opposite
Id. at *7.

Procedural HistoryX2Y Attenuators, LLC (X2Y) appeals from the final determination of the International Trade Commission (ITC) that Intel Corporation and other intervenors (Intel) did not violate 19 U.S.C. § 1337 because Intel’s products were not covered by X2Y’s asserted patents.
X2Y Attenuators, LLC at *2.
Legal Reasoning (Moore, Reyna, Wallach)
Patent FamilyThe asserted patents, U.S. Patent Nos. 7,609,500 (’500 patent), 7,916,444 (’444 patent), and 8,023,241 (’241 patent) are familially related. The technology disclosed in the asserted patents relates to structures for reducing electromagnetic interference in electrical circuits.
X2Y Attenuators, LLC at *2.
Representative ClaimAlthough it is not asserted, the parties treat claim 26 of the ’444 patent as illustrative:

An arrangement for energy conditioning, comprising: . . .

a first electrode including a first shielding electrode portion, a third electrode including a third shielding electrode portion, and a fifth electrode including a fifth shielding electrode portion, wherein said first electrode, said third electrode and said fifth electrode are conductively coupled to one another;

a second electrode including a second shielded electrode portion; a fourth electrode including a fourth shielded electrode portion; wherein said second electrode and said fourth electrode are conductively isolated from each other; . . .

wherein said second shielded electrode portion and said fourth shielded electrode portion are in a first superposed alignment with each other; . . . and wherein said second shielded electrode portion is physically shielded from said fourth shielded electrode portion by said third shielding electrode portion.

Id. at *4.
The standard for finding disavowal, while exacting, was met in this case. Id. at 2. Specifically, we have held that labeling an embodiment or an element as “essential” may rise to the level of disavowal. [...] Here, not only does the specification state that the “center common conductive pathway electrode” flanked by two differential conductors is “essential,” but it also spells out that it was an “essential element among all embodiments or connotations of the invention.” [...].
X2Y Attenuators, LLC at *7-8 (internal citations omitted).
The ’350 patent’s statement that the sandwich configuration is a “feature[] universal to all the embodiments” reinforces this conclusion. ’350 patent col 20 l. 16. Like the “essential element” label, this phrase demonstrates a clear intention to limit the claim scope “using words or expressions of manifest exclusion or restriction.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002). The relevant passage does include the permissive language that “the material having predetermined electrical properties may be one of a number in any of the embodiments.” ’350 patent col. 20 ll. 17–19. But the specification further explains that “[n]o matter which material is used, the combination of common ground conductive plates and electrode conductive plates creates a plurality of capacitors to form a line-to-line differential coupling capacitor between and two line-to-ground decoupling capacitors from a pair of electrical conductors.” Id. col. 20 ll. 22–27 (emphasis added). Thus, although the passage states that the material may vary, it also ex- plains that the general sandwich configuration remains the same because it is a “feature[] universal” to the invention. This is a clear and unmistakable disavowal of claim scope.
Id. at *8.
Disavowal on Parent Patent Trickles Down to Child PatentsX2Y’s argument that some of the disclaimers are inapplicable because they appear only in priority patents to which the asserted patents are only related as continuations-in-part is without merit on the facts of this case. First, the “essential element” disavowal explicitly appears in one of the asserted patents, the ’500 patent. Second, the asserted ’500 and ’444 patents incorporate by reference the priority ’350 patent (which includes the “features universal” disavowal), and the ’444 patent also incorporates by reference the ’249 patent (which includes the “essential element” disavowal). The incorporated patents are “effectively part of the host [patents] as if [they] were explicitly contained therein.” […] s a result, the disclaimers of the incorporated patents are a part of the asserted patents.
Id. at *9.
We affirm the ITC’s determination of no violation of 19 U.S.C. § 1337.
X2Y Attenuators, LLC at *10.
REYNA, Circuit Judge, concurring. X2Y Attenuators, LLC, Reyna Op., at *1.
Grounds for Seperate Opinion[T]he ALJ and the Commission assumed a specific priority date that X2Y asserted as a defense to an invalidity challenge. The ALJ and the Commission then determined that the scope of the asserted claims was limited by “the invention” disclosed in earlier patents in the priority chain. This was error because the asserted claims derive from multiple continuation-in-part applications, and because the ALJ and the Commission failed to objectively construe the asserted claims before deciding whether the claims were entitled to priority.
X2Y Attenuators, LLC, Reyna Op., at *2.
Claim Construction Prior to Priority DeterminationThe claim construction approach affirmed by the Commission is erroneous for three reasons. First, it is well settled that a written description analysis depends on a proper claim construction because, among other reasons, a claim is entitled to the priority date of an earlier application only if the earlier specification provides sufficient written support for the full scope of the claim. […] Second, it is improper to “hold” the patentee to a priority date that it asserted as a defense to an invalidity challenge without first construing the claims and resolving invalidity issues. To be clear, invalidity considerations may inform claim construction in limited circumstances, but they cannot dictate the process. […] And third, it was erroneous to treat X2Y’s attempt to overcome allegedly invalidating prior art through a priority claim as an attempt by X2Y to “recast” its patents.
Id. at *4-5.
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