Lochner Tech. v. Vizio: Transitional Term "Including" does not require additional, unspecified elements

Category: 112 - Written Description 
By: Karthik Subramanian, Contributor 
TitleLochner Tech., LLC v. Vizio, Inc., No. 2013-1551 (Fed. Cir. June 27, 2014) (non-precedential).
IssueLochner takes issue with the district court’s belief that use of an open-ended term “including” requires patentees to disclose the recited as well as unrecited elements that are present in the accused infringing products.
Lochner Tech., LLC at *15.
Holding“After careful consideration, we find that the district court erred when it assumed that use of the term “including” somehow trumped consideration of the specification and prosecution history and displaced application of standard claim construction principles."
Id. at *16.
Procedural History
“In September 2011, Lochner filed suit against a number of Defendants—including Vizio and Toshiba— alleging infringement of claims 1-10 and 12 of the [7,035,]598 Patent. The accused products are tablets that incorporate CPU and RAM, and have full processing capabilities.

“In their claim construction briefing, Defendants argued, among other things, that the court should construe the term “input-output system” to encompass only a “unit composed essentially of an input device, an output device, and a transceiver.”

“The district court issued a partial claim construction order on April 23, 2013. Relevant to this appeal, the court construed the claimed “input-output system” to mean “a system primarily responsible for input and output tasks.””

“Although it acknowledged that the “only description of the input-output unit in the specification states that it is ‘composed essentially of three components, a keyboard, a . . . display device, and a wireless transceiver device,” the court nonetheless concluded that the claim was not limited to those three elements given its use of the open-ended term “including.” The district court also construed the term “portable” as “lightweight and easy to carry, like a laptop.” The court concluded, therefore, that the phrase “portable input-output system”—as used in Claim 1—“requires an input-output system which is ‘lightweight and easy to carry, like a laptop.’”

“After the district court issued its partial claim construction decision, it issued a separate order in which it sua sponte invited the parties to brief the enablement, written description, and “regards as invention” requirements of 35 U.S.C. § 112[.]”

Lochner Tech., LLC at *7-8 (internal citations omitted).
“On June 6, 2013, the district court granted Defendants’ motion for summary judgment as to the written description and “regards as invention” requirements, but
denied it as to enablement.”
Id. at *10.
Legal Reasoning (O'MALLEY, Taranto, Chen)
Claim at IssueIndependent Claim 1, which the parties agree is representative, recites a base system including four components: (1) a processor; (2) a non-volatile memory; (3) a display element; and (4) a wireless transceiver. Relevant to this appeal, Claim 1 also recites a “portable input-output system including”: (1) a wireless transceiver; (2) a user interface; and (3) a display arrangement. […]
Lochner Tech., LLC *4-5 (internal citations omitted).
112 1st - Written Description
Construing 'including'Although “including” is generally an open-ended term that does not preclude additional elements, we have recognized that it does not require additional, unspecified elements. […] Indeed, this court has held that, to satisfy the written description requirement, “‘an applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention.’” […] And, as Lochner argues, we have held that “a patent claim is not necessarily invalid for lack of written description just because it is broader than the specific examples disclosed.” […]
Lochner Tech., LLC at *15-16 (internal citations omitted).
Relevance of spec.“[I]t is well-established that claim terms must be construed in light of the entire patent, including the written description and prosecution history. Indeed, we have recognized that “the specification is always highly relevant to the claim construction analysis” and “is the single best guide to the meaning of a disputed term. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).”
Id. at *16.
Case at handReview of the district court’s partial claim construction order reveals that it focused exclusively on the term “including” when arriving at its construction for “input- output system.” In doing so, the court failed to properly consider the limiting language in the written description and the statements Lochner made over the course of the prosecution history, including his own characterization of the input-output unit as a “dumb terminal.” In other words, the court gave controlling effect to the word “including” without reference to the claim language following it, the patent in which it appears, and the patent’s prosecution history.
Id. at *17.
112 2nd - “Regards as Invention”
Distinguishing Definiteness and 'Regards the Invention'“We have recognized that the “regards as invention” requirement is distinct from the requirement that the claim be sufficiently clear to be definite. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1348 (Fed. Cir. 2002). “Where it would be apparent to one of skill in the art, based on the specification, that the invention set forth in a claim is not what the patentee regarded as his invention, we must hold that claim invalid under § 112, paragraph 2.” Id. at 1349; see Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 739 (Fed. Cir. 2014) (distinguishing Allen because there, “the patentee agreed that the claim language did not match what he regarded as his invention, as the intrinsic record unambiguously showed”).”
Lochner Tech., LLC at *18.
District Court Reasoning Vacated“Because the district court’s analysis stems from its erroneous approach to claim construction, we vacate its decision finding the asserted claims invalid under the “regards as invention” requirement. The court should reconsider its “regards as invention” analysis after reconstruing the claimed “portable input-output system” consistent with the principles discussed herein.”
Id. at *19.
“[W]e vacate: (1) the district court’s order granting-in-part Defendants’ motion for summary judgment of invalidity under 35 U.S.C. § 112; and (2) the district court’s judgment of invalidity for lack of written description and for failure to claim what the applicants regards as their invention. We remand for further proceedings consistent with this opinion, including new claim construction.”
Lochner Tech., LLC at *19.
Image Attribution Statement:  FIG. 1 of U.S. Patent No. 7,035,598.
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