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CAFC: District Court Departed From Plain and Ordinary Meaning of Disputed Claim Terms in Video Game Controller Patent

February 1, 2012

The U.S. Court of Appeals for the Federal Circuit Feb. 1 vacated and remanded a judgment that a patent covering a video game controller system was not infringed, ruling that the district court failed to apply the plain and ordinary meaning of two disputed terms in construing the patent claims (Thorner v. Sony Computer Entertainment America, Fed. Cir., No. 2011-1114, 2/1/12).

Tactile Feedback for Video Games.

In this suit, inventor Craig Thorner reached a stipulated judgment with Sony Computer Entertainment America that his patent (6,422,941) on a tactile feedback system for computer video games could not be infringed by the accused products given certain claim construction rulings made by the district court.

Since the parties reserved their rights to challenge the district court’s ruling under the stipulation agreement, Thorner exercised that right and appealed the claim construction to the Federal Circuit.

In the system of the ‘941 patent, tactile feedback controller 110 (see diagram) operates one or more devices with some type of actuator that provides tactile feedback to a user in response to certain game activities. In a car racing game, for example, the hand-held actuator may vibrate during a crash.

Terms “Flexible Pad” and “Attached to Said Pad” Were Misconstrued.

The Federal Circuit first ruled that the district court improperly limited the term “attached to said pad” to mean “attached to an outer surface.” The words of a patent claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history, the court began, citing the en banc ruling in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). The only two exceptions to this rule are: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution, Judge Kimberly Moore explained, citing Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576 (Fed. Cir. 1996).

Neither exception applies to the use of the term “attached” in this specification, the appellate court ruled. To act as his own lexicographer, Thorner would have to “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning, Moore noted, citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002). That did not occur here, and the specification in fact explains that an actuator was “attached to [an] outer surface.” If Thorner meant “attached” to mean only “attached to an outer surface,” then it would have been unnecessary to specify that the attachment was “to [an] outer surface” in the specification, she explained. “We hold that the term ‘attached to said pad’ should be given its plain and ordinary meaning which encompasses either internal or external attachment.”

The exception for disavowal also requires a clear and explicit statement by the patentee, and none was made here, the court continued. While the specification uses the terms “attached” and “embedded” as alternatives and the plain and ordinary meaning of the latter is “attached within,” the terms are not inconsistent, the court reasoned. Moore explained:

There is nothing inconsistent about the applicant’s use of the narrower term, “embedded,” to describe embodiments affixed to an internal surface. The plain and ordinary meaning of embedded, “attached within,” is narrower than “attached.” Hence it makes sense that the applicant would want to use embedded when it meant to explicitly claim attached to the inside only. That does not mean the word attached automatically means attached to the external surface, as opposed to the broader plain meaning – attached to either the interior or exterior.

It is true that in certain pre-Phillips cases, we held that use of two terms as alternatives could amount to an implicit redefinition of the terms. See Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1271 (Fed. Cir. 2001). But the “implied” redefinition must be so clear that it equates to an explicit one. In other words, a person of ordinary skill in the art would have to read the specification and conclude that the applicant has clearly disavowed claim scope or has acted as its own lexicographer. Simply referring to two terms as alternatives or disclosing embodiments that all use the term the same way is not sufficient to redefine a claim term.

Continuing, the appellate court went on to agree with that the district court also erred in reading the term “flexible” to mean “capable of being noticeably flexed with ease.”  Moore said that neither the claims nor the specification requires the “flexible” to be read so narrowly. “The specification says only that the flexible pad must be a semi-rigid structure,” she clarified.

The judgment of noninfringement was vacated and remanded.

Moore’s opinion was joined by Chief Judge Randall R. Rader and Chief Judge Ann L. Aiken of the U.S. District Court for the District of Oregon, sitting by designation.

Thorner was represented by Matthew G. McAndrews of Niro, Haller & Niro, Chicago.

Sony was represented by Daniel Johnson Jr. of Morgan, Lewis & Bockius, San Francisco.

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