Construing patent claims can be hard. Most of the time you will need to read the entire patent to begin to make sense of the quasi-English that’s used. I frequently hear engineers lament reading them to figure out what the heck they say. Good thing we trust judges and lawyers to do this, right? Right.
Legal Question or Factual Question?
But is this a legal question or factual question? Why do we care? A proper claim construction and questions about intrinsic evidence are decided de novo (without deference to the lower court), but “[s]ubsidiary fact-finding” based on extrinsic evidence is sometimes useful, and such fact-finding is “subject to appellate review for clear error” (giving deference to the lower court).
Bottom Line
The Court of Appeals for the Federal Circuit held “[w]here claims are construed based on intrinsic evidence alone, a decision on claim construction is not different in kind from the interpretation of other legal standards, which is proper and routine in ruling on a motion under Rule 12(b)(6).”
Background: UTTO Inc. v. Metrotech Corp.
UTTO Inc., the owner of a patent for a method of detecting and identifying underground utility lines (“buried assets”), sued Metrotech Corp. for patent infringement and tortious interference with prospective economic advantage under California law. The district court dismissed both claims.
UTTO Patent
UTTO’s patent describes a method for detecting and identifying buried assets using a combination of GPS and previously stored buried asset data. The core of the process involves generating a buffer zone around a buried asset and informing a field technician with a locator device whether they are inside or outside the buffer zone.
UTTO’s Claim Dismissed
UTTO alleged that Metrotech’s RTK-Pro locator device, which has a “walk back” feature that allows users to connect to a database and retrieve location points, infringed its patent. The district court, however, construed the claim language “group of buried asset data points” to require “two or more” data points, and dismissed UTTO’s infringement claim because Metrotech’s walk back feature requires only a single point.
Analysis
The Federal Circuit disagreed with the district court’s claim construction, holding that additional analysis and proceedings were needed to arrive at a proper construction of the disputed claim language. The court noted that the claim language does not appear to be the kind of language that has a “plain” meaning that would require meeting a high standard of redefinition or disclaimer to overcome. The court also noted that the specification of UTTO’s patent seems to support UTTO’s proposed claim construction as including one or more data points.
The Federal Circuit also held that extrinsic evidence may be helpful in this case to understand the invention as disclosed. For example, extrinsic evidence may help to assess Metrotech’s argument that there is no indication that UTTO’s patent allows the operator to turn off the functions performed on data points and then to work with only a “portion” of the data points retrieved.
Conclusion
The Federal Circuit vacated the district court’s dismissal of UTTO’s infringement claim and remanded for further claim construction proceedings. The court did not decide whether the district court’s claim construction was correct but held that additional analysis and proceedings were needed to arrive at a proper construction.
Full opinion here: https://cafc.uscourts.gov/opinions-orders/23-1435.OPINION.10-18-2024_2404584.pdf
