Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275, 2010 U.S. App. LEXIS 969 (Fed. Cir. 2010) (LINN & Friedman; DYK, concurring in result & dissenting in part)
MAJOR ISSUES: Claim construction; prosecution disclaimer.
In construing words and phrases in a patent’s claim to determine either patentability or infringement, weight is given to the prosecution history. It can be a close call whether an applicant’s statements and arguments to the PTO during prosecution narrow or the limit the claim. This case is an example where the call went in the patent owner’s favor.
On use of prosecution history in claim construction, see Chisum on Patents 18.03[2][d]; Chisum Patent Law Digest 5225.
1. USER RECOGNIZING ELEVATOR SYSTEM The patent concerned an elevator system that recognizes a user and the user’s (usual) destination floor. U.S. Pat. No. 5,689,094. U.S.Pat.No.5689094
In the specification and prosecution history, the patent owner emphasized that the system was “hands-free,” “automatic,” and “contactless.” In an accused system, the user brings a card programmed with the user’s identification (ID) number into the range (3.5 inches) of a card reader on a security turnstile. The card transmits the ID to the card reader, and the system dispatches an elevator, displaying its number on the turnstile. The district court held that the patent owner disclaimed any system in which any “personal action” by the user was required. It therefore granted summary judgment of non-infringement.
2. DISCLAIMER GIVEN TOO BROAD A SCOPE. The district court erred by giving too broad a scope to the disclaimer. By the disclaimer, the patent owner distinguished prior art in which the user manually pressed buttons to actuate a transmitter and select default journeys. The patent owner thereby disclaimed personal action by a user after the transmitter is brought within recognition range. However, the patent owner did not disclaim coverage of a system in which the user takes personal action to bring the transmitter with the recognition device’s range, including swiping of a card.
3. DYK, DISSENTING. Judge Dyk dissented, arguing that the patent owner could have distinguished the prior art on other grounds but chose to rely on hands-free operation. He noted that “a disclaimer cannot be avoided simply by pointing out that the prior art could have been distinguished on another ground.”
