X2Y v. ITC: Claim Scope Limited by Disavowal in Specification

On July 7, 2014, the Federal Circuit affirmed the Commission’s decision that no violation of Section 337 occurred in the 781 Investigation. X2Y Attenuators, LLC v. Int’l Trade Cmm’n, No. 2013-1340, 2014 WL 3029884 (Fed. Cir. July 7, 2014). The Commission adopted ALJ Shaw’s initial determination that the accused products of respondent Intel did not infringe the asserted patents. The only dispute the Federal Circuit addressed was a matter of claim construction; the Court agreed with the Commission’s determination that the patentees narrowed the scope of their claims by making certain statements in the specifications of the asserted patents. Judge Moore wrote the Federal Circuit opinion, in which Judges Reyna and Wallach joined.

The three asserted patents were part of a family of patents owned by complainant X2Y that claimed structures for reducing electromagnetic interference in electrical circuits.  The parties disputed the proper construction of a set of terms related to the configuration of electrodes.  While the terms were different among the three asserted patents, the central dispute was the same—whether these claim terms were limited to a specific configuration of electrodes, or should be given their plain and ordinary meaning.   The ALJ determined that these terms were limited to a specific configuration, based on a specific disavowal of other configurations in the specification of two of the patents.  The Commission adopted that determination.  X2Y had conceded that none of the accused Intel products infringed under that construction, and the Commission therefore found no violation of Section 337.

The Federal Circuit agreed that the language of the specification constituted a “clear and unmistakable disavowal of claim scope.”  In particular, the Federal Circuit pointed to statements that the configuration was “universal to all the embodiments” and is “an essential element among all embodiments or connotations of the invention.”  The Federal Circuit also noted that similar disavowals in patents that had been incorporated by reference into the asserted patents, while not necessarily conclusive, supported the limited construction Intel had proposed.