Thorner v. Sony Computer Entertainment America LLC

United States Court of Appeals

for the Federal Circuit

__________________________

CRAIG THORNER AND,

VIRTUAL REALITY FEEDBACK CORPORATION,

Plaintiffs-Appellants,

v.

SONY COMPUTER ENTERTAINMENT AMERICA

LLC,

SONY COMPUTER ENTERTAINMENT INC.,

SONY ELECTRONICS INC., AND RILEY RUSSELL

Defendants-Appellees,

and

GREGORY S. GEWIRTZ, LERNER DAVID

LITTENBERG

KRUMHOLTZ & MENTLIK, LLP, LARRY C. RUSS,

MARC A. FENSTER, AND RUSS AUGUST & KABAT,

Defendants.

__________________________

2011-1114

__________________________

Appeal from the United States District Court for the

District of New Jersey in case no. 09-CV-1894, Chief

Judge Garrett E. Brown, Jr.

___________________________

Decided: February 1, 2012

___________________________

THORNER v. SONY COMPUTER 2

MATTHEW G. MCANDREWS, Niro, Haller & Niro, of

Chicago, Illinois, argued for plaintiffs-appellants. With

him on the brief was RAYMOND P. NIRO, JR.

DANIEL JOHNSON, JR., Morgan, Lewis & Bockius LLP,

of San Francisco, California, argued for defendants-

appellees.

__________________________

Before RADER, Chief Judge, MOORE, Circuit Judge and

AIKEN, District Judge. *

MOORE, Circuit Judge.

Craig Thorner and Virtual Reality Feedback Corpora-

tion (Appellants, collectively) accused Sony Computer

Entertainment America LLC and a number of other Sony

entities (Sony, collectively) of infringing claims of U.S.

patent no. 6,422,941 (’941 patent) relating to a tactile

feedback system for computer video games. The district

court construed disputed claim terms and the parties

stipulated to a judgment of noninfringement. Because the

district court improperly limited the term “attached to

said pad” to mean attachment only to an external surface

and erred in its construction of the term “flexible”, we

vacate and remand.

BACKGROUND

The ’941 patent describes a tactile feedback system for

use with video games. Figure 2 shows the many different

embodiments of the invention:

* The Honorable Ann L. Aiken, Chief Judge, United

States District Court for the District of Oregon, sitting by

designation.

3 THORNER v. SONY COMPUTER

Tactile feedback controller 110 is part of a larger gaming

system that operates one or more of the devices shown

above. Each device includes some type of actuator that

provides tactile feedback to a user in response to certain

game activities. ’941 patent col.2 ll.44-52. For instance,

the actuators in hand-held game controller 598 may

vibrate during a crash in a car racing game. Independent

claim 1 requires “a flexible pad,” “a plurality of actuators

attached to said pad” and a control circuit that activates

the actuators in response to game activity. The accused

products are hand-held game controllers.

Two claim limitations are relevant to this appeal,

“flexible pad” and “attached to said pad.” The district

court held that flexible does not mean simply “capable of

being flexed.” Thorner v. Sony Computer Entm’t Am.

LLC, No. 09-cv-1894, 2010 WL 3811283, at *3 (D.N.J.

Sept. 23, 2010). It reasoned that this definition was

inappropriate because “[m]any objects that are capable of

being flexed are not flexible. A steel I-beam is capable of

being flexed, but no one would call it ‘flexible.’” Id. The

THORNER v. SONY COMPUTER 4

court thus construed the term to mean “capable of being

noticeably flexed with ease.” Id.

The district court then turned to the construction of

“attached to said pad.” Id. at *5-7. Appellants argued

that attached should be given its plain and ordinary

meaning and that an actuator can be attached to the

inside of an object. Sony argued that “attached to said

pad” should be construed as affixed to the exterior surface

of the pad and does not include embedded within said

pad. The court held that “the specification redefines

‘attached’ by implication.” Id. at *6. The court held that

the word attached was limited to attached to the outside

of an object because the embodiments in the specification

consistently use the term “attached” to indicate affixing

an actuator to the outer surface of an object and use the

word “embedded” when referring to an actuator inside an

object. For additional support for the notion that at-

tached and embedded have different meanings, the court

pointed to claim 1 which uses the word “attached” and

dependent claim 10 which uses the word “embedded.” Id.

Following claim construction, the parties stipulated to

noninfringement by the accused products. They stated

that “under the Court’s construction of the phrase ‘at-

tached to said pad,’ Defendants have not infringed . . . .”

The stipulation further stated that the “parties reserve

their rights to challenge this or any other construction of

the disputed claim phrases of the ’941 patent on appeal.”

J.A. 14-15. We have jurisdiction over this appeal under

28 U.S.C. § 1295(a)(1).

DISCUSSION

We review claim construction de novo. Cybor Corp. v.

FAS Techs., Inc., 138 F.3d 1448, 1455-56 (Fed. Cir. 1998)

(en banc). The words of a claim are generally given their

ordinary and customary meaning as understood by a

5 THORNER v. SONY COMPUTER

person of ordinary skill in the art when read in the con-

text of the specification and prosecution history. See

Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.

2005) (en banc). There are only two exceptions to this

general rule: 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. Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996).

The use of the term “attached” in this specification does

not meet either of these exceptions.

To act as its own lexicographer, a patentee must

“clearly set forth a definition of the disputed claim term”

other than its plain and ordinary meaning. CCS Fitness,

Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir.

2002). It is not enough for a patentee to simply disclose a

single embodiment or use a word in the same manner in

all embodiments, the patentee must “clearly express an

intent” to redefine the term. Helmsderfer v. Bobrick

Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir.

2008); see also Kara Tech. Inc. v. Stamps.com, 582 F.3d

1341, 1347-48 (Fed. Cir. 2009). “[T]he inventor’s written

description of the invention, for example, is relevant and

controlling insofar as it provides clear lexicography . . .”

C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862

(Fed. Cir. 2004) (emphasis added). For example, in 3M

Innovative Properties Co. v. Avery Dennison Corp., we

held that the patentee acted as its own lexicographer

when the specification stated: “‘Multiple embossed’

means two or more embossing patterns are superimposed

on the web to create a complex pattern of differing depths

of embossing.” 350 F.3d 1365, 1369, 1371 (Fed. Cir.

2004). Similarly, we limited a patentee to particular

examples of solubilizers when it stated in the specification

that “[t]he solubilizers suitable according to the invention

THORNER v. SONY COMPUTER 6

are defined below.” Astrazeneca AB v. Mutual Pharm.

Co., 384 F.3d 1333, 1339 (Fed. Cir. 2004).

The standard for disavowal of claim scope is similarly

exacting. “Where the specification makes clear that the

invention does not include a particular feature, that

feature is deemed to be outside the reach of the claims of

the patent, even though the language of the claims, read

without reference to the specification, might be considered

broad enough to encompass the feature in question.”

Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys.,

Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001). “The patentee

may demonstrate intent to deviate from the ordinary and

accustomed meaning of a claim term by including in the

specification expressions of manifest exclusion or restric-

tion, representing a clear disavowal of claim scope.”

Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325

(Fed. Cir. 2002); see also Home Diagnostics, Inc. v. LifeS-

can, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“Absent a

clear disavowal in the specification or the prosecution

history, the patentee is entitled to the full scope of its

claim language.”). For example, in Scimed, the patentee

described two different types of catheters in the prior art,

those with dual lumens (side-by-side) and those with

coaxial lumens. 242 F.3d at 1339. In discussing the prior

art, the patentee disparaged the dual lumen configuration

as larger than necessary and less pliable than the coaxial

type. Id. at 1342. Further, the specification repeatedly

described the “present invention” as a coaxial design. Id.

Finally, the specification stated: “The intermediate sleeve

structure defined above [coaxial design] is the basic sleeve

structure for all embodiments of the present invention

contemplated and disclosed herein.” Id. at 1343 (empha-

sis in original). This court held that collectively this

amounted to disavowal of the dual lumen design.

7 THORNER v. SONY COMPUTER

Mere criticism of a particular embodiment encom-

passed in the plain meaning of a claim term is not suffi-

cient to rise to the level of clear disavowal. Epistar Corp.

v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir.

2009) (holding that even a direct criticism of a particular

technique did not rise to the level of clear disavowal). In

Spine Solutions, Inc. v. Medtronic Sofamor Danek USA,

Inc., we explained that even where a particular structure

makes it “particularly difficult” to obtain certain benefits

of the claimed invention, this does not rise to the level of

disavowal of the structure. 620 F.3d 1305, 1315 (Fed. Cir.

2010). It is likewise not enough that the only embodi-

ments, or all of the embodiments, contain a particular

limitation. We do not read limitations from the specifica-

tion into claims; we do not redefine words. Only the

patentee can do that. To constitute disclaimer, there

must be a clear and unmistakable disclaimer.

It is the claims that define the metes and bounds of

the patentee’s invention. Phillips, 415 F.3d at 1313. The

patentee is free to choose a broad term and expect to

obtain the full scope of its plain and ordinary meaning

unless the patentee explicitly redefines the term or dis-

avows its full scope.

Claim 1 of the patent at issue includes the disputed

claim terms:

In a computer or video game system, apparatus

for providing, in response to signals generated by

said computer or video game system, a tactile sen-

sation to a user of said computer or video game

system, said apparatus comprising:

a flexible pad;

a plurality of actuators, attached to said pad, for

selectively generating tactile sensation; and

THORNER v. SONY COMPUTER 8

a control circuit . . . for generating a control signal

to control activation of said plurality of actua-

tors . . . .

(emphasis added).

I. “attached to said pad”

Appellants argue that the district court erred by hold-

ing that the specification implicitly defined “attached” to

mean “affixed to an exterior surface.” They argue that the

term does not require any construction and that the plain

and ordinary meaning includes affixing an item to either

an exterior or an interior surface. They contend that the

specification explicitly states whether an attachment is to

an interior or exterior surface: “a vibratory actuator can

be attached to [the] outer side of the throttle handle.”

Appellant’s Br. 13 (quoting ’941 patent col.39 ll.58-60).

They argue this shows that when the applicant wished to

distinguish an internal from an external attachment, he

did so with deliberate, express language. Thus, appellants

argue that the specification contemplates “attached” to

have its plain and ordinary meaning—attached to either

an interior or exterior surface. Finally, appellants argue

that the fact that claim 10 includes the word “embedded”

does not mean that “attached” can only mean connected to

an exterior surface. Rather, appellants argue that “em-

bedded” is merely a narrower term that includes only

attachment to an interior surface.

Sony responds that the patent clearly identified two

different connections, “attached to” and “embedded

within.” It argues that in every instance where the speci-

fication uses the term “attached,” it refers to an attach-

ment to an outer surface. Conversely, in every

embodiment where the actuator is placed inside a hous-

ing, the specification uses the term “embedded.” See, e.g.,

’941 patent col.32 l.66 (“embedded within or attached to”).

9 THORNER v. SONY COMPUTER

Our case law is clear, claim terms must be given their

plain and ordinary meaning to one of skill in the art.

Phillips, 415 F.3d at 1316. The plain meaning of the term

“attached” encompasses either an external or internal

attachment. We must decide whether the patentee has

redefined this term to mean only attachment to an exter-

nal surface. As Sony argues, the specification repeatedly

uses the term “attached” in reference to embodiments

where the actuators are “attached to [an] outer side.” ’941

patent col.33 ll.40-41. In fact, the specification never uses

the word “attached” when referring to an actuator located

on the interior of a controller. We hold that this does not

rise to the level of either lexicography or disavowal. Both

exceptions require a clear and explicit statement by the

patentee. CCS Fitness, 288 F.3d at 1366; Teleflex, 299

F.3d at 1325. It is not enough that the patentee used the

term when referencing an attachment to an outer surface

in each embodiment. See Kara Tech., 582 F.3d at 1347-

48. In fact, the specification explains that an actuator

was “attached to [an] outer surface.” See ’941 patent

col.33 ll.40-41. If the applicant had redefined the term

“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 specifica-

tion. We conclude that the term attached should be given

its plain and ordinary meaning. The specification does

not redefine attached nor is there any disavowal.

The fact that the specification uses the two terms “at-

tached” and “embedded” as alternatives does not require a

different result. See, e.g., id. col.32 l.66. 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 “at-

tached.” Hence it makes sense that the applicant would

THORNER v. SONY COMPUTER 10

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 – at-

tached 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 alterna-

tives or disclosing embodiments that all use the term the

same way is not sufficient to redefine a claim term.

Other parts of the claim and specification also support

this construction. The claim at issue requires a “flexible

pad.” The only embodiment in the specification that

includes flexible material is the seat cushion 510 shown in

Figure 2. The specification states that “the tactile feed-

back seating unit 510 is a semi-rigid flexible foam struc-

ture . . . with a plurality of actuators embedded within the

foam structure.” ’941 patent col.37 ll.6-10. Thus, the only

flexible embodiment in the specification has embedded

actuators. If we agreed with Sony that “attached” must

mean attached to an outer surface, then the claim would

exclude the only flexible embodiment disclosed in the

specification. This is further evidence that the term

“attached” should have its plain and ordinary meaning

which includes either internal or external attachments.

We hold that the term “attached to said pad” should

be given its plain and ordinary meaning which encom-

11 THORNER v. SONY COMPUTER

passes either internal or external attachment. Because

the parties based the stipulation of noninfringement on

the district court’s erroneous construction of this claim

term, we vacate and remand.

II. “flexible pad”

As an initial matter, Sony argues that our case law

precludes us from deciding claim construction issues that

are not implicated by the district court’s judgment.

Appellee’s Br. 25 (citing Mass. Inst. of Tech. v. Abacus

Software (MIT), 462 F.3d 1344, 1350 (Fed. Cir. 2006)). In

MIT, there was a stipulation of noninfringement. Despite

its success below, the accused infringer asked us to con-

strue a number of terms outside the stipulation on appeal

and this court declined to do so. Id. As an initial matter,

in this case, in contrast to MIT, the losing party has asked

us to review the claim construction. In MIT, it was the

prevailing party that made the request. As the court in

MIT recognized, the court has discretion to determine the

issues necessary for resolution of the appeal. Here the

term “flexible” was fully briefed and argued below, de-

cided by the district court and fully briefed and argued to

us on appeal. Moreover its claim construction is a ques-

tion of law properly before this court. We conclude that it

would waste judicial resources to refuse to decide this

issue on appeal.

Appellants argue that the term “flexible” simply

means “capable of being flexed” and that the district court

erred by requiring “capable of being noticeably flexed with

ease.” They note that the specification only uses the term

“flexible pad” when referring to a “semi-rigid” structure

and that a “semi-rigid” structure would certainly not be

“noticeably flexed with ease.” Appellant’s Br. 15-16

(citing ’941 patent col.37 ll.6-7, 24, 49).

THORNER v. SONY COMPUTER 12

Sony responds that although the specification uses

the term to refer to a “semi-rigid” structure, that struc-

ture is made out of foam in every embodiment. It argues

that foam is capable of being noticeably flexed with ease

and thus a rigid, barely bendable material should not be

considered “flexible.” Sony also points to portions of the

Markman hearing where the district court judge in-

spected one of the accused hard plastic controllers. The

judge noted that the controller was rigid and “[i]f I try to

flex this thing, I think that you’re going to see it snap.”

J.A. 523-24.

We agree with the appellants that the district court

improperly limited the term. Neither the claims nor the

specification requires the “flexible pad” to be noticeably

flexed with ease. The specification says only that the

flexible pad must be a semi-rigid structure. The task of

determining the degree of flexibility, the degree of rigidity

that amounts to “semi-rigid,” is part of the infringement

analysis, not part of the claim construction. The district

court is of course free on summary judgment to decide

that there is no genuine issue of material fact that the

accused products in this case do not meet the plain and

ordinary meaning of the term “flexible.” We do not mean

to suggest that summary judgment is improper in this

case, only that claim construction is the wrong venue for

this determination.

VACATED and REMANDED