By: Karin C. Khan

On appeal of summary judgment granted to Defendants Dell, Inc., Gateway, Inc., Toshiba America, Inc., and Toshiba America Information Systems, Inc. (“Defendants”), the Court of Appeals reviewed whether the District Court had correctly decided that Defendants did not infringe Plaintiff’s patent of a portable computer with a docking connector for peripheral devices. Specifically, the patent in controversy claims a portable microprocessor system with sufficient processing power, memory, and network compatibility for business applications.

The Court of Appeals reviews a grant of a summary judgment of non-infringement without deference. The first step is to review the claim construction without deference, and the second step is to determine whether there was no genuine issue of material fact.

The Court of Appeals reviewed the preamble used by the Plaintiff in its claims. During claim construction, the District Court had decided that the terms “portable computer” and “portable computer microprocessing system” limited the scope of the claims. While the terms describe an essential feature of the claimed invention in the specification, namely, portability, the terms limited the scope of the claims due to the fact that this limitation did not appear in the body of the claims. The Court of Appeals agreed with the District Court’s interpretation.

Also during claim construction, the District Court had also decided that the terms “portable computer” and “portable computer microprocessing system” excluded computers with built-in displays or keyboards. This decision was made after a review of Plaintiff’s prosecution history in which the differences between the claimed invention and laptop computers was argued in order to overcome a prior art reference. As such, the statements made during prosecution history were affirmed by the Court of Appeals to be a disavowal that the claimed invention included computers with built-in displays or keyboards, such as a laptop.

Furthermore, the District Court had decided that the “single connector” in the claimed invention required that all individual peripheral device connections that connect to the microprocessor of the claimed invention should also pass through the single connector. This issue was disputed by Defendants since the parties could not agree on the form of judgment. However, since the Court of Appeals affirmed the District Court’s finding of non-infringement, it did not address the disputed issue of the single connector.

Additionally, the Court of Appeals affirmed the District Court’s refusal to find the case exceptional even though Plaintiff decided to continue litigation in light of the claim construction. Thus, no attorney fees or costs were awarded.