Plain and Ordinary Meaning Requires More Than a Mere Capability

The Eastern District of Texas has granted-in-part Defendant HTC’s motion to strike expert testimony based on application of improper legal principles, to wit, the expert had improperly extended the plain and ordinary meaning of claims of U.S. Pat. No. 5,802,467 to encompass a mere capability to do the thing.  Salazar v. HTC Corp., Civil No. 2:16-cv-01096-JRG-RSP (E.D. Tex. May 2, 2018).

Individual Salazar sued HTC for infringement of a system using a smartphone to perform two-way communication with appliances.  A representative system claim recites, inter alia:

a microprocessor for generating a plurality of control signals used to operate said system, said microprocessor creating a plurality of reprogrammable communication protocols, for transmission to said external devices wherein each communication protocol includes a command code set that defines the signals that are employed to communicate with each one of said external devices; … (emphasis added).

Plaintiff’s expert witness testified that the communication protocol could include a ‘command code set’ could satisfy the claim.  More specifically, “when asked whether a communication protocol that did not include a command code set would satisfy this claim limitation, [the expert witness] responded, ‘[I]t’s a question of whether [the system] is capable of including a command code set that defines those signals to—you have to have—it needs to be capable.’”

Defendant HTC argued—and the court agreed—that the plain and ordinary meaning of the phrase requires more than a mere capability that the communication protocols include a command code set:  It requires actual inclusion.  Accordingly, the district court precluded Plaintiff from advancing any argument that, with respect to this limitation, mere capability of inclusion was sufficient.

Lessons for Practice

Although this is a U.S. District Court case, patent prosecutors know that examiners frequently follow the path of this expert and base rejections on the possibility that a claimed feature could encompass prior art.  This case is an indirect reminder to scrutinize such rejections.

More directly, it is always helpful to educate expert witnesses in patent cases with respect to the limitations of their testimony with respect to the claims.  That said, no judgments are made in the instant case, as we cannot be aware of Plaintiff’s strategies and options.

In general, when extrinsic evidence is deemed necessary by the court to construe the claims, a court may permit expert testimony to explain technically complex subject matter and provide background information to aid the court, and/or to show how technical terms should be properly interpreted within a particular field.  However, claim interpretation is a matter of law to be determined exclusively by the courts, Markman v. Westview Instruments, Inc.  Here, it appears that the expert’s testimony was viewed by the court as claim construction (e.g., not assistance in background information), and further, the claim construction was viewed in contradistinction to the plain and ordinary meaning of the claim in the court’s view:  that is, the court did not accept that the meaning of ‘each communication protocol includ[ing] a command code set’ means a protocol capable of including a command code set.

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