By Jason Rantanen
Toshiba Corporation v. Imation Corp. (Fed. Cir. 2012) Download 11-1204
Panel: Moore (author), Schall, and Dyk (concurring-in-part and dissenting-in-part)
Dissents in Federal Circuit opinions dealing with claim construction often reflect disagreements over the correct methodology or execution. Judge Dyk's dissent in Toshiba goes a step further, proposing a claim construction different from those advanced by either side.
The technology in Toshiba involves DVDs. Toshiba's patent No. 5,831,966 claims a recording medium containing a "management region" that contains information about the structure of the medium - specifically, "number-of-recording planes identifying information that represents the number of recording planes of the recording medium." The district court construed this as "information whose purpose is to identify the number of recording planes on the recording medium." Slip Op. at 15 (emphasis in CAFC opinion). This "purpose" construction mattered because the patent holder accused single-sided DVDs of infringing the '966 patent. These single-sided DVDs contain information that identifies the number of planes on that side - effectively providing information on the disc as a whole. Because the purpose of the information on the single-sided DVDs is only to identify the planes on one side of the disc, however, the district court concluded that the accused discs do not infringe.
On appeal the majority disagreed with the district court's construction, agreeing with Toshiba that the limitation should be given its plain and ordinary meaning as recited in the claim itself. "The language of the claim only requires that the information "represents" the number of recording planes." Slip op. at 17. The majority declined to read the embodiments of the specification into the claims. "Absent disclaimer or lexicography, the plain meaning of the claim controls." Slip Op. at 19.
Judge Dyk, writing in dissent, saw the issue differently. In his view, the "number of recording planes" limitation requires the identification of both the number of disc sides and the number of layers per side, a construction neither party advanced. To support this construction, he took a stronger view of the effect of the specification and the prosecution history than the majority. In his opinion, "the specification and the prosecution history of the ’966 patent make clear that the central objective of the patent was to identify whether an optical disc was a one-sided disc or a two-sided disc." Slip Op. at 27. Given this construction, he would have affirmed the district court's grant of summary judgment of non-infringement.
Indirect Infringement: The district court granted summary judgment of no indirect infringement of a second patent, No. 5,892,751, based on the conclusion that recording a DVD without finalizing it (the step necessary to allow the DVD to be played on drives other than it was recorded) was a substantial noninfringing use. On appeal, the Federal Circuit affirmed in the context of contributory infringement but reversed for inducement of infringement. Here, Toshiba failed to present any evidence that the recording and playing of unfinalized DVDs - which does not infringe the '751 patent - is "unusual, far-etched, illusory, impractical, occasional, aberrant, or experimental." Slip Op. at 8 (quoting Vita-Mix, 581 F.3d 1317, 1327 (Fed. Cir. 2009). Furthermore, merely recommending an infringing use (finalizing the DVD) is not evidence that a non-infringing use is not a substantial use. The substantial noninfringing use thus supported the grant of summary judgment of no contributory infringement. However, the district court erred in holding that the existence of a such a use precludes a finding of inducement of infringement. Nor could summary judgment of no inducement be affirmed on the ground that the patentee did not provide evidence of specific acts of infringement: circumstantial evidence can suffice. Here, the circumstantial evidence was stronger than the "capable of infringing" evidence involved in Fujitsu v. Netgear, 620 F.3d 1321 (Fed. Cir. 2010) and ACCO Brands v. ABA Locks, 501 F.3d 1307 (Fed. Cir. 2007).