Blackbird Tech LLC v. Elb Electronics, Inc.
Opinion of the Court
Moore, Circuit Judge.
Blackbird Tech LLC ("Blackbird") appeals the U.S. District Court for the District of Delaware's entry of judgment of noninfringement of claim 12 of
BACKGROUND
Blackbird owns the '747 patent, which is directed to energy efficient lighting apparatuses. '747 patent at Abstract, 2:24-3:16. One embodiment, illustrated in Figure 5 below, discloses retrofitting an existing light fixture with a more energy efficient lighting apparatus.
*1376
Blackbird sued ELB Electronics, Inc., ETi Solid State Lighting Inc., and Feit Electric Company, Inc. (collectively, "Defendants") for infringing claim 12 of the '747 patent. It recites:
12. An energy-efficient lighting apparatus for retrofit with an existing light fixture having a ballast cover , comprising:
a housing having an attachment surface and an illumination surface ;
a plurality of illumination surface holes in the illumination surface;
a circuit board comprising a plurality of light-emitting diodes, wherein the circuit board is positioned adjacent the housing so that the plurality of light-emitting diodes protrude through the plurality of illumination surface holes in the illumination surface; and
a fastening mechanism for securing the attachment surface of the lighting apparatus to the illumination surface , wherein the lighting apparatus is coupled to a wall switch and wherein the illumination of the light-emitting diodes is controllable based upon the position of the wall switch.
The parties disputed the meaning of "attachment surface," specifically whether the attachment surface must be secured to the ballast cover. Blackbird proposed construing "attachment surface" as "layer of the housing to which the illumination surface is secured," and Defendants proposed "layer of the housing that is secured to the ballast cover and to which the illumination surface is secured." J.A. 7. The district court construed "attachment surface" as "layer of the housing that is secured to the ballast cover." J.A. 7-9.
Following claim construction, Blackbird stipulated to noninfringement, and the district court entered judgment in favor of Defendants. Blackbird timely appeals. We have jurisdiction under
DISCUSSION
We review claim construction based solely on intrinsic evidence de novo.
*1377Poly-Am., L.P. v. API Indus., Inc. ,
We conclude that the district court erred in construing "attachment surface" to be secured to the ballast cover. By its plain language, claim 12 does not require the attachment surface to be secured to the ballast cover. Claim 12 expressly recites a fastening mechanism for securing the attachment surface to the illumination surface. It does not refer to any other fastening mechanism. It does not require the attachment surface be secured to anything other than the illumination surface.
The district court nevertheless read in a second fastening mechanism-this one to secure the attachment surface to the ballast cover. As discussed, the specification discloses an embodiment for an energy efficient lighting apparatus that can be retrofitted on an existing fixture, and that embodiment describes a fastener that connects the ballast cover to the attachment surface. See, e.g. , '747 patent at 2:65-3:10, 9:1-10:28, Fig. 5. We do not agree that this fastener limitation should be imported into the claim.
There is no suggestion in the specification or prosecution history that this fastener is important in any way that would merit reading it into claim 12. In fact, in describing the embodiment in Figure 5, the specification explains that the fastening can be achieved by "many different types of fastening mechanisms" including "an adhesive strip" (think tape), "a magnet, clips, screws, etc." '747 patent at 9:40-51. It never refers to this run-of-the-mill fastener as the "present invention" or "an essential element" or uses any other language that would cause the ordinarily skilled artisan to believe that this fastening mechanism is an important component of the invention or that it is critical to the invention for any reason.
And possibly the most important reason why the fastener for connecting the attachment surface to the ballast cover disclosed in an embodiment ought not be imported into the claim is because that limitation was originally present in claim 12 and was expressly eliminated during prosecution. Claim 12 was initially rejected under
Defendants argue the prosecution history is ambiguous because the examiner's requirement that the change be made "to resolve [§] 112 issues" provides no explanation for the amendment. This argument is both factually incorrect and legally irrelevant to how a skilled artisan reading this history would understand the claim scope. The examiner stated, and the applicant never contradicted, that the amendment was required for § 112 reasons. Any skilled artisan would understand that if an examiner requires an amendment for § 112 reasons it is an amendment required for patentability. As a factual matter, no skilled artisan would understand this claim to require a fastening mechanism connecting the ballast cover to the attachment surface when that very limitation was expressly removed from the claim to secure patentability with the examiner's blessing and agreement. We review the prosecution history from the perspective of an ordinary artisan and what he would understand from its contents. The only takeaway here is that claim 12 needs a fastening mechanism to secure the attachment surface to the illumination surface, not to the ballast cover, because this was the only change made at the examiner's request for § 112 reasons. A person of ordinary skill in the art may not be able to divine what transpired between the applicant and the examiner in that interview that caused the change in claim language and scope. That is irrelevant to the issue. We look at what an ordinarily skilled artisan would understand about claim scope from reading the prosecution history. See, e.g. , Fenner Invs., Ltd. v. Cellco P'ship ,
Defendants argue the preamble, "[a]n energy-efficient lighting apparatus for retrofit with an existing light fixture having a ballast cover," requires reading in the disclosed fastener for the claim to achieve its "retrofit" function. A requirement such as this, according to Defendants, is sufficient not only to read into a claim a limitation that is not present, but also to read into the claim the precise mechanism by which that retrofitting shall be achieved. The only claim at issue is claim 12, and it is an apparatus, not a method claim. The apparatus disclosed in claim 12 is structurally complete as claimed. An apparatus claim is not required to include all elements necessary for the claimed structure's installation. This claim does not recite how the lighting apparatus is installed into an existing light fixture, and it is not required to do so.
We have considered Defendants' remaining arguments and find them unpersuasive.
CONCLUSION
We conclude the district court erred in construing "attachment surface," and adopt Blackbird's construction of "layer of the housing to which the illumination surface is secured." Because the court's entry of judgment of noninfringement was based on its erroneous construction, we vacate the entry of judgment and remand for further proceedings.
VACATED AND REMANDED
COSTS
Costs to Blackbird.
The specification explains that the ballast is an electronic component that maintains a current through the fluorescent lights to illuminate them. Id. at 5:1-14, 65-67. The ballast cover conceals the ballast and other wiring. Id. at 5:2-4.
This fastener is also mentioned in the "Summary of the Invention." '747 patent at 2:65-3:10. The Summary of the Invention often spans many paragraphs, columns, or even pages. In cases where we have held limitations ought to be read in, it was not simply because those limitations appeared in the Summary of the Invention. There was specific language that made clear those limitations were important to the claimed invention. See, e.g. , Regents of Univ. of Minn. v. AGA Med. Corp. ,
Dissenting Opinion
The sole issue on appeal is whether the "attachment surface" in claim 12 must be secured to the ballast cover of the existing light fixture. Because I conclude that the district court correctly construed "attachment surface" to mean "layer of the housing that is secured to the ballast cover," I respectfully dissent.
Claim 12 does not expressly require that the attachment surface be attached to anything other than to the illumination surface. However, claim 12 does expressly describe a lighting apparatus "for retrofit with an existing light fixture having a ballast cover ." '747 patent col. 11 ll. 26-27 (emphases added). The majority fails to give meaning to these claim terms by holding that "attachment surface" means "layer of the housing to which the illumination surface is secured," and concludes that the patent owner is entitled to patent scope that is neither described in nor supported by the specification.
The plain language of claim 12, read in the context of the specification, implicitly *1380requires that the attachment surface be secured to the ballast cover to achieve the retrofit function. Apart from the preamble, which the parties agree is limiting, claim 12 contains no reference to the ballast cover, the existing light fixture, or where or how the apparatus is retrofit with the existing light fixture. Because the only feature of the existing light fixture described in claim 12 is the ballast cover, a person of ordinary skill would necessarily conclude that the attachment surface is secured to the ballast cover of the existing light fixture. This would not be a big leap.
The disputed term "attachment surface" appears only in claims related to the retrofit function-namely claim 12, the disputed claim, claim 29, which describes a method for retrofitting a light fixture, and various associated dependent claims. As the word "retrofit" in the preamble of claim 12 implies securing the lighting apparatus to something, it is reasonable to conclude that the "attachment surface" is involved with achieving the retrofit function.
The structure of the claim language gives further support that the "attachment surface" has a function associated with the retrofit function. Along with the "illumination surface," the attachment surface is one of two identified surfaces of the lighting apparatus's housing, and is secured to the illumination surface via a fastening mechanism. See
Every single embodiment of the retrofit lighting apparatus in the specification describes securing the attachment surface to the ballast cover of the existing light fixture. The specification expressly discloses retrofitting by securing the attachment surface to the ballast cover in the summary of the invention, see '747 patent col. 2 l. 65-col. 3 l. 10; col. 3 ll. 46-49 (describing "[a] method for retrofitting a light fixture with an energy-efficient lighting apparatus," in which "[t]he method also involves securing the attachment surface of the housing to the ballast cover " (emphasis added) ), and in the embodiment disclosed in connection with Figure 5, see
The majority ignores the retrofit function that the attachment surface plays in the lighting apparatus. See Medrad, Inc. v. MRI Devices Corp. ,
*1381beyond what is already described in the claim language. See Apple, Inc. v. Ameranth, Inc. ,
The majority's construction thus opens the door for the '747 patent to be subsequently invalidated for failure to satisfy the written description requirement. Stated differently, the majority's construction is a route towards rendering the patent invalid. See Carman Indus., Inc. v. Wahl ,
Worse still, because the majority's construction "does not recite how the lighting apparatus is installed into an existing light fixture,"
29. A method for retrofitting a light fixture with an energy-efficient lighting apparatus, the light fixture having a ballast cover, the method comprising:
providing a housing having an attachment surface and an illumination surface, wherein the illumination surface comprises a plurality of illumination surface holes;
providing a circuit board comprising a plurality of light-emitting diodes;
positioning the circuit board adjacent the housing so that the plurality of light-emitting diodes protrude through the plurality of illumination surface holes in the illumination surface; and
securing the attachment surface of the housing to the illumination surface, wherein the lighting apparatus is coupled to a wall switch and wherein the illumination of the light-emitting diodes is controllable based upon the position of the wall switch.
'747 patent, col. 12 ll. 52-60 (emphasis added).
We cannot discount the importance of the retrofit aspect to the invention as a whole. The specification clearly details the importance of retrofitting energy-efficient lighting apparatuses into preexisting light fixtures as a means of achieving energy savings without incurring significant expense. '747 patent, col. 9 ll. 5-10; col. 10 ll. 6-9. Yet the majority contends that claim 12, as an apparatus claim, is structurally complete as construed and need not describe the method of installation.
*1382Maj. Op. at 1379. But because the majority's construction does not disclose how the apparatus is installed, securing the retrofit apparatus to the preexisting light fixture falls outside of the scope of the claims. If "attachment surface" is not construed as being secured to the ballast cover, claim 29 utterly fails to disclose how the retrofit function is to be achieved. As the district court properly noted during the Markman hearing, the lighting apparatus for retrofit "ha[s] to be attached to something" and cannot "hover ... like a ghost." J.A. 254.
The majority's reliance on the prosecution history is similarly misplaced. The prosecution history "can often inform the meaning of the claim language by demonstrating how the inventor understood the invention" but "lacks the clarity of the specification and thus is less useful for claim construction purposes." Phillips ,
Because the intrinsic record fully supports the construction of attachment surface as being secured to the ballast cover, I respectfully dissent.
Reference
- Full Case Name
- BLACKBIRD TECH LLC, DBA Blackbird Technologies, Plaintiff-Appellant v. ELB ELECTRONICS, INC., ETi Solid State Lighting Inc., Feit Electric Company Inc., Defendants-Appellees
- Cited By
- 14 cases
- Status
- Published