Context: In 2018, Fullview sued video conferencing company Polycom over U.S. Patent No. 6,128,143 on a “panoramic viewing system with support stand.” Judge Edward Chen of the United States District Court for the Northern District of California decided the technical merits in plaintiff’s favor on summary judgment, holding the patent both non-obvious and infringed. The defendant appealed.
What’s new: Today a Federal Circuit panel rendered its appellate opinion (PDF), with a two-judge majority (two Raymonds: Circuit Judges Raymond Chen and Raymond Clevenger) decided that the invalidity defense must be put before a jury, but is convinced of infringement per se (as was District Judge Edward Chen). Circuit Judge Timothy Dyk, however, takes a narrower view on what it takes for one object to be “secured” (or “fixed” or “attached”) to another, a question that is fairly likely to arise in future U.S. patent cases.
Direct impact & wider ramifications: Given that the panel could not agree on that question (though Judge Dyk did agree with the majority on the fact that the invalidity defense should be revived), and considering that terms like “secured” (such as “fixed” or “attached”) come up in more patent cases, the defendant might be able to obtain a rehearing en banc. It could also petition the Supreme Court. At this stage the panel opinion is, however, more likely than not to be the final word before the case goes back to the trial court, even more so because Circuit Judge Dyk’s concerns about an overly broad interpretation of “secured” may not be a practical issue in the case at hand.
The question at hand could be relevant to claim construction in other cases, but not so here, where it’s about how to apply a given claim construction. The district court and all three members of the appellate panel agreed on the following construction:
| claim language | judicial interpretation |
| “the plurality of image processing devices being secured to the support member” | “fix[ing] or attach[ing] the plurality of image processing devices firmly to the support member so that [the image processing devices] cannot be moved” |
In a way, the question is now about how to construe the district court’s claim construction: does an object A that is “secured” to an object B have to be fixed or attached directly or are intervening structures also covered by that interpretation?
In Fullview v. Polycom, the district court said:
“[The cameras] are mounted on an intervening structure: the cameras’ lens is epoxied to an image sensor, which in turn is soldered onto the circuit board, which is screwed to a steel chassis with a circular hole through which passes the support member. The support member is attached to the chassis with a washer and nut.”
But “not mounted directly.”
For the district judge and the majority of the Federal Circuit panel, that fact pattern meant that the patent was infringed because the cameras were “secured” to the support member.
All of the judges focused on what they believe is the common meaning of the word. But Judge Dyk looked up the Oxford English Dictionary and found examples where “the objects are directly secured to each other rather than through a chain of multiple intervening structures”:
- “securing books with chains”,
- “securing hair with a comb”, and
- “securing a door with a latch.”
Noting the difference between direct and indirect attachment, Judge Dyk says:
“[I]t would strain common usage of the term ‘secured’ or ‘attached’ to say one’s toe is secured or attached to one’s finger through the skeleton, or a passenger on an airplane is secured to the wing through the seatbelt, or that an apple on a tree is secured to the ground through the stem, tree trunk, and tree roots, or that a boat is secured to a dock by tying it to a different boat that is itself tied to the dock.”
It is ip fray‘s view that Judge Dyk’s concern is
- valid in terms of a warning against giving the terms in question (“secured”, “fixed”, “attached”) an overbroad meaning, but
- presumably not warranted in the case at hand.
If we go back to the district court’s description of how the cameras are connected to the supporting structure, we find a chain of structures, but the connections appear to be fixed and stable (“epoxied”, “soldered”, “screwed”, “washer and nut”). While the connection may be indirect, there is every indication that it is fixed and stable, and possibly even more so (or at least no less) than in all of the examples Judge Dyk cites from the Oxford Dictionary. By contrast, Judge Dyk’s examples allow the secured objects to move a lot.