Case: Thorner v. Sony Computer Entm’t Am. LLC, No. 2011-1114 (Fed. Cir. Feb. 1, 2012).
When you’re playing video games with your friends or family, you probably noticed the video game controller vibrate after your car crashes into a wall or your player is tackled in a football game. The process by which you and other gamers receive this “tactile feedback” was at the center of the dispute in Thorner v. Sony Computer Entertainment America LLC. In that case, Thorner accused Sony of infringing its patent on a “tactile feedback system,” which claims an apparatus comprising “actuators [sic] attached to [a flexible] pad.” Slip Opinion at 7. In short, actuators vibrate the video game controller in response to signals created by virtual events such as tackling or crashing.
District Court. With issues of claim instruction before it, the district court was charged with construing the meaning of “attached.” While most people likely would not object to using “attached” to refer to one object being affixed to either the interior or exterior surface of another object, patentees can act as their own lexicographer or disavow the full scope of claim terms. The district court relied on these rules to hold that “attached” means affixing an actuator to an object’s outer surface only. “Attached” thus meant something narrower than its plain and ordinary meaning. The district court further held that the specification redefines “attached” by implication because the embodiments therein and claims both use language to distinguish between actuators affixed to interior and exterior surfaces. The patent consistently uses “embedded” when referring to interior surfaces and “attached” when referring to exterior surfaces.
Federal Circuit. As neither party disputed the plain and ordinary meaning of “attached,” the issue on appeal was whether the use of a claim term to describe only a single embodiment in the specification redefines the claim term or amounts to a disavowal of claim scope. Stated differently, “attached” means “affixing an item to either an exterior or an interior surface” unless the use of “attached” to refer only to actuators affixed to an exterior surface constitutes an explicit or implicit act of lexicography or disavowal of claim scope.
The Federal Circuit disagreed with the district court’s construction of “attached.” Even though the specification only uses “attached” in reference to embodiments with actuators affixed to exterior surfaces and only uses “embedded” for actuators affixed to interior surfaces, the Federal Circuit held that the use of “attached” in this manner is not “a clear and explicit statement by the patentee” and therefore “does not rise to the level of either lexicography or disavowal.” Slip Opinion at 9.
Although both the district court and Sony relied on the redefinition-by-implication argument, the Federal Circuit only briefly addressed this issue. First, the Federal Circuit acknowledged “certain pre-Phillips cases” that held the “use of two terms as alternatives could amount to an implicit redefinition of terms.” Slip Opinion at 10 (citing Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1271 (Fed. Cir. 2001)). After it narrowed its holding in those “pre-Phillips cases” by stating that “the ‘implied’ redefinition must be so clear that it equates to an explicit one,” the Federal Circuit held that the patent’s selective use of “attached” and “embedded” is not sufficiently clear to redefine “attached” by implication. Slip Opinion at 10.
Finding neither an explicit nor implicit act of lexicography or disavowal, the Federal Circuit held that “attached” should be given its plain and ordinary meaning—affixed to either the interior or exterior surface. The construction of “flexible” was also at issue. Because no intrinsic evidence supported the district court’s definition of “flexible” as “capable of being noticeably flexed with ease,” the Federal Circuit held that the district court erred. Vacated and remanded.
Summary. The Federal Circuit’s opinion in Thorner explains that a patentee’s intent to act as a lexicographer or disavow claim scope must be clear, manifest, and explicit. Solely using claim terms with similar meanings in distinct ways will not impliedly redefine the meaning of claim terms for purposes of claim construction. By equating “implicit” with “explicit,” what is left of Bell Atlantic Network Services on this issue remains unclear.