By Alex Gasser
On January 13, 2011, Chief ALJ Paul J. Luckern issued the public version of Order No. 34 (dated January 5, 2011) in Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions, Media Players, and Cameras (Inv. No. 337-TA-709).  In the order, ALJ Luckern granted Respondents Panasonic Corporation, Panasonic of North America, Victor Company of Japan Limited, JVC America Corp., Best Buy Purchasing, LLC, BestBuy.Com, LLC, and Best Buy Stores, L.P., B&H Foto & Electronics Corp., Buy.com Inc., QVC, Inc. Crutchfield Corporation, and Computer Nerds International, Inc.’s (collectively, the “Respondents”) motion for summary determination that certain Panasonic integrated circuits and products containing the same do not infringe claim 1 of U.S. Patent No. 7,199,306 (the ‘306 patent) either literally or under the doctrine of equivalents.

In support of their motion, Respondents cited to intrinsic and extrinsic evidence that supported the assertion that the patentee had disclaimed in claim 1 of the ‘306 patent, printed circuit boards (“PCBs”) “thinner than 0.35 mm” or “PCBs having a thickness of less than 0.35 mm.”  In particular, Respondents argued that thicknesses of less than 0.35 mm were disclaimed during the prosecution of U.S. Patent No. 6,465,743 (the ‘743 patent), which issued from a parent application to the ‘306 patent.  In this regard, Respondents asserted that the patentee distinguished “prior art substrates less than 0.35 mm thick [because they] required metal support pallets which ‘prevented the use of automated equipment’ and ‘the invention of pending claims 13-20 allows manufacturers to use automated equipment.’” (original brackets omitted).  In opposing the motion, Complainant Freescale Semiconductor, Inc. (“Freescale”) asserted, inter alia, that “the statements relied upon by the Respondents do not ‘even impl[y] that the word ‘thickness’ means ‘greater than ‘0.35 mm’ let alone constitute the clear unequivocal disavowal required by the courts.”  Rather, Freescale argued that the statements were a “discussion of the background [that] was intended to help the Board [of Patent Appeals and Interferences] understand the general technology at issue, not to distinguish the claims from the references used to reject the claims.”  According to Freescale, the word thickness should be construed according to its “plain and ordinary meaning.”  The Commission Investigative Staff filed a memorandum in support of the Respondents’ motion.

According to the order, ALJ Luckern rejected Freescale’s arguments and found that in view of the language of claim 1 and the intrinsic evidence (for example, statements found in the specification of the ‘306 patent and made during the prosecution of the ‘743 patent that criticized prior art PCBs having thicknesses of 0.35 mm), it is “clear that [the patentee] viewed the claimed invention, which ‘allows manufacturers to use automated equipment,’ as excluding PCBs recited in claim 1 in issue that are thinner than 0.35 mm.”  Accordingly, ALJ Luckern granted the Respondents’ motion because under the correct construction of the claim term “thickness,” the accused products could not be found to infringe claim 1 of the ‘306 patent, either literally or under the doctrine of equivalents.