Convolve, Inc. v. Compaq Computer Corp. (Fed. Cir. 2016)

Despite Amendments during Reexamination, Intervening Rights Not Found

By Joseph Herndon --

On February 10, 2016, the Federal Circuit issued an opinion in a case captioned Convolve, Inc., and Massachusetts Institute of Technology v. Compaq Computer Corp., Seagate Technology, Inc., and Seagate Technology, LLC.

This case has been before the Federal Circuit previously, and returns after a remand to the Southern District of New York.  In the first appeal, the Federal Circuit reversed the District Court's summary judgment ruling that no accused products met some of the patent's claim limitations and remanded for further proceedings.  On remand, the District Court granted summary judgment on alternative grounds.  Now, on appeal again, the Federal Circuit has agreed with the District Court that the accused products do not possess a claim limitation, but has concluded that the District Court erred with construction of other claim limitations and in granting summary judgment based on intervening rights.  The case is again now remanded to correct some of these issues.  Below, we only consider issues presented with respect to the finding that intervening rights do not exist.

The technology at issue relates to improvements in computer hard drives described in U.S. Patent No. 6,314,473.  Hard drives store data as magnetized spots on the surface of disks or "platters" inside the drive.  These spots are arranged in concentric circles, called tracks, on the surface of the platters.  The hard drive also contains a mechanical arm that "seeks" between different "tracks" to read or write information on those tracks.  As relevant to this appeal, hard drives ordinarily employ two motors to read and write data:  (1) a spindle motor that spins circular platters, "allowing the head to cover the platters' area while traversing over a line or arc"; and (2) "the voice coil motor . . . that moves the arm across the spinning platters."  The process of moving the arm across the platters, called "seeking," generates vibrations in the arm and the attached read/write head, which generates acoustic noise audible to the user (e.g., seek acoustic noise).

The patent specification describes the inverse relationship between the seek time and the acoustic noise:  the shorter the seek time, the greater the vibration and the greater the acoustic noise.  Although acoustic noise can be generated from both the spindle motor and the seek process, the '473 patent focuses on methods and apparatuses for improving hard drives by reducing the seek acoustic noise generated by the movement of the disk drive's arm and read/write head, i.e., the seek process.  The patent describes a technique to minimize the vibrations of the head as it moves over the rotating hard disk that requires a "user interface" to control the speed at which the seek arm operates such that a user could select a quiet mode, which may have a slower read/write time but generates less noise.

Convolve, Inc. (Convolve) filed suit against Seagate Technology, LLC and Seagate Technology, Inc. (Seagate) and Compaq Computer Corp. (Compaq) in July 2000, alleging, among other things, infringement of the '473 patent.  The '473 patent was placed into reexamination, during which the patentee added the modifier "seek" in front of "acoustic noise" after a prior art rejection.  After initial litigation, on remand, the District Court granted summary judgment that patent infringement liability is precluded by intervening rights arising from the substantive amendment made during reexamination to the asserted claims.  Convolve appealed.

Claim 10 is representative, and is reproduced below.  The words added during reexamination are underlined and the words deleted are in brackets:

10.  Method for controlling operation of a data storage device, comprising:
    providing a user interface for controlling one of a seek time of the data storage device and [an] a seek acoustic noise level of the data storage device;
    operating the user interface so as to alter settings of one of the seek time and the seek acoustic noise level of the data storage device in inverse relation; and
    outputting commands to the data storage device causing the data storage device to alter seek trajectory shape by shaping input signals to the data storage device to reduce selected unwanted frequencies from a plurality of frequencies in accordance with the altered settings.

With respect to intervening rights, a patentee of a patent that survives reexamination is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of the reexamined claims if the original and the reexamined claims are "substantially identical".  The Federal Circuit noted that it is the scope of the claim that must be identical, not that identical words must be used.

The Federal Circuit thus analyzed the claims to determine whether the pre-2008 reexamination claims are limited to "seek acoustic noise" or whether the original claims cover both seek and spindle acoustic noise.  Ultimately, the Federal Circuit found that the claims were originally limited to seek acoustic noise, and the addition of the word "seek" did not alter the scope of the claims.  Thus, no intervening rights were found to exist.

On their face, the original claims recite only "acoustic noise," which could encompass any manner of acoustic noise, including that generated from the spindle.  The Federal Circuit found, however, that when read in conjunction with the remaining claim limitations and in light of the specification and prosecution history, a person of ordinary skill in the art would understand the claims to be limited to seek acoustic noise.

Of important note is that the specification does not use the term "seek acoustic noise" or expressly exclude acoustic noise generated by spindle rotation, and, at some points, it teaches that acoustic noise can arise from more than one type of vibration.  However, the Federal Circuit found that the focus of the specification is on the seek process and the noise it generates.  As support of this finding, the Federal Circuit noted that the specification states that "the present invention" is directed to employing a "dynamic system" to "reduc[e] unwanted vibrations, which, if unchecked, could lead to disk read/write errors or excessive noise."

The Federal Circuit found that this understanding is reinforced by other claim limitations.  For example, the claims expressly tie "acoustic noise" to "seek time" by reciting settings for "seek time" and "acoustic noise" "in inverse relation."

The Federal Circuit found that Seagate did not show that there is any relation between "seek time" and acoustic noise other than the noise generated by the movement of the seek arm.

The Federal Circuit further found that the prosecution history of the '473 patent supports the finding that the original claims were limited to "seek acoustic noise".  Before the 2008 reexamination, a prior art rejection identified references that teach a mechanism for controlling seek time and both electrical noise and acoustic noise from the spindle motor.  In response, the patentee amended the claims "to state explicitly that the noise to be controlled is acoustic noise as opposed to electrical noise."  In explaining the reasoning for the amendment, the applicant went further and made clear that the acoustic noise problems addressed by the claims and the specification are limited to those generated by the seek function, not the spindle motor.

Thus, to the extent the specification alone does not limit the claims to seek acoustic noise, these prosecution history statements were enough to show to the Federal Circuit a clear intent to limit the scope of the claims to seek acoustic noise -- i.e., acoustic noise generated by the movement of the drive's arm and read/write head during the seek process.

In summary, the Federal Circuit found support for the conclusion that the original claims were limited to "seek acoustic noise" despite no explicit recitation of a type of noise in the claims, nor any recitation of the term "seek acoustic noise" whatsoever in the specification as filed.  One has to wonder why the patentee amended the claims during reexamination in the first place?  The reasons given by the patentee were for "clarifying purposes"; however, the amendment was made in response to a prior art rejection.  Thus, it seems to reason that the original claims as filed were not clear as to the scope of the type acoustic noise being considered, and in fact, under the broadest reasonable interpretation standard likely covered multiple types of noise.  The specification as filed describes multiple types of acoustic noise, and if it was unclear in the claims as filed as to which acoustic noise was being considered, wouldn't amending the claims to expressly declare the claims directed to the "seek acoustic noise" alter the scope of the claims to overcome the prior art rejection?

The outcome of this case is somewhat troubling and relies far too much on the patent application and prosecution file history to "read" limitations into the claims.  The Federal Circuit noted that the specification at some instances teaches that acoustic noise can arise from more than one type of vibration, but used statements in the specification supporting the conclusion that the claims were in fact originally limited beyond the explicitly filed language.  These contrary statements in the specification should be enough to show that the claims as originally filed were unclear, rendering the original filed claims open to interpretation beyond only "seek acoustic noise".  In any event, this case has been remanded for round three at the District Court since the intervening rights were found to not exist.

Convolve, Inc. v. Compaq Computer Corp. (Fed. Cir. 2016)
Panel: Circuit Judges Dyk, Taranto, and Hughes
Opinion by Circuit Judge Hughes

Comments

[Sean Brennan]

Troubling, perhaps, for litigators; but reassuring for those of us who prosecute applications. There are too many examples of practitioners being forced to insert meaningless descriptive terms into a claim to satisfy a stubborn examiner.

[Martin Snyder]

16 years of litigation, with more to come, involving a feature not central to the function of the device and likely never used by upwards of 95% of the buyers of the device, and a low-manufacturing margin device at that, but nonetheless potentially hugely damaging to the manufacturer because awarded damages may have no relation to the contribution to profits of the accused functionality.

What words can describe this situation?

[Matthew]

This seems correct. Because courts and examiners use different claim construction standards, it's obvious that making amendments to overcome "broadest reasonable construction" would not necessarily narrow claim scope compared to a construction by an "ordinary and customary meaning" by a person of skill in the art. As Sean noted, Examiners regularly force prosecutors to add in "meaningless descriptive terms" (i.e., terms that one of skill in the art would have already understood the claims to mean).