What a coincidence that the disputed patent in Harris Corp. v. Fed Ex Corp., decided by the CAFC last month, involved a plane’s black box technology! Of course, both the majority and the dissent of this Federal Circuit panel scrupulously follow the interpretative roadmap of Phillips v. AWH, 415 F.3d 1303 (Fed. Cir. 2005) (en banc), but ultimately, neither the majority’s “entirely reasonable” explanation nor the minority’s views on “natural” and “intuitive” interpretation provide a convincing analysis. We are left with the definite impression that the appellate judges, while giving lip service to Phillips, kept the real determinants of their thought process hidden inside the proverbial black box.
Over a dissent by Judge Wallach, Judges Clevenger and Lourie strictly interpreted the “antecedent basis” in the claims, resulting in a reversal of the trial judge’s claim interpretation, and a remand for him to reconsider his patent infringement judgment.
Harris’s patents cover methods and systems for using spread spectrum radio signals to send flight data from a plane’s “black box” to an airport receiver at the end of the flight. The invention includes steps of generating, accumulating and storing flight data in the plane during the flight, followed by a step of “transmitting the accumulated, stored generated aircraft data” once at the airport.
At trial, a jury found that Fed Ex had willfully infringed Harris’s patents by using a “design-around” system that transmits all flight data except an optional 5-minute segment.
On appeal, the Federal Circuit panel majority holds that the Harris patent claims are limited to the transmission of “all data generated during the flight,” not just any data subset representative of the flight. The panel’s view is that the narrower interpretation is “entirely reasonable” since the transmitting step refers to the generating step.
In contrast, Judge Wallach’s dissent sees the claim language as open-ended, so that it would be “counterintuitive” to require that all the generated data must be transmitted.
Harris owns a group of patents on methods and systems for sending flight data from a plane’s “black box” to an airport receiver at the end of a flight, using spread spectrum radio signals. Fed Ex first used a system of this type for some of its planes under license from Harris, then contracted with Avionics to install a similar system for another group of planes, with a “design around” including the option of removing 5 minutes of flight data after landing. Harris sued FedEx for patent infringement. A jury found willful infringement by Fed Ex, and the District Court refused to overturn the jury verdict.
Representative claim 1 of Harris’s U.S. Patent No. 6,990,319 is as follows (underlining added):
1. A method of providing data from an aircraft comprising:
continuously monitoring the flight performance of the aircraft during an entire flight of the aircraft from at least take-off to landing; generating aircraft data representative of the continuously monitored aircraft flight performance during an entire flight of the aircraft from at least take-off to landing; accumulating and continuously storing the generated aircraft data within a ground data link unit positioned within the aircraft during the entire flight of the aircraft from at least take-off to landing to create an archival store of such aircraft data; after the aircraft completes its flight and lands at an airport, transmitting the accumulated, stored generated aircraft data from the ground data link unit over a wideband spread spectrum communications signal to a ground based spread spectrum receiver; and demodulating the received spread spectrum communications signal to obtain the accumulated, aircraft data representative of the flight performance of the aircraft during an entire flight of the aircraft from take-off to landing.
The patent specification does not discuss in details the meaning of aircraft data “representative of the flight performance.” During prosecution, Harris argued that its system gathers and transmits data “sufficient to provide a comprehensive, long-term picture of the flight performance.” Harris’s argument was presented to distinguish a prior art system in which data is downloaded from a train at spaced stations along the train’s route.
The District Court took inspiration from the prosecution history and interpreted “transmitting the accumulated, stored generated aircraft data” as covering “data sufficient to provide a comprehensive, long-term picture of the flight performance.”
But Judges Clevenger and Lourie attach more importance to the internal antecedent basis logic in the claim wording. The “aircraft data” in the “transmitting” step refers back to the “generating” step, from which the panel majority concludes that it is “entirely reasonable” to interpret the transmitted data set as the same as the data that has been generated, i.e., all the data generated during the flight. The majority also draws support for its narrow interpretation from the fact that the specification does not discuss transmission of less than all the data generated during the flight.
Dissenting Judge Wallach would have reached a contrary conclusion based on the language of the demodulating step. In his view, the expression “aircraft data representative of the flight performance” weighs against limiting the transmitted data to “all” the data generated during the flight.
The patentee has lost a battle, but not necessarily the war: the case is remanded to the District Court to re-evaluate whether the jury’s infringement verdict must be set aside in light of the modified claim interpretation. It is far from certain that the optional 5-minute data removal in Fed Ex’s design-around will be sufficient in this respect.
It would probably have helped the patentee if the description had included broadening statements regarding the type of data that may be generated, stored and transmitted. Claim language is given the “broadest reasonable interpretation” during examination at the U.S. Patent and Trademark Office, but a Federal Court’s “entirely reasonable” interpretation will often be significantly narrower, even when the claim has a “comprising” transition and generic terminology.
The patentee might also have benefitted from a dependent claim that recited that all the “aircraft data” was transmitted, or from a dependent claim that recited that only a certain portion of the “aircraft data” was transmitted. Such dependent claims might given Harris greater flexibility in applying its claims to the Fed Ex flight data system.