Nonprecedential Federal Circuit Decision Generates a Dissent

The Federal Circuit recently issued a non-precedential opinion in Vehicle IP, LLC v. AT&T Mobility, LLC. Perhaps the most interesting aspect of this decision was that it was a non-precedential opinion with a dissent, which to some extent seems a bit contradictory.

According to Federal Circuit Rule 32.1(b), “[a]n opinion or order which is designated as nonprecedential is one determined by the panel issuing it as not adding significantly to the body of law.” Still, a non-precedential decision with a dissent strikes me as odd. Perhaps this was a decision largely left to the staff attorneys. I suppose on some level it really doesn’t matter because Federal Circuit Rule 32.1(c) does not prohibit citation to nonprecedential dispositions issued after January 1, 2007.

I would have to think that this decision, which required the Federal Circuit to construe claim terms, would have to be precedential in at least some ways, unless the outcome in this case will not have any implication for the claims themselves or the patent. I guess I just don’t understand the concept of a nonprecedential claim construction. I cannot fathom a nonprecedential order in a real property boundary dispute. The whole point of suing over real property is to get a decision that is binding. Patents are property and it strikes me that the definition of the metes and bounds of what is covered in the claim really has to be precedential. If it isn’t precedential what is the point? This type of disposition is what leads to patent claims being construed to mean one thing in one case and another thing in another case. It is frustrating.

In any event, the tale begins back on December 31, 2009, which is when Vehicle IP filed a patent infringement action against the Appellees in the United States District Court for the District of Delaware. The patent infringement lawsuit asserted that Appellees infringed U.S. Patent No. 5,987,377 (“the ’377 patent”). On December 12, 2011, the district court issued an order construing the disputed claim terms of the ’377 patent, including “expected time of arrival” and “way point(s).” The district court construed “expected time of arrival” as “time of day at which the vehicle is expected to arrive somewhere (and not remaining travel time).” The district court construed “way point(s)” as “intermediate point(s) on the way to the final destination (and not the final destination itself).”

After the district court construed the claims, Appellees filed two motions for summary judgment. The district court granted both motions. On April 19, 2013, the district court entered judgment in favor of Appellees. Vehicle IP appealed the entry of judgment, challenging the district court’s claim constructions and summary judgment rulings.

Vehicle IP argued that the district court erred in excluding remaining travel time from the construction of “expected time of arrival.” Vehicle IP argued that if someone were to ask what time one expects to arrive, the answers “in 30 minutes” and “2:00 p.m.” would be equally acceptable.

Appellees respond that the parties’ dispute is not focused on the term “time,” as Vehicle IP would like this court to believe, but instead is focused on the term “expected time of arrival.” Appellees reason that “expected time of arrival” cannot include “remaining travel time.”

In a non-precedential opinion the Federal Circuit, per Judges Reyna and Hughes, ruled that the district court erred in excluding remaining travel time from the construction of “expected time of arrival.” Judge Reyna concluded that the term “expected time of arrival” is not limited to clock-time.

The claim clearly shows that the mobile unit determines the “expected time of arrival” in remaining travel time based on the destination information transmitted by the dispatch. The mobile unit uses factors such as average travel time, weather conditions, and traffic information to determine the “expected time of arrival.” Thus, the expected time of arrival will be calculated in remaining travel time. The expected time of arrival may be then converted to clock-time format, but the patent does require that it be converted.

The Federal Circuit did recognize that some of the examples in the patent were to embodiments where there was a focus on clock-time, but Judge Reyna correctly pointed out that examples in a specification are illustrative and not limiting.

On the other critical claim term, the district court construed “way point(s)” as “inter- mediate point(s) on the way to the final destination (and not the final destination itself).” Vehicle IP argues that the district court erred because the written description makes clear that “way point(s)” may include the final destination. Appellees respond that the ’377 patent’s description of figure 2 shows that “way point(s)” may not include the final destination because it distinguishes way points C and D from destination E.

The Federal Circuit similarly concluded that the district court erred in its interpretation of “way point(s).” Judge Reyna explained that the written description used the term in a broad, non-limiting manner utilizing permissive language, which indicated that “way point(s)” may be more than an intermediate point along a route.

Judge Wallach did file a dissenting opinion in this non-precedential case, taking issue with the majority construction of the term “way point(s).” Judge Wallach believed that the only support for “way point(s)” could be found relative to Figure 2 in the specification. The patent explained that “way point(s)” can be used to determine if a truck driver has driven off the route. The specification stated:

“To alleviate this problem, destinations C and D may be used as way points to determine whether the operator of vehicle 40 has driven out of route 52a specified in the destination information generated by dispatch 20.”

Thus, Judge Wallach was of the belief that “way point(s)” had to be intermediate stops and not an end point. To this end Judge Wallach wrote: “It is unclear why point E, which the patent characterizes as “destination E,” would be considered a way point, in conflict with the ordinary and customary meaning of “way point(s),” when it cannot fulfill the function of that claim term.”

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2 comments so far.

  • [Avatar for cdw]
    cdw
    November 27, 2014 11:08 am

    Well Paul, from my perspective on the issues, the patent bar will remain resistant to less ambiguity in claims (and specifications) for a number of reasons a) prosecuting practitioners believe ambiguous claims are broader (they’re not, just weaker) b) litigating Attorneys like ambiguous claims, so as to provide more wiggle room for greater breadth of attack in litigation c) The cost of less ambiguity in claims and especially in Specifications will increase costs that must be passed-on which the Applicant’s will need to be willing to bear. That said, the Judiciary would be wiser to focus FAR more on 112 issues rather than the misguided 101 efforts as a way to both deal with the “issues” before them and restore respect to the patent system. A decision against a patent as failing 112 requirements to explain itself without ambiguity to the Justices and the US American public so that one of ORDINARY skill in the art may understand what they are potentially in violation of, thereby providing proper technical notice to the public, would be far better than the seat-of-the pants, I-know-it-when-I-see-it determinations that are encouraged now.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    November 25, 2014 09:23 am

    If even the members of the same Fed. Cir. panel (with the benefit of a record below) cannot agree on the meanings of claim terms, how does that comport with the recent Sup. Ct. requirement for less ambiguity in claims and thus more 112 rejections on that basis?
    Likewise, how is this decision consistent with the arguments some are making that IPRs would be improved by legislation switching IPRs from BRI claim construction to a the claim construction used in District Courts? [In any case, an October “Law360” reported study of the few IPRs that also had D.C. claim constructions of the same patent claims showed that in almost all cases there was not a claim interpretation difference between them anyway.]