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St. Clair Intellectual Property Consultants, Inc v. Canon Inc. and Canon U.S.A.

January 10, 2011

ST. CLAIR INTELLECTUAL PROPERTY CONSULTANTS, INC.,
v.
CANON INC. AND CANON U.S.A., INC., DEFENDANTS, AND FUJI PHOTO FILM CO. LTD. (NOW FUJIFILM CORPORATION), FUJI PHOTO FILM U.S.A. INC. (NOW FUJIFILM NORTH AMERICA CORPORATION), AND FUJIFILM AMERICA INC. (NOW FUJIFILM HOLDINGS AMERICA CORPORATION), PLAINTIFF-CROSS APPELLANT, DEFENDANTS-APPELLANTS.



Appeals from the United States District Court for the District of Delaware case no. 03-CV-0241, Judge Joseph J. Farnan, Jr.

The opinion of the court was delivered by: Dyk, Circuit Judge.

NOTE: This disposition is nonprecedential.

Before DYK, MAYER, and MOORE, Circuit Judges.

Opinion for the court filed by Circuit Judge DYK.

Dissenting opinion filed by Circuit Judge MOORE.

Fuji Photo Film Co. Ltd., Fuji Photo Film U.S.A. Inc., and Fujifilm America Inc. (collectively "Fuji") appeal a judgment that Fuji infringed four patents owned by St. Clair Intellectual Property Consultants, Inc. ("St. Clair"). These are United States Patent Nos. 5,138,459 ("'459 patent"), 6,094,219 ("'219 patent"), 6,233,010 ("'010 patent"), and 6,323,899 ("'899 patent"). We hold that the district court erred in construing the asserted claims, and, accordingly, we reverse the judgment of infringement.

BACKGROUND

In 2003, St. Clair sued Fujifilm and seven other digital camera manufacturers for infringing the patents-in-suit. All four patents share a common specification and cover electronic "still video cameras" that save digital photographs in user-determined memory formats for use on personal computers ("PCs"). Primarily at issue was claim 16 of the '459 patent, which provides in relevant part:

A process for storing an electronically sensed video image comprising the steps of: . . . recording in selectable addressible memory means at least one of a plurality of different digital output data format codes where each of said plurality of output data format codes corresponds respectively to one of a like plurality of different data formats for different types of computer apparatus.

'459 Patent col.15 l.23--col.16 l.4 (emphasis added). St. Clair also asserted dependant claim 17 of the '459 patent. Claim 10 of the '219 patent similarly provides the identical "plurality of different data formats for different types of computer apparatus" language. The parties disputed whether this phrase was limited to formats related to different computer architectures (e.g., IBM or Apple PCs) or if it could also include formats related to different computer applications (e.g., software that can run GIFF or PICT). Fuji contended that the "different types of computer apparatus" language refers to different types of architecture (i.e., different operating systems combined with hardware) such as IBM and Apple PCs, and not to different applications that can run on multiple types of architectures. In its August 31, 2004, Markman order, the district court rejected Fuji's construction, construing the disputed claim term as follows:

(1) a 'data format' is the arrangement of digital data in a file including image, audio, text or other data and includes, at least, MPEG, JPEG, GIF, TIFF, PICT, BMP, JFIF, DCF, TXT, DOC, WPD and WAV, and (2) a 'computer apparatus' is a computer and any operating system or application software loaded on the computer. Computer apparatus are 'different types' within the meaning of the claims if they are loaded with different application software, even if they are otherwise the same.

St. Clair Intellectual Prop. Consultants, Inc. v. Canon, Inc., No. 03-241, slip op. at 9--10, 2004 WL 1941340, at *4 (D. Del. Aug. 31, 2004) (emphasis added). Under the district court's construction, the accused Fuji cameras infringed claims 16 and 17 of the '459 patent and claim 10 of the '219 patent because the cameras can save pictures under multiple file formats accessible by various software programs running on both IBM and Apple PCs.Fuji's cameras did not infringe under Fuji's proposed construction of the claims.

A similar dispute arose with respect to claim 1 of the '010 patent and claims 1 and 3 of the '899 patent. Though those claims use somewhat different language, the district court concluded that "the parties agree[d]" to construe the asserted claims consistently across all four patents, with the result that the Fuji cameras also infringed those claims. St. Clair, 2004 WL 1941340, at *4. As St. Clair's expert acknowledged at trial, however, none of the accused Fuji cameras has "different formats for different types of computer apparatus where the different types of computer apparatus are IBM on the one hand and Apple on the other." J.A. 7629.

During the Markman proceedings, the district court also addressed a separate claim construction issue- whether the claim term "plurality of different data formats" included movie formats. This limitation or variations thereof appear in claim 16 of the '459 patent; claims 1, 10, and 16 of the '219 patent; claim 1 of the '010 patent; and claims 1 and 3 of the '899 patent. St. Clair contended that movie formats were covered under the district court's construction of "data formats" in claim 16. Fuji disagreed, arguing that the invention only covered "still pictures" and not movies. The district court's Markman order found that "neither the specification nor the language of the claims impose[d] a still picture limitation." St. Clair, 2004 WL 1941340, at *7. Under this construction, the accused Fuji cameras, which had both a still picture and movie mode, were found to satisfy the "plurality of different data formats" limitation of the asserted claims.

In October 2004, under the district court's claim construction, a jury found that each of the asserted claims was valid and infringed by Fuji's products. In September 2005, the district court denied Fuji's motion for judgment as a matter of law.However, on June 19, 2006, before the entry of judgment, the case was stayed. In 2008, the district court lifted the stay and entered judgment on the 2004 verdicts. On November 19, 2009, the court denied St. Clair's motion for a new trial on damages and entered an Amended Judgment. Fuji timely appealed, and we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

The parties agree that if Fuji's construction of the claims is correct, there is no infringement. Claim construction is a question of law, which we review de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc).

I

Under the district court's construction of "computer apparatus," claims 16 and 17 of the '459 patent and claim 10 of the '219 patent encompass all permutations of hardware, operating systems, and "different application software." St. Clair, 2004 WL 1941340, at *3. As St. Clair's expert stated during trial, a data format would be "for" a different type of computer apparatus "if it's possible to have a computer that can read that format and another computer that cannot." J.A. 7636.

In light of the claim language and the ubiquitous and consistent correspondence between data formats and computer architectures throughout the specification and prosecution history, we hold that the term "computer apparatus" refers to computer architecture. Each data format code "corresponds respectively to one of a like plurality of different data formats for different types of computer apparatus" only if "each data format" corresponds on a one-to-one basis to a different type of computer architecture (e.g., in the way that GIFF corresponds to IBM and PICT corresponds to Apple). Under this construction, there is no infringement of claims 16 and 17 of the '459 patent or claim 10 of the '219 patent.

Claim language. On its face, the term "computer apparatus" appears to refer to computer architecture. The phrase "different data formats for different types of computer apparatus" appears to refer to data formats that correspond to particular computer architectures.

Specification. In 1990, the problem the inventors sought to solve was one of computer architecture incompatibility, not data format incompatibility. Back then, the proprietary nature of PC development-under which IBM and Apple PCs were manufactured with different and incompatible processors, operating systems, and memory schemes-meant that digital images formatted for use on an IBM PC could not be used on ...


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