CAFC Reverses Claim Construction on Operability Requirements of the Invention

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Federal Circuit Review No. 74-1.
Court Reverses Claim Construction Based on Inherent Operability Requirements of the Invention

Atlas IP, LLC, v. St. Jude Medical, Inc., St. Jude Medical S.C., Inc., No. 2015-1190, 2015 U.S. App. LEXIS 18818 (Fed. Cir. Oct. 29, 2015) (Before Moore, Reyna, and Taranto, J.) (Opinion for the court, Taranto, J.). Click Here for a copy of the opinion.

Atlas IP sued St. Jude Medical for infringing a patent on a wireless communications technology involving a communications “cycle.” A hub unit would determine a particular transmission interval for remote units, with each remote unit taking turns during the cycle. Each remote unit would only power on its communications unit during its assigned interval. The district court construed the claims to require that the interval information be transmitted in advance of the starting time and duration of the communications cycle. Both parties agreed that under this construction, there was no infringement, and accordingly the district court entered summary judgment of non-infringement.

In a companion case, Atlas v. Medtronic (reported below), the Court held that “the starting time and duration of the cycle and of remote-transmission intervals within each cycle must be communicated by the hub to the remotes before the time at which remotes may begin transmitting.” However, that ruling did not decide whether the interval information had to be communicated before any communication cycle took place at all. The Court examined the specification and claim language, and determined that there was no intrinsic evidence to support such a construction. Instead, the district court had adopted its construction because, in its view, the hub had to send interval information in advance in order for the system to work. If the remote units did not know in advance when to power up their communications equipment, they would be unable to receive interval information about future cycles. The district court thus reasoned that its construction was proper to avoid inoperability.

The Federal Circuit reversed the district court’s claim construction, and held that the claim language does not require that the start and duration of remote-transmission intervals be communicated prior to the beginning of the cycle. St. Jude had not explained why, in accordance with the specification, it was not sufficient that a remote know roughly when to expect an upcoming cycle to begin, rather than its exact starting time, and why such interval information could not be communicated during a cycle. The Court postulated that a remote unit could power up its communications equipment for the entirety of a first cycle, receive interval information whenever it was transmitted, then only power up that equipment during its assigned interval for subsequent cycles.

The Court reversed the district court’s construction of the claims, holding that sending cycle information “in advance” was not required by the claims or the specification, and did not result in inoperability.

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