D. Mass. Patent Litigation Update: January 2023

• Jurisdiction: United States,Federal,California
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Subject Matter: Intellectual Property, Patent
• Author: Matthew C. Berntsen, Cory C. Bell, Li Zhang, Ph.D. and Marta Garcia Daneshvar
• Published date: 28 February 2023

This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.

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InVirtek Vision International ULC v. Assembly Guidance Systems, Inc. d/b/a Aligned Vision, No. 20-cv-10857, Judge Burroughs construed two disputed terms in a patent relating to a method of aligning a laser projector for projecting a laser image onto a work surface.

1. "Work surface"

Relying on an embodiment disclosed in the specification, the defendant contended that the scope of "work surface" should be limited to "a surface of a workpiece on which a laser image is projected." The Court rejected the defendant's proposed construction and agreed with the plaintiff that the term's scope should include "any surface on which work is performed."

The Court first found that the patent "expressly disclaims limiting the invention to the embodiment described in the specification," explaining that the disclosures about the broad intended use of the invention beyond the "workpiece" example counsel against limiting the term to the surface of a workpiece. The Court also found that the defendant's proposed construction departed from the term's ordinary and customary meaning, which, without evidence of lexicography or disavowal, would be improper.

Accordingly, the Court construed the term as "a surface on which work is performed.

2. "Identifying a general location of the targets in the work surface"

This disputed term appears in a dependent claim, which recites: "wherein the step of identifying a pattern of the targets is further defined byidentifying a general location of the targets in the work surface." The parties agreed, in the context of the independent claim, that "identifying a pattern of the targets" should be construed as "determining the location and relative positions of the [] targets."

The defendant argued that its proposed construction'"determining the general location, and thus the relative positions, of those targets"'comported with the parties' understanding of the "identifying step" and that there did not "appear to be any difference between" the independent and dependent claims. The plaintiff contended that the defendant's proposed construction would render the dependent claim superfluous and that no construction was needed.

The Court first distinguished the defendant's proposed construction from those found improper by the Federal Circuit, where the construction of an independent claim would exclude an embodiment envisioned by a dependent claim, rendering the dependent claim "not only superfluous but also without any scope." Here, recognizing that "a construction that renders certain claims superfluous need not be rejected," the Court found that the...