A Single Embodiment Does Not Restrict Claim Construction To The Embodiment In The Absence Of A Clear Intention To Do So

In Info-Hold, Inc. v. Applied Media Technologies Corp., No. 13-1528 (Fed. Cir. Apr. 24, 2015), the Federal Circuit reversed the district court's construction of the claim terms "transmit," "message playback device," and "operable to generate and transmit control signals," and remanded for further proceedings.

Info-Hold, Inc. ("Info-Hold") is the owner of U.S. Patent No. 5,991,374 ("the '374 patent"), which is directed to systems, apparatuses, and methods for playing music and messages through telephones and public speaker systems. Info-Hold asserted the '374 patent against Applied Media Technologies Corporation ("AMTC") and Muzak LLC ("Muzak") in separate suits before the same judge. While the AMTC suit was pending, an ex parte reexamination proceeding was filed on the '374 patent, which resulted in a stay of the AMTC suit. The '374 patent later emerged from the reexamination after some claim amendments and cancellation of other claims, and the stay was lifted. The district court subsequently construed claim terms in the Muzak suit, and both Info-Hold and AMTC agreed to be bound by those claim constructions in the AMTC suit.

The district court construed the claim term "transmit" of the '374 patent as "to initiate a contact with and send an electronic signal to another device," and the claim terms "message playback device" and "operable to generate and transmit control signals" consistently with the construction of the claim term "transmit." Slip op. at 5-6 (citations omitted). The constructions effectively required any communication between the server and the message playback device to be initiated by the server, which was a construction favorable to AMTC. Following claim construction, both parties filed a joint stipulation of noninfringement and requested the district court to enter final judgment to allow Info-Hold to appeal the constructions of the three claim terms. Based on the parties' stipulations and request, the district court entered final judgment in AMTC's favor. Info-Hold appealed.

"[W]e have 'expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.' . . . [T]he scope of the invention is properly limited to the preferred embodiment if the patentee uses words that manifest a clear intention to restrict the scope of the claims to that embodiment." Slip op. at 9-10 (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d...