Claim Scope Limited When Specification Describes Feature As 'Essential' And 'Universal' To All Embodiments

In X2Y Attenuators, LLC v. International Trade Commission, No. 13-1340 (Fed. Cir. July 7, 2014), the Federal Circuit affirmed the ITC's claim construction and determination of no violation under 19 U.S.C. § 1337.

X2Y Attenuators, LLC ("X2Y") is the owner of three related patents: U.S. Patent Nos. 7,609,500 ("the '500 patent"); 7,916,444 ("the '444 patent"); and 8,023,241 ("the '241 patent") (collectively "the patents-in-suit"). The patents-in-suit relate to structures for reducing electromagnetic interference in electrical circuits. The patents-in-suit describe shielding electrodes to reduce "parasitic capacitance" between the electrodes by alternating arrangements of shielded and unshielded electrodes. Slip op. at 3 (citation omitted). X2Y filed a complaint in the ITC accusing Intel Corporation and other intervenors (collectively "Intel") of unlawful importation of microprocessors that infringed the patents-in-suit. At the ITC, the parties disputed whether the "electrode" terms in the claims were limited to a "sandwich" configuration, where a center conductor is flanked by a pair of differential or oppositely charged conductors. Id. at 5. The ALJ construed the electrode terms to require a sandwich configuration based on specification disavowal, and the ITC adopted the ALJ's construction. X2Y conceded noninfringement based on the construction and the ITC found no violation. X2Y appealed.

"The patents' statements that the presence of a common conductive pathway electrode positioned between paired electromagnetically opposite conductors is 'universal to all the embodiments' and is 'an essential element among all embodiments or connotations of the invention' constitute clear and unmistakable disavowal of claim scope." Slip op. at 7.

On appeal, the Federal Circuit considered the construction of the electrode terms, concluding that the ITC's construction was correct. The Court observed that, in the specification, a common conductive pathway electrode positioned between paired electromagnetically opposite conductors was described as "universal to all the embodiments" and "an essential element among all embodiments or connotations of the invention," constituting clear and unmistakable disavowal of claim scope. Id. at 7. The Court first explained that labeling an element as "essential" may give rise to disavowal, and the patents-in-suit explained that the sandwich configuration was not only "essential," but was an "essential element among all...