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District Court Erred in Departing From Claim Language to Adopt Construction That Encompassed All Disclosed Embodiments

| Tiffany YoungCassie Gourash

SIMO HOLDINGS INC. v. HONG KONG UCLOUDLINK NETWORK

Before O’Malley, Wallach, and Taranto. Appeal from the United States District Court for the Southern District of New York.

Summary:  A claim construction that excludes an embodiment disclosed in the specification is proper where the claim language and intrinsic evidence sufficiently indicate that the disclosed embodiment is not within the scope of the claim. 

SIMO Holdings Inc. (SIMO) sued Hong Kong uCloudlink Network (uCloudlink) for patent infringement, asserting claims directed to apparatuses and methods for reducing roaming charges on cellular networks.  The parties cross-moved for summary judgment on infringement.  The district court granted summary judgment of infringement and denied uCloudlink’s cross-motion based on its conclusion that one of the device components recited in the claims (a “non-local calls database”) was not required to establish infringement.  The district court reasoned that the contrary construction advanced by uCloudlink “although grammatically appealing, would contradict the specification[,]” which characterized the non-local calls database as an optional component of the invention.  Following a jury determination that infringement had been willful, the district court entered a final judgment awarding SIMO $8.2 million in damages.  uCloudlink appealed.

The Federal Circuit reversed the summary judgment rulings, concluding that the district court erred in its claim construction.  The Federal Circuit explained that the district court’s construction departed from traditional principles of grammar and was based on a misunderstanding of Federal Circuit precedent.  While construing claims to encompass disclosed embodiments is generally favored, the Federal Circuit emphasized that this rule is not absolute and must give way where the claim language and intrinsic evidence demonstrate that a particular embodiment is excluded from the scope of the claim.  The Federal Circuit determined that, under the correct claim construction, uCloudlink was entitled to summary judgment of noninfringement.  The Federal Circuit rejected SIMO’s request for remand, finding that SIMO failed to identify a triable issue of fact with respect to infringement.

Editor: Paul Stewart