Federal Circuit Finds District Court’s Construction Of “Barcode” Too Narrow
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  • Federal Circuit Finds District Court’s Construction Of “Barcode” Too Narrow


    On December 26, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) reversed a decision from the United States District Court for the Central District of California in Case No. 2:21-cv-03402-GW-AGR, Judge George H. Wu, granting appellee motion for summary judgment of non-infringement. K-Fee System Gmbh v. Nespresso USA, Inc., __ F.3d __ (Fed. Cir. December 26, 2023). In its precedential decision, the CAFC found that the district court’s non-infringement finding was based on an erroneous construction of the claim term “barcode.”

    Appellant, district court plaintiff, sued appellee for infringement of three related patents directed to coffee-machine capsules that display “barcode” encoded information that, when read by a device associated with the coffee machine, can prevent the capsules from being used in incompatible machines. At the district court, the parties disputed the meaning of the claim term “barcode.” Defendant appellee argued that “barcode” excluded “bit codes”—codes made up of two binary symbols—based on statements plaintiff made before the European Patent Office (“EPO”) in attempting to distinguish certain prior art (Jarisch) during prosecution of a patent related to the asserted patents. In its claim construction order, the district court considered these statements to be part of the intrinsic record because they were submitted to the United States Patent Office and Trademark Office during prosecution of the asserted patents. The district court then construed “barcode” to have its plain and ordinary meaning (i.e., a code having bars of variable width, which includes the lines and gaps) but excluding the type of bit code disclosed in Jarisch.

    Appellee then moved for summary judgment of non-infringement on the basis that its accused capsules use a machine-readable code having only two binary symbols, just like Jarisch. The district court granted defendant’s motion. Appellant appealed the “barcode” claim construction and grant of summary judgment.

    On appeal, the CAFC reviewed the district court’s claim construction de novo because it was based only on intrinsic evidence. The CAFC first considered the ordinary meaning of “barcode” in the context of the patent and prosecution history and concluded that the statements appellant made to the EPO did not alter the ordinary meaning of “barcode” to exclude “bit codes.” In these statements, noted the CAFC, appellant first acknowledged that “barcode” meant a sequence of bars having varying widths, and then explained that Jarisch discloses a message formed of a succession of small rectangular surfaces that encode zeroes and ones. Based on this characterization, appellant stated that a “barcode” is “always constructed of bars having variable widths and therefore contains more than only two binary symbols such as ‘0’ and ‘1’.”

    The CAFC held that the district court was wrong to interpret these statements as meaning that a barcode must contain more than only two binary symbols. The CAFC reached this conclusion in part because appellant also stated to the EPO that a barcode: (i) “can be, but is not necessarily, a bit code;” (ii) is “a special form of the binary code;” and (iii) “represents a subset of the bit code.”

    In sum, the CAFC concluded that, while appellant suggested that a consequence of being “constructed of bars having variable widths” would be the existence of “more than only two binary symbols,” the reason it gave for Jarisch not disclosing a barcode was that Jarisch’s messages were not “constructed of bars having variable widths.” The CAFC further noted that this conclusion is supported by the fact that, on its face, Jarisch does not clearly disclose any bars of varying widths.

    The CAFC next considered the related but distinct question of surrender by disclaimer, which asks whether, despite the apparent ordinary meaning evident from the intrinsic evidence, appellant “act[ed] with sufficient clarity” before the EPO to “disclaim . . . [the] plain meaning or prescribe a special definition.” In addressing disclaimer, the CAFC first concluded that appellant had not acted as its own lexicographer because it had not clearly expressed intent to redefine the term “barcode” to have something other than its plain and ordinary meaning. The CAFC next concluded that appellant’s statements were not so “repeated, unequivocal, and unambiguous” as to warrant a conclusion of disclaimer. To the contrary, the CAFC found appellant’s statements were, if anything, decidedly ambiguous. According to the CAFC, the only thing appellant clearly distinguished before the EPO was Jarisch itself, which nowhere declares that its messages have bars of variable widths.

    The CAFC then construed “barcode” to have its plain and ordinary meaning without the district court’s “bit code” exclusion and reversed the district’s decision granting summary judgment of non-infringement as being dependent on an incorrect construction of “bar code.”

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