Federal Circuit IP
UTTO Inc. v. Metrotech Corp.
Case No. 23-1435, Precedential, (Fed. Cir. Oct. 18, 2024)
Prost, Taranto, Hughes
Facts/Background:
- UTTO sued Metrotech for infringing its patents directed to a process for detecting and identifying “buried assets”
- District court construed the phrase “group” in the patent claim language to require “two or more,” adopting that construction as reflecting the “ordinary and customary meaning.”
Issue: Can the district court engage in claim construction in deciding a motion to dismiss? If so, how much analysis is required?
Holding: Claim construction is not categorically forbidden at the Rule 12(b)(6) stage. As long as the trial court construes the claims to the extent necessary to determine whether the accused device infringes, the court may approach the task in any way it deems best.
Analysis:
- “Where claims are construed based on intrinsic evidence alone, a decision on claim construction is not different in kind from the interpretation of other legal standards, which is proper and routine in ruling on a motion under Rule 12(b)(6).”
- If there are claim construction disputes at the Rule 12(b)(6) stage either the court must proceed by adopting the non-moving party’s constructions, or the court must resolve the disputes to whatever extent is needed to conduct the analysis, which may well be less than a full, formal claim construction.
- Finally, while recognizing that “extrinsic evidence and expert testimony can help to educate the court concerning the invention and the knowledge of persons of skill in the field of the invention, even as we have cautioned against undue reliance on experts,” we have said that “[t]he decision as to the need for and use of experts is within the sound discretion of the district court.”
Takeaways:
- Plaintiffs: if anticipate a claim construction issue could control at pleadings stage, then have extrinsic evidence ready
- Defendants: if you identify winning claim construction at pleadings stage, then show it is clear from intrinsic evidence
- Prosecutors: use claim diversity and consider how certain words might be construed more narrowly