Effect of Numbering Convention in Claim Construction

In Ironworks Patents LLC v. Samsung Electronics. Co.¹, the Federal Circuit vacated and remanded the district court’s judgment of noninfringement of claims of U.S. Patent No. 6,427,078 (“the ‘078 patent”) because the district court erred in its construction of the term “camera unit.” While this opinion is nonprecedential, it provides useful insight as to how the current Federal Circuit construes claims to devices that are disclosed in figures and a specification with specific numbering.

Ironworks asserted that Samsung’s device infringed various claims of the ‘078 patent, which include the term “camera unit.” The district court construed “camera unit” as a “camera arrangement comprising a camera, optics, microprocessor and memory, battery, and interface to external systems constituting an individual component of a whole personal communication device or whole portable mobile cellular phone.”² Based on this claim construction, the district court found that Samsung’s camera device did not infringe because it did not have a battery or an interface to external systems.

The ‘078 patent is related to a device for personal communication, data collection and data processing, which is a small-sized, portable and hand-held work station.³ The device includes a camera unit 14 that functions as follows: “a picture of a document or three-dimensional environment taken by camera 14a through optics 14b is transferred to image processing unit 14c and through its microprocessor 23 to memory unit 24.”⁴

The Federal Circuit first examined the independent claims of the ‘078 patent. Independent claim 1 recites a camera unit including a camera, optics, at least one memory, and an output. Independent claim 36 recites a camera unit including at least one memory. Independent claim 73 recites a camera unit including optics, an image sensor, and means for processing and for storing. Because each of the independent claims recites a different set of components for the camera unit, the Federal Circuit turned to the specification for context.

The Federal Circuit found that the specification of the ‘078 patent consistently refers to a camera unit 14 that includes a camera arrangement 140 (including a camera 14a and optics 14b) and an image processing unit 14c (including a microprocessor 23 and a memory unit 24). The Federal Circuit also found that throughout the specification, the camera unit 14 and its components were identified using a numbering convention associated with the number 14. In the ‘078 patent, the battery 21 and the interface 22 were not associated with the number 14 in any way.

Samsung argued that all of the components in FIG. 5 of the ‘078 patent should be the components of the camera unit 14. Samsung mainly relied on a portion of the ‘078 patent that states, “the structure of both camera card 15 and camera unit 14 conforms to the block diagram shown in FIG. 5.”⁵ The specification of the ‘078 patent also refers to FIG. 5 as a block diagram of the camera unit. However, the Federal Circuit noted that FIG. 5 used the same numbering convention for the components of the camera unit 14 as the other figures and the specification. The other components in FIG. 5, such as the battery 21 and the interface 22, are not associated with the numbering convention that uses the number 14.

In addition to the numbering convention, the Federal Circuit examined the descriptions of the “interface” and the “battery” in the specification. According to the embodiments of the camera unit described in the ‘078 patent, the specification does not require the battery or the interface to be a part of the camera unit. Thus, the Federal Circuit determined that the camera unit in the ‘078 patent does not need to include the interface or the battery.

In conclusion, the Federal Circuit decided that the “camera unit should not be construed so as to require a battery and interface,”⁶ based on the consistency in the numbering convention for the camera unit and the descriptions regarding the interface and the battery. Therefore, the Federal Circuit vacated and remanded the district court’s judgment of noninfringement of the claims of the ‘078 patent.

A takeaway from this case is that numbering conventions used in figures and a specification can affect claim construction, as they can help identify components that belong to a certain unit or group. A practitioner drafting a patent application should pay close attention to the numbering convention and its consistency throughout the entire patent application and the figures.