United States District Court, D. Delaware
SZ DJI TECHNOLOGY CO., LTD. and DJI EUROPE B.V., Plaintiffs-Counterclaim Defendants,
AUTEL ROBOTICS USA LLC and AUTEL AERIAL TECHNOLOGY CO., LTD., Defendants-Counterclaim Plaintiffs.
C. Barillare and Amy M. Dudash, MORGAN, LEWIS & BOCKIUS
LLP, Wilmington, DE Kelly E. Farnan and Christine D. Haynes,
RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE David M.
Farnum and Sherry X. Wu, ANOVA LAW GROUP, PLLC, Sterling, VA
Willard K. Tom, Jon R. Roelike, Ryan Kantor, and Bradford A.
Cangro, MORGAN, LEWIS & BOCKIUS LLP, Washington, DC
Attorneys for Plaintiffs-Counterclaim Defendants
Shea Gaza, Robert M. Vrana, and Samantha G Wilson, YOUNG
CONAWAY STARGATT & TAYLOR, LLP, Wilmington, DE Timothy C.
Bickham, John Caracappa, Jonathan B. Sallet, Scott M. Richey,
Beau M. Goodrick, and Andrew Xue, STEPTOE & JOHNSON LLP,
Washington, DC Michael Flynn-O'Brien, STEPTOE &
JOHNSON LLP, San Francisco, CA Attorneys for
U.S. District Judge
Defendants SZ DJI Technology Co., Ltd., DJI Europe B.V., and
DJI Technology Inc. (collectively, "DJI") filed
suit against Defendants-Counterclaim Plaintiffs Autel
Robotics USA LLC and Autel Aerial Technology Co., Ltd.
(collectively, "Autel") on August, 11, 2016,
alleging infringement of U.S. Patent Nos. 9, 016, 617 (the
'"617 Patent"), 9, 284, 049 (the '"049
Patent"), 9, 321, 530 (the '"530 Patent"),
and D691, 514 (the "D'514 Patent"). (D.I. 1)
The patents-in-suit relate to technology and operation of
unmanned aerial vehicle ("UAV") products.
before the Court is the issue of claim construction. The
parties completed briefing on July 29, 2019. (D.I. 359, 361,
374, 377) The parties' submissions included expert
declarations and excerpts of expert reports. (D.I. 360, 362,
375, 378, 379) The Court held a claim construction hearing on
October 3, 2019. (D.I. 407)
ultimate question of the proper construction of a patent is a
question of law. See Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S.Ct. 831, 837 (2015) (citing Markman v.
Westview Instruments, Inc., 517 U.S. 370, 388-91
(1996)). "It is a bedrock principle of patent law that
the claims of a patent define the invention to which the
patentee is entitled the right to exclude." Phillips
v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
(citation and internal quotation marks omitted).
"[T]here is no magic formula or catechism for conducting
claim construction." Id. at 1324. Instead, the
court is free to attach the appropriate weight to appropriate
sources "in light of the statutes and policies that
inform patent law." Id.
words of a claim are generally given their ordinary and
customary meaning .... [which is] the meaning that the term
would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the
effective filing date of the patent application."
Id. at 1312-13 (internal citations and quotation
marks omitted). "[T]he ordinary meaning of a claim term
is its meaning to the ordinary artisan after reading the
entire patent." Id. at 1321 (internal quotation
marks omitted). The patent "specification is always
highly relevant to the claim construction analysis. Usually,
it is dispositive; it is the single best guide to the meaning
of a disputed term." Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
"the claims themselves provide substantial guidance as
to the meaning of particular claim terms," the context
of the surrounding words of the claim also must be
considered. Phillips, 415 F.3d at 1314. Furthermore,
"[o]ther claims of the patent in question, both asserted
and unasserted, can also be valuable sources of
enlightenment.... [b]ecause claim terms are normally used
consistently throughout the patent." Id.
(internal citation omitted).
likewise true that "[differences among claims can also
be a useful guide .... For example, the presence of a
dependent claim that adds a particular limitation gives rise
to a presumption that the limitation in question is not
present in the independent claim." Id. at
1314-15 (internal citation omitted). This "presumption
is especially strong when the limitation in dispute is the
only meaningful difference between an independent and
dependent claim, and one party is urging that the limitation
in the dependent claim should be read into the independent
claim." SunRace Roots Enter. Co., Ltd. v. SRAM
Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
also possible that "the specification may reveal a
special definition given to a claim term by the patentee that
differs from the meaning it would otherwise possess. In such
cases, the inventor's lexicography governs."
Phillips, 415 F.3d at 1316. It bears emphasis that
"[e]ven when the specification describes only a single
embodiment, the claims of the patent will not be read
restrictively unless the patentee has demonstrated a clear
intention to limit the claim scope using words or expressions
of manifest exclusion or restriction." Hill-Rom
Servs., Inc. v. Stryker Corp., 755 F.3d 1367,
1372 (Fed. Cir. 2014) (quoting Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004))
(alteration in original) (internal quotation marks omitted).
addition to the specification, a court "should also
consider the patent's prosecution history, if it is in
evidence." Markman v. Westview Instruments,
Inc., 52 F.3d 967, 980 (Fed. Cir. 1995),
aff'd, 517 U.S. 370 (1996). The prosecution
history, which is "intrinsic evidence,"
"consists of the complete record of the proceedings
before the [Patent and Trademark Office] and includes the
prior art cited during the examination of the patent."
Phillips, 415 F.3d at 1317. "[T]he prosecution
history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and
whether the inventor limited the invention in the course of
prosecution, making the claim scope narrower than it would
otherwise be." Id.
some cases, ... the district court will need to look beyond
the patent's intrinsic evidence and to consult extrinsic
evidence in order to understand, for example, the background
science or the meaning of a term in the relevant art during
the relevant time period." Teva, 135 S.Ct. at
841. "Extrinsic evidence consists of all evidence
external to the patent and prosecution history, including
expert and inventor testimony, dictionaries, and learned
treatises." Markman, 52 F.3d at 980. For
instance, technical dictionaries can assist the court in
determining the meaning of a term to those of skill in the
relevant art because such dictionaries "endeavor to
collect the accepted meanings of terms used in various fields
of science and technology." Phillips, 415 F.3d
at 1318. In addition, expert testimony can be useful "to
ensure that the court's understanding of the technical
aspects of the patent is consistent with that of a person of
skill in the art, or to establish that a particular term in
the patent or the prior art has a particular meaning in the
pertinent field." Id. Nonetheless, courts must
not lose sight of the fact that "expert reports and
testimony [are] generated at the time of and for the purpose
of litigation and thus can suffer from bias that is not
present in intrinsic evidence." Id. Overall,
while extrinsic evidence "may be useful to the
court," it is "less reliable" than intrinsic
evidence, and its consideration "is unlikely to result
in a reliable interpretation of patent claim scope unless
considered in the context of the intrinsic evidence."
Id. at 1318-19. Where the intrinsic record
unambiguously describes the scope of the patented invention,
reliance on any extrinsic evidence is improper. See
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90
F.3d at 1583).
"[t]he construction that stays true to the claim
language and most naturally aligns with the patent's
description of the invention will be, in the end, the correct
construction." Renishaw PLC v. Marposs
Societa'per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998). It follows that "a claim interpretation that
would exclude the inventor's device is rarely the correct
interpretation." Osram GmbH v. Int'l Trade
Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007)
(quoting Modine Mfg. Co. v. U.S. Int'l Trade
Comm'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).
CONSTRUCTION OF DISPUTED TERMS
"The ornamental design for a rotor aircraft,
substantially as shown and described"
Plain and ordinary meaning.
Alternatively, "the ornamental design for a
rotor aircraft, substantially as shown and described
in Figures 1-7."
Alternatively, "a full monocoque quadcopter
having: a cruciform housing having four branches that
flare to meet one another to form a central body; the
logo depicted in Figure 5; a rectangular battery
compartment cover on the front side of the central
body of the aircraft; a round light on the back side
of the central body of the aircraft; two relatively
dark stripes on each of the front branches; indicator
lights along the underside of the branches between
the rotors and the central body; and four
substantially parallel legs that include an inward
curve near where they attach to the central body and
that include front-to-rear crossbars at the bottom of
"The ornamental design for a rotor aircraft,
substantially as shown and described in Figures 1-
argues that the D'514 Patent is invalid because it fails
to distinguish between claimed ornamental and unclaimed
functional features, the design is primarily functional
rather than ornamental, and a POSA would not be able to
determine whether the design of another UAV is
"substantially" similar to the claimed features of
the D'514 Patent. (D.I. 361 at 10; D.I. 377 at 2) Autel
argues that the figures in the patent fail to distinguish
between the claimed design and the embodying article or
ornamental features. (D.I. 361 at 12; D.I. 377 at 2-3)
as well as drawings are accepted by the USPTO. See,
e.g., 37 C.F.R. § l.84. In particular, as Autel
concedes (D.I. 361 at 12), photographs are acceptable in a
design patent if they "are the only practicable medium
for illustrating the claimed invention," 37 C.F.R.
§ 1.84. Here, the figures in the D'514 Patent are
appropriate, as the patent claims all ornamental aspects of
the claimed design.
D'514 Patent does not attempt to claim functional
elements; rather it claims a design that happens to have
function. The design is not governed solely by function, as
the design is not the only possible form of the article that
could perform its function. Indeed, DJI points to many other
possible designs that would perform the same function
(see, e.g., D.I. 359 at 11; Braasch Decl.
¶¶ 29-39), and Autel's expert concedes that
alternative designs exist (Eby Decl. ¶ 29). The
availability of alternative designs is "an important -
if not dispositive - factor in evaluating the legal
functionality of a claimed design." Ethicon
Endo-Surgery, Inc. v. Covidien, Inc.,796 F.3d 1312,
1329-30 (Fed. Cir. 2015); see also L.A. Gear, Inc. v.
Thorn McAn Shoe Co.,988 F.2d 1117, ...