apple 1016 page 1 of 17 u.s. pat. 8,504,746 · 2016-10-18 · papst licensing digital camera patent...

1255PAPST LICENSING DIGITAL CAMERA PATENT LITIGATIONCite as 778 F.3d 1255 (Fed. Cir. 2015)

missing characteristic is ‘‘necessarily pres-ent’’ in the first reference. Id. Here, theSony Vaio press release does not disclosethat the Sony Vaio C1 Picturebook is ca-pable of ‘‘streaming video’’ or ‘‘continuousvideo transmission.’’ The press releaseonly discloses that the Sony Vaio C1 Pic-turebook can send out ‘‘digital video clipsand still pictures TTT attached to e-mailmessages.’’ Sending out an e-mail mes-sage with a video file attached does notdisclose streaming video or, as construed,continuous video transmission. In fact,the 8423 application distinguishes betweenstreaming video and sending a video file:‘‘a user may want to wirelessly communi-cate streaming video or a video file.’’8423 application p. 21 ll. 22–23 (emphasisadded). The Sony Vaio press releasedoes not discuss streaming or continuoustransmission of anything—it merely dis-closes sending a video file as an attach-ment to an e-mail.

Nowhere in the record did the examineror the Board explain how implementingKnowles’s disclosed image transmissionmethod on a Sony Vaio C1 Picturebookdiscloses streaming video or continuousvideo transmission. Instead, both theBoard and the examiner found thatKnowles discloses continuous image trans-mission and that Knowles can be imple-mented on the Sony Vaio C1 Picturebook,which is capable of sending video files viaemail. J.A. 6, 9–10, 154–55. These twofindings do not provide substantial evi-dence that Knowles discloses, expressly,inherently, or even implicitly, streamingvideo capabilities. For these reasons, wehold that the Board erred in concludingthat Knowles discloses the claimed ‘‘com-munications module TTT operable to wire-lessly communicate streaming video to adestination.’’

CONCLUSION

Because the Board incorrectly construed‘‘wireless’’ and its rejection of claims 1–5 is

not supported under the correct construc-tion, and because the Board’s conclusionthat Knowles discloses a communicationsmodule operable to wirelessly communi-cate streaming video to a destination is notsupported by substantial evidence, we re-verse the rejections of claims 1–5 and 34–47 and remand.

REVERSED AND REMANDED.

,

In re PAPST LICENSING DIGITALCAMERA PATENT

LITIGATION.

Papst Licensing GMBH & Co.KG, Plaintiff–Appellant,

v.

Fujifilm Corporation, Fujifilm NorthAmerica Corporation (formerlyknown as Fujifilm USA, Inc.), Hew-lett–Packard Company, JVC Companyof America, Nikon Corporation, Ni-kon, Inc., Olympus Corp., OlympusImaging America Inc., Panasonic Cor-poration (formerly known as Matsu-shita Electric Industrial Co., LTD.),Panasonic Corporation of NorthAmerica, Samsung Opto–ElectronicsAmerica, Inc., Samsung Techwin Co.,and Victor Company of Japan, Ltd.,Defendants–Appellees.

No. 2014–1110.

United States Court of Appeals,Federal Circuit.

Feb. 2, 2015.

Background: Competitor commenced ac-tion against patentee, seeking declaratoryjudgment that it did not infringe patents

Apple 1016 of 17 U.S. Pat. 8,504,746

1256 778 FEDERAL REPORTER, 3d SERIES

on interface device for transferring databetween input-output data device and hostcomputer. Patentee commenced other ac-tions against other competitors, alleginginfringement. Actions were consolidated bymulti-district litigation panel and trans-ferred. The United States District Courtfor the District of Columbia, Rosemary M.Collyer, J., 967 F.Supp.2d 48 and 987F.Supp.2d 58, granted summary judgmentof non-infringement. Patentee appealed.

Holdings: The Court of Appeals, Taranto,Circuit Judge, held that:

(1) de novo review applied to districtcourt’s patent claim constructions;

(2) term, ‘‘interface device,’’ was not limit-ed to ‘‘stand-alone device’’;

(3) phrase ‘‘second connecting device,’’ didnot require physical plug, socket, orother structure that permitted user toreadily attach and detach somethingelse;

(4) interface device did not have to becapable of receiving data that movedfrom data device after connecting tohost;

(5) phrases, ‘‘virtual files’’ and ‘‘simulatinga virtual file system,’’ allowed virtualfiles to be derived from data alreadyphysically stored on interface devicewhen host requested relevant virtualfile; and

(6) term, ‘‘input/output device customaryin a host device’’ and term ‘‘storagedevice customary in a host device,’’only required device to be one that wasnormally part of commercially avail-able computer systems at time of in-vention.

Vacated and remanded.

1. Patents O1555The patent infringement inquiry,

which asks if an accused device containsevery claim limitation or its equivalent,

depends on the proper construction of theclaims.

2. Patents O1970(13)De novo review applied to district

court’s patent claim constructions, sinceintrinsic evidence fully determined properconstructions.

3. Patents O1311Generally, a court gives words of a

claim their ordinary meaning in the con-text of the claim and the whole patentdocument.

4. Patents O1328, 1338(1)The patent specification particularly,

but also the prosecution history, informsthe determination of claim meaning in con-text, including by resolving ambiguities.

5. Patents O1343Even if the meaning is plain on the

face of the claim language, the patenteecan, by acting with sufficient clarity, dis-claim such a plain meaning or prescribe aspecial definition.

6. Patents O1316, 1328Patent claim construction that stays

true to the claim language and most natu-rally aligns with the patent’s description ofthe invention will be, in the end, the cor-rect construction.

7. Patents O1853District court may revisit, alter, or

supplement its patent claim constructionsto the extent necessary to ensure that finalconstructions serve their purpose of genu-inely clarifying the scope of claims for thefinder of fact.

8. Patents O1393Term ‘‘interface device,’’ in patents on

interface device for transferring data be-tween input-output data device and hostcomputer, was not limited to ‘‘stand-alonedevice,’’ i.e., device that was physically sep-

Apple 1016 of 17 U.S. Pat. 8,504,746


arate and apart from, and not permanentlyattached to, data device or host computer.

9. Patents O1393Phrase ‘‘second connecting device,’’ in

patents on interface device for transferringdata between input-output data device andhost computer, did not require physicalplug, socket, or other structure that per-mitted user to readily attach and detachsomething else.

10. Patents O1332Patent claims generally are not limit-

ed to features found in what the writtendescription presents as mere embodi-ments, where the claim language is plainlybroader.

11. Patents O1393‘‘Interface device’’ in patents for

transferring data between input-outputdata device and host computer did nothave to be capable of receiving data thatmoved from data device after connectingto host.

12. Patents O1853Patentee was not required to state its

opposition to court’s patent claim construc-tion twice when seeking modification, andthus properly limited its request to mani-fest error resting on plain misapprehen-sion of the record, rather than rehashingbroader arguments on claim constructionthat court had fully considered; patentee’slimited approach in seeking a modificationwas commendably consistent with generalanti-repetition principle governing re-quests for reconsideration.

13. Patents O1393Phrases, ‘‘virtual files’’ and ‘‘simulat-

ing a virtual file system,’’ in patents fortransferring data between input-outputdata device and host computer, allowedvirtual files to be derived from data al-ready physically stored on interface devicewhen host requested relevant virtual file;although written description’s discussion of

real-time input files showed that virtualfile might be constructed from data resid-ing on data device, nothing in written de-scription limited virtual files to that ar-rangement.

14. Patents O1393Term ‘‘input/output device customary

in a host device’’ and term ‘‘storage devicecustomary in a host device,’’ in patents fortransferring data between input-outputdata device and host computer, only re-quired device to be one that was normallypart of commercially available computersystems at time of invention; ‘‘in’’ from‘‘customary in’’ did not imply physical loca-tion inside computer chassis.

15. Patents O1324Generally, a court does not construe

the claims of a patent to exclude a pre-ferred embodiment.

Patents O20916,470,399, 6,895,449. Cited.

John T. Battaglia, Fisch Sigler LLP, ofWashington, DC, argued for plaintiff-ap-pellant. With him on the brief were AlanM. Fisch and Roy William Sigler.

Rachel M. Capoccia, Alston & BirdLLP, of Los Angeles, CA, argued for de-fendants-appellees. With her on the brieffor Panasonic Corporation, et al., wasThomas W. Davison. On the brief forFujifilm Corporation, et al., were Steven J.Routh, Sten A. Jensen, John R. Inge andT. Vann Pearce, Jr, Orrick, Herrington &Sutcliffe LLP, of Washington, DC. On thebrief for Nikon Corporation, et al., wereDavid L. Witcoff and Marc S. Blackman,Jones Day, of Chicago, IL. Of counsel wasMarron Ann Mahoney. On the brief forOlympus Corporation, et al., were RichardDe Bodo and Andrew V. Devkar, Bingham

Apple 1016 of 17 U.S. Pat. 8,504,746


McCutchen LLP, of Santa Monica, CA. Ofcounsel was Susan Baker Manning, Mor-gan, Lewis & Bockius LLP, of Washing-ton, DC. On the brief for Samsung Te-chwin, Co., et al., was Patrick J. Kelleher,Drinker Biddle & Reath LLP, of Chicago,IL.

Charlene M. Morrow, Fenwick & WestLLP, of Mountain View, CA, argued fordefendant-appellee Hewlett–Packard Com-pany. With her on the brief were DavidD. Schumann and Bryan A. Kohm, of SanFrancisco, CA.

Before TARANTO, SCHALL, andCHEN, Circuit Judges.

TARANTO, Circuit Judge.

Papst Licensing GmbH & Co. KG ownsU.S. Patent Nos. 6,470,399 and 6,895,449.The written descriptions are largely thesame, the 8449 patent having issued on adivisional application carved out of the ap-plication that became the 8399 patent.The focus of both patents is an interfacedevice for transferring data between aninput/output data device and a host com-puter. The current appeal involves wheth-er certain digital-camera manufacturers in-fringe Papst’s patents. The district court,applying and elaborating on its construc-tions of various claim terms, entered sum-mary judgment of non-infringement, con-cluding that none of the manufacturers’accused products at issue here come withinany of the asserted claims. Papst appealsfive claim constructions. We agree withPapst that the district court erred in theidentified respects. We therefore vacatethe summary judgment of non-infringe-ment.

BACKGROUND

The 8399 and 8449 patents, both entitled‘‘Flexible Interface for Communication Be-

tween a Host and an Analog I/O DeviceConnected to the Interface Regardless theType of the I/O Device,’’ disclose a devicedesigned to facilitate the transfer of databetween a host computer and another de-vice on which data can be placed or fromwhich data can be acquired. 8399 patent,Title and Abstract.1 The written descrip-tion states that, while interface deviceswere known at the time of the invention,the existing devices had limitations, includ-ing that they tended to require disadvanta-geous sacrifices of data-transfer speed orof flexibility as to what host computers anddata devices they would work with. 8399patent, col. 1, line 15, to col. 2, line 13.Thus, ‘‘standard interfaces’’—those ‘‘which,with specific driver software, can be usedwith a variety of host systems’’—‘‘general-ly require very sophisticated drivers’’ to bedownloaded onto the host computer, butsuch drivers ‘‘are prone to malfunction andTTT limit data transfer rates.’’ Id. at col.1, lines 22–28. On the other hand, withinterface devices that ‘‘specifically matchthe interface very closely to individual hostsystems or computer systems,’’ ‘‘high datatransfer rates are possible,’’ but such in-terface devices ‘‘generally cannot be usedwith other host systems or their use isvery ineffective.’’ Id. at col. 1, line 67, tocol. 2, line 7. The fast, host-tailored inter-face also ‘‘must be installed inside the com-puter casing to achieve maximum datatransfer rates,’’ which is a problem forlaptops and other space-constrained hostsystems. Id. at col. 2, lines 8–13.

The patents describe an interface deviceintended to overcome those limitations. Itis common ground between the partiesthat, when a host computer detects that anew device has been connected to it, anormal course of action is this: the host

1. Because the 8399 and 8449 patents havevery similar written descriptions, we cite the8399 patent, and refer to a ‘‘written descrip-

tion’’ in the singular, except when there areimportant differences between the two.

Apple 1016 of 17 U.S. Pat. 8,504,746


asks the new device what type of device itis; the connected device responds; thehost determines whether it already pos-sesses drivers for (instructions for commu-nicating with) the identified type of device;and if it does not, the host must obtaindevice-specific drivers (from somewhere)before it can engage in the full intendedcommunication with the new device. Inthe patents at issue, when the interfacedevice of the invention is connected to ahost, it responds to the host’s request foridentification by stating that it is a type ofdevice, such as a hard drive, for which thehost system already has a working driver.By answering in that manner, the interfacedevice induces the host to treat it—and,indirectly, data devices on the other side ofthe interface device, no matter what typeof devices they are—like the device that isalready familiar to the host. Thereafter,when the host communicates with the in-terface device to request data from orcontrol the operation of the data device,the host uses its native device driver, andthe interface device translates the commu-nications into a form understandable bythe connected data device. See id. at col.3, line 25, to col. 5, line 32.

The interface device of the inventionthus does not require that a ‘‘speciallydesigned driver’’ for the interface devicebe loaded into a host computer—neither a‘‘standard’’ one to be used for a variety ofhosts nor one customized for a particularhost. Id. at col. 5, line 15. Instead, ituses a host’s own familiar driver, which (asfor a hard drive) often will have beendesigned (by the computer system’s manu-facturer) to work fast and reliably. Theresult, says the written description, is toallow data transfer at high speed withoutneeding a new set of instructions for everyhost—‘‘to provide an interface device forcommunication between a host device anda data transmit/receive device whose use ishost device-independent and which deliv-

ers a high data transfer rate.’’ Id. col. 3,lines 25–28.

Claim 1 of the 8399 patent sets forth thespecifics of the claimed interface device:

1. An interface device for communica-tion between a host device, which com-prises drivers for input/output devicescustomary in a host device and a multi-purpose interface, and a data trans-mit/receive device, the data trans-mit/receive device being arranged forproviding analog data, comprising:a processor;a memory;a first connecting device for interfacingthe host device with the interface devicevia the multipurpose interface of thehost device; anda second connecting device for inter-facing the interface device with the datatransmit/receive device, the second con-necting device including a sampling cir-cuit for sampling the analog data provid-ed by the data transmit/receive deviceand an analog-to-digital converter forconverting data sampled by the sam-pling circuit into digital data,wherein the interface device is config-ured by the processor and the memoryto include a first command interpreterand a second command interpreter,wherein the first command interpreter isconfigured in such a way that the com-mand interpreter, when receiving an in-quiry from the host device as to a typeof a device attached to the multi-purposeinterface of the host device, sends asignal, regardless of the type of thedata transmit/receive device attachedto the second connecting device of theinterface device, to the host device whichsignals to the host device that it is aninput/output device customary in ahost device, whereupon the host devicecommunicates with the interface deviceby means of the driver for the input/out-

Apple 1016 of 17 U.S. Pat. 8,504,746


put device customary in a host device,andwherein the second command interpret-er is configured to interpret a data re-quest command from the host device tothe type of input/output device signaledby the first command interpreter as adata transfer command for initiating atransfer of the digital data to the hostdevice.

Id. col. 12, line 42, to col. 13, line 13(emphases added to highlight language ofparticular significance to the issues on ap-peal). Claim 1 of the 8449 patent is simi-lar, but it does not require the data deviceto be an analog device, and it requires theinterface device to respond to the host thatit is a storage device. 8449 patent, col. 11,line 46, to col. 12, line 6. A few otherdifferences between the claims are dis-cussed infra.

Beginning in 2006, Papst sent letters tomajor digital-camera manufacturers, ac-cusing them of infringing its patents andrequesting that they enter into negotia-tions to license its inventions. One of themanufacturers sued Papst in the UnitedStates District Court for the District ofColumbia, seeking a declaratory judgmentof non-infringement. In 2008, Papst filedinfringement suits against the cameramanufacturers in multiple district courtsacross the country. A multi-district litiga-tion panel then consolidated all cases andtransferred them to the D.C. district court.

In preparation for claim construction,the district court received a ‘‘tutorial’’ fromthe parties’ experts, whom the court askedto be ‘‘neutral’’ and who addressed thebackground of the technology, how theclaimed inventions work, and other techni-cal understandings, but not whether anyparticular term in the patent or the priorart has a particular meaning in the rele-vant field. J.A. 1596–97; see In re PapstLicensing GmbH & Co. KG Litig., No. 07–mc–00493 (D.D.C. June 6, 2008) (order

specifying scope of tutorial). The courtthen heard extensive argument from coun-sel, but it declined to admit expert testimo-ny or to rely on an expert declaration fromPapst, stating that ‘‘the intrinsic evi-dence—the claims, the specification, andthe prosecution history—provide the fullrecord necessary for claims construction.’’J.A. 1597.

The court issued its initial claim-con-struction order in 2009. It issued a modi-fied claim-construction order after addi-tional briefing. The district court thenruled on eight summary-judgment motionsfiled by the camera manufacturers, treat-ing the manufacturers as two distinctgroups—one group consisting of Hewlett–Packard Co. (‘‘HP’’), the other of all otheraccused manufacturers (‘‘Camera Manu-facturers’’). As detailed in our discussioninfra, the court’s rulings on summaryjudgment clarified what it understoodsome of its claim constructions to mean.With respect to the accused products nowat issue, the combined effect of the court’ssummary-judgment rulings was a determi-nation of non-infringement by the CameraManufacturers and HP. The court ulti-mately entered a final judgment of non-infringement under Federal Rule of CivilProcedure 54(b) for both HP and the Cam-era Manufacturers, In re Papst LicensingGmbH & Co. KG Litig., 987 F.Supp.2d 58,62 (D.D.C.2013), having severed certainother claims, In re Papst Licensing GmbH& Co. KG Litig., 967 F.Supp.2d 63, 65 n. 2,71 (D.D.C.2013).

Papst appeals, arguing that the court’ssummary-judgment orders should be re-versed because they rely on incorrect con-structions of five different terms from the8399 and 8449 patents. We have jurisdic-tion under 28 U.S.C. § 1295(a)(1).

DISCUSSION

[1, 2] We review the grant of summaryjudgment of non-infringement de novo, ap-

Apple 1016 of 17 U.S. Pat. 8,504,746


plying the same standard used by the dis-trict court. See Bender v. Dudas, 490F.3d 1361, 1366 (Fed.Cir.2007). The in-fringement inquiry, which asks if an ac-cused device contains every claim limita-tion or its equivalent, Warner–JenkinsonCo. v. Hilton Davis Chem. Co., 520 U.S.17, 29, 117 S.Ct. 1040, 137 L.Ed.2d 146(1997), depends on the proper constructionof the claims. See Cybor Corp. v. FASTechs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.1998) (en banc). In this case, we reviewthe district court’s claim constructions denovo, because intrinsic evidence fully de-termines the proper constructions. SeeTeva Pharm. U.S.A., Inc. v. Sandoz, Inc.,––– U.S. ––––, 135 S.Ct. 831, 840–42, –––L.Ed.2d –––– (2015). As we have noted,the district court relied only on the intrin-sic record, not on any testimony aboutskilled artisans’ understandings of claimterms in the relevant field, and neitherparty challenges that approach.

Two clarifications simplify our analysisso that it is enough for us to address thecorrectness of the district court’s construc-tions. First, the parties have not present-ed developed arguments other than argu-ments about the choice, on each issue,between the district court’s constructionand the alternative construction by Papstthat the district court rejected. Specifical-ly, for none of the issues have the partiesidentified a third possibility and both elab-orated an argument for such a possibilityand explained the importance to the caseof considering it. Second, it is appropri-ate, if we reject all five of the challengedconstructions, to vacate the summary-judg-ment orders and remand.2

[3–6] We reject the five constructionsat issue. We do so following our familiarapproach to claim construction. ‘‘We gen-erally give words of a claim their ordinarymeaning in the context of the claim and

the whole patent document; the specifica-tion particularly, but also the prosecutionhistory, informs the determination of claimmeaning in context, including by resolvingambiguities; and even if the meaning isplain on the face of the claim language, thepatentee can, by acting with sufficient clar-ity, disclaim such a plain meaning or pre-scribe a special definition.’’ World ClassTech. Corp. v. Ormco Corp., 769 F.3d 1120,1123 (Fed.Cir.2014); see Phillips v. AWHCorp., 415 F.3d 1303, 1312–17 (Fed.Cir.2005) (en banc); Thorner v. Sony Comput-er Entm’t Am. LLC, 669 F.3d 1362, 1365(Fed.Cir.2012). We apply, in particular,the principle that ‘‘[t]he construction thatstays true to the claim language and mostnaturally aligns with the patent’s descrip-tion of the invention will be, in the end, thecorrect construction.’’ Renishaw PLC v.Marposs Societa’ per Azioni, 158 F.3d1243, 1250 (Fed.Cir.1998), adopted byPhillips, 415 F.3d at 1316.

[7] On remand, this case will proceedin light of our claim-construction reversals.For that reason, it is worth reiteratingthat a district court may (and sometimesmust) revisit, alter, or supplement its claimconstructions (subject to controlling appel-late mandates) to the extent necessary toensure that final constructions serve theirpurpose of genuinely clarifying the scopeof claims for the finder of fact. See O2Micro Int’l Ltd. v. Beyond InnovationTech. Co., 521 F.3d 1351, 1359 (Fed.Cir.2008); Pfizer, Inc. v. Teva Pharm., USA,Inc., 429 F.3d 1364, 1377 (Fed.Cir.2005).That determination is to be made as thecase moves forward.

A

[8] Papst first challenges the districtcourt’s ‘‘memory card’’ summary judg-

2. If some aspects of the summary-judgmentorders are unaffected by our claim-construc-

tion rulings, they may, to that extent, be rein-stated on remand.

Apple 1016 of 17 U.S. Pat. 8,504,746


ment as relying on an improper construc-tion of the term ‘‘interface device’’ foundin the preamble of claims in both patents.The district court construed the term aslimiting the claims’ coverage to ‘‘stand-alone device[s].’’ In re Papst LicensingGmbH & Co. KG Litig., 670 F.Supp.2d 16,31–35 (D.D.C.2009) (‘‘Claim Constr. Op.’’).In particular, the court held that ‘‘thedata transmit/receive device must be aseparate device from the’’ claimed ‘‘inter-face device.’’ Id. at 33. Subsequently, ingranting summary judgment, the courtexplained that what it meant by this re-quirement is that the interface device maynot be ‘‘a permanent part of either thedata transmit/receive device or the hostde-vice/computer,’’ by which it meant thatit may not be located permanently insidethe housing of either of those two devices.In re Papst Licensing GmbH & Co. KGLitig., 932 F.Supp.2d 14, 18, 21–22(D.D.C.2013).

1

As a threshold matter, the Camera Man-ufacturers argue that we should not reachthis issue because the district court’s sum-mary-judgment rulings do not depend onthe construction of ‘‘interface device.’’They invoke principles stated in SanDiskCorp. v. Kingston Technology Co., 695F.3d 1348, 1354 (Fed.Cir.2012) (‘‘[W]here,as here, a party’s claim construction argu-ments do not affect the final judgmententered by the court, they are not reviewa-ble.’’), and Mangosoft, Inc. v. Oracle Corp.,525 F.3d 1327, 1330 (Fed.Cir.2008) (‘‘wereview judgments, not opinions’’). Weconclude, however, that the premise forinvoking the cited principles is missinghere.

The district court’s summary-judgmentorder regarding memory-card devicesshows that its final judgment did turn onthe construction of ‘‘interface device.’’The primary reason the court gave forrejecting Papst’s infringement contentions

was that ‘‘[t]he Court made clear in itsclaims construction opinion that the inter-face device is separate and distinct fromthe data transmit/receive device.’’ Papst,932 F.Supp.2d at 21. The court cited re-peatedly to the portion of its claim-con-struction opinion addressing ‘‘interface de-vice.’’ E.g., id. at 18 (citing Claim Constr.Op. at 32–35); id. at 21 (citing ClaimConstr. Op. at 34–35); id. at 23 (citingClaim Constr. Op. at 31–35). And in itsopening paragraphs, the court summarizedthe Camera Manufacturers’ position onsummary judgment as relying on thatsame construction. Id. at 16 (‘‘Becausethe invented ‘interface device’ is a stand-alone device that is separate and apartfrom any data transmit/receive device, theCamera Manufacturers contend that amemory card cannot be both part of theinterface device and a data transmit/re-ceive deviceTTTT’’). In these circum-stances, we will consider whether the dis-trict court’s construction is correct.

2

We hold that the term ‘‘interface device’’is not limited to a ‘‘stand-alone device’’ inthe district court’s sense relied on for sum-mary judgment: a device that is physicallyseparate and apart from, and not perma-nently attached to, a data device (or a hostcomputer). Representative claim 1 of the8449 patent begins, ‘‘[a]n interface deviceTTT comprising the following features,’’and then recites the necessary componentsof the claimed interface device. See suprapp. 1259–60. Neither the claim languagenor the rest of the intrinsic record sup-ports the district court’s exclusion of adevice that performs the required inter-face functions and is installed permanentlyinside the housing of a particular datadevice.

The district court did not suggest thatthe term ‘‘interface device’’ by itself im-

Apple 1016 of 17 U.S. Pat. 8,504,746


plied its construction. Rather, it heavilyrelied for its construction on the specificclaim requirement that (to paraphrase) apart of the interface, upon receiving anidentification query from the host comput-er, send a signal identifying itself as ahost-familiar device ‘‘regardless of the typeof the data transmit/receive device at-tached to the second connecting device ofthe interface device.’’ 8449 Patent, col. 11,lines 63–65. The court concluded that the‘‘regardless’’ phrasing in the claim ‘‘strong-ly indicates that various kinds of datatransmit/receive devices could be attached’’to the interface device. Claim Constr. Op.at 32–33.

But the court’s construction does notfollow from its understanding of the ‘‘re-gardless’’ phrase. Nothing about thatphrase forbids any single instance of theclaimed interface device to be permanentlyattached to a particular data device. Itreadily allows permanent attachment ofeach copy of the interface device to aparticular data device, prescribing onlythat the same host-responsive identifica-tion signal be sent regardless of what typeof data device the interface device is at-tached to. That is, there can be multiplecopies of the same interface device, witheach permanently attached to one of avariety of different data devices. Theclaim language, in short, does not limit‘‘interface device’’ to a device not perma-nently attached to (readily detachablefrom) a data device.

The written description does not do soeither. Critically, the district court’s con-struction, like the Camera Manufacturers’arguments supporting it, fundamentallymistakes what the description makes clearis the stated advance over the prior art.As explained supra, the described advanceover the prior art was the elimination ofthe need for special drivers to be placed onthe host computer by instead having thehost computer use a single, already-pres-

ent, fast, reliable driver to communicatewith the interface and, through it, with thedata device, which need not be of a partic-ular type. Nothing about that advancesuggests exclusion of a permanent attach-ment of such an interface to the data de-vice—a construction that is ‘‘unmooredfrom, rather than aligned with’’ what isdescribed as the invention’s advance.World Class Tech., 769 F.3d at 1124.

No passage in the written descriptionsays otherwise. The Camera Manufactur-ers cite passages that describe the inven-tion as ‘‘sufficiently flexible to permit at-tachment of very different electrical orelectronic systems to a host device.’’ 8399patent, col. 1, lines 56–59; id., col. 7, lines45–49 (touting the ‘‘present invention’’ asallowing ‘‘an interface between a host de-vice and almost any data transmit/receivedevice’’). But that language does notspeak to the connection between the in-terface and data devices. Rather, it ad-dresses the connection between the hostcomputer and data devices, a connectionfacilitated by the interface device. Evenas to that, the passage may be read mere-ly to assert the capability of one-to-onehost-to-data-device connections, with thedata device chosen from a wide variety ofpossible data devices. But even if it isread to assert a capability of one-to-manyhost-to-data-device connections, it saysnothing to assert that a given copy of theinterface device must be attachable to dif-ferent data devices either simultaneouslyor seriatim.

The Camera Manufacturers also point tothe written description’s statement that‘‘[i]n the interface device according to thepresent invention an enormous advantageis to be gained TTT in separating the actualhardware required to attach the interfacedevice to the data transmit/receive devicefrom the communication unit,’’ 8399 patent,col. 8, lines 23–28 (figure numbers re-

Apple 1016 of 17 U.S. Pat. 8,504,746


moved)—which they say means that per-mitting multiple data devices to attach to asingle interface device is an integral partof the invention. But that passage doesnot support the district court’s limitingconstruction, and not only because it ispart of the description of several preferredembodiments, rather than a clear declara-tion of what constitutes an essential part ofthe invention.

The full passage makes clear that the‘‘hardware separation’’ is not between theinterface and data device, but within theinterface device itself—between the sec-ond connecting device, on one hand, and‘‘the digital signal processor, the memorymeans[,] and the first connecting device,’’on the other. Id., col. 8, lines 28–29 (fig-ure numbers removed). When the pas-sage states that this separation ‘‘allows aplurality of dissimilar device types to beoperated in parallel in identical manner,’’it immediately adds: ‘‘Accordingly, manyinterface devices can be connected to ahost device which then sees many differ-ent ‘virtual’ hard disks.’’ Id. col. 8, lines30–33 (emphasis added). The suggestionis that distinct interface devices are usedfor distinct data devices, each interfacedevice incorporating a ‘‘second connectingdevice’’ that works for its particular datadevice. This suggestion works against,rather than supports, the Camera Manu-facturers’ view of multiple data devicesattached to a single (separate) interfacedevice, whether at once or in sequence, forit readily accommodates a one-to-one per-manent attachment of an interface deviceto a data device. And the parallel opera-tion of dissimilar device types is possiblebecause the invention causes the host com-puter to use its native software to transferdata at high speed and because the inven-

tion creates a uniform interface from thehost’s perspective for controlling the datadevice. See, e.g., 8399 patent, col. 7, lines45–49.

Finally, nothing in the prosecution histo-ry supports the district court’s narrow con-struction. The Camera Manufacturerspoint to an amendment that changed theclaim language from ‘‘the type of a deviceattached’’ to ‘‘a type of device attached’’ inwhat became claim 1 of the 8399 patent.J.A. 391. But there was no accompanyingexplanation of the change, which, on itsface, does nothing more than the ‘‘regard-less’’ language of claim 1 does, and thatlanguage, as we have explained, does notforbid permanent attachment. The Cam-era Manufacturers also note that the appli-cant stated that ‘‘it is clear that the datatransmit/receive device to be connected tothe second connecting device of the subjectinterface provides analog data.’’ J.A. 389(emphasis added). Nothing in that state-ment precludes the connection from beingpermanent once made.

B

[9] Papst also appeals the districtcourt’s construction of the phrase ‘‘secondconnecting device,’’ which appears in bothpatents.3 The district court construed theterm as ‘‘a physical plug or socket forpermitting a user readily to attach anddetach the interface device with a pluralityof dissimilar data transmit/receive de-vices.’’ Claim Constr. Op. at 43. Theparties’ arguments over the proper con-struction of ‘‘second connecting device’’largely mirror the arguments over wheth-er the interface device must be readilydetachable from the data device. SeeCamera Manufacturers’ Br. 68 (‘‘As ex-

3. The 8399 and 8449 patent claims use slightlydifferent language, but neither party suggeststhat the difference affects the proper con-struction of ‘‘second connecting device.’’ Nor

does either party argue that the claim lan-guage is means-plus-function language underwhat is now codified as 35 U.S.C. § 112(f).

Apple 1016 of 17 U.S. Pat. 8,504,746


plained above, the claim language requiresthe interface device to be connectable tomany different types of [data devices].’’);HP’s Br. 3 (‘‘Core to the invention is theability to attach the interface device todifferent or multiple data transmit/receivedevices.’’). The district court likewise tiedits construction of ‘‘second connecting de-vice’’ to its understanding that the inter-face device must be a stand-alone onereadily attachable to and detachable frommultiple data devices. See Claim Constr.Op. at 42, 44.

[10] We conclude that the districtcourt’s construction of ‘‘second connectingdevice’’ is incorrect largely for reasons wehave given for rejecting the ‘‘interface de-vice’’ construction. The district court didnot conclude, and the Camera Manufactur-ers and HP have not meaningfully argued,that the ordinary meaning of ‘‘second con-necting device’’ (or ‘‘connecting device’’)requires a physical plug, socket, or otherstructure that permits a user to readilyattach and detach something else. Theprincipal basis for the district court’s inclu-sion of those requirements was the basiswe have already rejected—the view thatother claim language and the written de-scription require the interface device (ofwhich the second connecting device is apart, according to the claims) to be stand-alone. For ‘‘second connecting device,’’the district court added that a preferredembodiment from the written descriptionincludes pin connectors and other socket-like structures. See Claim Constr. Op. at42–44. But we see nothing to take thatembodiment outside the reach of the usualrule that claims are generally not limitedto features found in what the written de-scription presents as mere embodiments,where the claim language is plainly broad-er. Phillips, 415 F.3d at 1323.

C

[11] The district court’s construction ofthe phrase ‘‘data transmit/receive device’’is challenged here as well. The districtcourt construed the phrase to mean ‘‘adevice that is capable of either (a) trans-mitting data to or (b) transmitting data toand receiving data from the host devicewhen connected to the host device by theinterface device.’’ Claim Constr. Op. at 39(emphasis added). The parties’ disputefocuses on the ‘‘when connected’’ portion ofthe court’s construction, which the districtcourt understood to require that the datadevice be capable of transmitting datawhile connected to the host, that is, able tobegin transmitting after the interface de-vice is connected to the host device. In rePapst Licensing GmbH & Co. KG Litig.,967 F.Supp.2d 1, 6–7 (D.D.C.2013). Wereject that portion of the court’s construc-tion.

1

The Camera Manufacturers initially ar-gue that Papst may not challenge the dis-trict court’s construction because ‘‘the dis-trict court adopted word-for-word theconstruction of [data transmit/receive de-vice] that Papst proposed.’’ CameraManufacturers’ Br. 47. That is an unrea-sonable characterization of what occurredin the district court. The Camera Manu-facturers, not Papst, proposed the bulk ofthe court’s construction, including the‘‘when connected’’ language. ClaimConstr. Op. at 37. Papst proposed a con-struction without the ‘‘when connected’’language, opposing inclusion of that lan-guage. Claim Constr. Op. at 37 (noting‘‘Papst objects to any construction’’ butargues in the alternative ‘‘that the termmay be construed ‘for context’ as ‘a de-vice that receives input and provides datato the interface device’ ’’ (citation omit-ted)). When the district court adopted

Apple 1016 of 17 U.S. Pat. 8,504,746


the Camera Manufacturers’ ‘‘when con-nected’’ language, Papst noticed that theadopted construction, in a respect distinctfrom the ‘‘when connected’’ dispute, rest-ed on a misunderstanding of a patent fig-ure, and it filed a motion identifying thealleged error and asking the court tomodify the adopted construction in theone respect needed to correct it. Papstlimited its motion to that point, leavingthe other, already-contested aspects ofthe claim construction untouched. Thedistrict court agreed with Papst and fixedthe construction as urged. Claim Constr.Op. at 39.

[12] The Camera Manufacturers arguethat Papst, having unsuccessfully opposeda construction with the ‘‘when connected’’language, lost its ability to challenge theadoption of the ‘‘when connected’’ languageby not re-raising the issue when seeking amodification based on a newly identifiedissue. See Oral Argument at 33:44–34:10(arguing that Papst forfeited its challengebecause it requested a modification with-out ‘‘reserv[ing] the ability to go back laterto ask for [its] old construction’’). Thiscontention is wholly without merit. In thedistrict court, Papst opposed the construc-tion it now opposes, and it was not re-quired to state its opposition twice. Papstcould not have given the district court theimpression that it suddenly supported theconstruction when, in seeking a modifica-tion, it limited its request to a manifesterror resting on a plain misapprehensionof the record, rather than rehashing thebroader arguments on claim constructionthat the court had fully considered.Papst’s limited approach in seeking a mod-ification was, indeed, commendably consis-tent with the general anti-repetition princi-ple governing requests for reconsideration.See Isse v. Am. Univ., 544 F.Supp.2d 25,29–30 (D.D.C.2008) (‘‘ ‘[W]here litigantshave once battled for the court’s decision,they should neither be required, nor with-

out good reason permitted, to battle for itagain.’ ’’ (citation omitted)).

2

We conclude that the data transmit/re-ceive device recited in the preamble to theclaims of the 8399 and 8449 patents neednot be capable of communicating ‘‘whenconnected to the host device by the inter-face device.’’ (The parties do not disputethat this language, though appearing inthe preamble, is a claim limitation. Weproceed on the assumption that it is.)Nothing about the ordinary meaning of‘‘data transmit/receive device’’ suggestsany temporal constraint on the transfer-ring of data. As the words imply, a datatransmit/receive device is a device thatmay transmit or receive data; those wordsoffer no information about when data istransferred.

To the extent that some claim languagedoes suggest a temporal constraint, thefocus is always on communications be-tween the interface device and the hostcomputer, not between the data device andthe host computer. For example, the in-terface device must send a signal to thehost device ‘‘when receiving an inquiryfrom the host device as to a type of adevice attached.’’ 8399 patent, col. 12, line65, to col. 13, line 3. After the interfacedevice signals to the host device, the inter-face device must be able to receive commu-nications from the host device. Id. col. 13,lines 5–8 (‘‘whereupon the host device com-municates with the interface device’’). Butthe claims of both patents are silent as towhen the interface device must communi-cate with the data device. If anything,claim 1 of the 8399 patent tends to suggestthat data can already have been trans-ferred to the interface device from thedata device before it is requested by thehost computer: claim 1 says that the inter-face device must ‘‘interpret a data request

Apple 1016 of 17 U.S. Pat. 8,504,746


command from the host device TTT as adata transfer command for initiating atransfer of the digital data to the hostdevice.’’ Id. col. 13, lines 10–13 (emphasisadded). Because claim 1 is limited to in-terface devices that receive analog datafrom a data device and then convert it todigital data, the quoted language seems tocontemplate that the initiated transfer is ofpre-converted digital data stored on theinterface device. Regardless, the claimlanguage nowhere requires the interfacedevice to be capable of receiving data thatmoves from the data device after connect-ing to the host.

The Camera Manufacturers offer nopersuasive argument for why the claimlanguage or any other part of the specifica-tion or prosecution history requires that adata device be able to communicate withthe host ‘‘when connected to the host de-vice by the interface device.’’ At mostthey assert, without significant elaboration,that the ‘‘specification nowhere disclosesindefinite storage by the interface deviceof data from a [data device].’’ CameraManufacturers’ Br. 51. This assertiondoes not suggest a disclaimer of any sort;it merely asserts an absence of somethingin the written description. But that ab-sence must be judged in light of what isplainly present in the written description—a disclosure of memory that is part of theinterface device. 8399 patent, col. 5, line52, and Figure 1. And we have been givenno reason at all to infer, from the absenceof more express statements regarding useof the disclosed memory in the interfacedevice for temporary storage of data fromthe data device, that the claim should beread to include a textually unsupported

‘‘when connected’’ requirement regardingtransfer of data to or from the data device.

The district court, when construing thedata-device claim language, focused almostexclusively on whether the data devicemust be capable of both sending and re-ceiving data. It did not lay out good rea-sons for adopting the ‘‘when connected’’requirement as part of its construction.Claim Constr. Op. at 37–39; In re PapstLicensing GmbH & Co. KG Litig., 624F.Supp.2d 54, 75–77 (D.D.C.2009). Find-ing no basis for that requirement, we con-clude that the court erred by includingthat phrase in its construction.

D

[13] The next issue we discuss is thedistrict court’s construction of the phrase‘‘virtual files’’ in the 8399 patent and thephrase ‘‘simulating a virtual file system’’ inthe 8449 patent.4 The district court con-strued ‘‘virtual files’’ as ‘‘files that appearto be but are not physically stored; rather,they are constructed or derived from exist-ing data when their contents are requestedby an application program so that theyappear to exist as files from the point ofview of the host device.’’ Claim Constr.Op. at 60. The court construed ‘‘simulat-ing a virtual file system’’ almost identicallyas ‘‘appearing to be a system of files, in-cluding a directory structure, that is notphysically stored; rather, it is constructedor derived from existing data when itscontents are requested by an applicationprogram so that it appears to exist as asystem of files from the point of view ofthe host device.’’ Id. at 61. The districtcourt understood its construction to limit

4. The district court did not rely on the con-struction of ‘‘virtual files’’ in the 8399 patentin any of its summary-judgment motions.The term appears only in dependent claims 7–10 of that patent, which the district courtnever addressed because it found that theaccused devices lack elements of the indepen-

dent claims. Nevertheless, because the con-struction of ‘‘virtual files’’ is bound up withthe construction of ‘‘simulating a virtual filesystem’’ in the 8449 patent, and because theconstruction may be important on remand,we address both phrases now.

Apple 1016 of 17 U.S. Pat. 8,504,746


the ‘‘virtual files’’ of the ‘‘virtual file sys-tem’’ to files ‘‘not physically stored on theinterface device,’’ whose content is data‘‘originating from the data transmit/receivedevice.’’ In re Papst Licensing GmbH &Co. KG Litig., 967 F.Supp.2d 48, 56(D.D.C.2013). We reverse.

The core of the parties’ disagreement iswhether the ‘‘existing data’’ from whichthe virtual files are ‘‘constructed or de-rived’’ may already exist on the interfacedevice when the host requests the virtualfile. Although framed in different ways bythe parties, the disagreement is similar tothe dispute over the ‘‘when connected’’ lan-guage of the district court’s construction of‘‘data transmit/receive device.’’ The Cam-era Manufacturers argue that ‘‘virtualfiles’’ cannot contain data already existingphysically on the claimed interface device;rather, the data in such files must bepresent only on the data device, not theinterface device, when requested by thehost device. Papst argues that the phras-es ‘‘virtual files’’ and ‘‘simulating a virtualfile system’’ allow the virtual files to bederived from data already physicallystored on the interface device when thehost requests the relevant virtual file.

We agree with Papst. Nothing in theclaims or written description limits a ‘‘vir-tual file’’ to one whose content is stored offthe interface device, though it includessuch files. ‘‘Virtual’’ conveys some kind ofas if action, one thing emulating another;the term was prominently used that way inthe computer field at the time of the inven-tions here. See CardSoft v. Verifone, Inc.,769 F.3d 1114, 1117–18 (Fed.Cir.2014) (dis-cussing Java Virtual Machine in patentdating to 1998). What is crucial is how thepatent identifies the emulation. In thepresent context, the emulation does notturn on whether data in a ‘‘virtual file’’ isphysically located in the interface device ora data device when the host seeks it.

As we have explained, what the patentdescribes as the advance over prior art isthe use of a host-native driver for obtain-ing access to data even when the data isnot actually on a device of the type forwhich that driver was designed—in thefeatured example, not actually on a harddrive. Nothing in the written descriptionsuggests that this depends on what non-host physical memory units hold the dataas long as the interface device mimics thedata-organizational tools expected by thehost-native driver, such as directory struc-tures for a hard-disk drive, to enable thehost to gain access to it. To impose thedistrict court’s requirement tied to physi-cal location is to introduce a meaning of‘‘virtual’’ that is foreign to what is de-scribed as the invention’s advance. Aninterface device file is ‘‘virtual’’ in the onlyway relevant to the invention when it orga-nizes data in a manner that allows the hostto use its native driver to gain access tothe data even if the data is not actually ona device for which the native driver wasdesigned—regardless of where else thatdata may be.

The written description uniformlyspeaks of the ‘‘virtual’’ files in such data-organization terms, regardless of physicallocation in the memory of the interfacedevice or on the data device. For exam-ple, the interface device may ‘‘simulate[ ] ahard disk with a root directory whose en-tries are ‘virtual’ files,’’ though no harddisk is in fact present. 8399 patent, col. 6,lines 1–3. Similarly, in one embodimentthe host device, during its boot sequence(system startup), sends a request to whichthe interface device responds with ‘‘a virtu-al boot sequence,’’ causing the host to ‘‘as-sume[ ] that the interface device accordingto a preferred embodiment of the presentinvention is a hard disk drive.’’ Id. lines26–35 (figure numbers removed). There-after, the interface device supplies the hostwith data-organization responses consis-

Apple 1016 of 17 U.S. Pat. 8,504,746


tent with a hard disk, including ‘‘the direc-tory structure of the virtual hard disk.’’Id. lines 40–44. The written descriptionelsewhere states that, ‘‘due to the sim-ulation of a virtual mass storage device,the data is managed and made available insuch a way that it can be transferreddirectly to other storage media, e.g.[,] to anactual hard disk of the host device.’’ Id.col. 8, lines 50–55; see also id. col. 12, lines26–29 (‘‘[B]y simulating a virtual massstorage device, the interface device is auto-matically supported by all known host sys-tems without any additional sophisticateddriver software.’’ (figure numbers re-moved)). While all of these examples dis-cuss the organizational structure that theinterface device conveys to the host device,not one mentions where data physicallyresides.

The point is reinforced by ‘‘[o]therclaims of the patent[s] in question.’’ Phil-lips, 415 F.3d at 1314. Claim 1 of the 8449patent requires a ‘‘virtual file system in-cluding a directory structure.’’ 8449 pat-ent, col. 12, lines 5–6. Claim 2 explainsthe types of files that may appear in thedirectory structure: ‘‘the directory struc-ture has a configuration file TTT or anexecutable or a batch file TTT or a data fileTTT or a help file.’’ Id. col. 12, lines 8–13.Enumerating those types of files as part ofthe virtual file system suggests that virtualfiles may include data physically stored onthe interface device, particularly if the in-terface device is stand-alone, which it maybe. For example, the ‘‘help file’’ is ‘‘forgiving help on handling the interface de-vice.’’ Id. col. 12, lines 12–13. A logicalplace to store such a file, as indicated bythe written description, is on the interfacedevice. See id. col. 11, line 37 (referring to‘‘[h]elp files included on the interface de-vice’’). So too with a ‘‘configuration file’’for ‘‘setting and controlling the functionsof the interface device.’’ Id. col. 12, lines8–9. And the written description makesclear that the data for those files may be

stored directly on the interface device.See, e.g., id. col. 6, lines 50–54 (explainingthat storing files, like the configurationfile, ‘‘in the memory means of the interfacedevice’’ allows ‘‘any enhancements or evencompletely new functions of the interfacedevice [to] be quickly implemented’’ (figurenumbers removed)); id. lines 61–67 (‘‘[I]n-stallation [on the host device] of certainroutines which can be frequently used TTT

is rendered unnecessary as the EXE filesare already installed on the interface de-vice and appear in the virtual root direc-toryTTTT’’ (emphasis added; figure num-bers removed)). Those passages appear atcolumn 7 of the 8399 patent as well, and asimilar analysis applies to claims 7–10 ofthe 8399 patent. See 8399 patent, col. 13,lines 33–51.

The written description does refer toone type of virtual file as a ‘‘real-timeinput’’ file, where the host computer canrequest a portion of the data from the real-time input file ‘‘whereupon data com-mences to be received via the second con-necting device and data commences to besent to the host device via the first con-necting device.’’ Id. col. 7, lines 17–22.The written description’s discussion ofreal-time input files shows that a virtualfile may be constructed from data residingon the data device. But nothing in thewritten description limits virtual files tothat arrangement. Files whose contentresides on the interface device are just asvirtual in the relevant respect: they areaccessible by the host’s use of the samedriver it would use if they were present onthe actual device for which the host driverwas created even when they are not.

E

[14] Finally, Papst appeals the districtcourt’s construction of the term ‘‘input/out-put device customary in a host device’’ inthe 8399 patent and the term ‘‘storage

Apple 1016 of 17 U.S. Pat. 8,504,746


device customary in a host device’’ in the8449 patent. The district court construedthe 8399 term to be a ‘‘data input/outputdevice that was normally present withinthe chassis of most commercially availablecomputers at the time of the invention.’’Claim Constr. Op. at 55. The court’s con-struction for the 8449 patent is identical,except that the words ‘‘data input/output’’are replaced with the word ‘‘storage.’’ Id.

When a host computer asks the claimedinterface device what type of device it is,the interface device must respond that it isan ‘‘input/output device customary in ahost device’’ so that the host will communi-cate with the interface device using thehost’s native software for that type of de-vice. The parties disagree over whetherthe claims require that the device the in-terface device says it is be a type of device‘‘normally present within the chassis ’’ of acomputer. We hold that the claims arenot so limited. The written descriptionmakes clear that it is enough for the deviceto be one that was normally part of com-mercially available computer systems atthe time of the invention.

Claim 1 of the 8399 patent uses thephrase ‘‘input/output device[s] customaryin a host device’’ three times, first in thepreamble when it explains that the hostdevice comprises ‘‘drivers for input/outputdevices customary in a host device,’’ thentwice when it defines how the interfacedevice and the host computer communi-cate—the interface device ‘‘signals to thehost device that it is an input/output devicecustomary in a host device,’’ therebyprompting the host to ‘‘communicat[e] withthe interface device by means of the driverfor the input/output device customary in ahost device.’’ This language does not car-ry a plain, precise meaning of physicallocation inside the chassis. The phrase‘‘customary in a host device’’ is not espe-cially precise, and it seems to emphasizewhat is customary, not whether the unit is

inside or outside the device. It contrastswith, for example, ‘‘customarily found in’’or simply ‘‘input/output device in a hostdevice’’—which have a greater suggestionof location, though themselves perhaps notdefinitively so.

For these reasons, we turn to the writ-ten description, which clearly evinces theintended meaning—and meets even thestandard for overriding a seemingly plainmeaning of the claim language. The writ-ten description shows that the ‘‘in’’ from‘‘customary in’’ does not imply physicallocation inside a computer chassis. Moststarkly, the patent explains that ‘‘[d]riversfor input/output devices customary in ahost device TTT are, for example, driversfor hard disks, for graphics devices [,] orfor printer devices.’’ 8399 patent, col. 4,lines 27–30 (emphases added). By itsstructure—‘‘drivers for X are, for example,drivers for 1, 2, and 3,’’ thus equating Xwith 1, 2, and 3—the sentence clearlymeans that, notably, a printer device is anexample of an ‘‘input/output device custom-ary in a host device.’’ No one contendsthat a printer device was physically locatedinside the chassis of a computer at thetime of the invention.

[15] In addition, a preferred embodi-ment of the invention includes ‘‘a 25–pinD-shell connector to permit attachment toa printer interface of a host device[,] forexample.’’ Id. col. 9, lines 43–48 (figurenumbers removed); see also id., Figure 2(illustrating the D-shell printer connector).The clear implication is that the preferredembodiment allows the interface device toconnect to the printer interface of the hostcomputer because the interface device caninform the host computer that it is a print-er and that the host should communicatewith it using its built-in printer drivers.We do not generally construe the claims ofa patent to exclude a preferred embodi-ment. Adams Respiratory Therapeutics,

Apple 1016 of 17 U.S. Pat. 8,504,746

1271IN RE CUOZZO SPEED TECHNOLOGIES, LLCCite as 778 F.3d 1271 (Fed. Cir. 2015)

Inc. v. Perrigo Co., 616 F.3d 1283, 1290(Fed.Cir.2010) (‘‘A claim construction thatexcludes the preferred embodiment ‘israrely, if ever, correct and would requirehighly persuasive evidentiary support.’ ’’(citation omitted)).

Further undermining the construction of‘‘customary in a host device’’ as ‘‘normallyfound in the chassis of most commerciallyavailable computers’’ is the fact that thewritten description does not equate ‘‘hostdevice’’ with ‘‘computer.’’ To the contrary,the description uses the words ‘‘host de-vice,’’ ‘‘host systems,’’ ‘‘computer,’’ and‘‘computer systems’’ more or less inter-changeably. See, e.g., 8399 patent, col. 1,lines 20–21 (‘‘host devices or computer sys-tems are attached by means of an interfaceto a device’’); id., lines 49–50 (describingan ‘‘electronic measuring device TTT at-tached to a computer system’’); id. col. 2,lines 1–7 (referring to ‘‘host systems’’ and‘‘computer systems’’); id. col. 4, line 60, tocol. 5, line 32 (alternating between ‘‘hostdevice,’’ ‘‘host systems,’’ ‘‘computer sys-tem,’’ and ‘‘computer’’); id. col. 8, lines 1–22 (similar). Even if we were to concludethat the phrase ‘‘customary in’’ conveys aphysical location, therefore, the districtcourt was wrong to conclude that the phys-ical location must be inside a computerchassis. See Pickholtz v. Rainbow Techs.,Inc., 284 F.3d 1365, 1373–74 (Fed.Cir.2002)(construing ‘‘located in the computer’’ tomean ‘‘located in the CPU, main memory,the CPU or main memory circuit boards,or qualifying peripherals’’ based on thewritten description’s repeated use of ‘‘com-puter’’ and ‘‘computer system’’ inter-changeably).

CONCLUSION

For the foregoing reasons, we vacate thedistrict court’s entry of final judgment andremand for further proceedings consistentwith this opinion.

Costs are awarded to Papst.

VACATED AND REMANDED.

,

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