Judge Gardephe Declines to “Lock” Down Claim Construction Terms of Computer Padlock Patent
On January 11, 2022, Judge Paul G. Gardephe (S.D.N.Y.) issued a decision declining to construe disputed terms in three patents relating to computer locks. See Noble Sec., Inc v. ACCO Brands Corp., 2022 U.S. P.Q.2d 41 (S.D.N.Y. 2022).
Plaintiff Noble Security, Inc. is a computer lock manufacturer and the licensee of four patents directed to computer security products and systems. It sued ACCO Brands, a rival computer lock manufacturer, for infringement of two patents. ACCO, in turn, brought counterclaims against Noble for infringement of two of its own patents directed to computer padlocks. The Court held a hearing under Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), at which the parties presented argument on disputed terms across three of the patents-in-suit: Noble’s U.S. Patent No. 9,624,697 (the ’697 Patent), and ACCO’s Patent Nos. 8,842,422 (the ’422 Patent) and 10,031,558 (the ’558 Patent). Specifically, the parties disputed or appeared to dispute the meaning of:
- “moveable pin” and “selectively moveable in a first direction and in an opposite second direction” in the ’697 Patent;
- “complementary” in relation to a “wedge lock element” described in the ’697 Patent;
- “computer,” as it modified the phrase “security cavity” in the ’697 Patent’s preamble;
- “engagement element” as used in the ’422 Patent and the ’558 Patent;
- “stabilizing element” as used in the ’422 Patent and the ’558 Patent;
- “with the engagement element,” “wedge-shaped engagement portion,” and “protrusion” in the ’422 Patent; and
- “lock interface member” and “portable electronic device” in the ’422 Patent.
Judge Gardephe found that many of the terms above needed no construction because they were commonly understood and neither plaintiff nor defendant provided sufficient explanation of why a construction was actually needed.
The Court’s discussion of the term “movable pin” in the ’697 Patent is noteworthy. ACCO argued that the ’697 Patent inventor’s choice to describe the “present invention” as having a “slidable locking element” limits the term “moveable pin” to mean “slidable locking element.” Judge Gardephe rejected this argument. He distinguished Poly-Am, L.P. v. API Indus., Inc., 839 F.3d 1131, 1138 (Fed. Cir. 2016), which found that “an inventor may disavow claims lacking a particular feature when the specification describes ‘the present invention’ as having that feature.” Unlike in Poly-Am, Judge Gardephe found, the “present invention” language in the ’697 Patent referred only to certain figures in the specification and not to the disputed claim. Op. 7. He thus found that there was no clear disavowal of scope.
Judge Gardephe also found that the term “engagement element” in the ’422 and ’558 Patents is not a “means plus function” claim feature element under 35 U.S.C. § 112(f). Specifically, the Court found that because “engagement element” does not use the term “means,” there is a rebuttable presumption that it is not a means plus function element. Judge Gardephe noted that the ’422 Patent “describes how the engagement element interacts with the body, aperture, lock interface member, and protrusion, which collectively convey the structure of the engagement element.” Op. 10. As such, the Court found that the rebuttable presumption was not overcome.