Before Prost, Taranto, and Hughes. Appeal from the United States District Court for the Northern District of California.
Summary: The district court erred in construing the claims at the motion to dismiss stage where the plain meaning of the word “group” was “two or more,” but the specification indicated the term may mean “one or more.”
UTTO Inc. sued Metrotech Corp. alleging patent infringement and moved for a preliminary injunction. The asserted patent claimed methods for detecting underground utility lines, which the patent refers to as “buried assets.” In denying the preliminary injunction motion, the district court construed the phrase “group of buried asset data points” to require “two or more” data points for each buried asset. Metrotech moved three times to dismiss UTTO’s infringement claim under Rule 12(b)(6) because UTTO alleged that Metrotech’s product used only one data point for each buried asset. The district court granted those motions but, for the first two, permitted UTTO to amend its complaint. However, the district court granted the third motion to dismiss with prejudice because UTTO’s allegations did not satisfy the court’s construction requiring “two or more” data points. UTTO appealed, arguing that the district court erred by construing claims at the motion to dismiss stage.
The Federal Circuit vacated and remanded district court’s dismissal of the infringement claim. The court expressly rejected the argument that claim construction is categorically forbidden at the motion to dismiss stage. However, the Federal Circuit agreed with UTTO that the district court did not sufficiently analyze whether “a group of buried asset data points” must be at least two data points, and thus fuller claim construction proceedings were required. While the Federal Circuit acknowledged that the plain meaning of “a group” usually means two or more, it emphasized that the specification must play a central role in the claim construction analysis. In the specification, the Federal Circuit found two passages supporting UTTO’s argument that the claimed “group” refers to one or more data points. The district court had rejected UTTO’s argument because such support appears “only twice” in the specification, but the Federal Circuit questioned why twice was not enough to overcome the general presumption that plural terms like “group” refer to two or more. The court also indicated that extrinsic evidence may be helpful in the claim construction proceedings on remand.
Editor: Sean Murray
