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Reliance on the written description during claim construction does not amount to an impermissible importation of a limitation when the claim itself imposes the limitation and the written description merely confirms that understanding, the U.S. Circuit Court of Appeals for the Federal Circuit has held. Oak Technology Incorporated v. International Trade Commission, No. 00-1078, Fed. Cir. A Federal Circuit panel on May 2 upheld findings by the U.S. International Trade Commission that Oak Technology Inc.’s patent relating to detecting and correcting errors in CD-ROM transmissions into computers was not infringed by MediaTek Inc. and associated parties. The commission made the noninfringement finding while ruling against Oak in an investigation into whether MediaTek violated the law prohibiting importation of articles that infringe U.S. patents. The patent involves a method for checking data under an international standard that governs industry practices of storing information digitally on CD-ROMs known as the Yellow Book, in which data is grouped into sectors with information formatted in specified ways to support error detection and correction. Error correction is accomplished through a process known as Reed-Solomon, involving cross-checks that can be used to infer an incorrect sequence of numbers and therefore infer an error. CLAIM LIMITATIONS The limitations of the claim provide for error correction and detection in accordance with the industry standards on “said assembled data” and that error detection occur after correction of the “said data.” The commission found no infringement after ruling that the claim language requires that error correction occur first on an entire sector of data and that an error check called a cyclic redundancy check then be performed on the corrected sector. On appeal, Oak argued that “said assembled data” referred to an entire sector of CD-ROM data and that the claim language is broad enough to cover a situation in which error detection begins before error correction is completed. ‘SAID ASSEMBLED DATA’ However, the court found that the record supported the commission’s interpretation of “said assembled data” as described in the Yellow Book, since Oak’s patent contemplates compliance with those standards. The court also affirmed the finding that the device claimed in the patent first performs error correction on an entire sector of data and then performs error detection with a cyclic redundancy checker. The only embodiment described in the patent always performs the error correction before performing the cyclic redundancy check detection, the court said, and there is no mention of any embodiments where the sequence is reversed or where error detection begins before error correction has been completed. WRITTEN DESCRIPTION Oak argued that the commission’s reliance on the written description amounted to an impermissible importation of limitations from the preferred embodiment. However, the Federal Circuit found that the sequential limitation “is imposed by the claim language itself, and the written description simply confirms this understanding.” “There is no discussion anywhere in the intrinsic record of embodiments of ‘error detection and correction means’ which do not operate in a straightforward sequential manner,” the opinion said. “More importantly, even if such a disclosure existed, these embodiments would not be covered by the language selected by the claim drafter. In Oak’s own words: ‘Specifications teach. Claims claim.’ “ Also rejected was Oak’s contention that the term “cyclic redundancy checker” refers to any circuitry that performs a cyclic redundancy check. The court said that based on the interpretations of “said assembled data” and “after,” only such checkers that operate on an entire sector of data once the sector has been processed by the error correction circuitry are included within the scope of the claims. While special case variations were known in the art, there is no evidence in the record that any of those alternatives were ever implemented in hardware, and even the citations to them by Oak admit that they are not the normal way of performing the operation, the court added. NO LITERAL INFRINGEMENT The court also agreed with the commission that the MediaTek device does not infringe literally because it first performs an error detection by a cyclic redundancy check on the entire CD-ROM block of data, followed by the Reed-Solomon error correction, followed by a second error detection. While the accused device contains a cyclic redundancy checker, it does not operate in accordance with the correctly interpreted claim, since there is no dispute that the MediaTek device operates on the assembled data before correction, said the opinion. The court further upheld the finding of no infringement by equivalents, saying that there are substantial differences between the mathematics performed by the accused device and those in the claimed controller, between the relevant circuitry in the devices, between the data processed by the devices and in the relationship between the error correction and detection operations. The commission also had reversed an administrative law judge’s findings that the patent was invalid and unenforceable, an action not challenged on appeal. Oak Technology is represented by Joel M. Freed of Howrey Simon Arnold & White in Washington, D.C. The commission is represented by Timothy P. Monaghan of the Office of General Counsel in Washington, D.C. MediaTek is represented by James C. Otteson of Wilson Sonsini Goodrich & Rosati in Palo Alto, Calif. �; Copyright 2001 Mealey Publications, Inc.

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