Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Utto Inc. v. Metrotech Corp., Case. No. 2023-1435 (Oct. 18, 2024), reversing a district court’s dismissal of a patent infringement suit.
Utto sued Metrotech for infringement of U.S. Pat. No. 9,086,441 directed to methods for detecting and identifying “buried assets,” i.e. underground utility lines. Utto’s motion for preliminary injunction was denied for failure to show a likelihood of success on the merits of infringement. In its ruling, the district court construed the term “group of buried asset data points” to require “two or more” buried asset data points for each buried asset. The district court then dismissed the first, second, and third amended complaints, relying on its claim construction issued in denying a preliminary injunction. Utto appealed.
The Federal Circuit reversed. The Court held that district courts can construe claims on a motion to dismiss without a separate Markman hearing, but that such a decision is case-specific, and may only be appropriate if the claim’s meaning is clear and case dispositive, such that no additional proceedings are necessary.
Here, the Court held that further claim construction proceedings were necessary. The Court held that the third amended complaint raised “at least a question as to whether a person of skill in the art would read the phrase at issue “in light of a recognized meaning of ‘group’ in mathematics to mean one or more, not two or more.” The Court noted that the term was not so “plain” that to give it a contrary construction would require redefinition or disclaimer and that while “group” presumptively implies two or more, that presumption can be overcome. The specification referred in two places to using the claimed method with “one or more” buried asset points, which was dismissed by the district court as being used “only twice.” The Court stated “it is not clear why twice is not enough to support what may be a permissible but, if unusual and non-presumptive, meaning of the expression.” Finally, the Court noted that on remand extrinsic evidence may be appropriate to construe the claims, in particular that the invention may work with only one data point as alleged in the third amended complaint. The Court therefore vacated and remanded for further claim construction proceedings, noting that it was not deciding if the district court’s claim construction was correct.
