                 NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
                   is not citable as precedent. It is a public record.

     United States Court of Appeals for the Federal Circuit
                                       05-1488

                            FIBER OPTIC DESIGNS, INC.
                          and HOLIDAY CREATIONS, INC.,

                                                      Plaintiffs-Appellants,

                                           v.

                           SEASONAL SPECIALTIES, LLC,

                                                      Defendant-Appellee.

                           ___________________________

                           DECIDED: March 3, 2006
                           ___________________________

Before MAYER, RADER, and PROST, Circuit Judges.

Opinion for the court filed by Circuit Judge RADER. Dissenting opinion filed by Circuit
Judge MAYER.

RADER, Circuit Judge.

      The United States District Court for the District of Minnesota denied the motion of

Fiber Optic Designs, Inc. and Holiday Creations, Inc. (collectively “Fiber Optic”) for a

preliminary injunction. After construing claims of U.S. Patent No. 6,830,358 (the ’358

patent), the district court concluded that Fiber Optic was not likely to prevail on the

merits of their patent infringement action against Seasonal Specialties, LLC (Seasonal).

Fiber Optic Designs, Inc. v. Seasonal Specialties LLC, Case No. 05-CV-660 RHK/JSM

(D. Minn. July 1, 2005) (Order).       Because the district court erred in its claim
construction, this court vacates the denial of the motion for preliminary injunction and

remands for further proceedings.

                                               I.

       As described in the ’358 patent, light emitting diodes (LEDs) offer certain

advantages over standard incandescent or fluorescent lighting sources.            The ’358

patent features LEDs in a decorative holiday light string. ’358 patent, col. 1, ll. 27-44. In

particular, the ’358 patent “matches the AC voltage rating of the LEDs coupled in series

to the AC power input without the need for additional power conversion.” Id. col. 2, ll. 4-

7. Claim 1 of the ’358 patent, the only independent claim asserted, recites:

               1. A light string comprising:
               a predetermined number of light emitting diodes (LEDs) and
                     sockets forming individual electrical components
                     electrically coupled in series to form at least one
                     series block, each electrical component defining
                     individual alternating current average drive voltages,
                     the series block having a first electrical component
                     and a last electrical component, and
               an alternating current electrical power supply having an
                     average supply voltage,
               wherein a summation of said individual alternating current
                     average drive voltages is substantially equal to said
                     average supply voltage.


’358 patent, col. 16, l. 64 – col. 17, l. 9.

       The defendant, Seasonal, sells light strings that include LEDs and sockets.

Seasonal’s light strings also include chip resistors attached to the LEDs within the

individual sockets.     On March 13, 2005, Fiber Optic sued Seasonal, alleging that

Seasonal’s light strings infringe claims 1, 2, 5, 6, and 16 of the ’358 patent. Fiber Optic

sought a preliminary injunction against Seasonal’s ongoing sales of its light strings.




05-1488                                        2
After concluding that Seasonal had raised a “substantial question” by suggesting that

the specification limited the scope of the ’358 patent to light strings without current-

limiting circuitry, the district court denied Fiber Optic’s motion for a preliminary

injunction. Order, slip op. at 15-16. Fiber Optic appeals.

                                            II.

       Ultimately this court reviews the district court’s decision to deny or grant a

preliminary injunction for an abuse of discretion, Globetrotter Software, Inc. v. Elan

Computer Group, Inc., 236 F.3d 1363, 1367 (Fed. Cir. 2001), but underlying legal

issues, such as claim construction, receive no deference.         Jack Guttman, Inc. v.

Kopykake Enters., 302 F.3d 1352, 1356 (Fed. Cir. 2002).

       As an initial matter, this court notes that the district court characterized its

decision as a determination that Seasonal raised a substantial question about claim

construction.   Despite the ambiguities in that characterization, this court reads the

district court’s order as construing claim 1 to exclude any current limiting circuitry. The

district court’s order fully addresses the parties’ arguments on claim construction in

terms of the specification and the prior art. The district court’s order does not appear to

contemplate additional open questions or issues requiring further development on the

question of additional current limiting circuitry. Thus, this court proceeds to review the

district court’s claim construction without deference. Compare Int’l Commc’n Materials,

Inc. v. Ricoh Co., 108 F.3d 316, 318-19 (Fed. Cir. 1997) (stating, in an appeal from a

denial of a preliminary injunction motion: “where a district court . . . acknowledges that

there are substantial open issues and questions that must be litigated pertaining to

claim construction . . . our role as an appellate court, absent an abuse of discretion,




05-1488                                     3
should be to provide the district [court] and parties the opportunity to complete the

picture”) (quotes omitted).

       On its face, claim 1 of the ’358 patent does not include any language excluding

current-limiting circuitry. Nevertheless, as this court recently explained in Phillips v.

AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the descriptions in the

specification can limit the apparent breadth of a claim in two instances: (1) where the

specification reveals a special definition given to a claim term by the patentee that

differs from the meaning it would otherwise possess; and (2) where the specification

reveals an intentional disclaimer, or disavowal, of claim scope by the inventor. 415 F.3d

at 1316.   This case does not feature either reason to read a limitation from the

specification into the claims. Thus, the standard rule that a claim construction should

decline to incorporate additional limitations from the specification governs. See Comark

Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186-87 (Fed. Cir. 1998).

       In its order, the district court did not identify a specific term in claim 1 that

required interpretation. While Seasonal’s arguments to the district court, and to this

court at oral argument, referred generally to the third limitation of claim 1 as being the

limitation associated with the exclusion of additional circuitry, the district court did not

appear to embrace that argument in its decision. Instead, the district court construed

claim 1 without an apparent focus on any claim term. This court has explained that a

claim “must explicitly recite a term in need of definition before a definition may enter the

claim from the written description.” Renishaw PLC v. Marposs Societa’ Per Azioni, 158

F.3d 1243, 1248 (Fed. Cir. 1998).




05-1488                                      4
          Without any apparent support in the trial court’s order, Seasonal attempts to

bolster that construction by arguing that the district court was interpreting “electrical

component.” Seasonal adds that the “summation” of claim 1 then requires the exclusion

of “electrical components” with current-limiting circuitry. Seasonal’s rather questionable

patina on the district court’s claim construction, however, does not save it. Claim 1’s

summation refers to “said individual alternating current average drive voltages.” The

claim further identifies these individual AC average drive voltages with the individual

electrical components. Accordingly, claim 1 provides that LEDs and sockets form the

individual electrical components, but does not exclude the possibility of additional

elements within the electrical components that would then appear as part of the

summation.

          On the other hand, if claim 1 excluded light strings with current limiting circuitry in

addition to, but not within, the electrical components, that current limiting circuitry

outside the electrical components identified in the claim would not affect the summation

at all.    After all, the claim specifically makes the summation depend solely on the

electrical components and their AC average drive voltages.

          Thus, claim 1 could be interpreted, consistent with its language and the

specification, to permit current limiting circuitry within the electrical components. These

additional current limiting features would then count as part of the summation.

Alternatively, claim 1 could be interpreted, consistent with its language and the

specification, to permit current limiting circuitry outside the electrical components. In

that case, those additional current limiting features would have nothing to do with the




05-1488                                          5
summation of electrical components. Under either interpretation, the language of claim

1 does not exclude current-limiting circuitry.

       Where the meaning of no particular claim term is in dispute, a patentee can

nevertheless limit a claim with an intentional disclaimer, or disavowal, of claim scope.

Phillips, 415 F.3d at 1316. As evidence of disclaimer of light strings having current

limiting circuitry, the district court appeared to rely on the following statements in the

’358 specification:

       “In order to directly drive a network of diodes without current-limiting circuitry, the
       voltage of each series block of diodes must be matched to the input source
       voltage.” ’358 patent, Abstract.

       “FIG. 10 shows the preferred embodiment of the invention, wherein a network of
       diodes, consisting of LEDs, is directly driven by the AC source without any
       current-limiting circuitry.” ’358 patent, col. 8, ll. 51-54.

       “The invention in FIG 10 may have additional circuitry . . . to perform functions
       other than current-limiting.” ’358 patent, col. 9, ll. 1-3.

       “The only vital feature of the diode network is that all diodes are directly driven
       from the AC power source, without any form of current-limiting circuitry.” ’358
       patent, col. 9, ll. 10-13.

Order, slip op. at 16-18. In addition, the district court noted a statement made by Fiber

Optic’s attorney during oral argument before the trial court: “[The] [p]rior art talked

about adding up the DC summations, it didn’t work, you put in a resistor and you made

a best guess as to how to solve the problem.” Id. at 17. In the district court’s view, the

repetitious use of “without current-limiting circuitry” in the specification “bolster[ed] the

argument” that Fiber Optic “explicitly and unequivocally” disclaimed light strings with

current-limiting circuitry. Id. at 18.

        In contrast to SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems,

Inc., 242 F.3d 1337 (Fed. Cir. 1998), and the related cases cited by the district court,



05-1488                                       6
the ’358 specification does not clearly disclaim any particular subject matter. Read in

context, the above statements show that the AC summation method described in the

’358 patent overcomes the need for current-limiting circuitry in LED light strings. These

statements, however, at no point express that commercial embodiments of the invention

will never include such circuitry. Rather, the specification provides for LED light strings

“either without any additional circuitry (AC drive), or with only minimal circuitry (DC

drive).” ’358 patent, col. 3, ll. 57-59. The reference to “minimal circuitry” suggests that

the invention actually envisions that embodiments could employ additional circuitry

affecting the current.

       The ’358 patent also explains that “each LED may have internal circuitry to

provide for intermittent on-off blinking and/or intermittent LED sub-die color changes.”

’358 patent, col. 3, ll. 39-43. Additional circuitry that would intermittently turn off an LED

would necessarily be current limiting.       Thus, the specification again described an

instance where the invention could feature current limiting circuitry. These examples

show that the specification describes an invention that operates without further current-

limiting circuitry, but that is very distinct from excluding all uses of that particular

additional feature.

       Furthermore, most of the statements from the specification relied upon by the

district court come from the description of the preferred embodiment, rather than

applying to the invention as a whole. This case thus contrasts starkly with SciMed,

where the specification stated that “all embodiments of the present invention

contemplated and disclosed herein” used the disputed annular lumen structure.

SciMed, 242 F.3d at 1343. The district court is correct in noting that this statement was




05-1488                                       7
not the only basis for the SciMed court’s decision, and that there are a number of other

cases where the specification was found to limit the claims in the absence of

comparable explicit language.        Order, slip op. at 19.        Nonetheless, neither the

statements in the ’358 specification nor that of Fiber Optic’s attorney constitute such a

disclaimer, either individually or in the aggregate.

       Finally, a comparison of dependent claim 2 with claim 1 also supports the

conclusion that claim 1 is not limited to light strings without current-limiting circuitry.

Claim 2 provides:

                      2. The light string of claim 1, where said first electrical
              component is directly coupled intermediate a source end and
              a terminal end of a first set of wires and the last electrical
              component directly coupled intermediate the source end and
              the terminal end of a second set of wires, the light string
              being free from additional circuitry intermediate the first
              electrical component and the source end of the first set of
              wires, between each of the electrical components, and
              intermediate the last electrical component and the source
              end of the second set of wires, and
                 wherein a first connector is coupled to both the source
                    end of the first set of wires and the source end of the
                    second set of wires which connector facilitates a
                    direct connection between the first electrical
                    component and a first side of said alternating current
                    electrical power supply, and the last electrical
                    component and a second side of the alternating
                    current electrical power supply.
’358 patent, col. 17, ll. 10-24. While lengthy, claim 2 limits the structure to a plug, wires,

and electrical components.       Thus, claim 2 expressly excludes additional circuitry

between individual electrical components or between the electrical components and the

power supply. Because much of the language of claim 2 would be superfluous if claim

1 were interpreted to require the absence of additional current limiting circuitry, claim

differentiation counsels against the district court’s construction. See Phillips, 415 F.3d



05-1488                                       8
1303, 1324 (Fed. Cir. 2005) (“The inclusion of . . . a specific limitation on the term

‘baffles’ in claim 2 makes it likely that the patentee did not contemplate that the term

‘baffles’ already contained that limitation.”). Although claim differentiation serves best

as a guideline, rather than a rule, see Fantasy Sports Props. v. Sportsline.com, 287

F.3d 1108, 1115-16 (Fed. Cir. 2002), this court has noted that it works best when

dependent claims show a distinction over related independent claims, as in this case.

See Curtiss-Wright Flow Control Corp. v. Velan, Inc., ___ F.3d ___ (Fed. Cir. 2006).

       For these reasons, the district court erred in its conclusion that Seasonal had

raised a substantial question that claim 1 of the ’358 patent is limited to light strings

without current-limiting circuitry.   Claim 1 is not so limited.     This error in claim

construction necessitates reevaluation by the district court of the motion for preliminary

injunction as a whole. See generally Amazon.com, Inc. v. Barnesandnoble.com, Inc.,

239 F.3d 1343, 1351 (Fed. Cir. 2001) (“The court must properly interpret the claims,

because an improper claim construction may distort the infringement and validity

analyses.”).

                                      CONCLUSION

       Because the district court erred in its claim construction, this court vacates the

denial by the district court of appellants’ motion for preliminary injunction and remands

for further proceedings consistent with this opinion.




05-1488                                      9
                NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is
                not citable as precedent. It is a public record.


 United States Court of Appeals for the Federal Circuit

                                          05-1488




                              FIBER OPTIC DESIGNS, INC.
                            and HOLIDAY CREATIONS, INC.,

                                                                Plaintiffs-Appellants,

                                             v.

                            SEASONAL SPECIALTIES, LLC,

                                                                Defendant-Appellee.



MAYER, Circuit Judge, dissenting.

       I would sustain the ruling of the district court because a hearing has not yet been

held to resolve claim construction issues, and because the decision pertained to a

preliminary injunction. Given the information available to the trial court at the time of the

ruling and the relatively undeveloped state of the record, it was not an abuse of

discretion to conclude that Seasonal raised a substantial question about infringement of

the 6,830,358 patent.
