                       NOTE: This disposition is nonprecedential.


  United States Court of Appeals for the Federal Circuit

                                2007-1292,-1293,-1294,-1295

                                   LSI INDUSTRIES, INC.,

                                                               Plaintiff-Appellee,

                                                  v.

                IMAGEPOINT, INC. (formerly known as Plasti-Line, Inc.),

                                                               Defendant-Appellant,

                                                 and

                               MARKETING DISPLAYS, INC.,

                                                               Defendant-Appellant.

                      ------------------------------------------------------------

                                      IMAGEPOINT, INC.,

                                                               Plaintiff-Appellant,

                                                  v.

     KEYSER INDUSTRIES, INC. (also known as Florida Plastics International, Inc.),

                                                               Defendant/Third Party Plaintiff-
                                                               Appellee,

                                                  v.

                               MARKETING DISPLAYS, INC.,

                                                               Third-Party Defendant-Appellant.

        Mark G. Davis, McDermott Will & Emery LLP, of Washington, DC, argued for
plaintiff-appellee and defendant/third party plaintiff-appellee. With him on the brief were
Evan A. Parke and Amalie M. Weber. Of counsel on the brief were Peter L. Resnik and
Matthew E. Leno, of Boston, Massachusetts.
       Mark S. Graham, Luedeka, Neely & Graham, P.C., of Knoxville, Tennessee, argued
for defendant-appellant and plaintiff-appellant ImagePoint, Inc. With him on the brief were
Geoffrey D. Kressi and J. David Gonce. Of counsel on the brief were L. Clifford Craig,
John B. Nalbandian, and Ryan M. Bednarczuk, Taft, Stettinius & Hollister LLP, of
Cincinnati, Ohio.

      John A. Artz, Dickinson Wright PLLC, of Bloomfield Hills, Michigan, argued for
defendant appellant Marketing Displays, Inc.


Appealed from: United States District Court for the Eastern District of Kentucky

Senior Judge William O. Bertelsman
                     NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit
                            2007-1292, -1293, -1294, -1295

                                 LSI INDUSTRIES, INC.,

                                                               Plaintiff-Appellee,

                                                v.

              IMAGEPOINT, INC. (formerly known as Plasti-Line, Inc.),

                                                               Defendant-Appellant,

                                              and

                            MARKETING DISPLAYS, INC.,

                                                               Defendant-Appellant.

                      -------------------------------------------------------

                                   IMAGEPOINT, INC.,

                                                               Plaintiff-Appellant,

                                                v.

   KEYSER INDUSTRIES, INC. (also known as Florida Plastics International, Inc.),

                                                               Defendant/Third Party Plaintiff-
                                                               Appellee,

                                                v.

                            MARKETING DISPLAYS, INC.,

                                                               Third Party Defendant-Appellant.

Appeals from the United States District Court for the Eastern District of Kentucky in
case no. 00-CV-197 and 05-CV-105, Senior Judge William O. Bertelsman.
                       ___________________________________

                       REVISED OPINION ISSUED: May 22, 2008
                       ___________________________________

Before RADER and LINN, Circuit Judges, and WOLLE, Senior District Judge. *

LINN, Circuit Judge.

      ImagePoint, Inc. (“ImagePoint”) and Marketing Displays, Inc. (“MDI”) appeal from

a final decision of the United States District Court for the Eastern District of Kentucky

(Bertelsman, J.), LSI Indus., Inc. v. ImagePoint, Inc., No. 00-CV-197 (E.D. Ky. Mar. 21,

2007) (“Summary Judgment Order”). That order granted summary judgment of non-

infringement to LSI Industries, Inc. (“LSI”) and Keyser Industries, Inc., also known as

Florida Plastics International, Inc. (“Florida Plastics”), following the district court’s

construction of numerous claim terms. LSI Indus., Inc. v. ImagePoint, Inc., No. 00-CV-

197 (E.D. Ky. Oct. 27, 2006) (“Claim Construction Order”). 1 Because the district court

incorrectly construed many of the terms on which the summary judgment of non-

infringement was predicated, and because for the correctly construed terms, the record

is insufficient for us to determine whether summary judgment of non-infringement was

appropriate, we vacate and remand.




      *
               Honorable Charles Robert Wolle, Senior District Judge, United States
District Court for the Southern District of Iowa, sitting by designation.
      1
               The second district court action at issue in this appeal, No. 05-CV-105,
arose from a separate controversy between ImagePoint and Florida Plastics. In March
2004, ImagePoint filed suit against Florida Plastics in the Eastern District of Tennessee
alleging infringement of MDI’s patents. Florida Plastics counterclaimed and pled in MDI
as a Third-Party Defendant. The case was subsequently transferred to the Eastern
District of Kentucky and consolidated with No. 00-CV-197 for pretrial purposes. The
issues appealed in these two cases are identical, and for ease of reference, we refer
only to No. 00-CV-197.


2007-1292, -1293, -1294, -1295          2
      A petition for panel rehearing was filed by LSI and Florida Plastics and granted

by the panel for the limited purpose of supplementing the court’s claim construction of

“divider member.” The previous opinion of the court, issued on March 19, 2008, is

withdrawn and this opinion is substituted in its place. The disposition of the appeal is

unchanged.

                                   I. BACKGROUND

      MDI is a provider of a wide assortment of indoor and outdoor products for

promotional signage and displays. This case involves “menuboards,” which are used in

the fast food restaurant industry to depict a restaurant’s menu items and prices. MDI is

the assignee of numerous patents directed to menuboards, in particular, those that are

easily reconfigurable. The patents at issue in this appeal are U.S. Patent No. 5,682,694

(“the ’694 patent”), U.S. Patent No. 5,983,543 (“the ’543 patent”), U.S. Patent No.

6,125,565 (“the ’565 patent”), U.S. Patent No. 6,298,589 (“the ’589 patent”), U.S. Patent

No. 6,631,576 (“the ’576 patent”), and U.S. Patent No. 6,843,011 (“the ’011 patent”)

(collectively, “the menuboard patents” or “the patents-in-suit”). MDI’s first patent, the

’694 patent, issued in 1997. Its second patent, the ’543 patent, issued in 1999 as a

continuation-in-part of the ’694 patent. All other patents-in-suit issued as continuations

of the ’543 patent, and consequently, share a common specification with that patent.

ImagePoint is MDI’s exclusive licensee of the menuboard patents.

      LSI and Florida Plastics (collectively, “LSI”) are competitors of MDI and

ImagePoint (collectively, “MDI”). In October 2000, LSI filed suit against MDI in the

Eastern District of Kentucky, seeking a declaratory judgment that its menuboards did

not infringe the ’694, ’543, and ’565 patents. LSI moved for summary judgment that the




2007-1292, -1293, -1294, -1295          3
three patents-in-suit were invalid over U.S. Patent No. 1,841,026 (“Greenstone”) and

U.S. Patent No. 2,079,230 (“Shively”).        In response, MDI filed a petition for

reexamination of the patents in light of Greenstone and Shively.        The Patent and

Trademark Office confirmed the patentability of all claims, generating, in the process, a

voluminous prosecution record.     Thereafter, the lawsuit, which was stayed pending

reexamination, was reopened, and MDI added to the litigation the ’589, ’576, and ’011

patents, which had issued during the pendency of the reexamination.

      The district court held a claim construction hearing and subsequently issued the

Claim Construction Order. Thereafter, the district court considered and granted LSI’s

motion for summary judgment of non-infringement, concluding that none of the patents,

as construed, was infringed by any of the accused infringing devices. This appeal

followed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

                                   II. DISCUSSION

                                 A. Claim Construction

      Claim construction is a question of law, see Markman v. Westview Instruments,

Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996), subject

to plenary review. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir.

1998) (en banc).

      The parties dispute a number of claim terms of the six patents-in-suit. These

terms can be generally classified into the following categories: (1) “retention member”;

(2) “divider member”; (3) “opposed retention members”; (4) “display member”; (5)

“removably secured”; (6) “channel means,” “channel”; (7) “frame member”; (8) “without




2007-1292, -1293, -1294, -1295          4
disassembly”; (9) “mating male and female connection members”; (10) “display device”;

and (11) “display module.”

       At the claim construction hearing, the district court judge communicated his lack

of familiarity with patent law, J.A. at 282 (“I get a patent case about every three years.

In the 27 years, I’ve only had about five of them. And this seems to be the most

complex so far.”), and repeatedly requested guidance from counsel on both sides on

how to construe the claims, id. at 285, 286, 292. The record reveals that counsel made

little effort to simplify the case, but instead presented the district court with a firestorm of

issues and arguments, fueled by the voluminous reexamination record and an

aggressive use of statements in that record to support multiple contentions that subject

matter was disavowed. In the end, counsel for LSI was successful in persuading the

district court to adopt constructions for each of the disputed terms that, in most

instances, inappropriately imported limitations from the specifications and prosecution

histories into the claims.     The victory was short-lived, however, and warrants our

reemphasizing that an attorney has a duty not only to zealously advocate on behalf of

his client, but also to aid the court in the fair and efficient administration of justice. Allen

Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1356 (Fed. Cir. 2002) (“Counsel must

remember that they are not only advocates for their clients; they are also officers of the

court and are expected to assist the court in the administration of justice, particularly in

difficult cases involving complex issues of law and technology.”). The district court also

has an obligation, despite any obfuscation or lack of assistance of counsel, to carefully

consider, and independently decide, the issues in the case.              Following the claim

construction hearing, the district court adopted LSI’s proposed findings of fact and




2007-1292, -1293, -1294, -1295             5
conclusions of law verbatim. Compare Claim Construction Order, with J.A. at 2674-

2738.    While this practice is not prohibited, it is frowned upon because, in situations

such as these, it gives the impression that there was insufficient independent evaluation

of the parties’ arguments and evidence. See Wyler Summit P’ship v. Turner Broad.

Sys., Inc., 235 F.3d 1184, 1196 (9th Cir. 2000).

        We move now to the construction of the claim terms at issue.

                                             ***

        We have frequently noted that it is inappropriate to import limitations from the

specification to limit facially broad claims “unless the patentee has demonstrated a clear

intention to limit the claim scope using ‘words or expressions of manifest exclusion or

restriction.’” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)

(citation omitted).   It is similarly inappropriate to read statements or actions during

prosecution to disclaim subject matter encompassed by the literal scope of the claims

unless “the alleged disavowing actions or statements made during prosecution [are]

both clear and unmistakable.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,

1325-26 (Fed. Cir. 2003); see also id. at 1325 (“[W]e have thus consistently rejected

prosecution statements too vague or ambiguous to qualify as a disavowal of claim

scope.”). In this case, each of the claim terms at issue was limited, despite facially

broad language, based on statements in the specifications or the prosecution histories.

We have carefully reviewed the specifications and prosecution histories of the patents-

in-suit and conclude that, for the “opposed retention members,” “display member,” and

“removably secured” terms, the district court was correct to limit the claims because the

statements at issue clearly and unmistakably disavowed claim scope by distinguishing




2007-1292, -1293, -1294, -1295           6
prior art references to overcome the examiner’s rejections. See, e.g., J.A. at 1591

(distinguishing claims of the ’565 patent from the Greenstone reference on the basis of

certain “distinct differences,” including “display members having translucent portions”).

With regard to the remainder of the terms, however, we conclude that vague and

ambiguous statements were inappropriately interpreted to disavow claim scope.

       Consequently, we affirm the district court’s constructions of “opposed retention

members,” “display member,” and “removably secured.” We reverse the remainder of

the district court’s constructions, which we address in turn.

                          “retention member”; “divider member”

       The district court construed “retention member” as “an individual projection that

removably secures in a recess or groove on a divider member.” Claim Construction

Order at 42 (emphasis added). It construed “divider member” as “a removable member

with a recess or groove that snaps onto a retention member.” Id. (emphasis added).

The district court’s construction of the divider member “snap[ping] onto” the retention

member and the retention member as being “secure[d] in a recess” effectively limited

the scope of the claims to “male” retention members and “female” divider members.

The district court’s imposition of these limitations was based primarily on statements

made during reexamination and figures in the specification showing male retention

members and female divider members. Id. at 49. The plain language of the claims,

however, does not require these limitations, and the presence of similar limitations in

dependent claims strongly suggests that the independent claims should not be so

limited. Compare, e.g., ’543 patent, claim 9, with id., claim 10. Moreover, the language

in MDI’s Patent Owner’s Statement, on which the district court relied to find disclaimer,




2007-1292, -1293, -1294, -1295           7
is nothing more than a general description of the features of several independent and

dependent claims. This statement, and the others cited by LSI, are not sufficient to

constitute a clear and unambiguous disavowal of non-female divider members or non-

male retention members.

       MDI did make statements during prosecution of the ’694, ’543, and ’565 patents,

however, which unambiguously disavowed divider members without a “snap-fit”

connection. 2   For example, during reexamination of the ’694 patent, MDI made the

following statement in an attempt to overcome the examiner’s rejection based on a

combination of certain prior art references:

       [A] basic combination of the Greenstone and Clark patents do [sic] not
       show any of the following features (all of which are included in
       independent claim 9 unless specifically noted otherwise): . . . 4.
       Removable horizontal bars [i.e., divider members] which are snap-fit in
       position in the frame . . . .

J.A. at 845 (second emphasis added); see also J.A. at 1311 (similar statement with

respect to ’543 patent); J.A. at 1891 (similar statement with respect to ’565 patent).

These statements to the examiner, which related to all claims in those patents with the

divider member term, clearly and unambiguously defined divider members to have a

“snap-fit” connection, and therefore disclaimed those that do not.        Although these

statements were made with respect to the ’694, ’543, and ’565 patents, they also supply

the meaning of “divider member” as it appears in the ’589, ’576, and ’011 patents, 3 each



       2
            In the briefs and at oral argument, the parties focused on the male/female
limitation issue, and did not address whether there was a separate requirement that the
divider member have a “snap-fit” connection with the frame or retention member
(regardless of which one snapped “onto” the other). This is the sole issue LSI raises in
its petition for rehearing.
        3
           The ’011 patent is the only patent-in-suit which expressly contains a “snap-fit”
limitation. In its response to LSI’s petition, MDI argues that because in some instances


2007-1292, -1293, -1294, -1295           8
of which was filed as a continuation of the application resulting in the ’543 patent. See

NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005) (“Because

NTP’s patents all derive from the same parent application and share many common

terms, we must interpret the claims consistently across the asserted patents.”) (citations

omitted); Jonsson v. Stanley Works, 903 F.2d 812, 818 (Fed. Cir. 1990) (when two

patents using the same claim term both stem from the same parent application, the

prosecution histories of both are relevant to an understanding of the term in both

patents).

      The district court also construed retention member to be an “individual”

projection. In so doing, the district court relied upon vague and ambiguous statements

in the prosecution history in concluding that MDI had disavowed coverage of non-

individual retention members. Except in claims where the term “individual” expressly

appears, e.g., ’694 patent, claim 9, the claimed retention members are not so limited.

      Properly construed, “retention member” means “a member which retains a

divider member to the frame.” “Divider member” means “an elongated member used to

divide the open face of a frame module into a plurality of areas for placement of display

members or menustrips and which is snap-fit in position.”




the limitation only appears in dependent claims, the doctrine of claim differentiation
prevents it from limiting the “divider member” term standing alone. We disagree. As we
recently observed, “the presumption created by the doctrine of claim differentiation is
‘not a hard and fast rule and will be overcome by a contrary construction dictated by the
written description or prosecution history.’” Regents of Univ. of Cal. v. Dakocytomation
Cal., Inc., 517 F.3d 1364, 1375 (Fed. Cir. 2008) (citation omitted).


2007-1292, -1293, -1294, -1295          9
                              “channel means”; “channel”

      The district court construed the “channel means” terms as means-plus-function

claim elements under 35 U.S.C. § 112 ¶ 6. Although use of the word “means” gives rise

to a presumption that “channel means” is a means-plus-function element, the

presumption falls “if the claim itself recites sufficient structure to perform the claimed

function.” Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1364 (Fed. Cir.

2000). A “channel” is “a metal beam or strip having a U-shaped section,” Webster’s

Third New International Dictionary 374 (2002); see also J.A. at 2629-30, which is a

structural member that performs the function recited in the claim.          Thus, the word

“channel” itself recites sufficient structure to overcome the presumption. The district

court’s construction was also based on its determination that judicial estoppel barred

MDI from arguing that “channel means” was not a means-plus-function claim element.

Claim Construction Order at 47. The district court’s application of judicial estoppel was

misplaced, however, primarily because MDI never prevailed on any argument that these

terms were drafted in means-plus-function format. See New Hampshire v. Maine, 532

U.S. 742, 750-51 (2001) (discussing factors informing judicial estoppel).

      The district court construed “first channels” as “channel(s) in a divider member

that retain portions of display members and prevent light from escaping between a

divider member and vertical frame members.”        Claim Construction Order at 53.      It

construed “second channels” as “channel(s) in the top frame member or in the bottom

frame member that retain portions of display members and that prevent light from

escaping between the display members and the frame.” Id. at 52. Thus, the district

court’s construction requires that both the first channels and the second channels be




2007-1292, -1293, -1294, -1295          10
able to block light, id. at 51, 53, and that the second channels be in the horizontal frame

members (i.e., the top or bottom frame members), id. at 51. Contrary to the district

court’s determination, nowhere does the specification or prosecution history make

statements that rise to the level of disavowing first or second channels that do not block

light or second channels located in vertical frame members. Properly construed, “first

channels” are “grooves or channels in a divider member that secure portions of the

display members” and “second channels” are “grooves or channels in a frame member

that secure portions of the display members.”

                                     “frame member”

       The district court construed “frame member” as a “beam-like structure

constituting one of four frame members of the display module outer rectangular frame,

where the beam-like structure can be comprised of multiple components only where all

components are directly attached to one another.”        Id. at 54.   As the district court

correctly recognized, the plain meaning of “frame member” encompasses single- or

multi-component beam-like structures, but the plain meaning also requires that if the

beam-like structure is composed of multiple components, those components must be

attached, or otherwise it would be “frame members.” Cf. id. at 53. There is no support

in the claims, the specification, or the prosecution history, however, for limiting the

invention to four frame members only, and doing so would import limitations from the

preferred embodiment.      Properly construed, “frame member” means “a beam-like

structure that forms part of the rectangular frame of the display module, where the

beam-like structure can be comprised of multiple components if the components are

directly attached to one another.”




2007-1292, -1293, -1294, -1295          11
                             “without disassembly of frame”

       The district court construed “without disassembly” to mean the “divider members

and display members can be removed from or placed in the module with the perimeter

of the outer frame remaining intact.” Id. at 55. There is nothing in the specification or

the prosecution history that supports limiting the disassembly to “the perimeter of the

outer frame remaining intact.” Properly construed, the term “without disassembly of the

frame” carries its plain and ordinary meaning: “the divider members and display

members can be removed from or placed in the frame without taking apart the frame.”

                     “mating male and female connection members”

       The district court construed “mating male and female connection members” as “a

set of interlocking ridges and grooves.”      Id. at 56.    There is no support in the

specification or prosecution history for limiting the term in this manner. “Mating male

and female connection members” means no more than “connecting male and female

structural elements.”

                                     “display device”

       The district court construed “display device” to mean a “sign box (i.e.,

menuboard) that contains one or more housings with internal illumination and one or

more removable display panels (i.e., display modules).” Id. at 56. The district court’s

construction was based on its conclusion that “MDI consistently emphasized in the

specification and during prosecution that the display device contains an internal

illumination source.” Id.

       Some claims specifically recite “an illuminated display device,” while others recite

only “a display device.” Compare, e.g., ’565 patent, claim 1, with id., claim 5. Thus, the




2007-1292, -1293, -1294, -1295          12
language of the claims counsels against imposing an illumination limitation on the

display device term because it would make the limitation superfluous where it explicitly

appears. Moreover, the specification and prosecution history do not clearly disavow

non-illuminated display devices. Thus, properly construed, “display device” means “a

sign box (i.e., a menuboard) which includes at least a housing and is adapted to mount

one or more display modules thereto.”

                                     “display module”

       The district court construed “display module” as a “self-contained subunit with an

outer, rectangular frame which can be inserted into, removed from, or relocated to a

new position within a display device.” Claim Construction Order at 57. MDI repeatedly

emphasized during prosecution this functionality of the display module—namely, it

being self-contained and able to be inserted into, removed from, etc., the display device.

For example, during reexamination of the ’543 patent, MDI argued: “‘[M]odule’ is used in

the specification and the claims to refer to a self-contained subunit which can be

inserted into, removed from, or relocated to a new position within the overall display

device, all without the need to disassemble the display device housing.         With this

terminology, [the inventor] has exercised his lawful right to act as his own

lexicographer.” J.A. at 1316. Nowhere, however, does the specification or prosecution

history indicate that the display module must have “an outer, rectangular frame.” And

because that limitation appears elsewhere in the claims, e.g., ’543 patent, claim 9, it

should not be engrafted onto the “display module” term itself. “Display module” means

“a menu module (i.e., menupanel) that can be inserted into, removed from, or relocated

to a new position within a display device.”




2007-1292, -1293, -1294, -1295          13
                       B. Summary Judgment of Non-infringement

       The district court granted summary judgment of non-infringement to LSI based

upon its conclusion that the accused infringing devices did not meet a number of the

various claim elements as construed. We vacate the district court’s grant of summary

judgment.      First, with respect to the terms for which we have substituted a new

construction, we vacate in order for the district court to reassess infringement based on

the proper constructions. See Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718, 724

(Fed. Cir. 2002) (“[A] change in the claim construction at the appellate level generally

necessitates a remand to the district court to resolve the new factual issues raised by

the new claim construction, except, of course, in the rare instance that the record on

appeal leaves no genuine issues of material fact and entitles the movant to judgment as

a matter of law.”). Second, with respect to those terms on which the district court

granted summary judgment and for which we have affirmed the constructions, we find

the record insufficient for us to determine if summary judgment of non-infringement was

appropriate.

       Summary judgment is properly granted when, after drawing all reasonable

inferences in favor of MDI, there is no genuine issue of material fact as to non-

infringement. See Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1301 (Fed. Cir.

1999); Fed. R. Civ. P. 56(c). We are presented here with no meaningful way to review

the district court’s determinations.     For example, with respect to the “removably

secured” limitation, the district court found: “Because none of the Accused Products,

either literally or by equivalent, permit removal of an H-track [(i.e., divider member)] in a

direction perpendicular to the menu panel frame, none of the Accused Products meet




2007-1292, -1293, -1294, -1295           14
the [limitation] . . . .” Summary Judgment Order at 4. There is no analysis, no citation to

record evidence, nor any accompanying explanation as to why, despite MDI’s vigorous

and record-based arguments to the contrary, the district court concluded there was no

genuine issue of material fact as to infringement, either literally or under the doctrine of

equivalents.      Indeed, while we cannot and do not predetermine the question, the

evidence and argument MDI has presented indicate that the district court, on remand,

could very well find that genuine issues of fact are present with respect to infringement

of this limitation. For example, the record suggests that although the divider members

(i.e., the “H-tracks”) of the accused products must be slid laterally to some minor extent

prior to their perpendicular removal, they may still be removed in a manner that is

substantially perpendicular to the frame. J.A. at 2765, 2852. This detail warrants more

than the cursory disposition it received. Similar questions remain as to infringement of

the “opposed retention members” and “display member” limitations. We do not decide

those questions here, as they are properly reserved for the district court to decide in the

first instance.

                                    III. CONCLUSION

       For the foregoing reasons, the district court’s grant of summary judgment of non-

infringement is vacated, and the case is remanded for further proceedings consistent

with this opinion.

                               VACATED and REMANDED

                                         COSTS

       Costs are awarded to MDI and ImagePoint.




2007-1292, -1293, -1294, -1295           15
