Error: Bad annotation destination
 United States Court of Appeals for the Federal Circuit


                                 04-1437, -1438, -1471


                              BOSS CONTROL, INC.
                  and 1217537 ONTARIO LIMITED PARTNERSHIP,

                                                      Plaintiffs-Appellants,

                                           v.


                                 BOMBARDIER INC.
                       and SPORTS CARS, INC. OF HOUSTON
                        (doing business as Northwest Honda),

                                                      Defendants-Cross Appellants.



       Robert M. Bowick, The Matthews Firm, of Houston, Texas, argued for plaintiffs-
appellants. On the brief was Guy E. Matthews.

      Harry C. Marcus, Morgan & Finnegan, L.L.P., of New York, New York, argued for
defendants-cross appellants. With him on the brief were John F. Sweeney, Richard
Straussman, and Richard W. Erwine.

Appealed from: United States District Court for the Southern District of Texas

Judge Kenneth M. Hoyt
 United States Court of Appeals for the Federal Circuit

                                04-1437, -1438, -1471


                              BOSS CONTROL, INC.
                  and 1217537 ONTARIO LIMITED PARTNERSHIP,

                                                     Plaintiffs-Appellants,

                                          v.

                                  BOMBARDIER INC.
                        and SPORTS CARS, INC. OF HOUSTON
                         (doing business as Northwest Honda),

                                                     Defendants-Cross Appellants.

                           __________________________

                           DECIDED: June 8, 2005
                           __________________________

Before SCHALL, GAJARSA, and PROST, Circuit Judges.

PROST, Circuit Judge.

      Boss Control, Inc. and 1217537 Ontario Limited Partnership (collectively, “Boss”)

appeal from a decision of the United States District Court for the Southern District of

Texas granting summary judgment of noninfringement of United States Patent No.

5,734,206 (the “’206 patent”) in favor of Bombardier Inc. and Sports Cars, Inc. of

Houston (collectively, “Bombardier”). See Boss Control, Inc. v. Bombardier Inc., No. H-

00-3491 (S.D. Tex. Apr. 30, 2004). Bombardier conditionally cross-appeals from a prior

decision of the district court denying Bombardier’s motion for summary judgment of

invalidity of the ’206 patent. See Boss Control, Inc. v. Bombardier Inc., No. H-00-3491

(S.D. Tex. Sept. 15, 2003). We affirm the district court’s grant of summary judgment of
noninfringement and therefore do not reach Bombardier’s conditional cross-appeal

concerning invalidity.

                                      BACKGROUND

       The ’206 patent discloses a security power interrupt apparatus that prevents the

unauthorized use of an electrically operated device. ’206 patent, col. 1, ll. 14-20. In the

written description of the ’206 patent, the inventors distinguish their invention from prior

art devices that “conventionally provide for on-off control only.” Id. at col. 1, ll. 36-37. In

contrast, when in an “interrupt mode,” the apparatus retains a connection to a power

supply that allows auxiliary electrical equipment to operate. Id. at col. 1, ll. 51-57; col. 6,

ll. 3-6. The apparatus may automatically switch to the interrupt mode in various ways,

such as when a component like a key pad is detached from the device. Id. at col. 2, ll.

7-11; col. 5, l. 60-67. When in the interrupt mode, power to the device is not completely

shutoff until a preset electrical current is exceeded, for example by turning on a high-

current drawing component of the device. Id. at col. 1, ll. 53-54; col. 6, ll. 13-19. In this

way unauthorized attempts to use the device are immediately obvious from the fact that

the auxiliary electrical equipment no longer operates. Id. at col. 6, ll. 19-24.

       Boss filed suit against Bombardier, alleging infringement of the ’206 patent. The

parties focus on claim 7. This claim recites:

                     An interrupt system which is operative to interrupt the
              transmission of power from a power supply to an electrical
              load, comprising:
                     a controller, wherein said controller is operative to
              selectively supply or interrupt power to the load,
                     a code-providing device detachably operatively
              connected with the controller, wherein said code-providing
              device is operable to provide an authorization code to said
              controller when operatively connected thereto, and wherein
              said controller is operative to supply power to the load



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             responsive to the code-providing device providing said
             authorization code to the controller, and
                    wherein the controller is operative to monitor the
             operative connection with said code-providing device, and
             wherein said controller is operative to interrupt power to the
             load responsive to said code-providing device being
             operatively disconnected from said controller.

Id. at col. 8, ll. 21-38 (emphasis added). In its answer, Bombardier asserted several

affirmative defenses but did not present any counterclaims.

      The accused devices include personal watercraft and snowmobiles equipped

with a Digitally Encoded Security System (“DESS”).       An operator of one of these

watercraft or snowmobiles wears a lanyard that includes a cap that fits onto a post on

the vehicle. The cap includes a semiconductor chip that carries an electronic code that

the vehicle recognizes when the cap is connected to the post.        In the case of the

watercraft, the DESS allows the watercraft’s engine to start only when the cap carrying

the correct code is in place. When the cap is pulled off of the post, for example when

the operator falls off of the watercraft, the watercraft’s engine as well as auxiliary

gauges and lights immediately turn off. However, power is supplied to the watercraft’s

auxiliary gauges and lights for thirty seconds if the operator tries to restart the

watercraft’s engine without reattaching the cap carrying the correct code.         The

snowmobile operates slightly differently than the watercraft. For example, the DESS

allows the snowmobile’s engine to start and idle so long as any cap is attached to the

post. However, only when the proper cap is in place is the snowmobile allowed to

accelerate. When any cap is pulled off of the post, the snowmobile’s engine as well as

auxiliary gauges and lights immediately turn off.       Power is not supplied to the




04-1437, -1438, -1471                      3
snowmobile’s auxiliary gauges and lights for any amount of time if the operator tries to

start the snowmobile’s engine without a cap in place.

      The district court denied Bombardier’s motion for summary judgment of invalidity,

but granted Bombardier’s motion for summary judgment of noninfringement. The court

found that the accused devices do not (1) “monitor the operative connection with said

code-providing device” or (2) “interrupt power to the load responsive to said code-

providing device being operatively disconnected from said controller.” The court did not

address infringement under the doctrine of equivalents.

      Boss appeals the grant of summary judgment of noninfringement. Bombardier

conditionally cross-appeals the denial of summary judgment of invalidity.       We have

jurisdiction over a final judgment under 28 U.S.C. § 1295(a)(1).1

                                     DISCUSSION

                                 A. Standard of Review

      We review a district court’s grant of summary judgment de novo, reapplying the

standard applicable at the district court. Rodime PLC v. Seagate Tech., Inc., 174 F.3d

1294, 1301 (Fed. Cir. 1999). Summary judgment is only appropriate when “there is no

genuine issue as to any material fact and . . . the moving party is entitled to a judgment



      1
               As noted above, Bombardier only filed affirmative defenses and not
counterclaims. Since there are no pending counterclaims with respect to invalidity, the
district court entered a proper final judgment. See Lighting World, Inc. v. Birchwood
Lighting, Inc., 382 F.3d 1354, 1366 (Fed. Cir. 2004) (noting that, because the alleged
infringer raised invalidity as an affirmative defense and not as a counterclaim, it was
unnecessary for the district court to enter a judgment as to the invalidity issue when
entering a judgment of noninfringement); cf. Pause Tech. LLC v. TiVo Inc., 401 F.3d
1290, 1293-95 (Fed. Cir. 2005) (dismissing an appeal for lack of jurisdiction because
pending counterclaims of invalidity rendered a judgment of noninfringement nonfinal).
We therefore have jurisdiction to address the district court’s grant of summary judgment
of noninfringement.


04-1437, -1438, -1471                       4
as a matter of law.” Fed. R. Civ. P. 56(c); Fierros v. Tex. Dep’t of Health, 274 F.3d 187,

190 (5th Cir. 2001). Determining infringement requires two steps. “First, the claim must

be properly construed to determine its scope and meaning.            Second, the claim as

properly construed must be compared to the accused device or process.”                Carroll

Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993). Claim

construction is an issue of law that we review de novo. Cybor Corp. v. FAS Techs.,

Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc); Markman v. Westview

Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370

(1996). Infringement, whether literal or under the doctrine of equivalents, is a question

of fact. Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998). The proper

inquiry is whether the evidence is such that a reasonable jury could return a verdict for

the non-movant. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986). We

must draw all justifiable inferences in favor of the non-movant. Id.

                                        B. Analysis

                                   1. Claim Construction

       Boss argues that the district court erred in construing “wherein said controller is

operative to interrupt power to the load responsive to said code-providing device being

operatively disconnected from said controller.”         Specifically, Boss contends that

“interrupt” should be given its ordinary and accustomed meaning of “to break off” or “to

shut or cut off.” Bombardier responds by arguing that the inventors gave a special

definition to the term “interrupt” that does not involve simple “on-off” control of electrical

power.




04-1437, -1438, -1471                         5
       To interpret “interrupt,” we first consult “the intrinsic evidence of record, i.e., the

patent itself, including the claims, the specification and, if in evidence, the prosecution

history.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).

“Although words in a claim are generally given their ordinary and customary meaning, a

patentee may choose to be his own lexicographer and use terms in a manner other than

their ordinary meaning, as long as the special definition of the term is clearly stated in

the patent specification or file history.” Id. “Thus, . . . it is always necessary to review

the specification to determine whether the inventor has used any terms in a manner

inconsistent with their ordinary meaning. The specification acts as a dictionary when it

expressly defines terms used in the claims or when it defines terms by implication.” Id.

In fact, the specification “is the single best guide to the meaning of a disputed term.” Id.

However, “the court may also consider the prosecution history of the patent, if in

evidence.”   Id.   “In most situations, an analysis of the intrinsic evidence alone will

resolve any ambiguity in a disputed claim term. In such circumstances, it is improper to

rely on extrinsic evidence.” Id.

       In this case the specification of the ’206 patent clearly gives the term “interrupt” a

special definition. In the “Background of the Invention” section, the specification states:

              In the prior art, means have been provided to prevent
              unauthorized usage of electrical appliances and similar
              electrically operated devices, primarily through key operated
              electro-mechanical circuit interrupt devices. However, such
              devices conventionally provide for on-off control only,
              meaning that the device completely interrupts the flow of
              electrical power to the appliance while in the interrupt or
              “locked” state, and it connects the appliance to the electrical
              supply in the operative or “unlocked” state.




04-1437, -1438, -1471                         6
’206 patent, col. 1, ll. 33-42.    The “Summary of the Invention” section goes on to

distinguish the invention from the prior art discussed in the Background of the Invention:

              In accordance with one aspect of the invention the appliance
              or device retains a connection to the power supply while in
              interrupt or “locked” mode; complete power shutoff only
              occurs when a preset electrical current is exceeded, thus
              allowing operation of the appliance’s auxiliary electrical
              equipment while the interrupt device is in the interrupt mode.

Id. at col. 1, ll. 51-57. The specification therefore distinguishes between simple on-off

interruption of electrical power and interruption of electrical power that occurs in two

stages. In the first stage, a device retains a connection to a power supply such that

auxiliary electrical equipment continues to operate. In the second stage, power to the

device is completely shut off in response to current exceeding a preset limit. Thus,

according to the specification, when electrical power is “interrupted,” current is allowed

to flow to the device up to a preset limit during a first stage of operation, and when the

preset limit is exceeded, a second stage of operation is entered in which power to the

device is completely shut off.      In these ways, the specification clearly sets forth a

definition of “interrupt” that is more detailed than simple on-off control.

       The preferred embodiments are consistent with this definition of “interrupt.”

“[W]hile it is of course improper to limit the claims to the particular preferred

embodiments described in the specification, the patentee’s choice of preferred

embodiments can shed light on the intended scope of the claims.” Astrazeneca AB v.

Mut. Pharm. Co., 384 F.3d 1333, 1340 (Fed. Cir. 2004). The “Detailed Description of

the Invention” section of the ’206 patent discloses a preferred embodiment of the

invention in the form of an interrupt device coupled to a household appliance such as an




04-1437, -1438, -1471                         7
electric stove. This section describes the operation of the interrupt device and the

stove:

                       In the preferred embodiment, when the appliance 11
               is in the interrupt mode, auxiliary functions, such as a clock
               and/or light, remain operational, so long as their combined
               current draw is less than the “current threshold”. When an
               unauthorized person attempts to use the heating functions of
               the appliance 11, which draw a comparatively greater
               current, the current threshold will be exceeded and the relay
               contacts 20 or 21 will be opened, disconnecting the main
               power supply from the appliance while still supplying power
               to the microcontroller 26 through DC power supply 25.
                       It will be understood that in the described
               embodiments the device in the interrupt mode does not
               actually cut off power to the appliance, i.e. interrupt the main
               power supply, until the current threshold is exceeded by
               turning on a high current-drawing component of the
               appliance 11, such as a heating element.
                       Thus unauthorized attempts to use the appliance in
               the described embodiment wherein the interrupt device is
               operatively connected with a stove, are immediately obvious
               from the fact that the auxiliary clock and light functions of the
               stove no longer operate.

’206 patent, col. 6, ll. 3-23.     This description confirms that, in the context of the

invention, interruption of power to an electrical device involves two stages: a first stage

in which auxiliary functions remain operational so long as a combined current draw is

less than a current threshold, and a second stage in which power to the device is

completely disconnected in response to the current threshold being exceeded.

         In contrast to the way in which the specification distinguishes the invention’s

concept of a two-stage interruption of electrical power from the simple on-off interruption

of electrical power in prior art devices, Boss argues that we should construe “interrupt”

as “to break off” or “to shut or cut off.” To support this construction, Boss points to a

dictionary as well as the prosecution history of the ’206 patent. Neither the dictionary




04-1437, -1438, -1471                         8
definition nor the prosecution history, however, overcomes the particular meaning of

“interrupt” clearly set forth in the specification. While at least one dictionary defines

“interrupt” as “to break off” or “to shut or cut off,” as discussed above the specification

clearly sets forth a definition of “interrupt” that is not limited to a simple on-off control of

electrical power. Furthermore, while it is true that during prosecution the applicants

twice used the phrase “cut off” interchangeably with the term “interrupt,” this usage does

not operate to erase the clear definition of “interrupt” found in the specification of the

’206 patent. Moreover, this usage of “interrupt” is consistent with the second stage of

the interrupt mode described in the specification: complete disconnection of power.

       Boss also attempts to distinguish claim 7’s use of the term “interrupt” from use of

the phrase “interrupt mode” found elsewhere in specification, including other claims.

Use of the term “interrupt” in the context of claim 7, however, is consistent with use of

the phrase “interrupt mode” in the remainder of the specification. For example, the

specification describes how the interrupt device switches to the interrupt mode:

              the interrupt device is switched to the interrupt mode in one
              of three ways: . . . 2) the authorized person detaches or
              uncouples the key pad 27 from the main body 10 by
              disconnecting plug 42 on cord 41 from the receptacle 43 in
              the key pad 27 . . . .

’206 patent, col. 5, ll. 61-67. This description makes clear that one of the ways in which

the interrupt device switches to the interrupt mode is when a key pad is detached,

uncoupled, or disconnected from the interrupt device. Similarly, claim 7 recites “wherein

said controller is operative to interrupt power to the load responsive to said code-

providing device being operatively disconnected from said controller.” “Interrupt” as it is




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used in claim 7 is therefore fully consistent with the “interrupt mode” discussed

elsewhere in the specification.

       Because the specification makes clear that the invention involves a two-stage

interrupt mode, the intrinsic evidence binds Boss to a narrower definition of “interrupt”

than the extrinsic evidence might support. See Astrazeneca, 384 F.3d at 1338. See

also SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341

(Fed. Cir. 2001) (“Where the specification makes clear that the invention does not

include a particular feature, that feature is deemed to be outside the reach of the claims

of the patent, even though the language of the claims, read without reference to the

specification, might be considered broad enough to encompass the feature in

question.”).

       In sum, “interrupt” requires: (1) providing electrical current to a device up to a

preset threshold so that auxiliary components may continue to operate; and (2)

completely shutting off electrical current to the device when the electrical current

exceeds the preset threshold. The district court did not err in its claim construction.

                                     2. Infringement

                                         a. Literal

       Boss argues that there is a question of fact as to infringement even under the

district court’s claim construction since Bombardier’s watercraft operate in both of the

interrupt stages. In particular, Boss argues that infringement occurs when a watercraft’s

DESS shuts off power to the watercraft’s engine due to removal of the cap from the post

but retains the ability to supply power to the auxiliary gauges and lights for thirty

seconds if an attempt is made to start the watercraft’s engine.




04-1437, -1438, -1471                       10
       We agree with the district court that there is no genuine issue of material fact with

respect to literal infringement by the watercraft because the watercraft do not “interrupt

power to the load responsive to said code-providing device being operatively

disconnected from said controller.” A watercraft’s DESS does not “interrupt” power in

response to disconnection of the plug from the post because the DESS does not

provide electrical current to the watercraft up to a preset threshold so that auxiliary

components of the watercraft may continue to operate. Neither does the watercraft’s

DESS completely shut off electrical current to the watercraft when the electrical current

exceeds a preset threshold. The ability to operate the auxiliary gauges, lights, and

engine of the watercraft does not in any way depend on the current level.

       Moreover, the watercraft’s DESS completely shuts off electrical current to the

watercraft when the plug is removed from the post.              As Boss conceded at oral

argument, the watercraft’s DESS prevents current from flowing to the watercraft’s

auxiliary equipment immediately after the plug is removed from the post. For example,

if an auxiliary light on a watercraft is lit just before the plug is removed from the post, the

auxiliary light darkens once the plug is removed from the post because the DESS

immediately and completely shuts off current to the light. Current is not provided to the

watercraft at all immediately after the plug is removed from the post, let alone up to a

preset threshold.

       At oral argument, Boss argued that this on-off function of the watercraft’s DESS

does not prevent a finding of infringement because the watercraft’s DESS supplies

power to auxiliary equipment for thirty seconds if there is an attempt to start the

watercraft’s engine in the absence of the correct cap. In other words, Boss argues that




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merely retaining a physical connection to the power supply suffices for infringement.

We disagree. The ability to provide current to the watercraft in response to an attempt

to start the watercraft’s engine through a remaining physical connection does not alter

the fact that the watercraft’s DESS does not actually provide electrical current to the

watercraft at all, let alone up to a preset threshold, immediately after the plug is

removed from the post. Retaining a physical connection in the form of a hardwire

connection to a power supply does not mean that current is continued to be provided

through the hardwire connection up to a preset threshold. For these reasons, we agree

with the district court that summary judgment of no literal infringement is appropriate

with respect to Bombardier’s watercraft.

      Boss does not separately analyze infringement by Bombardier’s snowmobiles.

Nevertheless, we find that summary judgment of no literal infringement is also

appropriate with respect to the snowmobiles.       The ability to operate the auxiliary

gauges, lights, and engine of the snowmobiles, like the watercraft, does not in any way

depend on the current level. Moreover, when any cap is pulled off of the post, the

snowmobile’s engine as well as auxiliary gauges and lights immediately turn off, and no

current is continued to be supplied to the auxiliary gauges and lights. In addition, power

is not supplied to the snowmobile’s auxiliary gauges and lights for any amount of time if

the operator tries to start the snowmobile’s engine without a cap in place. For these

reasons, we agree with the district court that summary judgment of no literal

infringement is appropriate with respect to Bombardier’s snowmobiles.




04-1437, -1438, -1471                      12
                                b. Doctrine of Equivalents

       Boss argues that the district court’s failure to determine infringement under the

doctrine of equivalents constitutes reversible error. Bombardier responds by arguing,

inter alia, that Boss cannot rely on the doctrine of equivalents because Boss did not rely

on it before the district court in opposing summary judgment.

       Bombardier is correct that Boss failed to present any arguments concerning the

doctrine of equivalents to the district court. Boss failed to address infringement under

the doctrine of equivalents in its complaint or in its two briefs to the district court on the

issue of summary judgment of noninfringement. The only mention of the doctrine of

equivalents in either brief is in one sentence that states that “[a] patent claim can be

infringed in two ways, literally or under the doctrine of equivalents.”          This single

reference to the doctrine of equivalents in Boss’s briefs, without further argument

specifically addressing infringement under the doctrine of equivalents or referencing

evidence showing infringement under the doctrine of equivalents, does not present

anything for this court to “review.” See Sage Prods. Inc. v. Devon Indus., 126 F.3d

1420, 1426 (Fed. Cir. 1997) (noting that, with few exceptions, “this court does not

‘review’ that which was not presented to the district court”). Because Boss failed to

present substantive arguments to the district court concerning infringement under the

doctrine of equivalents, we hold that Boss waived the issue.2




       2
              In light of our conclusion that summary judgment of noninfringement is
appropriate based on the correct construction of the “interrupt” limitation, we decline to
address the construction or the alleged infringement of “wherein the controller is
operative to monitor the operative connection with said code-providing device.” See
Hoffer v. Microsoft Corp., No. 04-1103, slip op. at 6 (Fed. Cir. Apr. 22, 2005).


04-1437, -1438, -1471                        13
                                      3. Cross-appeal

       Bombardier only conditionally cross-appeals the denial of summary judgment of

invalidity. In light of our decision on infringement, we are left with the situation in which,

effectively, the district court’s findings with regard to invalidity have not been appealed.

See Power Mosfet Techs., L.L.C. v. Siemans AG, 378 F.3d 1396, 1413 n.3 (Fed. Cir.

2004) (rejecting the argument that Cardinal Chemical Co. v. Morton International Inc.,

508 U.S. 83 (1993), requires review of conditionally appealed invalidity findings). We

therefore do not address the merits of the cross-appeal.3

                                      CONCLUSION

       The district court correctly construed “interrupt”; there is no genuine issue of

material fact regarding literal infringement; and Boss waived the issue of infringement

under the doctrine of equivalents.      We therefore affirm the district court’s grant of

summary judgment of noninfringement and dismiss Bombardier’s conditional cross-

appeal concerning invalidity.

                                        AFFIRMED




       3
                That is not to say that Bombardier’s cross-appeal, if not conditional, would
be proper. In Lighting World, 382 F.3d at 1366, we dismissed a cross-appeal in
strikingly similar circumstances. Furthermore, we have doubts that the issue of
invalidity is inextricably intertwined with the issue of infringement, or that resolution of
the issue of invalidity is necessary to ensure meaningful review of the issue of
infringement, even though both issues share a common claim construction. See Swint
v. Chambers County Comm’n, 514 U.S. 35, 50-51 (1995) (suggesting that pendant
jurisdiction over an interlocutory appeal might be appropriate when two decisions are
“inextricably intertwined” or when resolution of one is “necessary to ensure meaningful
review” of another).


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