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SIMO Holdings Inc. v. Hong Kong uCloudlink Network Technology, Ltd. (Fed. Cir. Jan. 5, 2021)

The Court of Appeals for the Federal Circuit ruled that uCloudlink is entitled to summary judgment of noninfringement after rejecting the district court’s claim construction which did not require a "non-local calls database."

Some embodiments of SIMO Holdings' invention included a feature not present in every disclosed embodiment, i.e., the "non-local calls database" in the wireless communication client.

The district court’s interpretation relied on the Federal Circuit’s decision in Oatey Co. v. IPS Corp. which stated that we "normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification" and that "[a]t least where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence [to] the contrary."

However, the Court explained that "disclosed embodiments may be within the scope of other allowed but unasserted claims" and "[a]lthough reluctant to exclude an embodiment, this court must not allow the disclosed embodiment to 'outweigh the language of the claim, especially when the court’s construction is supported by the intrinsic evidence.'" The Court further explained that “[t]he mere fact that there is an alternative embodiment disclosed in the asserted patent that is not encompassed by our claim construction does not outweigh the language of the claim, especially when the court’s construction is supported by the intrinsic evidence."

Applying the above principles to this case, the Court explained that "uCloudlink's construction of claim 8 would not "contradict the specification"" and that "[i]t simply leaves out some alternative embodiments of what SIMO’s specification describes as inventive, while capturing one embodiment expressly described."

Read the case here.

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