NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
RICHARD J. BAKER,
Plaintiff-Appellant
v.
MICROSOFT CORPORATION, UBISOFT, INC.,
NINTENDO OF AMERICA, INC., ELECTRONIC
ARTS INC, HARMONIX MUSIC SYSTEMS, INC.,
Defendants-Appellees
MAJESCO ENTERTAINMENT,
Defendant
______________________
2017-2357
______________________
Appeal from the United States District Court for the
Western District of Washington in No. 2:16-cv-00396-
RAJ, Judge Richard A. Jones.
______________________
Decided: April 9, 2018
______________________
RICHARD J. BAKER, Mermaid Waters, Queensland,
Australia, pro se.
2 BAKER v. MICROSOFT CORPORATION
SONAL NARESH MEHTA, Durie Tangri LLP, San Fran-
cisco, CA, for defendants-appellees Microsoft Corporation,
Electronic Arts Inc. Also represented by ADAM R. BRAUSA.
MICHELLE LYONS MARRIOTT, Erise IP, P.A., Overland
Park, KS, for defendant-appellee Ubisoft, Inc. Also repre-
sented by ERIC ALLAN BURESH.
JONATHAN L. MCFARLAND, Perkins Coie, LLP, Seattle,
WA, for defendant-appellee Nintendo of America, Inc.
PATRICK JOSEPH COYNE, Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP, Washington, DC, for
defendant-appellee Harmonix Music Systems, Inc. Also
represented by LINDA JEAN THAYER, Boston, MA.
______________________
Before REYNA, WALLACH, and HUGHES, Circuit Judges.
REYNA, Circuit Judge.
Richard Baker appeals the United States District
Court for the Western District of Washington’s grant of
summary judgment of noninfringement. We affirm.
BACKGROUND
I. The ’001 Patent
Mr. Baker is the owner and inventor of
U.S. Patent
No. 5,486,001 (“the ’001 Patent”), which is entitled “Per-
sonalized Instructional Aid.” The ’001 Patent describes
an instructional aid intended to provide users with feed-
back on their body movements relating to a given activity,
such as a golf swing. The ’001 Patent claims a method
and an apparatus generally comprising the steps of cap-
turing an image signal of a user’s movement in a first
location; using a transceiver at the first location to send
the captured signal over a communications network to a
computer at a second location; comparing the captured
BAKER v. MICROSOFT CORPORATION 3
signal with a pre-stored, preferred signal using the com-
puter at the second location; generating and transmitting
an instructional signal from the computer at the second
location to the transceiver at the first location; and dis-
playing the instructional signal back to the user at the
first location.
Relevant to this appeal, during prosecution of the ’001
Patent, the U.S. Patent and Trademark Office (“USPTO”)
rejected Mr. Baker’s application as anticipated by
U.S.
Patent No. 5,184,295 (“Mann”). Specifically, the Examin-
er noted:
Mann discloses a method for providing an instruc-
tional aid for assisting a person to emulate a pre-
ferred movement. The method includes the steps
of capturing and storing visual image signals rep-
resentative of a particular movement, comparing
said captured image signals with stored image
signals of a preferred movement, and generating
further video image signals based on the original
signals.
J.A. 149.
Mr. Baker amended the application, adding language
requiring certain functions to occur at different “loca-
tions.” Claim 1 of the ’001 Patent was amended, with the
amended terms underlined, as follows:
A method for providing an instructional aid for
assisting a person to emulate a preferred move-
ment, said method comprising:
capturing and storing initial visual image signals
representative of a particular movement at a first
location,
storing preferred image signals representative of
a selected preferred movement at a second loca-
4 BAKER v. MICROSOFT CORPORATION
tion remote from said first location in a data base
of a computer,
transmitting said captured and stored visual im-
age signals from said first location to said comput-
er at said second location,
comparing said captured and stored image signals
with stored preferred image signals in said data
base of said computer,
regenerating further visual secondary image sig-
nals based on said initial image signals of said
particular movement adjusted to emulate said
stored preferred image signals of said selected
movement in said computer, and
transmitting said regenerated signals from said
computer at said remote second location to said
first location and stored in image presentation
means which permits viewing thereof with dia-
logue relating to said regenerated visual second-
ary image signals.
J.A. 90–91 (emphases added). Pending claim 17 (issued
claim 10) was similarly amended, and pending claim 25
(issued claim 18) contained originally-filed language
requiring a means for transmission “to a remote location.”
J.A. 93, 95–96. Following these amendments, and in light
of Mr. Baker’s supporting remarks, the USPTO allowed
Mr. Baker’s claims and issued the ’001 Patent.
II. The Accused Products
Mr. Baker brought the underlying infringement suit
against Microsoft Corporation, Electronic Arts Inc., Har-
monix Music Systems, Inc., Majesco Entertainment Co.,
Ubisoft, Inc., and Nintendo of America, Inc. (collectively,
“Appellees”). As relevant here, the purportedly infringing
products are video games that incorporate an image
capturing device, i.e., a camera, connected to a gaming
BAKER v. MICROSOFT CORPORATION 5
console or personal computer. Mr. Baker contends that
the accused cameras constitute a “first location,” while the
gaming consoles or personal computers constitute a
“second location,” and therefore, Appellees’ products
infringe the ’001 Patent when combined.
Relying on the claim amendments during prosecution
of the ’001 Patent, Appellees moved for summary judg-
ment of noninfringement of the asserted claims. The
district court granted summary judgment for Appellees
concluding that Appellees’ products do not infringe the
’001 Patent either literally or under the doctrine of equiv-
alents. Subsequently, the district court denied Mr.
Baker’s motion for reconsideration.
On appeal, Mr. Baker seeks to reverse the district
court’s grant of summary judgment of noninfringement.
We have jurisdiction under
28 U.S.C. § 1295(a) (2012).
DISCUSSION
We review summary judgment decisions by applying
the law of the regional circuit, here the Ninth Circuit. See
Lexion Med., LLC v. Northgate Techs., Inc.,
641 F.3d
1352, 1358 (Fed. Cir. 2011). The Ninth Circuit reviews
“the district court’s grant of summary judgment de novo.”
Goodman v. Staples The Office Superstore, LLC,
644 F.3d
817, 822 (9th Cir. 2011). Summary judgment is appropri-
ate when, viewing the evidence in the light most favorable
to the nonmoving party, there is “no genuine dispute as to
any material fact and the movant is entitled to judgment
as a matter of law.” Fed. R. Civ. P. 56(a); Zetwick v. Cty.
of Yolo,
850 F.3d 436, 440 (9th Cir. 2017) (citations omit-
ted).
I. Claim Construction
The district court construed the term “remote” in
claims 1, 10, and 18 of the ’001 Patent as requiring “more
than physical separation at the same location.” Baker v.
Microsoft Corp., No. C16-396RAJ,
2017 WL 44517, at *4–
6 BAKER v. MICROSOFT CORPORATION
5 (W.D. Wash. Jan. 3, 2017). Mr. Baker argues that the
district court erred in its claim construction because the
intrinsic record does not limit the term “remote” to mean
that the separate locations cannot be in the same room.
For the reasons discussed below, we agree with the dis-
trict court’s construction.
The ’001 Patent’s specification describes two compo-
nents of the first location as an “image capturing device”
and an “audio-visual signal transceiver.” The specifica-
tion explains that at the first location, the image captur-
ing device may either be “discrete” from the signal
transceiver, or the two components “may be one in the
same.” ’001 Patent, col. 6, ll. 5–9. The district court
therefore reasoned that the use of the term “discrete” to
describe physically separated components at the same
location indicates that the term “remote” must require
something more than mere physical separation. Baker,
2017 WL 44517, at *4–5.
The district court also noted that during prosecution,
Mr. Baker overcame the Mann prior art reference and
achieved patentability by adding the limitation of two
separate locations to his pending claims.
Id. at *5. Thus,
the district court concluded that Mr. Baker “disavowed
the interpretation of ‘remote’ he now seeks to use when he
amended [the claims].”
Id.
“Statements made during prosecution may also affect
the scope of the claims. Specifically, a patentee may limit
the meaning of a claim term by making a clear and un-
mistakable disavowal of scope during prosecution.”
Computer Docking Station Corp. v. Dell, Inc.,
519 F.3d
1366, 1374 (Fed. Cir. 2008) (citations and internal quota-
tions omitted). Mann discloses all the features of the ’001
Patent but does not impose the ’001 Patent’s require-
ments incorporating separate, remote devices. See J.A.
151; 256–58. Rather, Mann’s specification indicates that
the invention’s functions are performed by a peripheral
BAKER v. MICROSOFT CORPORATION 7
camera connected to a single, capable computer. J.A. 243
(“The computer utilized by the applicants in the practice
of this invention is a model VAX 11/750, manufactured by
Digital Equipment Corporation.”).
In his remarks accompanying the proposed amend-
ments, Mr. Baker argued that Mann did not anticipate
the amended claims because “[n]owhere in Mann is there
a teaching that the computer system is located remotely
from the teaching station as is emphasized in Applicant’s
disclosure.” J.A. 99. Mr. Baker further argued that
“[t]ransmittance to a separate location for analysis and
feedback is critical in Applicant’s invention, because the
programming can be efficiently performed at the remote
computer station.”
Id.
Mr. Baker made these amendments to distinguish the
’001 Patent over Mann. We agree with the district court
that Mr. Baker clearly and unmistakably disavowed any
portion of his claim scope which combines the claimed
features of the ’001 Patent’s remote computers into a
single location or a single computer-like device, as dis-
closed in Mann.
Lastly, for the reasons discussed by the district court,
we agree that the word “remote” in claim 18 carries the
same meaning as it conveys in claims 1 and 10. See
Baker,
2017 WL 44517, at *4.
II. Infringement
Before the district court, both parties stipulated to the
fact that, at all relevant times, the cameras of Appellees’
products are “located in the same room, and in close
proximity to,” the game consoles or personal computers.
J.A. 451–52. Based on its claim construction that remote
data bases cannot be located in a single location, the
district court determined that Appellees’ accused products
do not literally infringe the ’001 Patent because all com-
8 BAKER v. MICROSOFT CORPORATION
ponents of the accused products, when combined, are
located in the same room.
Id. at *6–7.
We agree that Appellees’ accused products do not
literally infringe the ’001 Patent. Rather than incorporat-
ing two remote, computer-like devices (plus a peripheral
camera) as required by the claims, we observe—and Mr.
Baker appears to concede 1—that the accused products
only employ a single game console or personal computer
in conjunction with a peripheral camera. As explained,
Mr. Baker clearly and unmistakably disclaimed such a
system during prosecution. Thus, we agree with the
district court’s conclusion that the accused products do
not literally infringe each limitation of claim 1, 10, or 18
of the ’001 Patent. See Advanced Steel Recovery, LLC v.
X-Body Equip., Inc.,
808 F.3d 1313, 1319 (Fed. Cir. 2015);
Southwall Techs., Inc. v. Cardinal IG Co.,
54 F.3d 1570,
1575 (Fed. Cir. 1995) (“To establish literal infringement,
every limitation set forth in a claim must be found in an
accused product, exactly.”).
The district court also concluded that prosecution
history estoppel barred Mr. Baker from pursuing his
infringement claim under the doctrine of equivalents. See
Baker,
2017 WL 44517, at *7–8. For the same reasons
discussed in the district court’s order, we agree.
CONCLUSION
We have considered Mr. Baker’s remaining argu-
ments and find them unconvincing. Accordingly, we
1 Mr. Baker’s infringement argument requires iden-
tifying a peripheral camera as a first location and a PC or
game console as a second location remote from the pe-
ripheral camera. See, e.g., Appellant’s Br. 42 (“Again,
Appellees [sic] use of a peripheral device camera puts
them on working [sic] camera and computer in two sepa-
rate locations mentioned in the [’]001 patent.”).
BAKER v. MICROSOFT CORPORATION 9
affirm the district court’s grant of summary judgment in
favor of Appellees.
AFFIRMED
COSTS
No costs.
