Holding: (1) A court may engage in claim construction when ruling on a motion to dismiss. However, in certain cases, further claim construction proceedings are necessary to determine whether dismissal is appropriate. (2) A plural claim term is presumed to mean two or more, but this presumption may be overcome when either intrinsic or extrinsic evidence suggests the plural claim term can encompass one or more items.
UTTO owns US Pat. No. 9,086,441, directed to a method of detecting and identifying “buried assets” or underground utility lines. The invention uses GPS to determine a person’s location and compares the location to previously recorded data to determine whether the person is close to a particular buried utility line. In particular, the claimed method recites “receiving . . . a group of buried asset data points corresponding to a particular buried asset” and “generating, based on the group of buried asset data points, a two-dimensional area comprising the buffer zone at an above surface location . . .” (emphasis added). Metrotech sells the RTK-Pro locator device, which allows a user to access a database that includes location points saved in the database. The RTK-Pro uses GPS to direct the user from their current location to the selected location point saved in the database.
UTTO filed suit against Metrotech for infringement of the ‘441 Patent. The district court denied UTTO’s motion for a preliminary injunction, and in doing so, set forth a claim construction for the term “group of buried asset data points” that required two or more data points for each buried asset. The district court based its claim construction on the ordinary and customary meaning of the term “group” as requiring more than one. The district court dismissed UTTO’s complaint, as Metrotech’s RTK-Pro uses only one data point at a time, rather than multiple data points.
UTTO argued that the district court should be prohibited from engaging in claim construction to decide a motion to dismiss. However, the Federal Circuit disagreed. In some cases, claim construction can be performed using only intrinsic evidence, which is a question of law, and is not any different from the interpretation of other legal standards in deciding on a motion to dismiss. There is no rule that requires a court to construe claims in a separate claim construction proceeding. However, in some instances, a separate claim construction proceeding may be required. This is a case-by-case determination.
In this case, the Federal Circuit decided that deeper claim construction analysis is necessary to determine whether the term “group of buried asset data points” requires two or more data points for each buried asset. Typically, a plural term is presumed to include two or more items, but this presumption may be overcome when the broader context of the term indicates that a different meaning applies. The specification of the ‘441 Patent twice refers to using the claimed method with “one or more” buried asset data points and also describes a single data point-based buffer zone. This evidence should be considered more carefully in determining whether the term “group” may include a single data point. Additionally, extrinsic evidence may be helpful in further understanding the claimed invention. This extrinsic evidence raises factual questions that should not be determined at the motion to dismiss stage.
Citation: UTTO Inc. v. Metrotech Corp., 119 F.4th 984 (Fed. Cir. 2024)
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