## Facts

- Computer Docking Station Corp. (CDSC) owned U.S. Patent No. 5,187,645, claiming a “portable computer” microprocessor “brick” connectable to peripherals either through separate connectors or a single docking connector.
- During prosecution, the examiner rejected claims over prior art (Herron) describing a laptop with an integrated display and keyboard plus a docking module for desktop-like use.
- To secure allowance, CDSC repeatedly distinguished its invention from Herron by stating its “portable computer” was not a laptop and lacked a built-in keyboard and display.
- CDSC sued Dell, Gateway, and Toshiba for infringement based on their portable computers and docking stations.
- The accused products were conventional laptops with integrated keyboards and displays that could dock to external peripherals.

## Issues

1. Whether prosecution history limited the claim term “portable computer” to exclude computers with built-in keyboards or displays, thereby precluding infringement by defendants’ laptops.
2. Whether the case was “exceptional” under 35 U.S.C. § 285 such that defendants were entitled to attorney’s fees.

## Decision

- Affirmed summary judgment of noninfringement.
- Held that CDSC made a clear and unmistakable prosecution disclaimer excluding laptops with built-in keyboards or displays from “portable computer.”
- Concluded the accused laptops fell outside the claims as properly construed.
- Affirmed denial of attorney’s fees, finding no abuse of discretion in the district court’s determination that the case was not exceptional under § 285.

## Legal Principles

- Prosecution disclaimer limits claim scope when the patentee’s statements or amendments during prosecution clearly and unmistakably surrender subject matter to obtain allowance.
- Claim construction considers claim language, specification, and prosecution history; arguments distinguishing prior art can narrow otherwise broader claim language.
- A patentee cannot recapture, through litigation claim construction, subject matter surrendered during prosecution.
- Attorney’s fees under 35 U.S.C. § 285 require an “exceptional” case determination, reviewed on appeal for abuse of discretion; an unsuccessful infringement position does not alone mandate fees.

## Conclusion

The court construed “portable computer” in light of CDSC’s prosecution statements disclaiming laptops with integrated displays and keyboards, affirmed noninfringement for defendants’ laptop products, and upheld the denial of attorney’s fees because the district court did not abuse its discretion in finding the case non-exceptional.


Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366 (Fed. Cir. 2008)