On the one hand, this is a good case to cite during prosecution when facing a broadest reasonable interpretation based on the examiner drawing an arbitrary box around certain components in the prior art and labeling that box with the name of the claim element at issue. This is improper when the claim context dictates that the “[claim] terms refer to structures that are singularly physical, not defined on paper as different pieces of separate devices.” On the other hand, one should take care to draft claims that do not require such a physical separation among components unless necessary to distinguish over the prior art, since, as here, a simply rearrangement or redistribution of components may be sufficient to avoid infringement while performing similar functionality.
Background / Facts: The patent being asserted here is directed to playing a digital sound file on a speaker, where the file must first be converted into analog signals usable by the speaker. The accused speaker devices are those that play digital files stored on “docked” iPods, iPhones, or iPads (collectively “iDevices”) made by Apple Inc. All asserted claims include an “interface” of various constructions between the speaker devices and the iDevices. One group of claims recites that the “interface” must be built into an enclosure along with a “powered speaker.” Another group of claims has no such restriction. Instead, these claims recite “an interface unit operably coupled to the sound reproduction device,” “an interface device operably coupled to the sound reproduction device,” or “an interface module at least partially integrated within the enclosure.”
Issue(s): Whether the claimed “interface unit,” “interface device,” and “interface module,” in each instance must have at least some form of independent existence, or, in the words of the district court, be “singularly physical, not defined on paper as different pieces of separate devices.”
Holding(s): Yes. Although the court acknowledged that, in general, “’a structure’ need not be unitary,” in this case, “the structure of the claims further distinguish the ‘interface unit,’ ‘interface device,’ and ‘interface module’ from the ‘music storage device’ or ‘audio source device,’ which in this suit refer to the iDevices. … The claims consistently make clear that the ‘interface unit,’ ‘interface device,’ and ‘interface module’ reside interstitially between the ‘sound reproduction device’ and the ‘music storage device’ or ‘audio source device.’ No room exists for a reading where any component of the alleged ‘music storage device’ or ‘audio source device’ may be identified as a part of or the entirety of the claimed ‘interface unit,’ ‘interface device,’ or ‘interface module.’”