Deciding Infringement During Claim Construction

PatentLawPic369ADC Telecommunications v. Switchcraft (Fed. Cir. 2008)(nonprecedential)

Patent law precedent requires a judge to interpret any disputed claims of a patent prior to sending the case to a jury to determine factual issues of infringement. 

“First, the court determines the scope and meaning of the patent claims asserted. . . . [Second,] the properly construed claims are compared to the allegedly infringing device.” Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc) (citations omitted).

There is a strong tendency, however, to push the judge toward deciding the infringement issue within a Markman hearing — leading to a potentially quick summary judgment conclusion. Thus, parties often ask the judge to determine whether or not claimed element “X” should be interpreted to cover “Y” – where Y is an element of the accused product.

This infringement litigation involves a patent covering a coaxial switch that includes a mechanism for impedance matching.  Dueling experts used different testing mechanisms to prove (non)infringement of the accused device. Hoping to short-circuit the infringement determination, the defendant argued that that proper construction of the claims require a its method for testing for infringement. The CAFC disagreed because the claims lacked any textual hook for requiring a particular testing method and because the specification lacked “any clear indication” of a particular test. Relying upon its 2005 Union Carbide decision, the court found that “[b]ecause the claim language does not require a particular form of testing, this inquiry is not a claim construction question, which this court reviews de novo. Rather, this court reviews this inquiry as a question of fact.”

Thus, the CAFC affirmed the lower court’s decision and ruling that the “dispute over the proper testing method is … a factual question that the district court properly submitted to the jury.”

17 thoughts on “Deciding Infringement During Claim Construction

  1. While e6K and his roommate were inventing everything that’s ever been invented, Mooney was disparaging it all as bogus. Yes, all the patents that issued from 1994-2004 are bogus.

    Mooney, why don’t we just fire all the examiners and just have Mooney judge all the applications at a distance. He can just put a picture of the closed application file against his brow and make a determination.

    Why? because he is THAT good. He is the gunner of Patently-O.

  2. Dear Malcolm,

    Re: “Enjoy,” please see:

    link to patentlyo.com

    And please don’t miss my Thanksgiving comment on that thread:

    Dear Everyone,

    In keeping with this holiday’s spirit, bringing families together, bringing the north and south together, bringing patent attorneys and inventors together, and bringing our country together, Happy Thanksgiving. God bless us everyone.

  3. “Toss the jury verdict and construe the claims de novo, including the functional limitation, so that there is no longer any question about the claim scope with respect to that functional limitation”

    I think that’s called “Dicta”

  4. “When the CAFC got finished (and of course they didn’t even get started till after the trial) the fight was over. What else did you want them to do?”

    Toss the jury verdict and construe the claims de novo, including the functional limitation, so that there is no longer any question about the claim scope with respect to that functional limitation.

  5. “Both the CAFC and the district court judge here are simply passing the buck”

    I know it’s unpopular not to bash the FC, but I don’t see any buck passing on their part. The CAFC’s decision holds up regardless of whether the plaintiff was right about what testing to perform.

    When the CAFC got finished (and of course they didn’t even get started till after the trial) the fight was over. What else did you want them to do?

  6. “Actually, that raises an interesting question: can inventors of non-expired patents or pending applications be hired to work as Examiners or managers at the PTO? likewise, are Examiners allowed to file patent applications?”

    Yes, but they must disclose what all is pending so that they will not be working on it. No, we have to wait a year after leaving.

  7. “He, his roommate, and one of his professors were busy inventing everything that’s ever been invented.”

    Actually, that raises an interesting question: can inventors of non-expired patents or pending applications be hired to work as Examiners or managers at the PTO? likewise, are Examiners allowed to file patent applications?

  8. “Finally, are any of the questions above properly left to the jury?”

    No, because the invention is supposed to be described in a definite manner. If I have to have a jury trial to determine what the test is, then the claim construction was effed up.

    Both the CAFC and the district court judge here are simply passing the buck, letting the two parties fight it out until one of them goes broke or has a panic attack worrying about going broke. Who benefits from the failure of the USPTO, the district court judge, and the CAFC to do their respective jobs? The patentee, of course. So all the usual suspects around here who bemoan the decline of American power as a result of decreased patent value, this case should make your day. Enjoy.

  9. I think the issue here is the limitation “positioned to provide impedance matching” and not the failure to specify the test method to be employed in the claim. I don’t believe the test method belonged in this claim.

    But claims citing improved performance always beg the question of what base line device is being improved.

    Imagine a situation where a base device with no fins already exhibits perfect impedance matching. To this device, add several impedance affecting features including fins and some other feature (like slots) that have opposte affects on matching than do fins to produce a second device. Would the second device be infringing? Are the slots properly a part of the baseline for the comparison? Would it matter whether the slots or fins were added for some purpose other than impedance matching? What if the slots and fins have varying effects on impedance matching depending on whether they are used together or are used separtely? Finally, are any of the questions above properly left to the jury?

    I don’t see the answers to the above questions as being so clear cut as to point to a judicial error.

  10. “Was e6k around when most of the worst garbage was being issued (i.e., 1994-2004)?”

    No. He, his roommate, and one of his professors were busy inventing everything that’s ever been invented.

    Haven’t you been reading his posts?

  11. “Well, with super examiners like 6k on the job, what’s the worry?”

    Was e6k around when most of the worst garbage was being issued (i.e., 1994-2004)?

  12. “…that’s assuming the Examiner had the brain and spine to force one out of the applicant.”

    Well, with super examiners like 6k on the job, what’s the worry? Especially when you consider that 6k’s roommate junior year of undergrad already invented everything in his science fair project.

    The last patent’s been issued folks. 6k, turn off the lights on your way out tonight.

  13. “This decision suggests that it is ok to simply state the test in the spec and it is not needed in the claim.”

    I agree that in some circumstances it may not be strictly necessary to recite the test in the claim in the form of “as measured by X test”. But why not do it? Reciting a test will not narrow the scope of the claim because if the choice of test makes a difference and it’s not clear from the claim or the spec what test to use, the claim should be invalid as indefinite.

    This issue does crop up fairly routinely in chem/bio when a vague property of the claimed composition (e.g., “effective”, “stable”, “soluble”) is recited in the claim without an express definition of what the term means.

    Patentees love it, of course, because it means they can go around harassing “infringers” who are forced to waste hundreds of thousands of dollars reading through “prosecution histories” to find the definition or an equivalent admission, and that’s assuming the Examiner had the brain and spine to force one out of the applicant.

  14. “if you define a surface coating of an object as having, for example, a hardness of X units, there is absolutely no need to recite the testing method in the description, let alone the claim.”

    That is true only in the instance where there is universal agreement that all methods of measuring hardness in the specified units yield substantially identical results. I hope you would never advise your clients on this point without noting this important caveat, Lionel. That would open you up to a malpractice lawsuit which is the worst thing ever and is the only thing a great lawyer thinks about when advising a client.

  15. Interesting,

    Chemical and biotech examiners generally require more under 101 and 112 than mechanical/electrical/software examiners. So, I have no idea if this is out of line

    However, in the mechanical/electrical arts, if you define a surface coating of an object as having, for example, a hardness of X units, there is absolutely no need to recite the testing method in the description, let alone the claim.

  16. Recently I have been getting 112 indefiniteness rejections on my composition claims because they don’t say what test is used to measure the relevant property. The examiner always says that they will not read the specification into the claims. This decision suggests that it is ok to simply state the test in the spec and it is not needed in the claim. Thoughts?

  17. On page 5, the Federal Circuit asserts that “[t]he language of asserted
    claims 1 and 16 describes the claimed switching jacks only in structural terms…”

    However, claim 16 at least includes the limitation “plurality of projections . . . positioned ***to provide impedance matching***”. The highlighted language is functional, not structural.

    The district court judge blew it here (perhaps with the help of the attorneys) because he/she should have construed the claims to remove the ambiguity about their scope, i.e., exactly what it means for the “plurality of projections to be positioned to provide impedance matching.” The judge needn’t have removed ALL the ambiguity but for cripes sakes he/she needs to remove as much ambiguity as necessary to allow a jury to determine whether infringement occurred.

    Now the jury will be doing claim construction, which apparently nobody else wants to do.

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