Applying Festo to Claim Construction: Construing an Amended Claim

University of Texas v. BENQ, et al. (Fed. Cir. 2008)

In 2005, UT filed suit against a total of fifty-six defendants alleging infringement of claims 10 and 11 of its patent that converts text messages into binary syllabic elements before transmission.  After claim construction, the district court granted summary of non-infringement. 

Construction of Amended Claim: The appeal focuses on the term “syllabic element.” UT wanted the phrase to be broader than “a character set of one syllable.”  In its analysis of claim construction, the CAFC looked to the prosecution history.

After receiving a rejection during prosecution, UT added the “syllabic element” term to replace “an alphabetic character string” and cancelled a dependent claim directed toward matching whole words.  On appeal, the CAFC gave “substantial weight” to these amendments — presuming that the amended phrase could not be as broad as the original:

“[C]laim 10 originally recited matching with an alphabetic character string, while one of its dependent claims specified that this string comprised a word. After the examiner identified a reference that showed matching with a word, the Board of Regents limited claim 10 to require matching with syllabic element(s) and canceled the dependent claim that required matching with words. The cancellation of this dependent claim indicates that the set of “syllabic elements” does not include all words.”

In addition, because the amendment was made in order to overcome a prior art reference, the CAFC found it would be nonsensical to give the claim a definition as broad as the original:

“Moreover, if “syllabic elements” included words, then [the prior art] disclosure of matching with words would teach the portion of claim 10 that was amended to distinguish [the prior art]. We decline to adopt a construction that would effect this nonsensical result.”

Finally, the CAFC chose to hold the prosecution history against the patentee by ignoring potential arguments that lack explicit support in the intrinsic record.

“While the Board of Regents might have been able to distinguish [the prior art] on this ground, the intrinsic record fails to support the argument that it actually did so.”

Intermittent Infringement: The asserted method claim uses a comprising transition and requires that “each pre-programmed code being representative of a syllabic element.”  The accused products do use pre-programmed codes, but only some of them are representative of syllabic elements. Thus, the question on appeal was whether the claims require a vocabulary that includes only syllabic elements.  With some sophistry, the CAFC arrived at the result that an infringing vocabulary would only include syllabic elements. In particular, the claim reads as follows:

“…matching said binary code with one or more pre-programmed codes, each pre-programmed code being representative of a syllabic element; [and]

[f]orming a representation of the word from the one or more syllabic elements represented by the matched one or more pre-programmed codes…“

 Here, the CAFC used its grammatical analysis to find that the “matched” pre-programmed codes are a subset of the whole set of “each” pre-programmed code. The claim requires each pre-programmed code to be a syllabic element, ergo the entire set of pre-programmed codes must be in syllabic element form. q.e.d.

Claim construction and resulting summary judgment affirmed.

 

 

35 thoughts on “Applying Festo to Claim Construction: Construing an Amended Claim

  1. “A “nose of wax”, of all things. Whatever will those judges dream up next. Or maybe they were the height of fashion, in 1886.”

    Max,

    The expression may be dated, but the thought expressed is still true today (i.e., you can’t interprete the claim one way for validity during prosecution, and a different, inconsistent way when asserting that the same claim is infringed). The most absurd reference to the “nose of wax” expression I’ve seen occurred in footnote 39 of the Supreme Court’s dissenting opinion in Diamond v. Diehr regarding patentable subject matter under 35 USC 101:

    “The concept of patentable subject matter under 101 is not `like a nose of wax which may be turned and twisted in any direction . . . .’ White v. Dunbar, 119 U.S. 47, 51 .” 437 U.S., at 590 (footnote omitted)”

    The dissent must have been “waxing lyrical” (pun intended) because this expression was never before related to patentable subject matter under 35 USC 101.

  2. (1) “some of them are representative of syllabic elements”. (2) claims 10 and 11 recite syllabic elements
    (3) If the case hinged on “syllabic elements” in that all other steps were met, it seems to me that they infringed since the court found “some of them are representative of syllabic elements” and claims 10 and 11 recite syllabic element. If they do each step of the claim, even only some of the time, they still are doing each step of the claim.

  3. From the CAFC opinion, this appears to be about as clear a case of claims being clearly limited by prosecution history disclaimer to [allegedly] avoid prior art [or what used to be called "file wrapper estoppel"] (and also by specification definition) as one can possibly get?
    I continue to wonder why appeals that appear to be frivolous do not any longer get sanctioned by the CAFC, much less get paid for by clients?

  4. Thank you Roger Karp. A “nose of wax”, of all things. Whatever will those judges dream up next. Or maybe they were the height of fashion, in 1886.

  5. “A patent may not, like a “nose of wax” be twisted one way to avoid anticipation and another to find infringement.” Sterner Lighting, Inc. v. Allied Elec. Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970), citing White v. Dunbar 119 U.S. 47 (1886)

  6. Yes, and maybe we can get them to stop driving around Aspen in expensive cars and owning homes there.

  7. Yes, and they may even think we know what we are talking about, but little do they know we are propagandists carefully trying to influence and undermine day after day.

  8. Yes, I think we’re having a big influence, because others think we are just regular people expressing our honest opinions…

  9. Yes, if we can just change this whole presumption of validity thing and get people to stop beating eachother with clubs.

  10. Thank you cheerleader, aw shucks, its nothing. But I tell you, this whole “presumption of validity thing is such a joke”

  11. “But, a claimed “hammer” might be equivalent to the defendant’s “screwdriver,” so we have a material issue of fact, the cost to play rises to $0.5 million plus, and maybe it’s better to settle…”

    And don’t forget that even in that case there will always be someone freaking out about treble damages for willful infringement under the doctrine of equivalents. The mind reels.

  12. “Back in 2005 there were probably loads of attorneys who were still stuck on the ‘presumption of validity’ train and who figured oh better to settle, e.g., ‘it’s so hard to explain all this prosecution history business to a judge!’”

    Malcolm, there are plenty of attorneys, especially in-house attorneys, who are still “stuck on this train.” However, I think there’s some truth to this line of thinking. In the UT case, the defendants won the battle on claim construction, which was very fortunate, since otherwise there might have been sufficient issues of fact to survive summary judgment motion. If the plaintiff survives summary judgment, then the costs begin to rise, and the settlement value gets higher. This is how the game is played, as you seem to be aware. And, unfortunately, you don’t need a very good case to make it a quite profitable game.

    That said, this game is not played solely with “crappy” patents. I’ve seen just as many vexatious lawsuits where the patents themselves were just fine. In many of these cases the problem was that it was completely absurd to suggest that the claimed invention had anything to do with the accused products. But, a claimed “hammer” might be equivalent to the defendant’s “screwdriver,” so we have a material issue of fact, the cost to play rises to $0.5 million plus, and maybe it’s better to settle…

  13. “Also, I did not know that Phillips Electronics North America was a ‘small player.’”

    Unfortunately for Phillips, they were never more than a small player in the cellular phone market. I believe that they are now a non-existent player, at least with respect to full handsets. I meant no disrespect to the fine folks at Phillips.

  14. Some distance upthread, Eurodisnae categorized this case as the classic English patent litigation “squeeze” case (heads I win, tails you lose). The claim must mean X or Y. If it means X, it is wide enough to catch the accused embodiment, but is itself caught by the art. Or it means Y, which is not invalidated by the art, but doesn’t cover the accused embodiment either. Patent owner is unable to plead convincingly for any claim construction between these two constructions, X and Y. In England, such cases die long before trial. Much less work for patent litigation lawyers, in England. Can somebody tell me why this simple kill doesn’t also happen, in US patent litigation? Is it something to do with the assymmetry between “clear and convincing” on validity and “preponderance” for infringement? (It’s symmetrical, “both “preponderance”, in England.) Or is it to do with division of fact and law tasks, between the bench and the jury? (England doesn’t put patent cases at the disposal of a jury).

  15. “I’ll give ya’ a dime for every prefix or suffix you can list that is not a syllabic element.”

    well, there’s suffixes like “ity” and “ory” that are multi-syllabic. And prefixes like “inter” that are multi-syllabic. Is that you mean?

    I have to assume the claims here were allowed under the rubric of the classic “strict” TSM (or maybe in 1987 you made it up as you went along). How in the world would going from the two-syllable analysis in the prior art to the one-syllable analysis claimed here not be obvious?

  16. I’m sure most of you will agree that from a neurolinguist point of view this patent was a dud from the get-go. A syllable is a sound, and as such it is processed by the primary auditory cortex, mostly Brodman’s areas 41 and 42. Spoken words are just combinations of sounds, which, once processed by the auditory cortex, are given meaning by the verbal cortex, most likely Broca’s area and Wernicke’s area.

    Textual representations of syllables, which is what is at issue here, are, or course, processed first by the primary visual cortex, just like words. But textual syllables appear to then go to an auditory area for interpretation. Try to get you mind around “ation” without “hearing” it. Textual words are processed as a picture, without being broken down by the cortex into syllabic sounds. You can process “caption” without seeing one or hearing the syllables. The best example is when touch typing — you can be thinking about how to house break your cat while typing your CAFC brief.

    But that’s the brain. Needless to say, but I will anyway, computers don’t have a visual cortex or a Broca’s area. The computer is going to parse the input one character at a time whether it is a word or a syllable, so UT was trying to pitch a distinction without a difference. The claims were to comparing textual syllabic entities, not to a distinct manner of analyzing them as syllables. If UT had claimed analyzing the input as “syllables,” that might have been hot.

    The only reason I am offering this entirely anserine and irrelevant “analysis” is because I got to it before Mooney did. Which is pretty awesome, given how fast he jumped in on the tampon patent. We each have our own areas of expertise.

    BTW — the CAFC offered this non sequitor:

    “. . . because some well-known suffixes and prefixes include more than one syllable (e.g., hypo-, hyper-, -ation, -phyllic), [you put those into sounds, didn't you?] this passage compels a construction that allows syllabic elements to be more than one syllable.

    “Just because a ‘syllabic element’ may be a prefix or a suffix does not mean that all prefixes and suffixes are ‘syllabic elements.’”

    Huh?? I’ll give ya’ a dime for every prefix or suffix you can list that is not a syllabic element.

  17. “I’m not sure that UT spent much on this case – I suspect that the plaintiff’s attorney took a bath. I don’t believe that anyone settled in this case – it looked like a winner for the defense from the start.”

    “I take that back – some parties did settle early, most of them very small players.”

    Are any of the “small players” out there in commentland beginning to understand the problem with the issuance of crappy patents? Also, I did not know that Phillips Electronics North America was a “small player.”

    link to utsystem.edu

    Leopold writes “The examiner apparently said “OK – I’ll amend the claims to reflect that difference.” The result is the issued claim. However, it turns out many words (e.g., “I”, “A”, “the”) are also “syllabic elements”.”

    That’s right. Do you know how long it took me to figure that out basic fact? Five seconds. The Examiner blew it and (surprise!) the applicant **let him blow it** because it gave them claims that they could club people with. Back in 2005 there were probably loads of attorneys who were still stuck on the “presumption of validity” train and who figured oh better to settle, e.g., “it’s so hard to explain all this prosecution history business to a judge!”

    I figure people are less naive now. I hope they are anyway. If they are still that naive, then Dennis’ work here has been for naught.

  18. We’re on job creation, are we? Well, I’m thinking that, per head of population, the USA is streets ahead of every other country in the world, on the number of lawyers. In the USA, they’re regarded as a plague, aren’t they? Wonder why. And I’m thinking that, with the EUR so high and the USD so low, there are swarms of well-paid, gainfully employed, working class Europeans flying across to the USA to do their shopping. Mind you, the goods they buy, I don’t think many of them are made in the USA, are they?

  19. ‘cslip

    “uh-huh – and how many jobs has europe, inc. created the past decade?”

    That’s a serious question? Man. It’s worse than I thought.

  20. Right, because the number of jobs created by “Europe Inc.” is somehow related to cost burdens on American industry. Err, what?

  21. “the cost burdens on industry in the USA of vexatious patent litigation: they’re a “given”.”

    uh-huh – and how many jobs has europe, inc. created the past decade?

  22. “With some sophistry, the CAFC arrived at the result that an infringing vocabulary would only include syllabic elements. … Here, the CAFC used its grammatical analysis …”

    Dennis, I think “sophistry” is a bit harsh, especially since it implies deceitfulness. And I don’t think that this particular conclusion was based solely on the grammatical analysis. The CAFC was completely upfront about the fact that its particular interpretation of “each pre-programmed code” and “matched pre-programmed codes” ran afoul of the usual interpretation of “comprising.” But they explained why this was necessary, in view of the prosecution history.

    The patentee argued over a prior art reference that disclosed matching against words, by stating that the invention performed matching against “syllabic elements”. The examiner apparently said “OK – I’ll amend the claims to reflect that difference.” The result is the issued claim. However, it turns out many words (e.g., “I”, “A”, “the”) are also “syllabic elements”. That means that the prior art word-matching method obviously performed syllable-matching, at least on occasion. The court here is simply giving weight to the presumption that the amended claims actually distinguish over the prior art, since the patentee and the examiner agreed that it did. This makes it necessary to read “comprising” to mean “including only,” at least with respect to the matching feature.

    Holding otherwise would require either (a) finding the claim invalid in view of the reference that the examiner explicitly amended around or (b) ignoring the fact that the claim is anticipated by the very prior art that the examiner explicitly amended around. It seems quite reasonable to give the patentee a valid claim addressed to a word-entry technique that utilizes ONLY syllable matching as opposed to nothing, or worse, as opposed to a claim that reads on devices that ONLY perform word-matching (where some words happen to be syllables), just as the prior art disclosed.

  23. As I understand it, the USA is a jurisdiction where it is politically impossible to pass “Loser Pays” into law. So, Eurodisnae, you and I don’t need to trouble ourselves about the cost burdens on industry in the USA of vexatious patent litigation: they’re a “given”. But, incidentally, I agree with you.

  24. I also fail to see what Festo has to do with this case. It’s just about claim construction, albeit illuminated by the prosecution history.

    It actually seems to be a classic example of the “Gillette Defence”: if the claim is construed so broadly as to be infringed then it is also anticipated by the prior art, with the extra twist here that the relevant prior art is to be found in the prosecution history itself.

    You can see why the plaintiff wanted to have a go – fast-text certainly wasn’t on my radar in 1987 and the potential returns would be huge – but another argument for “loser pays”, given the resources that must have been consumed by the numerous defendants?

  25. I take that back – some parties did settle early, most of them very small players. RIM settled – perhaps a little squeamish about patent litigation at the time, having just been burned in the NTP case…

  26. “This must have been some very valuable technology for UT to waste all the money going after these people with that prosecution history hanging out there for all the world to see. Did any defendants settle with UT along the way, I wonder?”

    I’m not sure that UT spent much on this case – I suspect that the plaintiff’s attorney took a bath. I don’t believe that anyone settled in this case – it looked like a winner for the defense from the start. Given the prior art, the claims were either invalid or not infringed.

    I can’t say how valuable the technology itself is, but the accused software resides in just about every cellphone sold in the world. Even for just the U.S. sales, that’s a lot of annual revenue – $10B. Claim damages of $1/phone, and you’re talking about $100M PER YEAR in claimed royalties. Even $0.10/phone will make you wealthy. The phone manufacturers have big targets painted on their foreheads…

  27. so we little professionals have (i) a doctine of prosecution history, (ii) a doctine of prosecution disclaimer and (iii) a doctine of equivalents to worry for

  28. Thanks for the “insight” Mooney (zzzzzzz)

    Of course any first year associate could see through this pernicious attempt to harass the unsuspecting with, of all things, a patent! There must have been a clandestine Examiner interview too.

  29. ““[C]laim 10 originally recited matching with an alphabetic character string, while one of its dependent claims specified that this string comprised a word. After the examiner identified a reference that showed matching with a word, the Board of Regents limited claim 10 to require matching with syllabic element(s) and canceled the dependent claim that required matching with words. The cancellation of this dependent claim indicates that the set of “syllabic elements” does not include all words.”

    But of course many words are one syllable in length so I don’t see how the amendment avoids the prior art issue raised by the Examiner. Surely the difference between one syllable and two is an obvious difference. Seems to me the construction was irrelevant, in a sense, because the claim would have gone down the tubes regardless if validity had been addressed.

    This must have been some very valuable technology for UT to waste all the money going after these people with that prosecution history hanging out there for all the world to see. Did any defendants settle with UT along the way, I wonder?

    Once again we see the harassment value of an improvidently granted patent that a first year associate could see through.

  30. You’re right. The court doesn’t use either label to describe what it’s doing. Nevertheless, my point remains that since the relevant part of this case deals with claim construction, what the court is doing is applying the doctrine of prosecution disclaimer not Festo.

    Nevertheless, now that I understand your rationale for the headline, I don’t have a problem with it. As the Omega Engineering case shows, the standards for applying both doctrines are the same if not identical. I would also concede that my issue is a hyper technical one.

    Also, no offense was intended by calling your headline misleading. I have been a fan of your blog since the beginning, and I enjoy reading your posts very much.

  31. JMT – Thanks for the comment. I agree that the court did not explicitly cite Festo or invoke the words prosecution history estoppel. Likewise, however, the court did not invoke the doctrine of prosecution disclaimer or the Omega case.

    My headline of Festo is meant to draw an analogy in the mind of practitioners. The difference between being a question of fact and law is important, but does not eliminate the relevance of the analogy. Festo dealt with how claim amendments impact consideration of the doctrine of equivalents. This case discusses how claim amendments impact consideratoin of claim construction (and consequently literal infringement).

  32. Your caption for this post is misleading.

    The court did not apply Festo. Notably, Festo is not cited at all in the court’s opinion. The court instead applied the doctrine of prosecution disclaimer, which is a related, but distinct, concept. See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1326, n.1 (Fed. Cir. 2003).

    The distinction is an important one, in this case, where the appellant argued that the trial court failed to draw reasonable inferences in its favor as required by Fed. R. Civ. P. 56. Prosecution disclaimer is a purely legal issue of claim construction, and therefore, a trial court technically does not “draw inferences” or “weigh evidence” when it applies this doctrine.

    In contrast, application of prosecution history estoppel is a legal question with underlying factual inquiries, e.g. the foreseeability of the alleged equivalent at the time of filing. See Biagro Western Sales, Inc. v. Grow More, Inc., 423 F.3d 1296, 1305 (Fed. Cir. 2005) (citing Festo). Depending on the case, trial courts will need to weigh evidence and draw inferences along the way to determining whether or not the patentee has rebutted the Festo presumption. On summary judgment in such a case, a trial court could conceivably commit reversible error by failing to draw a reasonable inference in the non-movant’s favor where such failure was not harmless.

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