The Role of Claim Construction in the Obviousness Determination

Alloc, Inc. v. Pergo, Inc. (Fed. Cir. 2010)(nonprecedential)

Alloc and Pergo both manufacture and sell laminate flooring. Pergo’s patents cover a mechanical joint that allows the “boards” to be joined together without the usual glue or nails. After being threatened, Alloc filed a declaratory judgment action – asking the Wisconsin-based district court to render the patents invalid, unenforceable, and not-infringed. The jury complied and held the patents invalid and not infringed. In a subsequent bench trial, the district court did not find inequitable conduct in the prosecution.

In error, the district court had submitted questions of claim construction to the jury. Claim construction has long been considered a matter of law to be decided only by a judge. On appeal, the Federal Circuit ruled that the jury-submission mistake to be a harmless error. However, the court’s six-page non-precedential opinion creates confusion in my mind. I would have preferred this decision to have been issued as an affirmance without opinion.

On appeal, the appellate court first affirmed — finding the prior art “more than sufficient to support the jury’s finding of obviousness.” Then, when addressing infringement, the appellate court recognized the claim construction error but identified that error as harmless because the claims were also obvious. My outstanding concern is the appellate court’s implicit holding that errors in claim construction do not affect the obviousness determination. That holding is not correct or consistent with the current notion that the obviousness question should focus on the invention as claimed.

It may be relevant to note that the appellate opinion was written by Judge Virginia Kendall sitting by designation from the Northern District of Illinois. Judges Lourie and Dyk joined the opinion. It is probably best to identify this decision as non-precedential and then walk away.

15 thoughts on “The Role of Claim Construction in the Obviousness Determination

  1. Dennis, not to poke a cobra, but what have I been arguing for a year now? The vice in reexaminations is that the claim being examined is not the patented claim due to the use of BRI. This leads to rejections over prior art on anticipation grounds that, using a proper construction, would not even be relevant for obviousness purposes.

    But certainly here, the jury verdict should have been reversed entirely if the claim construction was wrong. Assuredly, the decision here will be reversed on rehearing.

  2. “You have too much free time.”

    Spoken by someone who positively monopolizes the posts around here…

    Your psychological projection is no big surprise Mooney, we’ve all seen it before

  3. “One of them is. Not the one who wrote the opinion, but still.”

    Yeah, Judge Lourie.

    But I probably wasn’t being fair anyway. It’s up to the lawyers at both levels (and I’d guess the clerks) to make sure she and the DC judge understood the issues…

  4. DC, “My outstanding concern is the appellate court’s implicit holding…”

    What a fantastically outstanding excellent concern it is, Sir! (j/k).

    Seriously, what a very bad piece of reasoning we get from judges who are not patent attorneys and who do not know patent law when the go to a-judgin’ patent law.

  5. …there is certainly a more legally satisfying way to say this without sounding like Mooney

    You have too much free time.

  6. Let me improve this a little…

    E.G. – The issued claims were so broadly written that no reasonable interpretation of any one or a combination of the terms could result in a construction sufficiently narrow to read on the accused device or to–while– overcom[[e]]–ing– the prior art applied during litigation.

  7. The issued claims were so broadly written that no reasonable interpretation of any one or a combination of the terms could result in a construction sufficiently narrow to read on the accused device or to overcome the prior art applied during litigation.

    Thank you for rephrasing my casual blog post about what the judges were probably thinking into the language they probably would have written if they thought this decision counted for anything.

    I don’t know how I would manage without you.

    (I’m sure there is a reason that you can’t help but sound like Mooney)

    If there’s one thing I’ve learned here, it’s that baboonery is in the eye of the beholder.

    Oook.

  8. “the claims were so obvious that no claim construction would have saved them”

    …there is certainly a more legally satisfying way to say this without sounding like Mooney (I’m sure there is a reason that you can’t help but sound like Mooney).

    E.G. – The issued claims were so broadly written that no reasonable interpretation of any one or a combination of the terms could result in a construction sufficiently narrow to read on the accused device or to overcome the prior art applied during litigation.

    Let’s not let patent law devolve into baboonery.

  9. Junk!

    Unfortunately there’s FRAP 32.1, which means that today’s plain junk may become tomorrow’s confusing junk.

    Another step backward for patent jurisprudence.

  10. I’m with Dennis and Max here. This decision is completely backward. It starts with “these claims were SO obvious, after all there were nine references!” Only after that do they consider whether the claim construction was in error, presumably with the overwhelming obviousness still in mind.

    The only logical explanation I can see is that the claims were so obvious that no claim construction would have saved them. Still, they might have said a little something about the affected section of fence.

    Lucky it’s not precedential, I guess.

    Let’s go with your metaphor – if the penetration is from the side of the fenced lot opposite the adjusted boundary, then the boundary change is irrelevant, isn’t it?

    What if we think of the claim more like a balloon? If the prior art penetrates it anywhere the whole thing falls apart, and if the defendant penetrates it anywhere he has to pay to fix it.

  11. Yes Hobbes. I suppose this is what I will find when I read the Decision. Trouble with metaphors is that they have their limits. Like here. Who’s to say what “side” of the fenced off area we are looking at, and whether or not pulling one part of the fence into a different location has knock on effects at the other side of the protected area. And couldn’t the CAFC have included in its opinion what you just wrote. Or was it so obvious that it didn’t need to tell reader Dennis?

  12. In that case, if the CAFC shifts the location of the boundary fence, it surely has to “do” obviousness again, no?

    Let’s go with your metaphor – if the penetration is from the side of the fenced lot opposite the adjusted boundary, then the boundary change is irrelevant, isn’t it?

  13. Oh boy, I’m looking forward to this thread.

    Is it not the case in the USA that a claim defines the boundary fence of the area of the exclusive rights and that any prior art penetration of that fence, however small, and wherever it occurs along that long boundary, is enough to puncture the validity of the claim, as a whole?

    In that case, if the CAFC shifts the location of the boundary fence, it surely has to “do” obviousness again, no?

Comments are closed.