Federal Circuit: Claim Construction Should be Avoided Unless Associated with a Recognized Meaningful Case Outcome

by Dennis Crouch

Superior Industries v. Masaba (Fed. Cir. 2014)

Superior Indus. is an interesting short non-precedential opinion from the Federal Circuit. Judge Clevenger wrote the opinion whose holding is simply a remand for clarification. However, the case raises important constitutional questions of justiciability and advisory opinions.

At the lower court, the parties argued over construction of the terms "channel beam," "C-shaped channel beam," and "elongate opening." After district court Judge Donovan Frank construed those terms, the patentee (Superior) admitted that it could not prove infringement. Judge Frank then awarded summary judgment of non-infringement without substantive opinion other than noting Superior's admission of liability.

On appeal, Superior challenged the claim construction of those disputed terms, but the Federal Circuit has refused to hear the case because it the record was unclear as to whether a modified claim construction would change the outcome.

It is impossible for us to determine from this opinion which of the thirteen contested claim constructions would "actually affect" the infringement analysis. This poses a risk that our review of at least some of the constructions would amount to an advisory opinion.

The implicit logic here begins with the reality that the dispute is over infringement and validity and the only reason to construe claim terms is when the asked-for construction impacts those dispute end-points. Claim construction decisions that do not impact the final outcome are then advisory opinions barred by both judicial practice and the US Constitution. Often courts must be their own counsel on justiciability questions such as these because they are not waivable even when agreed-to by both parties.

Wither Early Claim Construction?: If we take this logic back to the district court level, the opinion offers important prerequisite to a district court's claim construction – namely that no claim terms should be construed unless & until the district court determines that the construction is meaningful to the outcome of the case at hand. This plays-out with the pending patent reform bills as well that call for early claim construction. To the extent that those bills would force courts to make advisory opinions, they are unconstitutional. See Hayburn's Case, 2 U.S. 408 (1792) "neither the legislative nor the executive branches can constitutionally assign to the judicial branch any duties but such as are properly judicial, to be performed in a judicial manner."

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Judge Rader wrote a short concurring opinion tied to Superior's claim in question. Here, Superior's patent claims a dump truck that has a support frame that is "configured to support an end of an earthen ramp." The term is relevant because at least some of Masaba's accused products are not really designed to work on earthen ramps.

Judge Rader writes:

I agree with, and join in, the majority opinion. However, in reviewing the claim constructions articulated by the district court, I observe that it read a great deal into the claims in the process of construing them. Thus, I write separately to articulate a couple claim construction principles that may assist the district court on remand when it revisits its constructions. First, in claim construction, one must not import limitations from the specification that are not part of the claim. Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed.Cir.2012). Indeed, claims generally are not limited to any particular embodiment disclosed in the specification, even where only a single embodiment is disclosed. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed.Cir.2004). Second, and relevant to this case, a system claim generally covers what the system is, not what the system does. Hewlett–Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.Cir.1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) ("The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not."). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed .Cir.2009).

This framework is an important addition to the ongoing debate over functional claim language.

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53 thoughts on “Federal Circuit: Claim Construction Should be Avoided Unless Associated with a Recognized Meaningful Case Outcome

  1. Is the following statement accurate? Any comments anyone?”Hardware and software are logically equivalent. Any operation performed by software can also be built directly into the hardware and any instruction executed by the hardware can also be simulated in software. The decision to put certain features in hardware and others in software is based on such factors as cost, speed, reliability and frequency of change. There are no hard and fast rules to the effect that X must go into the hardware and Y must be programmed explicitly. Designers with different goals may, and often do, make different decisions… the boundary between hardware and software is arbitrary and constantly changing. Today’s software is tomorrow’s hardware, and vice versa.”A.S. Tanenbaum, Structured Computer Organization (2nd Ed.), Prentice Hall, Englewood Cliffs, NJ, 1984

    1. The decision to put certain features in hardware and others in software is based on such factors as cost, speed, reliability and frequency of change. Reliability? Cost? Speed? Designers with different gaols make different decisions? These considerations are somehow relevant to computing technology? I thought all you had to do was dream up a new function and the inventing was finished. “Reliability?” Really??? It’s almost as if people might have performed test runs on their programs to see if they met some predetermined standard. But we know that can’t be true. At least, we know that it’s not true as far as the USPTO is concerned.It really is pretty funny that somebody wrote that way back in 1984 (and they were likely very common sensical observations long before then). And yet the USPTO and the courts (and the computer-implementers who take advantage of them) still like to pretend that computers were invented yesterday. Fascinating stuff.Thanks for the comment.

  2. The point about “advisory opinions” is an interesting one, and one that the Federal Circuit disregards at its whim. Judge Rader’s concurrence is a good example of such an opinion, as he reached out to comment on the merits notwithstanding that it was unnecessary to proper disposition of the appeal before the court.

  3. “This framework is an important addition to the ongoing debate over functional claim language.”He made an addition? I must have missed the addition. He just recited old truisms.

  4. “To the extent that those bills would force courts to make advisory opinions, they are unconstitutional. “Son of a gun! Too much win in those bills so they had to be unconstitutional!

    1. Too much win…?More of the 6-alternate-reality-law thing…You really do not get this entire ‘law’ thing at all, do you 6?

  5. My attention was taken by the concluding paragraphs of the Lemley Paper, musing on the knock-on effects of assigning validity to the Jury. Pretty far-reaching, I thought they were. Does he have a point here, or is he scare-mongering?Edit: Sorry, wrong thread. Tried to delete, in its entirety.. Failed.

  6. On collateral estoppel:Fed. Cir. decides a claim construction issue — in favor of the patentee. In a later case, the infringer proposes a different construction. Must the court follow the Fed. Cir. decision because it is a matter of law?

    1. I think the answer is no according to the federal circuit judge that came and presented to us the other day. She noted that all of the courts opinions on particular claim constructions are not precedential and have no precedential weight. At all. And for that reason she wondered why the court kept on plastering “precedential” on opinions that hinged on nothing but the claim construction.

        1. Yeah that’s what she was saying. And it makes sense. Though res judicita or whatevz else may apply I don’t know about all the rest of that. Though with a different party…

          1. One has the right to argue infringement, but the theory that there IS only ONE right construction underlies the rule that the construction of a patent is a matter of law. There cannot be two correct constructions.

            1. I respectfully disagree, Ned, with the idea that “there is only one right construction.” Since at least the O2 Micro case (2008), claim construction is not about placing a dictionary definition next to each disputed term, but resolving particular infringement or invalidity disputes before the court. A construction issued by one court may do squat to resolve disputed questions of claim scope in a subsequent suit. I have been involved in suits where there is a first suit with a construction that resolved issues in that first case, but those issues were simply not pertinent to the accused product in the second suit. For example, there may be a clear disclaimer or narrowing disavowal in the prosecution that was not even discussed in the first suit because it would not have helped the defendant in that case on infringement, and would have just narrowed the universe of prior art — but that disavowal may be critical to the defendant’s infringement in the second suit. This whole argument about “one right construction” also seems to neglect the fact that the claim construction is fundamentally a result of advocacy by two sides, each arguing for the particular points important to their clients. With different accused products, different prior art, etc., come a different set of claim scope issues because different issues become important.This is why I would agree with that federal judge that the claim construction issued by the Federal Circuit, even in a published decision, is not necessarily binding on another suit against a different party not in privity with the first. In fact, taking my example above, it would be unfair to the defendant in the second suit to find that it is bound to a first claim construction that ignored a clear disavowal simply because it wasn’t important to the defendant in the first suit.

          2. In that earlier SC case I referenced, the holding was the earlier decision was binding in the later because the same exact infringing goods were involved. They were sold from one defendant to another. Privity was found.

      1. The Supreme Court once took a patent case simply to resolve a conflict among the circuits regarding its construction, IIRC.

  7. I think defendants only propose constructions that avoid infringement or lead to invalidity. It is not always clear why patentees propose constructions. Could it be in the case at bar that the proposed construction was from the patentee?

  8. On system claims, consider two old apparatus that are configured to communicate in a new way. Is “configured to” functional?”

    1. Ned,Perhaps I am reading too much into Rader’s concurrence, but it seems to me that he is taking a shot at your “use” of a machine as opposed to a machine changed by configuring that machine first.

      1. How does one construe “configured to” perform some operation or function as structure? The system either performs the claimed function or it does not. What structure is involved.BTW, what claim term was Rader in fact talking about?

        1. “How does one…”Ned you have not yet answered my question as to the logic used by the judges in the Nazomi case.When you sit down and understand that case you will have the answer to your question here.(In other words, you will have to eventually take the Grand Hall experiment – just one of the facets of dialogue that seems to always make you disappear when such come up in conversations concerning the patent eligibility of software)The fact that this post – helpful concise and accurate receives a downvote is most interesting.

          1. The fact that this post – helpful concise and accurate receives a downvote is most interesting.Maybe there’s a conspiracy working to discredit you somehow. There’s a lot of jealous people out there.

            1. LOL – Thanks but no thanks Malcolm, no need for the conspiracy theory stuff. You can keep your shiny hat to yourself.(besides which, we both know that mere downvotes from cowards who are afraid to actually address facts and the law are meaningless, right? – it’s not like a series of (phantom) insults that hurt my fee-fees something terrible, now is it? Do you know where I can get a puppy?/eyeroll)

              1. we both know that mere downvotes from cowards who are afraid to actually address facts and the law are meaningless, rightYou would know better than anyone. I don’t use the voting functionality.it’s not like a series of (phantom) insults that hurt my fee-fees something terribleThen maybe consider shutting your piehole about it for a change.

              2. I don’t use the voting functionality.I do, mostly because it allows me to agree with someone else’s post without cluttering up the board.But I do find it amusing how often I get two downvotes no matter what I write, presumably from the same two people who are afraid to actually address facts and the law.

              3. I do find it amusing how often I get two downvotes no matter what I writeHow strange! I can’t possibly imagine who would be doing that.

          1. Lefty, if the accused system does not do what the “configured to” calls for, is there infringement? No.So “configured to” defines functions, not structure.

            1. if the accused system does not do what the “configured to” calls for, is there infringement? No. So “configured to” defines functions, not structure.Well said, Ned. Now you can look forward to someone spewing some nonsense in response about you needing to “visit the Grand Hall” (if you’re really unlucky, it will be typed in all caps or bold, for extra persuasiveness). That’s really all the computer-implementers and softie woftie types got these days. Oh yes, and “Church-Turing!” Really compelling stuff. I did hear that EG and Co. are busily working on some new talking points but I’ve not seen them yet. I can hardly wait.

  9. “To the extent that those bills would force courts to make advisory opinions, they are unconstitutional.” Interesting observation.

  10. What this *really* gets back to is the fact that the current Schrodingeresque regime of not really knowing whether you’ve been infringing someone’s patent until the court opens the box and looks at the claims is fundamentally flawed in terms of the purpose of patent claims being to notify the public as to the scope of the patentee’s protected invention. There should be only one proper construction of a claim, and it should be plain to the ordinary artisan exactly what that construction is. Rather than determining that construction after the fact, the proper construction should be determined at or before issuance as part of prosecution.

    1. the current Schrodingeresque regime of not really knowing whether you’ve been infringing someone’s patent until the court opens the box and looks at the claims is fundamentally flawedNo kidding. The discussion above about the “constitutionality” of construing claim terms “only when it matters” is a hoot. You can feel the concern! What about the constitutionality of unelected, private citizens writing their own laws which they are “entitled” to enforce against everyone in the country unless another unelected government employee can convince them that it’s “not worth it”? Apparently that’s just fine.As for Rader: a system claim generally covers what the system is, not what the system does. It’s cute to see him making these arguments. And hilarious that he goes out of his way to make them in the context of a dumptruck “system.” Next time, Randy, try thinking about these issues in the context of some computer-implemented junk.

    2. Rather than determining that construction after the fact, the proper construction should be determined at or before issuance as part of prosecution.That would make too much sense. Also, it would diminish the value of patents, which is the worse thing ever.

    3. in other words, in addition to getting claims allowed (with minimal prosecution history estoppel), applicants and examiners would fight over claim construction — as soon as PTO gets caught up on its backlog we can address this issue

      1. as soon as PTO gets caught up on its backlog we can address this issueGood point. Let’s focus on doing the job quickly. When we get the hang of that, then we’ll worry about doing it properly.

        1. nah, the pto and the applicant already fight about claim construction in probably 75%+ of the fights that occur, they just never realize that such is the actual cause of the fight. I’d say making them bring claim construction issues to the fore would save considerable time, trouble and examination.

          1. If I recall correctly, the argument against doing this was dependent on the fact that far less than 2% of all patents are ever actually litigated to the point of claim construction and that by forcing the Office to do this on every application would be a colossal waste of time, effort and money.Also as I recall, this was an offshoot of the Lemley view on examination and overall cost trade-offs.

            1. I see. Look at you holding a decent conversation. Now imagine how this conversation would be if I sat and demanded that you provide proof of this thing we’re discussing had occurred and that you look into this matter further for us to be able to even discuss it. Imagine further that I didn’t think such ever happened and then starting going on and on about “catching you lying” when you couldn’t, or didn’t feel like, providing such proof immediately. Then you’ll have a pretty good idea of what having you involved in a conversation usually entails. Then compare and contrast how many names you were called.

    4. There was a semi-recent case that propositioned exactly that: that the Office should be doing more in the examination phase by having the examiner construe the terms (ala Markman), but the Office came out and flatly rejected that type of examination.Anyone remember that case name?

      1. They propositioned it in the decision or in the oral args where the solicitor flatly rejected it? When did the office “flatly reject” doing more claim construction in relation to the opinion? In a memo issued afterwards?

          1. I was going to suggest maybe you were referring to the recent case where they’re sending Miyazaki up and you were only referring to the oral args, not the decision. But I seem to vaguely recall another case you might be referring to, but it’s too vague for me to recall details on that one. Have to check the archives.

    5. You write that “there should be only one proper construction of a claim,” and that claim construction should be part of the prosecution. This is a nice goal, but unworkable. The problem with this approach is that ignores the purpose in claim construction — to resolve infringement and/or invalidity disputes. While it is nice to think that a claim term should always have a consistent construction, no matter what, in practice this would not work. A construction issued by one court, one examiner, etc., may not do anything to resolve the disputed questions in a subsequent infringement dispute where claim scope is critical.For example, it is often a defendant’s contention that a particular claim term, properly construed, should be construed to exclude a particular feature that the defendant’s product has, based on statements in the specification, prosecution history, plain meaning, etc. The defendant may be right or wrong, but an earlier construction may have been issued without any knowledge of that issue whatsoever. This would certainly be the case if you moved claim construction to prosecution.This is why parties and even patentees often propose different constructions in successive cases on the same patent — with different accused products, different prior art, etc., come a different set of claim scope issues.

  11. “Claim construction decisions that do not impact the final outcome are then advisory opinions barred by both judicial practice and the US Constitution. Often courts must be their own counsel on justiciability questions such as these because they are not waivable even when agreed-to by both parties.”Question: Let’s imagine that the Federal Circuit neglected this issue and issued a claim construction ruling as requested by the patentee. Would the patentee later (in another case, for example) then have a basis for arguing that the claim construction is not binding, since the Federal Circuit shouldn’t have done it?

      1. (sigh), it looks like IANAE is out looking for his Calvinball face spike fix…Better tr011ing please.Two downvotes…? LOL – and people tell me that I have to lighten up…

    1. Good question.Consider an alternative. If a prior claim construction were asserted as collateral estoppel, could the patent owner or infringer assert that the claim construction is not dispositive in the present case to avoid it?

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