Pods v. Porta Stor (Fed. Cir. 2007)
Pods and Porta Star are competing storage and moving companies. Pods sued Porta Stor for patent infringement based on its patent directed to a method and apparatus for moving a storage container in and out of a truck. A jury found infringement and the judge held the patent not invalid.
On appeal, Porta Star focused-in on the claim term “carrier frame.” That term was used in both claim 1 and claim 29. The lower court applied diverging meanings to the two instances, but no-one could explain why the claim construction should vary from the traditional “presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.”
The parties agree that the structure described as a “carrier frame” in claim 1 is “a four-sided or rectangular-shaped carrier frame” that surrounds the container on all sides. . . . PODS has pointed to no evidence in the specification or the prosecution history that the term “carrier frame” in claim 29 has any meaning other than the uncontested meaning in claim 1.
The agreed definition of claim 1 construed “carrier frame” as four-sided frame, and because “the only embodiments disclosed in the specification are four-sided,” the CAFC held that the claim 1 definition should prevail throughout the claimset. Based on this claim construction, the court found non-infringement.
Notes: The problem with this decision is that claim 1 explicitly limits a carrier frame with four sides while claim 29 only includes the limitation “carrier frame:”
Claim 1: . . . carrier frame including right and left longitudinal elements [and] having front and rear transverse elements . . .
Claim 29: . . . a carrier frame . . .
Despite this clear textual difference, the CAFC determined that the carrier frame of claim 29 must be defined as having four sides because (a) the parties agreed that claim 1 requires a four-sided carrier frame and (b) the only embodiments included four-sided carrier frame.
The court also denied coverage under the doctrine of equivalents because of prosecution estoppel — in particular, the patentee had argued against a rejection of claim 1 by stating that claim 1 required a rectangular frame.
Why the patentee lost: It used the word “invention” when arguing against the rejection of claim 1: “the present invention which allows the carrier frame to be elevated and positioned as a rectangular-shaped frame with respect to the container, the vehicle and the ground.”
IPXL holds that a claim that first recites an apparatus (ie structure) and then non-novel steps of using the structure is indefinite. The MPEP suggests also that it is a 101 problem in that classes of claims are mixed (method and apparatus).
The rigidity of classifications was discussed relatively often in the CCPA days. Perhaps this is overly doctrinaire. But seriously, if you have a method that is novel only because of the structure that performs it (or with which the method is peformed) and that does not involve new and unobvious steps, then I think you should give serious consideration to omitting the claim or seeing if the structural limitations on which you rely can be expressed as a method step without resort to apparatus or structural limitations.
Regarding method claims that recite structure limitations.
Often one has a “list of components” claim (device/composition of matter) and a “list of steps” claim (use/method) for the use of the described in the components claim.
The components claim is generally superior because it is de facto broader and easier to enforce.
The steps claim is a fall-back position in case of accidental anticipation of the components claim, especially in chemical structure patents.
One has to remember that claims are drafted years before you are aware of the relevant prior art.
As a result, after prosecution you usually have a broad use of a family of chemical compounds, and relatively narrow composition claim covering the family less members of the family previously known for different uses.
“Long ago, statutory classification of claims tended to matter. Now it seems not to, although IPXL shows that maybe it will start to again.”
How so? I’m not familiar enough with IPXL to read between the lines of your comment, but maybe I should be.
Thanks for the explanation, however, I believe if the structure creates a new method, whereas the structure does not depend upon, but in fact the method, which is novel(until proven otherwise)is substantiated by the structure and that structure alone- then both are patentable subject matter. Structure evolves the method and vice-versa- one is not possible without the other-perfect storm for patentability. But what do I know- I’m probably asking for too much.
See MPEP 2114 for functional language in apparatus claims. Also, 112 paragraph 6 provides a basis for distinguishing the art based solely on functional language in an apparatus claim, but the office used to take the view that if it didn’t have “means” in it, you couldn’t rely on functional recitations alone for patentability.
See 2173.05 for IPXL.
As to your question about method vs. apparatus: It is my opinion that in most cases, if a method is truly patentable, that which any structure accomplishes can and should be expressed in the gerundic form, rather than simply reciting “providing [the apparatus of claim 1]; rotating [the apparatus of claim 1]; reciprocating [the apparatus of claim 1} etc.”
The recitation of structure in method claims is unavoidable. But when one relies on the structure to lend patentability to the claim, then either a) the method isn’t really patentable or b) the drafter hasn’t thought it out well (see preceding paragraph).
As to your question about chemical structures. I’m talking here about apparatus or article of manufacture claims versus method or process claims. Chemical structures are a different animal. I don’t practice in that area, so I can’t comment. But I think it is a mistake to equate composition of matter claims with apparatus claims, despite their similarities. Long ago, statutory classification of claims tended to matter. Now it seems not to, although IPXL shows that maybe it will start to again.
To Mark P.
You made a statement stating in your opinion that a method claim utilizing a structure is not a well-thought out claim. If that method is novel and unobvious, how could that not be the best thought out claim one could write in their patent app- the method and structure are both patentable subject matter? Would you elaborate, please?
“Method claims that rely on structure for patentability are poorly thought out claims, in my opinion.”
That’s an interesting point of view. I must admit I am not terribly familiar with the case law you are referring to, having never seen it cited against me.
I assume you are not including method of treatment claims which rely on the chemical structure of the drug being administered for their patentability …
That claim 1 is an apparatus claim (not a composition claim, Mooney) and claim 29 is a method claim should have a great deal to do with it.
Traditionally, pre-Federal Circuit, apparatus limitations in method claims were given no patentable weight (and vice-versa). You still get that objection/rejection in the PTO from time-to-time, and should just about every time it occurs.
Method claims that rely on structure for patentability are poorly thought out claims, in my opinion.
I had thought, in view of IPXL v. Amazon, that the CAFC would breathe some life back into this good doctrine.
Nevertheless, the argument estoppel arising from the broad, non-claim-specific distinction I suppose supports the CAFC’s decision here. Invention is death. Claimed invention is little better. Invention of claim X seems to be magical. Good thing, it’s what I typically use.
“The agreed definition of claim 1 construed “carrier frame” as four-sided frame, and because “the only embodiments disclosed in the specification are four-sided,” the CAFC held that the claim 1 definition should prevail throughout the claimset. Based on this claim construction, the court found non-infringement.
If the only possibilty for the carrier frame was a four-sided frame, then the Court got it right. I don’t see what the problem is here. This is not “bleedthrough construction.” The Court is consulting the specification for the construction of the claim terms (as it should) and making a logical conclusion.
“The distinction between “method” and “composition” is irrelevant in the reasoning applied by the court.”
That’s right, Points to Ponder.
It’s just a fact that likely led to the case being tried and appealed in the first place, rather than resolved by two people sitting across a table from each other.
But let’s not “confuse” anybody! God forbid.
Junior:
Boilerplate caveats (such as the one you mentioned) are almost always ignored by the Federal Circuit. Don’t expect the caveat to make a bit of difference in claim construction.
By the way, if you’re in a position to add such a caveat, you’re also in a position to remove the reference to “the invention” — so do the latter and avoid the risk altogether.
“The word ‘invention’ is poison. Ditch it.”
Well said.
I note that it is not entirely clear that the applicant stated that “the invention” included a rectangular shape because we don’t have a block quote from the prosecution history. But, even if the applicant didn’t make such a statement, it *is* clear that the applicant at least invoked “the invention” before listing various claimed features that were not found in the prior art. And, as everyone should know by now, the Federal Circuit will use *any* “invention” reference (e.g., “the invention,” “the invention as claimed,” “an aspect of the invention,” “the claimed invention”) to narrowly construe claims.
Thanks for the many insightful comments. A quick follow-up:
Can an applicant limit the damage that could arise through careless word usage (“invention”, etc.) by prospectively including some sort of disclaimer in the spec, to the effect of “the only limitations are those in the claims themselves, and all words in the spec are words of illustration, not limitation”?
Responding to Jong Park | May 08, 2007 at 09:49 AM
If there is no alternative characterization of “the invention” in the prosecution history, then the dependent claim and doctrine of claim differentiation have the effect you describe.
But once you characterize “the invention” in the prosecution history, any breadth of the claims is out the window, at least for infringement purposes. (I haven’t seen a case on validity, where the patentee was arguing for narrow claim construction based on prosecution arguments – the law could well be that once you argue “the invention,” the claim is narrow for infringement purposes, and broad for validity purposes! Don’t do it!)
What if the patentee has a dependent claim depending from claim 29? For example, the dependent claim may be as follows:
(Dependent claim) The apparatus of claim 29, wherein the carrier frame includes right and left longitudinal elements [and] having front and rear transverse elements . . .
Under the claim differentiation doctrine, the term “carrier frame” in claim 29 should be differently interpreted because of the dependent claim.
Even in this example, should the presumption that the same terms appearing in different portions of the claims should be given the same meaning be applied?
The distinction between “method” and “composition” is irrelevant in the reasoning applied by the court. The facts that matter to the court are the prosecution history characterizations of “the invention.”
The practice of law is the ability to accurately predict the outcome of future cases, based on the reasoning of past cases. If you substitute new alternative reasoning for reasoning applied over and over again by the court, you might have an interesting topic for an academic law journal or a blog.
But let’s not mislead the junior lawyers that visit this blog by suggesting that this alternativization has any value in the real world. And for God’s sake, don’t you dare suggest to examiners that they have any authority to create new tests for patentability.
Gerry – ‘ve never been happy with the distinction – whether you make a tablet containing aspirin or a carrier frame, you are still making a composition. There shouldn’t be different rules or categories for these things. It gets silly when one gets to the level of nano-machines.
Rather than “composition” aren’t we really addressing an “article of manufacture” claim in this case?
“It’s totally irrelevant that one claim is a method, and the other is a composition.”
Well, yes and no. If claim 29 was a composition claim which differed from claim 1 only in the absence of the phrase “a four-sided or rectangular-shaped carrier frame,” I suspect the case would have turned out differently.
Because claim 29 is a method, the issue boils down to: would one skilled in the art understand the “carrier frame” referred to in claim 29 to be the same kind of carrier frame as that described in the composition of claim 1 (and in every embodiment in the specification) *or* can it be some other kind of carrier frame?
The prosecution history allows a fairly clean resolution of the question in this instance. It would be much messier to achieve the same result (non-infringement) if the two claims were composition claims differing only in the “a four-sided or rectangular-shaped carrier frame” term. And I believe that is because slight differences between composition claims are scrutinized more closely by Examiners than slight differences between composition claims and closely related method claims. That is not to knock on Examiners — I think it’s just substantially more difficult to spot the issues when making the latter type of comparison.
Holy cow, Malcolm Mooney | May 07, 2007 at 02:56 PM said something that I almost agree with!
It’s totally irrelevant that one claim is a method, and the other is a composition.
What IS relevant is the language from the opinion that Malcolm quoted, the prosecution history statement characterizing “the invention” The two relevant excerpts follow:
During prosecution the Dousset prior art patent was distinguished on the ground that the ’062 patent claimed a rectangular-shaped frame, thus suggesting that all claims were limited to a four-sided device. …
In response, PODS argued that “Applicants’ invention is decidedly different from the teachings of the Dousset patent” for three reasons. … Second, “[a]s the Examiner acknowledges, the Dousset reference clearly lacks the teachings of the singular rectangular-shaped frame.” … Third, PODS [argued] “… the present invention which allows the carrier frame to be elevated and positioned as a rectangular-shaped frame with respect to the container, the vehicle and the ground.” … The second basis PODS offered for distinguishing Dousset, along with the reference to a rectangular shape in the third basis, clearly and unmistakably shows that PODS limited its claims to a rectangular-based frame and surrendered any claim to a frame that was not rectangular or four-sided.
This is merely one more in a long string of cases holding that when an applicant argues “the invention is or does such-and-so,” that “such and so” characterization “bleeds through” to ALL independent claims. I pound the daylights out of my junior associates on this – they all live in fear of ever using the word “invention.” Except in the Summary: there, they state “In one aspect, the invention features…” and then they state the independent claim EXACTLY. I want a court to have no recourse to anything except the claims to define the invention.
Counterexamples are also easy to find. For example, in Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1147-48, 76 USPQ2d 1481, 1489-90 (Fed. Cir. 2005), the court refused to import limitations from independent claim 16 into independent claim 1, because the file history kept them segregated. Similarly, in Johnson Worldwide Assoc. v. Zebco Corp., 175 F.3d 985, 992, 50 USPQ2d 1607, 1612 (Fed. Cir. 1999), the court writes “By stating clearly and particularly that the context of his remarks was in regards to [specific] claims … the applicant ensured that those or ordinary skill in the art – as well as courts, if need be – could evaluate the import and scope of his statements.”
The word “invention” is poison. Ditch it.
The court stated:
a “carrier frame” in claim 1 is “a four-sided or rectangular-shaped carrier frame”
Anybody else see the irony of this statement?
Superficially, this statement appears to be a circular definition. However, this is not a circular definition because the first use of “carrier frame” in the statement is clearly not intended to have the same meaning as the second use of “carrier frame” in the statement.
The second use of “carrier frame” reflects what the court thinks the ordinary meaning of “carrier frame” would be. Thus, the court is implicitly acknowledging that the ordinary meaning of “carrier frame” does not include “four-sided” or “rectangular-shaped”.
Therefore, the court is not giving “carrier frame” its ordinary meaning in Claim 29. The reason that the court is not giving the Claim 29 “carrier frame” its ordinary meaning is because the patentee did not provide evidence that the term should be given its ordinary meaning in Claim 29.
Isn’t the burden supposed to be on the defendant to provide evidence that the term should NOT be given its ordinary meaning?
MM wrote, “I haven’t reviewed the complete prosecution history but if such an argument is made for claim 1 — the broadest composition claim — and if applicants do not go out of their way to make it clear that claim 1 and only claim 1 is being addressed and the arguments do not apply to the other claims which are not so limited, then applicants are setting themselves for this result.”
I agree. But I would note that the Feds used the prosecution history to confirm the parties “apparent” agreement and that, if plaintiff had ensured this flawed agreement was not in the record, the Feds might not have been so eager to narrow “carrier frame” by relying upon such prosecution history ambiguities.
This case isn’t about importing limitations from the specification. It’s about failing to provide a clear record for appellate review.
The plaintiff should have clearly argued for a separate interpretation for “carrier frame” (Claims 1 and 29) and the “longitudinal” and “traverse” elements (only in Claim 1). In particular, it should have argued a broad interpretation of “carrier frame” and then seperately argued that the “longitudinal” and “traverse” elements recited in Claim 1 were arranged in a rectangle.
I can’t tell what plaintiff did from this opinion. Without any detailed quote, the Feds said “The parties apparently agreed that the terms ‘carrier frame’ and ‘around’ in claims 1 and 32 required ‘an apparatus that uses a four-sided or rectangular-shaped carrier frame.'” When the Federal Circuit does not quote the admissions/agreements in full context from the prosecution history or the trial record below, it’s a huge red flag. The use of the word “apparently” is also a red flag.
It’s hard to believe that this was their agreement. After all, the Federal Circuit said that PODS argued the term “carrier frame” (at least in Claim 29) was not limited to rectangular shape. More likely, the parties agreed that the recited longitudinal and traverse elements recited in Claim 1 formed a rectangular carrier frame — not that the “carrier frame” term itself required a rectangular shape.
Nevertheless, plaintiff had the responsibility to ensure that any claim construction agreement was clear from the record. And, if plaintiff really argued that a term should be given different meanings in different claims (or if the trial court gave the term different meanings without plaintiff correcting it), plaintiff got what it deserved.
Mooney — Good comment. I agree that according to the court’s characterization that the patentee was sloppy — in particular refering to the “invention” rather than specifically to the rejected claim 1 when responding to a rejection. From the case:
“In response [to the rejection of claim 1], PODS argued that “Applicants’ invention is decidedly different from the teachings of the Dousset patent . . . [a]s the Examiner acknowledges, the Dousset reference clearly lacks the teachings of the singular rectangular-shaped frame.””
Blair: “The court should not be confining the claims to the preferred embodiment.”
Correction: the ONLY embodiment, and the embodiment that was relied on to distinguish the most fundamental descripton of the invention from the prior art.
One factoid missing from Dennis’ description seems important: claim 1 is a composition claim.
Claim 29 is a method claim.
Claim 1 was rejected in view of prior art and distinguished by applicants: “during prosecution the Dousset prior art patent was distinguished on the ground that the ’062 patent claimed a rectangular-shaped frame, thus suggesting that all claims were limited to a four-sided device.”
I haven’t reviewed the complete prosecution history but if such an argument is made for claim 1 — the broadest composition claim — and if applicants do not go out of their way to make it clear that claim 1 and only claim 1 is being addressed and the arguments do not apply to the other claims which are not so limited, then applicants are setting themselves for this result.
The reason is that the Examiner — and anyone else reading the prosecution history — will understand that the four sided nature of the frame is the point of novelty or the “patentable feature” of the invention. The other claims (e.g., method claim 29)were deemed patentable by the Examiner, most likely, because they incorporated this feature.
The claims are worth a chuckle, in any event. Are all of those limitations really necessary? Why not throw in a clause “wherein a controller of the apparatus breathes oxygen”? LOL!
The Federal Circuit has always seemed to want to reach the “right” result rather than establish a consistent doctrine. Hence the “totality of the circumstances” gobbledygook that prevailed for nearly a decade. Also reflected in their seeming desire to be the supra-reviewing court by failing to give deference to trial court rulings consistent with typical appellate standards.
Kind of hard to rationalize this, but what else is new?
Didn’t the patent owner also try to argue that claim 1 was infringed via the doctrine of equivalents? ( I read the case last week) That seemed odd to me since it would require the elimination of one of the explicit claim elements (namely, one of the four side structures). I wonder if their attempt to stretch claim 1 in this manner somehow played a role in the decision. Of course I agree that the CAFC is all over the place when it comes to this sort of thing (whether or not to read missing limitations into claims).
The fact that a limitation needed to appear in Claim 1 to limit “carrier frame” to four sides suggests that term “carrier frame” by itself would encompass a larger definition. Therefore, Claim 29’s “carrier frame” without an accompanying limitation would, by implication, be broader than the “carrier frame” with limitation from Claim 1.
This interpretation seems consistent with the “presumption that the same terms appearing in different portions of the claims should be given the same meaning” because in both claims “carrier frame” means the same thing; only the limitation changes.
I agree with anon coward that the court’s reasoning does seem inconsistent with the reasoning in Acumed. The court should not be confining the claims to the preferred embodiment. That said, the parties stipulation is probably the most damaging reason the court came out this way.
The Fed. Cir. flip-flops so much in this area. In Accumed, the court cites Phillips, 415 F.3d at 1323, stating “[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.” And then barely a month later, they come out with this? What’s the distinction?
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