By Jason Rantanen
Mettler-Toledo, Inc. v. B-Tek Scales, LLC (Fed. Cir. 2012) Download 11-1173-1200
Panel: Bryson, Moore (author), Reyna
In my Introduction to Intellectual Property class this week we discussed the classic tension between (1) reading the claims in light of the specification and (2) not importing limitations from the specification into the claims. In most instances the court attempts to strike a balance between these two canons (exemplified by Phillips). When means-plus-function claims are involved, however, different rules apply – as this case illustrates.
At issue in Mettler-Toledo was technology for weighing objects, such as large commercial trucks. The first of Mettler's asserted patents, No. 4,815,547, describes an individual load cell; the second, No. 4,804,052, describes a system and method for correcting weight measurements based on the location of objects on a scale. Following jury findings that the patents were not infringed and that the '052 patent would have been obvious, the district court denied Mettler's JMOL. Mettler appealed.
On appeal, Mettler challenged a key construction of the '547 patent claims: that several of the means-plus-function terms require a multiple slope integrating A/D converter, and equivalents thereof, rather than any generic A/D converter. Mettler contended that by limiting the claims in this way the district court erred by importing the structure of only the preferred embodiment into the claims.
The CAFC rejected this argument. "Our case law is clear that a means-plus-function claim limitation is limited to the structures disclosed in the specification and equivalents." Slip Op. at 7. Here, the patentee chose to disclose only a single embodiment; thus, the means-plus-function claim was necessarily limited to that embodiment. "If a patentee chooses to disclose a single embodiment, then any means-plus-function claim limitation will be limited to the single disclosed structure and equivalents thereof." Id. Nor was a single reference to an "A/D converter" in the Abstract sufficient to compel a broader structural disclosure because it was not linked to any claimed function.
Obviousness: The CAFC also affirmed the district court's denial of JMOL of nonobviousness of the '052 patent. Mettler's challenge was based on the argument that a prior art reference did not teach correcting for load position, an element of each claim of the '052. The CAFC rejected this argument, first noting that the issue of what is disclosed by a prior art reference is a question of fact, then concluding that substantial evidence supported the jury's finding as to the teaching of the 'prior art reference.
B-Tek's Cross Appeal for Sanctions: During the litigation B-Tek requested documents relating to Mettler's manufacturing capacity in order to rebut Mettler's lost profits damages claim. Although Mettler stated that it had no such documents, during trial a Mettler employee admitted that certain documents existed (a production schedule and plant diagram). Mettler further admitted that it provided some of these documents to its damages expert. The district court denied B-Tek's motion for sanctions on the grounds that the possible existence of these documents had been disclosed during a deposition, these documents were of marginal relevance, and that B-Tek could not show any harm or prejudice given that it prevailed on the issue of infringement.
On appeal, the CAFC concluded that the district court did not abuse its discretion in declining to sanction Mettler, correctly considering the relevance of the documents and the any harm to B-Tek.
Edited to clarify the first sentence.
So what do we conclude from all of this? Perhaps that:
1. In patent litigation, as with most things, there is “more than one way to skin the cat”
2. Judges in the USA and at the EPO will always try to do justice, rising always to the challenge presented to them by the quality of the material they are given to work with, sometimes skinning the cat one way, sometimes another. They do it whichever way works best for each particular case.
This blog is so technical. But very interesting.
Max, your post seems to suggest that the real novelty, if anything, lay in the type of A/D converter employed in this application. Assuming for the sake of argument that that is the case, then, I would agree that claim was fairly limited to the A/D converter of the type disclosed and equivalents should have been narrowly construed.
We need the courts to help identify clearly when MPF equivalents are being employed (which should be broadly construed because the details of the corresponding structure presumably have nothing to do with the invention) and when the DOE is being employed with respect to a novel claim element.
If one studies the facts of Halliburton, they appear to be almost four squares with the facts here when one assumes that the particular A/D converter in the combination was the invention. The SC basically held in that case if the novelty was in the corresponding structure, it had to be claimed directly, not only for notice purposes, but also so that the DOE might properly apply to the corresponding structure.
The result in this case is identical to the result in Halliburton, albeit there, they held the claim invalid for not properly claiming the invention disclosed.
I determined that the ‘052 patent has an EPO equivalent, issued EP-B-319202. The EPO dismissed oppositions to the issued patent. But here’s the thing. An EPO “characterized in that” claim recites in its first portion that which the inventor admits is old. In substance, the text of the claim considered by the CAFC is the text of that admitted old, pre-characterizing part of the EPO ‘902 claim. No surprise there then, that the jury struck down the ‘052 claim.
Now to the ‘547 patent. Five companies opposed EP-B-319176. The opposition succeeded and the patent was revoked as obvious. Its claim 1 looks like the specimen claim 1 set out bridging pages 4 and 5 of the Moore judgement. So how come the US claim survived?
Thanks to 112/6, I suppose. But he who lives by the 112/6 sword dies by the same sword. If the very narrowness of the claim saves the claim from invalidity, it might also deprive the owner of a finding of infringement.
For more on the proceeding in Scire Facias, see
John Paxton Norman, A Treatise on the Law and Practice Relating to Letters Patent for Inventions (London, England, Butterworths, 1853) at Chapter XXI, paragraphs 29-41; available on Google Books.
Please see my article on PREFERRED EMBODIMENTS.Brody, T. (2009) Preferred embodiments in patents in John Marshall Rev. Intellectual Property Law vol. 9:398-452.
And for the record I don’t even know anyone named Kaplan.
Les: “If no one relied on the particular kind of A/D for novelty or non-obviousness, it simply should not be an issue.”
Bingo.
The minutia, the fly spec detail, that is unnecessary to carry out the recited function should not be incorporated unless the spec or argument suggests that it is important for some reason or another.
Fish, I agree with this.
Unless there was some criticality to the A/D structure that would indicated that only that kind of structure would work, what happened in this case is way beyond the pale.
But this is typical of what happens in trials. Defendants want every little stinking detail that can be described as corresponding structure incorporated by reference. All of it. To the most inconsequential fly spec.
Then they focus on the fly spec, which, of course, is not found in their devices.
The law ONLY REQUIRES that the corresponding structure necessary to carry out the claimed function be incorporated. Not the fly spec minutia.
Here is the claim element in question. Identify the need to incorporate the fly spec.
“means associated with said load cells for providing
a digital representation of a load on each load cell,”
I didn’t mean to suggest it was. I was only trying to fix it…. and alas, I failed.
IANAE, “any kind would work” is already there — by statute!!!!!!!
Straight Up,
But validity almost always involves prior art and what it teaches, and in trial, experts testify.
Patent owners have a 7th Amendment right to a trial by jury on these issues. How is the PTO going to accommodate that right?
In England, the Chancellor moved the trial to the commonon law courts for the jury to decide the facts, after which the Chancellor would decide the case upon the found facts. (I assume the jury would rule on mixed questions of law and facts as well.)
But, since the ALJ of the PTO are not real judges, just how are they going to do that?
Harsh does not begin to describe the result here. Cruel and unusual is more apt.
In the old days when they broke prisoners on the wheel in public, they did so for a purpose.
And because this name has been seen more than once. I never met Stanley Kaplan. I never filed my Patent Application or Trademark with Stanley Kaplan. And I have never met nor do I know Stanley Kaplan. And I have never filed anything or signed anything for a Stanley Kaplan!
I signed a Power of Atty. for Peter Loffler. I had an appt. and went with my husband to meet and file a Trademark with a Peter Loffler. After I signed the Power fro Peter Loffler he sent me back a copy that was not what I had signed. It now said I was PRO SE! And the last real copy I had that had Peter Loffler as Atty of record on 08,546,033 was stolen. I repeat I do not know anyone named Stanley Kaplan nor have I ever been associated with a Stanley Kaplan.
en banc decison needed?
Busted tag fixer
/
Fixed?
@ Les … it wasn’t me wot done the italics…
correction: there is one other reference in the patent to “The to multiple slope A/D 100”
Other than for means-function claims [as here], “the above-noted classic tension between (1) reading the claims in light of the specification [but starting with a more literal claim reading] and (2) importing limitations from the specification into the claims” [in patent litigation, not the PTO] has been shown in studies [unpopular with some of the judges] to be primarily due to strong differences of opinion on this subject between respective members of the Federal Circuit. Thus, highly panel-composition-determined and unpredicable in advance. The latter view obviously decides more cases much more easily on non-infringement, whereas the former may require more trials and appeals on invalidity issues.
[/i]
[b]Ahmen[/b]
Circuit means is not specifically treated in the statute.
I agree: any kind of a/d would be nice to have in the spec. But ya know, the pto complains bitterly about spec length. If you have to explicitly say “any kind” for every dang component specs become monotonous and unbearable to read.
If no one relied on the particular kind of A/D for novelty or non-obviousness, it simply should not be an issue.
Some quotes from the patent:
This invention relates to weighing apparatus and more particularly to a modular “smart” ***digital load cell*** and the use of a rocker pin as a load responsive spring element, or counterforce.
Recently there has appeared the so-called ***”digital load cell”*** in which an ***analog-to-digital converter*** and microprocessor are dedicated to a single load cell. The electronic circuits are mounted on a printed circuit board connected directly to the counterforce. This development has permitted digital correction of various load cell inaccuracies.
An object of this invention is to provide a load cell utilizing the rocker pin as a counterforce. Another object is to overcome the disadvantages previously associated with columnar load cells. Still another object is to provide a ***digital load cell*** that is modular and requires no physical adjustment after manufacture and is sealed to permit and require only digital analysis and correction from an external source.
Printed circuit board 14 contains the electronic circuits associated with the load cell including an ***analog-to-digital converter*** and a microprocessor and is described more fully below.
The output of switch 96 is connected to the input of a ***multiple slope integrating analog-to-digital (A/D) converter 100***.
The output of ***A/D converter 100*** is connected to a microprocessor 105, preferably an Intel 8344. Microprocessor 105 controls the operation of analog switch 96 to cause analog weight signals from bridge 90 and temperature indicating signals from nickel resistor 82 to be converted to digital form by ***A/D converter 100*** and transmitted to microprocessor 105.
Although connection and operation as a LAN is preferred, the digital output of each load cell, or group of load cells sharing an ***A/D converter***, could be connected individually to the master controller rather than through a common bus.
>>end of quotes
The above includes ALL references to A/D converters in the patent – there are six, one of which is to a multiple slope integrating A/D converter.
In Fig. 5 of the drawings, element 100 is labelled “Analog to Digital Converter”
The judgement notes:
“Mettler argues that the district court erred by importing the structure of only the pre-ferred embodiment or best mode of the disclosure into the claim. It contends that A/D converters are well-known in the art and that there was no reason to limit the structure to only the multiple slope integrating A/D converter. It further points to figure 5 that illustrates an “Analog to Digital Converter 100”. It argues that this shows that the specification discloses generic A/D converters as well as the more specific multiple slope integrating embodiment. Mettler contends that the Abstract, by mentioning a generic A/D converter, supports its broad construction.”
Further on, the judgement rebuts the point about the Abstract, but does not does not specifically rebut the point about the drawing.
This seems extremely harsh to me. There is nothing in the patent that would realistically lead the skilled person to view a multiple slope integrating A/D converter as having any special significance for the purposes of the invention. There is more than enough there to have allowed the CAFC to find the other way IF THEY HAD WANTED TO.
Saddest of all is the fact that the whole sorry mess could have been avoided by a moment’s though at the time of drafting.
None of which matters if the claim was invalid anyway (I don’t have a view on that).
Maybe it was so specific to comply with best mode.
But he still could have mentioned other broader embodiments
“That’s why people pay us so much money to draft claims.”
Ha – trying once again to fool people into thinking that you are not an academic.
Back to the Tower with you!
The more you disclose, the narrower your claims.
Also, the longer your claim, the narrower your claim.
The applicant didn’t disclose “more”, he described a needlessly specific embodiment, and gave no indication that any alternatives were considered, even ones that would have been obvious to a person unskilled in the art. Would it have been so hard to say “any kind of A/D converter works fine, actually”?
And still, everything would have been fine if he’d claimed “an A/D converter” rather than “circuit means”. In claim 1. Who does that, anyway?
The claim is the applicant’s attempt to define his invention and the scope of his patent. It’s not the court’s fault if the applicant used unfortunate language that is specifically treated in the statute, and it’s not the PTO’s fault for latching on to a broad interpretation of deliberately broad claim language during examination.
You get what you claim. That’s why people pay us so much money to draft claims.
What if the spec had just said analog to digital converter without any examples given. Would the claim be supported? Sure, one of ordinary skill in the art would know what an a/d converter is and that there are many types to choose from. Would the claim be limited to a particular a/d architecture? Of course not Why would it be?
Thanks to another absurd ruling from a judge we have another absurd canon… The more you disclose, the narrower your claims.
No the facts speak for themselves, but whatevveerrrrrrr! Funeral before and after.
“in the face of a demand for a jury trial on contested facts?”
Does this even make sense?
If there is nothing for the factfinder to find, then is a jury required?
Malcolm, 112, p.6 stinks? Why?
R A D E R.
But he is coming around. The whole point of 112, p. 6 is to affirm a pre-1952, pre-Halliburton claim practice of claiming old elements of a combination using functional language. See, Application of Fuetterer at note 11, link to leagle.com, and Halliburton's discussion of the prior case law regarding combinations of old elements. link to supreme.justia.com
In the Halliburton case, the 9th Circuit, which the SC overruled, held that old elements could be claimed functionally and had held in that case that an electrical means for counting pulses was the equivalent of a mechanical means disclosed in the patent. The problem, of course, was that the mechanical tuner was the invention. It was not an old and well known structure.
But, since means plus function equivalents have been limited by the Federal Circuit to cover only structures, etc., known at the time of the patent, e.g., old structures, the invention cannot be in the details of the corresponding structure, but only in its combination with the other elements of the claim. Thus, if I claim means for fastening, the claim will include not only the disclosed nail, but also an equivalent screw, a bolt and perhaps glue. If the novelty actually is in the details of the nail, and not in the combination of the disclosed nail or screw or bolt with something else, the claim probably is invalid.
But once we do understand that MPF claim elements are only claiming old elements functionally, virtually any structure that is known to work in the combination, that is also in the "prior art," should be covered.
Malcolm, regarding your example, I could do the same thing as your elaborate definition by using the term "removably coupled." That too is somewhat functional language, but the courts would, as in your example, construe the claim element broadly to encompass any and all ways of coupling the two elements together — and the reason for this is that the means for coupling two things together is not the invention. It is in the prior art.
I, as do you, also believe that equivalents found in the future should also be covered, just as you noted. But that would be under the DOE, and not under MPF equivalents.
There is no justification that I can see for a narrow, crabbed range of equivalents.
I can see a justification: you took the short cut and used 112P6 for drafting your claim.
You want to cover all means for fastening? Then recite “wherein said X is fastened to said Y” instead of “a means for fastening.” And put a line in your spec that says “the term
‘fastened’ requires that X and Y are secured to each other by any means available to the skilled artisan, now or in the future, and includes both reversible or irreversible fastening means.”
112P6 stinks.
Can an Art. I court try validity of an issued in the face of a demand for a jury trial on contested facts?
Can a member of the public without standing file a complaint to challenge the validity of an issued patent in an Art. I court?
Dont’ know. As I said, the issue of equivalents was not appealed. I would assume that the patent owner put on testimony re equivalency, as it would definitely be improper to exclude it.
Again, a continuation from the post below, was there testimony that one of ordinary skill would know to substitute the one for the other? If the testimony was allowed and the jury still found no infringement, so be it. But if the patent owner was excluded from presenting the evidence or from making the argument, we have a problem.
No, it should depend upon whether the person of ordinary skill would know to substitute the one for the other in the application with some expectation that it would work.
Read, for pity’s sake, Graver Tank. That is what actually happened in that case.
The invention does not and cannot lie in the details of the corresponding structure. The equivalents are limited to known equivalents. There is no justification that I can see for a narrow, crabbed range of equivalents.
I could not disagree more. What you are suggesting completely ignores the statutory language, not to mention caselaw. In your example of a “means for fastening” where the specification only discloses a nail, yuo suggest that glue should be considered equivalent. But if you do that, the MPF limitation devolves into nothing more than anything capable of fastening things to each other. You can’t define equivalency for MPF purposes by simply looking at the function and deciding what a POSITA would have known could be used for performing that function. It’s the structure disclosed in the specification, and equivalents. How you going to show that glue is the structural equivalent of a nail??? Yes, both can be used to fasten, but beyond that I don’t see anything else.
The CAFC decision does not address the issue except in passing. The sole issue on appeal was whether or not the trial court’s determination that the only disclosed structure for performing the functions was “a multiple slope integrating A/D converter.” The question of whether or not a delta-sigma A/D converter was equivalent was not raised on appeal.
The CAFC did state (in dicta) that there was “trial testimony by B-Tek’s expert and a corporate representative from another defendant that there are substan-tial differences between the two types of converters.”
6, I have been at war with Rader on this very issue since Valmont. He is coming aground, but slowly.
Fish, interesting question. From the quote following, it appears the lower court treated MPF equivalents as the same as the doctrine of equivalents.
While I think this is right to some degree, it does seem to violate en banc Federal Circuit law that MPF equivalents is limited to equivalents that exist at the time of the patent filing date. I also believe that MPF equivalents, thus limited to the prior art, should not be narrowly cabined, as is the DOE, to insubstantial substitutions. Rather, such equivalents should be given a broad scope to include substitutions that one of ordinary skill in the art, at the time of the invention, knew would work. This if I claim “means for fastening” and disclose a nail, I should get not only a nail, but a screw, a bolt and perhaps even glue. Because the equivalents are required to be in the prior art, the invention itself does not and cannot lie in the details of the corresponding structure. There is and should be no policy reason to cabin MPF equivalents so narrowly.
I think there was legal error on this issue in this case.
From the case:
“…[T]the district court held that the corresponding structure was “a multiple slope integrating analog-todigital (A/D) converter, and equivalents thereof.” MettlerToledo, Inc. v. Fairbanks Scales Inc., 551 F. Supp. 2d 576,
598 (E.D. Tex. 2008).
In the accused products, the A/D converter is a deltasigma A/D converter. The jury determined that the
accused products did not infringe either literally or under
the doctrine of equivalents. In its JMOL motion, Mettler METTLER-TOLEDO v. B-TEK SCALES 6
argued that the delta-sigma A/D converter is equivalent
to the multiple slope integrating A/D converter. The
district court held that substantial evidence supported the jury’s verdict that they were not equivalent pointing to trial testimony by B-Tek’s expert and a corporate representative from another defendant that there are substantial differences between the two types of converters. ”
why wasn’t it an equivalent?
The “scope of equivalents”? What are you referring to? The trial court determined that the corresponding structure was a “multiple slope integrating A/D converter, and equivalents thereof.” The jury then determined then found no infringement–persumably because they concluded that “a delta-sigma A/D converter” was not equivalent to a “multiple slope integrating A/D converter.”
Are you expecting the court or jury to determine the scope of equivalents?
I did indeed leave out a “not” there. I’d also agree that the balance isn’t necessarily struck in most cases – but it is a balance that the court, at least formally, attempts to strike.
Apparently the scope of equivalents was: stuff that the accused infringer did not in fact make/use/sell and wasn’t accused of making/using/selling.
And what was the scope of equivalents of this embodiment?
we discussed the classic tension between reading the claims in light of the specification and importing limitations from the specification into the claims. In most instances the court attempts to strike a balance between these two canons
I’m dubious.
First, I’m dubious that “importing limitations from the specification into the claims” is accurately described as a “canon.” If anything, the “canon” is that “limitations from the specification should not be imported into the claims.”
Second, I’m dubious that a balance between the alleged “canons” is struck in “most cases.” My guess would be that in most court cases, claims are construed as one skilled in the art would construe them, in light of the specification. Why? Because that is what the law requires. In most court cases, claims are not construed narrowly to read on preferred embodiments by “importing limitations” from the specification. We see exceptions appealed to the CAFC from time to time with horrific results occasionally, but my impression is that most of the time the Federal Circuit gets it right and overturns improperly narrowed claim constructions. I recognize that it’s extremely difficult to quantify any trends in this area (no sarcasm intended).
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