Advanced Fiber Technologies v. J&L Fiber Services

By Jason Rantanen

Advanced Fiber Technologies (AFT) Trust v. J&L Fiber Services, Inc. (Fed. Cir. 2012) Download 11-1243
Panel: Lourie (author), Dyk (dissenting in part), Prost

This opinion provides guidance on the process of construing claim constructions and illustrates the continuing disagreement among the Federal Circuit judges about claim interpretation.

The technology at issue in this case involves screening devices used in the pulp and paper industry. Advanced Fiber Technologies (AFT) patented a screening device that purports to offer substantially increased efficiency and flow capacity.  Two of the asserted independent claims include the term "screening medium"; the third contains the synonym "screening plate."  The district court construed "screening medium" as "a perforated barrier through which stock is passed to remove oversized, troublesome, and unwanted particles from good fiber."  Slip Op. at 8.  It further interpreted a term from its construction, "perforated," as meaning "pierced or punctured with holes."  Id.  Based on this meaning of "perforated," the district court granted summary judgment of noninfringement as against the accused device, which used a "wedgewire" screen (a screen made by assembling closely spaced parallel wires).  AFT appealed, challenging not the district court's construction of the term "perforated" but its construction of "screening medium."

Although not explicitly discussed by the opinion, construing claim constructions (which the majority refers to as "derivative construction" on page 14) raises some difficult issues above and beyond the challenges that come with construing the claim terms themselves – specifically, the degree of relationship between the claim term and the interpretation of the claim term's construction. 

The majority opinion in Advanced Fiber provides some guidance in this area.  First, the derivative construction "must follow the guiding principles set forth in Phillips." Slip Op. at 14.  Second, whether "construing a claim term or a disputed term within a claim construction, our ultimate goal is determining the meaning and scope of the patent claims asserted to be infringed.'" Id., quoting Markman, 52 F.3d at 976. 

Applying these two points, the majority agreed with AFT, concluding that the district court improperly relied on extrinsic evidence that contradicted the intrinsic evidence and that its own interpretation of "perforated" as simply "having holes or openings" was "fully consistent with the language of claim 1, "a screening medium having a plurality of openings therethrough," and claim 10.  Slip Op. at 17.

Comment: The majority's approach to derivative constructions looks to be fairly useful, in that it suggests that derivative constructions should relate back to the meaning of the claim itself rather than going down the rabbit hole of attempting to independantly interpret interpretations.  This approach thus adds to the methodology for construing constructions developed in Cordis Corporation v. Boston Scientific Corporation, 658 F.3d 1347 (Fed. Cir. 2011), another recent case dealing with an issue of derivative construction. 

Writing in dissent, Judge Dyk would have affirmed the district court's construction.  In Judge Dyk's view, the court should have read more into arguments the applicant made during prosecution and found that the applicant explicitly adopted the definition of "perforated plate" from a technical manual, the Handbook of Pulp & Paper Terminology, that the applicant cited during prosecution for the definition of "screen plate."

Note: Based on my reading of the opinion and the appellee's brief, neither the district court nor J&L appear to have relied on the Handbook's definition of "perforated plate." 

18 thoughts on “Advanced Fiber Technologies v. J&L Fiber Services

  1. 18

    Substitute “idea” for “natural law” and the analogy to Frischmann’s analysis becomes clear. Indeed, there is no reason why a “natural law” cannot be an “idea” as Frischmann describes it. A natural law is the articulation of a principle; whether that principle is an infrastructural idea turns on its characteristics, not its origins. In Prometheus, the Court, with Justice Breyer authoring the unanimous decision, held that the patent claimed the natural law itself and not an application of that law. The Court held that the the patent claims did not “add enough to their statements of the correlations . . . to qualify as patent-eligible processes that apply” those correlations (slip op. 8). The “administering” and “determining” steps, in the Court’s view, comprised “well-understood, routine, conventional activity already engaged in by the scientific community” and so were “not sufficient to transform unpatentable natural correlations into patentable application of those regularities” (slip op. 11). Or, in Frischmann’s terms, the patent claims did not amount to an implementation of an idea; they claimed the idea itself.

  2. 17

    My interest is in claim 1. The PTO found it indistinguishable from the prior published Gillespie screen. Neither is a pulp screen.

    Applicant retorted that the pending claims in fact “require a screen used in the treatment of pulp”. The Examiner then withdrew his Gillespie objection.

    I can follow that for claim 18, but what was the Examiner thinking when he withdraw the objection to claim 1? Given another chance, and with hindsight knowledge of this litigation, would the PTO again allow unamended claim 1 over Gillespie?

    To try to dispose of invalid claims by summary judgement of non-infringement: is that a viable long-term strategy for patent disputes?

  3. 16

    And, not only that, but it bears mentioning that all of these cases I’m doing come back with waaaaaaaaaaaaaaayyyyyyyyyyyyyy simple amendments accepting practically anything I will dole out for them as allowable. How could these AU’s POSSIBLY fall behind save for complete incompetence or perhaps too much coddling on the time allotted?

  4. 15

    You know guys I’ve been doing some patent examining for COPA cases here lately. It’s been such that I get to do cases that have a way higher hr/bd allotment, and I even got a “learning curve” thanks to the COPA initiative. I have to tell you, these cases are waaaaaaaaaaayyyyyyyyyyyy easier than even the simplest cases in my AU and we get waaaaaaaaaaaaaaaayyyyyyyyyy less time to look through LOOOOOOOOOOOOOOOOOOOOOOOTTTTTTTTTTTTTSSSSSSSSSSS of references that are actually much more difficult to look through.

    This situation really pisses me off.

  5. 13

    My thought is that you’re a woman and are paying the price, emoness. Also, poor choice to have a baby without being hitched. Sux for you. But then, lots of people pay for poor choices like that, so it isn’t our problem.

  6. 12

    Don’t let your parents see their grandchild. I guarantee you that they will cave in no time.

  7. 11

    Oh dear. Sorry 6. My impulse posting on reading McCracken was me being facetious, inviting you to take on the onerous task of advising McCracken.

    Meanwhile, I hope your praiseworthy on-thread effort was not in vain, and will provoke other on-thread comments.

  8. 10

    Not really my field max. But the whole “construing a term within the construction of a term” is pretty dum in the first place. Your “claim construction” should be simple enough to understand the claim in the most basic terms available or else don’t call it your claim construction. And the result of not doing that is seen here. You get a pretty dum end construction. “screening medium” has nothing to do with the thing having been pierced or poked with holes. Obviously you could make a screening medium as the accused did and there’s no reason to interpretlol a screening medium so constructed out of the scope of the claim.

    Unless of course the dissent is right and there is PHE. I haven’t looked into it far enough to see about that.

  9. 9

    My god that is freaking stxpxd.

    I’m with MM on this one. If you need to construe your own construction, you’re doing it wrong.

  10. 6

    Dear Patently-O,

    My parents make a strong, overt distinction between married and non-married significant others, meaning the former are included in absolutely everything, appropriate or not, and the latter are routinely excluded from things that are family-only.

    For instance, my sister’s husband was invited to (and attended) my otherwise all-women baby shower, while my boyfriend, now the father of my child, was not invited to our annual holiday vacation. Mom’s argument is that being treated like family is one of the benefits/incentives of legal marriage. (I would like to get married but realize it’s not right for my boyfriend and me at this time.)

    I declined to go with them, but now I’m seething at being forced to make that choice. I’m trying to see things Mom’s way. What are your thoughts?

  11. 5

    Hello John–

    I’ll take a stab at that explanation:

    “The wheels on the bus go round and round,
    round and round,
    round and round.
    The wheels on the bus go round and round,
    all day long.”

  12. 3

    It means that if the claim term “greater than 50 percent” is construed to mean “more than half”, when one party’s attorney subsequently argues that “half” means “between 40 and 60 percent”, the judge should wash out that attorney’s mouth with dogpoop.

  13. 2

    I’d be most appreciative if someone smarter than I would explain what is meant by “the degree of relationship between the claim term and the interpretation of the claim term’s construction.”

  14. 1

    The district court construed “screening medium” as “a perforated barrier through which stock is passed to remove oversized, troublesome, and unwanted particles from good fiber.” Slip Op. at 8. It further interpreted a term from its construction, “perforated,” as meaning “pierced or punctured with holes.” Id.

    My god that is freaking stxpxd.

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