Fenner v. Cellco: Judge Newman Speaks on Claim Construction

By Jason Rantanen

Fenner Investments, Ltd. v. Cellco Partnership (Fed. Cir. 2015) Download Fenner v Cellco
Panel: Newman (author), Schall, Hughes

In Fenner v. Cellco Partnership, Judge Newman adds another voice to the chorus of Federal Circuit judges reading Teva v. Sandoz as having little effect on the court’s routine review of district court claim constructions.  Here, the panel affirms the district court’s construction of the term “personal identification number” under what appears to be a de novo standard of review   Frustratingly, the opinion never states which standard of review it is applying either generally or to any given issue, but I read all of the issues it addresses as either consisting of intrinsic evidence or going to the “ultimate question” of claim construction.

Judge Newman’s Articulation of the Post-Teva standard of review.  The appellate analysis begins with the established reading of Teva as reinforcing a largely de novo standard of review for claim construction:

 We review de novo the ultimate question of the proper construction of patent claims and the evidence intrinsic to the patent. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015); id. (“[W]hen the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent’s prosecution history), the judge’s determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo.”). The district court’s determination of subsidiary facts based on extrinsic evidence is reviewed for clear error. Id. at 835, 841.

After noting that the appellant’s argument rested on a plain meaning versus the specification & prosecution history tension, the opinion summarizes the claim construction process:

The terms used in patent claims are not construed in the abstract, but in the context in which the term was presented and used by the patentee, as it would have been understood by a person of ordinary skill in the field of the invention on reading the patent documents. See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013) (“[A] term’s ordinary meaning must be considered in the context of all the intrinsic evidence, including the claims, specification, and prosecution history.”). Thus, a claim receives the meaning it would have to persons in the field of the invention, when read and understood in light of the entire specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1312– 1317 (Fed. Cir. 2005) (en banc). Any explanation, elaboration, or qualification presented by the inventor during patent examination is relevant, for the role of claim construction is to “capture the scope of the actual invention” that is disclosed, described, and patented. Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011).

In this articulation of the process, both the specification and the prosecution history play an important role.  But Judge Newman does not stop with this summary; she digs into the meaning of claim construction itself:

Words are symbols, linguistic embodiments of information sought to be communicated, and, as such, can be imperfect at representing their subject. The Supreme Court recently observed this challenge to patent claim interpretation, stating in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2128-29 (2014), that “the definiteness requirement must take into account the inherent limitations of language,” and that clarity is required although “recognizing that absolute precision is unattainable.” When the disputed words describe technology, the terse usage of patent claims often requires “construction” in order to define and establish the legal right. Judicial “construction” of patent claims aims to state the boundaries of the patented subject matter, not to change that which was invented.

Beginning with the written description issue, the opinion concludes that the district court used that portion of the patent properly:

The foundation of judicial claim construction is the “written description” in the specification. The patent statute requires that the claims “particularly point[] out
and distinctly claim[] the subject matter” that the applicant regards as the invention. 35 U.S.C. §112(b). The district court appropriately consulted the description in the ’706 specification “for the purpose of better understanding the meaning of the claim.” White v. Dunbar, 119 U.S. 47, 51 (1886).

The prosecution history further bolstered the district court’s construction even though the examiner did not appear to have relied upon the relevant statements by the applicant in granting the patent:

Fenner argues that these purportedly limiting statements he made during prosecution do not limit the claims, arguing that the statements and the limitations discussed were not the basis for grant of the patent. However, the interested public has the right to rely on the inventor’s statements made during prosecution, without attempting to decipher whether the examiner relied on them, or how much weight they were given. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (“[A] patentee’s statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation.”); Laitram Corp. v. Morehouse Indus., Inc., 143 F.3d 1456, 1462 (Fed. Cir. 1998) (“The fact that an examiner placed no reliance on an applicant’s statement distinguishing prior art does not mean that the statement is inconsequential for purposes of claim construction.”)

The court also rejected the appellant’s arguments based on interoperability (concluding that the district court’s construction did not render the claim inoperable) and claim differentiation:

Although claim differentiation is a useful analytic tool, it cannot enlarge the meaning of a claim beyond that which is supported by the patent documents, or relieve any claim of limitations imposed by the prosecution history. See, e.g., Retractable Techs., 653 F.3d at 1305 (“[A]ny presumption created by the doctrine of claim differentiation ‘will be overcome by a contrary construction dictated by the written description or prosecution history.’” (quoting Seachange Int’l, Inc. v. C-COR, Inc.,413 F.3d 1361, 1369 (Fed. Cir. 2005))); Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1302 (Fed. Cir. 1999) (“[T]he doctrine of claim differentiation does not serve to broaden claims beyond their meaning in light of the specification, and does not override clear statements of scope in the specification and the prosecution history.” (citation omitted)).




25 thoughts on “Fenner v. Cellco: Judge Newman Speaks on Claim Construction

  1. 4

    Question: once the Federal Circuit has provided a construction of a claim term on the intrinsic record as a matter of law, is this not a rule of law that must be followed by subsequent courts? In other words, is a district court free to ignore the prior ruling of the Federal Circuit on the intrinsic record? What about the patent office in postgrant proceedings?

    What if the defendant in a later action brings an expert who disagrees with the
    interpretation as a matter of scientific fact, and the district court judge or Board bases its altered construction on this new extrinsic evidence?

    1. 4.1

      That was a key losing argument in Teva, but how likely is that to make any difference in the real world? [I.e., lead to a different claim scope in different decisions on the same claim that matters.] That is, how likely is it that [disfavored] extrinsic evidence [especially arguments from a paid witness expert, or perhaps even from a dictionary] is going to trump a prior decision by the Fed. Cir. based on [favored] intrinsic evidence? It will be interesting to see if it ever happens.
      We have certainly had different Fed. Cir. panel decisions with different views of proper claim scope based on different treatments of intrinsic evidence, but not, I think, on the very same claims?

    2. 4.2

      Ignore the prior ruling? No. It would have a preclusive effect, I presume – it can be used defensively, as a shield, against a patentee, if the patentee lost in the earlier case, but it cannot be used as a sword against an alleged infringer. It certainly could be *persuasive* authority, particularly if the alleged infringer makes no new arguments, but it would not be entitled to any preclusive effect exceptt defensively.


          Are we confusing issue preclusion with law?

          Issue preclusion applies to issues of law as well as to issues of fact, doesn’t it, Ned? Guest’s analysis looks right to me – once the patentee has had a chance to argue a particular issue of claim construction, he doesn’t get to do it again.

          However, the challenge might be defining precisely what the precluded issue is. Given a different accused product, for example, there might be different terms in the claim that matter. If those terms weren’t at issue in the previous litigation, there shouldn’t be preclusion.


            DanH, I would think the only way around an adverse (to the infringer) construction by the Federal Circuit is to change the issue, as you suggested, or to suggest the prior holding was wrong, so as to seek a reversal en banc when back at the Federal Circuit.

            Take Philips as an example. Assume in a later case that the accused infringer would like to limit the term “baffle” to oblique-angled structures. Since that issue was already decided by the Federal Circuit, en banc as well, I do not believe a district court could reasonably hold that a baffle was limited to oblique-angled structures.

      1. 4.2.2

        Yes, but what about the effect, in a later litigation against another defendant of “admissions against interest” about claim scope made by the patent owner in earlier litigation or in a post-grant proceeding?

    3. 4.3

      What if the defendant in a later action brings an expert…

      What may happen in any review by the CAFC might be that the CAFC decides to “base their decision” solely on the intrinsic record – in essence saying that the added extrinsic materials were unnecessary to begin with.

      Is the deferential standard of review “reached” if the appellate judge says he is not “reviewing” at all, and that appellate judge does not use the extrinsic record? What is the standard for determining sufficiency of the (intrinsic) record below, of being able to separate that record?

      As I pointed out immediately after the Supreme Court case, one must pay attention to the extrinsic/intrinsic factor.

      1. 4.3.1

        It is a good point anon. I think the standard is that the Fed. Cir. judge says that the intrinsic evidence is sufficient for them to construe the claim. The CJ can then just make dismissive remarks that do not find clear error, but find that the findings of fact are irrelevant to the claim construction. That would be my guess of how it will go down.


          It does appear to be a (dumptruck) sized loophole that the CAFC can drive through in order to preserve their “fingers in the wax nose” (to borrow an expression).

          Of course, one (unforeseen) consequence of this may be to forestall an explosion of court costs associated with the possibility of litigants going hog wild introducing extrinsic evidence into cases so as to take advantage of the recent Supreme Court case…

  2. 3

    The court’s analysis was flawed but reached the proper endgame. The correct analysis is that Claim 18 is invalid for want of Written Description and Claim 19 is given the scope the district court assigned to Claim 18.

    The only argument by the patentee that was actually correct is that 19 is superfluous by the DC’s reading of 18. The doctrine of claim differentiation (as applied here, at least) is improper because it seeks to find an interpretation that would uphold patentability at the expense of internal consistency. If that analysis was ever correct, it certainly can’t be after Tesla. The internal consistency must rule, and claim 18 must be held invalid. Of course, the DC reading finds claim 19 invalid by a failure to further limit under 112, 4th – so it ultimately gets to the same result, but via a prosecution history rather than explicit language manner (which one would think is the inferior result).

    Claim 19 clearly gives the interpretation desired, to say that claim 18 is broader than that is to give claim 18 a scope unsupported by the documentation, and thus written description is proper.

  3. 2

    The key part of the decision: Distinguishing Hayes, Fenner stated that “[t]he present invention, on the other hand, is centered around the mobile user, not the mobile telephone. The user is identified by a personal code. Furthermore, the mobile user need not be, unlike a mobile telephone, assigned to a particular home exchange.” J.A. 2509.

    Fenner argues that these purportedly limiting statements he made during prosecution do not limit the claims

    The defendant here should be entitled to every cent of its legal fees and the patentee should be sanctioned with additional fines.

    Patentees simply can not be permitted to have it both ways. It’s exactly this sort of scenario that justifies construing statements in the prosecution history against the patentee, whether it be to find the patent invalid as indefinite (should there be an apparent contradiction between a self-serving statement and the claims, as there was here) or to find non-infringement.

  4. 1

    The interesting part of this decision is copied below. Is this not inconsistent with other Fed. Cir. decisions requiring a clear disavowal of claim scope by applicants for prosecution history estoppel?
    “Fenner argues that these purportedly limiting statements
    he made during prosecution do not limit the claims,
    arguing that the statements and the limitations discussed
    were not the basis for grant of the patent. However, the
    interested public has the right to rely on the inventor’s
    statements made during prosecution, without attempting
    to decipher whether the examiner relied on them, or how
    much weight they were given. See Microsoft Corp. v.
    Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004)
    (“[A] patentee’s statements during prosecution, whether
    relied on by the examiner or not, are relevant to claim
    interpretation.”); Laitram Corp. v. Morehouse Indus., Inc.,
    143 F.3d 1456, 1462 (Fed. Cir. 1998) (“The fact that an
    examiner placed no reliance on an applicant’s statement
    distinguishing prior art does not mean that the statement
    is inconsequential for purposes of claim construction.”).”

    1. 1.1

      I don’t think it’s inconsistent when the case law regarding “clear disavowal” does not require that the Examiner “relied on the arguments”, nor does it require the applicant to state “I disavow other meanings of the claim term.”

      A lot of Federal Circuit’s affirmances under Rule 36 deal with this issue repeatedly, especially in the case of a re-exam where the applicant has an infringer in its sites. The classic example is where an applicant amends (and narrows) a claim in response to an Examiner’s rejection (and/or deletes redundant/mooted dependent claims following a narrowing amendment to the independent claims, or following the Examiner’s narrow construction of a term in the independent claims) and where the applicant includes some self-serving boilerplate about how it “is reserving its rights and not agreeing with the Examiner.” Those facts will nearly always be interpreted as narrowing the meaning of a claim term, as they should be, regardless of any alleged lack of a “clear disavowal.”

    2. 1.2

      I don’t think Newman’s analysis is inconsistent with precedent, either. It shouldn’t be the case that the legal significance of the applicant’s own remarks depends on what the examiner does with them.

      I don’t think I fully understand MM’s argument, but to the extent he’s suggesting that merely amending to overcome an examiner’s rejection has any more significance with respect to the claim’s construction than the surrender of equivalencies, I disagree.

    3. 1.3

      That does seem to be a different standard than clear disavowal. She seems to be saying not a clear disavowal, but the judge can read the statements and construe the claims in light of the statements which may end up with the narrower claim scope as if you did clearly disavow the claim scope.

      So, the we are judges we can do whatever we please standard applies.

    4. 1.4

      That passage does not suggest that the disavowal was unclear. Rather, it states that the disavowal (limiting statements) need not be relevant or needed to patentability.

    5. 1.5

      Thanks for all the above comments.

      [It does seem to me that we also now have more than a hint from the Sup. Ct. of who’s ox should get gored, in their view, if there is any ambiguity in whether or not there has been a clear prosecution disclaimer of claim scope?]

      1. 1.5.1

        Cynical me thinks that this is the true reason these statements are in here. The Supreme Court is currently considering whether to take up the issue of the Federal Circuit’s rule about “clear disclaimer” in the Google v. Vederi case. They’ve gone so far as to as for the SG’s opinion on the issue (which as far as I know, has not been offered yet).

        SCOTUS made some pretty strong statements about the public notice function of patents in the Nautilus case, and the Fed. Cir.’s position on clear disclaimer seems inconsistent with that. That is, how can the public rely on statements in the prosecution history if the patentee can essentially negate them by coming up with any alternative plausible explanation? How then, does the public have any notice of what’s actually claimed by the patentee?

        The cynical part of me thinks that the Federal Circuit sees that this may be the next issue to go up to SCOTUS, and is trying to backtrack in order to not look so ridiculous when SCOTUS again unanimously reverses a pro-patentee Federal Circuit rule. We saw this in the discussion of indefiniteness pre-Nautilus, we’re seeing it again now re disclaimer.

        To be clear, I hope I’m wrong and that wasn’t what happened here. But part of me thinks I’m not.


          You are clearly right, Jane.

          Having on more than one occasion had excellent patents simply ruined by really unnecessary remarks and arguments made during prosecution history, I now try to get patents allowed/reexamined by saying nothing at all on the merits if possible.

          Just for example, I never discuss dependent claims; nor do I discuss more than one way of distinguishing a reference if more than one way is possible.

          When I see an amendment that discusses every dependent claim, I cringe.


            I agree with your “say nothing” strategy, but have often struggled getting clients on board. They feel that a shorter (word count) response should cost less than a flowery, verbose response.


              Asdf, you need to educate the client on the problem of saying anything at all. The clean response with de minimis verbiage is always preferred.


                I can think of at least one instance of “not always”…

                Then again, that may of course be the exception that proves the rule.


                Recall as well, Ned, our past discussions on the similar effects of such “patent profanity” in characterizing any other prior art in an application…

                Same “de minimis verbiage” principle at work.

                The not so “unforeseen” consequence of both this principle and the principle of super-empowering PHOSITA is that the very tools that the courts want to wield against patentees empower those same patentees (or at the very least, prompt those patentees) to say less and less in the applications.

                The court, then (and equally, pundits observing the artifacts of the court), are left with little room to complain about such things as “functional language”***

                ***Note: this use of the term “functional language” is expressly not demarking PURELY functional language, or claims TOTALLY in the mind. It is indeed critical to make sure that the distinction – for example – between the mere thought of software and software itself is recognized at the onset of the dialogue in order to quash the dustkicking. We all should not be tempted to misunderstand “abstract ideas and those things such as machines and manufactures that exist quite apart from the idea of the item, even if the Supreme Court wants to wave its magic wand and make the words of Congress disappear.


          Jane, I had the same thought, but the author of this Fed. Cir. opinion is Judge Newman, who is not ordinarily noted for being concerned about avoiding in advance being reversed by the Sup. Ct., or citing them. But, she does cite them here for Nautilus.

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