Claiming: Special Care with Terms of Degree

LibertyPatentedAmmoby Dennis Crouch

Liberty Ammo v. US (Fed. Cir. 2016)

The U.S. Government has waived its sovereign immunity against allegations of patent infringement. However, the infringement charges are not brought via Civil Action under the infringement definition of 35 U.S.C. 271.  Rather, 28 U.S.C. § 1498 spells out that the infringement claim against the U.S. must be brought in the Court of Federal Claims (CFC) and that the remedy is limited to the “reasonable and entire compensation for [the Govt’s] use and manufacture.”  The CFC does not allow for a jury nor will it award injunctive relief against the U.S.

Liberty sued the U.S. alleging that the ammunition rounds manufactured for and used by the Army are covered by Liberty’s U.S. Patent No. 7,748,325.  In the 1990s and 2000s, the U.S. military became concerned that lead-based ammunition might be a form of harmful pollution – the patented ammunition here follows that lead by eliminating lead from the round while remaining lethal to soft-tissue targets (such as humans).  According to the patent, the projectile (shown in the image above) separates into three portions upon striking a target.  The projectile also includes a reduced-size jacket that limits barrel heat build-up.

In 2005, Liberty provided the Army with a set of 50 prototype rounds for testing (subject to a NDA).  The Army decided not to take a license or purchase those rounds from Liberty, but did begin using substantially similar rounds.  In the subsequent CFC infringement case, the court sided with Liberty – finding the asserted claims infringed and enforceable. The court then awarded $15 million in damages to Liberty with an ongoing royalty of 1.4¢ per round.

Claim Construction a Loser: On appeal, the Federal Circuit reversed – finding that the lower court had erred in its interpretation of the claim term “reduced area of contact.”  The debate over the unstated reference point – reduced from what? The CFC used the reference of “traditional jacketed lead bullet of calibers .17 through .50 BMG” based upon the specification statement that the invention is designed for “all calibers generally ranging from .17 through .50.”  On appeal, however, the Federal Circuit found that the reference for the accused 5.56 mm should – in particular – be traditional M855 rounds – since that is “the specification’s only mention of a specific conventional projectile” and was the standard-issue round for the Army at the time.  This modification to the construction is important because the traditional M855 projectiles already had a rather small area of contact and the accused projectiles have an increased contact area — thus no infringement.

Almost Indefinite: “Reduced area of contact” is a problematic claim term because it is a term of degree that calls for comparison against some unstated baseline.  Reflecting that sentiment, the court here writes that “Terms of degree are problematic if their baseline is unclear to those of ordinary skill in the art.”  Although not ‘inherently indefinite’, terms of degree will be found indefinite if they fail to provide some ‘objective boundaries.’  In talking through this, the Federal Circuit wrote that the lower court’s construction would have left the claim as indefinite because there would be multiple ‘traditional’ bullets that could be used as the baseline.

Claim 1 would not be definite had the trial court’s construction been correct because there would not be a sufficient objective boundary around the term of degree “reduced area of contact.” It is true that the trial court did objectively limit the claim language by including the “.17 through .50 BMG caliber” guidepost in its construction. This standard is objective in the sense that it defines a set range of calibers from which the baseline projectile may be drawn. Yet, even after limiting the field of baseline projectiles according to the trial court’s construction, a multitude of candidates for the conventional baseline projectile would remain for each caliber within that range, making the claim indefinite under Interval.

Here, the Federal Circuit goes on to suggest that the difficulty in proving infringement may be indicative of indefiniteness. “[A] term of degree cannot be definite when construed in a manner that lends itself to this sort of scattershot infringement analysis.”

The Background of the Invention section first narrows the ambiguity by disclosing that the patent’s proposed projectile has “a reduced contact area as compared to conventional projectiles.”

NDA Not Enforceable against the Army: Although the patent portion of the case is most relevant for Patently-O readers, the most important business element may be the court’s disregard of the non disclosure agreement signed by Lt. Col. Glenn Dean.  When the inventor of the ‘325 patent approached the army, he was directed to the Chief of Small Arms for the army’s Infantry Combat Directorate (DCD), Lt. Col. Dean.  Prior to discussing the ammunition, Dean signed a non disclosure agreement (NDA).

The courts, however refused to enforce the agreement – finding that Lt. Col. Dean “did not have the requisite authority to enter the NDA on the Government’s behalf.”  In traditional contract law, an agent’s “apparent authority” can be sufficient to bind a principal.  However, several cases have held that the U.S. Government “is immune to actions of its agents who merely possess apparent authority.”  See CACI, Inc. v. Stone, 990 F.2d 1233, 1236 (Fed. Cir. 1993).

19 thoughts on “Claiming: Special Care with Terms of Degree

  1. I’ve looked at the patent and am none the wiser, about “reduced area of contact”. I see it mentioned in the “Field of the Invention” the very first para of the specification. I assume one needs the projectile to be gas-tight in the barrel (big contact area) but low on friction (small contact area) much like a piston in a cylinder of an internal combustion engine. So a “reduced” area of contact is a standard design constraint, in this technical field.

    I read on, to find out how it is achieved. Perhaps an ovoid rather than cylindrical projectile wall. Perhaps a rough surface rather than a smooth one. But in Fig 4 of the drawings I see annular grooves (col 4, line 59) 26.

    Ah ha. They must be what reduces the area, I think. But the para bridging col 6 and 7 boasts of the reduced area but says not a word about how it is achieved.

    In the claims, no mention of annular grooves. Only claim 42, with its “irregular”, carries anything that might remotely be a reference to the grooves.

    It all suggests to me that a “reduced area” provides no contribution to the art and is bog standard conventional so has no limiting effect whatsoever on the claim, and every knowledgeable reader would know it. If so, it seems a bit cruel to terminate the patent on this basis alone.

    Of course, it it is the only feature in the claim capable of conferring novelty, that would be another matter.

    Not all relative terms are problematic. How about “a rectangle with a ratio of length to width of less than 3/2”.

    1. While it is nice that you “looked,” are you really wanting us to believe that your so doing represents the same understanding of a PHOSITA when they look?

    2. This shows the perils of functionally claim specific structure. The structure claimed (by reduced area of contact) were a jacket that included circumferential channels that reduced the area of contact of the jacket that connected the two bullet halves.

      But instead of looking to whether the accused bullets had that structure, we got lost, akimbo, in fog and mist. The whole opinion of both the court of claims and the federal circuit seems nonsensical as a result.

        1. Functionally claiming an invention seems like a good idea until on actually tries to enforce the patent when one has to prove that the accused structure actually does all those fancy functions in addition to being the structure described in the spec and equivalents.

          You guys make it almost impossible to prove infringement.

          1. Interesting Ned, where you write “in addition to”.

            I had thought that deliberately not claiming what it “is” and instead claiming what it “does” is a ploy to catch as an infringement anything that “does” what you claim, regardless what it “is”.

            I can see that 112/6 and all the special USA-specific M+F jurisprudence is a legitimate response to manage “functional” claims of inappropriately wide scope.

            Outside the USA, other tools are used against such undue width, and they work very well. It looks to me now as if they start to make an appearance also in the jurisprudence of the USA.

            Meanwhile, you continue to read into the “what it does” claim the “what it is” structural features of the illustrated embodiment. I think that approach is on the way out, isn’t it?

      1. I see that we agree, Ned, on what was supposed to be the invention. Just a shame then, that this patent was drafted during the era when the hghest expression of the drafter’s skill was NOT ever to announce what was the contribution to the art. In his drafting book, Paul Cole suggests a patentable invention can be seen as “A difference that makes a difference”.

        I like to think that the current cases at CAFC and above will raise drafting standards. The days of functional claiming ie claiming the problem to be solved rather than the solution invented by the inventor, are long gone, everywhere else in the world. Within the USA, their days are numbered too, I fancy.

        1. …and the cursory “echo” from MaxDrei on the 0h N0es of “functional claiming.”

          Newsflash: “functional claiming” does not mean what you think it means. Like Ned takes it upon himself to redefine “business method” AS “abstract,” here too is the redefining of “functional claiming” AS “claiming a result.” Rather, “functional claiming” is merely using words connoting “action” as descriptors. Words sounding in action ARE a perfectly legitimate optional claim format, and quite in fact, in certain arts, are the BEST and most clear way of describing the invention (unless of course, you would rather have a several hundred page claim of the type “row 0, sector 0 – rise above median level; row 0, sector 1 – at median level; row 0, sector 3 – below median level….)

  2. So, if the head of a directorate doesn’t have the authority to bind the Army, at least as to discussions held with/through his directorate, who does?

    ACS Milley? Secretary Fanning? President Obama?

      1. Thanks Ned.

        Given the gov’ts position and this ruling and affirmance, perhaps the tens of thousands (or more?) of private companies and individuals who currently have contracts with the gov’t and/or military (or who thought they did) should start looking at such contracts and see if the signatory was a “real” contracting officer or not, and if not, whether it is in their best interests to repudiate the contracts at some favorable point.

        Open up a can of Pandora Box Whoopazz, so to speak.

        Live by the sword, die by the sword, baby.

  3. Dennis, I think this sentence needs to be reworked:

    Although not ‘inherently indefinite’, terms of degree will be found indefinite if they provide some ‘objective boundaries.’

    In the context of your discussion, I’m not sure you want to take it. But as it stands it just muddies the waters a bit. It could be as simple as saying that “terms of degree may be found definite if sufficient ‘objective boundaries’ are provided.”

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