“Exemplary Embodiments” as Boiler Plate

US08342852-20130101-D00009Skedco v. Strategic Operations (StOps) (Fed. Cir. 2017)

The district court sided with the accused-infringer StOps – finding (on summary judgment) no-infringement of Skedco’s exclusively licensed U.S. Patent No. 8,342,852 covering a “trauma training system.”

The system is designed to replicate trauma, and includes a pump in fluid connection with a valve that is in connection with a wound site “to simulate a hemorrhage.”

18. A trauma training system … comprising: a collapsible reservoir …, a pump in fluid communication with … said reservoir, at least one valve in fluid communication with said pump, a controller connected to said pump and said at least one valve, and at least one wound site detachably in fluid communication with said valve, wherein fluid is provided to said wound site to simulate a hemorrhage.

The problem for the patentee is that, while the claim appears to separately claim the pump and the valve, the accused device physically links them together – “these valves reside within the pump housing.”  In addition, although the claim requires a controller connected to both the pump and the valve, the accused device’s controller is only connected to the pump.

On appeal, the Federal Circuit has vacated the judgment – finding that the district court erred in its claim construction.

First, although the patent requires a pump in fluid connection with a valve, the federal circuit found that “nothing in the claims requires the pump and valve to be physically separated.”

We see no reason why a device that moves fluid cannot contain another device that regulates flow within it. A pump does not cease moving fluid—i.e., being a “pump”—just because an internal valve adjusts fluid flow. … In short, we agree with the district court that a “pump” is not a “valve,” id. at 1108, but nothing in the claims or specification prohibits a valve from residing within a pump.

Of course, none of the embodiments teach a pump with internal valve.  Responding to that argument, the court appeared to look back primarily to pre-Phillips cases:

“[I]t is the claims, not the written description, which define the scope of the patent right.” Laitram Corp v. NEC Corp., 163 F.3d 1342 (Fed. Cir. 1998). Patents do not need to include drawings of particular embodiments in order to claim them. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002). For this reason, a claim is not limited to inventions looking like those in the drawings. MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007). This guidance is especially apt here because the patent refers to the drawings to which StOps points as “exemplary embodiment[s].”

Looking at the second non-infringement justification, the district court had construed the claim to require a controller be actually connected to both a pump and a valve – based upon the requirement of “a controller connected to said pump and said at least one valve.” ON appeal, the Federal Circuit found it was improper to require an actual physical connection between the controller and the the valve:

[W]e think that the correct construction of “a controller connected to said pump and said at least one valve” is “an activation mechanism configured to control a pump and a valve to which it is directly or indirectly joined, united, or linked.”  . . . It [] incorporates the specification’s envisaged indirect connections. . . .

As far as the district court’s “physical” limitation is concerned, we see no reason to import such a requirement into claim 18. The claimed “controller” is merely “an activation mechanism,” and nothing limits this activation to physical channels. Indeed, the ’852 patent includes several embodiments where a remote controller 160 activates a valve. This activation must occur at least in part through a nonphysical connection. See id., figs.3, 9A, 9C. We therefore hold that it was error to limit the claimed connection to physical connections.

Thus, reasoned the district court, the BPS does not have “direct,” “independent,” and “physical” connections between the controller and the valve such that the valve is “controlled by the controller.” Id. at 1105–06, 1108. The court also ruled as a matter of law that claims 18, 19, and 20 were not infringed under the doctrine of equivalents. Having granted summary judgment of noninfringement, the court dismissed Skedco’s complaint. This appeal followed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). controller.” Id. at 1105–06, 1108. We hold that it was error for the district court to have included some of these additional limitations into claim 18.

On remand, the district court will be asked to consider infringement under this now broader construction.

 

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

34 thoughts on ““Exemplary Embodiments” as Boiler Plate

  1. Other than the “controller” claim element, the claimed dummy looks the same as the ones we used in the Army almost 40 years ago.

    It took the Army 40 years to think of adding automatic controls to regulate the faux blood flow?

  2. Why do we need to point out that the figures are exemplary embodiments, when the law deems them to be exemplary embodiments?

  3. “The problem for the patentee is that, while the claim appears to separately claim the pump and the valve…”
    Dennis: Are you seeing something that I am missing? With only a decade of experience as a nuclear engineer (lots of pumps and valves), and two decades of experience as a patent attorney (more pumps and valves), I see nothing in the claim language that requires that the recited pump and the valve be provided in discrete housings.
    This case just seems like one of those cases where the district court judge was mechanically disinclined, and was routinely corrected.
    Granted, had I written the patent, I would have hoped to provide some prophylactic language (the valve and pump maybe discrete components, or they may be integrated into a single housing), but the concept that a valve, wherever it might be disposed, is part of a pump, as though the merger of the two mystically eliminates one of the components, is a misunderstanding that might not be foreseen by a good patent attorney.

    1. DC – My main trouble with this case is that I expect a separate set of appellate judges would have come out with a different decision.

      1. That is worrisome. Is that because another panel might get confused, or is there a legitimate engineering basis for different conclusion. I don’t consider myself to be a dogmatic, but there is no other conclusion. A pump with an internal valve is still a pump in fluid communication with a valve (unless the valve is just encased in the pump housing, not interposed in the inlet or outlet flow path). If I put myself in the position of an artisan (a phosita of pumps and valves, which I once was), any counterarguments are absurd, and cannot be adopted without error (or, maybe, some inane argument in the prosecution history).
        Still, the district court’s misunderstanding highlights the need to draft patents with mention of every conceivable split hair, until the budget runs out.
        There may be pumps (peristaltic pumps) which operate to isolate the inlet from the outlet when de-energized, so they act as both pumps and valves, and would avoid infringement a la Becton v. Tyco 2009-1053 (a springy hinge is not a spring and a hinge), so that panels might reasonably disagree on infringement under those facts. But in this case we have discrete components sharing a single housing.
        And whatever happened to the rule that “infringement is not avoided by making into one part that which has been shown as two” which might even ensnare the system with a peristaltic pump?

    2. the concept that a valve, wherever it might be disposed, is part of a pump,

      Is the remote controller in your car that you use to open your garage door “part of” your garage door? Is your dog whistle “connected to” your dog?

      1. My garage door is open and my dog is deaf but he is still scratching his head after reading your post at 6.2

  4. Dennis is making a good point here with his title of ““Exemplary Embodiments” as Boiler Plate.” Namely, that boiler plate expressions in patent applications CAN make a difference. Either helpfully [as here], or unhelpfully, like many patents with a “Summary of the Invention” or “The invention comprises…” statements that contain limitations not in all the final claims.

    1. The “invention” statements have long been considered patent profanity Paul.

      Had you kept up your registration number, you would have likely known that.

      1. True, but tragic. No normal human being without law-school-induced brain damage seriously thinks that saying “My invention does X” is somehow an admission that it does nothing else unless you throw in all sorts of weasel-word caveats.

        Engineers and scientists use that kind of “normal” language all the time without thinking they’re making any kind of “admission.” I do realize that this is why legal counsel is so important – but at the same time it’s kind of sad, because in theory at least a patent is supposed to be interpreted through the prism of a PHOSITA (not a PHOSITA with a law degree or patent expertise).

        1. without law-school-induced brain damage

          You misaim, Ken.

          and grossly so.

      2. Not to interfere with your constant misuse of this blog as a hostility outlet, but I took a quick look and found that I was sending out written warnings on that topic since at least 2003. Yet, some folks still have not gotten the message, so it is worth repeating.

        1. You read “hostility” incorrectly.

          Just because a post is not to your liking does not make the post (or the one providing the post) “hostile.”

          All that you are doing there Paul is ad hominem with projected emotions.

          That reflects p00rly on you.

          Whether or not you have been repeating your rather old advice is also more than a bit meaningless, Paul.

          Maybe you should not have surrendered your registration number….

      3. Anon: I think Paul F. Morgan was already in agreement with you on that point, stating that “invention” statements are unhelpful.

    2. Paul: Any thoughts on why the invention statement persists, despite the known issues? Certainly “MY invention does X” implies that if YOUR device which otherwise falls within the claim language does not do X, at least arguably, it is not your invention. Why hand that argument to a potential future infringer just to save a moments thought while drafting.

  5. the district court will be asked to consider infringement under this now broader construction.

    And it will also be asked to consider non-obvious as well. Right?

    Because the claims are a heck of a lot broader now.

  6. To me, this is another example of invention which should have a construction- as much as the claims do.

    Is this invention found in the novelty and value of supplying fluid to a simulated wound site, or is it concerned with an improved way to send fluid to a simulated wound site?

    That construction means everything to PHOSITA (and thus obviousness) and to the importance of the claim elements in creating or enabling the invention.

    If someone makes a trauma simulator software that has bleeding effects at wound sites, do they infringe, even without any pumps and valves?

    I had a plastic reservoir full of fluid to be squeezed thru a tube to simulate a grievous wound as a Halloween toy over 40 years ago. Hollywood clearly has been using these setups for decades. If the invention is not construed, how can we analyze obviousness?

    It seems we are missing a litigation step (now partially supplied by IPR’s and 101 motions in ad hoc proceedings) that should occur early in cases.

    What is the invention? Where is it found within the claims? What is the analogous art, if any? Who are the most appropriate candidates for PHOSITA? What do the words of the claims mean? What is the character of the invention? Is it an information result, an idea; an improvement, a method, system, or structure?

    Years ago, in a world lacking millions of patents, massively integrated design and manufacturing disciplines, and unbelievably expensive patent counsel, we could get away without such a pre-game. Those days are long gone.

    1. a collapsible reservoir …, a pump in fluid communication with … said reservoir, at least one valve in fluid communication with said pump, a controller connected to said pump and said at least one valve, and at least one wound site detachably in fluid communication with said valve, wherein fluid is provided to said wound site

      This part seems like might read on the human body.

      1. Hah! But valves in the cardiovascular system are check valves (anatomists correct me please), which operate independently of the autonomous control system. I am hoping that my arms are not “detachably” in fluid communication with my aortic valve, but everything is detachable with the right weapon.

    2. Yeah. Claim 18 comes pretty close to reading on a water bed pump.

      link to waterbedoutlet.com

      Just call the tub you place the garden hose in a wound site and the guy in the video a controller.

      There are likely IV, toothpaste, hand lotion, soft serve or ketchup pumps that could be cited too.

    3. …pre-game…?

    4. Martin, “what is the invention?” Well, most of the time one can tell when one looks at the prosecution history if it is not clear from the specification.

      But I agree with you that claim construction should no read the novelty out of the claim, just as the DOE should not totally eliminate claim elements.

    5. And, if there is no prosecution history and the specification is unclear, it becomes a battle between the infringer who wants a construction that invalidates or does no infringe, and the patentee who want the opposite. The courts always want to know from the parties why the issues they are deciding in the abstract are important. That is why many courts revisit construction after they have seen the trial briefs.

  7. Many recent Federal Circuit decisions have, either expressly or otherwise, sought to limit the claims to the scope of the disclosure. It is refreshing to see a decision that recognizes the claims can have a scope that is broader than that of the disclosure.

    1. claims can have a scope that is broader than that of the disclosure

      Generally speaking: no. In part, that’s because the claims are part of “the disclosure.”

      The problem here is that the CAFC gave the claims a scope that is broader than … the claims. It’s not 100% clear what’s going to happen on remand but it seems to me that the proper way for the patentee to get the result it desires would be to make an argument under the doctrine of equivalents.

      Learn to draft claims, people. This huge waste of time and money was easily avoidable.

      1. You comments make no sense.

        You appear to object because the Court gave the claims a construction that exceeds the illustrations and detailed description in the specification.

        There is nothing wrong with this.

        As you note, DOE is likely to apply here depending on how the claims were prosecuted.

        What you’re asking for is a 10,000 page specification to support any possible claim breadth, which is why DOE exists, to prevent applicants from having to write such applications.

        If the applicant drafted claims that held to the literal descriptions and illustrations of the specification, as you suggest, the applicant would have already lost.

        1. the Court gave the claims a construction that exceeds the illustrations and detailed description in the specification.

          Except that I expressly stated that the problem is that the “construction” exceeds the language of the claims.

          What you’re asking for is a 10,000 page specification to support any possible claim breadth

          No. What I’m asking for is that if you want your claim to be unlimited with respect to the “connectivity” between interacting components, you don’t use the word “connected.”

          Is that too much to ask? Apparently it is, for a certain class of low rent patent attorneys. But, hey, those checks are cashed and spent already so … bygones.

          1. You stated “the scope is broader than the claims” and NOT “Except that I expressly stated that the problem is that the “construction” exceeds the language of the claims.

          2. There is no such thing in patent law as a claim construction that “exceeds” the language of the claims. Restating non-sense doesn’t make it more convincing the second time.

            The patentee used the transitional phrase “comprising” and the claim includes no exclusionary language.

            The Court held that “fluid communication limitation” was broad and did not exclude physical integration of the two parts that are in fluid communication.

            So, what is your exact compliant here?

            If the defendant’s device includes a pump and valve in fluid communication that meets the literal limitations of the claim. What difference does it make if these components are physically separate or not? The claim is silent as to integration or proximity.

        2. As you note, DOE is likely to apply here

          So is 35 USC 103, assuming there is some bit of sanity left in the system.

          1. Ever notice how your use of the word “sanity” is always in the sense of a patentee getting less?

            Always.

            1. …and Paul wants to comment that he feels that MY posts are h0stile….

              How funny.

  8. Wow. Welcome to the Wild West.

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