Court Jumps in to Claim Construction and Anticipation Analysis

US07581688-20090901-D00000Homeland Housewares v. Whirlpool Corp. (Fed. Cir. 2017)

In a split opinion, the Federal Circuit  rejected the PTAB’s IPR validity judgment favoring the patentee Whirlpool — holding instead that the challenged claims are invalid as anticipated. Patent No. 7,581,688; IPR No. IPR2014-00877.  Judge Dyk penned the opinion joined by Chief Judge Prost. Judge Newman wrote in dissent.

The underlying claimed invention is an automatically pulsed blender cycle.  The basic idea is to occasionally go through a “deceleration phase” that slows the cutter blade down to a reduced “predetermined settling speed” before accelerating the blade back to the normal operating speed.  The claims require that the settling speed be “indicative of the items in the container having settled around the cutter assembly.”

The basic issue on appeal is whether the prior art (U.S. Patent No. 6,609,821 to Wulf) anticipates Whirlpool’s patent:

The Board determined that Wulf did not anticipate the ’688 patent because its disclosures did not meet the “settling speed” limitation. However, the Board did “not adopt any explicit construction of the term for [its] Final Written Decision,”

On appeal, the Federal Circuit first found that the PTAB should have construed the disputed language:

Just as district courts must, “[w]hen the parties raise an actual dispute regarding the proper scope of . . . claims, . . . resolve that dispute,” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008), the Board also must resolve such disputes in the context of IPRs.

 

In the appeal, the appellate panel then decided to take-on the claim construction and anticipation analysis on its own. The court writes:

Given that the Board did not rely on extrinsic evidence here as to claim construction, we can determine the correct construction of “settling speed” and then determine whether the Board correctly held that Wulf does not meet the limitations of claim 1.

In my view, the court’s statement reprinted above is wrong in so many ways.  Of course the the Board did not “rely on extrinsic evidence” in claim construction — since the board “declined to provide a construction.”  Further, even when the claim construction considered is a question of law and reviewed de novo, the appellate court is still a reviewing court – not a court of first instance. Here, the court reviews substantial intrinsic evidence in making its claim construction determination, and it is merely a legal fiction that the resulting conclusions are not ‘factual interpretations’ that should be based upon more than a review of the appellate docket submissions. . . .

The actual claim construction issue here is somewhat odd – the claim language states that “the speed of the cutter assembly is reduced from the operating speed to a predetermined settling speed . . .  indicative of the items in the container having settled around the cutter assembly.”  The construction offered by the federal circuit here is that the settling speed is “slower than the operating speed and permits settling of the blender contents.”  WOW – good thing that the court provided a construction here since that wasn’t apparent from the claims.

 

31 thoughts on “Court Jumps in to Claim Construction and Anticipation Analysis

  1. Prost and Dyk get it wrong versus Newman? Why am I not surprised?

  2. Several of the comments here are missing the point that [as affirmed by the Sup. Ct. Markman decision] claim construction [the issue here] is a matter of law for judges interpreting the patent language [not a simple fact question] and thus not restricted in IPR reviews by Fed. Cir. judges by the APA [just as they are not restricted by D.C. decisions from “jumping in” on claim constructions].

    Also, simply claiming any means of automatic switching of something previously done manually, without claiming anything novel and unobvious about the automation means, is normally a 103 hard sell, and that made this IPR decision below a bit strange, and vulnerable on appeal.

    1. Claim construction as a matter of law is a good point, Paul.

    2. Paul, Huh?

      Teva Pharmaceuticals USA v. Sandoz, Inc., 135 S. Ct. 831, 574 U.S., 190 L. Ed. 2d 719 (2015).

      1. Good point Ned. Teva does not overrule Markman as to the ultimate decision of claim interpretation by the court, but holds that underlying fact-findings from a District Court are controlled by Fed. Rule Civ. Proc. 52(a)(6) and the appellate court must find clear error for those fact findings to overrule them.
        But the Fed. Cir. seems to me to have always taken the position that claim interpretation based on the language of the patent specification itself is not that kind of underlying fact-finding.
        And FRCP 52(a)(6) does not apply to appeals from the PTAB, which are controlled by the APA.

        1. Paul (NOT an attack),

          How do the rules according to the APA differ from the rules according to FRCP on this point?

          And why would the rules – at the appeal stage in the CAFC forum – be different based on where the matter is coming from?

    3. Yes. The interesting part is the court doing anticipation on its own.

      The court coming up with its own construction isn’t that interesting. Going on to apply it in the first instance is the odd bit.

  3. Having had to read the PTAB killing fields opinions for several years now, CAFC (or at least Dyk and Prost) has adopted their mindset.

  4. 2 thoughts–taking no position on whether the case was rightly or wrongly decided and whether the patent is any good.

    1. I wonder how often the CAFC reverses in favor of the party with the burden of proof. 2/3 of this panel seems like a good draw for a party wanting to kill a patent.

    2. DDC is, of course, right that the CAFC is a reviewing court. But if the record is such that no reasonable factfinder could fail to find the patent anticipated, then the CAFC has to reverse. The court seems to have found that here… Anecdotally, the court seems more confident in cases involving easily understandable mechanical inventions to declare that the record is one-sided in favor of a certain result (or, as some would put it, to engage in appellate factfinding).

    1. Does this not beg the question: “But if the record is such that no reasonable factfinder could fail to find the patent anticipated, then the CAFC has to reverse.

      Apparently the reviewing court is itself deciding that “no reasonable factfinder “fact” and doing so with no other input than their own say-so (and NO checks and balances on that unilateral decision).

      Do you see any issue with that?

      1. I don’t think I understand the question. What a prior art reference discloses to a person of skill in the art is a question of fact. Factual findings are reviewed deferentially on appeal, but they’re still reviewed.

        I don’t follow what you mean by “inputs,” or “checks and balances.” The PTAB’s decision and parties’ evidence and arguments (which includes the prior art references) might be called “inputs” in this appeal. The deferential standard of review and the three-judge panel might be “checks and balances,” but I’m honestly confused by the question.

        1. The PTAB’s decision and parties’ evidence and arguments (which includes the prior art references) might be called “inputs” in this appeal.

          And of course they are “inputs”. As is the specification. As is common sense and understanding of basic principles perfectly understood by most humans above the age of 12.

      2. Yes. That test does not apply to claim construction. See 7 above.

        1. Thanks Paul – your answer actually aligns with my post at 5.1.

        2. Right. The court (a) comes up with its own construction, and then (b) goes on to apply its new construction and to find the claims anticipated–rather than remanding for the PTAB to deal with the new construction and address anticipation in the first instance. (b) is the interesting aspect of this decision and what I mean to refer to in my comments.

  5. Well Dennis, I was part of a case where the Federal Circuit sua sponte took up a claim construction issue not raised on appeal, not briefed, decided it without any input from expert or lawyer, reversed and remanded.

    Smacks of due process — not.

    I was told by my colleagues at the time that the Federal Circuit has a particular reputation for rough justice because they pursue agendas, and really could care less about the rights of the parties before them.

    1. sua sponte took up a claim construction issue not raised on appeal, not briefed, decided it without any input from expert or lawyer

      Please share the rest of the story. What was this “claim construction issue”?

      I mean it must have been very very important and very very complex if both lawyers and experts were required in addition to three judges.

      And while you’re at it, how many attorneys and judges are required to satisfy “due process” where the issue is whether gravity generally applies to the contents of blenders that are made and sold on planet Earth? You think two lawyers and two experts? Or else the Constitution has been besmirched somehow

      You must be really serious about the Constitution and everything it stands for. Sure you are.

      1. Years before the appeal, the disctrict court had decided the claim element was MPF. The issue of infringement was appealed. The Federal Circuit decided that the claim element was not MPF because in its view the claim recited structure.

        The record did not include the ruling of the court below on this issue, nor the testimony of the three experts — theirs, ours and the courts.

        The Feds found facts where they always find them.

    2. At least you got a remand and not a final (unanswered and unanswerable) disposition.

  6. Cue up the howling from the patent maximalists about how this travesty at the PTAB never would have happened “in an Article III court” because “due process.”

    And totally “rigged” against patentees!

    [crickets]

    1. MM, you are consistently insensitive to due process issues. Perhaps we ought to call you Star Chamber Malcolm?

      1. Enjoying that swagger yet, Ned?

      2. you are consistently insensitive to due process issues

        LOL

        Because I don’t agree with Ned Heller about the amount of “due process” that needs to be extended to the wealthiest people on earth as they go about trying to “monetize their patents.” I’m so “insensitive”!

        Meanwhile Ned Heller supports the systematic disenfranchisement of huge swaths of the voting public — the least wealthy, mainly — because they don’t have the “proper ID” required by the freshly passed statute (freshly passed by Republikkkans, invariably — go figure).

        But Ned’s not insensitive. Nope. He’s a very very sensitive man.

        1. Someone who apparently decides on differing “amounts of due process” that “need to be extended” based on his own self-anointed views of “wealthiest” and “trying to monetize their patents”….

          And yet, he seems oblivious to the position of his OWN ego, all the while criticizing that very trait in others…

          Stultifying.

          1. Someone who apparently decides on differing “amounts of due process” that “need to be extended” based on his own self-anointed views of “wealthiest” and “trying to monetize their patents”

            Nothing “self-anointed” about those views. Just facts well-known to everyone. Definitely not helpful facts for you, but there’s nothing you can do about that. (<– you still haven't figured this out? LOL).

            More importantly, determining what process was/is "due" has always been dependent on the means available to the entity being "processed" and the impact of that process on the entity. For example, public defenders exist for reasons that don't apply to pro se inventors.

            Basic stuff.

            You really do have a difficult time avoiding the false equivalencies, "anon". And we all know why.

            1. Nothing “self-anointed” about those views. Just facts well-known to everyone.

              Pure balderdash. The part of the phrase “due process” of “due” has NO differing levels based on ANY of your ISMs.

              This has ZERO tie to your attempted spin of “dependent on the means available to the entity.” Due process is NOT means-dependent, with different levels based on the pecuniary levels of differing groups looking at the otherwise same issue.

              Accommodations for indigenous peoples notwithstanding – such are NOT an indicator of the underlying “due process.”

              You have this concept badly misunderstood.

  7. I guess it’s a good time to question whether Judge Newman has operated a blender in, say, the last 40 years. Stuff settles when you reduce the speed? I guess it’s easy to forget after a few weeks go by.

    These are the same jurists, of course, whose understanding of the history of computing is based on their super accurate and relevant memories of the neato devices they could afford when they were undergrads. Because that’s how technology works. It’s not “real” until you can get it cheap from Walgreens.

  8. The construction offered by the federal circuit here is that the settling speed is “slower than the operating speed and permits settling of the blender contents.”

    Which is a perfectly reasonable but very broad construction and not very different at all from the constructions proposed by the parties. Still impossible to believe the Board found no anticipation by Wulf, which taught an automated blender routine including higher and lower speeds, given this:

    In order to evaluate whether Figure 25 anticipates, we must determine what Figure 25’s “low” speed means. For this, we look to Wulf’s specification which teaches two relevant characteristics of “low” speeds. [I]
    n Wulf, the term “low speeds” appears only once in the specification, where the background teaches that “[p]ulsing the motor on/off or at high and then low speeds permits the material being blended to fall back to
    the region of the cutting knives thereby improving the blending or mixing of the material.

    Why on earth is there a need to analyze this further? An “expert” (LOL) was actually relied upon to discuss the fact that when you slow the cutting speed of the blender blades down down the material that is being processed tends to settle because — OMG — gravity acts on the contents of blenders! Someone call the Nobel committee.

    The patentee’s “expert” was apparently a shill whose primary expertise was in pretending that he was born yesterday. Read the disclosure in the previous paragraph and then try to believe that the patentee’s “expert” said this: “Wulf only discloses items settling when the motors stops.”

    Sanctions absolutely appropriate here. Where are the sanctions?

    Also, I’ve said it before and I’ll say it again: Newman is a j0 ke and her track record on understanding the facts and the law is miserably poor. She’s great at kicking up dust, though. No wonder that she tends to gravitate (or settle?) around attorneys who play the same games.

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