Conflicting Canons of Claim Construction

Blackbird Tech LLC v. ELB Electronics, Inc. (Fed. Cir. 2018)

In a short order, the Federal Circuit has denied ELB’s petition for en banc rehearing in this case — the petition had raised particular issues regarding the proper methodology for construing patent claims.

  1. Construing claim terms in the context of the specification and preamble; and
  2. Construing claim terms in a way that provides a scope commensurate with the disclosure.

In the original Federal Circuit opinion from July 2018 the Federal Circuit vacated a lower court judgment of non-infringement after finding that the District Court had improperly read a limitation from a disclosed embodiment into the claim.

Blackbird Tech’s US patent at issue (7,086,747) is directed to an LED light fixture designed to retro-fit to the space of old tubular fluorescent light fixture having a ballast cover.  The claims particularly require a “housing having an attachment surface.”

Although not required expressly by the claims, the district court concluded that the attachment surface must include a fastener to connect the attachment surface to the ballast cover — since that was the only way shown by the patent.  On appeal, however, the Federal Circuit rejected that construction:

We do not agree that this fastener limitation should be imported into the claim.

There is no suggestion in the specification or prosecution history that this fastener is important in any way that would merit reading it into claim 12. In fact, in describing the embodiment in Figure 5, the specification explains that the fastening can be achieved by “many different types of fastening mechanisms” including “an adhesive strip” (think tape), “a magnet, clips, screws, etc.”  It never refers to this run-of-the-mill fastener as the “present invention” or “an essential element” or uses any other language that would cause the ordinarily skilled artisan to believe that this fastening mechanism is an important component of the invention or that it is critical to the invention for any reason.

In the original panel decision, Judge Moore penned the majority decision and was joined by Chief Judge Prost.  Judge Reyna filed a dissent — concluding that the “attachment surface” limitation is an element of the claimed retrofit function of the invention and should be attachable to something in the old housing. Judge Reyna writes: “The plain language of claim 12, read in the context of the specification, implicitly requires that the attachment surface be secured to the ballast cover to achieve the retrofit function.”

The basic debate here stems from the reality that the canons of construction conflict with one another.   The unfortunate result though is the old-fallback that claims mean what the Federal Circuit says they mean.

[BBT En Banc Denial][Original Panel][En Banc Petition]

25 thoughts on “Conflicting Canons of Claim Construction

  1. 8

    Reyna — in regards to claim 12 — appears to not grasp the specification or what the claim term “comprising” means:

    12. An energy-efficient lighting apparatus for retrofit with an existing light fixture having a ballast cover, comprising:

    a housing having an attachment surface and an illumination surface;

    a plurality of illumination surface holes in the illumination surface;

    a circuit board comprising a plurality of light-emitting diodes, wherein the circuit board is positioned adjacent the housing so that the plurality of light-emitting diodes protrude through the plurality of illumination surface holes in the illumination surface;

    and
    a fastening mechanism for securing the attachment surface of the lighting apparatus to the illumination surface, wherein the lighting apparatus is coupled to a wall switch and wherein the illumination of the light-emitting diodes is controllable based upon the position of the wall switch

    1. 8.1

      Thanks for posting that claim. I see in it the words:

      “wherein the lighting apparatus is coupled to a wall switch”

      So is it really a claim to a retro-fittable lighting apparatus, or is it one that is directed to one that has already been retro-fitted?

      1. 8.1.1

        The fittED (by way of being couplED) may dictate the fittABLE.

        To your comment though, you point out a feature that impacts any infringement analysis: the claim requires the state of already being coupled. Selling the unit (in and of themselves will not constitute (direct) infringement, and need rely on contributory infringement, with the main infringer being the end customer.

        As I noted, there is plenty “bad” with the claims in this patent — which makes how badly off Malcolm and Random are even more noticeable.

  2. 7

    Re Fed. Cir. cases on claim construction and:
    “1. Construing claim terms in the context of the specification and preamble; and
    2.Construing claim terms in a way that provides a scope commensurate with the disclosure.”
    N.B. Several of these decisions use the equally loose term “in light of the specification” instead of “in the context of the specification.”
    It could be argued that No. 2 is an additional [and 112] special specification requirement for generic or overbroad claims with insufficient spec examples. Also, there is a No. 3 special claim reading 112 requirement for “means-function” claims.

    1. 7.1

      What you are saying about the “commensurate in scope” being a special case makes a lot of sense

      Having the claims be “commensurate in scope” with the specification in all cases, sounds way too much like “importing limitations from the specification into the claims,” which is of course improper.

      Here it seems like the defendant/apellee was trying to do just that. It is clear from the spec that while some embodiments required the attachment surface to be secured to the ballast cover, it could have been secured to a separate illumination surface. For example:

      “The lighting apparatus 500 includes a housing 528. In some embodiments, the housing 528 is made of plastic, although the housing 528 may be made of other materials. The housing 528 is dimensioned so that it may be installed to an existing ballast cover. The housing 528 includes an attachment surface 530 and an illumination surface 532. In typical operation, the attachment surface 530 is secured to the ballast cover. The illumination surface 532 is opposite the attachment surface 530. As used herein, the terms “securing” and “secured” do not require direct contact. In other words, the attachment surface 530 of the housing 528 may be directly touching the ballast cover. Alternatively, the attachment surface 530 of the housing 528 may not be directly touching the ballast cover.”

      Because the plain language of the claims do not require the attachment surface to attach to the ballast cover, AND this is expressly permitted by the specification, construing claim 12 to require the attachment surface to attach to the ballast cover would be importing the specification into the claims.

  3. 6

    Quite apart from any consideration of the fastener element, how in the world were these claims not found obvious?

  4. 5

    Although not required expressly by the claims, the district court concluded that the attachment surface must include a fastener to connect the attachment surface to the ballast cover — since that was the only way shown by the patent. On appeal, however, the Federal Circuit rejected that construction

    And then they went ahead and sua sponte invalidated the claims for lack of written description, right? Because that’s the only possible outcome. If every embodiment of your specification has a limitation, and your claim does not have that limitation, your claim is broader than your specification, and lacks written description support.

    The majority’s construction thus opens the door for the ’747 patent to be subsequently invalidated for failure to satisfy the written description requirement. Stated differently, the majority’s construction is a route towards rendering the patent invalid.

    Oh hey… (checks name) Reyna. Look at you Scalia-in-Lawrence-ing your dissent. Secondary article question: Construction rule that one should construe claims in order to keep them valid – Bad idea, or the worst idea ever? Discuss.

    1. 5.1

      And then they went ahead and sua sponte invalidated the claims for lack of written description, right? Because that’s the only possible outcome.

      No. That is not the only possible outcome.

      In your hurry to express your (faulty) “considered and informed” “no patent for you” 112 “expertise,” you not only get 112 exceedingly incorrect (in legal theory AND application), the lower hanging fruit of obviousness is glossed over.

      Your “glee” on construction rules is woefully misplaced.

  5. 4

    This is weird. It seems to me to stand only for the idea that some claim construction questions are close calls. The district judge and the dissenting judge came out one way; the two majority judges came out the other way. The majority is a bit more focused on the claim language and the specific words used; the dissenter and district judge place a bit more importance on “context” in the specification. It’s not much different from statutory interpretation cases in that way.

    Also — what’s this “canon” about? “Construing claim terms in a way that provides a scope commensurate with the disclosure.” It seems made up, as phrased in the petition. The citation to Gentry Gallery on page 2 of the petition is a bit of a red flag.

    1. 4.1

      Glad somebody else brought that up because I was equally confused when I saw that.

      There is no requirement that the claims be “commensurate” with the disclosure. Most claims are narrower than the disclosure because of prosecution history. Construing the claims so that they are “commensurate” with the disclosure would be reading the specification into the claims and ignoring the prosecution history.

      Of course, if the claims are broader than the disclosure, then they lack WD and enablement, but that really isn’t a cannon of claim construction as much as it is a requirement under 112.

      So yea. I think they made that up…

      1. 4.1.1

        I think you will find that “commensurate with” or “in light of” the disclosure is more commonly used re claim interpretation when the “plain meaning” of a particular word in a claim may vary depending on the field of technology of the specification. [Just as dictionary definitions of many words can have different definitions for different technologies or usage contexts.]

  6. 3

    Word games. Did the infringer use the prior art, the invention, or a new invention?

    Designing around a patent and designing around the claims in a patent should be the same task.

  7. 2

    The CAFC, bending over backwards to lend a helping hand to a patentee who hired an incompetent attorney:

    In fact, in describing the embodiment in Figure 5, the specification explains that the fastening can be achieved by “many different types of fastening mechanisms” including “an adhesive strip” (think tape), “a magnet, clips, screws, etc.” It never refers to this run-of-the-mill fastener as the “present invention” or “an essential element” or uses any other language that would cause the ordinarily skilled artisan to believe that this fastening mechanism is an important component of the invention or that it is critical to the invention for any reason.

    You know what else the specification never does? It never says that you don’t need any fastener at all.

    Also, why use the phrase “attachment surface” when — according to the CAFC — nothing needs to be “attached” (i.e., “fastened”)? Wouldn’t a reasonable person simply use the phrase “surface” or “contacting surface” if they wanted to include non-attaching and non-fastening surfaces within the scope of the claim?

    Now let’s pause and wait for one of the maximalists to show up here and scold everyone who disagrees with this decision as being insufficiently technically literate to understand the rocket science involved here.

    1. 2.1

      ?

      Did you have a point to your rant?

    2. 2.2

      You know what else the specification never does? It never says that you don’t need any fastener at all.

      That just means that the office let through an overbroad claim, not that the claim construction was wrong. It looks to me like this is the correct construction, but I wouldn’t call it “bending over backwards to lend a helping hand to a patentee”, I’m pretty sure it dooms the claim.

      1. 2.2.1

        Every “housing” under the sun has a “surface”. Every surface under the sun is susceptible of “attachment” to something else. Which means that “attachment surface” has a meaning not one iota narrower than “surface”.

        It is a mystery to me how the dissent comes to the idea that the claim requires the presence of a ballast cover. Not just that even. It seems that it must be “attached” to the attachment surface. Weird.

        1. 2.2.1.1

          Which means that “attachment surface” has a meaning not one iota narrower than “surface”.

          By your logic, since “every housing under the sun has a surface” and every surface is an attachment surface, the claim language “housing having an attachment surface” is coextensive with “housing.” I disagree. If surface was sufficient to achieve the scope, then the claim would have said surface. Instead the claim qualified the word “surface” with an adjective. An adjective, by definition, modifies the word it applies to. It’s not appropriate to ignore claim language.

          That being said, it doesn’t follow that because it limits the claim that it limits the claim to a fastener (and, though it’s hardly relevant, I take issue with the idea that all surfaces must be attachment surfaces, regardless of what he tried to claim) just because that is something in the spec that might fit the terminology. If the terminology isn’t clear its a 112b. If it’s non limiting (and thus the scope of the claim is broader than all embodiments) it’s a 112a. The fact that four judges can look at the issue and be split on what the scope is suggests its a 112b.

          Regardless, I haven’t read the spec and Dennis concludes that “Although not required expressly by the claims, the district court concluded that the attachment surface must include a fastener to connect the attachment surface to the ballast cover.” ‘Although not required expressly by the claims’ is sufficient to decide the issue, as I don’t believe in implicit claim language. Either something is defined to have a quality or it is not, it is not implied to have a quality. If the spec doesn’t link a fastener to the terminology “attachment surface” then the court can’t go hunting around to dream up that link.

          1. 2.2.1.1.1

            OK. To accommodate your concern, that an adjective MUST be held to narrow its noun, I will go with you, that not every “surface” is an “attachment surface”.

            One example: the surface of the “housing” that is provided by the droplet-free atmosphere that surrounds a cloud.

            So we can have it, that “attachment surface” is narrower than “surface”.

            1. 2.2.1.1.1.1

              Max: ” Which means that “attachment surface” has a meaning not one iota narrower than “surface”.”

              I respectfully submit that “attachment surface” distinguishes that surface from other surfaces, such as, for example the illumination surface.

              My micrometer measures that at about 17 iotas narrower that “surface.”

              1. 2.2.1.1.1.1.1

                Yes, but does it weigh less?

          2. 2.2.1.1.2

            It is abundantly clear from reading the spec that the distinction intended is one merely to separate the attachment surface from the illumination surface.

            Reading the spec does help.

        2. 2.2.1.2

          I think maybe the dissent comes to that idea from these words:

          “for retrofit with an existing light fixture having a ballast cover”

          1. 2.2.1.2.1

            The dissent is simply off.

    3. 2.3

      There is plenty wrong with these claims (think obvious as all get out); but notably, BOTH Malcolm and Random completely miss the boat here.

  8. 1

    How would J. Renya even have the slightest idea of what should and shouldn’t be imported from a patent application?

    He knew nothing of patent law when appointed. He knows nothing of science/technology/innovation.

    What in the world is he doing there? It is a disgrace. Thanks Obama.

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