Interpreting Claims — Claiming Elements from the Background Art

DISCLOSURE: Back in 2013/14 I talked with the attorneys for Cave Consulting about serving as an expert witness for the underlying district court litigation. I ended up not doing any work related to the case. – DC

by Dennis Crouch

Cave Consulting Group, LLC, v. OptumInsight, Inc. (Supreme Court 2018) [20181102114930196_Cave Consulting v. Optuminsight Inc. Petition for Writ]

This pending case before the Supreme Court focuses on fundamental questions of how to interpret patent claim scope. 

Cave Consulting’s U.S. Patent No. 7,739,126 covers a method of determining physician efficiency that includes, inter alia, a step of calculating a “weighted statistic” associated with various “episodes of care.”  The broader claims are not expressly limited to the particular statistic used, while the dependent claims require alternatively require “indirect standardization” (Claim 25) or “indirect standardization” (Claim 26) of the weighting.  To be clear, the specification spends substantial time focusing on indirect standardization in detail, whereas direct standardization is a method known in the prior art.

In its case against Optum (a subsidiary of UnitedHealthcare and my insurance provider), the patentee argued that Optum used the direct-standardization weighting as claimed and a jury found agreed with a $12 million damages award.

On appeal the Federal Circuit shifted claim construction and reversed — holding that the independent claims implicitly excluded direct-standardization weighting. In its holding the court relied upon its precedent in Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011) in stating that claims should be construed to “tether the claims to what the specifications indicate the inventor actually invented.”

Optum had argued disclaimer, but could not point toward any “clear and unmistakable” disavowal of scope or lexicographical redefinition of the terms. Rather, the court simply found that the best construction of the claimed “weighted statistic” excluded the traditional direct-standardization weighting.

Cave does not identify, nor do we find, any indication in the ’126 patent’s description that its invention employs direct standardization, and, other than the dependent claims, Cave’s support for including direct standardization comes exclusively from the description of the prior art methods in the background section.

Although there might ordinarily be a claim differentiation argument, the court found it weak here because the aforementioned dependent claims had been added during prosecution.

[I]n view of the specification’s consistently limiting description, we conclude that these interpretive canons, despite the later-added dependent claims, cannot overcome the claim scope that is unambiguously prescribed by the specification.

Now Cave Consulting has petitioned the U.S. Supreme Court to hear the case with the following question presented:

May a court construe a patent claim in a way that contradicts its plain and ordinary meaning by relying on statements in the specification that do not constitute lexicography or disavowal?

Cave Consulting sets up the case as a debate over whether claims control the scope of the rights:

  • When there is a conflict between clear and unambiguous claim language and statements in the specification, the claim language wins. White v. Dunbar, 119 U.S. 47, 52 (1886)(“The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is, and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.”)
  • Howe Mach. Co. v. Nat’l Needle Co., 134 U.S. 388, 394 (1890) (“Doubtless a claim is to be construed in connection with the explanation contained in the specification . . . but, since the inventor must particularly specify and point out [what] he claims as his own invention or discovery, the specification and drawings are usually looked at only for the purpose of better understanding the meaning of the claim, and certainly not for the purpose of changing it, and making it different from what it is.”);
  • Cimiotti Unhairing Co. v. Am. Fur Ref. Co., 198 U.S. 399, 410 (1905) (“In making his claim the inventor is at liberty to choose his own form of expression, and while the courts may construe the same in view of the specifications and the state of the art, they may not add to or detract from the claim.”);
  • Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 510 (1917)(“It is to the claims of every patent, therefore, that we must turn when we are seeking to determine what the invention is . . . .”);
  • Smith v. Snow, 294 U.S. 1, 11 (1935) (“We may take it that, as the statute requires, the specifications just detailed show a way of using the inventor’s method, and that he conceived that particular way described was the best one. But he is not confined to that particular mode of use, since the claims of the patent, not its specifications, measure the invention.”);
  • Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 336 U.S. 271, 277 (1949) (refusing to narrow the unambiguous claim language based on the specification, noting that the Court has “frequently held that it is the claim which measures the grant to the patentee.”).

As you can see, this is an important area of jurisprudence that the Supreme Court has discussed on multiple occasions — increasing the odds of certiorari.

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Richard Brophy and Marc Vander Tuig of Armstrong Teasdale filed the petition on behalf of Cave Consulting.

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I’ll note here that it is cases like this that discourage patentees from including any background section at all.

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34 thoughts on “Interpreting Claims — Claiming Elements from the Background Art

  1. 12

    Claim 26 requires direct standardization.

    26. The method in claim 22 wherein:
    the calculating of weighted episode of care statistics across medical conditions utilizes direct standardization.

  2. 11

    For an actual patent law discussion point, I wanted to NOT take the following merely at face value:

    Although there might ordinarily be a claim differentiation argument, the court found it weak here because the aforementioned dependent claims had been added during prosecution.

    1) why should “added during prosecution” matter at all?

    It’s not as if claim amendments added during prosecution somehow have to meet different laws to earn the status of grant, and arguably have to pass the additional requirement disallowing the addition of any new matter.

    2) is this an extra-statutory judicial intrusion based on some “feeling” that the USPTO does not police the “no new matter” rule well enough?

    If so, this appears to fall into the category of trying to make two wrongs into a right.

    3) is there some other (cogent) basis for distinguishing a granted claim to be either an “as filed” claim or to be an “introduced during prosecution” claim?

    I would love to hear such (informed) views.

    1. 11.1

      The actual language used adds some context and frankly has a different thrust than DC’s summary of it. They were not saying that a later-added dependent claim has different standards.

      The specification is throughout critical of direct standardization; a savvy prosecuter apparently recognized that the independent claims viewed as against this spec could rightfully be viewed as not reading on a method utilizing direct standardization and tried to patch it up a bit via amendment.

      However, in view of the specification’s consistently limiting description, we conclude that these interpretive canons, despite the later-added dependent claims, cannot overcome the claim scope that is unambiguously prescribed by the specification.

      So, how do you interpret a claim in these 3 scenarios:

      1. – Amendment to add claim differentiation in a way that clearly conflicts with the spec.

      2. – Amendment to add claim differentiation in a way that does not appear to conflict with the spec.

      3. – Original claim presentation with claim differentiation in a way that clearly conflicts with the spec.

      Case 2 is easy, SQA.

      My question would be if anyone thinks case 3 is a harder call than case 1, when it comes to determining if the claim with the differentiating matter validly reads on a method including the differentiated matter.

      1. 11.1.2

        Mellow, I am not seeing how your reply answers my questions.

        If you want to answer (or ask) different questions, no prob – just do so not in response to the points I presented.


          Sorry if I’ve broken some sort of netiquette rule by going off on a tangent, but I do think I answered your question in my comment by pointing out that the part you focused on by quoting

          “court found it weak here because… added during prosecution”

          was not a good description of what happened in this case.


            Thanks Mellow (no big deal on “netiquette”), but whether or not that was a “good description” is not an answer to my questions based on that description.

            Perhaps then, my questions may turn into being merely “hypotheticals” but they be very different from the tangent you embark upon.


              Well, the only thing I have on your question about why added during prosec should be relevant is that the amended matter clearly contradicts the originally filed spec (taking the CAFC opinion at face value), whereas an originally filed claim must be a part of the originally filed specification.

              So at least in the latter case you have all-original matter contradicting itself. Vs. in the case of amendment, you have a post-hoc rationalization contradicting the originally filed specification.

              That’s the only reason I see for potentially giving less weight to a claim amendment vs. an originally filed claim.


                Thanks Mellow, as to “that the amended matter clearly contradicts the originally filed spec,” then the proper avenue would be a rejection of new matter (currently ham-fisted through 112) – and this does NOT mean that claim differentiation argument “deserves” somehow to be treated more weakly.

                And as I pointed out, a claim being granted carries NO difference in the presumption of validity for that claim being different between an original claim and being an amended claim.

                Logically, the case for “claim differentiation” being treated differently is itself beyond weak.

  3. 10

    Here are some more, some of them are not cited in the cert petition: Some of the most striking and often quoted expressions by the U.S. Supreme Court stating the general rule: limiting a patent claim to its express terms/words are to be found in the following cases (please note however, not in all of them was the patent’s claim narrowly limited): Merrill v. Yeomans, 94 US 568; Keystone Bridge Co. v. Phoenix Iron Co., 95 US 274; Lehigh Railroad Co. v. Mellon, 104 US 112; Burns v. Meyer, 100 US 671; Fay v. Cordesman, 109 US 408; Yale Lock Mfg Co. v. Sargent, 117 US 373 378; White v. Dunbar, 119 US 47; Dryfoos v. Weise, 124 US 32; Huber v. Nelson Mfg Co., 148 US 270 291; Cimiotti Unhairing Co v American Fur Co 198 US 399; and the infamous case McClain v. Ortmayer, 141 US 419.

  4. 9

    This is indeed an interesting list of SC cases. However, the most important case is missing, discussing the dual purpose of the words in claims. See Evans v. Eaton, 7 Wheat 356; another instructive case on this point is Union v. Desper, 101 U.S. 332; and the seminal Mitchell v. Tighmann, 86 U.S. 287 case citing back to O’Reilly v. Morse, 15 How. 62, the latter has an extensive discussion on this point as well (albeit dicta).

  5. 8

    The elephant in the room is that the jury was asked whether claim 22, which does not specify indirect standardization, had sufficient support in the written description, and the jury said yes. The district court refused to overturn the jury verdict.
    This case is a good example showing that claim interpretation was improperly classified as an ultimate question of law, allowing too easily the appeal court to change it. It is incoherent to say that claim interpretation based on the description (intrinsic evidence) is a question of law, and that invalidity of a claim for lack of written description is a question of fact.

  6. 7

    In the absence of any recitation of steps that would result in a new or non-obvious transformation of matter, a method of “determining a score” is a quintessential example of ineligible g@ rb@ge.

    Maybe it’s time for Breyer to write something up a la Metabolite Labs. Just some helpful advice for the patentee to consider before they try to assert this cr @p0la again.

    I wonder if there are other licensees? If so, time for some efficient breaching.


          Malcolm can dissemble.

          (maybe address the point instead of the usual non sense from you, eh Malcolm? – this “Billy” thing is more than a bit meaningless)

    1. 7.2

      Breyer? 🙂 Yes he can tell us how the Pharaoh used to have the slaves move the ancient stones to better fit together and sometimes pull out series of stones. This clearly anticipates all DNA work.

  7. 6

    This case might have been a good one for the CAFC to use for reviving the legendary “reverse doctrine of equivalents”.

    1. 6.1

      The reverse doctrine has been classified a question of fact. For an appeal court, it is easier to rely on claim interpretation, which was initially described as a “mongrel practice” in Markman, but ended up an ultimate question of law.

      1. 6.1.1

        The reverse doctrine has been classified a question of fact.

        I don’t really care about who “classified it” or when. It’s an equitable doctrine and no facts in this case would need to be changed to find this junk patent unenforceable under the doctrine, at least not against this alleged infringer.

  8. 5

    It seems unfair to not mention this gem from the disclosure: “The system of the present invention uses an indirect standardization technique”.

    1. 5.1

      “The system of the present invention uses an indirect standardization technique.”

      “Yes, the specification says that. But it doesn’t say that it always uses an indirect standardization technique, or that it uses an indirect standardization technique exclusively.” <— pretty sure the CAFC has used word games like this in the past to reach the opposite result.

      In addition to being ineligible and obvious, it seems like the claims should also fail under 112 when they conflict with the teaching in the specification.

      What in the heck actually happened here? Seems like the CAFC appreciated that the patent was total g@ rbage and maybe also that the defendant's attorneys were incompetent …? Who wrote the CAFC opinion?

  9. 4

    Re: “..this is an important area of jurisprudence that the Supreme Court has discussed on multiple occasions — increasing the odds of certiorari.”
    I don’t know how powerful an odds-guide that is or not, but I did note that all those cited Sup. Ct. cases are real antiques – does that increase the odds?
    However, I fear that if the Supremes do take cert in this case that it could be the kind of case many patent attorneys would wish had not been taken after they read the decision. Look at the actual claim language in Graver Tank, for example, vis a vis the Question Presented here of: “May a court construe a patent claim in a way that contradicts its plain and ordinary meaning?”

  10. 3

    The fact that insurance companies are being sued for patent infringement and are losing is how you know that the US patent system is a farce.

  11. 2

    This is another 9-0 beat down of the CAFC that is a long time coming.

    But how did Optum manage to not get these claims declared ineligible or invalid? Seems like legal malpractice. Also seems like a good case for CBM destruction.

    I’m practicing the claims right now, by the way. Fun! Come get me.

      1. 2.1.1

        Nothing “tough” about ignoring this pile of ineligible d00 d00.

        It’d be tougher not to ignore it.


          You absolutely miss the point.

          It is “Internet tough guy of you” to boast of coming after you, as all you provide is an internet pseudonym.

          This is not to say that I want you to “our” yourself, as I really do not care at all who you really are, but you just cannot be that dense to NOT realize just how empty your “bold” proclamation is.

          Oh wait, this is Malcolm…

  12. 1

    This reminds me of the adage: Be careful of what you ask for as you might get it

    (and also brings to mind the biscuits in the oven case)

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