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