A Nose of Wax and Splitting Hairs

by Dennis Crouch

Synopsis of this decision

Appellee: The argument proposed is hair-splitting and irrelevant to the purpose of the invention.

Federal Circuit: Hair-splitting is what we do best, and also barring wax noses.

Read more below . . .

CommScope Techs. v. Dali Wireless (Fed. Cir. 2021)

CommScope and Dali are competing in the wireless communications infrastructure market.   Both of the parties are making distributed antenna systems that allow for  seamless wireless communications within a wide area.   CommScope has 30,000 employees and is a Goliath.  Although Dali’s CEO Albert Lee has no sling+pebble, he does have a potential secret weapon. Lee is a former patent attorney.  The two companies have been battling in court and before the PTAB for the past several years.

In 2019, CommScope sued Dali for patent infringement (asserting five different patents); Dali counterclaimed asserting two of its own patents.  A jury agreed, and found that both sides were infringing. N.D.Tex. Chief Judge Lynn denied the cross-JMOL motions and entered judgment.  Dali gets $9 million and CommScope gets $6 million and a permanent injunction against sales of particular distributed antenna systems.  On appeal, the Federal Circuit has reversed in-part – finding no infringement of Dali’s ‘521 patent.

Here, the asserted method claim requires “switching a controller off” as part of a diagnostic training process.  The accused device was shown to switch off feedback from the controller, but not the controller itself.  Although the accused device achieves the same diagnostic results, it uses an approach that is not literally claimed.  Dali called the distinction “hair-splitting” and “irrelevant in light of the purpose of the invention.”  On appeal, the Federal Circuit concluded that hair splitting is what we do in the context of literal infringement.  If the patentee wanted more nuance then it should have presented its case under the doctrine-of-equivalents.

Before the district court, Dali presented only a literal infringement case, and not a doctrine-of-equivalents alternative. Thus, Dali’s argument that the FlexWave switch/controller is effectively “nonoperating” because it is not passing a feedback signal of the power amplifier of interest is irrelevant because Dali failed to produce evidence below to show that the accused controller is literally nonoperating, as the district court determined was required by the claim.

Slip Op.

= = = =

Patentees have to thread a narrow needle during infringement litigation.  The claims must be broad enough to capture the accused infringing activity, but narrow enough to avoid the prior art.  Although infringement and novelty are two separate considerations, they are tightly related.  “That which infringes, if later, would anticipate, if earlier.” Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889).  Often a defendant will attempt to show that its product is essentially the same as the prior art — and offer the conclusion that either (1) we don’t infringe or (2) the patent is invalid.

Here, the court bolstered its non-infringement conclusion by looking at the patentee’s arguments regarding anticipation. In particular, the patentee argued that the prior art reference (Wright) did not anticipate because it did not disclose turning-off the controller.  The failing of the prior art asserted by the patentee lines up neatly with the failing of the infringement evidence asserted by the accused infringer. “Dali cannot simultaneously argue” both infringement and non-anticipation. Slip Op.

“This case falls squarely within the principle that a ‘patent may not, like a nose of wax, be twisted one way to avoid anticipation and another to find infringement.'”

Quoting Amazon (Fed. Cir. 2021).  See also White v. Dunbar, 119 U.S. 47, 51 (1886) (“Some persons seem to suppose that a claim in a patent is like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express.”)

Justice Joseph Bradley penned his “nose of wax” metaphor in the 1886 decision of White v. Dunbar. By that time, the phrase was already well known. As an American example, the Connecticut Puritan Gershom Berkeley included the following quip in his 1692 book titled Will and Doom: “I think no man should make arbitrary laws, which, like a nose of wax or leaden rule, may be twisted which way a man will.” An earlier use of the idiom may be in Robert Burton’s 1621 book The Anatomy of Melancholy.

To see so many lawyers, advocates, so many tribunals, so little justice; so many magistrates, so little care of common good; so many laws, yet never more disorders . . . to see a lamb executed, a wolf pronounce sentence . . . Laws altered, misconstrued, interpreted pro and con, as the Judge is made by friend; bribed, or otherwise affected as a nose of wax, good today, none tomorrow …

Burton. The earliest pushed form appears to be a 1532 work by William Tyndale — arguing about the improper use of biblical scripture.

17 thoughts on “A Nose of Wax and Splitting Hairs

  1. 9

    Curious if you agree with this AIPLA News sentence on this case:
    “Because the key component at issue on appeal (a switch that selects feedback from multiple power amplifiers) operates identically in Wright and CommScope’s accused antenna system, the Court concluded the latter could not infringe Dali’s patent if the former did not anticipate it.”

  2. 8

    Waxing one’s nose hairs seems more trouble than it is worth…

  3. 7

    (“Some persons seem to suppose that a claim in a patent is like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express.”)

    Whoa! Thought for minute there that the CAFC was admitting to how they conduct their 101 / eligibility “analyses.”

    1. 7.1

      I chuckled at that.

  4. 6

    I have not read the briefs, but wouldn’t it all depend on what one interprets as a “controller”?

    If one interprets “controller” as “controller exclusive of its feedback output”, as the Federal Circuit (and maybe the parties) did here, then the decision holds.

    But if one interprets “controller” as “controller inclusive of its feedback output”, or even as the entire feedback loop, then turning off the feedback or opening the loop is literally turning off the controller. Not in a doctrine-of-equivalents sense, but literally.

    It just depends on which portions of the device one chooses to call the “controller”.

    1. 6.1

      “But if one interprets “controller” as “controller inclusive of its feedback output”, or even as the entire feedback loop, then turning off the feedback or opening the loop is literally turning off the controller. Not in a doctrine-of-equivalents sense, but literally.”

      Probably nobody had that genius idea at trial.

  5. 5

    Patent prosecutors and patent litigators look at claims very differently. A patent litigator once asked me for help because he could not decide if a device infringed a claim because he was not sure if one of the components of the device matched one of the claim elements. I suggested to him that he flip it around and ask himself if the device (and that component in particular) anticipated the claim if it were a prior art device.

  6. 4

    >>“This case falls squarely within the principle that a ‘patent may not, like a nose of wax, be twisted one way to avoid anticipation and another to find infringement.’”

    Maybe I missed it but where did they “avoid anticipation” by using “switching a controller off” ?

    1. 4.1

      Supposedly it was in prosecution or at trial or some such.

      “Here, the court bolstered its non-infringement conclusion by looking at the patentee’s arguments regarding anticipation. In particular, the patentee argued that the prior art reference (Wright) did not anticipate because it did not disclose turning-off the controller.”

      1. 4.1.1

        Thanks

  7. 3

    Judge Stoll deserves the credit for drafting this opinion, but did not say here “Hair-splitting is what we do best.”
    Also, re the cite for the quote “This case falls squarely within the principle that a ‘patent may not, like a nose of wax, be twisted one way to avoid anticipation and another to find infringement.’” Yes, it is quoting Amazon [v. Barnes&Noble] (Fed. Cir. 2021), but this cite also says “(cleaned up)”? The difference between this “cleaned up” quote and the language of the original nose of wax case, White v. Dunbar, 119 U.S. 47, 51 (1886) noted above, is also interesting.

    1. 3.1

      Judge Stoll’s chambers should have gotten a Notice of Rejection from the Clerk’s office in that the opinion is not text-searchable. Try searching for “cleaned up” or “falls squarely.”

      1. 3.1.1

        yes, one cannot even cut and paste from the decision.

  8. 2

    That’s a hard break. Non-operating means out of the loop- no output. The fact that the device may be “turned on” i.e. energized does not place it in operation, and it may be shut down but quite energized – many devices have a soft shutdown and full shutdown mode (e.g. standby). I agree with the patentee that no output is the difference from the prior art- the meaning of a shut down component- not the irrelevant factor of the specific powered or de-powered energy state of component(s) placed on standby.

  9. 1

    So much for that secret weapon.

    Question: In the context of a suit like this one, what is the relationship, if any, between “insubstantial differences” and obviousness? If the patentee claims infringement under DoE, where the difference between the claims and the accused product is the same as the difference between the claims and the prior art, is the patentee essentially conceding obviousness?

    1. 1.1

      Saint Gobain v. Siemens dealt with a somewhat different issue, but the opinion’s reasoning suggests that the answer is no. The SG’s brief in the case is informative.

      link to justice.gov

      1. 1.1.1

        Thanks, Dmitry. Yes, that’s an interesting brief. Certainly the timing issue matters, with respect to later-arising equivalents. And it’s also true, at least conceptually, that equivalence analysis focuses on the element, rather than on the “claim as a whole.”

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