The Federal Circuit’s New Reluctance to Limit Claims

Dali Wireless Inc. v. CommScope Techs. LLC, No. 20-1045 (Fed. Cir. Sept. 6, 2023).

Federal Circuit’s decision in Dali Wireless parallels the issues that I recently discussed in an analysis of the court’s September 1 decision in Sisvel International v. Sierra Wireless. Both cases grapple with claim construction and the tension between construing claims broadly versus importing limitations from the specification.

In Sisvel, the Federal Circuit affirmed the PTAB’s broad construction of “connection rejection message” over the mobile-network patentee’s arguments that the term should be limited to GSM/UMTS networks. Although the disclosed embodiments all focused on GSM/UMTS networks, the claims were drafted broadly without a clear disclaimer or redefinition.

Similarly, in Dali Wireless, the patentee argued for a narrow construction of the claim term “any” in the claims as sending signals to only a specific remote unit. US9531473. Once again the Federal Circuit upheld the PTAB’s broader construction. Despite embodiments showing selective sending, the court declined to import limitations absent clear intent to limit claim scope.  Under a broad construction, the prior art clearly taught the limitations and therefore rendered the claims unpatentable.

Both cases demonstrate the Federal Circuit’s reluctance to confine claims to specification embodiments when the language can support a broader plain meaning. Again, one take-away for patent prosecutors is to look closely to the described embodiments and consider express limitations that cover only those embodiments.

The decision also rejected an appointments challenge under United States v. Arthrex, 141 S.Ct. 1970 (2021), which held that APJs were improperly appointed principal officers. Dali raised an Appointments Clause challenge to decisions made by Commissioner Hirshfeld who was acting as PTO Director.  The Federal Circuit summarily rejected that challenge as already decided in Arthrex, Inc. v. Smith & Nephew, Inc., 35 F.4th 1328 (Fed. Cir. 2022), cert denied, 143 S.Ct. 2493 (2023).

Opinion by Judge Linn, joined by Judges Hughes and Stark.

 

53 thoughts on “The Federal Circuit’s New Reluctance to Limit Claims

  1. 8

    My sincere religious beliefs requires me to use broad terms in the claims and leave key terms undefined. Failure to accommodate my beliefs is an egregious violation of my First Amendment rights.

    Still waiting for some “zealous” plaintiff to jump on this awesome argument. Maybe I’ll just create one of thin air as that seems good enough for the dominionist-friendly stooges on the Court these days.

    1. 8.1

      First, your assertion of “sincere” is simply not believable.

      Second, as awful as your grasp of patent law is, your grasp of 1A law is even worse.

      Third, that you whine about “seems good enough for the dominionist-friendly stooges on the Court these days.” is delicious irony given your own predilections with Ends Justify the Means (you are perfectly happy with the exact same judicial mechanisms when YOUR Ends were being reached).

      1. 8.1.1

        “ your assertion of “sincere” is simply not believable.”

        ??? Not sure how you arrived at that conclusion but I am sure that the Supreme Court has not cared at all about the credibility of religious people making absurd claims about the sincerity of their bizarre beliefs. So what’s your point again?

        1. 8.1.1.1

          It’s easy to arrive at that conclusion – anyone reading your emotive rants can do so.

          That point is quite clear. Are you also pretending that you do not understand the other two points?

          1. 8.1.1.1.1

            “ It’s easy to arrive at that conclusion – anyone reading your emotive rants can do so.”

            Are you suggesting people can not change? Or that “sincere” religious people act consistently with their stated beliefs at all times?

            Ha ha. Of course you are. That’s funny.

            1. 8.1.1.1.1.1

              Are you suggesting people can not change?

              Not at all. Nothing in my post indicates that.

              Or that “sincere” religious people act consistently with their stated beliefs at all times?

              Again – nothing in my post indicates that.

              Of course you are.

              ? Seriously, are you having a difficult time understanding the points that I have presented? Is that why you seem to intent to have me saying (or indicating) things completely different than what I have actually stated?

              Further, IF you are (indeed!) desirous of changing your ways, there are an abundance of opportunities across many recent threads (including this one) for you to change and engage on the merits.

              As to the “act consistently with their stated beliefs at all times,” I have NO idea where you are pulling this from, or why you are attempting to have this come from me.

              What IS consistent though is that YOU are anti-patent. Are you (continuing) to try to gaslight readers as to you being otherwise?

            2. 8.1.1.1.1.2

              As could (easily) be predicted: Malcolm goes silent.

              Thank you for proving my point.

              Again.

    2. 8.2

      “dominionist-friendly stooges on the Court ”

      Based. Who are they?

      1. 8.2.1

        I doubt that you will get the (easy) answer from Malcolm here, 6.

        Also, I don’t see where you would take this even if Malcolm engaged and provided that easy answer.

        Of course, the better point would be to contrast just how happy Malcolm was when the Court — using the very same mechanisms that he whines about [Ends justify the Means] — decided in Ends he liked (wrecking eligibility jurisprudence) versus Ends he deplores.

        He cannot grasp his own hypocrisy.

  2. 7

    Once again the Federal Circuit upheld the PTAB’s broader construction. Despite embodiments showing selective sending, the court declined to import limitations absent clear intent to limit claim scope.

    But the patentee assuredly did express clear intent to limit scope —

    in Dali Wireless, the patentee argued for a narrow construction of the claim term “any” in the claims as sending signals to only a specific remote unit.

    The patentee expressly limited the scope of the claims in the preliminary response, thereby disclaiming the subject matter of the broader construction. The dispute was resolved at that point, win-win, no more litigation needed. Why does the PTAB abd Federal Circuit reject this stipulation? It makes no sense.

    1. 7.1

      “The patentee expressly limited the scope of the claims in the preliminary response”

      LOL

      Don’t you have anything better to do, Josh? Maybe pay more attention to one of your 19 kids (or whatever the number is these days).

  3. 6

    “The decision also rejected an appointments challenge under United States v. Arthrex, 141 S.Ct. 1970 (2021), which held that APJs were improperly appointed principal officers. Dali raised an Appointments Clause challenge to decisions made by Commissioner Hirshfeld who was acting as PTO Director. The Federal Circuit summarily rejected that challenge as already decided in Arthrex, Inc. v. Smith & Nephew, Inc., 35 F.4th 1328 (Fed. Cir. 2022), cert denied, 143 S.Ct. 2493 (2023).”

    As prosecutors, we typically don’t know in advance whether a broad or narrow interpretation is what will be best. The best we can do is to include both narrow and broad claims in the same patent. Similar to an earlier commenter, it is curious that these decisions are both anti-patent. It would be interesting to compare these cases to recent ones in which the patent owner prevailed (if there are any).

  4. 5

    The Federal Circuit’s New Reluctance to Limit Claims
    I see ‘reluctance’ at the Federal Circuit as being outcome-determinative.

    If the claim construction involved arguments that certain claim language covered embodiments of an accused infringing device, I would expect the Federal Circuit to have little reluctance to limit the scope of the claims [so as to avoid infringement].

    1. 5.1

      +1

    2. 5.2

      I see ‘reluctance’ at the Federal Circuit as being outcome-determinative.

      This is definitely my impression, as well. From my own reading of the case law, the “claims are interpreted in view of the spec” precedents mostly get cited when the appeal concerns infringement (so as to achieve a narrow scope), while the “do not read limitations into the claims” precedents mostly get cited when the appeal concerns validity (so as to achieve a broad scope).

      1. 5.2.1

        A couple precedential opinions came down from the Federal Circuit today.

        These cases were unusual as Apple and Netflix were respectively listed as the first parties (i.e., Appellant), which means that the lost down below (at the PTAB in both instances).

        I didn’t have to read the opinions (although I did) to know who prevailed. There is a simple rule of thumb I follow — when Big Tech goes up against anyone who isn’t also Big Tech, then Big Tech wins. The Federal Circuit has a love affair with Big Tech — Big Tech’s patents are almost always valid, and they never infringe. To quote from a Mel Brook’s film … “It’s good to be the King.”

        1. 5.2.1.1

          There is a simple rule of thumb I follow — when Big Tech goes up against anyone who isn’t also Big Tech, then Big Tech wins.

          Yeah, I think that this rule of thumb is a fairly safe and well-established heuristic.

          Big Tech’s patents are almost always valid, and they never infringe.

          If by “Big Tech” (a somewhat nebulous term) you mean Amazon, Apple, Netflix, Facebook, Google, Hulu, & Microsoft, I agree that they almost never face liability for infringement. As for their own patents being “almost always valid,” however, I am not really sure what this means.

          One can count on one hand the number of instances in the last decade in which any of those companies have asserted a patent or faced an IPR. What does it mean for their patents to be “almost always valid” if the validity of their patents is never challenged?

          1. 5.2.1.1.1

            What does it mean for their patents to be “almost always valid” if the validity of their patents is never challenged?
            Unchallenged patents are valid patents. See 35 USC 282(a).

            If Big Tech eyes someone for infringement, they’ll come knocking on your door with 50, 100 patents — not a couple. While it is financially feasible to invalidate a few patents — that equation changes as the number of patents being challenged grows.

            1. 5.2.1.1.1.1

              Ah, fair point. Thanks for the clarification.

              1. 5.2.1.1.1.1.1

                Please — somebody — have Greg stop the attempted gaslighting.

                “f”or is beyond belief.

          2. 5.2.1.1.2

            So with the link a”m,” Drum is marginally concerned that the reparation amount is completely infeasible, but is more concerned that “forever v1ct1m” status will be lost.

            California wants it current citizens to pay reparations for prior California slaves?

            What about other human trafficking offenses (there are more ‘slaves’ today than ever).

            Also, did the Sprint Left folk of California neglect to understand that California was a Free State?

            1. 5.2.1.1.2.1

              Gotta chuckle that Billy has probably read more of Kevin Drum’s writing in the past month than I have in the past 15 years.

              1. 5.2.1.1.2.1.1

                Well, glad to think that there is so tangible an upside to my efforts.

                1. I am ‘so glad’ that Greg has decided to read Malcolm (even as he in the past has declared that he has blocked the ability to read BOTH Malcolm and I).

                  On top of that, BOTH Greg and Malcolm then miss the point of my exp0s1ng Greg’s hidden links.

                  Somehow Malcolm thinks it untoward to read ‘an opponent’s’ writings.

                  Nothing could be further from the truth. Not only do I read such, I seek to understand the bottom line reasoning (when present), as well as understand the larger politico-philosophical background.

                  This allows me to engage on the merits – something that BOTH Greg and Malcolm refuse to do (much to their detriment).

  5. 4

    This “tension between construing claims broadly versus importing limitations from the specification” could be reduced by the Federal Circuit simply more consistently and strictly following its own rules of stare decisis for en banc prior decisions, in particular Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).

    1. 4.1

      The CAFC has L O N G not followed its own rules of Stare Decisis (as witness the Gordian Knot in the domain of eligibility).

      Notably as well (given the second passing of a cognitive test), Judge Newman so often chastises the other wayward members of the CAFC.

      1. 4.1.1

        The mythology of Newman being more committed to stare decisis is exceeded in silliness only by the mythology that she is substantially more intelligent than the other judges. These are myths cherished by her bizarre cult of fanboys, a cult that has been nurtured for years by online glibertarian doofuses (and most recently by rightwing dirtbag orgs funded by fash-friendly dominionist lizards like Koch).

        1. 4.1.1.1

          Maybe spend a second (actually) reading before you dive into your emotive rants.

          I provided two separate and distinct thoughts – you conflated them and got both wr0ng. (Hint: “as well”)

          Malcolm being Malcolm…

          ¯\_(ツ)_/¯

    2. 4.2

      BTW, the significance of the en banc Phillips decision includes its claim scope decision on the facts of that case, not just the terms of the general test it provides.

    3. 4.3

      There are some situations in which it does seem unfair to an inventor who only discovers, after the patent issues, an avoidable unnecessary patent claim term limitation that enables a non-infringing competitive “design around.” But, there is the partial legal protection of a “broadening reissue” for two more years after the patent issues, which is quite a long time after the patent application was filed, and [if ever] commercialized by anyone, in many cases. Especially if the patent owner was wise enough to get an independent expert analysis of the claim scope as early as possible, before assertions. Keeping a divisional or continuation pending is another tactic. There is also the possibility of a “doctrine of equivalents” infringement assertion broader than literal infringement in some cases. Also, if whether or not the existing claims are infringed or not is validly arguable, and they also seem likely to survive a preliminary validity challenge, that kind of patents suit is likely to get an optional settlement recovery even without a jury trial, since it is not going to get pre-trial settled by summary judgment, IPR or reexamination.

  6. 3

    Looking in from outside, something in the opening words from Dennis puzzles me straightaway, namely, what is this “tension” between construing the claim and importing into it limitations from the specification? In other jurisdictions it does not exist. When did it first arise in the USA, and why did it arise? It is, I suppose, a creature of equity.

    I mean, were these importations all in order to be fair, to give the win to a patent owner who came out of the Patent Office with an over-wide claim but who is perceived by the court as one who does not “deserve” to lose the action to enforce the patent?

    One would have thought that rules learned in childhood should apply: that if you determinedly continue to ask for more than you deserve, then you deserve to be disappointed. Is this what is now driving the Deferal Circuit, a refreshment of the notions of equity?

    1. 3.1

      I do not see the reach to “equity” (and by the way, that term now belongs to the Sprint Left, and your use is, well, antiquated).

    2. 3.2

      Actually, it was often done to find no infringement.

      You see, one does not always know all the prior art that is out there when prosecuting an application. Perhaps you are prescient and do?

      I learned to always have claims of narrowing scope, to address such eventualities.

      But, then, I learned prosecution at a time when the focus was on quality not price. I think what we are witnessing may be more a sign of the price-pressure on prosecution.

    3. 3.3

      >what is this “tension” between construing the claim and importing into it limitations from the specification?

      There are competing cannons of construction. On one hand, one is not supposed to import limitations from the specification into the claims. On the other hand, one is supposed to interpret claim terms in light of the specifiation.

      The key to resolve the conflict is supposed to be first asking whether the claim term has an accepted meaning. In these two cases, “any” does. “Connection rejection message” probably doesn’t… in the sense that I doubt I could ask 3 engineers to define it and get a consistent answer.

      1. 3.3.1

        “ On one hand, one is not supposed to import limitations from the specification into the claims. On the other hand, one is supposed to interpret claim terms in light of the specifiation.”

        There is no “conflict” or “tension” here. The “tension” in this case arose from the failure of the claim drafter to define a key term in the claim in a manner that narrowed the term sufficiently to avoid the prior art.

    4. 3.4

      [T]his “tension” between construing the claim and importing into it limitations from the specification… [, i]n other jurisdictions it does not exist. When did it first arise in the USA, and why did it arise?

      If you think of the USA as a blank slate, on which this tension “arose,” you are starting off with a backwards model. The tension used to exist everywhere (or at least everywhere that had a patent system), and it has been subsequently expurgated from a lot of the world (although not—as you seem to think—the entire rest of the world), but less so in the USA.

      Recent scholarship draws the distinction between “central” claiming and “peripheral” claiming. In a “central” claiming regime, the nature of the invention that the patent protects is determined by the written description of the invention in the spec, and the claims exist merely to help the judge to focus on the relevant portions of the spec. In a peripheral claiming regime, the claims exist (like the metes and bounds of a land deed) to define the outer reaches of the protectable subject matter. The distinction between “central” and “peripheral,” however, should not be understood as a binary, but rather as a spectrum.

      All modern jurisdictions follow (to greater or lesser extents) the peripheral claiming model. All of the earliest jurisdictions to enact patent systems followed the central claiming model. While there are jurisdictions (e.g., Germany or China) that did not have a patent system until after the transition from central to peripheral had taken hold, among the earliest patent systems, there was—each in its own time—a transition from central to peripheral. In the U.S., the transition was gradual, and has stopped short of a complete move to peripheral. A lot of our older case law from the central claiming era remains in force, which is why this tension pops up from time to time.

      Those parts of the rest of the world where the tension does not exist have either done a more thorough job of expurgating the old law (e.g., U.K.), or else came to the table of having a patent system later (e.g., Germany), such that they do not have the legacy of a central claiming system to expurgate. Nevertheless, the tension can still be found in a number of other common law countries, where their own old precedents still linger.

      1. 3.4.1

        Credit where credit is due: this is an excellent post from Greg.

      2. 3.4.2

        When Europe was drafting its Patent Convention, exactly 50 years ago, it was at pains to reconcile central and peripheral claiming. See its Protocol on the Interpretation of Art 69 EPC for the outcome. So Greg, I’m wondering what is the “recent” scholarship you have in mind and what it adds to the mature position already reached by 1973.

        The view in England is that one should construe the claim “as if the infringer had never been born” but isn’t it inevitable that courts seeking to do justice as between patent owner and patent infringer experience the “tension” that Dennis mentions, and go on to construe the claim acordingly, plugging into it limitations drawn from the specification as necessary to get to the desired result?

        When infringement and validity are considered together, in one action, the court has to find a single claim construction that holds for both sides of the case. When there is bifurcation though, with validity addressed in one venue and infringement in another, there is room for Angora Cat (pace Mariio Franzosi) tactics. Your claim is the long-haired cat. When its validity is under attack, you empty a bucket of water over it, to make it tiny. But when you assert it, you make all its long hairs stand on end, giving it the appearance of a huge beast. It is always still the same cat though, in both venues. Perhaps splitting validity and infringement is what raises the “tension”.

        1. 3.4.2.1

          [W]hat is the “recent” scholarship you have in mind and what it adds to the mature position already reached by 1973.

          The transition from central to peripheral happened over the course of the XIX century, but it happened quite gradually. It is not clear that the folks involved in the transition realized that a transition was happening. It was only later in the XX century that scholars looked back at the XIX century and coined the terms “central” and “peripheral” to capture the distinction.

          Relative to the XIX century, 1973 is “recent.” That is all that I had in mind when I used “recent.” My apologies for any confusion.

        2. 3.4.2.2

          > there is room for Angora Cat (pace Mariio Franzosi) tactics

          Oddly, in the US, it’s almost always the patent infringer that requests the split (via IPR)

          1. 3.4.2.2.1

            Perhaps not so “oddly”. Perhaps a wise choice, OC. If the court case is going to be a jury trial?

            1. 3.4.2.2.1.1

              ? Your Angora cat rhetorical device is portrayed (solely) as benefitting the patent holder, but somehow you want to indicate that infringers are desirous of that device…

              Please elucidate.

              1. 3.4.2.2.1.1.1

                Good point, anon. I was supposing that bifurcation of infringement and validity, by taking validity out of the district court and into the USPTO, might give infringers a higher probability of getting the asserted claim found invalid.

                But I don’t know. You tell me.

                1. But I don’t know. You tell me.

                  I am asking YOU to explicate YOUR position. Your ask is simply out of place.

                  Once again – ? Your Angora cat rhetorical device is portrayed (solely) as benefitting the patent holder, but somehow you want to indicate that infringers are desirous of that device…

                  The point is NOT about ‘bifurcation’ (please move the goalposts back).

                  Perhaps you simply misspoke….

                2. Mis-spoke? I think not, anon. But perhaps to this extent, that I had overlooked the de-stabilising effect of a jury on such a complex legal matter as claim construction

  7. 2

    “ one take-away for patent prosecutors is to look closely to the described embodiments and consider express limitations that cover only those embodiments.”

    But why bother with learning the basics of patent prosecution when you can just attack the entire “administrative state” for unlawfully creating all these unfair rules that “nobody” understands because “so confusing”?

  8. 1

    Just curious (but not that diligent), but was the Arthrex decision challenged in this case?

    1. 1.1

      The opening appeal brief by Dali expressly acknowledged that the Appointments Clause issue had been directly addressed — and rejected — by the 2022 Arthrex decision, and Dali further acknowledged that the 2022 Arthrex decision was controlling on that issue. Dali nevertheless devoted several pages of its opening brief to arguments about that issue, which Dali made clear were being presented solely to preserve its position in the event of later en banc or Supreme Court review.

      1. 1.1.1

        Excellent use of client money.

        ROTFLMAO

        1. 1.1.1.1

          Maybe. Maybe not.

          Sounds like full informed consent on the course of action was in play here, and the game is not over.

          What kind of attorney are you to fold to bad law so easily?

          Oh wait, this bad law works against would-be patent holders, and given how NOT anti-patent you are ( 😉 ) the side you choose is quite obvious.

          1. 1.1.1.1.1

            “ Maybe. Maybe not.”

            ROTFLMAO

            Care to make it interesting?

            1. 1.1.1.1.1.1

              I always be interesting.

              It would be more than interesting if you ever decided to engage on the merits.

              Surprise everyone, Malcolm.

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