Warner-Lambert v. Teva Pharmaceuticals (Fed. Cir. 2005).
In a dispute over Warner-Lambert’s control over its ACE inhibitor quinapril, the district court granted summary judgment of validity in Warner-Lambert’s favor. Teva appealed, arguing that the patent was not enabled.
On appeal, the CAFC reversed and remanded. Specifically, the appellate panel questioned the district court’s summary judgment opinion that lacked any analysis of the enablement issue:
At the outset, we find the issue of enablement difficult to review because the district court did not address it in its decision granting Warner-Lambert’s summary judgment motion. We have no way of knowing what the district court thought of Teva’s enablement defense or why the court did not address the issue in its decision. In short, we are being asked to review an incomplete record.
Based on the evidence presented by Teva and a lack of written justification for the district court judgment, the CAFC held that Teva should be given another opportunity to present its case.
Freedman Seating v. American Seating (Fed. Cir. 2005).
Freedman was awarded summary judgment of infringement based on an analysis under the doctrine of equivalents.
Freedman’s patent covers technology for stowable bus seats that allow room for a wheelchair. The claims include a limitation of a seat-base having a slidably mounted movable end. On appeal, American Seating argued that its rotatably mounted elements were not equivalent.
Agreeing with American, the CAFC reversed, holding that allowing DOE coverage of a rotatably mounted element would vitiate the claim language that required the element be slidably mounted.
[A]n element of an accused product or process is not, as a matter of law, equivalent to a limitation of the claimed invention if such a finding would entirely vitiate the limitation.
According to the panel, determining vitiation is done by considering “the totality of the circumstances in each case.” Specifically, the court must determine whether the alleged equivalent can be fairly characterized as an insubstantial change from the claimed subject matter without rendering the pertinent limitation meaningless.
In this case, the court determined that the “slidably mounted” limitation excluded the possibility of DOE coverage of a “rotatably mounted” element.
Reversed.
Comment:
DOE jurisprudence is becoming more confusing. Every defendant now has an arguable vitiation position — since, by definition, the DOE is only applied against products that do something different than what is required by the claims.
Harris owns the patent on a signal decoder that uses an estimator to compensate for transmission interference. A jury found that Ericsson infringed the Harris patent. Ericsson appealed — arguing for JMOL based on faulty claim construction.
On appeal, Ericsson asked the CAFC to take a fresh look at claim construction — arguing that the Means-Plus-Function term “time domain processing means” had been improperly interpreted in light of a case (WMS Gaming) that was decided at the Federal Circuit after the claim construction. Harris, on the other hand, argued that Ericsson waived the WMS Gaming argument by failing to advance it at trial or object to the jury instructions.
Choice of law: The CAFC determined that waiver of a claim construction argument to be intimately associated with patent rights, and thus, that Federal Circuit law should apply to such questions.
Waiver Analysis: The CAFC found that it has “case-by-case discretion over whether to apply waiver” but that if Ericsson’s arguments on appeal was “the same concept” as that argued before the district court then there would be no waiver. Following Gaus v. Conair. Because the appellate panel found Ericsson’s claim construction argument on appeal to be only a “slight change” from that argued at the district court and thus that there was no waiver.
Dissent: In a dissenting opinion, Judge Gajarsa argued that Ericsson’s argument on appeal was a complete “paradigm shift” from what it argued at trial and that Ericsson had at least “ten opportunities . . . to make its [new] claim construction arguments.”
Now, on appeal, Ericsson awakens to the benefit of WMS Gaming and argues for the first time that it controls. . . . The verdict of a jury will not ordinarily be set aside for error not brought to the attention of the trial court.”
Concluding with a policy analysis, Judge Gajarsa finds that the majority holding “improperly encourages parties to take their chances on a high stakes, potentially cost saving argument at trial, while proliferating new arguments on appeal. For various reasons this court already has a high reversal rate on claim construction issues, which tends to encourage appeals and, perhaps, discourage trial courts from heavily investing in claim constructions below. The court’s holding will only intensify this problem, and further distort the proper trial-appellate relationship regarding claim construction.”
Ex parte Eggleston (B.P.A.I. 2005) (NOT PRECEDENT).
In an application involving a method of mobile communication, the examiner rejected the claims because the subject matter was not “described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time of the application was filed, had possession of the claimed invention.” Specifically, the examiner contended that an explicit limitation in the claims was not present in the written description.
The BPAI reversed the rejection, finding that the original disclosure provided adequate support.
We find that the original description, albeit in different language than is now claimed, would have conveyed to the artisan that the inventors had possession of the subject matter which they now claim at the time of filing the application.
In its decision, the Board affirmed the principle that an “explicit” disclosure of claim terms is not required under 35 U.S.C. § 112, first paragraph. “An invention claimed need not be described ipsis verbis in the specification in order to satisfy the disclosure requirements.
Marley Mouldings v. Mikron Industries (Fed. Cir. 2005).
At summary judgment, the district court (N.D.Ill.) found Marley’s patent invalid for indefiniteness. On appeal, the Court of Appeals for the Federal Circuit (CAFC) reversed, holding that the claims were not “insolubly ambiguous” and thus not indefinite under 35 U.S.C. 112.
Marley’s patent is directed to a method of forming a foam composite as a wood replacement. The claims specify the volume of various materials use to create the composite. The district court found the volume requirements to be indefinite because the specification did not include any means to calculate the percent volume — “a critical determination to discerning” infringement.
Mikron also argued that “measurement of components by weight, not by volume, is the standard practice in the field of polymer processing, and [thus,]that the patentee’s failure to conform to this practice is further support for the indefiniteness of the claims.”
The CAFC disagreed, finding that “non-conformity is not of itself indefiniteness.”
We conclude that the district court erred in law, in requiring that the specification describe the relationship between volume and weight of the wood filler used or usable in the process. When a claim “is not insolubly ambiguous, it is not invalid for indefiniteness.” (quoting Bancorp Servs, 359 F.3d 1367).
Remanded.
NOTES:
This case attempts to distinguish Honeywell v. ITC, 341 F.3d 1332, 1339-40 (Fed. Cir. 2003) (claim indefinite because yarn melting parameter included without stating which of four known methods of preparing and testing the yarn should be used).
The CAFC has affirmed a district court’s summary judgment of invalidity — finding that the claim term "aesthetically pleasing" to be indefinite under the second paragraph of 35 U.S.C. § 112.
Section 112 provides that the "specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention."
Generally, the court warns against applying the indefiniteness provision to invalidate a patent.
If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds.
However, the Appellate Panel found that Datamize’s arguments "fail to persuade [the Court] that ‘aesthetically pleasing’ can be given any reasonable meaning.
Affirmed — “Aesthetically pleasing,” as used in the independent claim, fails to “particularly point out and distinctly claim the subject matter which the patentee regards as his invention.
In one of the first claim construction cases following the landmark Phillips v. AWH case, the CAFC has reversed a district court’s construction of the phrase "a format specified by the institution." In its decision, the panel cited Phillips for the proposition that the lower court had improperly given the term an overly broad customary meaning. Id. ("‘customary meaning’ refers to the ‘customary meaning in [the] art field’").
NOTE: This week I have been on vacation at our family ranch in Kansas and blogging through my TREO. Sorry for the typos.
Ericsson v. InterDigital v. Nokia (Fed. Cir. 2005).
Ericsson sued InterDigital for a declaratory judgment that InterDigital’s group of digital wireless telephone patents are invalid and/or unenforceable. After a decade of litigation, the parties settled in 2003 and agreed to maintain the litigation record under seal. In the meantime, Nokia entered into a license agreement with InterDigital as a "most favored licensee." Thus, Nokia’s payments are based on settlement amounts from the Ericsson case.
To protect its interests, but only after the Ericsson settlement, Nokia moved to intervene in the Ericsson case. The district court granted Nokia’s motion — holding that "the Court’s rulings potentially affects Nokia’s obligations under its agreement with InterDigital." InterDigital appealed.
Finding that intervention is not a matter unique to patent law, the CAFC applied Fifth Circuit law to determine whether the intervention was proper. Under Fifth Circuit precedent, the appellate panel found that since Nokia filed its motion after the case was already dismissed, "Nokia’s motion to intervene failed to satisfy the Fifth Circuit requirement that there be an existing suit in which to intervene."
After finding MercExchange’s patent infringed and not invalid, the district court declined to issue an injunction against eBay. In its decision, the district court found that MercExchange’s (i) willingness to license; (ii) failure to practice the patents itself; and (iii) comments to the media regarding its intent to enforce patent rights all weighed against any presumption that it would suffer irreparable harm without an injunction. 275 F.Supp. 2d 695 (E.D. Va. 2003).
On appeal, the Court of Appeals for the Federal Circuit reversed, finding that, absent exceptional circumstances, a district court should issue a permanent injunction after a finding of infringement.
Now, eBay has appealed to the Supreme Court by filing a petition for certiorari asking the court to hear its case. The petition briefly spells out the traditional four-factor injunctive relief test and argues that the four-factor test should apply to patent cases rather than the de facto per se test applied by the CAFC.
In the four-factor test, the court should consider (i) irreparable harm from not issuing an injunction; (ii) whether an adequate remedy exists in law (damages) (iii) whether the injunction would be in the public interest; and (iv) whether a balance of hardships would tip in the plaintiff’s favor.
eBay argues that the move away from injunction as a per se consequence of infringement does not raise the standard for obtaining injunctive relief — rather, it is a move back to the standard originally intended by Congress.
Interestingly, this question arises at the Supreme Court as a proposed statute that would modify the principles of patent injunctive relief is being considered in Congress.
Frazier v. Roessel Cine Photo Tech (Fed. Cir. 2005)
by Jessica Lunney
The CAFC (Judges Bryson, Linn, and Dyk) affirmed the district court’s finding of inequitable conduct but vacated and remanded the award of attorney’s fees.
In a patent infringement suit, the district court based its inequitable conduct finding on two references: (i) a video submitted to the PTO to overcome a rejection and (ii) an unsubmitted, clipped advertisement in the client’s patent file. Generally, the patent was directed towards a video camera lens, and the submitted video footage allegedly showed lens functionality. As it turns out, the video was not actually created with the claimed lens. The CAFC was unimpressed with the inventor’s assertion that the footage could have been filmed using his invention.
Materiality + Intent: Because the video allowed a traversal of the PTO’s multiple rejections, the court deemed the video footage to be material. Intent was implied from both the inventor’s repeated changing of his sworn testimony and the myriad misrepresentations he made to his business partner and his patent attorney.
The CAFC reversed the inequitable conduct finding inasmuch as it was based on the advertisement and therefore vacated the award of fees and remanded to the district court to determine whether the case was still exceptional. Bryson’s separate opinion supported the entirety of the district court’s holding.
NOTE: Jessica Lunney is a law clerk at MBHB and a law student at Emory. She will complete law school in June 2006.
The CAFC has released a new appellate opinion that modifies the court’s analysis of Section 271 of the Patent Act but leaves the decision against RIM largely intact.
In December 2004, the Federal Circuit released its original opinion that pushed against the territorial bounds of patent law. In that opinion, the CAFC found that U.S. patent law covers instances where infringing elements are located abroad — so long as the “control and beneficial use” of the infringing system is within U.S. territory. This legal finding meant that RIM’s BlackBerry business, which spanned across the U.S. and Canadian borders, could be found to infringe NTP’s patent. Soon thereafter, RIM filed a motion for rehearing and rehearing en banc as well as other legal pleadings at the CAFC, district court, and PTO.
Rather than taking up the question in an en banc hearing, the original three-member panel (Judges Michel, Schall, and LINN) granted the petition for rehearing and revised portions of the opinion that discussed Section 271 — and thus withdrawing the December 14 opinion.
The new 75 page opinion takes a fresh look at the extent that a patent must be practiced within the U.S. to fall within the guise of 271(a).
35 U.S.C. 271(a): . . . whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States . . . infringes the patent.
The major dispute revolved around the phrase “within the United States:”
The grammatical structure of the statute indicates that “within the United States” is a separate requirement from the infringing acts clause. Thus, it is unclear from the statutory language how the territoriality requirement limits direct infringement where the location of at least a part of the “patented invention” is not the same as the location of the infringing act. (opinion at 52).
In an affirmative step, the court decided that locating a component outside the U.S. does not necessarily preclude infringement under 271(a). However, the court found that the analysis will depend upon the type of infringing act (use, make, sell) and the type of claim (system, method, product).
USE of SYSTEM: The site of the use of a patent is “the place at which the system as a whole is put into service, i.e., the place where control of the system is exercised and beneficial use of the system obtained.”
USE of METHOD: Each step must be performed in the U.S. “We therefore hold that a process cannot be used ‘within’ the United States as required by section 271(a) unless each of the steps is performed within this country.”
OFFERS to SELL and SELLING: You likely cannot infringe a method claim through sale! “It is difficult to envision what property is transferred merely by one party performing the steps of a method claim in exchange for payment by another party. Moreover, performance of a method does not necessarily require anything that is capable of being transferred.” NOTE — The court did not explicitly rule on this issue. Rather they only implied what their ruling would be.
Referring to 271(f), the court found that supplying U.S. customers with products does not fall within the clause even if those customers plan to perform a method with the product that would be infringing if performed wholly within the U.S.
Settlement: In the wake of the December opinion, NTP & RIM reportedly reached a settlement that included $450 million for NTP. The original settlement announcement was based on a 1/2 page term-sheet reportedly signed by the parties. As would be expected, 50 square inches of paper turned out to create a whole new level of disagreement between the parties who have been working through court mediation to flesh out the agreement.
In early June, the settlement issue came to a head and the parties staked out their positions on paper. In a motion filed with the CAFC, RIM argues that the term-sheet was a settlement of the case, and, as such, the case is now moot. RIM asked the CAFC to stay its decision on the for rehearing and remand the case to the district court to decide whether there has been a settlement. On the other hand, NTP has argued that the term-sheet was not a settlement and that there was never a “meeting of the minds.”
Now that the CAFC has remanded, the settlement issue will likely be resolved by the district court. (assuming the CAFC’s decision is not appealed to the Supreme Court).
Reexamination: In a parallel action, the patents at issue in the case (owned by NTP) are undergoing reexamination at the USPTO. As occurs in almost all inter partes and director-ordered reexaminations, the patent office has issued a non-final rejection in each NTP case that it has examined. Although this first rejection is a good sign for RIM, a final decision in the reexam will not be any time soon. (i.e., years). NTP has the opportunity to file a response to the non-final rejection. The PTO may then issue a final rejection, at which point NTP may ask for reconsideration, appeal to the PTO’s internal board (BPAI), and then appeal to the federal courts (i.e., the courts that have already determined that the patents are valid).
Electromotive Division of GM v. Transportation Systems of GE (Fed. Cir. 2005).
EMD appealed after its patents on diesel turbochargers were found invalid. On appeal, the CAFC affirmed, finding that the patented invention was subject to commercial sales before the pre-critical date that were not primarily experimental.
EMD had sold its product more than one year before its patent application filing date, but argued that those sales were negated by an experimental use defense. The appellate panel, however, disagreed.
In its decision, the Federal Circuit panel first provided a full analysis of the law of experimental use in relation to the Section 102(b) public use and on sale bars. Then, the court tightened its rules — finding that ordinarily, a patentee must prove that (i) control over the experiment and (i) that the customer was aware of the experiment.
Our precedent has treated control and customer awareness of the testing as especially important to experimentation. Indeed, this court has effectively made control and customer awareness dispositive.Accordingly, we conclude that control and customer awareness ordinarily must be proven if experimentation is to be found.
Schinzing sued Mid-State in Minnesota state court alleging breach of a license agreement for Mid-State’ failure to pay royalties due for its wheel-chair washing machine products. Mid-State removed the case to federal court and raised a number of affirmative defenses and counterclaims, including patent invalidity and non-infringement. After a bench trial, the district court found that the license had been breached and that the patents were not invalid.
The appeal was taken-up by the Eighth Circuit Court of Appeals because the patent issues were raised in a counterclaim rather than in the properly pled complaint.
Basing its decision on Federal Circuit law, the Eighth Circuit panel found that the court had failed to apply an element-by-element comparison of the patent claims to the prior art references presented at trial.
We note that on remand the district court’s comparison of the ’375 patent to the device described in [prior art] should reflect the Federal Circuit’s observation that 35 U.S.C. § 102(b) may bar patentability by anticipation if the earlier device includes every limitation of the later claimed invention, or by obviousness if the differences between the claimed invention and the earlier device would have been obvious to one of ordinary skill in the art. Netscape Communications Corp. v. Konrad, 295 F.3d 1315, 1321 (Fed. Cir. 2002).
In re Battiston (Fed. Cir. 2005) (NONPRECEDENTIAL)
by Cory Hojka
In Teleflex v. KSR, a case now awaiting a petition decision at the Supreme Court, the Federal Circuit ruled that the correct “teaching-suggestion-motivation test” for obviousness determination requires “a court to make specific findings showing a teaching, suggestion, or motivation to combine prior art teachings in the particular manner claimed by the patent at issue.”
Joseph Battiston, therefore, appealed a decision by the PTO Board – claiming that the board applied the wrong standard of obviousness. Particularly, Battiston argued that the PTO “used impermissible hindsight to combine the cited art and failed to make findings on a motivation to combine the cited art.” The appellate panel did not agree – rather the panel found substantial evidence supporting the Board’s finding that ordinary knowledge of one skilled in the art would suggest a combination of references. In further support of their position, the CAFC cited In Re Rouffet, noting that “the suggestion to combine references may flow from the nature of the problem . . . [or] the teachings of the pertinent references or from the ordinary knowledge of those skilled in the art that certain references are of special importance in a particular field[.]”
Battiston also failed to convince the court that the PTO improperly grouped his rejected claims. Citing In re McDaniel, the court reaffirmed its rule that “in the absence of a clear statement asserting separate patentability of the claims, the Board is free to select a single claim for each group of claims subject to a common ground of rejection as representative of all claims in that group and to decide the appeal of that rejection based solely on the selected representative claim.”
Rejection Affirmed.
Note: Cory Hojka is a law clerk at McDonnell Boehnen Hulbert & Berghoff LLP and a law student at the University of Chicago Law School in Hyde Park.
North American Container v. Plastipak (Fed. Cir. 2005).
Although this case may be too close on the heels of Phillips v. AWH to serve as a predictor.* The CAFC affirmed a trial court’s reliance on the Online Oxford English Dictionary when construing the disputed claim term “generally.” Based on a mostly-proper claim construction by the district court, the CAFC affirmed-in-part a grant of summary judgment of noninfringement.
* This case did not cite the recent Phillips case.
Enzo owns a patent on nucleic acid probes that selectively hybridize to Neisseria gonorrhoeae. In an oral hearing, the district court invalidated the patent for violating the on-sale bar — holding that there were “no triable issues of fact” and granting Gen-Probe’s motion for summary judgment. The district judge then asked the parties if there were any other outstanding issues that he should rule upon, and counsel for both parties responded that the court had “covered all the issues raised.” The clerk then entered judgment under Rule 58 holding that the claims were invalid and that “the case was closed.”
On appeal, however, the CAFC refused to reach the merits — finding that the lower court had not reached a “final judgment” because Gen-Probe’s unenforceability counterclaim remained unadjudicated. The appellate panel agreed with Gen-Probe that “the district court’s belief that the judgment was final is irrelevant to whether jurisdiction is satisfied.”
Although it is true that the district court here did make a clear statement that the case was at an end, it was mistaken, because an unadjudicated counterclaim remained. Gen-Probe’s brief to this court, supported by the record, and unrefuted by Enzo, makes that clear. While it is, to say the least, regrettable that a party with a remaining counterclaim that it wishes to pursue, as well as its opponent, leaves a trial judge with the impression that no claims remain in the case, we have no choice but to take cognizance of the nonfinality created by the unquestioned existence of that counterclaim.
Case dismissed for lack of appellate jurisdiction.
In a companion case to Eolas v. Microsoft, the CAFC has taken another step in expanding the potential use of 35 U.S.C 271(f) to obtain damages for actions done abroad.
AT&T’s patent covers certain speech codecs that are included in Microsoft’s Windows product. As shown above, Microsoft generates its source code in the U.S. That source code is copied and shipped abroad to Foreign computer manufacturers who, pursuant to their license agreement with Microsoft, generate 2nd generation copies of the software that are then installed and sold.
The district court found that Microsoft could be liable for foreign sales under Section 271(f) for shipping components of a patented invention.
On appeal, Microsoft argued that (i) software code cannot be a “component” under 271(f) and (ii) the 2nd generation copies are not “supplied” from the U.S. Rather, Microsoft argued that those 2nd generation copies are manufactured abroad.
Component: The majority panel made quick-work of the “component” argument, finding that the issue was fully determined by Eolas.
Supplied: Using a simple statutory analysis, the majority determined that “supplying” of software necessarily implies making a copy. “Copying, therefore, is part and parcel of software distribution.”
Rule: Thus, “sending a single copy abroad with the intent that it be replicated invokes § 271(f) liability for those foreign-made copies.” Therefore, the district court properly held Microsoft liable for the foreign activity.
In a well reasoned dissent, Judge Rader, decried the majority’s “extraterritorial expansion” — arguing that the court “should accord proper respect to the clear language of the statute and to foreign patent regimes by limiting the application of § 271(f) to components literally ‘shipped from the United States.’” as is required under Pellegrini.
[PRINTABLE PDF VERSION] In a much anticipated opinion, the CAFC has refocused its approach to claim construction — moving away from extrinsic evidence offered by dictionaries and encyclopedias toward a more detailed analysis of the patent specification. In the process, the majority en banc panel rejected the claim construction approach of Texas Digital Systems v. Telegenix (Fed. Cir. 2002) and its progeny.
In Texas Digital, the court noted that “dictionaries, encyclopedias and treatises are particularly useful resources to assist the court in determining the ordinary and customary meanings of claim terms.” . . . Although the concern expressed by the court in Texas Digital was valid, the methodology it adopted placed too much reliance on extrinsic sources such as dictionaries, treatises, and encyclopedias and too little on intrinsic sources, in particular the specification and prosecution history. . . . That approach, in our view, improperly restricts the role of the specification in claim construction.
The court logically found that the problem of using dictionaries in claim construction is that they focus the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent.
Yet heavy reliance on the dictionary divorced from the intrinsic evidence risks transforming the meaning of the claim term to the artisan into the meaning of the term in the abstract, out of its particular context, which is the specification.
Interpreting 35 U.S.C. 112, the CAFC determined that the statute requires that the specification inform the claim construction.
In light of the statutory directive that the inventor provide a “full” and “exact” description of the claimed invention, the specification necessarily informs the proper construction of the claims.
The majority acknowledged that this decision does not fully clarify claim construction jurisprudence. Leaving the real analysis to be done on a case-by-case basis.
In the end, there will still remain some cases in which it will be hard to determine whether a person of skill in the art would understand the embodiments to define the outer limits of the claim term or merely to be exemplary in nature. While that task may present difficulties in some cases, we nonetheless believe that attempting to resolve that problem in the context of the particular patent is likely to capture the scope of the actual invention more accurately than either strictly limiting the scope of the claims to the embodiments disclosed in the specification or divorcing the claim language from the specification.
In addition to the majority opinion, a dissent and a dissent-in-part were filed. In dissent, Judges Mayer and Newman continued their longstanding vocal objections to the rule that claim construction is a “matter of law” that should be decided de novo.
Now more than ever I am convinced of the futility, indeed the absurdity, of this court’s persistence in adhering to the falsehood that claim construction is a matter of law devoid of any factual component. Because any attempt to fashion a coherent standard under this regime is pointless, as illustrated by our many failed attempts to do so, I dissent.
Bottom Line:
Careful patent drafting is now more important than ever. Under Phillips, the specification “necessarily” informs proper claim construction. Whether a patent drafter acts intentionally or not, the specification is now likely to shape the meaning of the claims. Best make it intentional.
Textual analysis will be key: for example, because claims referred to “steel baffles,” a court may draw an inference that, in general, baffles can be made a non-steel materials.
District court claim construction decisions will continue to be overturned on a regular basis.
SanDisk holds a patent on Flash EEPROM with an improved architecture that extends the useful life of the device.
When construing the claims, the trial court ruled that the claims did not cover systems with any memory cells grouped into non-partitioned sectors. Because the accused devices included many sectors of memory cells that included non-partitioned sectors, the lower court granted defendants’ summary judgment motion that the devices did not infringe.
On appeal, the CAFC reviewed claim construction de novo, and reversed. First, the court looked at the plain language of the claim:
A method of operating a computer system including a processor and a memory system, wherein the memory system includes an array of non-volatile floating gate memory cells partitioned into a plurality of sectors that individually include a distinct group of said array of memory cells that are erasable together as a unit . . .
The appellate court found that the “including” transition, which is “a patent law term of art [meaning] ‘comprising.’”
Second, the appellate court rejected the district court’s finding that SanDisk had, during prosecution of the patent, disclaimed any cells grouped into non-partitioned sectors — finding that although the patent had been distinguished based on the partitioning, the disclaimer only applies to elements “subject to the claimed method, and no more.” Thus, with open claim language, a device may be found to infringe a patent even if the device includes elements that were disclaimed during prosecution.
[T]here is no prior reason why that memory cell array or the discussion of it should be presumed to exhaust every cell on every EEprom in the “memory system” recited in the claim preambles. Given the open language in the claims, there is no reason for the court to read the prosecution argument with such a presumption in mind. Put differently, the reference to “each sector” means “each sector” subject to the claimed method, and no more. In short, SanDisk’s reading of this prosecution argument is at least reasonable. Thus, focusing on this passage alone, there is no “clear and unmistakable surrender” within the meaning of Golight.
Summary Judgment of Noninfringement Vacated and Remanded
Izumi Products v. Koninklijke Philips (Fed. Cir. 2005) (NONPRECEDENTIAL)
In the wake of the CAFC’s recent foray into disposable razors, the appellate panel has now made its mark on the world of electric rotary razors.
In 2002, Izumi sued Philips for infringement of its electric razor patent that discloses a specialized recess in the blade that helps ensure that “shaving debris” don’t adhere to the blades. After construing the claims, the district court granted summary judgment of non-infringement in Philips favor. On appeal, the CAFC (Lourie, Newman, JJ.) found an error in the district court’s claim construction based on their review of the patent specification and logical analysis, but without any mention of a dictionary analysis.
In a concurring opinion, Judge Linn remarked the disputed term, “recess,” should be given the “full scope of its ordinary and customary meaning” and not be limited by definitions “improperly read” from the specification.
Warner-Lambert v. Teva Pharmaceuticals (Fed. Cir. 2005). 
Freedman Seating v. American Seating (Fed. Cir. 2005). 
Harris Corp. v. Ericsson (Fed. Cir. 2005). 
Ex parte Eggleston (B.P.A.I. 2005) (NOT PRECEDENT). 
Marley Mouldings v. Mikron Industries (Fed. Cir. 2005). 
eBay v. MercExchange (on petition for certiorari)
Electromotive Division of GM v. Transportation Systems of GE (Fed. Cir. 2005). 
Schinzing v. Mid-States Stainless (8th Cir. 2005)
North American Container v. Plastipak (Fed. Cir. 2005). 
Phillips v. AWH Corp. (Fed. Cir. 2005) (en banc). 
SanDisk v. Memorex (Fed. Cir. 2005). 
Izumi Products v. Koninklijke Philips (Fed. Cir. 2005) (NONPRECEDENTIAL)