by Dennis Crouch

In 2022, the Federal Circuit issued a Judge Hughes decision in IBM v. Zillow invaliding the claims of IBM’s asserted claims as ineligible subject matter. Intl. Bus. Machines Corp. v. Zillow Group, Inc., 50 F.4th 1371 (Fed. Cir. 2022) (U.S. Patent No. 9,158,789). In that case, Judge Stoll dissented in part, arguing that dismissal on the pleadings was inappropriate because the patentee had alleged plausible and specific facts showing that the claims embodied inventive concepts.

Now in 2024, the Federal Circuit has issued a new opinion in separate IBM v. Zillow case with patents from a different family. U.S. Patent Nos. 6,778,193 and 6,785,676. Seemingly by happenstance, Judges Hughes and Stoll were both on this panel. Judge Hughes again wrote the majority opinion affirming the motion to dismiss on eligibility grounds; Judge Stoll again dissented-in-part, concluding that the district court should have construed the claims (or preliminary relied upon IBM’s proposed construction) before deciding eligibility.

Intl. Bus. Machines Corp. v. Zillow Group, Inc., — F.4th — (Fed. Cir. January 9, 2024) 

The two asserted patents related to improving the display of search results to users by using “visual workspaces” (the ‘193 patent) and “user context vectors” (the ‘676 patent) to better capture user preferences and context.  The majority found these techniques covered only abstract ideas of “identifying, analyzing, and presenting certain data to a user.”  This holding parallels the 2022 IBM decision as well as others, such as Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359 (Fed. Cir. 2020).

In dissent, Judge Stoll argued that the majority failed to properly consider IBM’s proposed construction of the term “user context vector” in the ‘676 patent claims. IBM asserted this term should be construed as “an n-dimensional vector derived from the combination of user context and previous interaction with the system,” which Judge Stoll argued “add[ed] a degree of particularity.” But the majority stated Zillow had not disputed this construction, so there was no claim construction issue for the district court to resolve.

A key dispute in the case centered on whether IBM’s allegations of technological invention beyond the abstract idea were sufficient to survive dismissal. The majority held these allegations too “generic.” contrast, dissenting Judge Stoll argued reversal was warranted because “IBM has demonstrated that its claims plausibly recite an inventive concept under its proposed construction.”

Representative Claim 1 is below. What do you think?:

1. A graphical user interface for a customer self service system that performs resource search and selection comprising:

a first visual workspace comprising entry field enabling entry of a query for a resource and, one or more selectable graphical user context elements, each element representing a context associated with the current user state and having context attributes and attribute values associated therewith;

a second visual workspace for visualizing the set of resources that the customer self service system has determined to match the user’s query, said system indicating a degree of fit of said determined resources with said query;

a third visual workspace for enabling said user to select and modify context attribute values to enable increased specificity and accuracy of a query’s search parameters, said third visual workspace further enabling said user to specify resource selection parameters and relevant resource evaluation criteria utilized by a search mechanism in said system, said
degree of fit indication based on said user’s context, and said associated resource selection parameters and relevant resource evaluation criteria; and,

a mechanism enabling said user to navigate among said first, second and third visual workspaces to thereby identify and improve selection logic and response sets fitted to said query.

As an aside, the panels of the two cases were not identical. In the IBM 2022, the Judge Reyna joined the majority, in IBM 2024, Judge Prost joined the majority.

Goutam Patnaik (Desmarais) argued on behalf of the patentee IBM, Steven Seigel (Susman Godfrey) argued for the defendants.

Guest Post by Jordan Duenckel. Jordan is a third-year law student at the University of Missouri and a registered patent agent. He has an extensive background in chemistry and food science.  

A recent Federal Circuit opinion, K-Fee v. Nespresso, 2022-2042, — F.4th — (Fed. Cir. Dec. 26, 2023), arises from an infringement suit filed by K-fee System GmbH against Nespresso USA, Inc. in the Central District of California and revives a coffee controversy. K-fee owns three related patents (the ‘176, ‘177, and ‘531 patents) concerning coffee capsules that display information via a “barcode” which is read by the coffee machine to control the beverage production process. The key dispute is over the meaning of “barcode” and whether there was any prosecution disclaimer.

The technology underlying the dispute is individual coffee pods that have a barcode located on the outer rim of the pod that the coffee machine can read to self-adjust temperature, water amount, and other characteristics to brew different types of coffee all without user input creating a “one touch” gourmet coffee maker. Depending on the pod, our Nespresso machine can make expresso, a double expresso for the wife, or just a cup of black coffee for me. 

K-fee owns U.S. Patent No. 10,858,176 and claim one reads in part:  

1. A method of making a coffee beverage comprising: 

providing an apparatus including a barcode reader; 

inserting a first portion capsule into the apparatus, the first portion capsule including . . . an opposing bottom side with a first barcode located on the bottom side, . . . ; 

reading the first barcode with the barcode reader; 

controlling a production process of a first coffee beverage based upon the reading of the first barcode; 

The initial issue is the plain and ordinary definition of a barcode as both parties agree that the plain and ordinary definition is appropriate but disagree about what that meaning is. The district court issued a claim construction order construing “barcode,” relying on statements K-fee made distinguishing certain prior art (Jarisch) during prosecution of a related European patent before the European Patent Office (EPO). Based on K-fee’s statements that Jarisch discloses a “bit code” rather than a barcode, the district court construed barcode to exclude the type of bit codes in Jarisch. The district court granted summary judgment of non-infringement to Nespresso, finding that its accused coffee capsules use a code identical to Jarisch’s bit codes.  

The Federal Circuit reviewed appeal of the claim construction de novo because the claim construction relied only on intrinsic evidence. The claims and specification did not define “barcode,” so the court looked to the prosecution history, specifically K-fee’s statements distinguishing the Jarisch reference before the European Patent Office. Specifically examined were what the statements would indicate to a person having ordinary skill in the art about the meaning of “barcode.” K-fee presented evidence consisting of quotes from technical publications describing “barcode” as a code with bars of varying widths. K-fee also explicitly stated “the [skilled artisan] at all times defines the term ‘barcode’ as a line code constructed of bars having variable widths.” Additional confirmation is in K-fee’s statement that standard UPC retail barcodes fall within the scope of its claims. Since K-fee did not describe anything about how retail barcodes encode data, this further indicates K-fee was focused only on the visual appearance of varying width bars when referring to “barcodes.” 

Judge Taranto concludes a skilled artisan would not understand K-fee’s statements as excluding all bit codes from the scope of “barcode.” He specifically points to K-fee explicitly stating that retail barcodes like UPC codes are barcodes, even though they contain binary code elements. Citing Phillips v. AWH Corp.,415 F.3d 1303, 1312-17 (Fed. Cir. 2005), Judge Taranto found that the ordinary meaning of “barcode” to a relevant artisan focuses on visual appearance – i.e. a linear sequence of visually non-uniform width bars and concluded that the district court erred in narrowing the ordinary meaning of “barcode” based on K-fee’s statements to the EPO.  

I am sympathetic to Nespresso’s concern that the focus on visual appearance as to ordinary meaning misses some of the nuance about what the barcodes actually represent and that a relevant artisan would consider their functional purpose. As construed by Judge Taranto, “varying-width visual appearance of the bars” is an extraordinarily broad claim construction that seems to expand the claim scope significantly compared to the more narrow district court construction.    

The corollary issue is whether K-fee’s statements to the EPO are disclaimer of claim scope. Nespresso alleges that K-fee’s statements to the EPO constitute surrender of claim scope that would include their Vertuo coffee pod product. The court notes disclaimer requires “clear and unmistakable” statements, unequivocally disavowing claim scope. Looking at K-fee’s EPO submissions, statements about bit codes being excluded from barcodes were ambiguous rather than clear. For example, K-fee said a barcode “can be, but is not necessarily, a bit code.” This directly contradicts disclaimer of all bit codes. 

Judge Taranto concludes that the prosecution history as a whole does not show K-fee clearly disclaimed any portion of the ordinary meaning of “barcode.” The only thing K-fee clearly distinguished was the Jarisch reference itself, which does not expressly disclose varying width bars. Multiple instances indicate some possible indicia that K-fee disclaimed some scope however, it was not “clear and unmistakeable” as required to find disclaimer.  Therefore, reversing the district court’s construction of “barcode” also necessitated reversing the summary judgment of non-infringement that was based entirely on the erroneous claim construction.

by Dennis Crouch

Actelion Pharmaceuticals Ltd v. Mylan Pharmaceuticals Inc., No. 2022-1889 (Fed. Cir. Nov. 6, 2023) [decision]

The Federal Circuit’s bread-and-butter over the years has been claim constructions that often surprise or confuse district court judges. Part of the issue here is that most Federal Circuit judges have construed thousands of patents and are deeply immersed in the law of claim construction — while most district court judges see claim construction as a small part of a patent case, which itself is a small part of their overall docket. The other part of the issue, of course, is that no deference is given to the district court’s claim construction on appeal. The ensuing appeal then regularly turns out like that law school class where students seemed to provide really good answers in the Socratic game, but the professor could never resist tweaking — “almost right.”

The Actelion case involves a common situation where the patent claims include a measurement but do not state the level of precision, and the court is forced to decide whether values slightly outside the claimed range might be covered.

Actelion’s U.S. Patent Nos. 8,318,802 and 8,598,227 are directed to a new formulation of epoprostenol, a substance that naturally occurs in the human body and that is useful for treating cardiovascular diseases.  The claims appear directed to a product-by-process — a freeze dried powder (lyophilisate) formed from a solution that contains epoprostenol and that “has a pH of 13 or higher.” Mylan’s ANDA proposes a generic version that would have a pH made from a solution with pH slightly under 13.

The question for claim construction is whether the requirement of “13 or higher” pH encompasses something akin to a pH 12.6.  For abstract mathematicians, it is quite clear that 12.6 is less than 13 — the opposite of what is claimed. But, experimental scientists understand that a measurement of 12.6 might often be properly rounded to 13. The district court adopted Actelion’s proposed construction that “a pH of 13” includes values that round to 13, such as 12.5 and concluded that Mylan’s approach was infringing.  Mylan argued on appeal that the term requires an pH of “exactly” 13 — not values that are about or approximately 13.

The Federal Circuit opinion walked through various factors to help it understand the proper construction. As the court has held, the analysis begins with the claim language, as it is of primary importance. Additionally, “the specification is always highly relevant to the claim construction analysis” and is  often “the single best guide to the meaning of a disputed term.” Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).

Claim Language: The court examined whether the language setting a lower limit of “13” precludes rounding or not. The claim is written as a whole number, rather than in decimal form. The district court noted that this involved “two significant figures’ without implying any higher level of precision.”  At oral arguments, the patentee’s counsel explained:

[The inventor] did not say 13.0, which is a figure that would have 10 times the greater precision, and certainly didn’t say ‘exactly 13’, which is not scientifically possible in the context of pH, because you’re talking about measurement of billions of ions in a liter of water of hydrogen ions and determining their concentration.

Oral args at 18:00. On the other side, in places the specification appeared to equate 13.0 to the whole number 13.

Lack of Approximation Terms: The court noted that the claim lacks words like “about” that would imply approximation and that are often included within patent claims. As the court explained, “Unlike other claim terms, the disputed claim term lacks approximation language like ‘about.'”

Nature of pH Measurements: The court considered whether pH values can be measured precisely or inherently require some margin of error. The court noted Actelion’s argument that “it is not practically possible to measure exact pH values” because it would require counting every hydrogen ion in solution.

Specification: The specification alternately uses approximation terms like “about” or lacks decimal points when describing pH values. For example, the specification states the pH is “preferably adjusted to about 12.5-13.5, most preferably 13.” This shows the inventor knew how to use “about” to imply approximation, but did not for the “13” value.  The statement also suggests that 12.5 is different from 13.  As the court summarized, “the specification is inconsistent, also describing pH values like ‘13.0’, ‘11.58’, and ’13’ without clear precision.”

Prosecution History: During patent prosecution, the patentee had distinguished its invention from a formulation with pH 12 — arguing that pH 13 exhibited substantially more stability. But the prosecution history did not compare pH 13 with values in between 12 and 13. As the court explained, the examiner “drew a distinction between the stability of a composition with a pH of 13 and that of 12” but this did not address whether pH 13 includes values rounding to 13.

With claim construction, the Federal Circuit has ruled that courts can quite often construe claims based solely upon intrinsic evidence. But, at times courts are permitted to go further and access extrinsic evidence like scientific texts.  Here, the Federal Circuit concluded that this is a case where extrinsic evidence  is necessary to understand how a skilled artisan would view the claim language in terms of pH precision and significant figures.  As the court explained, “this case is one where the proper claim construction cannot be reached without the aid of extrinsic evidence.” The appellate panel thus vacated the claim construction and infringement judgment and remanded for the district court to consider the extrinsic evidence like scientific textbooks and perhaps expert testimony in the process of reconsidering the claim construction.

The panel consisted of Circuit Judges Reyna, Stoll, and Stark. Circuit Judge Stoll authored the opinion.

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This case highlights an issue that has led to claim construction disputes in numerous cases involving measurements and precision with billions of dollars turning on so-called rounding errors. The lack of clarity stems from applicants not specifying the precision or margin of error for claim terms either in the original application or during prosecution. This ambiguity could be avoided if the USPTO were to put the onus on patent applicants to identify the precision and error margin for any measurements recited in the claims. For example, the USPTO examiner could reject the claims as ambiguous based upon the broadest reasonable interpretation and require the applicant to clarify whether “a pH of 13” allows for values that round to 13 and if so, the acceptable variance (e.g. ± 0.1, ± 0.01 pH units).

Requiring patent applicants to explicitly identify the precision and error margin for measurements during prosecution would prevent the need for courts to resort to extrinsic evidence to resolve ambiguity that should have been addressed before issuance. This would increase certainty around claim scope and reduce unnecessary litigation.

What do you think, should the USPTO consider more ways to have applicants clarify claim term precision when filing and prosecuting applications involving numerical measurements?

by Dennis Crouch

One of the ambiguities with contemporary claim construction is how courts deal with loosely implied limitations from the specification. These do not rise to the level of ‘disclaimer’ but we’re never entirely sure whether the specification-forward approach of Phillips v. AWH will have traction.  The courts tend to strongly oppose importing limitations into the claims absent a disclaimer, but claim-language hook can often lead to interpretative narrowing.  This becomes even more interesting in situations where the patentee is using a coined term but without an express definition of scope.  In those instances it seems appropriate to read more into the the specification — but how much more?

The Federal Circuit’s decision in Malvern Panalytical Inc. v. TA Instruments-Waters LLC, No. 2022-1439 (Fed. Cir. Nov. 1, 2023) offers some guidance — and also rejects the use of prosecution history from a non-family-member application in interpreting patent claim scope.

At issue was the meaning of the term “pipette guiding mechanism” as used in a pair of patents owned by Malvern.  U.S. Patent Nos. 8,827,549 and and 8,449,175. The district court limited the term to only “manual” embodiments based on statements made during prosecution of an unrelated patent.  With that narrow construction, the accused automated devices clearly did not infringe — and the patentee stipulated as such. On appeal, the Federal Circuit vacated the district court’s claim construction, holding that the term was not limited to manual embodiments and that unrelated prosecution history should not have been used to construe the claims.

The patents relate to microcalorimeters, which are instruments used to measure the heat absorbed or released during a chemical reaction. Specifically, the patents describe an isothermal titration calorimeter (ITC) that contains several components including an automatic pipette assembly, a stirring paddle and motor, and a “pipette guiding mechanism.” The pipette guiding mechanism moves the pipette assembly between different positions, such as inserting the pipette into a sample cell for measurements or into a washing apparatus for cleaning. The key dispute was whether this pipette guiding mechanism included both manual and automatically operated embodiments. The Federal Circuit ultimately held that the plain meaning of the term encompassed both manual and automated guiding mechanisms.

District Judge Andrews (D.Del.) sided with the accused infringers in finding that the claimed “pipette guiding mechanism” should be limited only to manual operation forms.  On appeal, the TA defended the judgment and raised the following arguments: (1) The specification discloses two embodiments of the guiding mechanism, both of which are operated manually and refers to a “user skills” as an aspect of operating the machine.  (2) The specification goes on to describe other automated portions of the assembly, but did not do so with the guiding mechanism. (3) The term “pipette guiding mechanism” is a coined term without a plain meaning, so it can’t be broader than the embodiments in the specification. (4) that the patentee’s provided evidence that a product guide being distributed “included” the “relevant features” of their claimed invention.  That product guide only described manual operation.  (5) Finally, during prosecution of a separate non-family-member patent (US9103782), the patentee had argued that it was describing a ‘purely manual guiding system’ as an attempt to avoid prior art from an automated reference.   Although perhaps not a complete disclaimer, TA argued that these factors come together to narrowly construe the claim to cover only manual guiding mechanisms.  The Federal Circuit dismantled these arguments individually.

Claim Construction Analysis

The Federal Circuit began its analysis by looking to the plain and ordinary meaning of “pipette guiding mechanism” as would be understood by a person of ordinary skill in the art. The court found that the plain meaning encompassed both manual and automatic guiding mechanisms. This was based on examining the individual words in the claim term, as well as the overall context provided by the claims and specification. The court found no clear disavowal or redefinition in the specification or the arguments made during prosecution and so gave the claims their full ordinary meaning.

As to the coined-term argument, the court found that even coined terms can have a discernible plain and ordinary meaning based on the intrinsic evidence of the patent. There is some tension among the cases on this issue.  Compare Indacon, Inc. v. Facebook, Inc., 824 F.3d 1352, 1357–58 (Fed. Cir. 2016) (coined terms without a plain and ordinary meaning in the art can be limited more readily by prosecution statements) with Littelfuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1381 (Fed. Cir. 2022) (“[T]he district court was correct in seeking to give meaning to the term ‘fastening stem’ by looking to the meaning of the words ‘fastening’ and ‘stem’ as used in the patent.”).  The appellate panel first noted that the doctrine is “sparingly applied” and, as here, the patent uses the individual words “pipette” “guiding” and “mechanism” in a manner that can be readily understood and does not suggest a manual limitation.  Rather, “the plain and ordinary meaning of ‘pipette guiding mechanism’ is a mechanism that guides a pipette, which can be either manual or automatic.”

In this case, the claims lack a textual hook for a manual requirement and the court found no “clear and unmistakable” disavowal.  As such, the proper construction is the full scope.

Use of Unrelated Prosecution History

A significant aspect of the Federal Circuit’s decision was rejecting the district court’s reliance on prosecution history from a non-family member patent to construe the claims. Although not an official  ‘family member,’ the parallel application had a shared assignee, was being prosecuted by the same law firm, and and also covered a pipetting system. In that non-family-member case, the patentee had distinguished its invention from the prior art by arguing that its guiding mechanism operated manually rather than automatically.  The district court treated the statements as admissions limiting “pipette guiding mechanism” to manual embodiments.  That office action rejection was then submitted to the PTO in these cases as part of an IDS.

On appeal, the Federal Circuit rejected the district court analysis, holding that  statements in an “unrelated” application do not guide meaning or serve as a disclaimer and further that submission of the OA in an IDS is insufficient to incorporate those statements for purposes of construing the claims at issue.

Although this answer here is probably correct, it makes me uncomfortable because it allows patentees to tell different stories in different cases.  Here, the cases were being handled by different examiners in different art units — it might be a different story though if the same examiner was looking through all the  similar but “unrelated” cases.

Although the logic of this case all seems clear from hindsight, I continue to be concerned that this situation offers lots of wiggle room for each side to push  for advantage — akin to a nose of wax.

by Dennis Crouch

WSOU Investments LLC v. Google LLC, Nos. 2022-1063, 2022-1065 (Fed. Cir. Oct. 19, 2023)

WDTX District Court Judge Alan Albright sided with the accused infringer in this case — holding that the asserted claims were invalid as indefinite.  The setup here is a common scene: means plus function (MPF) claim limitations without adequate support in the specification.

Most commonly patentees draft claims that cover the physical structure of an invention or the particular steps taken in a process. However, the Patent Act also permits a patentee to claim the elements of an invention as “means for” accomplishing a specified function without actually claiming the structural components. Although a “means for holding hot coffee” appears potentially broader than claiming a “ceramic mug,” the statute itself places key limits on the scope of these so-called “means plus function” claims. In particular, a means for limitation is interpreted to only cover the “corresponding structure” disclosed in the specification and their equivalents. 35 U.S.C. § 112(f). And, a series of Federal Circuit cases have created a bright line rule that a means-plus-function limitation will render the entire claim invalid as indefinite in situations where no corresponding structure is provided in the specification. This is the case even in situations where various ways to perform the claimed means are well known to those of skill in the art. See, e.g., Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351-52 (Fed. Cir. 2015); Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1337-38 (Fed. Cir. 2008).  In this situation, my “means for holding hot coffee” might not even cover a ceramic mug if the specification itself only discloses paper cups. And, the claim would be invalid if it failed to disclose any particular embodiments of a hot-coffee-holding device.

A patentee intending to invoke 112(f) style claiming will typically use the magic words “means for …” However, the Federal Circuit concluded that claim meaning is a matter of objective analysis, rather than subjective intent.  In MPF analysys, the court looks beyond the magic words and more generally ask whether the limitation recites a non-structural “nonce” word.  A “nonce” word is a verbal construct that does not convey a particular structure, such as “element,” “device,” or other generic, non-structural terms.  When a nonce word is interpreted in means plus function form, the corresponding structure in the specification must be something more than a repeat of the same nonce word — lest the claim be found invalid as indefinite.

In this case, the two patents at issue are related to image tracking technology (the ‘045 patent) and gesture control technology (the ‘825 patent).  The following claim terms were the ones disputed:

1. “a processor configured to …” (‘045 patent)
2. “at least one memory and the computer program code are configured, with the at least one processor, to cause the apparatus to …” (”825 patent)

U.S. Patent Nos. 8,965,045 and 9,335,825.

Judge Albright found each of these underlined terms to be in “nonce” form and therefore applied MPF analysis.  A processor is a means for processing; a memory is a means for storing data; etc.  According to Judge Albright, the patent document did not provide any further structural disclosure beyond the functional words — thus rendering the claims indefinite.

On appeal, WSOU argued on appeal that the limitations were not means-plus-function limitations, and thus § 112, ¶ 6 did not apply. Alternatively, it argued the specifications disclosed adequate structure.

As to the ’045 patent, the Federal Circuit affirmed the district court’s determination that the “processor” limitation invoked § 112, ¶ 6 because in the context of the claims and specification it was described only functionally and generically. The court concluded that the patentee had focused its arguments on the processor being not-MPF and had waived any arguments regarding corresponding structure. “WSOU argues for the first time on appeal that the specification discloses corresponding structure.”

As to the ’825 patent, the Federal Circuit reversed. It held that the “memory,” “code,” and “processor” limitations in this patent, read in context of the claims and specification, would connote sufficient structure to avoid § 112, ¶ 6. The court distinguished the ’825 patent’s more specific description of these elements.

So, we have the word “processor” interpreted as a nonce word invoking MPF analysis in one patent; but a structural limitation in the second patent.   The difference here is that in the ‘045 patent, the patentee “treats the word ‘processor’ so broadly as to generically be any structure that manipulates data” but without providing specific examples.  On the other hand, the ‘825 patent included a much more concrete explanation of the term. The court explained:

In contrast to the ‘045 patent, the specification [in the ‘825 patent] describes the ‘processor’ as hardware that runs the computer program code. Specifically, the specification teaches that the term ‘processor’ is synonymous with terms like controller and computer and ‘should be understood to encompass not only computers having different architectures such as single/multi-processor architectures and sequential (Von Neumann)/parallel architectures but also specialized circuits such as field-programmable gate arrays (FPGA), application specific circuits (ASIC), signal processing devices and other devices.’

Thus, the intrinsic evidence from the specification justified the distinction.  One odd note here is that I did read through the ‘045 patent and it does seem to include a bit more than what was suggested by the court. In particular, the ‘045 patent has the same quoted statement that a processor:

should be understood to encompass not only computers having different architectures such as single/multi-processor architectures and sequential (Von Neumann)/parallel architectures but also specialized circuits such as field-programmable gate arrays (FPGA), application specific circuits (ASIC), signal processing devices and other processing circuitry. …

‘045 patent. In addition, the ‘045 patent indicates that a processor could be configured as “processing circuitry” that includes a combination of implementations including microprocessor(s).

The Federal Circuit did not consider these factual similarities because, apparently the patentee raised them as to the ‘045 for the first time on appeal.   If I were the patentee, I might review this decision carefully and consider whether a request for panel rehearing is appropriate — is it true that the patentee only preserved the structure argument as to one of the patents?

In any event, the case is interesting for the outcome — the Federal Circuit finding that Judge Albright is being too tough on patentees.

by Dennis Crouch

The Federal Circuit’s new Finjan decision once again focuses attention on what I call patent law’s “indefinite article shuffle.” Finjan v. SonicWall — F.4th — (Fed. Cir. 2023).

Although patent courts do interpret the indefinite article “a” as allowing for a plural meaning, they generally do not permit a change in the associated noun. Let me explain. Here, the patentee Finjan claimed “a computer” performing a certain operation and later referred to “the computer” performing another operation. The accused infringer SonicWall was using two different computers for these operations and the patentee sought a construction that relied upon the presumed plurality to encompass the accused activity. The district court refused and awarded summary judgment of non-infringement. On appeal, the Federal Circuit affirmed, finding that the transition from “a computer” to “the computer” requires the same computer perform both operations. As the court explained, “the use of ‘the’ also indicates the claimed term refers to an antecedent term.” Slip op. at 17 (citing Convolve, Inc. v. Compaq Comput. Corp., 812 F.3d 1313 (Fed. Cir. 2016)). Thus, the reference to “the computer” tied back to the same “a computer” initially recited, requiring a single computer be able to perform both steps.

The Federal Circuit issued a similar opinion earlier in 2023 in Salazar v. AT&T Mobility LLC, 64 F.4th 1311 (Fed. Cir. 2023). In Salazar, the court explained that “while the claim term ‘a microprocessor’ does not require there be only one microprocessor, the subsequent limitations referring back to ‘said microprocessor’ require that at least one microprocessor be capable of performing each of the claimed functions.” Id. See also Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283 (Fed. Cir. 2015).

Although I agree with the Federal Circuit’s decision here as to both the claim construction and non-infringement, it also appears to be a clear situation where the doctrine of equivalents could save the patentee.  However prosecution history estoppel may be a problem for the patentee on the DOE front because one of the “computer” references was added during prosecution in order to move the case toward allowance.

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The district court also found another set of claims not infringed — this time based upon an agreed claim construction of the term “downloadable.” The patents relate to cybersecurity technology for protecting network-connected devices from malware, and these patents particularly related to identifying and stopping malware downloads: U.S. Patent Nos. 8,677,494; 6,154,844; 6,804,780; and 7,613,926.

These all require receiving a “downloadable” and the parties had agreed to define a downloadable is an “executable application” that is downloaded and “run” on the destination computer. The problem for the patentee is that SonicWall’s software receives data packets but never reassembles them into an executable application.  Rather, the accused SonicWall product operates by inspecting the payload on a packet-by-packet basis and then sends each packet to its destination without reassembling the file.

Based upon this uncontroverted evidence of how SonicWall operates and the agreed upon claim construction, the district court awarded summary judgment of non-infringement to the accused infringer.  On appeal, the Federal Circuit affirmed — finding that the district court did not “impermissibly deviate[] from the parties’ agreed-upon construction” but rather only “elaborat[ed]” upon inherent aspects of the construction.

On appeal, the patentee raised a number of claim construction arguments that may have carried weight in an ordinary claim construction context. Here those arguments were rejected as the court repeatedly returned to the text of the stipulated claim construction that the patentee had agreed to.

We do not permit parties on appeal to raise claim construction arguments challenging a stipulated construction.  See, e.g., Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1322 (Fed. Cir. 2013); see also Traxcell Techs., LLC v. Sprint Commc’ns Co. LP, 15 F.4th 1121, 1129 (Fed. Cir. 2021) (“Now Traxcell insists in retrospect that this construction was wrong. But having stipulated to it, Traxcell cannot pull an about-face.”).

Slip Op. at 12.  Judge Bryson wrote in dissent noted that the district court’s construction leads to absurd results based upon how the internet works. No device ever ‘receives’ an already assembled executable program; rather folks receive the packets and that is seen as the equivalent of receiving the program.  Bryson then went further and argued that the district court overstepped the bounds of the agreed-upon construction.

SonicWall argues that Finjan agreed to the construction of the term Downloadable and is stuck with the consequences, even if the consequences are that the patent reads on no embodiments. In fact, however, the record reflects that although the parties to the construction of the term Downloadable, they did not share thesame understanding of the term “executable,” as used in that construction, a point that became clear during the summary judgment argument. By agreeing to the construction of the term Downloadable, Finjan did not acquiesce in the interpretation of the court’s construction of “executable,” which was that an “executable” file must be executable without any further processing, rather than being capable of execution after, for example, being reconstructed following its transmission in packetized form.

Dissent at 3-4. In Judge Bryson’s view, the district court interpreted “executable” too narrowly in a way that effectively altered the agreed-upon construction. Although Finjan agreed to the overall construction of “Downloadable,” it did not agree to the district court’s implicit interpretation of “executable” as requiring executability upon receipt.

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The final issue in the case was the district court’s decision that a number of the asserted claims were invalid. In fact, the district court did not make this ruling on the merits, but rather used the procedural tool of issue preclusion (collateral estoppel) since the claims had been held invalid in a prior dispute.

Issue preclusion prevents a party from relitigating an issue that has already been actually litigated and necessarily determined by a final judgment in a prior case. Google LLC v. Hammond Dev. Int’l, Inc., 54 F.4th 1377, 1381 (Fed. Cir. 2022). Issue preclusion always involves two different cases, and the question is whether some determination in the first case will preclude the parties from relitigating the issue in a subsequent case.  The doctrine applies when: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) the party against whom issue preclusion is asserted had a full and fair opportunity to litigate the issue in the first action. Id. Issue preclusion can bar relitigation of both questions of law and questions of fact.

Issue preclusion can attach as soon as a final judgment is reached in one case, even before any appeals are exhausted. Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367 (Fed. Cir. 2013). This allows parties to rely on a decision without waiting for appeals to conclude. However, if the decision providing the basis for issue preclusion is later overturned on appeal, this eliminates the ability to continue to rely on issue preclusion. Mills v. City of Covina, 921 F.3d 1161, 1170 n.2 (9th Cir. 2019). Since the overturned judgment can no longer have preclusive effect, any issue preclusion decisions relying on it must also fall away. This is what happened in Finjan v. SonicWall with the court vacating the invalidity holding.  Based upon my reading, this outcome does not save the patentee’s case against SonicWall (Because of the non-infringement findings), it does allow Finjan to continue to assert its patents against others.

by Dennis Crouch

One-E-Way, Inc. v. Apple Inc., 22-2020 (Fed. Cir. Aug. 14, 2023) (nonprecedential) (Opinion by Chief Judge Moore, joined by Judges Lourie and Stoll).

The district court sided with Apple on summary judgment, finding no infringement. On appeal, the Federal Circuit has affirmed, holding that Apple’s accused Bluetooth products do not infringe One-E-Way’s patents.  Although the parties had agreed to the construction of the “unique user code” term, they disagreed over the construction-of-the-construction.  On appeal, the court treated this meta-construction effectively as a form of claim construction — looking for the ordinary meaning rather than a contract-like interpretation that would have looked more toward discerning the intent of the parties. (more…)