Mangosoft’s patent covers a networked virtual memory system. The virtual memory is formed by pooling storage capacity on the local networked computers (nodes) rather than relying on a primary server. Oracle’s Real Application Clusters do something similar – but use a cluster of memory devices (akin to a RAID).
The appeal focuses on the definition of a “local” storage device. The CAFC agreed with the district court that the “local” limitation requires that the storage device be individually linked to a computer to form a network node.
Here, the district court had relied on a technical dictionary for its definition (in a pre-Phillips opinion). On appeal the CAFC again affirmed that dictionaries are still useful in claim construction. More particular to this case, however, the court found that virtually any system of claim construction would reject the patentee’s proposed broad construction.
“Having found support for the district court’s claim construction in the claim language, the specification, and the prosecution history …, we note that this construction is also consistent with the technical dictionary definition proffered by Oracle.”
Summary judgment of non-infringement is affirmed.
This case could be seen to emphasize the point that for the majority of claim construction decisions, Phillips altered the methodology but not the ultimate result.
Notes:
Mangosoft had originally sought $500 million in damages from Oracle.
Acumed and Stryker have been battling for years over patented orthopedic surgery equipment. The original suit ended with a final judgment in April 2006 for Acumed. This second suit, filed in May 2006, alleges that one of Stryker’s new orthopedic nails infringes the patent. The new version (named T2) was developed and put on the market during the original litigation, and Acumed deliberately chose not to include allegations against that product for fear of delaying the first trial.
The Oregon federal district court dismissed Acumed’s second lawsuit – finding the claim precluded by the prior judgment on the merits.
On appeal, Acumed successfully argued that its second infringement action is not precluded by the first action even though (1) the original action was concluded by a final judgment on the merits; (2) the parties and patents of the second suit are identical to those of the original suit; and (3) Acumed was in a position to assert infringement against T2 in the original suit but consciously chose not to pursue an infringement claim against T2.
Claim Preclusion: Following a final judgment on the merits, claim preclusion binds parties from re-litigating the merits presented and also from raising “any other admissible matter which might have been offered” on the merits. Although the particular elements of claim preclusion may vary, the Ninth Circuit finds preclusion only when the original litigation was terminated by a final judgment on the merits and second action has the same parties or privies as the original and the same claim or cause of action.
Taking a narrow view of “same claim or cause of action” – the Federal Circuit held that in patent law, claim preclusion can only be found where the accused products in the two actions are “essentially the same.”
‘[C]laim preclusion does not apply unless the accused device in the action before the court is “essentially the same” as the accused device in a prior action between the parties that was resolved by a judgment on the merits… Accused devices are “essentially the same” where the differences between them are merely “colorable” or “unrelated to the limitations in the claim of the patent.”…Finally, the party asserting claim preclusion has the burden of showing that the accused devices are essentially the same.’
In its opinion, the court rejected a “could have” defense — instead holding that “claim preclusion does not bar a claim merely because it could have been raised in a prior action between the parties that was resolved by a final judgment on the merits.” Along this same line, a patentee therefore does not lose rights by filing suit against only some of an accused infringer’s products (because “two claims for patent infringement do not arise from the same transactional facts unless the accused devices in each claim are ‘essentially the same’”).
Stryker admitted that the T2 was not essentially the same as its prior product — thus eliminating any possibility of claim preclusion. Stryker’s admission is the result of a tough litigation decision. To win on claim preclusion, it must argue that the new product is the same as the old product. However, if it did not win on claim preclusion, that argument would place the defendant’s non-infringement argument in serious peril.
Notes:
As the court noted, claim preclusion refers to a legal action rather than a patent claim.
PSN Illinois v. Ivoclar Vivadent, et al. (Fed. Cir. 2008)
PSN’s patent claims a method of making porcelain veneers. PSN sued fourteen companies for infringement, most of whom settled early. The remaining defendants successfully argued that their veneer process was non-infringing.
On appeal, the CAFC looked at claim construction. In a passing breath, the court made the distinction that Phillips applies to “undefined” claim terms:
“We determine the ordinary and customary meaning of undefined claim terms as understood by a person of ordinary skill in the art at the time of the invention, using the methodology in Phillips v. AWH Corp., 415 F.3d 1303, 1312-19 (Fed. Cir. 2005) (en banc).”
Here, the court needed to determine the meaning of the undefined term “ready for mounting.” Relying upon the patentee’s use of the word ‘MAY’ in describing the claimed process, the CAFC held that the term should be rather broadly construed to optionally include ‘finishing’ steps. (Specification: “While still on the statue, the veneer casing may be subject to a finishing treatment to improve the esthetics.”)
The appellate panel noted that, within reason, claims should normally be construed to cover the described embodiments. The panel cautioned however, that each claim does not necessarily cover each embodiment. To the contrary, in some cases unasserted or cancelled claims directed to a particular disclosed embodiment may actually serve as evidence that the scope of remaining asserted claims does not extend to that embodiment.
“[C]ourts must recognize that disclosed embodiments may be within the scope of other allowed but unasserted claims. Likewise, during prosecution, an applicant may have cancelled pending claims but not amended the specification to delete disclosure relevant only to the cancelled claims. In such cases, unasserted or cancelled claims may provide ‘probative evidence’ that an embodiment is not within the scope of an asserted claim.”
Here, although the CAFC reversed on claim construction, it still found that summary judgment of non-infringement was proper.
After a jury found that DirecTV willfully infringed Finisar’s information broadcast patent, the Eastern District of Texas court (Judge Clark) awarded over $100 million to the patentee for past damages. Instead of an injunction to stop the infringement, Judge Clark also ordered a compulsory license rate for any future infringement.
Parallel Claim Construction: On appeal, the CAFC first reversed the construction of the claim term information database – leading to an order for a new trial on both infringement and validity. The same patent term had also been later construed by a N.D. Cal. district court in Comcast v. Finisar, and “in the interest of uniformity and correctness” the appellate panel consulted the analysis of both courts. Here, the CAFC essentially used the Comcast decision as an amicus brief arguing for a particular result. In its decision, the appellate panel praised the Comcast court for its rejection of the DirecTV claim construction.
It is appropriate to consider here what a district court should take away from the CAFC’s process – especially with respect to the court’s stated goal of uniformity. This decision leaves execution of that goal squarely in the hands of the appellate court. In this case, the California district court is encouraged to avoid uniformity and instead focus on contrasting its decisions from those of other district courts interpreting the same terms. When several courts are deciding the scope of identical property rights in parallel infringement actions, there is some value in having a uniform interpretation or outcome. The practical implication of this case, however, is that a district court looking at a patent that was previously construed should not consider the value of uniformity in its decision.
Construction of Prior Art: A concept ripe for further analysis is the construction of prior art — a job that is currently left to the jury. Here, the court found that the database structure textbook reference should be interpreted based on “an understanding of English grammar and usage.” Ultimately, the court decided the anticipation issue based on the comma placement in a paragraph of the prior art book. Interestingly, although the court initially terms its interpretation a “stretch” in the end its interpretation of the facts means that no reasonable jury could hold otherwise. (Based on its grammatical holding, one claim was held invalid and the others must be revisited by a jury).
Willful Infringement: The CAFC also reversed the willfulness decision — finding that there is no requirement for an opinion of counsel, and that an opinion of counsel can appropriately ignore validity if it sufficiently addresses noninfringement.
The district court granted summary judgment of non-infringement to the defendant CA. On appeal, considers preamble claim construction and also examines the defense of laches, inequitable conduct, and inventorship.
This is the third time that the antivirus patent at issue has been seen by the CAFC. In a prior appeal, Symantec was a defendant. After seeing the light, Symantec purchased the patent and continued a pending lawsuit against CA — this time as the plaintiff.
Preamble Limitation: The asserted claim preamble begins as follows: “In a system for transferring digital data for storage in a computer storage medium, a method of screening the data as it is being transferred.” The question on appeal is whether the preamble limits the claim to coverage of screening that occurs only “as [the data] is being transfered.”
The CAFC found that the preamble term not limiting because the term does not recite “essential structure or steps” nor does is it “necessary to give life, meaning, and vitality” to the claim. One guidepost for ascribing meaning to a claim preamble is a prosecution history of argument based on the preamble. Here, although the preamble term had been added during prosecution, the court found no evidence that the term had its “own independent significance” or that the applicant demonstrated “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art.” (Quoting Catalina Marketing, 289 F.3d 801 (Fed. Cir. 2002)).
[I]t is assumed that the preamble language is duplicative of the language found in the body of the claims or merely provides context for the claims, absent any indication to the contrary in the claims, the specification or the prosecution history.
Consequently the preamble term is given no effect. Claim construction reversed and the non-infringement decision vacated in Symantec’s favor. (Based on the new claim construction, validity must also be reconsidered).
Laches: The CAFC dismissed the defendant’s laches claim. Here, the court noted that that laches for delaying litigation is considered on a product-by-product bases and thus the delay is restarted when a defendant substantially changes its product line.
Inventorship: In a cross-appeal, a Mr. Levin asserted that he was a co-inventor to the asserted patent. As a matter of law, a co-inventor’s self-interested testimony is not sufficient to prove inventorship — rather, the inventor must provide corroborating evidence (that is sufficient to prove inventorship by a clear and convincing standard under a rule of reason). Here, Levin proved that he had a meeting with listed inventor and also that the listed inventor lacked proof that he invented a claimed portion. On appeal, the CAFC affirmed that this evidence was not sufficient to prove Levin’s inventorship and that the evidence regarding the listed inventor’s contribution was irrelevant.
Note: My former firm McDonnell Boehnen continues to represent Symantec in this matter.
The district court granted summary judgment to T-Mobile — finding the PowerOasis cell-phone vending machine patents invalid.
The patent family history includes a continuation-in-part (CIP) preceded by a continuation and an original utility patent application. Based on the prior art date, the issue boiled down to whether the asserted patents could claim priority through the CIP to the original application.
Patentee Bears Burden of Proving Priority. Despite the statutory presumption of validity, the CAFC first held that the patentee normally has the burden of proving priority. The exception is when the PTO considers the issue of priority during prosecution. In drafting the opinion, Judge Moore shifted the decision from a question of validity (where a presumption lies) to a question of effective filing date (where there is no statutory presumption). “When neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application.”
Interestingly, this decision falls runs parallel to Microsoft’s recent petition for certiorari in the z4 case.
Written Description: To claim priority to the original application date, that original application must “convey with reasonable clarity to those skilled in the art, as of the filing date sought, [that the inventor] was in possession of the [claimed] invention.” (Quoting Vas-Cath). Here, the original application disclosed a “display” and “user interface” while the asserted patent claimed a “customer interface.” Although these terms appear quite close, the CIP had added specific examples of a laptop customer interface while the original application only included interface embodiments attached to the vending machine. This makes a difference because the accused device uses a laptop and the patentee asked for a construction of the term that would include the laptop interface.
Holding: “Because none of this support was present in the Original Application and because the Original Application did not disclose a customer interface apart from the vending machine, the asserted claims are only entitled to the 2000 CIP Application.”
A jury found O2 Micro’s DC/AC converter patents willfully infringed and not invalid. The Eastern District of Texas court (Judge Ward) then issued a permanent injunction.
Waiver of Claim Construction Appeal: During a Markman hearing, the parties sparred over the definition of the term “ONLY IF”. Rather than issuing a claim construction decision, the district court decided that the common phrase needed no explanatory construction. After having lost to the jury, the defendants appealed the lower court’s failure to construe the ONLY IF phrase. However, because the defendants did not specifically object to the jury instructions, O2 Micro argued that the the defendants has waived their right to appeal.
The issue of waiver of claim construction has been raised before, and the CAFC dismissed it again — this time by quoting the CAFC’s own 2004 Cardiac Pacemakers opinion:
“When the claim construction is resolved pre-trial, and the patentee presented the same position in the Markman proceeding as is now pressed, a further objection to the district court’s pre-trial ruling may indeed have been not only futile but unnecessary.”
Thus, if disputed at a Markman hearing, claim construction appeal issues are not waived by failure to object to jury instructions. Furthermore, the CAFC will also allow new arguments to be presented on appeal justifying the previously proposed construction.
Construing all the terms: Although the meaning of the phrase “ONLY IF” was disputed by the parties, the district court failed to construe the term. In its decision, the CAFC vacated — finding that the disputed phrase should have been construed. By failing to define the term, the court essentially passed the construction dispute to the jury.
“When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute. . . . When the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it.”
In deciding this issue, the CAFC indicated that claim construction requires determining both the meaning of the words in the claim and the scope encompassed by the claim. Further, even ordinary terms need construed when they are susceptible to multiple interpretations.
Overburdening: Over the past decade, the number of terms being construed (and appealed) has risen dramatically. In its decision, the CAFC at least waived its hands at the problem — recognizing “that district courts are not (and should not be) required to construe every limitation present in a patent’s asserted claims.” (Emphasis in original). No, the court only needs to construe those claim terms that are disputed, subject to alternative theories, that could be helped by clarification, and when otherwise necessary to describe the claim coverage.
Meaning and Scope: This case is quite important because it shifts even more power and importance onto the issue of claim construction and away from a jury’s factual determination of infringement and novelty.
Ortho-McNeil Pharmaceutical v. Mylan Labs (Fed. Cir. 2008)
Ortho-McNeil’s anti-convulsant Topamax is expensive and brings in over $1,000,000,000.00 each year. Hoping to produce a generic version, Mylan Labs filed an Abbreviated New Drug Application (ANDA) with the FDA along with arguments that the Topamax patent is invalid and not infringed.
AND vs OR: Mylan’s primary argument relies on a specific construction of the word “AND.” According to Mylan, AND should be construed logically as a conjunction. (i.e., AND = AND). Ortho, on the other hand, argues that its AND is not so restrictive. (I.e., AND = OR).
As you might guess, according to the courts, AND does indeed mean OR.
The problem with Mylan’s argument is that it turns the claims into nonsense. In particular, a conjunctive AND would require the claimed R groups (above) to be both independent spurs and, at the same time, joined as ring groups.
In the 2004 Chef America case, the CAFC allowed such a non-sensical construction — holding that the claim should be interpreted “as written, not as the patentees wish they had written it.” Here, however, Judge Rader distinguished Chef America — noting that here, the claim intrinsic evidence points toward the “alternative” interpretation:
“In Chef America, the only possible interpretation of the claim led to a nonsensical result. This situation is distinguishable because claim 1 can and should be interpreted as the patentees intended, with the meaning of and connoting alternatives.”
Because AND means OR, the claim properly covers the active ingredient topiramate.
KSR and Unpredictable Arts: In what may become an oft-cited decision, Judge Rader outlines how the supreme court’s KSR decision should have little impact on the “unpredictable arts” such as the development of pharmaceuticals.
Apparently, the anti-convulsive properties of topiramate were discovered by a researcher (Maryanoff) looking searching for FBPase inhibitor for diabetes. Oddly, both Mylan and the Court focused on whether the actual decisions of the researcher were logical, blocked by obstacles, or helped by serendipity.
“In retrospect, Dr. Maryanoff’s pathway to the invention, of course, seems to follow the logical steps to produce these properties, but at the time of invention, the inventor’s insights, willingness to confront and overcome obstacles, and yes, even serendipity, cannot be discounted.”
Of course, under 35 U.S.C. 103 patentability is not to “be negatived by the manner in which the invention was made.”
A Flexible TSM Test: Focusing on KSR, the court promotes its new flexible TSM test:
“The TSM test, flexibly applied, merely assures that the obviousness test proceeds on the basis of evidence – teachings, suggestions (a tellingly broad term), or motivations (an equally broad term) – that arise before the time of invention as the statute requires. As KSR requires, those teachings, suggestions, or motivations need not always be written references but may be found within the knowledge and creativity of ordinarily skilled artisans.”
On the facts, the CAFC found agreed that the invention is clearly nonobvious.
“In this case, the record amply supports the district court’s finding of nonobviousness. . . . As noted above, the challenges of this inventive process would have prevented one of ordinary skill in this art from traversing the multiple obstacles to easily produce the invention in light of the evidence available at the time of invention. Of particular importance beyond the prima facie analysis, this court also detects evidence of objective criteria showing nonobviousness. Specifically, the record shows powerful unexpected results (anticonvulsive activity) for topiramate. The record also shows skepticism of experts and copying – other respected sources of objective evidence of nonobviousness – as well as commercial success. As this court has repeatedly explained, this evidence is not just a cumulative or confirmatory part of the obviousness calculus but constitutes independent evidence of nonobviousness.”
Notes:
Judge Rader wrote this opinion and was also a member of the 2004 Chef America panel
More than any other patent litigation issue, a winning claim construction argument needs to do more than simply convince the district court judge. Rather, the best argument will both convince the district court judge and will also teach that judge how to write a claim construction opinion that holds up on appeal.
Limiting Preamble: CDS’s patent was filed in 1991 and includes the claim preamble: “portable computer.” In interpreting that preamble term, the CAFC found that it must be limiting because statements in the specification and prosecution history emphasize portability, but the portability limitation is not found in the claims.
“The written description and applicants’ statements during prosecution emphasize this feature of the invention, yet this limitation does not appear in the body of the claims. As a result, this court finds that the terms “portable computer” and “portable computer microprocessing system” limit the scope of the asserted claims.”
Disavowal of Claim Scope: The CAFC also found that CDS had, through its statements in the specification and during prosecution, disavowed coverage of a laptop computer device that included an attached keyboard and screen. In claim scope disavowal, the court always looks for a linguistic hook in the claims. Here, it relied again on the “portable computer” preamble term — finding that the patentee had disavowed coverage of portable computers that included those features.
Attachable features: In several figures, the patentee showed how a keyboard and screen could be coupled with its device. However, the CAFC noted that those attachments were only temporary and did not become part of the portable computer. “Thus, a cable connects the physically separate keyboard to the main housing. The keyboard is neither built-in nor attached.”
Exceptional Case: The patentee is not liable for attorney fees because this is not an ‘exceptional case’ under 35 USC 285. In particular, the court noted that it was not “self-evident” at the beginning of the claim construction analysis that laptop coverage had been disavowed. (Of course, this finding cuts directly against the finding that the public was on notice of a clear disavowal of claim scope)
A G Design v. Trainman Lantern (Fed. Cir. 2008) (nonprecedential)
AG sued Trainman for infringement of its hand-held RR Lantern patent. (US Pat. No. 7,118,245). The W.D. Washington district court issued a preliminary injunction after hearing an expert report that Trainman’s product was essentially identical to the patented device (except for one claim element).
On appeal the CAFC vacated the preliminary injunction — finding that the lower court had committed legal error in finding that the patentee had “a likelihood of success on the merits.”
Legal Standard for Preliminary Relief: The CAFC nominally applies a four factor standard for determining whether preliminary relief is warranted. However, two factors are requisite and typically determinative: (a) Likelihood of success on the merits and (b) irreparable harm associated without preliminary relief.
Likelihood of Success: A likelihood of success on the merits requires some proof that the defendant “infringes at least one valid and enforceable claim” of the asserted patent. The likelihood of success may be rebutted by an accused infringer who raises a “substantial question” regarding the patent’s validity, enforceability, or whether the accused device infringes the asserted claims. In a recent case, the a different panel (Judges Rader & Dyk) found the substantial question threshold met by evidence that “cast[s] doubt on the [claim’s] validity.” Erico Int’l v. Vutec & Doc’s Marketing (Fed. Cir. 2008).
Lacking a Claim Element: Because the accused device here lacked a claim element (a ‘plurality of ports’ in the reflector), it could not literally infringe. Likewise, the CAFC found that the ‘plurality of ports’ limitation had been added during prosecution to narrow the claims — presumptively foreclosing infringement by equivalents. (Unless AG can show that the “rationale for the amendment is tangential to the equivalent in question.”).
Validity Questions: The CAFC also found error in the district court opinion because the court did not specifically analyze whether a disclosed prototype included “all of the limitations of any of the asserted claims.” Instead, for the purposes of the PI, the district court had only noted that the prototype was “different” from the patent claims.
Expired Non-Compete: The parties here have a history including a non-compete agreement that expired during the appeal. Because it is now expired, the CAFC found that the non-compete could not serve as a basis for preliminary relief.
University of California v. Dakocytomation California (Dako) (Fed. Cir. 2008)
Plaintiffs UC and Abbott are the owner and licensee of a set of patents covering methods of identifying chromosomal abnormalities. On appeal, the parties question whether the lower court improperly denied preliminary relief joined with an interlocutory appeal of summary judgment of non-infringement of some claims.
As in the recent Chamberlain Group decision, the appeal of preliminary relief offered a method for the parties to obtain an interlocutory judgment on claim construction.
District Court Obviousness Trouble: On two separate occasions, the district court denied preliminary relief to the patent holder based on the likely invalidity of the asserted patents. First, the district court held that the patent was likely invalid based because the parent application was invalidating prior art. The court withdrew that analysis after realizing that the asserted patent claimed priority to the filing date of the parent. Next, the district court found the patent likely invalid for obviousness-type double patenting. That reasoning was also withdrawn by the district court after realizing that the patentee’s terminal disclaimer cured the double patenting defect.
Nonetheless, the lower court’s decision in favor of the defendant stuck because the CAFC found that the prosecution history warranted a construction of the claims that was narrow enough to allow Dako to avoid infringement.
Doctrine of Equivalents: In a decision to be contemplated further, the CAFC also decided that a narrowing amendment made during prosecution does not preclude application of the doctrine of equivalents because “the narrowing amendment was only tangential to the accused [] equivalent.”
Judge Prost dissented from the DOE holding and argued that the amendment was absolutely related to the accused equivalent.
How do district court judges with varying levels of experience perform on claim construction?Are judges more likely to have their decisions affirmed when they have previous claim construction experience?Previously here and here I provided some background on the large database I compiled and some of the results.A draft of the paper, Practice Makes Perfect? An Empirical Study of Claim Construction Reversal Rates in Patent Cases, can be downloaded here.
Today’s post provides an analysis of the data based upon two measures of district court judge experience: (1) the size of the district court judge’s total patent docket over an eleven year period; and (2) the performance after a first reversal by the Federal Circuit.As for the first measure, I determined the reversal rate (as measured by cases in which an incorrect claim construction required the case to be reversed or vacated) based upon the number of patent lawsuits a district court judge was assigned.Figure X below illustrates the results.
Figure X shows that the claim construction reversal rate varies little with the total number of patent lawsuits handled. The reversal rate was between 26.7% and 34.1%.
I turn now to the second measure of experience. It may be that a district court judge pays little attention to a Federal Circuit opinion if the case was affirmed. In contrast, when the result of a case is affected, the district court judge takes note. A remanded case is often returned to the same district court judge for further proceedings. As these further proceedings are time-consuming, the district court judge likely will remember the opinion remanding a patent lawsuit to his or her docket. Figure N below illustrates the reversal rate on all subsequent claim construction appeals after a particular district court judge has been reversed or vacated at least once due to an erroneous claim construction.
Figure N shows that the first reversal does not have a significant effect on the future performance of the district court judges, with the rate the varying from 25.0% and 44.4% for reversals, and from 31.4% and 44.4% for errors. The percentages in this breakdown vary to a greater degree than the percentages based upon number of prior appeals (reported
yesterday).However, the trend is not linear and the differences among the judges illustrated in Figure N are not statistically significant.
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The data illustrated above and described yesterday do not suggest that district court judges learn from having their claim construction rulings appealed.As I explain in more detail in the paper, there are many possible explanations for the surprising results.Three likely explanations are (i) that claim construction is inherently indeterminate; (ii) that district court judges are incapable of or not interested in learning how to perform claim construction; and (iii) that the Federal Circuit decisions do a poor job of teaching district court judges how to construe claims.(Another possible explanation is that limitations in the data, as described in detail in the paper, affect the results.)If the indeterminacy explanation is correct, then it will be difficult to lower the claim construction reversal rate, especially as long as those decisions are reviewed de novo.If the district court judge explanation is correct, then a primary rationale for adopting the Issa patent pilot program is likely faulty.In other words, if district court judges cannot learn how to perform claim construction, creating quasi-specialized patent judges is unlikely to reduce the reversal rate.If the Federal Circuit explanation is correct, then the Federal Circuit must redouble its efforts to create a uniform body of claim construction case law.
For those who are interested, the paper also analyzes the data based upon various other characteristics of the district court judges including age and years of judicial experience.
I’d like to thank Dennis for permitting me to share my results with the readers of Patently-O.I’d like to also thank the readers of Patently-O for their comments.
How do district court judges with varying levels of experience perform on claim construction? Are judges more likely to have their decisions affirmed when they have previous claim construction experience? Yesterday I provided some background on the large database I compiled and some overall results. [LINK] Today’s post provides an analysis of the data based upon the number of previous appeals of claim construction. A draft of the paper, Practice Makes Perfect? An Empirical Study of Claim Construction Reversal Rates in Patent Cases, can be downloaded here.
If district court judges improve after appellate review of claim construction, one would expect that the reversal rate would decrease as the number of appeals increases. More specifically, a district court judge with more prior Federal Circuit feedback should have a lower reversal rate than a district court judge with less experience. Assuming that the judge decided the second case after learning of the decision of the Federal Circuit in the prior case, the second time a particular judge is before the Federal Circuit, he or she should be more likely to have his or her claim construction affirmed. Figure A below illustrates the reversal rates of district court judges broken down by the number of prior claim construction appeals.
The left-most set of bars represents the results from every judge’s first appeal, with the blue bar indicating the percentage of cases that had to be reversed or vacated due to an incorrect claim construction, and the red bar indicating the percentage of cases with any erroneous claim construction. Moving to the right, the pairs of bars represent the results from each judge’s subsequent appeals.
These results suggest that district court judges do not improve as the Federal Circuit reviews their cases. Contrary to conventional wisdom, the reversal rate does not appear to decrease when a district court judge has multiple decisions reviewed by the Federal Circuit on claim construction. In fact, the highest reversal rate is for judges with four prior claim construction appeals. Other than judges who have been appealed exactly four times, the range is very narrow, between 26.8% and 30.5% for reversals and 31.0% and 40.4% for errors. Thus, there does not appear to be significant expertise gained by district court judges via direct Federal Circuit review that causes the claim construction reversal rate to decrease. (As discussed in more detail in the paper, the study is subject to several limitations inherent in studying appellate cases, including for example, a potential selection bias and a potential distortion if the cases are not distributed evenly across the district court judges. Ideally, for research purposes, cases would be randomly assigned to a judicial district (i.e., no forum shopping), and a random subset of those cases would be appealed.)
Up next: Reversal rates based performance by district court judges after a first reversal by the Federal Circuit.
I welcome comments from the readers of Patently-O.
How do district court judges with varying levels of experience perform on claim construction? To study that question, I compiled a large database that includes every single post Markman Federal Circuit decision involving claim construction. Others have studied this issue from the perspective of the Federal Circuit — i.e., what is the overall reversal rate. However, until now, no one has analyzed how district court judges perform based upon experience. My findings do not reveal any correlation between various measures of experiences and the likelihood of being affirmed. There will be several posts on the study and results. Today, I will provide some background on the dataset and a bit on the reversal rate. A draft of the paper, Practice Makes Perfect? An Empirical Study of Claim Construction Reversal Rates in Patent Cases, can be downloaded here.
The Dataset. First, a few brief words about the dataset. The dataset includes all decisions in which the parties disputed an issue of the district court’s claim construction. It includes all decisions in an eleven year period, from April 23, 1996 (the date of the Supreme Court decision in Markman) until June 30, 2007. Those decisions – 952 of them – are all of the published and unpublished opinions, as well as all of the summary affirmances under Federal Circuit Rule 36.
Overall Reversal Rates. For the entire eleven year period, 38.2% of cases had at least one term wrongly construed. Moreover, 30.0% of the cases had to be reversed or vacated because of an erroneous claim construction. These results are largely consistent with those of an earlier study (by then-professor and now-Federal Circuit judge Kimberly Moore).
Reversal Rates by Judicial District. In later posts, I will present the reversal rates based upon the experience of the district court judges. Today’s post presents the reversal rates aggregated by judicial district. Table II below identifies the number of Federal Circuit appeals from the most active judicial districts in terms of claim construction appellate decisions from April 1996 until June 2007. It also provides the percentage of cases that were vacated or reversed due to an erroneous claim construction. In the last column, I have provided the total number of patent lawsuits filed in those judicial districts, and in parenthesis, the rank of the judicial district if measured by the total number of patent lawsuits filed.
Table II: Most Active Judicial Districts on Appellate Claim Construction Experience: 1996-2007
Rank
Judicial District
# of Federal Circuit Claim Construction Appeals (1996-2007)
% of Claim Construction Appeals Reversed or Vacated because of Claim Construction Error
# of Patent Lawsuits Filed (1995-2005)
1
N.D. Cal.
84
28.6%
2613 (1)
2
C.D. Cal.
69
43.5%
2260 (2)
3
N.D. Ill.
65
26.2%
1509 (3)
4
D. Del.
54
22.2%
1112 (5)
5
S.D.N.Y.
45
28.9%
1184 (4)
6
D. Mass.
42
26.2%
782 (7)
7
D. Minn.
33
36.4%
743 (8)
8
E.D. Mich.
29
31.0%
669 (9)
9
D.N.J.
28
32.1%
952 (6)
10
E.D. Va.
27
22.2%
555 (14)
11
N.D. Tex.
21
42.9%
591 (11)
11
S.D. Tex.
21
23.8%
466 (19)
13
W.D. Wisc.
19
21.1%
232 (36)
14
W.D. Wash.
18
38.9%
475 (17)
14
D. Col.
18
27.8%
407 (23)
As is evident from the Table above, several of the busiest districts have reversal rates above the average rate of thirty percent. For example, the second busiest district in the country, as measured by either number of appeals or number of patent lawsuits handled, the Central District of California, has the highest reversal rate of claim construction. (Some may wonder why the Eastern District of Texas is not included in Table II. The trend of filing cases in the Eastern District of Texas began fairly recently, and as a result, many of the cases from the Eastern District of Texas have not had time to proceed through appeal. Consequently, the Eastern District of Texas is not one of the top fifteen districts in terms of appellate claim construction experience during the period 1996-2007.)
Up next: Reversal rates based on the number of claim construction cases previously appealed (i.e., the first case appealed from a particular district court judge, the second case appealed from a district court judge, etc.)
Chamberlain’s patent is directed to improved security for remote garage door controls. After an initial claim construction, the N.D. Ill. court granted summary judgment for Chamberlain and issued a preliminary injunction.
A major point of contention was the claimed “binary code” limitation. In a portion of its system, Lear used a three-symbol (trinary) code. Of course the underlying processor is binary and thus encodes the trinary code as binary numbers. In its preliminary injunction decision, the lower court held that Lear likely infringed because of the trinary coded binary numbers.
De Novo Review: On appeal, the CAFC reversed, but only after noting that the “district court commendably strove to follow this court’s rules for claim construction.” In particular, the CAFC found in its de novo review that the specification requires a finding that a trinary code is not a binary code even though it is stored in binary format.
De Novo Preliminary Injunction: A preliminary injunction requires a showing that the patentee has a strong likelihood of success on the merits of the case. Because a showing of success on the merits depends upon the claim construction, the appellate panel held that reversal on claim construction will almost always lead to vacatur of a preliminary injunction. I.e., “A correct claim construction is almost always a prerequisite for imposition of a preliminary injunction.”
Preliminary Injunction Vacated.
Notes:
This decision is important because it shows how de novo review of claim construction can de-stable holdings that are otherwise reviewed only for clear error.
The CAFC has decided not to hold an en banc hearing of the important Nuijten appeal. In the original case, the CAFC (Judges Moore and Gajarsa) found that a transitory propagating signal is not proper patentable subject matter because it does not fit within any of the four statutory categories. That is, the signal is neither a process, machine, manufacture, nor composition of matter.
Three judges, including Judge Linn of the original panel, dissented from the en banc denial and offer a concise summary of their reasoning (some citations removed):
I respectfully dissent from the court’s decision not to rehear this case en banc. As I explained in my dissent from the panel opinion in this case, our decision conflicts with our own precedents as well as those of the Supreme Court. … It conflicts with our own precedent because our predecessor court’s decision in In re Breslow, 616 F.2d 516 (C.C.P.A. 1980), forecloses the majority’s conclusion that something “transient” or “fleeting” cannot constitute a “manufacture” under § 101. And it conflicts with Supreme Court precedent because it ignores the Supreme Court’s analysis of how, in general terms, § 101 is to be construed. As the Court discussed in Diamond v. Chakrabarty, patentable subject matter includes “anything under the sun that is made by man” except for certain enumerated exceptions: “The laws of nature, physical phenomena, and abstract ideas have been held not patentable.” The majority’s narrow construction of “manufacture” ignores this framework.
In addition, this case raises important questions about the relationship between § 101 and § 103. In this case, we affirm the PTO’s rejection of claims to a signal simpliciter, but the PTO has allowed a claim to a storage medium containing the very same signal, on the grounds that the storage medium is a manufacture that can be rejected, if at all, only under some provision other than § 101. In particular, the PTO considers the patentability of such claims under the “printed matter” doctrine of § 103. See In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994). These distinctions make no practical sense and are poorly supported by precedent, which, to the contrary, requires a more holistic approach to the question of whether a claim is directed only to an unpatentable abstraction or whether it is directed to a patentable application of such an abstraction to an otherwise statutory invention. Cf. Parker v. Flook, 437 U.S. 584, 591 (1978) (“The process itself, not merely the mathematical algorithm, must be new and useful.”); cf. also In re Abele, 684 F.2d 902, 909 (C.C.P.A. 1982) (“As was the case in [Diamond v. ]Diehr[, 450 U.S. 174 (1981),] . . . the algorithm is but a part of the overall claimed process.”). The distinctions that are drawn between signals and storage media containing those signals would appear to apply equally to the distinctions between software and hardware and are artificial at best.
Notes:
The Comiskey case is (apparently) still pending decision on rehearing. Comiskey arguablly stretches the 101/103 relationship even further than Nuijten. However, it may have an even smaller shot of rehearing en banc because of the lack of a dissent as well as a lack of amicus support for the en banc request.
More than a handful of studies and articles have discussed how the rise in patent law power parallels the founding and evolution of the Court of Appeals for the Federal Circuit (CAFC). Those articles gloss over the CAFC’s negative impact on design patent law. Today, design patent law is in the weakest and most confused state since before the Supreme Court’s landmark 1871 decision of Gorham v. White. (Although, the law is admittedly more uniform now than it was pre-CAFC).
Through its en banc rehearing of Egyptian Goddess, the CAFC now has the opportunity to change course and breathe new life into this languishing area of intellectual property.
In Gorham, the Supreme Court created the test governing design patent infringement. The so-called ordinary observer test considers whether an ordinary purchaser of the claimed product, “giving such attention as a purchaser usually gives” would consider that “two designs are substantially the same.” Later, cases recognized a problem with this simple formulation — finding that the ordinary observer test could potentially capture prior-art designs as infringing. In response, the CAFC added an additional “points of novelty” test that requires a showing that accused devices appropriate the specific novel features of a patented design.
To many, this points-of-novelty requirement and the apparent rule requiring transform the design-patent picture claims into paragraph form as unduly limiting the potential scope of a design patent. The requirements are also seen by some as unnecessary because of the parallel validity requirements of novelty and nonobviousness. Two additional points-of-novelty test issues that raise ire are whether the design as a whole can be a point of novelty and whether the points of novelty can include “trivial” points.
The en banc appeal will focus on three separate questions:
Should “point of novelty” be a test for infringement of a design patent?
If so, (a) should the court adopt the non-trivial advance test adopted by the panel majority in this case; (b) should the point of novelty test be part of the patentee’s burden on infringement or should it be an available defense; (c) should a design patentee, in defining a point of novelty, be permitted to divide closely related or, ornamentally integrated features of the patented design to match features contained in an accused design; (d) should it be permissible to find more than one “point of novelty” in a patented design; and (e) should the overall appearance of a design be permitted to be a point of novelty? See Lawman Armor Corp. v. Winner Int’l (Fed. Cir. 2006).
Should claim construction apply to design patents, and, if so, what role should that construction play in the infringement analysis? See Elmer v. ICC (Fed. Cir. 1995).
Now, the plaintiff, Egyptian Goddess along with its amici have filed opening briefs in the case. (Attached below). Swisa’s opposition will arrive in a few weeks.
Points of Novelty: Several of the briefs dismiss the points-of-novelty test as unnecessary in light of the validity requirements of novelty and nonobviousness. That suggestion is ultimately unworkable because of a disconnect between a strict ordinary observer test of infringement and the obviousness test of invalidity. This disconnect would potentially allow a finding that a prior art design infringes a valid design patent. (Obviousness is in the eye of PHOSITA at the time of the invention while ordinary observer infringement is in the eye of an ordinary purchaser at the time of purchase). The points-of-novelty approach is, however, seriously flawed — it is an odd process akin to separating a painting into various individual components and then making a list of those components that have never been used before. In most cases, the final list has little relation to the patented design. (This process is further facilitated by an overzealous Markman process).
The better approach is suggested in the AIPLA and Apple briefs. The ordinary observer test should necessarily include some consideration of the prior art, but that consideration should be at the level of the ordinary observer in a three-way visual comparison test. Thus, in the Braun case (below), the accused design would be found to infringe if the ordinary observer finds it substantially the same as the patented design and more similar to the patented design than to the prior art.
Academics are Out: It is notable that for this important case, only one academic (Professor Fryer of Baltimore) filed an amicus brief. Perry Saidman’s brief for Apple was the only brief citing a law review article, and it cited one by Perry Saidman. Saidman also cited a Patently-O comment made by Chris Carini (author of the AIPLA brief).
Miken Composites v. Wilson Sporting Goods (Fed. Cir. 2008)
This case involve the same patent that prompted Judge Rader’s intriguing 2006 koan:
“while a claim is not to be construed in light of the accused device, in an infringement case, it must inevitably be construed in context of the accused device.”
The Wilson patent is directed to a type of softball bat that includes a internal structural inserts that allow for a lighter and stronger bat. On summary judgment, Miken won a declaratory judgment non-infringment. In particular, the lower court found that Miken’s bats did not contain the required “insert.” Rather the internal structural members of thte Miken composite bats were created using a successive layering process.
Product by Process: Normally, a device claim can be infringed regardless of the construction methods used. Miken argued that in this case, the patentee’s inclusion of the “insert” claim language transformed that portion of the claim into a product-by-process.
On appeal, the CAFC agreed with Miken that the insert limitation required an element that was “put or fit into something else.” Consequently, Miken’s products cannot infringe because the accused structural members were never “inserted or intended for insertion.”
Vitiation and DOE: Even without an insert, Miken’s products are arguable equivalents of the Wilson invention. However, the issue of ‘equivalent as a whole’ is irrelevant to whether a product infringes under the doctrine of equivalents. Rather, the all elements rule requires that each element of a patent claim be infringed either literally or by an equivalent element found in the product. Here, that means that to infringe under the DOE, Miken’s bat must have an element that is the structural and functional equivalent of an insert. Because Wilson did not provide evidence of such an element, the CAFC affirmed the lower court’s holding of non-infringement under the DOE.
CIAS v. Alliance Gaming (On petition for Cert. 2008)
In a recent petition to the Supreme Court, CIAS asks the Supreme Court to think about how prosecution statements should be used for claim construction.
Issue: Whether the Federal Circuit’s use of patent prosecution history statements in claim construction is so erroneously inconsistent among its own panel decisions and incompatible with its prior en banc decision in Phillips as to make it impossible for the public to know with any degree of confidence the scope of patent claims; and whether that Court’s inconsistent judgment in this case should be reversed.
In this case, CIAS discussed a reference that had been cited by the Examiner. Although the reference was not asserted in a rejection, the CAFC found that CIAS’s discussion of the reference should shape how the patent claims were interpreted.
In its petition, CIAS argues that the CAFC’s approach to determine whether such prosecution history alters claim construction is much like the proverbial random walk.
Out of 16 district court cases since
Phillips specifically dealing with the issue of prosecution history disclaimer, the Federal Circuit has disagreed with the district court on that issue a total of 12 times. … [T]he Federal Circuit’s inconsistency has created a confused body of decisions. It is now extremely difficult for patent holders and the public to effectively gauge the meaning of claim terms in light of prosecution history statements.
Sitrick’s patented invention involves a method for a integrating user-generated audio and visual effects into a video game or movie. The solo-inventor sued Dreamworks and other defendants who use the “ReVoice Studio” software to allow users to add their own voice to the imagery. The issue on appeal is whether the asserted claims are enabled under 35 U.S.C. 112 ¶ 1.
Full Scope Enablement: Although loosely tied to the patent statute — the enablement requirement continues to grow and develop through Federal Circuit panel opinions. Generally, the “requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation.”
When analyzing enablement, the court looks to ensure that the “full scope of the invention” is enabled — and thus looking beyond whether the particular accused design is enabled. The “full scope” doctrine has recently been applied by the Federal Circuit to invalidate several patents. (See below)
Broad Claim Narrow Disclosure: It is easy to criticize patentees who attempt to enforce broad claims supported only by a narrow disclosure. This is especially true in cases such as Liebel’s where the claim scope had been expanded well after filing the original application. (i.e., “late claiming”).
However, the “full scope” doctrine has serious deficiencies. The most notable are the potentially chaotic results from applying the doctrine to claims that include the comprising transition language. The problem arises because the comprising transition allows a claim to implicitly encompass a wide variety of add on limitations that might be found in an infringing device. See, for example Automotive Technologies Int’l v. BMW (Fed. Cir. 2007) (claim scope that implicitly covered both mechanical and electrical sensor was not enabled by description of mechanical sensor); Liebel-Flarsheim v. Medrad (Fed. Cir. 2007) (claim scope that implicitly covered both jacketed and jacket-free needle holders was not enabled by description of jacketed needle holders).
Here, the asserted claims were construed as covering both movies and video games. Thus, the patent must enable both types of applications. Here, the CAFC confirmed that Sitrick had failed to enable its use in movies — and thus that the claims are not fully enabled.
Buyer Beware: As with other recent enablement cases, this one may be best seen through the lens of the claim construction process. In each case, the patentee requested (or at least did not challenge) broad claim construction. Consequently, the court was not sympathetic to enablement arguments that could have been avoided by a narrower construction of the claims. This line of thinking was spelled out by Judge Laurie in the Liebel case: “The irony of this situation is that Liebel successfully pressed to have its claims include a jacketless system, but, having won that battle, it then had to show that such a claim was fully enabled, a challenge it could not meet. The motto, “beware of what one asks for,” might be applicable here.” This buyer beware theory is also useful to break the potential analytical morass of full scope enablement of claims drafted with comprising transitions.
Don’t Begin with the Specification: One aspect of enablement that is continually bothersome. In the opinion, the court noted that “enablement analysis begins with the disclosure in the specification.” That approach unduly confuses enablement with written description. Rather, I would contend that enablement should begin with the knowledge of one skilled in the art and move forward from there.
Johnson v. M’Intosh: In my property law class, we recently discussed Johnson v. M’Intosh and the doctrine of of sovereign authorized discovery of land. In those empire building years, we also saw over-zealous claiming.
David Sitrick: The inventor, David Sitrick, is a Skokie based patent attorney registered with the firm of Sitrick & Sitrick. (Reg. No. 29349). Mr. Sitrick prosecuted the patent himself. His son, Greg Sitrick, is an associate at the Bell Boyd firm in Chicago. (Reg. No. 57195).
Mangosoft v. Oracle (Fed. Cir. 2008)
PSN Illinois v. Ivoclar Vivadent, et al. (
Symantec Corp. v. Computer Associates (
PowerOasis v. T-Mobile (Fed. Cir. 2008)
O2 Micro v. Beyond Innovation, et. al (
Ortho-McNeil Pharmaceutical v. Mylan Labs (
Computer Docking Station v. Dell (
A G Design v. Trainman Lantern (
University of California v. Dakocytomation California (Dako) (
Chamberlain Group v. Lear Corp. (
Miken Composites v. Wilson Sporting Goods (
Sitrick v. Dreamworks (