Tag Archives: Claim Construction

Testing of System Aboard Commercial Aircraft Not a Barred Public Use

Patent

Honeywell v. Universal Avionics (Fed. Cir. 2007).

GulfstreamHoneywell holds a number of patents covering a virtual terrain warning system for aircraft. The system compares flight-data with a digitized map to ensure a clear path.  Universal and Sandel Avionics have similar functioning systems, and Honeywell sued for infringement. After losing summary judgment, Honeywell appealed on claim construction and the defendants appealed on validity.

On Sale: Section 102(b) of the Patent Act creates a statutory bar to patentability of an invention “in public use or on sale in [the US] more than one year prior to the date of application.”

Under Pfaff, an invention is on sale if (1) subject to a commercial sale or offer for sale and (2) ‘ready for patenting’ at the time of the offer or sale.  Prior to the critical date, Honeywell offered its system for sale to Gulfstream, but required a program to test the system’s in-cockpit results. In its decision, the CAFC agreed that the tests were “part of Honeywell’s program to determine that the invention worked for its intended purpose.”  Thus, even though no system changes were introduced based on the testing, the tests were a “demonstration of the workability or utility of the claimed invention” — thus were sufficient to avoid the ‘ready for patenting’ prong of the on sale bar.

Public Use: The system was tested aboard commercial aircraft. On one flight, a reporter was told of the system — a fact he mentioned in a published article.  This arguably commercial use did not create a public use bar because the use did not employ “a completed invention in public, without confidentiality restrictions, and without permitted experimentation.” 

Claim Construction Jurisdiction: The summary judgment of non-infringement was based on only two-terms. On appeal, the CAFC refused to limit its decision to those terms (as requested by a defendant). Rather, the appellate panel looked at each of the five terms where “the district court discerned factual issues in dispute regarding infringement.”  According to the Court, the two primary terms were correctly construed, but summary judgment vacated on factual issues — giving Honeywell another shot.

Patently-O TidBits on Patent Reform

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  • John Sullivan, GC of the Commerce Department, has written a letter to support [UPDATED] Patent Reform [but not H.R. 1908].  The Commerce Department suggests reforms that would require applicants to submit higher-quality patent applications.  In reality, this can be translated as adding the submission requirements of accelerated examination to every case.  That approach is likely quite costly for applicants. However, it is undeniable that patent quality is a two-way street.  Low quality patent applications regularly lead to low quality patents.  A head-in-the-sand approach will not work here. The patent community should come-together with a set of best-practices for patent application drafting that can be implemented as rules. These practices should include definitions for claim terms; a more helpful discussion of prior art; a date of invention.  Done correctly, a few simple changes in the patent document could eliminate many of the current validity and claim construction issues that are so alive today. To be practicable for prosecuting attorneys, these reforms should be coupled with reform of the ‘rules’ of inequitable conduct, which are currently in a state of disarray. [Commerce Dept Letter].
  • The Commerce Dep’t letter opposed a number of particulars of currently proposed legislation, including first-to-file.
  • The House IP subcommittee has approved the language of H.R. 1908. It now goes to the full judiciary committee for a vote.
  • PTO Solicitor John Whealan has been seconded to the US Senate to iron-out the patent reform details. Stephen Walsh, a career PTO official, will reportedly Whealan’s shoes as Solicitor. Congratulations to both men!
  • A large number of biotech companies have also provided their statement regarding reform. The group opposes "apportionment of monetary damages for patent infringement, expansive PTO rule making authority, an open-ended post grant opposition system, and a narrow grace period." [Coalition letter]

Other TidBits:

  • Patently-O has taken-on its first advertising contract — Patent Supply Co. (See the left toolbar). 
  • Etherton Law Group in Phoenix needs you (so long as you are a quick-witted patent attorney with a couple-years experience). [LINK]
  • At BIO2007, biotech business executives were asked to rate on a scale of 1-10, the most helpful actions that that the federal gov’t could take.
    • Price controls: 71% rated 8-10;
    • International harmonization of patent laws: 59% rated 8-10;
    • Increase funding for biomedical research: 59% rated 8-10;
    • Increase funding for biofeuls: 41% rated 8-10. (Survey by Peter D. Hart Research Associates).

BPAI May Not Substitute its Engineering Expertise for Hard Evidence (In an Interference)

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Brand v. Miller (Fed. Cir. 2007).

Both Capital Machine and Miller Veneers claim rights in a new method of cutting veneer from logs using a “tapered filch.”  Brand, the inventor on Capital’s application now works for Miller, and the two companies had a close-relationship at the time of the applications. Capital filed its patent first, but Miller argued that Capital’s invention had been entirely derived from a documents and information provided by Miller.

Derivation: In an interference, impermissible derivation requires a showing of prior conception by the junior party and communication of concepts to the senior party that would enable construction and operation of the invention.  These elements are questions of fact.

In an interference, the BPAI awarded priority to Miller, finding that Miller’s communications to Capital were sufficiently enabling. In its appeal to the CAFC, Capital argued that the BPAI had improperly relied upon its own experience instead of evidence in holding that the Miller communication was enabling.

Substantial Evidence of Factual Findings: Appeals from the BPAI interference decision are governed by Section 706 of the Administrative Procedures Act (APA). The CAFC’s interpretation of that section requires that “findings of fact by the Board must in all cases be supported by substantial evidence in the [four corners of the closed] record.” Thus, it is impermissible for the BPAI to base factual findings on its own experience as opposed to evidence on record.

 Here, the court found that the board had-indeed “substituted its own expertise for record evidence” of how the information communicated by Miller would be arranged to perform the claimed method. “Under such circumstances the Board’s decision was not supported by substantial evidence in the record.”

Watch-Out!: Bleed-through Claim Construction and Argument Estoppel

Patent

Pods v. Porta Stor (Fed. Cir. 2007)

Pods and Porta Star are competing storage and moving companies. Pods sued Porta Stor for patent infringement based on its patent directed to a method and apparatus for moving a storage container in and out of a truck.  A jury found infringement and the judge held the patent not invalid.

On appeal, Porta Star focused-in on the claim term “carrier frame.” That term was used in both claim 1 and claim 29.  The lower court applied diverging meanings to the two instances, but no-one could explain why the claim construction should vary from the traditional “presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.”

The parties agree that the structure described as a “carrier frame” in claim 1 is “a four-sided or rectangular-shaped carrier frame” that surrounds the container on all sides. . . . PODS has pointed to no evidence in the specification or the prosecution history that the term “carrier frame” in claim 29 has any meaning other than the uncontested meaning in claim 1.

The agreed definition of claim 1 construed “carrier frame” as four-sided frame, and because “the only embodiments disclosed in the specification are four-sided,” the CAFC held that the claim 1 definition should prevail throughout the claimset. Based on this claim construction, the court found non-infringement.

Notes: The problem with this decision is that claim 1 explicitly limits a carrier frame with four sides while claim 29 only includes the limitation “carrier frame:”

Claim 1: . . . carrier frame including right and left longitudinal elements [and] having front and rear transverse elements . . .

Claim 29: . . . a carrier frame . . .

Despite this clear textual difference, the CAFC determined that the carrier frame of claim 29 must be defined as having four sides because (a) the parties agreed that claim 1 requires a four-sided carrier frame and (b) the only embodiments included four-sided carrier frame.

The court also denied coverage under the doctrine of equivalents because of prosecution estoppel — in particular, the patentee had argued against a rejection of claim 1 by stating that claim 1 required a rectangular frame.

Why the patentee lost: It used the word “invention” when arguing against the rejection of claim 1: “the present invention which allows the carrier frame to be elevated and positioned as a rectangular-shaped frame with respect to the container, the vehicle and the ground.”

Sarnoff Discusses KSR v. Teleflex

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By Professor Joshua Sarnoff, Assistant Director of the Glushko-Samuelson Intellectual Property Law Clinic and a Practitioner-in-Residence at the Washington College of Law, American University. Professor Sarnoff filed an amicus brief in support of Petitioner KSR.

In its unanimous decision in KSR Int’l. Co v. Teleflex Inc., No. 04-1350 (April 30, 2007), the Supreme Court expressly overruled the Court of Appeals for the Federal Circuit’s “teaching-suggestion-motivation” (“TSM”) test for finding a claimed invention obvious and reaffirmed the Court’s precedents (in light of the 1952 enactment of Section 103 and its holding in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)) regarding the obviousness of patents “based on the combination of elements found in the prior art” where there the combination “does no more than yield predictable results.”  Slip op. at 11-12.  The Court’s decision has therefore called into question the validity of hundreds of thousands of claims in issued patents, and will likely lead to a dramatic change to the method by which the Patent Office, the courts, and the bar conduct their obviousness analyses. 

Nevertheless, the Supreme Court’s opinion appears self-consciously narrow and provides little additional guidance for how to apply the Graham approach.  The Court’s decision leaves unclear whether the party with the burden of proving obviousness must demonstrate that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue,” or only that the claim at issue if patented would reflect an “advance[] that would occur in the ordinary course without real innovation[, which] retards progress and may, in the case of patents combining previously known elements, deprive inventions of their value or utility.”  Slip op. at 14, 15.  As the Court noted, “as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws.  Were it otherwise patents might stifle, rather than promote, the progress of useful arts.”  Slip op. at 24. Although the Court recited the Constitutional language, it did not expressly hold that obviousness is a constitutional requirement.  Further, the Court left to later case law any consideration of the extent to which the Court of Appeals’ more recent statements regarding the flexibility of its TSM test is consistent with Graham and the Supreme Court’s earlier precedents.  Slip op. at 18.

(more…)

CAFC: Claim Differentiation Again

Patent

Intamin v. Magnetar Tech (Fed. Cir. 2007).

Intamin owns a patent on a magnetic braking system for a roller coaster and sued Magnetar for infringement.

The claim construction dispute involved an “intermediary” between two magnets.  Relying on an ordinary meaning interpretation, the lower court had found that the intermediary could not itself be a magnet: “In short, ordinary meaning supports [a narrow construction], and neither the specification nor the prosecution history changes the ordinary meaning.”

On appeal, the CAFC found an error in claim construction — holding that the claimed intermediary could itself be a magnet. The court based its result on an implication of claim differentiation. 

[A dependent claim] discloses “[t]he braking device of claim 1 wherein said intermediary is non-magnetic.” This dependent claim shows both that the claim drafter perceived a distinction between magnetic and non-magnetic intermediaries and that independent claim 1 impliedly embraced non-magnetic intermediaries.

Interestingly, the CAFC allowed the claim differentiation argument despite the fact that “Intamin did not raise this argument until reconsideration.” As a backup, the court implicitly relied on the ordinary (broad) meaning of intermediary to further justify its holding.

At one point, the ‘350 patent describes an embodiment of the invention with a “non-magnetic” intermediary…. The single reference does not expressly limit the entire invention but only describes a single embodiment. Moreover, the term “intermediary,” like the term “baffle” in Phillips, embraces more than the limited specification disclosure.

Vacated and Remanded.

Humerus Claim Construction: Plain Meaning Redux

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Acumed v. Stryker (Fed. Cir. 2007).

Acumed and Stryker both manufacture equipment for orthopedic surgery. Based on its patented nail technology for reconstructing humerus fractures, Acumed sued Stryker for patent infringement. A jury found the claims valid and that Stryker was a literal and willful infringer. Based on the verdict, the Oregon judge assessed enhanced damages and entered a permanent injunction against the adjudged infringer.  Stryker appealed infringement and willfulness.

Claim Construction: The most-disputed aspect of the case involved the court’s interpretation of the claim term “transverse holes.” Every figure showed the holes, showed them extending “perpendicularly through the shaft.” Similarly, the description noted that the holes were “perpendicular.”  Based on this intrinsic evidence and the precedential value of Phillips, Stryker argued that the claim term should be given a narrow meaning.

On appeal, the CAFC refused to limit “transverse holes” to holes that were arranged perpendicularly. In doing so, the court reestablished that the paramount rule of construction is that claims are given their plain meaning.

The plain meaning … covers more than the particular embodiment shown…. While the disclosed embodiment possesses “perpendicular” holes, the claim language covers all “transverse” holes—a word that does not necessarily imply right angles. Moreover, the patentees’ description of their preferred embodiment itself implies a difference between the words “perpendicular” and “transverse.”

In its analysis, the Court implied reasoning similar to that of claim differentiation.  Here, however, the analysis compared the use of “perpendicular” in the specification with the word “transverse” as used in the claims.

The written description states that Figure 2 “illustrates a plurality of transverse holes, each of which is . . . perpendicular to the portion of the nail axis at the butt portion 14 of the nail.” ’444 patent col.2 ll.56-59. This implies that a “transverse” hole need not be “perpendicular”—if it were, the patentee would not have needed to clarify that these holes, in addition to being transverse, were perpendicular to the nail axis.

This case follows the same pattern as the en banc decision of  Phillips v. AWH:

Just as in Phillips, where the asserted claim mentioned “steel baffles” and hence “strongly implie[d] that the term ‘baffles’ does not inherently mean objects made of steel,” this usage of language is strong evidence that the patentee considered “transverse” and “perpendicular” to have distinctly different meanings.

Narrowing Intrinsic Evidence: The court refused to give credence to the interpretation of the term “transverse” found in prior art that was cited on the face of the patent because the reference was not “created by the patentee in attempting to explain and obtain the patent.”

Judge Kimberly Moore dissented from this claim interpretation.  Judge Moore would have held that the intrinsic evidence “fully supports” defining “transverse” as “made at right angles to the anterior-posterior axis of the body”.

The majority suggests that the use of both words “implies a difference between the words ‘perpendicular’ and ‘transverse.’” The majority contends that if transverse was meant to be construed as perpendicular, “the patentee would not have needed to clarify that these holes, in addition to being transverse, were perpendicular to the nail axis.” I disagree… [T]he patentee used the two words to clearly specify which of the definitions of transverse applied to his invention; the purpose of using the word “perpendicular” was to further describe what the inventor meant by the term “transverse,” not to distinguish it as the majority suggests.

Willfulness Affirmed:

[T]wo patent attorneys … at first strongly discouraged Stryker from marketing the infringing nail in the United States. Despite that advice, Stryker continued to push towards a United States market entry, filing its FDA application months before it received … revised [non-infringement] legal advice….The judgment of willfulness is therefore affirmed.

Permanent Injunction: Because the case was decided before eBay, the CAFC remanded for a finding on the equities.

Prosecution History Leads to Limiting Preamble

Patent

Bass Pro v. Cabela’s (Fed. Cir. 2007).

Bass Pro owns a patent covering a vest with an attached seat. In April 2003, Bass Pro sued its arch-rival Cabela’s for patent infringement and the parties quickly settled with Cabela’s agreeing to stop infringing under a consent decree signed by the judge.  A year later, Cabela’s introduced a new product — a backpack with an attached seat. Bass Pro brought a contempt proceeding.

Modified Product Contempt Rule: When an enjoined party produces a modified device, a contempt order can issue only after a showing that the modified device infringes the patent.

It appears that Cabela’s accused backpack exhibits every element in the body of Bass Pro’s claim 1. The only difference is the preamble — Bass Pro’s preamble is directed to a vest and seat combo — not a backpack. 

The district court, seeing the evidence, decided that the vest preamble should not be limiting — thus finding that the ‘vest’ claim covers the backpack product.

Amended Preamble: Ordinarily, a preamble does not create a cause for limiting the claim scope.  In this case, however, the prosecution history led-us out of the ordinary.  During prosecution, Bass Pro had amended the preamble to add the vest term (replacing the original ‘garment’). In addition, throughout prosecution Bass Pro had discussed its “vest” in contrast to prior art backpack-chair combos.

It is clear that this patentee procured the patent based on the “unique combination of vest and pivotable seat member” stressed in the prosecution history, where the applicant placed these limitations in the claims. The district court erred in holding that the “vest” of claim 1 was not a material limitation to the claim.

On the correct claim construction the vest is a material element, and the claim cannot reasonably be found to be literally infringed.

Notes:

  • I’m a big Bass Pro fan. We make an annual late-December journey to the store in search of fabulous Christmas presents.  Let me suggest one in particular: This stove-top popcorn popper works amazingly well.

Claim Differentiation

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Andersen Corp. v. Fiber Composites (Fed. Cir. 2007).

Claim differentiation is based on a “common sense” presumption that different words used in the various claims indicate that the claims differ in focus and scope. Andersen holds a number of patents related to fiber materials and sued Fiber Composites for infringement.  Fiber Composites used the material for deck railing. Several of the claims included terms such as pellets, linear extrudates, or composites. 

Overcoming the Presumption of Claim Differentiation: Based on the concept of claim differentiation, Andersen argued that the composite limitation must not be limited to pellets and linear extrudates.  In its decision, the CAFC agreed that – in the abstract – Andersen’s argument was sound.  However, the appellate body found “powerful evidence” in both the specification and prosecution history that overcome the presumption of claim differentiation. In particular, the applicant lumped the three elements together when making arguments and discussed the pellet form as an ‘essential’ part of the invention.

Differentiation of Elements vs. Claims: It is also important to remember that the doctrine is that of claim differentiation rather than element differentiation.  Claim differentiation is not necessary unless the claims as a whole are redundant.

“A further reason for not applying the doctrine of claim differentiation in this case is that the … claims are not otherwise identical but for the references to pellets, linear extrudates, and composite compositions, and thus the district court’s construction does not make the composite composition claims redundant. Instead, there are numerous other differences varying the scope of the claimed subject matter….

Even though the “composite composition” claims, as construed by the district court, cover substantially the same subject matter that is covered by the “pellet” and “linear extrudate” claims, overlapping patent claims are not unusual, and the overlap does not require us to construe the “composite composition” claims to cover subject matter that differs from the subject matter covered by the other two sets of claims. Under these circumstances, the doctrine of claim differentiation does not require rejection of the district court’s construction of the claims.

Consequently, the CAFC ruled that the composite elements were no broader than the claimed pellets or extrudates.

Notes:

  • This is a case from January 2007.  I missed it because the Seagate en banc order was released the same day.

Patently-O TidBits

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  • Amgen v. Hoechst: Amgen has filed its petition for certiorari asking for a review of de novo appellate claim construction. The money quote:

“Construction of patent claims depends on technological mastery and is therefore, like the inquiry into the reliability of scientific testimony under Daubert, 509 U.S. 579 (1993), something for which trial courts are uniquely suited and owed special deference. The Federal Circuit’s simplistic syllogism – if an issue is for the court, it must be subject to complete de novo review on appeal – flies in the face of Rule 52(a) and is belied by well-established practice in patent and other areas of the law in which the factual determinations undergirding a court’s legal pronouncement are reviewed for clear error.”

Amgen follows the Supreme Court’s lead in verbally trashing CAFC jurisprudence.  It is one thing for Justice Scalia to shout gobbledygook — quite another coming from counsel asking for a hearing.

  • Professor Isaacs: Patents are not property, they are federal entitlements not covered by the Takings Clause of the Fifth Amendment. [LINK]
  • Personal: Rent my apartment in Brookline MA…[LINK]

Recapture: Disclaimer in Parent Must be Rescinded in Continuation

Patent

Hakin v. Canon-Avent (Fed. Cir. 2007).

Hakim sued Avent for infringing his leak-resistant drinking cup patent. After claim construction, the district court found no infringement.

The asserted patent was filed as a continuation. In the original application, Hakim argued over prior art by stating that the flexible-member opening was a “slit.” When Hakim filed his continuation, he notified the examiner that the new claims were broader than those previously allowed. The Examiner then allowed the new claims without rejection.

Disclaimer in Parent: The usual rule is that “an applicant cannot recapture claim scope that was surrendered or disclaimed” even when a continuation is filed. However, “a disclaimer made during prosecution can be rescinded, permitting recapture of the disclaimed scope.” In order to rescind a disclaimer, “the prosecution history must be sufficiently clear to inform the examiner that the previous disclaimer, and the prior art that it was made to avoid, may need to be re-visited.”

Applying this rule to Hakin’s prosecution history, the court found that simply informing the examiner of the new broader claims was insufficient to rescind the prior disclaimer of scope.

Notes:

CAFC Denies Challenge to Patent Ownership

Patent

MyMail v. AOL (Fed. Cir. 2007).

Although patents assignments are registered at the USPTO, state law “governs the question of who has legal title.” Despite an earlier Texas court judgment on this issue, AOL challenged MyMail’s ownership of its patent — alleging fraud.  On appeal, the CAFC sided with the patentee, finding that the earlier Texas judgment settled the matter.  This decision should be seen as contrasting challenges to patent ownership (where prior decisions hold weight) with challenges to patent validity (which can be repeatedly challenged despite prior judgments affirming validity).

Based on a claim construction of the coined term NSP, the appellate panel also affirmed the lower court’s summary judgment of noninfringement.

Notes:

Patent Reform is in the Air

Patent,

On February 15, the House IP Subcommittee held a hearing on “The Case for Patent Reform.” All four seats at the table called for change:

  • Adam B. Jaffe, Professor and Dean, Brandeis University
  • Suzanne Michel, Chief Intellectual Property Counsel, FTC
  • Mark Myers, National Academy of Science (Former Xerox Exec)
  • Daniel B. Ravicher, Activist, PubPat

Jaffe:

The key to more efficient patent examination is to go beyond thinking about what patent examiners do, to consider how the nature of the examination process affects the behavior of inventors and firms. To put it crudely, if the patent office allows bad patents to issue, this encourages people with bad applications to show up. While the increase in the rate of patent applications over the last two decades is driven by many factors, one important factor is the simple fact that it has gotten so much easier to get a patent, so applications that never would have been submitted before now look like they are worth a try. Conversely, if the PTO pretty consistently rejected applications for bad patents, people would understand that bad applications are a waste of time and money.

Ravicher:

Unlike tangible forms of property, such as real estate, patent boundaries are almost always poorly defined. Many patents are written in vague or obscure language, claim construction procedures are uncertain and vary from judge to judge, existing claims are hidden in the pipeline at the Patent Office, and the use of abstract terms allows patents to cover far more technology than what was actually invented. One sign of how difficult it is for people to determine exactly what a patent does and does not cover is the fact that more than a third of all district court judges, after performing a thorough analysis of a patent’s claims, have their construction of those claims reversed by the CAFC.

If Federal Judges can’t agree on what claim terms mean, how can we expect the average American business person or individual inventor to do so. . . . .

[I]n order to address the problem of fuzzy patent boundaries, a patent’s validity should always be analyzed according to the broadest reasonable interpretation of its claims, because that is the construction of the patent that the public will generally abide by until the patent is reviewed by a court, and the currently dormant statutory prohibition against indefinite claim language should be awakened and strengthened.

Mark MyersMyers:

High rates of technological innovation, especially in the 1990s but continuing to this day, suggest that the patent system is not broken and does not require fundamental changes. Nevertheless [we should address] . . . consistent patent quality . . . harmonization . . . publication [of all filed applications] . . . [reducing] litigation costs . . . [and] patent thickets.

Michel [1][2]:

The [FTC] Report recommended creation of a new administrative procedure for post-grant review and opposition that allows for meaningful challenges to patent validity short of federal court litigation. Existing means for challenging questionable patents are inadequate. Patent prosecution is ex parte, involving only the PTO and the patent applicant, even though third parties in the same field as a patent applicant may have the best information and expertise with which to assist in the evaluation of a patent application.

Notes:

  • I’m ignoring the HR977 that would end gene patenting because it is going nowhere. It would add the following language: `Notwithstanding any other provision of law, no patent may be obtained for a nucleotide sequence, or its functions or correlations, or the naturally occurring products it specifies.’.
  • S. 316, on the other hand, may get some legs. That bill would eliminate generic reverse payments. Leahy

Cargill v. Canbra: Extensive Prosecution Increases Likelihood of Inequitable Conduct

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Cargill T-Shirt Cargill v. Canbra Foods (Fed. Cir. 2007).

Cargill owns several patents related to more-stable fry-grease made from canola oil and sued Canbra (and others) for infringement.  The trial court found that two of the patents were invalid as on-sale before the priority date and that the other two were unenforceable due to inequitable conduct.  Cargill appealed.

A. Inequitable Conduct: A holding of unenforceability due to inequitable conduct requires two findings: That the patentee “(1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the U.S. Patent and Trademark Office.”

Information is material if either (1) “there is a substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent” or (2) the information falls within the scope of the current Rule 56. (Reprinted below). Intent is often inferred from the facts and circumstances surrounding the “bad” conduct.

A district court’s determination of materiality and intent are reviewed only for clear error.

Materiality: Here the applicant failed to disclose two sets of test data that suggested a similarity between the invention and a prior art formulation. The district court found them to be “unquestionably” material and the CAFC panel agreed. In particular, the panel refuted the Cargill’s good faith assertions about materiality — reaffirming that “materiality is determined from the viewpoint of a reasonable patent examiner, and not the subjective beliefs of the patentee.”

Intent: The court indicated that there were several instances when the applicant should have brought-forth the prior art — such as when the patentee argued on five occasions that the invention was a nonobvious change from the prior art (even though the test data showed that they were similar).

An applicant should know information is material when the examiner repeatedly raises an issue to which the information relates. . . . The repeated nature of that rejection demonstrates that the applicant should have been aware of the materiality of the omitted test data, and, therefore, the district court properly considered it as significant circumstantial evidence of an intent to deceive the PTO about the evidence relevant to the application.

The implication here: A large prosecution history increases the likelihood of an inequitable conduct finding. Finding of inequitable conduct affirmed.

Notes

  • This decision was written by Judge Kent Jordan of the Third Circuit sitting by designation.
  • 37 CFR 1.56 (Rule 56) reads as follows:

[I]nformation is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim, or (2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability.

A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.

Shield vs. Sword: CAFC Finds Inequitable Conduct But Not Antitrust Fraud

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PatentlyO2006047Dippin’ Dots v. Mosey and Dots of Fun (Fed. Cir. 2007).

[Note: This is the second post discussing Dippin’ Dots. Read Part I on claim construction] 

Inequitable Conduct: DD had used used part of its claimed method to make and sell Dippin’ Dots at a local fair more than one year before filing its application.  DD did not disclose that information to the PTO but did disclose information about the product’s market success that occurred after filing.

The CAFC affirmed that those facts properly led to a finding of inequitable conduct — showing both materiality and intent.

The prior sales were clearly were highly material as they served as the basis for invalidating the patent.  Intent to deceive was shown (even without a ‘smoking gun’) since DD touted some sales while concealing others.

Walker Process Antitrust Claims: A finding of inequitable conduct does not, by itself, support a finding of ‘common law fraud’ as required by Walker Process. Rather, a showing of fraud requires “a higher threshold showing of both materiality and intent.” Likewise, in these antitrust claims, both materiality and intent must survive on their own merits — without the balancing used in inequitable conduct determinations.

Where the fraud is based on an omission, the appellate panel held that intent must be shown with evidence that is “separable from the simple fact of omission.”

For instance, evidence may establish that a patent applicant knew one fact and presented another, thus allowing the factfinder to conclude that the applicant intended by the misrepresentation to deceive the examiner. That is not the case with an omission, which could happen for any number of nonfraudulent reasons—the applicant could have had a good-faith belief that disclosure was not necessary, or simply have forgotten to make the required disclosure.

Here, there was no additional evidence showing intent — giving the DD the win (on this minor point).

The Difference in proof for inequitable conduct and antitrust claims is discussed as the difference between a shield and a sword.

Weighing intent and materiality together is appropriate when assessing whether the patentee’s prosecution conduct was inequitable. Molins. However, when Walker Process claimants wield that conduct as a “sword” to obtain antitrust damages rather than as a mere “shield” against enforcement of the patent, they must prove deceptive intent independently. The defendants have not done so here to the extent necessary for a reasonable jury to find Walker Process fraud.

In re Nuijten: Patentable Subject Matter, Textualism and the Supreme Court

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DuffyBy Professor John F. Duffy, George Washington University

[PDF Version of this Post] In re Nuijten, which is being argued to the Federal Circuit today, presents the important issue of whether a new type of artificially constructed signal may be patented.  The Patent and Trademark Office opposes patentability on the grounds that, as a matter of textual interpretation, signals do not fall within any one of the four categories of patentable subject matter – “process, machine, manufacture, or composition of matter” – identified in section 101 of the Patent Act.  PTO Br. at 12 (quoting 35 U.S.C. § 101).  Though Nuijten raises important issues concerning the scope of patentable subject matter under U.S. law (and that’s reason enough for most patent practitioners and scholars to care about its outcome), the case is also about much more.  It is about the fundamental approach to interpreting the Patent Act and the effect of the Supreme Court’s recent interest in patent cases.  To appreciate those larger issues, we must begin with a basic understanding of the facts at issue.

PatentlyO2006044Modern signals (e.g., for carrying audio, video or data) may be constructed to contain embedded “supplemental data” or “watermarks,” which typically contain information such as the source or copyright status of the underlying information being transmitted.  The addition of such watermarks, which is old in the art, can distort the underlying signal.  Nuijten invented a new way to add watermarks that results in less distortion.  Nuijten filed a patent application with claims directed to (1) the new process for adding watermarks, (2) storage media containing signals encoded by the new process, and (3) the signals themselves.  The PTO has allowed claims for the process and for the storage media containing the signals, but not for the signals themselves.  The PTO does not disputed that the signals sought to be patented are demonstrably new and nonobvious.  The agency’s sole objection rest on section 101 of the Patent Act. 

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CAFC: “Circuit means” interpreted as means-plus-function

Means Plus Function, Patent, Patent Cases 2007

PatentlyO2006029DESA IP v. EML Tech and Costco (Fed. Cir. 2007 – NONPRECEDENTIAL).

DESA owns a patent directed to motion-activated security lights. The lights have a low-level always-on illumination as well as a bright security illumination that is activated when motion is detected by a passive infrared motion sensor. During infringement litigation, the district court construed the claims and consequently entered a stipulated judgment of noninfringement.

The appeal focused on whether the disputed claim phrases — “sensor means,” “control circuit means,” and “switching means” — should be interpreted as means-plus-function.

The use of the word “means” in the claim language invokes a rebuttable presumption that § 112, ¶ 6 applies; conversely, the failure to use “means” invokes a presumption that § 112, ¶ 6 does not apply. . . . Nonetheless, the presumption that § 112, ¶ 6 applies may be rebutted if the claim recites no function or recites sufficient structure for performing that function.

Distinguishing earlier precedent, the CAFC determined that neither the sensor, control circuit, nor switching pre-means terms recited sufficient structure.

DESA argues that this court has previously stated that “it is clear that the term ‘circuit’ by itself connotes some structure.” In Apex, however, the word “means” was not used, so the reverse presumption—i.e., that § 112, ¶ 6 does not apply—was invoked.

Regarding interpretation of the claims, the CAFC found that the district court had improperly given the terms a narrow construction by focusing on the preferred embodiments and the figures.

CAFC: Construction of Essential Features and Impermissible Recapture

Patent, Patent Cases 2007,

ScreenShot071MBO v. Becton Dickinson (Fed. Cir. 2007).

MBO’s patent is directed to a hypodermic syringe that helps avoid needle sticks. After claim construction, the district court awarded summary judgment of noninfringement to BD.

On appeal, the CAFC recited the rules for claim construction sources:

The most relevant source is the patent’s specification, which is “the single best guide to the meaning of a disputed term.” Next in importance is the prosecution history, which is also part of the “intrinsic evidence” that directly reflects how the patentee has characterized the invention. Extrinsic evidence—testimony, dictionaries, learned treatises, or other material not part of the public record associated with the patent—may be helpful but is “less significant than the intrinsic record in determining the legally operative meaning of claim language.”

Essential Feature: Several of the asserted claims include a preamble precluding needlestick injury “immediately and positively.”  Interpreting the term “immediately,” the CAFC determined that an “essential feature” of the invention is ensure a safe needle immediately “upon removal from the patient.” (rather than immediately after some other event). 

The patentee here has clearly indicated via the specification and the prosecution history that the invention provides, as an essential feature, immediate needle safety upon removal from the patient. It is therefore appropriate to construe the claims so as to ensure that they, too, require that feature.

Interestingly, two of the claims did not include the ‘immediate’ language. For those claims, the court could find no textual hook for inserting the essential feature and thus did not burden those claims with the immediacy requirement.  Between the lines, the court implied that it could have found a textual hook through other claim terms, but stated that it “lack[ed] the power to construe other terms not disputed by the parties.”

Impermissible Recapture: Claim scope which has been surrendered in order to obtain issuance of a patent cannot be later reclaimed through a reissue proceeding.  The district court found that MBO’s patent had improperly expanded the scope of a term and thus construed the terms meaning narrowly.

On appeal, the CAFC held that the recapture rule should not be used to rewrite claim language. Although claim construction should be applied with an eye toward validity, that maxim should only be applied at last resort. Rather, the court should first construe the claims and then later determine if the broadened claims are valid .

Whether those broadened claims are invalidated by the recapture rule is an issue separate from construction.

Affirmed-in-part, reversed-in-part, vacated, and remanded.

Wegner: Escaping the Depths of the Patent Shadows

Patent, , ,

WegnerA response to Merges,
By Hal Wegner

Professor Robert P. Merges makes much sense in his op-ed piece, Back to the Shadows, or Onward and Upward? Current Trends in Patent Law. We and thoughtful supporters of the patent system share much common ground.  Professor Merges touches on numerous points where there is hardly any significant difference with this writer, including the domestic results of the eBay decision from last year.  In his analysis of the Supreme Court, Professor Merges is correct that the Court is generally “pro business”, but it is another matter whether in some industries being “pro business” means being “pro-patent”.

PatentlyO2006026“Pro Business” as Anti-Patent, a new Direction at the Court:  Professor Merges is absolutely correct that the Supreme Court today is “pro-business”.  Whether the majority is pro-patent is possible but not yet conclusively determined: It is too soon to tell. It is undeniable that there is a solid, anti-patent Supreme Court core consisting of Justices Breyer and Stevens.  Justice Stevens’ anti-patent record reaches back to the mid-1970’s and is too well documented to question.  Yet, Justice Breyer is apparently now the more enthusiastic anti-patent of the two; they are the only members of the Court in this century to have taken the view that the open door to § 101 patent-eligibility for “living” inventions in the Chakrabarty case should be narrowed, arguing in a dissent in J.E.M. that the utility patent law “does not apply to plants”.(1) Just last year, an anti-patent drumbeat manifested in the Breyer dissent from the Metabolite “DIG” (joined by Stevens) plus their joint participation in the Justice Kennedy concurrence in eBay further validates their anti-patent bias.  Justice Souter joined both the Metabolite DIG dissent and the Kennedy eBay concurrence, but whether he is truly a solid part of an anti-patent core requires more data points; they may be forthcoming in shortly in KSR and in early Spring in Microsoft.  Whether other members of the Court join this core remains to be seen.

Feeding this nascent anti-patent core are two dominant themes:  First, while the Supreme Court is pro-business, a major segment of the business community is largely anti-patent, turning the patent system upside down:  Under this twisted view of patents, being “anti-patent” may be “pro business”.  Second, the patent jurisprudence of the Federal Circuit has created and continues to create problems that necessarily fuel further growth of an anti-patent sentiment. 

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CAFC: Meaning of “About”

Claim Construction, Doctrine of Equivalents, Patent, Patent Cases 2007, Vitiation

UltracetOrtho-McNeil Pharm. v. Caraco Pharm. (Fed. Cir. 2006).

Ortho’s patent covers a pain-relief combo of tramadol and acetaminophen with a ratio of “about 1:5.” Caraco’s drug has a ratio of 1:8.67.  The lower court construed the claims and found no infringement.

Claim Construction: On appeal, the Federal Circuit construed the term “about 1:5” by first looking at the intrinsic evidence.  In the patent and claims, Ortho had used the term “about” repeatedly: disclosed ratios included about 1:1, about 1:5, about 1:19 to about 1:5, and about 1:1600. 

The court reasoned that the term must have a narrow meaning in this patent because a broad meaning would leave other claimed ratios meaningless. The court also noted that the literal meaning of the term should be narrowly construed because Ortho “could have easily claimed a [broader] range of ratios”

An expert testified that the statistical range should be 1:3.6 to 1:7.1 based on a confidence interval constructed from the data in the patent, and the Federal Circuit agreed. (The patent discussed the importance of 95% CI).

Literal Infringement: The Federal Circuit found that there could be no literal infringement because the upper claimed bound for the ratio was 1:7.1 while Caraco’s ratio was 1:8.67.

Doctrine of Equivalents: No DOE because Ortho cancelled claims with broader range during reissue. Interestingly, the Court made this ruling based on vitiation rather than prosecution history estoppel:

[I]t cancelled the broader “comprising” claims, except for claim 6. In sum, having so distinctly claimed the “about 1:5” ratio, Ortho cannot now argue that the parameter is broad enough to encompass, through the doctrine of equivalents, ratios outside of the confidence intervals expressly identified in the patent. We agree with the district court that to do so would eviscerate the limitation.

Summary judgment of noninfringement affirmed