Tag Archives: Claim Construction

In Lava Trading Dissent, Judge Mayer Laments de Novo Review

Patent, Patent Cases 2006,

AIPLATalk203Lava Trading v. Sonic Trading Management (Fed. Cir. 2006, 05–1177)

The majority overturned a lower court claim construction, but Judge Mayer dissented:

The decision today is yet another example of the unfortunate consequences of Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), and Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), which cemented this court’s jurisprudence with respect to claim construction as being purely a matter of law subject to de novo review. Because claim construction is treated as a matter of law chimerically devoid of underlying factual determinations, there are no “facts” on the record to prevent parties from presenting claim construction one way in the trial court and in an entirely different way in this court. By not dismissing this case, we issue a decision based on an undeveloped record. We set ourselves up to have to decide claim construction again later, which could well differ from the ruling today. Furthermore, allowance of an appeal of the trial court’s perfunctory, offhand ruling from the bench, for all intents and purposes allows an interlocutory appeal of claim construction, which portends chaos in process.

Claims Should be Construed within the Context of the Accused Device

Patent, Patent Cases 2006

AIPLATalk203Lava Trading v. Sonic Trading Management (Fed. Cir. 2006, 05–1177)

In today’s case of Lava Trading, the CAFC again found that knowledge of the accused product is import for providing “a proper context for an accurate claim construction. . . . Without the vital contextual knowledge of the accused products or processes, this appeal takes on the attributes of something akin to an advisory opinion on the [patent] scope. ” 

This decision falls in line with the recent Wilson Sporting Goods case that held “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.”

Agreed-upon Claim Construction from Settlement Agreement Goes Unchallenged by CAFC

Patent, Patent Cases 2006

Semitool v. Dynamic Micro (Fed. Cir. 2006).

This case settled originally, but Semitool revived the litigation after Dynamic began selling a new product.  Interestingly, the settlement agreement included a provision for how the patent claims should be construed in any future enforcement proceeding — according to the district court’s claim construction order.

In the revived proceeding, the district court applied its old construction and found the new product noninfringing.  On appeal, the CAFC also applied the agreed upon claim construction — rather than questioning it de novo.

Because it resides inside the processing chamber, the condenser in the Tornado cannot supply a drying gas as construed by the Final Claim Construction order issued by the district court. DMS is entitled to judgment as a matter of law that it does not infringe Semitool’s patents

 

Amazon avoids infringement of on-demand book printing patent

Patent, ,

AIPLATalk182On Demand Machine v. Ingram and Amazon.com (Fed. Cir. 2006, 05–1074).

The district court found Ingram and Amazon.com liable for infringement of On Demand’s patented on-demand book printing system.  The defendants appealed on claim construction.

The CAFC disagreed with the lower court on many points of claim construction.  Interestingly, for the second time in as many weeks, an appellate panel found that the preamble of a claim was limiting.  Here the preamble was written as follows:

8. A method of high speed manufacture of a single copy of a book comprising . . .

According to the court, high speed manufacture of a single copy is “fundamental” to the invention because “the specification highlights that the customer may have a printed and bound copy within “three to five minutes.”  Here, the defendants can avoid infringement because the customer must wait a week to get their copy of the book.

Notes:

. . . From a Reader:

This CAFC decision should be of considerable interest to the book publishing, printing and distributing industries for several reasons.

First, this is a decision against a “print on demand” book printing patent of general industry interest, as evidenced by a pending SECOND adverse reexamination against it. This second reexamination is not even mentioned in this decision, only the first one is. Yet some of this Court’s comments about prior art, etc. may become relevant in this pending second reexamination?

On another matter, of general patent litigation interest, the Court says: “The court’s award of a royalty-bearing license during appeal and refusal to issue an immediate injunction are reviewed on the standard of abuse of discretion.” [emphasis added]

Later on, in its Conclusion, the Court merely adds: “The cross-appeal relates to the district court’s denial of an immediate injunction upon entry of the district court’s judgment, and the court’s setting of a royalty for continuing operations during appeal. That remedy is within the district court’s discretion. However, in view of our holding of non-infringement, the cross-appeal is moot, and is dismissed.”

There is no mention of the Sup. Ct. taking of eBay v. MercExchange for decision, in which even the Solicitor’s brief criticizes the CAFC for not spelling out the statutory test for granting injunctions. Yet they did it again! – the above is ALL this Panel said on this subject. I.e., even in this latest case, the Court does not cite or discuss the statute, or even the standards for stays of injunction during an appeal. Note that this panel did not approve a stay of an injunction pendant lite here, it merely held this issue to be MOOT, hence the above is mere DICTA.

Finally, this Court’s specific non-infringement distinctions should be cautionary for specification and claim drafters to avoid inadvertent or unintended claim scope limitations.

CAFC: Failure to submit full translation of prior art reference did not satisfy intent requirement of inequitable conduct

Patent, Patent Cases 2006, , ,

Atofina v. Great Lakes Chemical Corp., (Fed. Cir. 2006)

by Bradley Crawford

Atofina sued Great Lakes for literally infringing its U.S. Patent No. 5,900,514 titled “Synthesis of Difluoromethane.” The district court determined the ‘514 patent was (i) not literally infringed; (2) anticipated (only claims 1, 2, 6, 7, 9, and 10); and (3) unenforceable because of inequitable conduct. Atofina appealed.

Infringement: The CAFC ruled the claims were not literally infringed. The district court’s use of scientific and technical dictionaries to construe the word “catalyst” was acceptable as the dictionary definition comported with the intrinsic evidence.

The intrinsic evidence (1) supported the district court’s claim construction, and (2) evinced a surrender of subject matter. Regarding the second point, the CAFC noted that “it frequently happens that patentees surrender more through amendment than may have been absolutely necessary…” and “we have not allowed them to assert that claims should be interpreted as if they had surrendered only what they had to.” (Note: The take home message here is obvious, so I won’t belabor the point.)

Anticipation: The CAFC also ruled claims 1, 2, 6, 7, 9, and 10 were not anticipated because the district court incorrectly interpreted a broad genus as anticipating a narrower genus, which is inconsistent with the Titanium Metals case. See 778 F.2d 775 (Fed. Cir. 1985).

Unforceability: And finally, the CAFC found the ‘514 patent not unenforceable due to inequitable conduct and it did not remand.

During prosecuting of the application that matured into the ‘514 patent, Atofina submitted a partial translation (a Derwent Abstract, to be precise) of the Japanese language reference JP 51-82206, to the U.S. Patent and Trademark Office, even though it had a full translation in its possession. At trial, the district court ruled Atofina committed inequitable conduct by (1) failing to disclose the full translation of JP 51-82206, which was deemed highly material because it anticipated several claims and (2) Atofina had the requisite intent to deceive the U.S. Patent and Trademark Office because it failed to disclose the translation and it mischaracterized the reference.

On appeal, Atofina argued that materiality was found only because the reference was alleged to anticipate, and since the anticipation was wrong, the determination of materiality was also wrong. Atofina also argued that the district court failed to consider evidence of good faith, i.e., Atofina’s “reference in the prosecution history to page numbers of the full translation of JP 51-82206,” the submission of the Derwent Abstract and the citing of JP 51-82206 in the patent specification.

Great Lakes argued the full translation was highly material because (1) it was anticipatory, (2) JP 51-82206 was cited in the European counterpart to the ‘514 patent and the European patent only issued after Atofina incorporated an additional limitation into the claims. Intent was shown by (1) Atofina’s failure to disclose the full translation of the Japanese language reference, (2) Atofina’s mischaracterizing prior art references, and (3) withholding “poor results.” Great Lakes also argued there was no evidence of good faith by Atofina.

The CAFC did not decided the issue of materiality, but it did focus on intent. The CAFC found that the failure to submit the full translation was not, in and of itself, enough to establish intent; a “factual basis for a finding of deceptive intent” was required. The CAFC also found (1) Atofina’s comments were consistent with the Derwent Abstract and the full abstract, (2) Atofina did not try to hide information or mislead the Patent and Trademark Office.

Judge Dyk filed an opinion, concurring in part and dissenting in part. Judge Dyk agreed with the majority’s decision, but he would remand for further consideration by the district court.

Note to all patent prosecutors out there. This case exemplifies the old maxim, “penny wise, but pound foolish.” Atofina did not submit the full translation, even though the full translation was in its possession. (Why, is an interesting question. If they didn’t think it was a problem, why not just submit it?) Instead, Atofina submitted the Derwent Abstract and made comments about what the reference discloses. By doing so, they saved the cost of preparing a translation, which, admittedly, can be expensive if it is a very large reference. However, they left themselves open to a charge of inequitable conduct. I expect that they paid many tens of thousands of dollars (if not more) defending themselves from this allegation first at trial and then on appeal. If they would have simply paid for the complete translation and then submitted it to the Patent and Trademark Office, they would likely have saved money in the long run and obviated any allegation of mischaracterizing the reference. If you find yourself in a similar situation, I think you have to ask yourself if saving the cost of the translation is worth the risk of (1) having to defend against a charge of inequitable conduct based on misleading the Patent and Trademark Office or mischaracterizing the reference, and (2) having any patent that ultimately issues invalidated for inequitable conduct.

Bradley W. Crawford is a attorney at MBHB LLP focusing his efforts on patent litigation, prosecution, and counseling.  Prior to joining MBHB, Mr. Crawford worked in the areas of synthetic organic chemistry as well as medicinal chemistry.

Construing Claims “Without Reference to the Accused Device” Is Put to the Test

Patent, Patent Cases 2006,

AIPLATalk174Wilson Sporting Goods v. Hillerich & Bradsby (Fed. Cir. 2006, 05–1103).

By Jeff Steck

Following Federal Circuit precedent that “claims may not be construed with reference to the accused device,” it is common for district courts to construe patent claims before they know anything about the products at issue in the case. Through an uncommon procedural twist leading up to Wilson Sporting Goods Co. v. Hillerich & Bradsby Co. (05-1103), the Federal Circuit found itself in the same position as those district courts. 

 

Wilson owns a patent on a non-traditional softball bat that is best described as being “corked” with, essentially, a beer can. The defendant, H&B, was accused of infringing this patent. Although the Federal Circuit did not have “any information about the accused products,” it is safe to conclude that H&B’s most celebrated product, the solid ash Louisville Slugger, was not at issue.

 

Before the district court, Wilson essentially lost the case when the court issued a narrow construction of the shape and rigidity of the beer-can insert. Instead of pressing forward with an unfavorable construction, Wilson stipulated that there was no infringement under that construction, and the district court entered a final judgment.

 

Wilson appealed the claim construction to the Federal Circuit. With no record on the accused products, the Federal Circuit found itself in the position of so many district courts: both sides were fighting over claim construction, and the court had no idea why. With no information about the accused products, the court complained that “this sparse record lacks the complete context for accurate claim construction.” As a result, the court refused to provide its own claim construction, choosing instead to identify just enough errors in the district court’s construction to send the case back on remand.   < ?xml:namespace prefix ="" o />

 

Although the only issue in the case was claim construction—ostensibly an issue of pure law—the Federal Circuit wanted to understand the accused device. Faced, however, with its own rule that “claims may not be construed with reference to the accused device,” the court had difficulty explaining the contradiction between what it permits in claim construction and what it wants in claim construction. Cf. CVI Beta Ventures Inc. v. Tura LP, 43 U.S.P.Q. 2d 1860, 1861 (Fed. Cir. 1997) (Mayer, J. dissenting) (“[T]he court once again shows that we are solecists…. [W]e are bound to interpret law according to specific rules. By violating these interpretive rules, or by exposing them to exceptions so that our court can amass decisionmaking authority … we inappropriately encumber the process with ambiguity….”).

 

Hoping, perhaps, that contradiction would prove more enlightening than troublesome, the court restated the relevant law on claim construction in a form more characteristic of a koan than a rule of law:  

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.

 (citing SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985)) (scansion added, odd grammar in original). 

 

The panel tried unsuccessfully to show that it was not the first to require evidence of the accused product before conducting claim construction. Citing Bayer AG v. Biovail Corp., 279 F.3d 1340, 1340 (Fed. Cir. 2002), the court noted that it had previously declined to construe claims based on an incomplete record. In Bayer, however, the record was “incomplete” because it was missing “evidence of the meaning of the terms to one of skill in the art at the time of invention”—i.e. the usual evidence in claim construction—not because it was missing evidence on the accused product.

 

The court then tried to restate the rule against construing claims “with reference to the accused device,” concluding that the rule is simply a prohibition against “biasing the claim construction process to exclude or include specific features of the accused product.” As such, the rule “does not forbid any glimpse of the accused product” before claim construction. The issue, however, is not whether a court is permitted to see the accused product, but whether the court is required to see the accused product.

 

By remanding this case without a conducting a complete claim construction, the Federal Circuit has sent the message that a district court’s claim construction must include some analysis of the accused products. The district court had given hope to the promise of Markman: an infringement allegation was resolved with no need for a costly trial, or even summary judgment proceedings; the Federal Circuit’s remand showed that promise to be illusory.

Jeffrey Steck is a partner at MBHB and an experienced litigator. He was an editor of the California Law Review at the University of California at Berkeley, where he received his JD.

CAFC: What Evidence Does an Accused Infringer Need for Summary Judgment of Non-Infringement?

Patent, Patent Cases 2006

AIPLATalk173Exigent Technology, Inc. v. Atrana Solutions, Inc. (Fed. Cir. 2006, 05–1338).

By Marcus Thymian

In its March 22 decision, the Federal Circuit affirmed a district court’s grant of summary judgment of non-infringement of the claims of a patent relating to a “multi-function transaction processing system.” Unlike many appeals involving summary judgments of non-infringement, this opinion did not focus on claim construction or application of the claims to the accused device. Instead, the interesting issue was whether the accused infringer had provided sufficient support in its 12-page summary judgment motion.

At trial, the burden of proving infringement is on the patent holder. Here, the accused infringer moved for summary judgment of non-infringement. In a motion for summary judgment, the burden is initially on the movant (the accused infringer in this case) to show that there is no genuine issue of material fact and that the moving party is entitled to a judgment as a matter of law. Thus, there would appear to be competing burdens, a concept with which courts have sometimes struggled.

In explaining the conflict and finding resolution in this case, the Federal Circuit dedicated much of its opinion to the Supreme Court’s 1986 Celotex v. Catrett decision. Most importantly, on issues in which the nonmovant bears the burden, “the [summary judgment] movant need not ‘produce evidence’ showing the absence of a genuine issue of material fact in order to properly support its summary judgment motion.” Basically, the party moving for summary judgment needs to show that “there is an absence of evidence to support the nonmoving party’s case.” In this case, that showing took the form of a 12-page summary judgment motion (that also addressed invalidity and unenforceability), along with a declaration by the accused company’s CEO stating that none of the accused products contained certain claim limitations. The Federal Circuit stated that “nothing more is required than the filing of a summary judgment motion stating that the patentee had no evidence of infringement and pointing to the specific ways in which accused systems did not meet the claim limitations.”

Marcus Thymian is a partner at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. Much of his recent practice has involved counseling clients on pretrial litigation strategies, including seeking and defending against motions for summary judgment. [link to bio]

Supreme Court on the March

Patent, Patent Cases 2006, , ,

The second half of March, 2006 is a special period for patent law. The Supreme Court will hear oral arguments in two important patent law cases, and may decide petitions for writ of certiorari in a couple others.

On Tuesday, March 21, the Supreme Court will hear arguments in LabCorp v. Metabolite (04–607).  The point at issue hear involves the scope of patentable subject matter.  Specifically, the question briefed is whether a patent can validly include a step of ‘correlating a test result’ that arguably monopolizes a basic scientific relationship used in medical treatment ‘such that any doctor necessarily infringes the patent merely by thinking about the relationship after looking at a test result.’   The Court could also use this case to cut-off patenting of many business-method type inventions. [Review of the LabCorp briefs]. With that in mind, the PTO has pushed-off implementation of any final rules regarding changes to examination of patentability under Section 101.  Respondent and several amici have argued that this case is not properly before the court and should simply be dismissed.  Full disclosure — I was part of the team that drafted the IPO’s brief arguing that the court should not use this case to further limit the scope of patentable subject matter.

The Metabolite case is certainly important.  However, it will only alter our thinking in fringe cases — such as business methods and methods of applying a scientific principle. On the other hand, eBay v. MercExchange (05–130) may have an effect on the value of every patent.

On March 29, the Court will hear the eBay case. It is expected that regulars, Carter Phillips (eBay), Seth Waxman (MercExchange), and Jeffrey Minear (Gov’t) will divide up the sixty-minute argument period.  This case involves the question of whether an injunction should issue once a patent is found valid and infringed.  EBay, the petitioner, has argued that the current standard, overly favors patent holders, and that the court should take a more equitable approach to determining whether to issue an injunction.  Further, when adjudging the equities, a non-practicing entity should have less of a likelihood of obtaining an injunction than would a market competitor. On the other side, MercExchange and the Government both argue for strong patent rights, although neither argue that the right to injunction should be absolute. 

Other pending cases include:

  • MedImmune v. Genentech (Whether a licensee in good standing can challenge a patent’s validity)(cert granted; petitioner briefs due soon);
  • FTC v. Schering Plough (Whether reverse settlement payment from patentee to generic can constitute an antitrust violation)(cert pending; government’s position requested)(DDC predicts cert);
  • KSR v. Teleflex (Whether references can be combined without explicit suggestion)(cert pending; government’s position requested);
  • SmithKline v. Apotex (When appreciation of the invention is required for anticipation)(cert pending; government’s position requested);
  • Microsoft v. AT&T (271(f) issue involving export of software, and whether that constitutes a “component”)(cert in briefing stage);
  • Nystrom v. Trex & Izumi v. Philips (claim construction issues)(cert in briefing stage)(Izumi brief; Philips response; amicus; Izumi reply).

Hal Wegner has been closely following these cases in his popular ‘top ten’ list.

CAFC Endorses Summary Judgment of NonInfringement Without Markman Hearing

Patent, Patent Cases 2006,

AIPLATalk169Schoenhaus v. Gensco (Fed. Cir. 2006, 05–2178).

In a claim construction decision, the Court of Appeals for the Federal Circuit (CAFC) has affirmed the lower court’s exclusion of “semi-rigid” shoe inserts from the claimed “rigid” inserts.  In the process, the court noted that “there is a 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.”[1]

Interestingly, it appears that there was no Markman hearing in this case.  (Pacer Report). Yet, the CAFC praised the lower court’s summary judgment decision and its embedded claim construction.[2]

January 10, 2005, the district court granted defendants’ motion for summary judgment of non-infringement. Senior Judge Louis H. Pollak did not issue a separate Markman order; rather, in a carefully-crafted summary judgment opinion, he construed two limitations of claim 1 of the patent and found as a matter of law that neither limitation was present in the accused shoes. . . .

AFFIRMED

Notes:
[1] Fin Control v. OAM, 265 F.3d 1311, 1318 (Fed. Cir. 2001) (emphasis in original).
[2] Schoenhaus v. Gensco District Court Decision.

USPTO Claim Language Interpretation: Must be “Reasonable” in Light of All the Evidence

Patent, Patent Cases 2006,

In Re Michael C. Scroggie (Fed. Cir. March 13, 2006) (NONPRECEDENTIAL)

by Joseph Herndon

In a non-precedential opinion, the Fed. Cir. affirmed in part and reversed in part a decision of the USPTO Board of Patent Appeals (the “Board”). Mr. Scroggie appealed the Board’s decision affirming a final rejection of his patent application having claims directed to a method for generating a web page (including the limitations “generating page data” and “personalized web page”).

The Fed. Cir. stated the general principle that since during prosecution, claims “must” be given their “broadest reasonable interpretation,” this court reviews the Board’s interpretation of disputed claim language to determine whether it is “reasonable” in light of all the evidence before the Board.

Scroggie argued that a hyper-link is not a web page, but rather a logical address that when selected, directs the user to a known web page. The Fed. Cir. agreed and held that the term “generating page data,” as recited in the claims, requires that page data is “generated,” not merely “selected.” The court stated that the asserted prior art, which teaches “selecting” advertisements that contain hyper-links, does not teach or suggest “generating.” Thus, the Fed. Cir. held that the Board’s construction of “generating page data” was unreasonable and its conclusion that the prior art teaches that limitation was unsupported by substantial evidence.

On another note, the court further held that a web page may be considered “personalized” because (i) the contents of the page transmitted to the user are themselves specific to the user, or (ii) the page was chosen to be transmitted to a user based on the user’s personal data. In this case, the court noted that because the term “personalized web page” can reasonably be construed to mean either type of “personalized,” and because the prior art discloses the latter type, the claims including this limitation were reasonably interpreted by the Board and its conclusion that the prior art teaches this limitation was validly supported by substantial evidence.

The Fed. Cir. did not elaborate on any requirements for the Board to meet the “reasonable interpretation” requirement, or the amount of evidence that would be sufficient to do so.

Note: Joseph Herndon is an assiciate at the intellectual property firm of McDonnell Boehnen Hulbert & Berghoff.  Joe has a stellar background in electrical engineering and handles both patent prosecution and litigation. herndon@mbhb.com.

 

How do Your Arguments Look in the Mirror?

Patent, Patent Cases 2006

Maytag v. Electrolux (N.D. Iowa 2006, 04-4067).

Maytag sued Electrolux for infringement of its patents relating to the design of a washing machine basket.  After a Markman hearing, Chief Judge Bennet began his claim construction decision with an “excerpt from a remarkably wise children’s story:”

  “When I use a word,” Humpty Dumpty said, in rather a scornful tone, “it means just what I choose it to mean—neither more nor less.”
  “The question is,” said Alice, “whether you can make words mean so many different things.”
  “The question is,” said Humpty Dumpty, “which is to be master—that’s all.”

Lewis Carroll, Alice’s Adventures in Wonderland and Through the Looking Glass 219 (George Stade ed., 2004) (1871). According to Judge Bennet, “[t]he irony in this case is that it is not altogether clear to the court just who is being Humpty Dumpty.” 

One innovative approach taken by the judge was to present a draft claim construction decision to the attorneys well before the Markman hearing as a way to help focus the hearing.  According to the Court, the experiment was a great success.

 

Patently-O Scholars

Articles and Publications, Patent,

AcademicEggHeadThere are a couple of interesting new patent papers:

Linguistics and Claim Construction by Kristen Osenga (available here).  

Professor Osenga explores linguistic theory for truths that can be applied to claim construction.  She writes about five particular “notions” that could be used to make claim construction more consistent:

1) every reader, including a judge, possesses a mental lexicon with a common sense (or conventional) understanding of word meaning which is a point from which to start when interpreting claims;

2) there is an appropriate place for dictionary usage, which is to inform the judge’s common sense understanding about a word where he has none;

3) patent claims have their own grammar which must inform the syntactical and contextual analysis, but may also skew the reader’s common understanding that was obtained either from a mental lexicon or from a dictionary;

4) regardless of the common sense understanding, the PHOSITA must be returned to the analysis and changes made to the law to effectuate the return of the PHOSITA; and

5) extensive resort to the specification and prosecution history to divine the patentee’s intent is inappropriate.

Patent Metrics: The Mismeasure of Innovation in the Biotech Patent Debate by David Adelman and Kathryn DeAngelis (available here).

Adelman and DeAngelis have written what they claim to be “the first comprehensive empirical study of biotechnology patents.”  Their conclusions — there is little evidence that the rise in biotechnology patenting is adversely affecting innovation. The pair also provides a general criticism of “the current enthusiasm for empirical” at the expense of exploring “the obvious complexity of innovative processes.”

Supreme Court Denies Phillips v. AWH Petition for Certiorari

Patent, Patent Cases 2006,

Phillips v. AWH Corp. (Supreme Court).

The Supreme Court has denied AWH’s bid for certiorari on the question of whether “all aspects of a district court’s patent claim construction may be reviewed de novo on appeal.”  That single rule of law has often been cited as the primary reason for the unusually high reversal rate of patent cases.

Appellate Procedure: No Cross-Claims for Winning Party on Winning Issues

Patent

AIPLATalk061Nautilus v. ICON (Fed. Cir. 2006, 05–1577o).

ICON won on summary judgment.  On appeal, ICON filed a cross-appeal requesting review of several claim construction rulings in the event the CAFC reversed the lower court’s ruling. However, the appellate panel refused to hear ICON’s arguments for new claim construction because ICON won below:

a party who prevails on noninfringement has no right to file a ‘conditional’ cross-appeal to introduce new arguments or challenge a claim construction, but may simply assert alternative grounds in the record for affirming the judgment.

AIPLATalk062In dissent, Judge Newman essentially argued that the practical nature of claim construction appeals should allow all claim construction issues to be reviewed at one time.

The burden on the district court and the parties, requiring them to conduct a trial on un-reviewed claim constructions, when objections have been raised and are ripe for review, is an entirely unnecessary burden.

 

Court Reverses Claim Construction that Placed “Too Much Emphasis on the Ordinary Meaning”

Patent, Patent Cases 2006

Curtiss-Wright Flow Control Corp. v. Velan, Inc. (Feb. 15, 2006: 05-1373)

By Peter Zura

Velan appealed the lower court’s grant of a preliminary injunction in part over the construction of the term “adjustable” in the claimed feature reciting “an adjustable dynamic, live loaded seat coupled to said main body.”

In the preliminary injunction order, the trial court concluded that the bias force on the live loaded seat could be changed in a manner that is “not limited by any time, place, manner or means of adjustment.” In reaching this conclusion, the trial court relied on the ordinary meaning of “adjustable” to be “capable of making a change to something or capable of being changed.” The trial court refrained from further narrowing the term, alleging that claim differentiation prohibited the court from doing so, and also alleged that further limitations would impermissibly narrow the claim to the structure of the preferred embodiment.

The Federal Circuit, while commending the lower court’s restraint, disagreed. After applying a Phillips analysis to the claims in light of the specification, the Federal Circuit concluded that the disclosure defined the term “adjustable” to mean that the dynamic, live loaded seat can be adjusted while the de-heading system is in use.

Furthermore, the Federal Circuit reasoned that the district court’s construction of “adjustable” rendered that limitation nearly meaningless:

This court finds it difficult, if not impossible, to imagine any mechanical device that is not “adjustable,” under the ordinary meaning of that term adopted by the district court. Almost any mechanical device undergoes change (for instance, when dismantled to replace worn parts) when no consideration is given to the “time, place, manner, or means of adjustment.”

Thus, while the district court may have been correct that a device encompassed by claim 14 of the ’714 patent need not have an adjustment mechanism, it went too far in completely eliminating any constraints on the “adjustable” limitation. Moreover, the district court’s construction actually creates a redundancy: if “adjustable” means adjustable at any time and in any way, it is hard to imagine any meaning for the term because without limitations on time or manner of adjustment, all structures are “adjustable.”

Regarding the issue of claim differentiation between independent claims, the Federal Circuit provided that two considerations generally govern this claim construction tool when applied to two independent claims:

(1) claim differentiation takes on relevance in the context of a claim construction that would render additional, or different, language in another independent claim superfluous; and

(2) claim differentiation “can not broaden claims beyond their correct scope.

Finding that both of these considerations weighed against the district court’s construction, the preliminary injunction was vacated and the case was remanded.

(Published with permission)

Beware of Overshooting the Mark Set by Phillips v. AWH

Patent, Patent Cases 2006

AIPLATalk052Varco v. Pason Systems (Fed. Cir. 2006).

In a case involving oil and gas drilling equipment, the district court refused to grant the patentee a preliminary injunction.  Varco appealed claim construction.

Specifically, because the specification states that selected regulators 200-203 must be manually calibrated before use, the district court concluded the “selecting” step recited in the asserted claim requires manual calibration.

On appeal, the CAFC determined that the court’s construction was too narrow — and that it had impermissibly imported limitations into the claims.  In its decision, the appellate panel pointed to the preamble of the claim that indicated that it was a method for “automatically” regulating the drilling equipment.  Based on this and other tidbits pulled from the prosecution history, the court found that manual calibration was not required.

Vacated.

Note: This case brings home a point I made in my talk at the AIPLA winter meeting last week.  Specifically, courts should be wary of overshooting the instructions of Phillips. Notably, even though claims are interpreted in light of the specification, special care should be taken to avoid importing limitations from the claims.

Review: EBay v. MercExchange Amici Briefs

Patent, Patent Cases 2006, ,

eBay v. MercExchange (Supreme Court 2006).

This year, the Supreme Court will determine whether a patentee should have a right to an injunction once infringement is found.  This issue is fundamentally important to the practice, and a number of amici have filed briefs. (briefs in support of MercExchange will be filed later this spring). 

The following is a review of the briefs received thus far.  Copies of the briefs are available for download at the bottom of this post.[*]

Yahoo!’s Brief

Yahoo!, with the support of professor Robert Merges takes issue with patent trolls, and their propensity to ambush and cause harm.  According to the brief, patent trolls are “entities whose primary purpose is to prey on innovators who actually produce societally valuable products.”

Yahoo!’s solution is that the “availability of injunctions should turn largely on whether the patentee engages in research and development and should discourage entities whose sole business is patent litigation.”

Electronic Frontier Foundation Brief

EFF thinks about free speech and argues that “automatic injunctions” pushes against our first amendment protections. EFF cites the importance of blogging and the potential of patent owners to claim control over internet publishing mechanisms.

AIPLA & FCBA Joint Brief

AIPLA is nominally in support of neither party, but is in fact in support of MercExchange.  AIPLA argues that the CAFC’s “general rule” of issuing injunctions after a finding of liability is correct because the harm caused by continued infringement is “inherently irreparable.” The brief also argues that, in this case, the CAFC is not guilty of expanding the power of patents.  Rather, the general rule of issuing injunctions has long been a part of patent practice and is consistent with the analysis in other areas of law such as trademarks.

Fifty-Two Law Professors Brief

Professor Lemley along with fifty-one other professors filed their brief in support of eBay. Notably, the professors attempt to make a distinction between a district court’s refusal to grant an injunction and a compulsory licensing scheme.

Interestingly, professors are clear that courts should be given discretion to deny injunctive relief, but that such discretion should not be used regularly or even often.  This implies that the professors are at least in favor of a presumption that an injunction will issue.

Brief of Professors Pollack & Reynolds

Another set of law professors and legal scholars (Including Instapundit) argue that the Constitution supports a “presumption that injunctions are unwarranted for patent holders who are neither practicing their infringed inventions nor making good-faith efforts to prepare to practice their inventions.”

Teva’s Brief

Teva, primarily a generic drug manufacturer, filed its brief arguing that (1) district court’s should have discretion and (2) the public interest should be represented in any injunction decision.

Computer & Communications Industry Association (CCIA) Brief

CCIA argues that the CAFC continues to make patents stronger while the PTO continues to weaken patent quality. This combination, according to the advocacy group, encourages litigation and impedes innovation.

Bar Assn. of the District of Columbia’s Brief

The district court questioned the “unsettled political nature” of business method patents. In its brief, the BADC questions whether politics or draft legislation can be considered when determining an injunction.

IBM’s Brief

 IBM argues that Section 283’s permissive language (“may”) requires that courts examine equitable principles before issuing an injunction.  Furthermore, the patent leader argues that the Supreme Court’s Continental Bag precedent also requires examination of the equitable principles.

Franklin Pierce Law Professors Brief

The law professors, led by Thomas Field, argue that the right to injunction should be strong and not variable according to patentee’s use of the patent. “The trial court accepted arguments analogous, given the apparent economic disparity between the parties, to ones Goliath might have made in asking that David be disarmed.”

Brief of Intel, Microsoft, Oracle, and Micron

The four technology giants have joined together in an “Innovator’s Alliance” and filed a brief in support of eBay’s position. The brief reviews some historical aspects of patent law and argue that the Founding Fathers would not have approved of automatic injunctions for patent infringement.

Brief of the Securities Industry

Several securities industry groups joined together to file a brief in support of eBay. The brief discusses their worries that a patent infringement lawsuit could hamper the reliability of financial markets

Brief of Research-In-Motion

RIM argues that the patent enforcement system must promote the useful arts

Nokia’s Brief

Nokia follows a similar vein as the EFF, but argues that interoperability of networks and systems is extremely important, and patents on de facto standards should not be granted injunctions.

Brief of the Bar of the City of New York

The NY Lawyers argue that injunctions should not be the general rule. Rather, courts should consider a broad range of factors that may sway the decision of whether to grant an injunction. These include irreparable harm; whether infringing activity was lawfully initiated (e.g., prior to issuance of the patent); whether patentee delayed in asserting a claim; whether there is a disputed question of law (e.g., claim construction); harm of an injunction to the infringer compared to benefit of the injunction for to patentee; extent of harm to third-parties.

Files (thus far):

  • Party Briefs on the Merits

  • Amici Briefs on the Merits

  • Briefs for/against Certiorari:

    • Other

     * cite as Dennis Crouch, Review: EBay v. MercExchange Amici Briefs, Patently-O, January 30, 2006, at https://patentlyo.com.

     

    Patent Examiners Should Interpret Claims In Light of Specification

    Patent, Patent Cases 2006, , ,

    In re Johnston (Fed. Cir. 2006)

    Although the CAFC affirmed the B.P.A.I’s use of a dictionary in defining the patent applicant’s claim terms, the court did so only because the patent specification did not otherwise provide any limits the terms.  The court thus indicated that the PTO should apply the principles of Phillips v. AWH during prosecution — rather than the PTO’s current practice of giving claims their “broadest reasonable interpretation.”

    In addition, the court provided an excellent review of its string of precedents concerning the standard for combining references in an obviousness rejection:

    Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1385 (Fed. Cir. 2001) (“In holding an invention obvious in view of a combination of references, there must be some suggestion, motivation, or teaching in the prior art that would have led a person of ordinary skill in the art to select the references and combine them in the way that would produce the claimed invention.”);

    In re Dance, 160 F.3d 1339, 1343 (Fed. Cir. 1998) (“When the references are in the same field as that of the applicant’s invention, knowledge thereof is presumed. However, the test of whether it would have been obvious to select specific teachings and combine them as did the applicant must still be met by identification of some suggestion, teaching, or motivation in the prior art, arising from what the prior art would have taught a person of ordinary skill in the field of the invention.”);

    In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988) (there must be “some objective teaching in the prior art or that knowledge generally available to one of ordinary skill in the art would lead that individual to combine the relevant teachings of the references”);

    Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cri. 1985) (“When prior art references require selective combination by the court to render obvious a subsequent invention, there must be some reason for the combination other than the hindsight gleaned from the invention itself.”).

    Be aware that this particular issue is being considered by the Supreme Court in KSR v. Teleflex.  This decision solidifies the CAFC’s position and increases the odds that KSR will be taken-up on certiorari.  As noted by Professor Wegner, the Johnston panel “says nothing about the Anderson’s-Black Rock or Sakraida Supreme Court standard of patentability” that is the subject of the KSR case.

     * Cite as Dennis Crouch, Patent Examiners Should Interpret Claims In Light of Specification, Patently-O, January 30, 2006 at https://patentlyo.com.

    Phillips v. AWH: Certiorari Briefing Complete

    Patent, Patent Cases 2006,

    Phillips v. AWHPhillips v. AWH (on petition for certiorari)

    Last week, Phillips posted its opposition to AWH’s petition for certiorari in this landmark case focused on the question of whether patent claim construction should be reviewed de novo on appeal. [Link].

    In “short and pithy” paper, AWH has now filed its reply with, inter alia, these points:

    1. On three separate occasions, an en banc CAFC has ruled that claim construction is reviewed de novo. That issue is ripe for review.
    2. This is an extremely important issue — one that garnered 23 amici briefs at the CAFC level.  “The United States Patent and Trademark Office itself filed an amicus brief urging the Federal Circuit to apply some form of deferential review.”

    The briefs may be circulated as early as next Tuesday.

    Documents:

    Phillips v. AWH: At the Supreme Court

    Patent, ,

    Phillips v. AWHPhillips v. AWH (on petition for certiorari)

    AWH has petitioned the Supreme Court to with the broad question of whether patent claim construction should be reviewed de novo on appeal.

    Question Presented: Whether the Federal Circuit is correct in holding that all aspects of a district court’s patent claim construction may be reviewed de novo on appeal.

    AWH’s petition picks up where Judge Mayer and Newman’s dissent left off in the en banc Phillips decision. In their dissent, the judges focused their attention on the “futility [and] absurdity” of the de novo rule.  

    Now more than ever I am convinced of the futility, indeed the absurdity, of this court’s persistence in adhering to the falsehood that claim construction is a matter of law devoid of any factual component. Because any attempt to fashion a coherent standard under this regime is pointless, as illustrated by our many failed attempts to do so, I dissent.

    Indeed, many believe that the high reversal rate of claim construction is primarily due to the de novo standard.  To that effect, AWH’s petition does not mince words:

    Left to its own devices, the Federal Circuit will continue to improperly devote the chief measure of its energy to rejudging the facts of patent claim constructions, rather than to fulfilling its purpose of bringing uniformity to patent law.

    Now Phillips has posted his opposition.  Phillips argues that claim construction should be considered a matter of law and should continue to receive de novo review.

    The construction of written instruments is one of those things that judges often do and are likely to do better than jurors unburdened by training in exegesis.  Similarly, the Federal Circuit is uniquely equipped to make such determinations on appeal.

    The main thrust of the Phillips argument, however, is that the case is not ripe for review because the CAFC did not rule on the issue of de novo review.

    Notes: