Cannon Rubber v. The First Years (Fed. Cir. 2005, NONPRECEDENTIAL).
In a claim construction dispute over the term “in,” the CAFC used its trashcan analogy:
As an initial matter, we note that the term “in” is a simple, non-technical term, and that under its ordinary meaning, a “diaphragm disposed in the body” includes diaphragms contained entirely and partially in the body. For example, a trash bag is “in” a trashcan even though a portion of it is hanging outside of the trashcan.
NOTE: It is good that this decision is nonprecedential because it does not follow Phillips v. AWH. Rather, the case merely cites Phillips for the proposition that the construction may depart from the plain meaning of a claim term “when the patentee has acted as a lexicographer or when the patentee has clearly limited the scope of the invention through a disclaimer in the specification or prosecution history.” . . .
In the second claims construction appeal, the CAFC found that the term “a sodium phosphate” was limited to a single type of sodium phosphate. In its decision, the Court found that if the patentee had intended to cover multiple types of sodium phosphate then it should have used “at least one” language. This decision was supported by two factors: (1) the claim was amended to use the transition “consisting of” rather than the open ended “comprising” and (2) none of the listed examples in the specification used multiple types of sodium phosphate.
On appeal from the District Court’s grant of a preliminary injunction against generic manufacturers/distributors Ranbaxy and Teva, the Federal Circuit concurred with the lower court’s finding of likelihood of success and irreparable harm and thus affirmed the PI grant. Perhaps the most significant portion of the decision related to the Circuit’s clarification of dedication of subject matter to the public for the purposes of the doctrine of equivalents, as recently set forth in Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co.(Fed. Cir. 2002) (en banc). (more…)
February 1–4, Mid-Winter Institute, La Quinta, California — AIPLA (I will be presenting “Patent Law Year in Review.”) (Southern California in February!).
AWH has petitioned the Supreme Court to take-up this landmark case with the broad question of whether patent claims 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.
This 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.
Microstrategy v. Business Objects (Fed. Cir. 2005)
These companies make business intelligence software. Microstrategy filed suit against Business Objects alleging both patent infringement and several business tort claims. The patent at issue involved automatic broadcasting of information to multiple types of subscriber devices and then formatting the output.
Patent Claims: After a Markman hearing, the defendant, Business Objects, was granted summary judgment of non-infringement. On appeal, Microstrategy did not fight the claim construction, but rather the interpretation and application of the claim construction. The question was whether the claim language of “each user output device . . . be associated with a device-specific style” required at least two different styles.
MicroStrategy argues that this Markman construction and the context of the invention do not require support for more than one type of output device. In particular, MicroStrategy notes that the specification contemplates a system with “one or more” output devices. Thus, MicroStrategy reads the claim and the district court’s Markman construction to permit a system with support for just one type of user device.
The CAFC, disagreed. Because the claim required that “each user output device . . . be associated with a device-specific style,” the Court determined that the claim implicitly required at least two different styles. Because the defendant only supported one style, the non-infringement decision was affirmed.
The Appellate panel did, however, reverse the lower court’s findings regarding one of the business tort claims under Virginia law.
Attempt to draft unitary claims — i.e., claims that are not susceptible to international distribution.
Claim devices and systems, not just methods — in RIM, the CAFC taught that system claims are much stronger on an international level.
Draft claims that would infringed under the importation or domestic sale provisions of 271(g).
Keep continuations alive.
File foreign.
The paper also delves into a number of ex post litigation strategies such as filing suit at the ITC and advocating for a claim construction that avoids international division.
Callicrate sued Wadsworth for infringement of its patented bull castration tools. After a trial, a jury found all of the claims anticipated, obvious, and not infringed. On appeal, the CAFC disregarded the jury verdict and reversed.
Infringement: The defendant admitted that its devices include all of the claim elements. Based on that admission, the CAFC determined that the jury had “no basis” for finding no infringement and that there is “no reason for a new trial.” (Although each element was included, the defendant argued that the components were “not connected in the particular manner recited in the claims. The CAFC does not seem to have addressed that point specifically since the jury instructions asked simply whether “each and every element” of the claim was included).
Enabling Disclosure: Callicarate’s patent claim priority to an earlier patent, but could be invalidated if they were shown to be not fully enabled by the earlier patent. The district court found that the earlier patent did not contain adequate disclosure to support the claimed mechanism because (1) the only disclosure of the claimed mechanism is in the background section of the earlier patent; (2) the background section contains disparaging remarks about this mechanism; and (3) the patentee distinguished his assembly mechanism from the claimed mechanism during prosecution.
However, the CAFC held that these reasons were insufficient for a finding of a lack of enablement. First, the background section can be used to enable a claim. Second, disparaging remarks do not make it any less likely that one of ordinary skill in the art would, after reading the background, know how to make and use the invention.
Defendant Challenging Claim Construction: In a cross-appeal, the defendant challenged certain claim construction terms. However, the CAFC refused to hear that appeal because the defendant had not objected to the district court’s construction and had conceded infringement of the newly challenged element. (note: the CAFC has finally drawn a line for when it will not review claim construction).
Conclusion: Reversed and remanded because jury verdict was against the weight of the evidence.
Sorensen alleged that Mercedes-Benz imports violated its patented injection molded tail lights. and requested that the ITC institute an investigation under 19 USC 1337. However, after the investigation, the ITC found no infringement based on its interpretation of the claims.
The patent is directed to a multi-layer injection molding with at least two materials having “different characteristics.” The only difference between the accused layers was that they were different colors, and the ITC found that “different characteristics” must refer to different molecular properties and not to color. Under this claim construction, it was easy for the ITC to find no infringement.
On appeal, the CAFC reversed because the claim did not exclude color as a basis for differing characteristics, the specification did not so limit the term, and there was no disavowal of scope in the prosecution history.
World Kitchen and OXO v. Zyliss Haushaltwaren (Fed. Cir. 2005) (nonprecedential).
OXO and Zyliss both make salad spinners. OXO’s spinner has “push-to-spin” technology while the Zyliss spinner uses a pull-cord. OXO sued for patent infringement and asked for a preliminary injunction to get the Zyliss product off the market. After a preliminary claim construction the district court denied the PI motion, finding that OXO had not shown a likelihood of success on the merits.
On appeal, OXO argued that lower court erred by construing the term “lid” according to its ordinary meaning. The CAFC, however, affirmed — agreeing with the district court that a “lid” is “something that covers the opening of a hollow container,” but does not include items secondarily attached to the lid that do not serve the function of covering the opening. Thus, in this case, the brake disc used to stop the salad spinner is not part of the lid because it does not participate in covering “the opening of a hollow container.” (File under “if it looks like deference and smell like deference . . .”).
JVW Enterprises v. Interact Accessories (Fed. Cir. 2005).
In a case involving a video game controller, the appeals court reversed-in-part, finding that the lower court had misconstrued the means-plus-function limitation.
De Novo: Like other claim construction, the interpretation of means-plus-function language is reviewed de novo. More particularly, identification of the function and corresponding structure is reviewed de novo.
In this case, the CAFC found that the district court’s opinion “confuses function with structure.” According to the appellate panel, “function must be determined before corresponding structure can be identified.”
Function as claimed: The function of a means-plus-function claim is found in the claim language. In this case, the district court erred in interpreting unclaimed functions into the claims.
Structure as described: The corresponding structure of a claimed function must be found in the specification — and must be clearly associated with performance of the function.
The CAFC reversed and remanded based on consequences of the err in claim construction.
After an award of summary judgment of infringement, the Central District of California District Court issued a permanent injunction against Medtronic’s use of Cross’s patented spinal implants. After determining that it had jurisdiction, the CAFC reversed the claim construction and remanded for a new determination of infringement based on the corrected construction.
Jurisdiction: Cross argued that, the injunction had no coercive effect because had Medtronic pulled its products from the market prior to the injunction, and thus, that there was no jurisdiction for an appeal. The CAFC disagreed, highlighting their clear rule that: “if the district court’s order expressly grants an injunction, the order is appealable under § 1292(a)(1), without regard to whether the appellant is able to demonstrate serious or irreparable consequences.”
Claim Construction: The appellate panel began its claim construction analysis by referring to Webster’s definition of an “interface.” This was permissible under Phillips because the dictionary definition did not “contradict any definition found in or ascertained by a reading of the patent documents. Using the new definition, the CAFC modified the district court’s construction.
Means Plus Function: In an office action, the applicant referred to the claimed “securing means” as “i.e., the nut.” Despite this reference to the a specific securing structure, the CAFC found that there had been no disavowal of scope in the means plus function element. In dicta, the court noted that it had not decided whether there could ever be “a disavowal of § 112, ¶ 6 equivalents.”
The court then conducted a thorough analysis of infringement and validity, eventually vacating the summary judgment and remanding for further proceedings.
Nystrom v. Trex Co. (Fed. Cir. 2005). This summer’s Phillips v. AWHdecision shifted the focus of claim construction from extrinsic evidence (e.g. dictionaries) to the patent specification. After agreeing to rehear the Nystrom v. Trex appeal to address the effects of Phillips, a Federal Circuit panel (Mayer, Gajarsa, and Linn) has withdrawn its June 28, 2004 opinion (in which Gajarsa had dissented) and has substituted a new unanimous opinion that reaches a different claim construction, resulting in a different case outcome.
Nystrom’s patent related to a design for deck boards that are shaped to shed water. The main claim construction issue related to whether the claim term “board” was limited to boards made of “wood cut from a log” or whether a broader dictionary definition (e.g. “a flat piece of wood or similarly rigid material adapted for special use”) would apply.In its pre-Phillips opinion, the panel relied on the dictionary definition and claim differentiation (a dependent claim specifically called for “wood cut from a log,” while broader claims did not) to determine that “board” was to be construed broadly.
In its post-Phillips opinion, the same panel noted that Nystrom’s specification and the prosecution history consistently described boards made of wood cut from a log.The panel dismissed claim differentiation as a basis for its previous broad construction: “[d]ifferent terms or phrases in separate claims may be construed to cover the same subject matter where the written description and prosecution history indicate that such a reading of the terms or phrases is proper.” Regarding the broad dictionary definition previously relied on, the panel noted:
What Phillips now counsels is that in the absence of something in the written description and/or prosecution history to provide explicit or implicit notice to the public – i.e., those of ordinary skill in the art – that the inventor intended a disputed term to cover more than the ordinary and customary meaning revealed by the context of the intrinsic record, it is improper to read the term to encompass a broader definition simply because it may be found in a dictionary, treatise, or other extrinsic source.
Importantly, there was no clear disavowal of claim scope in this case – Phillips doesn’t require as much – but nothing in the intrinsic record supported a construction broader than “wood cut from a log.”
Marcus Thymian is still a Minnesota Vikings fan and has been involved with several recent litigations in which claim construction turned on intrinsic extrinsic.He is a partner at McDonnell Boehnen Hulbert & Berghoff LLP in < ?xml:namespace prefix = st1 />Chicago. [Marcus Thymian’s Bio]
Claim Construction: In a step-back from recent claim construction holdings, the Court of Appeals for the Federal Circuit held that an “attorney’s statements” made during prosecution “do not alter the ordinary meaning of the claim language.”
Biagro’s patents relate to a phosphorus-based fertilizer for plants. Representative claim 1 requires a “phosphorous-containing acid or salt . . . in an amount of about 30 to about 40 weight percent.”
Grow More’s product contains phosphorous, but the final product does not contain any phosphorous acid (although it is created using phosphorous acids). Biagro argued that the claims should be interpreted as requiring the “chemical equivalent” rather than actually requiring an acid in the final product. Biagro also pointed to the prosecution history where the attorney had pointed to the phosphorous acid in two examples — when in fact those examples only included chemical equivalent amounts of phosphorous acid. The CAFC found Biagro’s arguments unappealing and affirmed the district court’s construction and dismissal.
Doctrine of Equivalents: Biagro had amended the claims during prosecution to include the “phosphorous acid,” but contended that Festo should not apply. The CAFC disagreed:
Burden: Even at summary judgment, the patentee has the burden of showing that it can overcome the Festo presumption associated with a narrowing amendment.
Reason for the Amendment Merely Tangential: A narrowing amendment made when were claims were rejected but done without any discernible reason is presumed to be made for a patentable reason, and not for a reason merely tangential to the equivalent.
The prosecution history revealed no reason for the amendment, and therefore Festo could not show that the rationale underlying the amendment was only tangential to the accused nonmagnetizable equivalent. Similarly, in this case, since the prosecution history shows no reason for adding an upper limit to the concentration range, Biagro cannot claim that the rationale for the amendment is merely tangential.
Other Reason: The court rejected the Biagro’s reasoning that the patentee had believed the claims meant “chemical equivalent” when, in fact, they did not.
A new flurry of appeal briefs further complicates this closely watched case involving the fundamental question of how the U.S. patent laws can be asserted against foreign activities. Canada based Research-in-Motion (RIM) was at the losing-end of a 2003 patent infringement trial that resulted in a permanent injunction against its popular BlackBerry system. That judgment is stayed pending a series of appeals that have included two appellate court opinions. Now, RIM is asking the Court of Appeals for the Federal Circuit (CAFC) to hear the appeal as an en banc panel of all twelve judges.
Background
In August, 2005, the CAFC released a second appellate opinion in the case. The new opinion focused on the extent that a patent must be practiced within the U.S. to fall under the guise of § 271 of the Patent Act and specifically highlighted on the difference between system claims and method claims with relation to international activities. A system, the court held, is used “within the United States” so long as the United States “is the place at which the system as a whole is put into service, i.e., the place where control of the system is exercised and beneficial use of the system obtained.”A method, however, is only used “within the United States” if “each of the steps is performed within this country.”
As such, RIM (RIMM) was able to avoid infringement of NTP’s method claims but not the system claims because “RIM’s customers located within the United States controlled the transmission of information and benefited from the resulting exchange of information.”
The court also opined on the inapplicability of other portions of 271 to method claims:
Sale: The CAFC found it unlikely that a method claim could infringe through the sale provision of 271(a).
Component: Distinguishing Eolas, the CAFC implied that a method claim would rarely if ever trigger 271(f).
Section 271(g): The import provision only applies to physical articles — and thus cannot be used to find infringement of a method for transmitting information (as claimed by NTP).
Rehearing en Banc
In the wake of the revised appellate opinion, RIM has renewed its request for an en banc rehearing – hoping that a full panel of appellate judges will eliminate the “control and beneficial use” standard for transnational infringement.NTP opposes the rehearing.
RIM’s Petition for Rehearing
In its brief, RIM questioned the panel decision that “use” of a “patented invention” occur can “within the United States” under 35 U.S.C. 271(a) even if significant components or acts specified by the claims are outside the United States. RIM further argued that the panel’s distinction between method and system claims was not given any justification and is “untenable.”
The Panel erred on multiple grounds. First, the Panel fails to follow the plain statutory language extraterritorially limiting § 271(a) liability to “uses . . . within the United States.” As a result, the Panel makes an unsupported distinction between method claims and system claims creating a generic rule for all system claims that fails to consider the nature of the actual patented invention. Second, the Panel ignores basic cannons of statutory construction that forbid extending the patent statute extraterritorially absent clear Congressional direction. Third, the Panel erroneously finds § 271(a) liability based on Decca, a case decided under 28 U.S.C. 1498, the statutory language and purpose of which are entirely different from § 271(a). Fourth, the Panel misapplied that analysis and decided fact issues that should be left for the jury.
NTP’s Opposition to the Rehearing
In its opposition brief, NTP continues its barrage on RIM for its “attempts to delay purely for delay purposes.”
The Panel properly focused on the only pertinent activities for the 271(a) question presented: the acts of millions of U.S.-located BlackBerry users that put into service their U.S.-located BlackBerry handhelds to send and receive wireless emails millions of times each day using U.S.-located transceivers and US.-located email systems equipped with thousands of U.S.-located email gateway redirectors sold by RIM. The only pertinent RIM activities are those establishing inducement and contributory liability – activities conceded by RIM on appeal. Other acts that RIM raises are irrelevant. Indeed, under RIM’S reasoning, use by BlackBerry customers in other countries negates the tort of infringement arising from use in the United States. Such analysis lacks any basis in law, precedent, or reason.
NTP argued that the longstanding principles of the Decca case clearly guide this case, and that “unless [the CAFC] sua sponte intends to overturn Decca and Decca II in a manner that the Supreme Court and Congress have refused, RIM presents no issue that warrants further review.”
Microsoft’s Amicus Brief in Support of the Petition
Microsoft took time to point-out the inconsistencies between the NTP decision and the handful of other recent cases involving extraterritorial application of U.S. patent laws, and the software giant asked the court to rehear this case in conjunction with its own pending AT&T v. Microsoft to ensure a “uniform and consistent body of case law concerning the territorial reach of 35 U.S.C. § 271.”
NTP v. Research in Motion, (271(f) “component” does not apply to method claims).
AT&T v. Microsoft, 414 F.3d 1366 (Fed. Cir. Jul. 13,2005) (271(f) “component” applies to method claims and software being sold abroad);
Eolas v. Microsoft, 399 F.3d 1325 (Fed. Cir. Mar. 2,2005) (271(f) “component” applies to method claims);
Pellegrini v. Analog Devices, 375 F.3d 1113 (Fed. Cir. 2004) (271(f) “component” does not cover export of plans/instructions of patented item to be manufactured abroad);
Bayer v. Housey Pharms, 340 F.3d 1367 (Fed. Cir. 2003) (271(g) “component” does not apply to importation of ‘intangible information’).
Regarding policy, Microsoft argued that limiting 271(a) U.S. patent law to not include any foreign actions, would create “an incentive for American companies to locate certain aspects of their systems outside the United States, primarily to avoid infringement liability. Such an outcome would likely result in loss of jobs, skilled workers, capital, and information technology, abroad.” On the other hand, Microsoft argued that allowing infringement for export of components under 271(f) creates “an incentive to move their research aid development abroad.”
Canadian Government’s Amicus Brief in Support of the Petition
In a rare move, the Government of Canada filed a brief supporting the petition for rehearing en banc. The brief notes that the panel opinion does not include any discussion of the principles of comity and international law that should be considered when determining the extent that U.S. laws should be interpreted to limit activities taken on foreign soil.
“The reissued panel opinion lacks any acknowledgment or discussion of the effect of, or the effect upon, long-established international understandings and agreements regarding national jurisdiction over intellectual property. Because the decision of the panel was neither explained nor justified in terms of contemporary, internationally-accepted principles of national jurisdiction, the opinion raises questions concerning fundamental principles upon which this international intellectual property system has harmoniously been based for well over a century.”
The brief recognized that the eventual conclusion may well be that patent laws should extend transnationally. However, the the thrust of this brief is that an expansion of extraterritorial application of the law should include a thorough analysis of the international implications.
Canadian Chamber of Commerce in Support of the Petition
The group of Canadian businesses argue that the standards created by the RIM opinion create confusion by the artificial distinction between system and process claims. Further, the group argue that the court should respect the rule of comity when construing a statute.
As the Supreme Court recently stated, courts “ordinarily construe[] ambiguous statutes to avoid unreasonable interference with the sovereign authority of other nations.” F. Hoffman-La Roche v. Empagran, 542 U.S. 155 (1994).
Seven Networks, Inc. Brief in Support of the Petition
Seven Networks argues simply that patents are “national in scope.” And, without congressional action, patents should remain national in scope.
On its face, 35 U.S.C. §271(a) is national in scope, and the statute has no extraterritorial reach. It applies to “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States”. When a statute is silent as to its extraterritorial application, the presumption is that the statute does not have extraterritorial effect.
With reference to “control and beneficial use” standard derived from Decca, Seven argued that Decca’s decision required ownership of the foreign-located system elements. Because RIM customers do not own the Routers located in Canada, they cannot be said to have control or be beneficially using that element.
Information Technology Association of Canada Brief in Support of the Petition
The ITAC brief takes the stance that method and system claims should be treated consistently. ITAC correctly points out that it is often quite easy to draft a “system” claim that contains the same limitations as a parallel “method” claim.
NTP’s Consolidated Response to the Amicus Briefs
No amici disputes the fact that one of the patents does not even give rise to the issue of territoriality (NTP wants to avoid this altogether and just get paid).
The Canadian Gov’t Brief confirms that U.S. patent laws apply when the RIM system is used Within the U.S.
Microsoft supports the decision finding infringement of the system claims.
The Canadian Chamber of Commerce seeks an improper advisory opinion (on product-by-process claims).
The ITAC brief, prepared by RIM’s patent firm (Kirkland & Ellis) merely rehashes RIM’s old arguments.
Seven Networks hopes to avoid infringement by placing its own routers abroad.
Intel’s Amicus Brief in Support of the Petition
In a brief supporting an en banc rehearing, Intel first noted that this issue is of great importance to today’s economy where many thousands of businesses operate multinationally. Like RIM, Intel could find no “principled or policy basis” for the outcome of a multinational infringement case to depend on the form of the preamble of the claim.
There is no reason to hold that practicing every step is essential to infringement of a claimed process, yet hold that use of every component is not essential to infringement of a claimed system.
Regarding 271(f), Intel discussed the fact that, although the four recent Federal Circuit cases discussing 271(f) purport to distinguish one another, “the ultimate holdings are difficult to square, and they lack a common analytical approach.”(See, Eolas, AT&T, Pellegrini, & NTP). “The Court has yet to take a consistent and holistic view of infringement liability in the transnational context.”
Finally, Intel asked the court to place the burden on patent drafters — arguing that it is possible to draft claims to virtually any invention that avoids the need to extend 271(a) to cover extraterritorial activities.
In a brief filed specifically in response to Intel’s brief, RIM argued (i) that it had been filed after the deadline and thus should be considered untimely; (ii) that Intel does have a financial interest in the case; and (iii) that Intel’s brief simply rehashes old arguments.
AquaTex appealed a summary judgment of noninfringement arguing that the district court had improperly applied prosecution history estoppel to limit use of the doctrine of equivalents.
On appeal, the CAFC “decline[d] to give the prosecution history much weight.” In its decision the Court quoted Phillips for the conclusion that the prosecution history is an ongoing negotiation that “often lacks the clarity of the specification and thus is less useful for claim construction.” Although the CAFC disagreed with the lower court’s basis of decision, ultimately, the panel affirmed the claim construction.
Regarding the doctrine of equivalents, the CAFC could not find the requisite “clear and unmistakable surrender of subject matter required to invoke argument-based prosecution history estoppel.”
Tap Pharmaceutical v. OWL Pharmaceuticals (Fed. Cir. 2005).
In an action for infringement of several pharmaceutical patents, the Federal Circuit upheld the district court’s findings that the generic drug-maker (OWL) had infringed two of the plaintiffs’ (Tap et al) patents.
Broad Scope Derived from Specification: Claims which described the patented compound as “comprising a copolymer … of lactic acid and … of glycolic acid” were interpreted by the appellate panel to also encompass copolymers “produced by any method.” Although the specification only provided examples of copolymers made from lactic and glycolic acid, it did note that the polymer “may be produced by any method.”
Disclaimer Based On Foreign Prosecution: Regarding foreign prosecution history, the CAFC gave little weight to statements made by the patentee to an Examiner in the European Patent Office that the invention did not include compounds made from lactide or glycolide. The European Examiner had rejected the claims after this argument was made, finding that the compounds which the patentee had attempted to disclaim were not different from those made from lactic and glycolic acid. Therefore, because the European claims were later allowed on other grounds, and because the patentee had not made this argument before the USPTO, the patentee must have “receded from that characterization of the claims,” and thus these statements should be given little weight in the process of claim construction.
Even Common Words Construed According To Specification: A second claim directed to “particles containing a water-soluble drug” was interpreted to encompass only particles which included both 1) the drug substance, and 2) a drug-retaining substance, because the drug-retaining substance was included in all the examples in the specification and was listed as a benefit of the invention. The court held that the term “containing,” while not a technical term, helped to describe the patented technology and therefore “cannot be defined by some ordinary meaning isolated from the proper context.” Thus, the district court was correct to look to both intrinsic and extrinsic evidence to properly interpret the claim.
The Federal Circuit thus affirmed the district court’s claim construction as to both patents.
NOTE: This post was written by Rebecca Brown. Ms. Brown is a law clerk at MBHB and a student at Northwestern University School of Law.
As Attorney Jason Rantanen pointed out in a recent e-mail, there is a clear distinction between the prosecution history disclaimer and prosecution history estoppel. The disclaimer doctrine is related to “claim construction for the purposes of literal infringement” while the estoppel doctrine bars the assertion of DOE under Festo.
Research Plastics v. Federal Packaging (Fed. Cir. 2005).
In a dispute over caulking tubes, Research appealed a district court judgment of non-infringement — arguing that the lower court had erred in its claim construction.
Claim construction centered on the claim term “rear end.” Referencing only intrinsic evidence, the CAFC determined that the lower court had erred slightly in its definition of the term — finding that the prosecution history provided substantial support for defining the rear end as the “point defined by the rear edge of the tube.” On remand, the district court must reconsider literal infringement in light of the new construction.
Regarding the Doctrine of Equivalents, the Court found that Research had disclaimed equivalents to a ribbed nozzle by amending the claims to overcome a cited reference. Thus, under Festo, that scope cannot be recaptured as an equivalent to the claimed invention.
In a patent infringement action, the district court had granted summary judgment to the defendant TiVo — finding that certain TiVo products did not infringe Pause’s reissued patent. On appeal, Pause challenged the district court’s claim construction rulings as erroneously defining the limitations “circular storage buffer” and “time interval of predetermined duration”. In support of its position, Pause argued, inter alia, that (i) the lower court’s interpretation of a “circular storage buffer” limitation should not depend on other language appearing later in the claim and (ii) the language employed by the district court in construing the limitations was not present within the claim and, thereby, led to impermissible narrowing of the claim’s scope.
The Federal Circuit, relying in part on Phillips v. AWH, rejected the first argument as “[p]roper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.” Additionally, the Federal Circuit further found that Pause’s second argument was inconsistent with the prosecution history and the language present elsewhere in the claim and in the specification.
The Federal Circuit affirmed — finding no error in either claim construction or infringement analysis.
NOTE: This post was written by Cory Hojka. Mr. Hojka is a law clerk at MBHB and a student at the University of Chicago Law School.
Stephen Terlep sued Brinkman, Wal-Mart, and Home Depot for infringement of his patent directed to an omni-directional LED. After construing the claims, the Arkansas federal court granted summary judgment of noninfringement based on the accused products failure to have a “clear plastic tubular holder” as claimed.
On appeal, the Federal Circuit affirmed, finding that the court’s claim construction methods were appropriate under Phillips v. AWH.
In Phillips, the CAFC determined that the specification of a patent is “always highly relevant to the claim construction analysis. Usually, it is dispositive.”
To apply Phillips, the court analyzed each use of the term “clear” in the claims, specification, and prosecution and came to the conclusion that the district court had appropriately excluded “translucent” from the term’s definition.
Dictionaries: The CAFC went on to find that the district court’s use of dictionary definitions to support its finding from the written description was an appropriate use of the extrinsic evidence.
Cannon Rubber v. The First Years (Fed. Cir. 2005, NONPRECEDENTIAL). 
Phillips v. AWH (on petition for certiorari)
Microstrategy v. Business Objects (Fed. Cir. 2005)
Callicrate v. Wadsworth (Fed. Cir. 2005). 
World Kitchen and OXO v. Zyliss Haushaltwaren (Fed. Cir. 2005) (nonprecedential). 
Cross Medical v. Medtronic (Fed. Cir. 2005). 
NTP v. Research-in-Motion (en banc review). 
In its brief, RIM questioned the panel decision that 
“The reissued panel opinion lacks any acknowledgment or discussion of the effect of, or the effect upon, long-established international understandings and agreements regarding national jurisdiction over intellectual property. Because the decision of the panel was neither explained nor justified in terms of contemporary, internationally-accepted principles of national jurisdiction, the opinion raises questions concerning fundamental principles upon which this international intellectual property system has harmoniously been based for well over a century.”
Tap Pharmaceutical v. OWL Pharmaceuticals (Fed. Cir. 2005). 
Research Plastics v. Federal Packaging (Fed. Cir. 2005). 
TiVo v. Pause (Fed. Cir. 2005). 
Terlep v. Brinkman Corp (Fed. Cir. 2005).