Spectrum Labs v. Tech International (Fed. Cir. December 29, 2004).
Spectrum sued Tech Int’l for infringement for its patent related to a method of removing unwanted substances from human urine samples. The purification method allows urine to be tested without interference from the unwanted substances. The Nevada District Court granted summary judgment of non-infringement to Tech and granted Tech’s motion for attorney’s fees — noting that the suit was frivolous and in bad faith.
Tech appealed the award of attorney’s fees.
On appeal, the Federal Circuit reversed — finding that the case was not "exceptional" under the statute (35 USC 285).
The CAFC listed types of cases that may create an "exceptional" circumstance: inequitable conduct before the PTO, litigation misconduct, vexatious and otherwise bad faith litigation, frivolous suit or willful infringement. However, the Appeals Court found "none of those circumstances present" in this case.
A district court must provide reasoning for its determination that a case is exceptional for us to provide meaningful review. Further, an exceptional case finding is not to be based on speculation or conjecture but upon clear and convincing evidence. The facts cited in the section 285 order do not provide clear and convincing evidence that Spectrum’s investigation and credit check constituted vexatious behavior. The section 285 order merely highlighted the fact that the credit check and background investigation occurred after issuance of the summary judgment order. Section 285 Order, slip op. at 3. The district court’s open speculation about the purpose of Spectrum’s investigations adds no support to its finding.
The Law: The determination whether to award attorney’s fees under section 285 involves a two-step process. First, the district court must determine whether Tech proved by clear and convincing evidence that this case is "exceptional." . . . Second, if the court finds the case to be exceptional, it must then determine whether an award of attorney’s fees is appropriate.
Comment: This case is really a commentary on claim construction jurisprudence. In my view, the court could not call this an exceptional case because of the uncertainty associated with claim construction.
Anheuser-Busch v. Crown Cork & Seal (Fed. Cir. Dec. 23, 2004) (unpublished)
In an unpublished decision, the Court of Appeals for the Federal Circuit (CAFC) has revived Crown’s case against Anheuser-Busch — sending the patent dispute back to the Wisconsin district court to determine whether A-B’s aluminum cans violate Crown’s patent No. 6,065,634.
Specifically, the Appellate Court disagreed with the lower court’s claim construction — finding that the district court erred by importing a limitation into the claims that was not required by the specification.
The patent does not indicate that the shape of the chuck wall is necessary to accomplish the [strength] goal. THus, no basis exists for the court to import the "flat" limitation from the preferred embodiment into the claims.
The district court must now re-construe the claims and determine whether the new construction alters its prior conclusion that Anheuser-Busch did not infringe Crown’s patent.
The CAFC also affirmed the dismissal of Anheuser-Busch’s claim that Crown violated A-B’s design patent No. D387,987.
Pieczenik v. Dyax (Fed. Cir. December 16, 2004) (Unpublished Opinion).
George Pieczenik owns several patents relating to a method of inserting DNA sequences into DNA vectors. (For Example, U.S. Patent No. 4,528,266-A).
In an infringement lawsuit against Dyax, the district court granted summary judgment in favor of Dyax — ruling that Dyax did not infringe the asserted patents.
After the close of the case, Pieczenik filed a motion for reconsideration under Rule 60(b).
Rule 60(b): “On motion and upon such terms as are just, the court may relieve a party or a party’s legal representative from a final judgment, order, or proceeding” under specified circumstances, including: “(2) newly discovered evidence which by due diligence could not have been discovered in time to move for a new trial under Rule 59(b).”
Pieczenik alleged that he had uncovered new information that established the falsity of an affidavit of Dyax’s Senior VP that had been submitted in support of its motion for summary judgment. The district court denied the motion to reopen the case.
On appeal, the Federal Circuit affirmed — finding that (i) the evidence presented was not “newly-discovered” because it would have been available to Pieczenik if he had followed through with discovery; and (ii) Pieczenik did not show how the new evidence would alter the district court’s claim construction.
In this highly anticipated patent case, the Federal Circuit has vacated the district court’s judgment and injunction.
Accordingly, the judgment and the injunction are vacated, and the case is remanded to the district court for further proceedings consistent with this opinion. We affirm the district court’s judgment in all other respects. We thus affirm-in-part, vacate-in-part, and remand.
HOWEVER, RIM’s win is marginal at best — NTP remains in a strong position as the case returns to the district court. The decision is remanded for the district court to determine what portion, if any, of the jury verdict should be set aside, based on the prejudicial effect of the court’s misconstruction of a single claim term.
Specifically, the Appeals Court only questioned the infringement decision on five of NTP’s patent claims. Presumably, the verdict of infringement on the other eleven claims is upheld.
Background:
NTP’s patents are directed toward an "electronic mail system with RF communications to mobile processors." (e.g., U.S. Patent No. 5,436,960). NTP sued RIM, maker of the BlackBerry for patent infringement.
The district court “construed the disputed terms according to their plain and ordinary meaning, as supported by the specification and prosecution history.” Based on the claim construction, the district court granted summary judgment to NTP on several patent claims — finding that the BlackBerry infringed some of the claims. The remaining claims were decided by the jury.
On every issue presented, the jury found in favor of the plaintiff, NTP. The jury found direct, induced, and contributory infringement by RIM on all asserted claims of the patents-in-suit. The jury also found that the infringement was willful. It rejected every defense proposed by RIM. Adopting a reasonable royalty rate of 5.7%, the jury awarded damages to NTP in the amount of approximately $23 million.
The court awarded monetary damages totalling more than $53 million, with the following approximate division: (1) compensatory damages of $33 million; (2) attorneys’ fees of $4 million; (3) pre-judgment interest of $2 million; and (4) enhanced damages of $14 million. The court also entered a permanent injunction against RIM, enjoining it from further manufacture, use, importation, and/or sale of all accused BlackBerry systems, software, and handhelds.
Claim Construction:
The Court of Appeals for the Federal Circuit reviewed the claims construction de novo, taking an ordinary meaning approach: "In the absence of an express intent to impart a novel meaning to the claim terms, the words take on the full breadth of the ordinary and customary meanings attributed to them by those of ordinary skill in the art," using the written description as examined through the viewing glass of a person skilled in the art to give context to the claim language.
The CAFC agreed with the RIM on only one point:
that the district court misconstrued the term "originating processor." The Appeals Court found that the originating processor as claimed by NTP refers to only one processor – and not three separate processors.
On all other points, the CAFC affirmed the district court ruling, these include (i) construction of all other terms; (ii) a decision that RIM’s Canadian server location does not prevent application of U.S. Patent Laws to the e-mail system; (iii) Denial of RIM’s motion for JMOL; and (iv) exclusion of RIM’s expert and demonstrative testimony.
Conclusion:
RIMM won the appeal on a sliver of an argument, but is still in a position to lose the case.
The CAFC reversal of the claim construction of the District Court does not affect all of the asserted and infringed claims. According to the opinion ‘some’ of the claims are definitely infringed on. However, it was remanded because the jury did not outline how much royalties apply to each infringed claim. The CAFC only reversed the claim construction of "originating processor" found in some claims and not of the comparable "originating device" found in the other claims. The District Court had construed these terms them separately and RIM only appealed "originating processor" and not "originating device". So I guess it can be said the NTP won a "Judgement-in-Part."
You should also note that the re-examination of NTP’s patents continues at the USPTO.
If the BlackBerry’s infringe, why did the the Appeals Court reinstate the injunction against RIM?
Vacating an judgment often does not imply disapproval, but merely clears the deck for further action by a lower court. The U.S. Supreme Court has an established practice known as GVR. When it decides a case there may be several other arguably similar cases in the pipeline from the Court of Appeals. The Supreme Court will (i) Grant review of the case, (ii) Vacate the decision below, and (iii) Remand for reconsideration in light of the recent decision. Very often the Courts of Appeals conclude that little or nothing needs to be changed and simply reinstate their previous ruling.
Foreign Infringement:
Today, this case is important because of the millions of BlackBerry users in the U.S. However, the doctrinal significance of this case will be the Federal Circuit’s stance on the inclusion of foreign components in the infringement analysis.
Under the Patent Act [35 U.S.C. 271(a)], patent rights are limited by the territory of the United States. However, in this case, the court found that plain language of section 271(a) does not preclude infringement where a system such as RIM’s, alleged to infringe a system or method claim, is used within the United States even though a component of that system is physically located outside the United States."
According to the Court, the test is not whether the infringement took place within the United States, but whether "control and beneficial use" of the infringing system was within the United States.
This liberal interpretation of the territoriality restrictions of the Patent Act bodes well for Eolas in the recently heard Microsoft v. Eolas appeal.
Versa owns a patent on an apparatus for creating air channels in bagged compost materials. The air channels allow for decomposition of the material.
Versa filed suit against Ag-Bag for patent infringement. However, in the wake of an adverse Markman hearing, Versa admitted that it could not prove infringement based on the district court’s claim construction. After filing the appeals, the parties entered into a settlement agreement that resolved all issues on appeal other than the proper construction of the “means . . . for creating air channels” limitation. The parties have also agreed that, if we conclude the flutes are required, Ag-Bag will pay Versa an agreed royalty. Thus, the sole question before us is whether under a proper claim construction the claimed bagging machines must include flutes.
The Federal Circuit found that the means-plus-function claim language did not require flutes.
Accordingly, since we hold that flutes are not required structure, the judgment of non-infringement based on the district court’s incorrect claim construction is REVERSED.
In Dissent, Newman:
This case does not present a new question, and it should not have a new answer. The question is, can a patent claim clause written in means-plus-function form be construed, as a matter of law, literally to cover a device that is not the invention described in the specification, that is not shown in any of the drawings, that was not examined for patentability, that was excluded by prosecution arguments, and that is not an asserted equivalent. Statute and precedent require that the question be answered in the negative. Until today.
Alza sued Mylan for infringement of its patents relating to administration of fentanyl through the skin. Because fentanyl, a narcotic, is prone to abuse, the inventors developed a patch that minimized the amount of drug that would be used in the system. The patch is sold by Janssen as Duragesic (R).
Alza won at the district court level. On appeal, Mylan argued that (i) the claims were not correctly construed and (ii) one of the patents was unenforceable due to inequitable conduct.
Claim construction: The appeals court looked only to the specification and prosecution history to determine that "fentanyl citrate" was not a "skin permeable form" of fentanyl — thus avoiding prior art.
In determining the meaning of a disputed claim term, a court looks first to the intrinsic evidence of record, examining, in order, the claim language itself, the specification, and the prosecution history.
Inequitable Conduct: The district court found that a statement made by the applicants during prosecution was literally true, but "had the potential to mislead the examiner." However, on the question of intent, the district court could not find the requisite deceitful intent associated with inequitable conduct.
The Federal Circuit affirmed: "We discern no clear error or abuse of discretion."
Dissent (in part) by Dyk: Judge Dyk would have found inequitable conduct.
Here, the patentee made an untrue assertion and simultaneously submitted accurate facts not in accord with that assertion. Such a submission of accurate facts does not cure a false statement.
NOTE: The patent expires January 23, 2005 — Mylan must wait until then to begin selling a generic version of the patch.
Eolas v. Microsoft (04-1234)(On appeal at the Federal Circuit)
At the district court level, Eolas won a $500 million+ verdict for Microsoft’s alleged patent infringement. The technology at issue involves a method of using a web browser to open third-party applications using plug-ins. Now, the case is on appeal at the Federal Circuit, with oral arguments being held today, December 9, 2004. Microsoft is expected to argue both improper claim construction and error in including Microsoft’s foreign sales in damage calculations.
The foreign sales portion of the case falls under 35 U.S.C. 271(f). 271(f)(1) provides for liability for causing components of a patented invention to be supplied for assembly abroad. In Eolas, however, no physical component of the patented invention had shipped from the U.S. However, the District Court ruled that Microsoft’s shipment of information on a "golden master" disk created a sufficient nexus with the U.S.
The foreign damages are expected to be overturned by the Federal Circuit appeals court based on its holding in the recent case of Pellegrini v. Analog. In Pellegrini, the Federal Circuit essentially held that there is no liability for patent infringement unless components of a patented invention are physically shipped from the United States. Two weeks ago, the Supreme Court denied Pellegrini’s petition for writ of certiorari.
The asserted patents are also undergoing a reexamination at the United States Patent Office.
Parties Involved:
The asserted patents are owned by the University of California but exclusively licensed to Eolas. The two reportedly have an agreement that Eolas will pay the University 25% off the top of any award. Microsoft is the defendant. In addition to the parties, a number of amicus briefs were filed by interested parties. These parties include: AOL; Association for Competitive Technology; Autodesk; Bentley Systems; Intel; Macromedia; Netscape; Oracle; Professor Joe Miller; Sun Microsystems; and Wacom Technology.
Comment:
Although I have not reviewed these amicus briefs, I expect that they generally support Microsoft’s contention that the Eolas patents are invalid and that the reach of the patents should not extend beyond the borders of the U.S. Paul Festa at cNet has written a brief article on the appeal.
35 U.S.C. Section 112 paragraph 6 provides a statutory basis for drafting patent claims in what is known as means-plus-function language. The language allows a patentee to write a claim based on the function of a device rather than its actual structure. This language is, in the words of Gene Quinn, "dangerously seductive." Means claims are easy to write, and there is a belief that the means language adds some "fuzzy math" to the court’s calculation of infringement.
Over the past several years, the Federal Circuit has continually limited the scope of means limitations. Such a limitation is construed by the court to cover the corresponding structure as described in the specification and equivalents thereof. Thus, if you use means claim limitations, you should make absolutely sure that the structure is completely (and broadly?) described in the specification.
In an admittedly unscientific survey of case law, attorney Hal Wegner searched through the last fifteen CAFC opinions that dealt with the interpretation of means-plus-function language. Results:
Patentee’s construction of "means" term accepted: 0% Patentee’s argument that term was not a "means" term accepted: 14 Summary judgment of non-infringement reversed: 7% Losses for Patentee: 80%.
Thus, the means language was a loser for the patent holder in 80% of cases. (12 of 15 cases). (Hal, thanks for conducting the study).
Bottom Line: MPF claims are risky. They are fine to add as insurance after you have drafted more descriptive claims, but they should not be trusted.
If you are still writing MPF claims, you are not alone — thousands of patents using such language are issued annually.
Some patent law experts have noticed an internal rift in the Federal Circuit Court of Appeals in the area of claim construction. Some of the CAFC judges generally decide claim construct based on an "ordinary meaning" approach while others generally rely on patent documents such as the specification and prosecution history to determine the meaning of claims. UPenn Professor Polk Wagner has even created a Federal Circuit Predictor to predict the outcome of a claim construction apeal based on the appellate panel.
Thus far, Professor Wagner’s predictor has been seen as a cute but ineffective tool because the appellate panel is not given with any advance notice. The Predictor Tool adds certainty, but the lack of advance notice does not allow for any real settlement negotiations.
Now, in a public experiment, the Federal Circuit has begun to post the composition of panels the Thursday prior to the week of oral argument.
Thus, for instance, we now now that next Thursday (December 9) that the Panel of Rader, Friedman, & Plager will hear the Eolas v. Microsoft panel.
The court requests public comment on the experimental change.
Catalina owns a patent on a method for distributing electronic coupons. Coolsavings runs a website that uses user demographics to target coupon offers. Catalina sued Coolsavings for Infringement. Catalina appeals the district court’s claim construction and subsequent dismissal for noninfringement.
On appeal, the Federal Circuit affirmed the district court’s opinion, finding that the District Court had properly construed means-plus-function language by importing limitations from the specification.
Dismissal of Catalina’s Infringement suit Affirmed.
Claims should be construed as of the time of the invention.
Limitations should be given their “ordinary meaning” as understood by a skilled artisan.
Claim construction begins with dictionary, encyclopedia, and treatise definitions.
Dictionaries, treatises, and encyclopedias are critical to claim construction.
Claim differentiation applies to presume a difference in meaning and scope when different words or phrases are used in separate claims.
Preamble terms are not claim limitations.
Limitations in the specification may not be read into the claims.
Express limitations in the specification should be read into the claims.
Claims should be construed to cover preferred embodiments.
Claims should be construed to uphold their validity.
The immediate question is whether the en banc decision in Phillips v. AWH will (i) present a cleanly revised list or (ii) simply add another rule to the list. (Listing adapted from a presentation by Kevin Casey).
The newsletter discusses the PTO’s Image File Wrapper (IFW) system and outlines many problems and proposes solutions. For example:
Problem: Examiners’ greatest complaints with IFW, by far, relate to the multitude of scanning errors that create documents improperly entered in the file record, amendments and office actions entered days, weeks, or months late, documents filed under the wrong tabs, and more.
POPA Solution: Better training for scanning contractors; immediate e-mail forwarding of scanned documents to the appropriate examiner; scan-on-demand service centers in each technology center.
Other proposed solutions include better indexing of non-patent literature (NPL) and caching of IFW files so that the examiners can work with a file when the PTO’s system is down. As Greg Aharonian has repeatedly stated, improving the ability of examiners to search prior art will result in a better system for everyone involved.
Interestingly, the POPA Newsletter also discussed upcoming Phillips v. AWHen-banc hearing from the point-of-view of patent examiners.
Examiners are trained to interpret the claims as broadly as possible unless the applicant has explicitly provided a definition to the contrary in the specification or if the specification provides an explicit disclaimer. Examiners are permitted to use dictionaries and other extrinsic evidence to determine the broadest reasonable interpretation.
My review of the briefs filed Phillips will be published in next Month’s issue of Patent World.
Update: A regular reader of the Patently-O Blog wrote in on the subject of scanning errors. In his well reasoned view, the PTO should simply have patent attorneys electronically submit PDF documents to the Office. Then, there would be no scanning errors.
—–Original Message—– From: XXXX Sent: Wednesday, November 10, 2004 10:33 PM To: Crouch, Dennis Subject: Patent Office Professional Association (POPA) Proposes Solutions to Examination Problems
Examiners’ greatest complaints with IFW, by far, relate to the multitude of scanning errors that create documents improperly entered in the file record, amendments and office actions entered days, weeks, or months late, documents filed under the wrong tabs, and more
Scanning errors? I think they are missing the big picture. When I file anything at the Trademark Trial and Appeal Board, I simply upload a pdf (rendering scanning errors impossible-but I guess there are still some font issues). Regardless, uploading pdf documents is so fast, so checkable (did that just work?), so simple, soooo why doesn’t the patent office get it?
As I sit here and wait for my USPTO fax back at 10:31 PM.
Bard owns a patent on a method of repairing hernias with a flexible mesh plug. Bard sued U.S. Surgical for infringement and for inducing surgeons to infringe. Because in the prosecution history and specification Bard defined the claimed plug as having pleats, the district court’s claim construction requiring “pre-formed pleats” was affirmed. Noninfringement affirmed.
Concurrence by Judge Prost:
In this case, the inventors clearly and deliberately disclaimed any coverage of non-pleated plugs they might otherwise have had when they stated during reexamination that “the surface of the inventive plug is pleated” in an attempt to overcome the prior art-based rejections of claims 19 and 20. Under the theory that the inventors acted as lexicographers, the majority holds that this statement, among others, shows that the inventors “clearly defined the plug of claim 20 as having pleats.” The statement, in my view, is a surrender of claim scope, which precludes Bard from recapturing coverage of non-pleated plugs. Litton Sys., Inc. v. Honeywell, Inc., 140 F.3d 1449, 1458 (Fed. Cir. 1998). Because the inventors clearly disclaimed coverage of non-pleated plugs in the reexamination, I believe we may affirm the judgment of the district court on that basis alone; accordingly, I find it unnecessary to reach the remaining grounds for affirmance relied upon by the majority.
Hal Wegner recently reviewed the House of Lords case of Kirin-Amgen v. Hoechst Marion. This case presented the first opportunity for the British high court to interpret the “new” patent law (introduced a quarter-century ago).
According to Hal, the court “held that the ‘purposive construction’ test for determination of patent scope should be maintained and is consistent with the European Patent Convention. The doctrine of equivalents as an alternative test is expressly repudiated.”
There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.
In rejecting the American style doctrine of equivalents, the Lord Hoffman noted that:
I cannot say that I am sorry [that our precedent is antithetical to a doctrine of equivalents] because the Festo litigation suggests, with all respect to the courts of the United States, that American patent litigants pay dearly for results which are no more just or predictable than could be achieved by simply reading the claims.
Link: America was founded as a dissenting opinion in the 18th Century colonial world. Not wishing to be unpatriotic, the Court of Appeals for the Federal Circuit has been on a rampage — issuing dissents with abandon. According to Professor Polk Wagner’s research, the percentage of dissenting or concurring opinions in CAFC cases has risen from under 5% in the late 1990’s to over 25% today. (chart from www.fedcir.org).
Comments: The amount of dissent on the court clearly indicates that the composition of the panel for your case will have a major impact on your outcome. As Stephen Nipper and Hal Wegner have noted, if the composition of the panel was known well in advance of appeal, the resulting certainty would lead to more settlements. Despite any internal conflict within the Federal Circuit, it would be laughable to argue that the law is less settled or less certain than it was prior to the formation of the court.
Professor Polk Wagner has a background in empirical research. Lately, he has been using his statistical tools to help provide a better picture of how the Federal Circuit operates. You can see his work at the “Claim Construction Project.” His site and papers are loaded with information. Perhaps the most fun is the Predictor Tool. By selecting the panel of appellate judges, the tool will predict the panel’s decision methodology.
After an enforcement proceeding at the ITC, Fuji appealed.
The Appellate Panel made several rulings on claim construction. Additionally, the CAFC found that the Commission did not abuse its discretion in refusing to issue cease and desist orders against foreign respondents with no inventory in the United States and foreign respondents that did not directly import products into the United States.
Finally, Fuji argued that enforcement of the general exclusion order would be ineffective in light of the Customs Service’s new responsibilities in combating terrorism. The Federal Circuit rejected this arguments out of hand.
With respect to the first point, Fuji’s argument is similar to the argument advanced in the Hyundai case, which we rejected as “a thinly veiled and vaguely expressed dissatisfaction with the certification procedure it expects the Customs Service to devise when it implements the Commission’s order.” 899 F.2d at 1210. As we did in Hyundai, we reject Fuji’s suggestion that the Customs Service is incapable of enforcing the Commission’s general exclusion order effectively because of a lack of expertise and other priorities. To the extent that Fuji’s argument is directed at a perceived lack of resources or competence on the part of the Customs Service, we cannot address that problem through a judicial directive that would, in effect, require the Commission to alter its practices based on our unsupported suspicion that the Customs Service is incapable of performing the duties Congress has assigned to it.
Note: This is a companion case to VastFrame v. ITC (Fed. Cir. 2004).
Astrazeneca AB v. Mutual Pharmaceutical Co. (Fed. Cir. 2004): Specification king in claim construction, despite the absence of a clear lexicography or disavowal.
By Dr. Baltazar Gomez,
Astrazeneca sued Mutual for patent infringement based on submission of an ANDA to the FDA. The patent in question was Astrazeneca’s U.S. Patent No. 4,803,081 (the “‘081 patent”) directed to extended-release formulations for felodipine using “a semi-solid or liquid nonionic solubilizer.” Mutual’s ANDA was for extended-release felodipine using a co-solvent as a solubilizer. The question analyzed by the CAFC was whether the definition of “solubilizer” in the ‘081 patent takes priority in claim construction or if the ordinary meaning of the term, as determined from sources such as treatises and dictionaries, controls claim construction in the absence of clear lexicography or disavowal.
Both parties agreed that “solubilizer” embraced surface active agents (or surfactants), co-solvents, and complexation agents. But the CAFC accepted Mutual’s argument that the Patentees acted as their own lexicographers and limited the scope of “solubilizer” to surfactants. The ‘081 patent states that “[t]he solubilizers suitable according to the invention are defined below”, and later, states that “[t]he solubilizers suitable…are semi-solid or liquid non-ionic surface active agents.” The ‘081 patent also describes micelle structures as features of the claimed formulation. Astrazeneca argued that these statements referred to preferred embodiments of suitable solubilizers. The CAFC disagreed because the ‘081 patent did not state, for example, “a solubilizer suitable for,” but in fact, the specification stated “the solubilizers suitable for.” The CAFC noted that the language of the ‘081 patent provided a strong signal of lexicography that clearly disavowed nonsurfactant solubilizers.
Thus, the CAFC held that Mutual did not infringe Astrazeneca’s patent because the ‘081 patent limited “solubilizer” to surfactants and overcame any ordinary meaning of the term derived from any other evidence. The CAFC followed a long line of cases that indicate that a patent’s specification is the primary source for determining claim meaning. Where the ordinary meaning of a claim is evident, the inventor’s written description of the invention is relevant only insofar as it provides clear lexicography or disavowal of the ordinary meaning.
Note: Dr. Baltazar Gomez is a law clerk at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. Dr. Gomez obtained his PhD in biochemistry from the University of Texas and researched biochemistry and molecular biology as a PostDoc at Cornell. He is now a law student at DePaul.
As you may know, the Phillips case, which is presently awaiting decision en banc, is expected to be the next major decision impacting the issues of claim construction.For those who are interested, here is a rundown of some of the Amicus Briefs that were filed in the appeal:
1. United States Patent and Trademark Office (USPTO): The Patent Office took the position that dictionaries should not be a primary reference for claim construction, in part because they are not used by examiners during prosecution. The PTO brief was filed jointly with the DOJ and FTC.
2. Intellectual Property Owners (IPO): The IPO brief, argues that the primary evidence of claim meaning should be found in the patent specification and prosecution history. If a court must resort to extrinsic evidence to determine claim meaning, there should be no pre-determined hierarchy of importance. The Court should only consider claim construction evidence in the record on appeal. The IPO brief was written by Paul Berghoff and Josh Rich of MBHB LLP.
3. Electronic Frontier Foundation (EFF): Judges should invalidate and Patent Office Examiners should reject ambiguous claims. Claims should be given their broadest possible construction during prosecution and narrowest reasonable meaning thereafter.Professor Joshua Sarnoff is the Counsel of Record on the EFF brief.
4. American Bar Association: Neither the specification nor dictionary should have primacy. Invalidity should play no role in claim construction, as that approach is contrary to the public notice function. The Appellate Court should defer to findings of fact made during claim construction.
5. American Intellectual Property Law Association (AIPLA): The fundamental standard that should govern claim construction is that a claim term must be construed from the perspective of a person of ordinary skill in the relevant art at the time the patent issued seeking to understand the term’s meaning from a study of the entire intrinsic record.
6. Intel, IBM, Google, Micron, and Microsoft: Where those construing patent claims focus on dictionary meanings of claim terms without an appropriate grounding in the specification and prosecution history, there is a danger the interpretation of patent claims will differ markedly from the true scope of the invention they seek to define. Indeed, there are so many different dictionary definitions for any given word that it is impossible to predict with any confidence what meaning a court will choose. The Intel brief was written by Stanford professor Mark Lemley.
7. Federal Circuit Bar Association (FCBA): Dictionaries should not be the primary focus of claim construction. Claim construction may require findings of fact, which should be reviewed for clear error.
8. International Trade Commission Trial Lawyers Association (ITCTLA): The specification and prosecution history should control. When dictionaries are used, technical dictionaries should have a rebuttable preference over general dictionaries. Claim language should not be narrowly construed for the sole purpose of avoiding invalidity. The claim interpretation should not be limited to only the embodiment described in the specification. Expert testimony should be allowed and evaluated as would any other piece of evidence. Deference to the trial court’s claim construction may be appropriate in some cases.
9. Biotechnology Industry Organization (BIO): Specification first. Dictionaries second, when specification does not establish meaning of claim terms. Claims should never be narrowly construed for the sole purpose of avoiding invalidity.
11. Professors Wagner & Miller: The professors argue that the patent document should be the primary and preferred source of claim meaning — as long as it is clear, specific, and objective. Where the term is not clearly defined in the patent document, there should be a heavy presumption in favor of the ordinary meaning of the term. Dictionaries are not a panacea, but they offer the best opportunity to provide a term’s ordinary meaning with clarity, certainty, and predictability.
12. Public Patent Foundation (PUBPAT): Dan Ravicher of PUBPAT argued that "claim construction should never be impacted by considerations of validity." Consistent with Markman, subsidiary factual determinations by the trial court during claim construction should be reviewed for clear error.
13. Intellectual Property Law Association of Chicago (IPLAC): Courts may look to the plain meaning of claim terms but asserts that dictionaries should in general be subordinate to the patent specification and other intrinsic evidence when determining what is meant objectively by challenged claim terms. Dictionaries may be considered, but the guiding light must be what the hypothetical ordinarily skilled artisan would have understood by the claim terms – not in a vacuum, and not armed with only a technical or general purpose dictionary, but also with the full panoply of intrinsic evidence. Courts may receive expert witness testimony on this determination. Edward Manzo wrote the brief for IPLAC, and was given assistance by Brad Lyerla, Dean Monco, Pat Burns and Tim Vezeau.
14. Association of Corporate Counsel: Public notice is best served by first looking at claims, specification and prosecution history. Dictionaries should not be the primary source for claim construction. Because the guiding inquiry is the meaning of terms to those of ordinary skill in the relevant art, relevant technical dictionaries should usually be consulted before general dictionaries.
15. Infineon: The public notice function of patent claims is best served by looking first and foremost to the intrinsic specification, not an extrinsic dictionary definition, to interpret claim terms.
16. Boston Patent Law Association: Dictionaries should not be the primary source of claim construction because they do not stay current, are not necessarily authoritative, and because meaning is not always found in books. Validity and claim construction should be kept separate.
18. Medrad, Inc: Claim construction should be based upon the intrinsic evidence (spec, drawings, cited prior art, and prosecution history).
19. NYC Association of the Bar: Dictionary definitions should not provide the primary source of meaning or a separate restriction on claim coverage. Validity should be considered during claim construction. Expert testimony can provide important information. Deference to the trial court’s claim construction findings is blocked by procedural and practical obstacles.
26. Sughrue Mion: Claims should be interpreted as of the time of filing or earlier. The patent document provides the best notice of the claim’s meaning. Deference should be accorded to a trial court’s factual findings underlying claim construction.
Link: My review of the case published in Patent World magazine.
ASIDE:
Interestingly, Mr. AWH Phillips was a famous economist who discovered a consistent inverse relationship between the rate of wage inflation the rate of unemployment.
Professor Douglas Lichtman at the University of Chicago writes with a question about patent prosecution:
Why haven’t patent prosecutors begun to aggressively document the purpose behind their claim language changes, for example by writing letters to the file making clear a precise and narrow construction of the change. The argument to do so is that such documents would rebut the broad Festo presumptions that right now threaten to construe every change broadly. And it would be cheap to do.
I am not advocating anything misleading. But often changes are made for a very specific reason, and claim language changes (like claim language itself) can be imprecise. So why not clearly document the precise change the examiner requested, making clear what you meant to sacrifice and protecting the rest from Festo?
UPDATE: The real question is why patent attorneys do not precisely define in their office action response what you intend to give up in an amendment. For example, why not say “of course, my purpose here is only to exclude red wheels, leaving fully intact everything else that might have been included in the original claim language.”
