Tag Archives: Claim Construction

TV Guide Patent on Program Schedule Given Second Chance

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TV Guide (Gemstar) v. ITC (Fed. Cir. 2004).

TV Guide owns several patents relating to interactive program guides in digital cable television set-top boxes that enable viewers to search through TV schedules and pre-select programs for viewing and recording.  In a case before the ITC, the commission concluded that Scientific-Atlanta did not infringe the patents and that one of the patents was unenforceable because an inventor was improperly excluded from the patent.

TV Guide Appealed: In an opinion released September 16, the Federal Circuit (CAFC) found that the ITC erred in claim construction and erred in determining that Mr. Neil was an unnamed co-inventor. 

Inventorship is presumed correct without clear and convincing evidence otherwise:

Because Neil failed to present facts supported by clear and convincing evidence of his co-inventorship, the ITC erred in holding Neil to be an unnamed co-inventor….  Neil principally relies on his own testimony and the content of two product disclosure documents, an original disclosure document and a “second version” of the disclosure document.   

The ITC found that Neil’s testimony was “credible and straightforward,” while Young’s testimony “lacked those characteristics.”  Under our precedent, more than just the alleged co-inventor’s testimony is required to establish co-inventorship by facts supported by clear and convincing evidence.  Trovan, 299 F.3d at 1302.  The mere fact that the ITC found the alleged inventor’s testimony to be more credible than the named inventor does not itself rise to the level of clear and convincing evidence.

Affirmed-in-part, vacated-in-part, reversed-in-part, and remanded for further proceedings.

Now, the case is returned to the ITC to for another determination of whether the devices imported by Pioneer, EchoStar, and Scientific-Atlanta infringe the patents in suit in violation of 19 U.S.C. 1337.

Patent Law: Disclosure-Dedication Rule Takes Shape

Patent, Patent Cases 2004

Leaf Blower

Toro v. White Consolidated (WCI) (Fed. Cir. 2004).

The Toro Company sued White for infringement of its patent on a leaf blower. (U.S. Patent No. 4,694,528).  The Minnesota district court granted summary judgment of non-infringement under the doctrine of equivalents — finding that White’s two-piece cover/ring was dedicated to the public in Toro’s patent because it was disclosed, but not claimed. (Citing Johnson & Johnson v. R.E. Service). The Federal Circuit (LINN) agreed, finding that the disclosure of unclaimed subject matter “triggers the disclosure-dedication rule.”

Because J&J had been decided after claim construction in this case, Toro also argued that the issues should be re-examined in light of the new law.  The Appellate Panel Disagreed.

While Toro argues that Johnson & Johnston represents a change of law, its argument is misplaced.  Johnson & Johnston did not alter our precedent as to claim construction, the issue at the crux of this case…. The doctrine of the law of the case is intended to prevent just the kind of speculation and second-guessing invited by the appellant here, in the broader interests of certainty, finality, and legal efficiency. The law is well-settled; decisions once made are not to be disregarded except for exceptional circumstances. Such circumstances are not evident here.

 

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CAFC refuses to examine Request for Comments (RFCs) when defining ordinary meaning of claim terms

Patent, Patent Cases 2004

ACTV

Many Internet standards are initially developed in papers known as Requests for Comments (RFCs). A purpose of an RFC is to collect propose a common language for facilitating development and to collect commentary. Often, however, the RFCs become the authoratitive document describing a particular function. For example, RFC-1738 was created by Berners-Lee in 1994 and is thought of as an authoritative, unbiased source relating to the meaning of the term “URL.” The Federal Circuit, however, has refused to allow RFCs to take an authoritative position in claim construction. ACTV v. Disney, 346 F.3d 1082 (Fed. Cir. 2003). In ACTV, the Appellate Court differentiated RFC documents that attempt to shape meaning of terms from dictionaries that reflect established usage.

Means-Plus-Function Limitation Rarely Found When Claim Lacks “Means” Language

Patent, Patent Cases 2004

Lighting World v. Birchwood Lighting (Fed. Cir. 2004).  

In its complaint, Lighting World asserted that Birchwood’s fluorescent lamp fixtures infringed Lighting World’s patents. At the close of Lighting World’s case-in-chief, the court granted Birchwood’s motion for JMOL on the ground that Lighting World had not shown equivalence under the doctrine of equivalents.

Lighting World appealed the District Court’s claim construction determination that the term “connector assembly” was a means-plus-function limitation.  The unanimous Appellate Panel vacated, finding that Birchwood did not demonstrate that section 112 ¶ 6 should apply.

[W]e have seldom held that a limitation not using the term “means” must be considered to be in means-plus-function form.  In fact, we have identified only one published opinion since Greenberg (Fed. Cir. 1996) in which we have done so, and that case provides a useful illustration of how unusual the circumstances must be to overcome the presumption that a limitation lacking the word “means” is not in means-plus-function form. 

 

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Patent Infringement: Recognition of a problem does not render the solution obvious

Patent, Patent Cases 2004,

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Cardiac Pacemakers (CPI) v. St. Jude Medical

(Fed. Cir. 2004).

CPI (Guidant) controls several patents relating to implantable cardiac defibrillators (ICDs) that are permanently installed under the skin, and that determine abnormal cardiac activity and treat that activity by delivering electrical shocks to the heart muscle in appropriate strengths. CPI charged St. Jude with infringement of two of these patents.

A jury found both patents valid and enforceable, but only one infringed.  After trial, the district court granted St. Jude’s motions for JMOL — holding both patents invalid and not infringed. The court also granted a new trial (in the event of reversal) and awarded sanctions for witness misconduct. CPI appealed the judgment of invalidity and non-infringement.

The Appellate Panel agreed with CPI and reversed, finding that the district court improperly granted JMOL. With respect to obviousness, the Federal Circuit found a nonobvious difference between the prior art’s recognition of a problem and the patented solution.

We think that the district court, in granting JMOL, applied an incorrect standard to the ultimate question. Recognition of the problem of treating complex heart arrhythmias does not render obvious the eventual solution. Recognition of a need does not render obvious the achievement that meets that need. There is an important distinction between the general motivation to cure an uncured disease (for example, the disease of multiple forms of heart irregularity), and the motivation to create a particular cure.

The lower court had also invalidated the patent based on a failure to state a best mode for supplying batteries. However, the Appellate panel found that there was “evidence before the jury that persons knowledgeable in the field of the invention would know the sources of batteries for pacemakers and related devices. There was no evidence of concealment, and the jury had evidence that the Honeywell battery was published in a publication for battery specialists. There was substantial evidence whereby a reasonable jury could have found that the best mode requirement had not been violated. The grant of JMOL on this issue is reversed, and the jury verdict is reinstated.”

The Appellate Panel continued: “The jury verdicts on the issues of obviousness and best mode were not against the manifest weight of the evidence.” Thus, no new trial may be held on the issues of obviousness or best mode. However, a new trial was warranted with respect to infringement because the district court erred in its claim construction.

AFFIRMED IN PART, REVERSED IN PART, AND REMANDED.

Update:
Peter Zura at the 271 Patent Blog has more information on the case.
Reuters story.

Federal Circuit: Disclosure of only a single embodiment does not result in disavowel of claim scope

Patent, Patent Cases 2004

Home Diagnostics v. LifeScan (Fed. Cir. 2004) (03-1370).

After construing the claims in this patent infringement lawsuit, the Northern District of California Court held that Home Diagnostics’ (HDI) blood glucose meters do not infringe LifeScan’s patent on the use of reflectance to determine blood glucose concentration.  (U.S. Patent No. 6,268,162).

On appeal, LifeScan argued that the lower court’s claim construction should be overturned.  Specifically, LifeScan argued that the district court overlooked “the accepted contextual meaning” of the method of stopping a measurement period and unduly limited terms to those disclosed in a preferred embodiment.  HDI argued that any broader interpretation was disavowed by LifeScan when they disclosed only a single embodiment.

The Federal Circuit agreed with LifeScan, following their own precedent that disclosure of a single embodiment “does not mean that the patent clearly and unambiguously disavowed other embodiments.” 

Reversed-in-part, Vacated-in-part, and Remanded

Federal Circuit: Lifestream Diagnostics v. Polymer Technologies

Patent, Patent Cases 2004

Lifestream Diagnostics v. Polymer Technologies (Fed. Cir. 2004) (unpublished opinion).

Lifestream sued Polymer Tech for alleged infringement of its patent on HDL cholesterol testing equipment.  (U.S. Patent No. 5,135,716).  After conducting a Markman hearing, the district court awarded a judgment of noninfringement to Polymer Tech.

On appeal, the Federal Circuit reversed in part.

We hold that reliance by the Patent Office upon arguments mae by the patentee during prosecution is not necessary to find argument-based estoppel…. Because we reverse some of the district court’s claim construction, we vacate the court’s judgment of noninfringement and remand.

Federal Circuit: Utica Enterprises v. Federal Broach and Machine

Patent, Patent Cases 2004

Broaching Patent

Utica Enterprises v. Federal Broach and Machine (Fed. Cir. Aug. 19, 2004) (nonpublished opinion).

Utica sued Federal Broach for infringement of its patented metal finishing process, known as “broaching.” (U.S. Patent No 6,256,857).  After construing the claims in a Markman hearing, the Michigan district court entered summary judgment of non-infringement for Federal Broach.

Utica appealed the judgment, arguing incorrect claim construction. The Federal Circuit (LOURIE, J) held that the court unduly limited claim terms, and thus vacated and remanded.  Mayer, CJ, dissented without opinion.

Law review topic

Articles and Publications, Patent,

I think that the high rate of reversal at the Federal Circuit creates some special implications for patent law. Rather than going for the more extreme position on a contested issue, it may make sense for you as a litigator to propose a more reasonable approach that you think both the district and appellate courts may accept. This is especially true in areas with high reversal rates, such as claim construction. A converse of this theory may also be true — in areas that are rarely appealed, such as discovery, a more extreme position may be more beneficial to your cause.

An analysis of these issues could make an excellent law review note topic. You could, for instance, go into game theory as well as some of the current legal practices. An author who is creative with analogies will find that many of the issues have already been examined by Becker and followers. One beneficial aspect of this topic is that, although the focus is purportedly patent law, it really crosses into any field of litigation.

A couple of other ideas that I already gave out relate to a) the recent Honeywell v. Hamilton Sundstrand case that may be taken up by the Supreme Court and b) an analysis of when academic presentations do/should constitute 102(b) anticipation as printed publications based on this recent case. In part b, perhaps you would focus on the case of a power point presentation at a two day conference.

Let me know what you find.

Federal Circuit: Linear Technology v. Impala Linear and Maxim Integrated

Patent, Patent Cases 2004, ,

Linear Technologies Figure

Linear Technology v. Impala Linear and Maxim Integrated (Fed. Cir. 2004)

After losing an appeal last month, Maxim filed a request for an en banc rehearing.  Although the court denied the petition to rehear, it did issue a substitute opinion in the case.

Summary:

Because genuine issues of material fact have been raised concerning Maxim’s contributory infringement or inducement, we vacate the district court’s summary judgment of no contributory infringement or inducement of the current reversal method claims of the ’178 patent.  Because Maxim failed to raise a genuine issue of material fact, the matter of inventorship was amenable to determination on summary judgment on the undisputed factual premises.  On these premises, the district court correctly held that Vinsant was not a joint inventor of the ’178 patent.

As in the prior opinion,the court found error in the district court’s claim construction.  Vacated-in-part, affirmed-in-part, and remanded.

Read the original federal circuit opinion.

Federal Circuit: Power Mosfet v Siemens and Infineon

Patent

Power Mosfet Technologies (PMT) v. Siemens AG (Fed. Cir. 2004)

PMT sued Siemens for infringement of its patented technology covering a voltage sustaining layer for a MOSFET.  (U.S. Patent No. 5,216,275).  Following a bench trial, the district court found that the accused products did not infringe the ‘257 patent. The Appellate Panel agreed with the district court and affirmed.

Because we affirm the district court’s claim construction, we must also agree with its conclusion that neither Infineon’s nor ST’s accused devices infringe the ‘275 patent.  We also find that, because a full construction of the claims was never completed prior to the district court’s final judgment, the district court could not have changed the claim construction and therefore did not abuse its discretion in denying PMT’s new trial motion.  Regarding Infineon’s cross-appeal, we conclude that the district court did not abuse its discretion in denying Infineon’s costs under either Rule 11 or 35 U.S.C. § 285.  Finally, we find that, in light of IR’s representations to the district court, the district court did not abuse its discretion in denying IR’s motion for costs under Rule 54(d).  Accordingly, the district court’s judgment of noninfringement, its denial of PMT’s motion for a new trial, and its denial of Infineon’s requests for fees and IR’s request for costs are all

 

Which Dictionaries are Used for Claim Construction?

Articles and Publications, Patent

Professor Joseph Miller along with James Hilsenteger have pulled together an interesting working paper discussing the Federal Circuit’s use of dictionaries in claim construction. (Abstract and Article Download). They looked at all Federal Circuit cases since 1995 and tallied the use of dictionaries. Findings:

1) General purpose dictionaries are much more popular than technical dictionaries (more than a 2:1 ratio).
2) Webster’s Third International is the most popular dictionary (25% of total).
3) Use of dictionaries appears to vary widely according to the members of each Appellate Panel (Miller provides a nice table in the appendix).

Finally, the authors propose a rule change that would “require that every patent applicant put her dictionary selections (general purpose and technical) on the record during examination, and that any resulting issued patent state the applicant’s dictionary selections on its face.”  According to the paper, this requirement would help to strengthen the public notice function of patents.

Comment: Interestingly, I was discussing a similar proposal with another attorney last week. We were thinking of scenarios where it would be in the Applicant’s best interest preset the dictionary to be used. For instance, linking your terms to a dictionary will result in well defined terms that are cheaper to litigate. However, many patent attorneys are reluctant to completely define their terms for fear of losing some undefined scope. This complex issue may be resolved quite soon by the Federal Circuit in Phillips v. AWH.

Federal Circuit: Neomagic v. Trident Microsystems

Patent, Patent Cases 2004

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NeoMagic v. Trident Microsystems (Fed. Cir. 2004) (04-1046)(NONPRECEDENTIAL).

NeoMagic sued Trident for infringement of its patent covering a graphics engine/memory integrated circuit (U.S. Patent No. 5,703,806). After construing the claims in a Markman hearing, the Delaware District Court dismissed the suit on summary judgment based, holding that the claims were not infringed as a matter of law. In a first appeal, the Federal Circuit remanded based on improper claim construction.

After a second summary judgment dismissal for noniningringement, the case appeared before the Federal Circuit again. This time, the Appellate Panel affirmed the dismissal, holding that the dismissal was proper because Trident’s products did not have a “second power supply” as recited in the claims.

Full Case PDF.

Battle over Pet Food: Mars v. Heinz & Del Monte

Patent, Patent Cases 2004

pet_food_patent
Mars v. Heinz & Del Monte (Fed. Cir. July 29, 2004).

Mars filed a patent infringement suit against Heinz, alleging infringement on its patented pet food. (U.S. Patent 6,312,746)(A dual texture animal food product with a soft inner component surrounded by a harder, more rigid shell). After a Markman hearing, the district court issued summary judgment of noninfringement to Heinze.

On appeal, the Federal Circuit breathed new life into Mars’ claims by issuing a new construction of claim terms and remanding.

We conclude that: (1) “ingredients” as used in the phrase “a mixture of lipid and solid ingredients” refers to the components of the inner core at any time after they have been mixed together, and (2) the phrase “containing a mixture” is open-ended. Thus, the claim language, “containing a mixture of lipid and solid ingredients,” does not exclude the presence of additional, unnamed ingredients in the inner core mixture that are neither lipids or solids. Since genuine issues remain as to infringement under this construction, we vacate the district court’s grant of summary judgment of non-infringement and non-infringement under the doctrine of equivalents and remand for further consideration.

Vacated and Remanded

Phillips v. AWH: Chief Judge Mayer’s Dissent

Patent, Patent Cases 2004, ,

The Federal Circuit has created a stir in its recent decision to grant an en banc review of Phillips v. AWH.

Chief Judge Mayer dissented from the court’s decision to review. Mayer argued that the real question for review is whether Markman was correctly decided.

Until the court is willing to reconsider its holdings in Markman v. Westview Instruments … that claim construction is a pure question of law subject to de novo review in this court, any attempt to refine the process is futile. Nearly a decade of confusion has resulted from the fiction that claim construction is a matter of law, when it is obvious that it depends on underlying factual determinations which, like all factual questions if disputed, are the province of the trial court, reviewable on appeal for clear error. To pretend otherwise inspires cynicism. Therefore, and because I am convinced that shuffling our current precedent merely continues a charade, I dissent from the en banc order.

My former boss, Patricia Thayer at Heller Ehrman commented in the Recorder that she thinks Mayer may get his wish.

“I’d love it if the federal district courts got together” to write an amicus brief on the issue, Thayer said. “It’s difficult for them that [they are accorded] no deference. I wouldn’t be surprised if that gets changed in the process.”

This is the fourth article in our coverage of the Phillips en banc appeal. Read Part I, Part II, and Part III.

Phillips v. AWH: Rader Concurring

Patent, Patent Cases 2004, ,


This is Part III of our coverage of the Phillips – AWH en banc order. Read Part I and Part II.

… In concurrence, Judge Rader argued for en banc ruling on another issue. Rader’s concern is whether claim construction is even amenable to “strictly algorithmic rules.” As an example, Rader questions whether an approach of first looking at the specification, folowed by examining dictionary definitions would be workable. Alternatively, claim construction may be better achieved by chosing a methodology on a case by case basis — “thus entrusting trial courts to interpret claims as a contract or statute.”

De Novo Claim Construction

Patent,

The en banc review of Phillips v. AWH will likely change the face of patent litigation. For example, the Federal Circuit gives no deference to trial court claim construction rulings. Thus, claim construction is often overruled on appeal. In Phillips, the appellate body will review this approach and determine whether it would be appropriate to afford some deference to the trial court rulings.

Read more about the appeal here.

Using Dictionaries in Claim Construction

Patent, Patent Cases 2004,

PHILLIPS v. AWH CORPORATION (Fed. Cir. 2004)

The Federal Circuit has agreed to rehear the appeal en banc in order to resolve issues concerning the construction of patent claims and the use of dictionaries. The following questions are to be briefed:

1. Is the public notice function of patent claims better served by referencing primarily to dictionaries to interpret a claim term or by looking primarily to the patentee’s use of the term in the specification?

2. If dictionaries should serve as the primary source for claim interpretation, should the specification limit the full scope of claim language (as defined by the dictionaries) only when the patentee has acted as his own lexicographer or when the specification reflects a clear disclaimer of claim scope? If so, what language will satisfy those conditions?

3. If the primary source for claim construction should be the specification, what use should be made of dictionaries?

4. Instead of viewing the claim construction methodologies in the majority and dissent of the now-vacated panel decision as alternative, conflicting approaches, should the two approaches be treated as complementary methodologies such that there is a dual restriction on claim scope, and a patentee must satisfy both limiting methodologies in order to establish the claim coverage it seeks?

5. When, if ever, should claim language be narrowly construed for the sole purpose of avoiding invalidity.

6. What role should prosecution history and expert testimony play in determining the claim term meaning?

7. Is it appropriate for this court to accord any deference to any aspect of trial court claim construction rulings? If so, on what aspects, in what circumstances, and to what extent?

Amicus curiae briefs may be filed and should be limited to 5,000 words, and be filed within sixty days from the date of this Order.

Alticor v. Ultra-Sun Technologies

Patent

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Alticor v. Ultra-Sun Technologies (Fed. Cir. 2004) (not citable as precedent)

(NEWMAN, PLAGER, CLEVENGER). In an infringement suit over Alticor’s patented water purification technology, the lower court granted summary judgment of noninfringement in favor of Ultra-Sun. The system uses UV light as a radiant energy source for killing contaminating microorganisms. The appellate panel reversed, finding that a reasonable jury could have found infringement based on the district court’s claim construction.

AFG INDUSTRIES and ASAHI GLASS v. CARDINAL IG and ANDERSEN WINDOWS

Patent, Patent Cases 2004

window_patent
AFG Indus. v. Cardinal IG CO. (Fed. Cir. July 13, 2004)

In an infringement suit involving AFG and ASAHI’s patented window treatment, the District Court (E.D. Tenn) held that Cardinal did not infringe. (U.S. Patent 4,859,532). On appeal, the Federal Circuit (RADER) vacated and remanded.

A structure that falls within the meaning of “layer” due to its structure and optical properties remains a single layer whether it was deposited in a single sputtering operation or multiple operations. By the same token, that unitary structure of the same material that constitutes a “layer” does not become multiple layers because the manufacturer decided to deposit it in multiple passes rather than in a single pass. The method of making is not determinative of the structure and properties of a “layer.” Because the trial court considered the method of creating the layer dispositive of its structure and character in the accused LoE2 products, this court vacates the grant of summary judgment.

Because genuine issues of material fact preclude summary judgment of noninfringement of the ’532 patent, this court vacates and remands.In dissent, J. NEWMAN argued that the case should not be remanded again, but rather, should be decided by the appellate panel.

I respectfully dissent from the panel’s decision to remand this case for the third time on the issue of claim construction with respect to the claim term “layer.” Claim construction is a matter of law, and as such it receives de novo review. The purpose is objective correctness; the record is complete, the question is ripe. It is time for decision, not for remand.

There have been three Markman hearings and now three appeals, all directed to the meaning of the term “layer.” For the first two hearings the definition was applied to the titanium dioxide deposits, and in the second appeal this court held that a layer is a material of optically significant uniform chemical composition. In the third Markman hearing the district court held that Cardinal’s multiple deposits of its center zinc oxide component produced multiple layers. This court now appears to hold that its definition in the previous appeal, wherein “layer” was defined in the context of the “interlayers” of titanium dioxide, bars the district court from considering the additional aspect of whether multiple sputtering deposits can produce multiple “layers,” unless they affect the structure and optical properties. However, when the later claim construction is made in a different technical context from that which was earlier considered, in the interest of correctness the court must consider the new context.

This case was filed in 1996. Before the district court the parties produced extensive evidence, in the form of expert and other witness testimony, and physical exhibits and demonstrations. The district court has three times held, on summary judgment upon deciding the legal question of claim construction, that there is no infringement. It is a relatively simple technical question, for which the record is fully developed. After eight years this question of law requires finality, not a fourth cycle of Markman hearing and appeal. From my colleagues’ remand for this purpose, I respectfully dissent.