Putting Your Fat Thumb on the Scale of Claim Construction

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In Williamson v. Citrix Online, LLC, [2013-1130] (Fed. Cir. 2015), the Federal Circuit reduced the “strong” presumption that a limitation expressed in functional language without using the word “means” is not subject to 35 USC §112, ¶6 (35 USC §112(f)).   The Federal Circuit concluded that this heighted  burden was unjustified, uncertain in meaning and application, shifted the balance struck by Congress in passing § 112, ¶6, and “has resulted in a proliferation of functional claiming untethered to § 112, para. 6 and free of the strictures set forth in the statute.”  The Federal Circuit announced that henceforth the test of whether the words of the claim “are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”

While the Federal Circuit criticized its previous “strong” presumption because of its “inappropriate practical effect of placing a thumb on what should otherwise be a balanced analytical scale” one wonders whether a patent applicant can’t put its thumb back on the scale through definitions.  Consider U.S. Patent No. 6167810, which states:

6167810

The patentee has attempted to recapture the widely misunderstood meaning of “means” prior to In re Donaldson, by covering all possible means for performing the stated function.  Maybe redefining “means” is a step too far, but if the test really is how the words are understood by persons of ordinary skill, would an express statement that “none of the claim terms are intended to be construed under 35 USC §112(f)” affect how a person or ordinary skill in the art would understand the claims?

Furthermore, if the test is whether the words of the claim “are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure” would a definition help to capture the broadest scope?  Consider this language from U.S. Patent No. 6909672:

6909672

Whether by defining means to include “any means” as in U.S. Patent No. 6167810, or defining a functionally named element  to include “any means” as in U.S. Patent No. 6909672, an applicant can try to exert some control over how the functional elements in its claims will be construed, as long as the applicant is mindful of the written description and enablement requirements of the other parts of §112.

Just Because You Believe A Patent is Invalid Doesn’t Mean You Can Believe You Don’t Infringe It

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In a 6-2 decision Commil USA, LLC v. Cisco Systems, Inc, the Supreme Court held that a good-faith belief that a patent is invalid is not a defense to inducement of patent infringement under 35 U.S.C. § 271(b).

 Commil USA, which holds a patent for a method of implementing wireless networks, sued respondent Cisco Systems, a maker and seller of wireless networking equipment. A jury found Cisco liable for both directly infringing Commil’s patent as well as “inducing” others to infringe by selling them the infringing equipment.  The Supreme Court had previously held that for liability for inducement under 271(b) to attach, the defendant must know that its induced acts are infringing, that is, inducement liability requires knowledge of patent infringement. See, e.g., Global-Tech Appliances v. SEB S.A., 563 U.S. __, __ (2011); Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488 (1964).

The District Court had instructed the jury that it could find inducement if Cisco “knew or should have known that its actions would induce actual infringement,” and the jury found for Commil on the induced infringement charge. The Federal Circuit reversed the District Court in part, holding that Cisco should have been allowed to present evidence of its good-faith belief that Commil’s patent was invalid.  The Federal Circuit reasoned that one cannot infringe an invalid patent, and therefore a good faith belief that a patent is invalid translated into a good faith believe that the patent is not infringed,

The Supreme Court started with the premise that liability for inducing infringement attaches only if the defendant knew of the patent and that the induced acts constitute patent infringement.  The Supreme Court provided four arguments why belief about the validity does not negate the scienter required by 271(b):  First, the court found that when infringement is the issue the validity of the patent is not the question to be confronted, noting that a declaratory judgment of invalidity presents an independent claim from the patentee’s charge of infringement, and that issues of validity and infringement are in separate parts of the patent act.  Second, the Supreme Court said that allowing a defense of invalidity would “undermine” the statutory presumption of validity. Third, the Supreme Court asserted that invalidity is not a defense to infringement, it is a defense to liability, and thus it cannot negate the scienter required for inducement.  Fourth and finally, the Supreme Court identified “practical reasons” not to create a defense based upon the good faith belief of invalidity, including the fact that there are various ways to obtain an invalidity ruling, and recognizing the defense would render litigation more burdensome, and because it is harder to determine validity, it would be easier to prevail on a defense based upon belief of invalidity, and it would burden the jury to separate issues of invalidity from belief of invalidity.

The dissent by Justice Scalia started with the observation that anyone with a good-faith belief in a patent’s invalidity necessarily believes that patent counsel cannot be infringed.  The dissent then went on to address the majority’s four arguments, observing that while it was true that the patent act treats infringement separately from validity, it is irrelevant.  Recognizing infringement requires validity is entirely consistent with their separate nature.  The dissent next observed that the presumption is not weakened by treating a good-faith belief as a defense.  While if successful the defense avoids liability, it in no way undermines the patent’s presumed validity.  The dissent called “invalidity is not a defense to infringement, it is a defense to liability” as a mere assertion, asserting instead that an invalid patent confers no rights.  Finally, the dissent rejected the majority’s “practical reasons”  not to create a defense to inducement  as flawed because it wasn’t up to the Court to create or not create defenses, but to interpret the patent act.

 A good faith, but incorrect, belief that the patent is invalid is no defense to a claim for inducement.  However a good faith, but incorrect belief that the patent is not infringed is a defense to a claim of inducement. But non-infringement depends upon claim construction, which in turn is pressured by validity considerations.  Does an opinion that the claims are not infringed because they cannot be validly construed to cover the accused device protect the manufacturer from a claim of inducement?  After Commil a business without a clear non-infringement position should consider preemptively test the validity of the patent, or risk subsequently being liable for inducement if the patent is later found not invalid.

Boilerplate.

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Stock language for advertisements and syndicated columns were cast or stamped in more durable materials such as steel for distribution and local printing.  Apparently from their resemblance to the steel plates used in the construction of boilers, the plates, and eventually the stock material on them, became known as boilerplate.  Eventually usage of the term “boilerplate” was applied to stock language in any document, such as contracts, and even in patents.  Boilerplate sentences and paragraphs are common in patents, but does it ever really make a difference?

Boilerplate can indeed make a difference, and thus it probably is good practice to include it in patent applications.  For example in Hill-Rom Services, Inc. v. Stryker Corporation, —F.3d — (Fed. Cir. 2014), the Federal Circuit cited boilerplate language (although not identifying it as such) that the “description of various embodiments” is not intended “to restrict or in any way limit the scope of the appended claims to such detail” in determining that the tem “data link” was not limited to the particular wired data link described in the specification.

boilerplate

In Northrup Grumman Corp. v. Intel Corp., 325 F.2d 1346 (Fed. Cir. 2003), the Federal Circuit rejected the district court findings and defendant’s argument that Northrup was  relying upon mere boiler plate that “the present invention may be made to conform to any one of a variety of data transfer algorithms.”  However the Federal Circuit did not express any opinion about boilerplate generally, but did find that the patent does not rest upon a mere “boilerplate” suggestion of broad application. It goes on to provide substantive, albeit general, support for that declared intention.

Everyone seems to have a different take on disclaimers from simple matter-of-fact statements, to expositions on claim construction philosophy:

boilerplate1

 

 

 U.S. Patent No. 8,047,178.

The bottom line is that patent application boiler plate doesn’t seem to cause any harm, and occasionally, it has been helpful.  Better, of course, would be the oxymoronic “custom boilerplate” where stock broadening statements are tailored to the current disclosure. Therefore, there is good reason to include well-thought-out “boilerplate” in an application, although it is no substitute for a well-crafted specification.

Incorporation by Reference

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There are two types of incorporation by reference in patent documents. The first type arises automatically from a priority claim to a prior application. If priority is claimed as of the filing date, then pursuant to 37 C.F.R. §1.57(a) the application is considered to have incorporated by reference any inadvertently omitted material from the parent application, allowing the applicant to amend the current application to include the inadvertently omitted material. The second type of incorporation by reference is a purposeful incorporation by reference pursuant to 37 C.F.R. §1.57(b) of material to avoid having to reproduce the material in the specification.

To purposefully incorporate material into a patent specification, the specification must express a clear intent to incorporate by reference by using the root words “incorporat(e)” and “reference” (e.g., “incorporate by reference”), and clearly identify the referenced patent, application, or publication. Even “essential material” may be incorporated by reference (37 C.F.R. §1.57(c)), but only by reference to a U.S. patent or U.S. patent application publication, and not other types of patents or publications. The referenced U.S. patent or patent application must not itself incorporate such essential material by reference. “Essential material” is material that is necessary to: (1) provide a written description or enabling disclosure under 35 U.S.C. §112(a); (2) particularly point out and distinctly claim the invention as required by 35 U.S.C. §112(b); or (3) describe the structure, material, or acts that correspond to a claimed means or step for performing a specified function as required by 35 U.S.C. §112(f).

An incorporation by reference should specifically define the material being incorporated by reference, and more importantly define what is not being incorporated by reference. Most applicants call for the complete incorporation by reference: “incorporated by reference for all that it contains” (U.S. Patent No. 7541813); “incorporated by reference for all purposes as if fully set forth herein” (U.S. Patent No. 7372731); “the entireties of which (including all references incorporated by reference therein) are incorporated by reference herein for all purposes” (U.S. Patent No. 8281670.   Some applicants include catch-all incorporation of any document referred to:

All publications, patents and patent applications referred to herein are incorporated by reference in their entirety to the same extent as if each individual publication, patent or patent application was specifically and individually indicated to be incorporated by reference in its entirety.

U.S. Application 20070119058, or:

 All references cited herein are incorporated by reference to the maximum extent allowable by law.

US20120288335. While it is tempting to simply incorporate the material “in its entirety” (how can more disclosure ever be a bad thing?), this can have unintended consequences for example where the incorporated material includes express definitions or disclaimers. Some applications include boiler plate to address this situation:

 Any incorporation by reference of documents above is limited such that no subject matter is incorporated that is contrary to the explicit disclosure herein. Any incorporation by reference of documents above is further limited such that no claims included in the documents are incorporated by reference herein. Any incorporation by reference of documents above is yet further limited such that any definitions provided in the documents are not incorporated by reference herein unless expressly included herein.

U.S. Patent No. 8573045. This language might be improved by also excluding any disclaimers. In X2Y Attenuators, LLC, v. ITC, 757 F.3d 1358 (Fed. Cir. 2014), the Federal Circuit held that disclaimers were incorporated into the patent in suit through incorporation by reference.

Other attempts at avoiding unintended results from incorporation address inconsistent usage:

 In the event of inconsistent usages between this document and those documents so incorporated by reference, the usage in the incorporated reference(s) should be considered supplementary to that of this document; for irreconcilable inconsistencies, the usage in this document controls.

U.S. Patent No. 8798340. And:

 Any information in any material (e.g., a United States patent, United States patent application, book, article, etc.) that has been incorporated by reference herein, is only incorporated by reference to the extent that no conflict exists between such information and the other statements and drawings set forth herein. In the event of such conflict, including a conflict that would render invalid any claim herein or seeking priority hereto, then any such conflicting information in such incorporated by reference material is specifically not incorporated by reference herein.

U.S. Patent No. 7398012. A more complete treatment of incorporation by reference might be:

All patent applications, patents, and printed publications cited herein are incorporated herein by reference in the entireties, except for any definitions, subject matter disclaimers or disavowals, and except to the extent that the incorporated material is inconsistent with the express disclosure herein, in which case the language in this disclosure controls.

As an alternative to a boilerplate disclaimer, the incorporation language might be tailored to the situation:

U.S. Patent No. XXXXXXX, the entire disclosure of which, except for any definitions, disclaimers, disavowals, and inconsistencies, is incorporated herein by reference.

unless, of course, the definitions or disclaimers are important.

In addition to the inadvertent incorporation of potentially harmful material, an additional concern is the effect of incorporation by reference upon subsequent foreign filings. If these countries do not recognize incorporation by reference to the same extent as the United States does, the disclosure may be insufficient.

Incorporation by reference is a great tool for patent drafters, but as with everything in a patent specification, must be used thoughtfully.

 

 

 

 

 

 

 

 

 

 

 

PTO’s refusal to Terminate Inter Partes Reexamination After Litigation Settled Not Reviewable

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In Automated Merchandising v. Lee, 2014-1728 (April 10, 2015), the Federal Circuit held that AMS’s challenge to the PTO’s refusal to terminate pending reexaminations cannot proceed because the refusal is not a “final agency action” under the APA, 5 U.S.C. § 704.

AMS sued Crane in for infringement of four patents (U.S. Patent Nos. 6,384,402, 6,794,634, 7,191,915, and 7,343,220). Crane requested inter partes reexamination of the patents.  AMS and Crane settled their suit, with the court issuing a consent judgment that “[t]he parties stipulate that [the four patents] are valid.” AMS then asked the USPTO to terminate the reexamination, but the USPTO refused.  AMS brought an action in district court, challenging the USPTO’s refusal under the APA.  The district court rejected the challenge on the merits, but the Federal Circuit found that the USPTO’s decision was not a final decision that could be challenged under the APA.

Denial of Attorneys Fees Remanded Because Octane lowered “Considerably” the Standards for Fee Awards

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In Oplus Technologies, Ltd. v. Vizio, [2014-1297] (April 10, 2015), the Federal Circuit vacated and remanded the district court’s decision not to award attorneys’ and expert witness fees under 35 U.S.C. §285 and 28 U.S.C. §1927.  The Federal noted that since the district court issued its opinion, the Supreme Court’s Octane decision lowered Circuit  “considerably” the standard for awarding fees, and thus the it was appropriate to vacate and remand this case in order for the district court to reconsider the propriety of awarding fees.

The Federal Circuit found that the district court opinion details an egregious pattern of misconduct, and that even Oplus’s counsel agreed that the misconduct was quite severe.   The Federal Circuit said that although an award of fees is within the discretion of the district court, nothing in the opinion or in the record substantiates the court’s decision not to award fees. Given that the district court found counsel’s behavior “inappropriate,” “unprofessional,” “vexatious,” and “harassing,” it is difficult to imagine how defendant had not incurred additional expenses defending against such filings.

 

 

 

No Challenge Possible to PTO’s Revival of Application

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In Exela Pharma Sciences, LLC v. Lee, [2013-1206] (March 26, 2015) the Federal Circuit affirmed the dismissal of Exela’s challenge to the revival of SCR Pharmatop patent application that resulted in the issuance of U.S. Patent No. 6,992,218. It was undisputed that SCR Pharmatop failed to properly enter the U.S. National Phase by the 30 month deadline. SCR Pharmatop filed a petition to revive the application, stating that the delay was “unintentional,” using the form provided by the PTO for revival requests. The PTO granted the petition on April 25, 2003, and the application was duly examined, resulting in the ’218 patent. After being sued on the patent, Exela filed a petition in the PTO, under the APA and 37 C.F.R. §§1.181, 1.182, and 1.183, challenging the PTO’s revival of SCR Pharmatop’s application, arguing that “unintentional” delay was not an available ground for revival of a U.S. patent application claiming priority under the PCT-implementing statute as then in effect.  The PTO declined to consider Exela’s petition, stating that no statute or regulation authorizes third party challenge to a PTO ruling concerning revival of a patent application.  Exela brought an action in district court to review this determination, but it was dismissed the action as untimely.  The Federal Circuit affirmed the dismissal, but on the grounds that “PTO revival actions are not subject to third party challenge under the APA.”

This decision in effect completely insulates improper and even illegal action by the USPTO, not only can a third party not challenge the action in the Patent Office, but in view of the Federal Circuit’s decision in Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 543 F.3d 657 (Fed. Cir. 2008), the party cannot raise it as a defense in an infringement action.

Every Term in a Claim Should be Given Meaning

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In Enzo Biochem Inc. v. Applera Corp., [2014-1321] (March 16, 2015), the Federal Circuit reversed the district’s courts’ claim construction, and thus the district court finding of infringement. At issue was the language “represents at least one component of a signaling moiety capable of producing a detectable signal.” The district court determined that this language encompassed a compound that was the entire signaling moiety. However, the Federal Circuit reversed for several reasons, including the fact that this construction improperly read out “component” form the claim language, citing Bicon, Inc., v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).

De Novo Review Where Claim Can Be Construed Using Canons of Construction from Instrinsic Reference

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Eidos Display, LLC, v. AU Optronics Corp., [2014-1254] (Fed. Cir. 2014), the Federal Circuit reversed summary judgment of invalidity of the claims for indefiniteness.  The Federal Circuit began its analysis by confirming that its review was de novo because the claims could be construed solely from the intrinsic evidence, citing Teva v. Sansoz.  The Federal Circuit said that to the extent the district court considered extrinsic evidence in its claim construction order or summary judgment order, that evidence is ultimately immaterial to the outcome because the intrinsic record is clear.

In its de novo review of the claims the Federal Circuit observed that the limitation at issue, “a contact hole for source wiring and gate wiring connection terminals” could require a single common or two separate holes, but found that the specification clearly indicated two holes.  First, the Federal Circuit noted that the there was no enabling disclosure of a single hole, and second the only disclosure was of two separate holes.

The Federal Circuit looked to the prosecution history of the parent application, citing Masco Corp. v. United States, 303 F.3d 1316, 1324 (Fed. Cir. 2002), and Elkay Mfg. Co. v. EbcoMfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999)that the prosecution history of a parent application may be considered  in construing claim terms.”  Observing that other claims contained this same limitation the Federal Circuit saw no reason to ascribe a different meaning to the same limitation in the current claim, noting claim terms are normally used consistently throughout the patent, so that the usage of a term in one claim can often illuminate the meaning of the same term in other claims.

Finally the circuit noted that descriptions of other unclaimed embodiments in the patent in suit supported the construction that separate holes were required, noting that the description of a word in the specification for a different structure can inform the meaning of the same word in the claim because “claim terms are normally used consistently throughout the patent,” citing Energy Transp. Grp., Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1349–50 (Fed. Cir. 2012).

The Federal Circuit rejected appellee’s argument that it was rewriting the limitation, noting that determining how a person of ordinary skill in the art would understand  the limitation, however, is different from rewriting the limitation.

 

Broadest Reasonable Construction Must Comport with Plain Meaning and Specification

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In In re Imes, [2014-1206] (January 29, 2015) the Federal Circuit reversed the rejection of Imes’ claims to a device for communicating digital camera image and video information over a network. Some of the claims required a “wireless communication module.” Purporting to apply the broadest reasonable interpretation, the Examiner rejected these claims in view of prior art that disclosed the use of a memory card to transfer images and videos, pointing out that no wires are used. The Federal Circuit concluded that this construction was “inconsistent with the broadest reasonable interpretation in view of the specification.” The Federal Circuit found the construction “straightforward,” particularly since the term wireless was defined in the specification, and it was used consistently throughout. Also at issue were claims to “wirelessly communicate streaming video” which the Examiner found met by prior art that serially transmits images by email, reasoning that video is just a series of images. The Federal Circuit held “sending a series of emails with attached still images is not the same as streaming video.” Such a construction is unreasonable as it comports with neither the plain meaning of the term nor the specification.”