Claim Construction Mistakes Require Vacation of Non-infringement Decision

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In Promptu Systems Corp. v. Comcast Corp., [2022-1939] (February 16, 2024), the Federal Circuit vacated judgment of non-infringement of U.S. Patent Nos. 7,047,196, 7,260,538, NS RE44,326, and remanded for further proceedings

U.S. Patent Nos. 7,047,196

The ‘196 patent provides speech recognition services to a collection of users over a network that supports cable television and/or video delivery.

U.S. Patent No. 7,260,538

The ’538 patent describes and claims related subject matter, but the ’538 patent’s specification is materially different from the ’196 patent’s specification. At a general level, the primary distinction between the ’196 patent and the ’538 patent is that the former relates to using remote voice-recognition systems to deliver requested (cable or video) content in response to a user’s speech request, while the latter relates to using remote voice-recognition systems to control a user’s television set based on a user’s speech command.

On appeal, Promptu challenged the district court’s construction of four claim limitations: “back channel,” “multiplicity of received identified speech channels,” “speech recognition system coupled to a wireline node” (each from the ’196 patent), and “centralized processing station” (from the ’538 patent).

The Federal Circuit agreed that the district court erred by narrowly construing “back channel” in the ’196 patent as limited to “[a] fixed band of frequencies or time slot(s) for transmitting signals to a speech processing system or engine.” The Federal Circuit said that nothing in the claim language suggests the limitation to a fixed band of frequencies or time slots. “Back” undisputedly refers to the direction (upstream) opposite the direction of transmission of the programming (downstream). And whether “channel” means a path or what is flowing in the path (an issue discussed infra), the Court saw nothing in the meaning of the quite general term “channel” that limits the path to one defined by a fixed band of frequencies or time slots. The Federal Circuit also found that nothing in the ’196 patent’s specification require the particular path-definition technique demanded by the district court’s claim construction. Moreover, the ’196 patent, through an incorporated application, describes schemes that involve signal transmission along the back channel on dynamically assigned
and managed (i.e., not fixed) frequency bands or time slots.

The Federal Circuit found that the use of a fixed frequency band or time slots, in this patent,
is no more than exemplary, not required. The specification did not limit the channel-defining techniques to a fixed frequency band or time slots. Case law has long recognized that particular features recited in the specification merely as aspects of embodiments,
and not expressly or even implicitly identifying requirements of the invention, do not narrow a claim term that is otherwise broader in its ordinary meaning.

The Federal Circuit similarly rejected the district court’s construction of the “multiplicity of received identified speech channels” phrase in the ’196 patent as requiring “a single band of frequencies or a designated time slot” for each identified speech channel. The construction depends on the underlying construction of “channel,” which the Federal Circuit rejected.

The district court construed the “speech recognition system coupled to a wireline node” phrase in the ’196 patent, in sum, as “a system whose function is speech recognition”
“connected in or near” “a network node providing video or cable television delivery to multiple users using a wireline physical transport between those users at the node.” The Federal Circuit said that construction incorrectly construes the constituent terms “speech recognition system,” “coupled to,” and “wireline node” within the claim phrase.

The Federal Circuit said that the district court’s construction of “speech recognition system” as “a system whose function is speech recognition” improperly presupposes that speech recognition is the exclusive function of the speech recognition system. Claim Construction Order, at 2 (emphasis added). The claim term, “speech recognition system,” does not entail such exclusivity. Further, the ’196 patent’s specification describes functions that a “[s]peech processor computer” may perform other than speech recognition, such as billing and system management.

The Federal Circuit said that the district court’s construction of “coupled to” as “connected
in or near” incorrectly reads a proximity requirement (“in or near”) into the claim term at issue. The Federal Circuit has repeatedly held variants of “coupled to” in patent claims to mean simply “connected to.”

The Federal Circuit said that the district court improperly adopted the specification’s
definition of “centralized wireline node” when construing the claim term “wireline node.” The Federal Circuit reasoned that the “centralized” modifier (used in the composite term defined in the specification) must add some meaning to or limitation on the “wireline node” being modified. The absence of the “centralized” modifier in the claims, in turn, means that
the claimed “wireline node” must be broader in some way than the “centralized wireline node” defined in the specification.

The Federal Circuit also found fault with the district court’s claim construction of “centralized processing station” in the ’538 patent as a “device at a cable-TV network head-end unit that receives and performs voice recognition on voice commands, and generates and returns instructions to settop boxes to carry out the commands.” The Federal Circuit noted that the location requirement: that a “centralized processing station” must be located “at a cable-TV network head-end unit.” The “centralized processing station” that is itself “configured to” perform the required voice-recognition actions (i.e., to receive and process output by applying voice recognition, to identify voice commands, and to derive instructions), the claims fairly specify that the “centralized processing station” performs the claimed voice recognition, rather than merely applies the results of such voice recognition performed
elsewhere. The Federal Circuit said that the district court incorrectly required the recited “device” to be located “at a cable-TV head-end unit,” based upon an example in the specification.

The Federal Circuit vacated the district court’s entry of final judgment as it relates to Promptu’s ’196 and ’538 patent-infringement claims. The Fedeal Circuit reversed in part and affirmed in part the district court’s claim constructions, and remanded to the district
court for further proceedings.

VALEN-TECH II (More IP to Ensure your Happy Valentine’s Day)

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U.S. Patent No. 1,353,709 discloses a token “which may be presented as an expression of friendship or admiration.”

•U.S. Patent No. 2,726,397discloses an apron with interchangeable appliques, explaining “often such persons as housewives and hostesses desire to decorate articles of clothing, curtains, coverings and so forth with figures and designs of various shape and color.” Reportedly this was even more popular than the Valentine-themed vacuum cleaner.

U.S. Patent No. 3,016,178 discloses a box construction, such as Valentines Day boxes, which are intended to contain candy or other comestibles or flowers. This is one of many patents on heart-shaped boxes.

U.S. Patent No. 6,172,328 discloses methods for etching, cutting and/or altering, the surface of a flower, plant, cut foliage, allowing one to inscribe a Valentine’s Day greeting on the flowers themselves.

U.S. Patent No. 6,053,399 “relates to mailers and envelopes and, more particularly, to envelops and mailers for sending small sachets and photographs.”

U.S. Patent No. 5,160,087 discloses a drinking straw, designed to demonstrate the need for teamwork.

U.S. Patent No. 4993184 discloses a “heart-shaped, free standing, living plant comprises at least two living plants, a left plant and a right plant, formed into opposed lobes forming the heart configuration.”

Last, but not least, U.S. Patent No. 5727565, discloses a heart shaped “kissing shield comprised of a thin, flexible membrane and a frame or holder” to ensure that your Valentine’s Day is both safe and happy!

Inventorship Guidance for AI-Assisted Inventions

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On February 13, 2024, the USPTO published guidance for AI-assisted inventions in the Federal Register, outlining two basic points: First, inventors and joint inventors named on U.S. patents and patent applications must be natural person, and Second, AI-assisted inventions are not categorically unpatentable for improper inventorship. The guidance also reiterated the Pannu factors for identifying inventors of AI-assisted inventions. Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998)

The USPTO previously determined that inventorship is limited to natural persons, and this was affirmed in Thaler by the Eastern District of Virginia (Thaler v. Hirshfeld, 558 F.Supp.3d 238 (E.D. Va. 2021)) and the Court of Appeals for the Federal Circuit (Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), cert denied, 143 S. Ct. 1783 (2023)). Thus, AI cannot be named as an inventor or co-inventor. The Guidance recognizes that while an AI system may not be named an inventor or joint inventor in a patent or patent application, an AI system— like other tools—may perform acts that, if performed by a human, could constitute inventorship under our laws, but the patent statute limits inventorship to natural persons.

While AI systems and other nonnatural persons cannot be listed as inventors on patent applications or patents, the use of an AI system by a natural person does not preclude a
that natural person from qualifying as an inventor (or joint inventors) if that natural person significantly contributed to the claimed invention. The Federal Circuit has made clear that conception is the touchstone of inventorship. Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir.
1994). Conception is the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice. Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).

There is no requirement for a named inventor to contribute to every claim in an application or patent; a contribution to a single claim is sufficient. However, each claim must have been
invented by at least one named inventor. In other words, a natural person must have significantly contributed to each claim in a patent application or patent. In the event of a single person using an AI system to create an invention, that single person must make a significant contribution to every claim in the patent or patent application.

The Guidelines identify these factors for when a natural person is an inventor of an AI-assisted invention:

  1. Use of an AI system in creating an AI-assisted invention does not negate the person’s use of contributions as an inventor.
  2. A significant contribution could be shown by the way the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system.
  3. A person who takes the output of an AI system and makes a significant contribution to the output to create an invention may be a proper inventor.
  4. A natural person who develops an essential building block from which the claimed invention is derived may be considered to have provided a significant contribution to the conception of the claimed invention.
  5. A natural person who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, if that is a significant contribution to the invention created with the AI system.

The Guidelines identify these factors for when a natural person is not inventor of an AI-assisted invention:

  1. Merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception.
  2. A natural person who only presents a problem to an AI system may not be a proper inventor or joint inventor of an invention identified from the output of the AI system.
  3. A natural person who merely recognizes and appreciates the output of an AI system as an invention, is not necessarily an inventor.
  4. A person simply owning or overseeing an AI system that is used in the creation of an invention, without providing a significant contribution to the conception of the invention, does not make that person an inventor.

Mardi Gras 2024

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More examples of how the patent system improves everything — including Mardi Gras. U.S. Patent No. D645226 protects an Edible Cookie Mask, and get that last snack in before Lent begins:

U.S. Patent No. D629177 also provides a Mardi Gras mask, but without the snack:

U.S. Patent No. PP21407 provides an Aeonium Plant named “Mardi Gras” (and a cool word with all of the vowels):

U.S. Patent No. D611117 provides a Mardi Gras Doubloon Fishing Lure, to get a jump on meatless Fridays:

U.S. Patent No. PP15203 provides an Abelia Plant named “Mardi Gras”:

U.S. Patent No. D375658 provides a serving basket in the form of a Mardi Gras parade float:

U.S. Patent No. 8672169 provides a decorated cup for your Mardi Gras libations:

Broad Ranges in the Written Descriptiion Supported Narrower Ranges in the Claims

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In Rai Strategic Holdings, Inc. v. Philip Morris Products, SA, [2022-1862] (February 9, 2024), the Federal Circuit affirmed-in-part, vacated-in-part, and remanded the PTAB’s final written decision holding claims of U.S. Patent No. 10,492,542 unpatentable as obvious or lacking written description. Te ’542 patent, which is directed to electrically powered smoking articles that provide an inhalable substance in vapor or aerosol form by heating tobacco or other substances without significant combustion.

Philip Morris argued that dependent claims 10 and 27, which recite a heating member with
“a length of about 75% to about 85% of a length of the disposable aerosol forming substance,” are not supported by written description because “the claimed range is different
from and substantially narrower than the ranges disclosed in the specification.” Specifically, Philip Morris asserted that while the specification describes ranges such as 75% to 125%, 80% to 120%, 85% to 115%, and 90% to 110%, it does not disclose a heater length range
with an upper limit of 85%. RAI countered that the specification provides written description support because it teaches heating length embodiments at both ends of the claim range, pointing to the 75% to 125% and 85% to the 110% ranges. The Board found that the claims lack written description support because no range contains an upper limit of about 85% making it “‘less clear’ that the inventors contemplated a range of ‘about 75% to about 85%’ as part of the invention.”

The Federal Circuit began with a review of In re Wertheim, where its predecessor found that a disclosure of a range of 25% to 60% and provided support for claims to a range “between 35% and 60%. In Wertheim the Court said that whether the written description requirement is met, “[m]ere comparison of ranges is not enough,” and that instead, “we must decide whether the invention appellants seek to protect by their claims is part of the invention that
appellants have described as theirs in the specification.” “Where it is clear, for instance, that the broad described range pertains to a different invention than the narrower (and subsumed) claimed range, then the broader range does not describe the narrower range” and the written description requirement would not be satisfied.

The Federal Circuit also noted In re Blaser, 556 F.2d 534, 536–37 (C.C.P.A. 1977), where it held the specification, which disclosed heating a mixture to temperatures between 60º and 200º C, “adequately support[ ed] the limitation ‘80º to 200º C” and Kolmes v. World Fibers Corp.,107 F.3d 1534 (Fed. Cir. 1997), where it found that the specification stating a range of wrappings formed “at the rate of 4–12 turns per inch, with 8 turns per inch being preferred” supported a claim to a “rate of 8-12 turns per inch.”

However, in In re Baird, 348 F.2d 974 (C.C.P.A. 1965), cited by the Board, the CCPA held that a claimed range that was narrower than the disclosed range lacked sufficient disclosure. The issued patent explained the specific claimed range is preferred because the material would curl above 60º F and would be too brittle below 40º F. The application in interference, however, only disclosed that the quenching temperature may be between 32º F and 176º F, without providing any further guidance. The court found that the application’s claims lacked written description support because “the copied claims ‘are drawn to an invention different from that disclosed in the specification.”

Similarly, Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A., 18 F.4th 1323 (Fed. Cir. 2021), also cited by the Board, held that a claimed range “about 40 wt % to about 60 wt %” lacked written description support because (1) neither the range nor the end values were disclosed in the specification; and (2) the inconsistent statements regarding the desired amount of polymer in the specification made it “even less clear that an invention of ‘about 40 wt % to about 60 wt %’ was contemplated as an aspect of the invention.”

Turning to the case before it, the Federal Circuit said the question thus is whether the disclosure of a length of about 75% to about 125%, about 80% to about 120%, about 85% to about 115%, or about 90% to about 110% “reasonably conveys to those skilled in the art that
the inventor had possession” of the claimed length of “about 75% to about 85%.” The Court said among other things, we consider whether “the broad described range pertains to a different invention than the narrower (and subsumed) claimed range,” in which case the specification does not provide written description support for the narrower claimed range.

.

The specification need not expressly recite the claimed range to provide written description support. While the ’542 patent specification does not disclose the claimed range itself, it
does expressly disclose both endpoints by providing that the length of the heating member may be “about 75% to about 125%” or “about 85% to about 115%.” In addition to considering what the specification expressly discloses, we also consider the context of the technology at issue and the knowledge gained by a person of ordinary skill in the art
reading the specification. Given the predictability of electro-mechanical inventions such as the one at issue here, and the lack of complexity of the particular claim limitation at issue—i.e., reciting the length of a heating member—“a lower level of detail is required to satisfy the written description requirement than for unpredictable arts.” Further, nothing in the changes the invention, whether as to operability, effectiveness, or any other parameter.

Thus, the Federal Circuit we see no evidence suggesting that the broad described
ranges disclose a different invention than the claimed range of “about 75% to about 85%.” In other words, under the facts of this particular case, there is no evidence that the claimed
subrange results in a different invention than the invention disclosed in the specification. Accordingly, for all of the above reasons, we conclude that no reasonable fact finder could find that the claimed subrange is not within the appellant’s invention. In so holding, we note that our determination is highly factual and dependent on “the nature of the invention and the amount of knowledge imparted to those skilled in the art by the disclosure.”

Though the Board relied on Indivior and Baird in its decision, the facts in this case align more closely with those in Wertheim, Blaser, and Kolmes, where the broader disclosed
ranges did not constitute a separate invention from the narrower claimed ranges. The Federal Circuit vacated the Board’s decision on this issue and remand for further consideration consistent with this opinion.

The Federal Circuit concluded that substantial evidence supports the Board’s determination of obviousness.

You Better Watch Out

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There are approximately 638 issued patents that mention Santa Clas, more that a hundred or so that actually show him. His first appearance was in U.S. Patent No. 276,586 in 1883:

Since then, his appearance has changed over the years, as the following collection shows:

Santa Claus, whatever he looks like, is about to come to town a gain. Happy holidays!

Definition in Patent Incorporated by Reference, Results in Obviousness Determination

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In Parkervision, Inc., v. Vidal, [2022-1548] (December 15, 2023) the Federal Circuit affirmed the PTAB’s determination that claim 3 of U.S. Patent No. 7,110,444 was unpatentable as obvious.

At issue on appeal was the construction of “storage element.” The Federal Circuit noted that in the ‘551 patent, incorporated by reference into the ‘444 patent, Parkervision acted as its own lexicographer to define the term “storage element.” The language expresses an intent to define the term “storage element.”  In particular the Federal Circuit said that the patentee’s use of the phrases “as used herein” and “refer to” conveys an intent for sentence 5 to be definitional.”  The language was found definitional because it did not refer to reference numerals, and referring to the document as a whole with the phrase “as used herein.”

The Federal Circuit found that the Board’s construction of “storage element”—“an element of a system that stores non-negligible amounts of energy from an input EM signal”— correctly tracks the lexicography provided in the specification.  Agreeing with the PTAB’s claim construction, the Federal Circuit affirmed their obviousness determination as well.

Filing an ANDA is not Infringement, Unless the Specified Use is Claimed in the Patent

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In H. Lundbeck A/S v. Lupin Ltd., [2022-1194, 2022-1208, 2022-1246] (December 7, 2023), the Federal Circuit affirmed the judgment of non-infringement of U.S. Patent Nos.

9,278,096 and 9,125,910, and the determination that Lupin infringed claim 12 of U.S. Patent No. 9,101,626.

The Federal Circuit agreed with the district court that filing an ANDA is not infringement, unless the specified use is claimed in the patent.  The defendants solely seek approval to market the drug for the treatment of MDD pursuant to the methods of expiring patents—that is the “purpose” of the ANDA submissions. Thus, the patented uses are not those for which ANDA approval is sought. The Federal Circuit found that Plaintiffs have failed to establish that section 271(e)(2)(A) provides an independent basis of infringement.

The Federal Circuit also rejected the argument that the ANDA induced infringement, noting that the label in question is not a label that induces infringement of the ’096 patent. It was the label FDA required for the sale of the drug to treat MDD—a label that the patentee itself proposed for that purpose in connection with its NDA for treating MDD and that preexisted the issuance of the ’096 patent.  It cannot be, as plaintiffs suggest, that a patentee can bar the sale of a drug for a use covered only by patents that will have expired simply by securing a new patent for an additional, narrower use.

On its cross appeal, argued that the district court erred in construing “reacting” in the ’626 patent to mean “the changing of a reactant(s) to product(s)” and in finding infringement under that construction. The Federal Circuit disagreed.  Lupin contended that “reacting” meant “the specified chemicals are added to the reaction vessel at the beginning of the process as starting material,” and Lupin’s process does not use one of the compounds as a starting material.  The Federal Circuit said that it was true that the specification only refers to using the compound as starting materials, but nothing in the claims, specification, or file history requires Lupin’s narrower reading.

The Federal Circuit noted that the district court’s definition was consistent with the dictionary definition, that the prosecution did not support Lupin’s definition, nor did Lupin’s arguments about claim differentiation.  Based upon what the Federal Circuit found was the correct definition of reacting, the Federal Circuit affirmed the finding of infringement.

The One Year Deadline for a PTAB Final Written Decision is more of a Guideline than a Rule (Oh, and the Written Description is more of a Rule than a Guideline)

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In Purdue Pharma L.P., v. Collegium Pharmaceutical, Inc., [2022-1482] (November 21, 2023), the Federal Circuit affirmed the Final Written Decision of the PTAB that claims 1–17 of U.S. Patent No. 9,693,961 were unpatentable for lack of written description and anticipation.  The patent is titled “Pharmaceutical Formulation Containing Gelling Agent” and is meant to prevent or deter the abuse of opioid analgesics by the inclusion of at least one aversive agent.

Deadline for Final Written Decision

At the outset, the Federal Circuit rejected Purdue’s argument that the Board lacked authority to issue a Final Written Decision once the deadline established by 35 U.S.C. § 326(a)(11) and 37 C.F.R. § 42.200(c) (one year plus the six-month extension) passed.

Written Description

On written description, the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.  The Federal Circuit said it has required that the specification provide sufficient blaze marks to “guide a reader through the forest of disclosed possibilities toward the claimed compound.”  The issue was whether the ’961 specification adequately disclosed the claimed polyglycolyzed glycerides (“PGGs”) as an aversive agent. The Board found the claimed formulation was not disclosed, and the Federal Circuit concluded that substantial evidence supported the Board’s finding.

Although the ’961 claims on their face do not require an aversive agent, the specification makes clear that the claims require “inclusion of at least one aversive agent” and the parties agree that the claims require the use of an aversive agent.  PGGs are identified as a possible surfactant “useful in accordance with the present invention.”  While the specification discloses that some surfactants can be gelling agents and that gelling agents can satisfy the aversive agent requirement, the parties agree that not all surfactants are gelling agents.  The specification does not say that PGGs are gelling agents.  The only time PGGs are mentioned in the specification, they are described as a surfactant, and not as a gelling agent, and surfactants generally are described as “useful in accordance with the present invention.”  In other parts of the specification, the patent recognizes that surfactants can be used completely separate from and in addition to the gelling agent.

The Federal Circuit said that “[j]ust because the specification states PGGs are useful for the invention does not suggest how PGGs are gelling agents. The disclosure of the application does not reasonably convey to those skilled in the art that the inventor had possession of the claimed drug formula containing PGGs as a gelling agent (aversive agent). In other words, there are insufficient blaze marks.” Because the anticipation finding flowed from the lack of written description in the claimed priority application, the finding of anticipation was affirmed.

Blast from the Past: In Vivo Testing is Not Required for an Actual Reduction to Practice

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In Medtronic, Inc., Medtronic Vascular, Inc., v. Teleflex Life Sciences Limited, [2022-1721, 2022-1722] (November 16, 2023) the Federal Circuit affirmed two Final Written Decisions of the PTAB that the challenged claims of U.S. Patent RE46,116 had not been shown to be unpatenable.  The patent was directed to a method for using a guide extension catheter with a guide catheter.

Medtronic alleged invalidity of the claims based upon the Itou reference.  Teleflex argued that Itou was not prior art because the claimed invention was (1) conceived prior to Itou’s filing date of September 23, 2005 (i.e., the critical date), and (2) was either (a) actually reduced to practice before the critical date or (b) diligently pursued until its constructive reduction to practice through its effective filing in May 2006.  The Federal Circuit found that the invention was constructively reduced to practice.

Unique to this case was the question whether or not in vivo testing was required for actual reduction to practice because the claims at issue are method claims reciting “advancing . . . a guide catheter . . . through a main blood vessel to an ostium of a coronary artery.” The Board found that such testing was not required, noting Medtronic “was unable to identify any legal precedent requiring in vivo performance of a claimed in vivo method to show actual reduction to practice.” The Board found that the viability of the claimed method could be verified using a physical model that replicates the anatomy in which the method would likewise be performed in vivo.”

The Board also found that the Teleflex patent was entitled to an early priority date that removed Root as a prior art reference.  This issue was eliminated by prior decisions involving related patents.