“Upper” and “Lower” Claim Limitations Leaves Patent Owner Feeling Down

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The Tops Company, Inc. sued Koko’s Confectionery & Novelty for infringement of U.S. Patent No. 6,660,316, and for trade dress infringement.

The claims of the ‘316 patent required upper and lower chambers:

However the district found on summary judgment that while Koko’s Squeezy Squirt Pop had two chambers, they were not upper and lower chambers, nor were they equivalent to upper and lower chambers.

Directional references in claims such as upper and lower, left and right, top and bottom, etc., can cause problems are best avoided unless the directions are important. While Topps may still prevail on appeal, the wording of the claims has complicated their enforcement efforts.

Inventorship, Unlike a Claim, is a “Nose of Wax”

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In Egenera, Inc. v. Cisco Systems, Inc., [2019-2015, 2019-2387] (August 28, 2020), the Federal Circuit affirmed the district court’s claim construction but vacated the invalidity judgment of U.S. Patent No. 7,231,430, based on judicial estoppel and remanded for further proceedings.

Prior to claim construction, during an inter partes review proceeding, Egenera separately petitioned the USPTO to remove one of the eleven listed inventors from the ’430 patent (the presence of the inventor prevented Egenera from antedating the cited prior art). Following the district court’s claim construction and a trial on inventorship, Egenera asked the district court to add the removed inventor back to the patent (because the removed inventor was found to have conceived one of the claim limitations. The district court determined that judicial estoppel prevented Egenera from relisting the inventor and held the ’430 patent invalid for failing to name all inventors.

The Patent Act allows a listing of inventors to be corrected either upon petition to the Director (35 U.S.C.§ 256(a)), or upon court order, see §256(b)), and a patent cannot be invalidated if inventorship can be corrected instead. The Federal Circuit noted that its precedent provides that “error” in §256 includes “all varieties of mistakes—honest and dishonest”—rather than only unintentional inaccuracy. § 256 is a savings provision, functioning to prevent invalidation when correction is available; it is the inequitable-conduct rules that provide a safety valve in the event of deceit.

The Federal Circuit held that §256 does not exclude “considered acts,” or even “deceptive intention,” from the meaning of “error.” “Error” is simply the incorrect listing of inventors.

The district court here concluded that Egenera was judicially es-topped from adding Mr. Schulter’s name back to the patent after it held a trial establishing him to be an inventor—thereby invalidating the patent for improper inventorship. Judicial estoppel is an equitable doctrine that prevents a litigant from taking a litigation position inconsistent with one successfully asserted in an earlier court proceeding. The purpose of the doctrine is to protect the integrity of the judicial process. A a court examines (1) whether a party’s earlier and later positions are “clearly inconsistent”—that is, “mutually exclusive”; (2) whether the party “succeeded in persuading a court to accept” the earlier position; and (3) whether the party would “derive an unfair advantage or impose an unfair detriment” on the other side if not estopped.

Because inventorship is a complex legal conclusion that depends on claim construction, once claim construction was performed, the Federal Circuit found that it was not inconsistent to correct inventorship after the claims were construed. Thus, the district court erred in determining that the first factor of clearly inconsistent positions was met.

The Federal Circuit also found that Engera did not meet the second factor, persuading the court to accept its earlier position. The Federal Circuit observed that no persuasion was involved in getting the USPTO to remove the inventor. Finally the Federal Circuit found no unfair advantage to Engera.

Concluding that the district court legally erred as to each factor, the Federal Circuit held that the district court abused its discretion by applying judicial estoppel, vacating the district court’s invalidity judgment and the accompanying cost award, and remanding for further proceedings.

Pointed Tip is Not a Substantially Flat Surface

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In Neville v. Foundation Constructors, Inc., [2020-1132] (August 27, 2020), the Federal Circuit affirmed summary judgment of the asserted claims of U.S. Patent Nos. 7,914,236 and 9,284,708 relating to foundation piles.

The parties disputed the construction of two claim limitations relating to the “end plate,” which separate the claims at issue into two groups. The first set of claims require an “end plate having a substantially flat surface disposed perpendicular to the centerline of the tubular pile. The second set of claims require “at least one protrusion extending outwardly from the end plate.”

The Patented Product vs. Accused Product: Can you find the end plate with the flat surface?

The district court granted summary judgment of non-infringement as to accused products having finding the accused products “lack (1) an end plate having a substantially flat surface and (2) an end plate with at least one protrusion extending outwardly from it. The district court reasoned that the plain meaning of “end plate having a substantially flat surface” did not encompass “an interior surface facing into the rest of the pile tip.” The district concluded that the patent applicant intended the “substantially flat surface” of the end plate to refer to the side of the end plate facing outward, citing each of the patent figures, as well as from how Plaintiff used the phrase ‘substantially flat surface’ to distinguish the claims from the prior art.

The Federal Circuit agreed that read in light of the specification, the phrase “substantially flat surface disposed perpendicular to the centerline of the tubular pile” does not refer to any interior-facing surface. As suggested by the word “end,” the relevant surface of the end plate is the external one. The Federal Circuit found that the specification reinforces the view that the invention is directed to the exterior surface of the end plate as being “substantially flat.” The Federal Circuit found that the prosecution history likewise confirms that the substantially flat surface of the end plate does not refer to an interior surface.

For similar reasons, the Federal Circuit agreed with the district court that the accused pile tip does not include “at least one protrusion extending outwardly from the end plate.” Nothing in the specification remotely suggests that, contrary to the plain meaning of a “protrusion” and “ex-tending outwardly,” the protrusion could be an indistinguishable part of the end plate from which it protrudes.

The Federal Circuit found that the district court correctly ruled that the “single, conically-shaped” end piece of the accused pile tips does not meet the claimed “protrusion extending outwardly from the end plate.

Clear Claim Language Trumped Written Description in Construction

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In Baxalta Inc. v. Genentech, Inc., [2019-1527] (August 27, 2020), the Federal Circuit vacated the district court’s judgment of non-infringement of the asserted claims of U.S. Patent No. 7,033,590 because the district court erred in construing the terms “antibody” and “antibody fragment,” and remanded.

Generally, antibodies are Y-shaped structures comprising two heavy chains (H chains) and two light chains (L chains). Baxalta argued “antibody” should be construed as a molecule having a specific amino acid sequence comprising two heavy chains (H chains) and two light chains (L chains). Genentech argued “antibody” should instead be construed as an immunoglobulin molecule, having a specific amino acid sequence that only binds to the antigen that induced its synthesis or very similar antigens, consisting of two identical heavy chains (H chains) and two identical light chains (L chains).

The district court determined that the term antibody standing alone without other structural terms can have different meanings to those skilled in the art, and that both Baxalta’s and Genentech’s proposed constructions were acceptable definitions. However, the district adopted Genentech’s narrower definition based on an express definition in column 5 of the patent.

The Federal Circuit said that contrary to the district court’s construction, nothing in the plain language of claim 1 limits the term “antibody” to a specific antibody consisting of two identical heavy chains and two identical light chains or an antibody that only binds the antigen that induced its syn-thesis or very similar antigens. The dependent claims confirm that “antibody” is not so limited.

The Federal Circuit said that the district court’s construction which excludes explicitly claimed embodiments is inconsistent with the plain language of the claims. The district court rejected this inconsistency, suggesting that the proper result here is “invalidation of the inconsistent claims rather than an expansion of the independent claims.” The plain language of these dependent claims weighs heavily in favor of adopting Baxalta’s broader claim construction, and rejected the district court’s construction which renders dependent claims invalid.

As to the definition in the specification that the district court found limiting, the Federal Circuit said that when considered in the context of the remainder of the written description and the claims, it read the excerpt in column 5 as a generalized introduction to antibodies rather than as a definitional statement. The Federal Circuit also noted that these general statements do not include terms we have held to be limiting in other contexts such as “the present invention includes . . .” or “the present invention is . . .” or “all embodiments of the present invention are . . . .” The Federal Circuit further disagreed that the prosecution history supported the narrow construction, recognizing that that the prosecution history “often lacks the clarity of the specification and thus is less useful for claim construction purposes.”

The construction of antibody fragment followed the construction of antibody, and because the district court erred in construing the terms “antibody” and “antibody fragment” and entered judgment of non-infringement based on its erroneous constructions, the Federal Circuit vacated and remand for further proceedings consistent with the correct constructions of the terms.

Local Rules, unlike the Pirate Rules, Are More than Mere Guidelines, and Ignoring Them Can Cause a Loss of Rights

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In Sowinksi v. California Air Resources Board, [2019-1558] (August 21, 2020), the Court of Appeals for the Federal Circuit affirmed the dismissal of Sowinski’s Complaint for infringement of U.S. Patent No. 6,601,033 on grounds of res judicata.

In 2015 Sowinski sued the California Air Resources Board (“CARB”) and several individual and corporate defendants associated with CARB in California Superior Court for among other things infringement of U.S. Patent No. 6,601,033.  After the case was removed to the United States District Court for the Central District of California, it was dismissed with prejudice and without leave to amend, because Sowinski failed to file a response to defendants’ motion to dismiss.  The dismissal was affirmed by the Federal Circuit. In 2018 Sowinski again filed suit on the ‘033 patent, limiting his damages claim to the period after dismissal of the 2015 action, and the district court dismissed it on grounds of res judicata.

The Federal Circuit said that res judicata arises when the prior case or claim was previously tried and the merits were adjudicated. Sowinski argued that the case was not a final judgment on the merits, because the dismissal was based on the technicality of a local deadline.  However, there is precedent that dismissal for failure to prosecute should be treated as an adjudication on the merits for purposes of preclusion.  Further, FRCP 41(b) states that a dismissal for failure to prosecuting or comply with the FRCP or a court order can operate as an adjudication on the merits.  Thus the Federal Circuit concluded that the district court properly precluded the claim.

As to Sowinski’s claim for damages subsequent to the dismissal, the Federal Circuit noted that preclusion does not apply to new or changed products or methods, but does apply when the accused products or methods are essentially the same.

Although Dr. Sowinski stresses the inequity that he did not obtain resolution of the question of infringement, CARB pointed out that he had the opportunity to do so. The Federal Circuit said that application of preclusion encourages reliance on judicial decisions, bars vexatious litigation, and frees the courts to resolve other disputes.

Local Rules, unlike the Pirate Rules in Pirates of the Caribbean, are more than mere guidelines, and ignoring them can cause a loss of rights.

Constitutional Rights — Use Them or Lose Them

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In Security People, Inc. v. Iancu, [2019-2118] (August 20, 2020), the Federal Circuit affirmed the dismissal of Security People’s challenge to the constitutionality of the cancellation of its U.S. Patent No. 6,655,180 in an inter partes review.

The district court dismissed Security People’s complaint for lack of subject matter jurisdiction, noting that the district court lacked subject matter jurisdiction because Congress established a specific means for judicial review of IPR decisions, rendering collateral APA suits in district court inappropriate.  Security People alleged two errors in this decision: First, the Board lacks authority to consider constitutional claims, and thus it could not then assert a constitutional challenge for the first time on appeal because retroactivity challenges raise issues requiring factual resolution. Second, Security People argued that its challenge was not yet ripe until cancellation of its patent claims, which required affirmance of the Board’s decision by this court, and that it had to exhaust those non-constitutional claims before raising its constitutional claims.

The Federal Circuit disagreed.  The Federal Circuit said that Security People could have and should have raised constitutionality during the proceeding, observing that it is not unusual for an appellate court reviewing the decision of an administrative agency to consider a constitutional challenge to a federal statute that the agency concluded it lacked authority to decide. The presence of disputed factual questions does not change that calculus.

The Federal Circuit also found that Security People was wrong about when the USPTO’s action became final, noting that the USPTO’s decision making process was complete after issuance of the Final Written decision.

The moral of the story is that you cannot wait to assert you Constitutional rights, and must do so at the earliest possible instance.  It is better to be told that your assertion is too early, than to find out latter that it was too late.

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Standard-Essentiality is a Question for the Factfinder

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In Godo Kaisha IP Bridge 1 v. TCK Communication Technology, [2019-2215] (August 4, 2020), the Federal Circuit affirmed the jury determination of infringement based on patentee’s theory that (1) the patent claims are essential to mandatory aspects of the Long-Term Evolution (“LTE”) standard; and (2) the accused products practice that standard.

Defendant argued in a JMOL that the district court should have decided the question of the claims’ essentiality to the standard in the claim construction context and that the court needed to decide that question as a matter of law. The Federal Circuit found no error in the submission of these questions to the jury in the context of an infringement trial.

The Federal Circuit agreed that standard-essentiality is a question for the factfinder. The Federal Circuit added that determining standard-essentiality of patent claims during claim construction, moreover, hardly makes sense from a practical point of view. Essentiality is, after all, a fact question about whether the claim elements read onto mandatory portions of a standard that standard-compliant devices must incorporate. This inquiry is more akin to an infringement analysis (comparing claim elements to an accused product) than to a claim construction analysis (focusing, to a large degree, on intrinsic evidence and saying what the claims mean).

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In Illumina, Inc. v. Ariosa Diagnostics, Inc., [2019-1419] (August 3, 2020), the Federal Circuit modified the Court’s original opinion on March 17, 2020.  The Federal Circuit reversed the district court’s determination that claims 1–2, 4–5, and 9–10 of U.S. Patent 9,580,751 and claims 1–2 and 10–14 of U.S. Patent 9,738,931 were invalid under 35 U.S.C. § 101 as directed to an ineligible natural phenomenon.

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Reason for Claim Amendment Was Tangential to Equivalent, Doctrine of Equivalents Applies

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In Bio-Rad Laboratories, Inc. v. 10x Genomics Inc., [2019-2255, 2019-2285] (August 3, 2020), the Federal Circuit affirmed the judgment of infringement of U.S. Patent No. 8,889,083 and the entirety of the jury’s damages award, but reversed the district court’s construction of the asserted claims of U.S. Patent No 8,304,193 and 8,329,407 and vacated the judgment of infringement of those patents. The Federal Circuit remanded for a new trial on the issue of whether 10X’s accused products infringe the ’407 and ’193 patents under the proper claim construction.

The Federal Circuit found that the district court properly denied JMOL that the claims were not infringed under the Doctrine of Equivalents.  The Federal Circuit noted two limitations on the Doctrine of Equivalents: Prosecution History Estoppel, and Vitiation – giving such a broad range of equivalents, that the limitation is effectively eliminated.

Prosecution history estoppel arises when a patent applicant narrows the scope of his claims during prosecution for a reason substantially relating to patentability, giving rise to a presumption of surrender of all equivalents within the territory between the original claim and the amended claim.  This presumption can be overcome if the patentee can show that one of the following “exceptions” to prosecution history estoppel applies: (1) the rationale underlying the amendment bears no more than a tangential relation to the equivalent in question; (2) the equivalent was unforeseeable at the time of the application; or (3) there was some other reason suggesting that the patentee could not reasonably be expected to have described the equivalent. This presumption can be overcome if the patentee can show that one of the following “exceptions” to prosecution history estoppel applies: (1) the rationale underlying the amendment bears no more than a tangential relation to the equivalent in question; (2) the equivalent was unforeseeable at the time of the application; or (3) there was some other reason suggesting that the patentee could not reasonably be expected to have described the equivalent.

The district court held that prosecution history estoppel does not apply in this case because the amendment at issue was only tangentially related to the accused equivalent.  The court reasoned that, during prosecution, the inventors sought to distinguish the microchannels in their system from fluorinated prior art microchannels that would react with the carrier fluid. In the district court’s view, the objectively apparent reason for the amendment was to distinguish fluorinated microchannels from microchannels that had no fluorinated properties. The district court concluded that an accused product like 10X’s —having minute or negligible quantities of fluorine that have no function in the product and do not react with the microchannels—could meet the “non-fluorinated” limitation under the doctrine of equivalents.  The Federal Circuit agreed, noting the inventors surrendered microchannels coated with fluorine “for a purpose—not those containing de minimis amounts of fluorine that have no effect on how the microchannel functions in the system.”  The crux of the tangentiality inquiry remains the patentee’s objectively apparent reason for the narrowing amendment as discernible from the prosecution history record, and the prosecution history record reveals that the reason for the amendment was to distinguish microchannels that reacted with carrier fluids.  Thus prosecution history does not apply.

Regarding vitiation, the Federal Circuit explained that vitiation is not an exception or threshold determination that forecloses resort to the doctrine of equivalents, but is instead a legal conclusion of a lack of equivalence based on the evidence presented and the theory of equivalence asserted.  On appeal, 10X argued that the doctrine of equivalents is unavailable to Bio-Rad because “fluorinated” and “non-fluorinated” are “diametric opposites” and because a fluorinated microchannel is the “antitheses” of a non-fluorinated microchannel.  The Federal Circuit found that despite some surface appeal, this argument did not hold up under even minimal scrutiny.

The Federal Circuit said that the appropriate inquiry is whether a reasonable juror could have found that a negligibly-fluorinated microchannel performs the same function, in the same way, and achieves the same result, as a non-fluorinated microchannel. Based on the evidence presented at trial — including expert testimony — the Federal Circuit found that the district court correctly concluded that a reasonable juror could find that a 0.02% Kynar-containing microchannel is insubstantially different from a non-fluorinated microchannel.

Regarding infringement of the ’407 and ’193 patents, the issues was whether or not the claim preamble was a limitation.  10X argued that the district court incorrectly treated portions of the preamble as not being a claim limitation, and Federal Circuit agreed.  The Federal Circuit acknowledged that in TomTom, Inc. v. Adolph, 790 F.3d 1315, 1324 (Fed. Cir. 2015)), it found that part of the preamble was a claim limitation and another part of the claim limitation was not.  The Federal Circuit said that crucially, unlike TomTom, the preamble in this case cannot be neatly packaged into two separate portions.  The Federal Circuit correctly held that portions of the preamble provide antecedent basis for the use of terms in the body of the claim, but disagreed that these limiting terms can be read separately from the remainder of the preamble. The language relied upon for antecedent basis in the preamble at issue was intertwined with the rest of the preamble.  The Federal Circuit thus vacated the finding of infringement and remanded for determination of infringement under the correct, narrower construction.

Federal Circuit to PTAB: Show Your Work

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In Alacritech, Inc., v. Intel, [2019-1467, 2019-1468] (July 31, 2020) the Federal Circuit vacated the Board’s obviousness determination as to claims 41–43 of U.S. Patent No. 8,131,880  because the Board did not adequately support its finding that the asserted prior art combination teaches or suggests a limitation recited in claims, and remanded for further proceedings regarding those claims.

The ’880 patent relates to computer networking, and is specifically directed to offloading certain network-related processing tasks from a host computer’s central processing unit (CPU) to an “intelligent network interface card” (INIC). According to the ’880 patent, one of the tasks that can be offloaded from the CPU to the INIC is the reassembly of data from packets received by the host computer from the network.

The Federal Circuit said that to support Federal Circuit review, the Board is obligated to provide an administrative record showing the evidence on which the findings are based, accompanied by the agency’s reasoning in reaching its conclusions.  The Federal Circuit said that it does not require perfect explanations, and it will uphold a decision of less than ideal clarity if the agency’s path may reasonably be discerned.  However, the Federal Circuit found that the Board’s analysis of the disclosure of the reassembly limitations in claims 41–43 falls short of that which the APA and our precedent require.

The Federal Circuit found that the Board’s analysis did not acknowledge the parties’ dispute over where the reassembly occurs, much less explain how the prior art teaches or suggests reassembly in the network interface. As such, the Federal Circuit said that it could not reasonably discern whether the Board followed a proper path in determining that the asserted prior art teaches or suggests the reassembly limitations, and by extension, that the subject matter of claims 41–43 would have been obvious.  The Federal Circuit further noted that because the Board’s reasoning appears to be untethered to either party’s position, it could not infer that the Board’s obviousness determinations flowed directly from its rejection of the patent owner’s arguments, or adoption of the Petitioner’s arguments.

The Federal Circuit vacated the Board’s obviousness determination as to claims 41–43 and remanded for further proceedings consistent with this opinion.   

Posted in IPR