Patent Applicants: Anything You Say Can and Will Be Used Against You in a Court of Law

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In Indacon, Inc. v, Facebook, Inc., [2015-1129] (June 6, 2016), the Federal Circuit affirmed the district court’s claim construction, leaving intact the parties stipulation of non-infringement based upon that construction.

At issues was U.S. Patent No. 6,834,276, claiming a system for replacing link terms with links.  Facebook argued that the claims of the patent required all of the link terms with links, while Indacon argued that the claims did not require replacement of all of the link terms.

The Federal Circuit began with the observation that “link term” these terms had no plain or established meaning to one of ordinary skill in the art, and as, they ordinarily
cannot be construed broader than the disclosure in the specification.  The Federal Circuit then noted that the specification explains that “[t]he link module
enables association of any selected link term with any of the plurality of files in the selectable database.” Which the Federal Circuit took to mean all of the selected link terms, and then pointed out in the specification, language that it found reinforced the idea that all of the link terms were replaced.

The nail in the coffin, however, was the “additional support” the Federal Circuit found in the prosecution history, where the patent owner argued that

Applicants’ invention provides a user with a linking
control panel in which the user can designate
a specific file to be linked with every instance of a
specified word (and any associated alias terms) in
the database. After the index is generated, the
program displays every instance of that custom
term (and its alias terms, if any) as a hyperlink to
the designated file. . . . These innovations distinguish
Applicants’ invention from [the prior art].

Indacon argued that because the references to “every instance” in the prosecution history were not the “critical contrast that applicants were trying to make over the cited reference,” these statements cannot form the basis for disavowal.  However the Federal Circuit did not need to make a finding of disavowal, given the fact that the link claim terms lacked a plain or ordinary meaning in the art, and because the specification suggested limiting the scope of these claim terms to allowing each instance of a defined term to be identified and displayed as a link.  Indacon’s attempts to use claim differentiation were also rejected because the claims were not otherwise identical in scope, and in any event, it “cannot enlarge the meaning of a claim beyond that
which is supported by the patent documents.”

 

 

Incorrect Position on Infringement is not a Defense to Inducement

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In Warsaw Orthopedic, Inc. v. NuVasive, Inc., [2013-1576, 2013-1577] (June 3, 2016), on vacatur and remand from the Supreme Court (for further consideration in light of Commil) the Federal Circuit reaffirmed its the district court’s judgment with respect to induced infringement of U.S. Patent No. 7,470,236 and reinstated its earlier judgment in other respects.

The only question was whether there was substantial evidence for the jury to conclude that the counterclaim defendant, MSD, induced infringement of the ’236 patent.  The Federal Circuit reviewed the law of inducement, noting that under Global-Tech and Commil proof of induced infringement requires not only knowledge of the patent, but also proof the defendant knew the induced acts were infringing, and that Commil reaffirmed that willful blindness can satisfy the knowledge requirement for active inducement. The Federal Circuit further said that Global-Tech also held that knowledge of infringement can be inferred from circumstantial evidence.

At issue was the claim limitation:

increasing the intensity level of said stimulus signal until said predetermined neuro-muscular response is elicited by said stimulus pulse and stopping the emission of said stimulus signal immediately after said predetermined neuromuscular response is detected.

MSD argued that no reasonable jury could have inferred that it had knowledge of (or was willfully blind to) its customers’ infringement of the ’236 patent, arguing that under its claim construction, the acts were not ifnringement.  The Federal Circuit found that MSD’s position was “clearly inconsistent” with the claim construction.  The Federal Circuit said that the undisputed evidence before the jury showed that, immediately
after nerve stimulation, the NIM-Eclipse device stopped “stimulus pulses” within the meaning of the claims. The Federal Circuit found that there is no support in the language of claim or its prosecution history to support MSD’s construction.

The Federal Circuit said that given the strength of the evidence presented, a reasonable jury could have concluded that MSD must have known, or was willfully blind to the fact that its device met the properly construed claims, and in particular the “stopped” limitation.

After Commil, a belief of invalidity was no longer a defense of inducement,  Now, after NuVasive, an incorrect belief that the actions do not infringe also is not a defense to infringement.  The Federal Circuit did not appear concerned with the reasonableness of MSD’s position, just its correctness,  Thus, if a party induces conduct that is eventually found to infringe a valid patent, that party had induced infringement if it knew about the patent.

 

Entitled to Narrow Claim Construction

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In Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC, [2015-1425, 2015-1438] (May 31, 2016), the Federal Circuit agreed that the claim term “communications path” did not include wireless communications paths, in part because the title of the patents referenced “Telephone Lines.”  The Federal Circuit pointed to its past use of title to construe claims: Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1557 (Fed. Cir. 1995); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 780 (Fed. Cir. 1985).

However, in Pitney Bowes Inc. v. Hewlett-Packard Company, —F.2d. — (Fed. Cir. 1999), the Federal Circuit was critical of the district court’s use of the title (and in particular the Examiner’s amendment of the title during prosecution) in construing the claims.  The Federal Circuit said that the purpose of the title is not to demarcate the precise boundaries of the claimed invention but rather to provide a useful reference tool for future classification purposes, and quipped “if we do not read limitations into the claims from the specification that are not found in the claims themselves, then we certainly will not read limitations into the claims from the patent title.”

The Federal Circuit went on, saying: “[t]he near irrelevancy of the patent title to claim construction is further demonstrated by the dearth of case law in which the patent title has been used as an aid to claim construction.” The Federal Circuit could only find one case the Exxon Chemical case it cited today in Ruckus Wireless.  The Federal Circuit found that the fact that “the patent title has only been mentioned once by this court in the context of claim construction and, even then, merely to make an illustrative point in one sentence, makes a powerful statement as to the unimportance of a patent’s title to claim construction.”

The patent’s title is used in claim construction, but it should not be the primary source of understanding the claim language.

 

Canons of Claim Construction to the Rescue

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In Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC, [2015-1425, 2015-1438] (May 31, 2016), the Federal Circuit affirmed the district court’s claim construction and resulting judgment of non-infringement.

At issue was whether U.S. Patent Nos. 5,912,895, 6,327,264, and 6,587,473 directed to for providing access to a local area network (LAN) from a relatively distant computer, and more particularly whether “communications path” is these patents was limited to wired paths, or whether communications path also included wireless paths.

The Federal Circuit first confirmed that the district court relied only on intrinsic evidence to construe the term “communications path,” and thus its review of that construction was de novo.

The Federal Circuit found no intrinsic or extrinsic evidence to support IWS’s
assumption that a person of ordinary skill at the time of invention would have understood the plain and ordinary meaning of “communications path” to include wireless communications.  The Federal Circuit observed:

  1. The title of the patents indicates that they are directed to “Communicating Information Packets Via Telephone Lines.”
  2. The specification describes “[t]his invention” as one “particularly
    concerned” with “two wire lines such as telephone
    subscriber lines.”
  3. Every embodiment described in the specification utilizes a telephone
    wire, and when the specification clarifies that the full breadth of the invention is not limited to the expressed embodiments, it declares only that the patents may also
    reach any wired connection.
  4. IWS did not present—nor did the district court consult—any extrinsic evidence, such as dictionaries, trade literature, expert testimony, or any other evidence showing that “communications path” was a term of art or otherwise understood to include wireless communications at the time of invention.

The Federal Circuit also found IWS’s claim differentiation arguments unpersuasive, because they did not necessarily broaden the independent claims to include wireless, as opposed to other forms of wired connections.

Finally, the Federal Circuit turned to the “canons” of claim construction, and in particular to the cannon that, “[i]f, after applying all other available tools of claim construction, a claim is ambiguous, it should be construed to preserve its validity.”  Applying this canon, the Federal Circuit noted that if the claims were not limited to wired communication paths, it would “would likely render the claims invalid for lack of written description.”  The Federal Circuit thus concluded that canon favoring constructions that preserve claim validity therefore counsels against construing “communications path” to include wireless communications.

The Federal Circuit thus affirmed the district court’s claim construction and its judgment of non-infringement.