Court Can’t Change the Claim Construction After a Verdict

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In Wi-Lan, Inc. v. Apple Inc., [2014-1437, 2014-1485] (Fed. Cir. 2016), the Federal Circuit reversed the trial court’s JMOL determination of no invalidity of U.S. Patent No. RE37,802 because it was based on a post-verdict reconstruction of the claims.

The jury found the claims invalid, but on JMOL the trial court determined that, although its earlier construction of computing means does not specifically provide for a complex multiplier, a complex multiplier was nevertheless necessary because expert witnesses from both sides agreed that complex multiplies are part of the structure of a first computing means.  Since it was undisputed that such complex multipliers are absent from the prior art, the trial court granted JMOL that the claims were not invalid.

The Federal Circuit agreed with Apple that the district court’s postverdict addition of a complex multiplier requirement was a new claim construction, which the district court may not issue at the JMOL stage.  The Federal Circuit said that it is too late at the JMOL stage to argue for or adopt a new and more detailed interpretation of the claim language and test the jury verdict by that new and more detailed interpretation.  At the JMOL stage, the question for the trial court is limited to whether substantial evidence supports the jury’s verdict under the issued construction.

The Federal Circuit rejected Wi-Lan’s argument that this was a permissible clarification, rather that impermissible reconstruction. The Federal Circuit said that a trial court may “adjust constructions post-trial if the court merely elaborates on a meaning inherent in the previous construction.”  Clarification is permissible where it only makes plane what should have been obvious to the jury.

The Federal Circuit said that the district court’s JMOL of no invalidity was based on a reconstruction of the claims that went far beyond clarifying a meaning inherent in the construction or making plain what should have been obvious to the jury. Instead, the post-verdict reconstruction altered the scope of the original construction and undermined Apple’s invalidity case post-verdict.

It is Obvious to Vary Result-Effective Variables

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In In re Urbanski, [2015-1272] (Fed. Cir. 2016), the Federal Circuit affirmed the PTAB’s affirmance of the rejection on obviousness grounds of claims to a method for making an enzymatic hydrolysate of a soy fiber.

The Federal Circuit agreed with the Board that Gross and Wong related to methods of enzymatic hydrolysis of dietary fibers, are readily combinable, and that they recognize that reaction time and degree of hydrolysis are result-effective variables that can be varied in order to adjust the properties of the hydrolyzed fiber in a predictable manner.  The Federal Circuit found that substantial evidence thus supports the Board’s finding that a person of ordinary skill would have expected that, by adjusting the reaction time, the degree of hydrolysis and the properties of the fiber would be altered.

The Federal Circuit said that the prima facie case had not been rebutted.  There was no evidence that the claimed ranges of degree of hydrolysis, water holding capacity, and free simple sugar content are “critical” or “produce a new and unexpected result” as compared to the prior art.  The Federal Circuit also noted that there is also no evidence that the “variables interacted in an unpredictable or unexpected way,” which could render the claims nonobvious.

Urbanski argued that modifying the Gross process by shortening the hydrolysis time, as taught by Wong would make the Gross process inoperative for its intended purpose.  The Federal Circuit recognized that teaching away is applicable to cases involving mechanical devices or apparatus claims, but that on the record before it, the Board properly found that one of ordinary skill would have been motivated to pursue the desirable properties taught by Wong, even at the expense of foregoing the benefit taught by Gross.  Nothing in the prior art teaches that the proposed modification would have resulted in an “inoperable” process or a dietary fiber product with undesirable properties.

The Federal Circuit agreed that the claimed invention was obvious.

 

January 8

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On January 8, 1889, Herman Hollerith was issued U.S. Patent Nos. 395,781, 395,782, and 395,783, on the art of compiling statistics.  Hollerith’s cards were first used in in processing the 1890 Census.  He later founded The Tabulating Machine Company, which was one of the four predecessors of IBM.

20160108Once ubiquitous, punch cards are now relegated to employee time keeping systems by those who “punch the clock” and of course some voting system (think “hanging chad”).

Moniliform – the Right Word for the Right Shape

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When something is shaped like a string of beads, such as a beaded chain or an arrangelement of particles, the word moniliform is the perfect word to describe it.  See, for example U.S. Patent No. 7,291,392.

An example of a moniliform arrangement of particles from U..S. Patent No. 7,291,392

In fact when the string of beads configuraion forms long fibers or strands, you might have a moniliform fibriliform configuration, as was described in U.S. Patent No. 6,541,627.

On Being a Lexicographer

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Lexicography – the power to define words – is heady stuff (at least for your typical mild-mannered patent prosecutor). It would seem that this power would be most responsibly applied to words that had no meaning, rather than redefining a word with an established meaning.  Here are few examples of made up words and their meanings:

Doohickey

U.S. Patent No. 8,042,274 did not define doohickey in words, but rather instructs that a doohickey is shown in Fig. 5:

doohickey

So at least now, you will know one when you seen one.

Thingamajig

Thingamajig has not been expressly defined in any patent, but it must be a kind of disc drive system, appearing in two Seagate Technology patents (6,411,454 and 7,209,304), the latter stating:

thingamajig

an including a bonus reference to “gadget.”  Speaking of gadget:

Gadget

Before its recent appropriation by computer geeks,  “gadget” was a generic reference to a device, see in U.S. Patent No. 3,998,694, and sometimes a pejorative reference (e.g., 4,019,313 or 4,101,130).  Appearing in nearly 2000 patents, “gadget” has taken a wide variety of meanings.  In U.S. Patent No. 5,005,336 it is tool that helps turn a coconut into an envelope.

There are even devices to organize one’s gadgets: D316,502 and D312,559 and D303552, and even one to help you find them when they are lost: D726,691.  Of course gadget was the code name for the first atom bomb, making all other uses trivial in comparison.

Doodad

U.S. Patent Nos. 6,398,058 and 7,004,347 gives us a definition of doodads: “small miscellaneous items, e.g., paper clips, rubber bands, buttons, etc.” and even provides a cup 10 to hold them.  Although in U.S. Patent Nos. 6,106,300 and 6,890,179, a doodad is an “expense.”

 Widget

U.S. Patent No. 9,225,817, explains that “widget” is “a  contraction of ‘window gadget,'” and “refers to components in a graphical user interface (GUI).”  However the use predates the computer age, and the word can be found in more than 7,000 patents.

Gizmo

Gizmo is used in more than 200 patents, mostly to refer to some non-specific device.  It is apparently part of some prosecutor’s stock language, because most of the uses are along the lines of:

The words “comprising,” “including,” and “having” are always open-ended, irrespective of whether they appear as the primary transitional phrase of a claim, or as a transitional phrase within an element or sub-element of the claim (e.g., the claim “a widget comprising: A; B; and C” would be infringed by a device containing 2A’s, B, and 3C’s; also, the claim “a gizmo comprising: A; B, including X, Y, and Z; and C, having P and Q” would be infringed by a device containing 3A’s, 2X’s, 3Y’s, Z, 6P’s, and Q).

 

Claimed to a “T”

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Describing and claiming complex shapes can be very challenging.  An easy and effective method used by patent attorneys for years is to describe and claim a complex shape by analogy to a familiar shape.  The letters of the alphabet are frequently used, from A-shaped to Z-shaped, every letter of the alphabet has been used to describe a shape in a patent.

Patent attorneys have used every letter of the alphabet to describe and claim inventions.

Method to Screen Equipment Operator for Impairment Not Patent Eligible

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In Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC, [2015-1411] (December 28, 2015), the Federal Circuit affirmed that claims 8, 9, and 11–18 of U.S. Patent No. 7,394,392 were  invalid as drawn to patent-ineligible subject matter under 35 U.S.C. § 101.  The claims were directed to a method to screen an equipment operator for impairment (and a corresponding system).

The Federal Circuit applied the two step Mayo test, determining whether the claims at issue are directed to a patent-ineligible concept, and if so, examining the elements of the claim, individually and as an order combination, to determine whether it contains an “inventive concept” sufficient to “transform” the claimed abstract idea into a patent eligible application.  The Federal Circuit agreed that step 1 was met, the claims being drawn to the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment.  The Court noted:

None of the cl aims at issue are limited to a particular kind of impairment, explain how to perform either screening or testing for any impairment, specify how to program the “expert system” to perform any screening or testing, or explain the nature of control to be exercised on the vehicle in response to the test results.

The Federal Circuit rejected Vehicle Intelligence’s argument that it did not totally preempt the field, noting that “while assessing the preemptive effect of a claim helps to inform the Mayo/Alice two-step analysis, the mere existence of a non-preempted use of an abstract idea does not prove that a claim is drawn to patent-eligible subject matter.”

The Federal Circuit also agreed that the claims at issue fail the second step of the Mayo test, finding nothing in the claims sufficient to transform the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment into a patent-eligible application of that idea.  The Federal Circuit further rejected the fact that the method was tied to a particular apparatus, nothing that post-Mayo/Alice, this is no longer sufficient to render a claim patent-eligible.

Vehicle Intelligence attempted to identify inventive concepts, but the Federal Circuit found these to general. The claims merely state the abstract idea of testing an equipment operator for impairments using an unspecified “expert system” running on equipment that already exists in various vehicles, and found that was not enough.

 

 

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Belief in Invalidity Does Not Prevent Liability for Inducement, Lack of Infringement Does

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In Commil USA, LLC v. Cisco Systems, Inc., [2012-1042] (December 28, 2015), the Federal Circuit considered the case after the Supreme Court held that belief that the patent is invalid does not negate intent to induce infringement.  Because it reversed and was remanding the case for a new trial on damages, the Federal Circuit chose not to address Cisco’s arguments that U.S. Patent No. 6,430,395 was not infringed.  Because the Supreme Court decision eliminated the need for a new trial, the Federal Circuit address Cisco’s non-infringement argument, finding them persuasive.

The district court construed the claims as requiring “for each connection of a mobile unit with a Base Station, running at the Base Station a copy of the low-level protocol supportingonly that connection and running at the Switch a corresponding separate copy of the high level protocol supporting only that connection.  The Federal Circuit was persuaded that Cisco’s system employs a single copy of the protocol to support all the connected devices. In view of this, the Federal Circuit found that a reasonable jury could not have found that Cisco’s devices run a separate copy of the protocol for each connected device, precluding liability under either direct or inducement theories.

While Cisco’s belief that the patent was invalid did not save it from liability for inducement, the fact that it was not infringing in the first place, did.

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