In Asmark Danmark A/S v. CMI USA Inc., [2016-1026, 2016-1183] (December 6, 2016), the Federal Circuit affirmed the district court’s rulings on infringement,
invalidity, and damages, but remanded as to the injunction insofar as it covered conduct of Cooler Master (who was not a party) that goes beyond abetting a new violation by CMI.

The Federal Circuit said that the standards for reaching conduct by persons
not adjudicated liable for the underlying wrong, reflected in Federal Rule of Civil Procedure 65(d), are highly fact specific, and the Federal Circuit said that a determination of the propriety of the injunction’s reach “would benefit from further findings and, if sought and needed, further record development.”

The district court granted the prevailing patent owner’s motion for an injunction against both CMI and Cooler Master, even though Cooler Master had dismissed as a party.
Cooler Master appealed the injunction, and rejoined as a party.  Cooler Master argued that its dismissal with prejudice precluded the district court from subjecting Cooler Master to the injunction’s obligations, and that in any event the injunction is too broad in scope insofar as the injunction reaches Cooler Master’s conduct (sale, importation, etc., involving the products other than conduct that abets a new violation by CMI, the only party adjudicated liable for infringement.

The Federal Circuit said that Cooler Master did not argue that the district
court lacked personal jurisdiction; that Cooler Master lacked notice
or an opportunity to be heard; or that the injunction is improper under eBay, or because Cooler Master does not sufficiently threaten to engage in the covered conduct. Cooler Master’s complaint was that the challenged obligations imposed on Cooler
Master were improper for reasons it could invoke if they were imposed through contempt.

The Federal Circuit rejected Cooler Master’s contention that it could not be enjoined because the dismissal with prejudice was an adjudication that has claim-preclusive effect. While the premise was correct, the “claim” covered by the dismissal, which concerned Cooler Master’s pre-dismissal conduct, which was different from the conduct subject to the injunction, which is Cooler Master’s future conduct.

The fundamental principle relevant to appellants’ narrower, scope objection to the injunction was that an injunction may not “make punishable the conduct of persons who act independently and whose rights have not been adjudged according to law.  However, the Federal Circuit said that an injunction may reach certain conduct by persons not held liable where the conduct is not undertaken “independently” of the persons who have been held liable.  The injunction imposed two sorts of obligations
on Cooler Master—it restricts conduct by Cooler Master that abets a new violation by CMI; but  it also restricts conduct by Cooler Master that does not abet a new violation by CMI.  The Federal Circuit found that there is a there is a current live dispute about the permissibility of barring Cooler Master from engaging in U.S.-focused activities involving the infringing products other than through CMI.  The Federal Circuit did not think it advisable to resolve the issue of the proper scope of the injunction without a fuller picture of the facts described by the district court, so it remanded the case for further development of the record, while leaving the injunction intact.

In In re Nuvasive, Inc., [2015-1672, 2015-1673] (November 9, 2016), the Federal Circuit reversed one of two PTAB decisions because the patent owner was not given adequate notice of the grounds of invalidity asserted against the patent.  The Federal Circuit said that the Board’s ultimate reliance on material not adequately identified by petitioner in the cited reference, together with the Board’s refusal to allow NuVasive to respond
fully once that material was called out, violated NuVasive’s rights under the Administrative Procedure Act.

The Federal Circuit described the Board’s conduct:

NuVasive objected to Medtronic’s argument regarding

Michelson’s Figure 18, which it contended was a new ground of invalidity asserted for the first time on reply. It requested leave to file motions to strike or, alternatively, surreplies, which the Board denied. NuVasive also attempted to address the matter at oral argument, but the Board refused to allow NuVasive to make substantive arguments in response. When Medtronic made arguments relating to Michelson’s Figure 18 in its rebuttal time, NuVasive objected again, but the Board assured NuVasive that it understood NuVasive’s position and would consider the propriety of Medtronic’s arguments when making a final decision.

Under the Administrative Procedure Act, the Federal Circuit must “hold unlawful and set aside agency action . . . not in accordance with law [or] . . . without observance of procedure required by law.” 5 U.S.C. § 706. A patent owner is undoubtedly entitled to notice of and a fair opportunity to meet the grounds of rejection, based on due-process and APA guarantees.   For a formal adjudication like the inter partes review considered here, the APA imposes particular requirements on the PTO: The agency must timely inform the patent owner of the matters of fact and law asserted, 5 U.S.C. §554(b)(3),
must provide all interested parties opportunity for the submission and consideration of facts and arguments and hearing and decision on notice, 5 U.S.C. §554(c), and must allow a party to submit rebuttal evidence as may be required for a full and true disclosure of the facts, 5 U.S.C. § 556(d).

The Federal Circuit said that although the Board is not limited to citing only portions
of the prior art specifically drawn to its attention, in this case it is clear that the Board treated Michelson’s Figure 18 as an essential part of its obviousness findings
identifying claim elements in the prior art.  Under the APA’s standards, NuVasive was entitled to an adequate opportunity to respond to the asserted facts about Michelson. And under the APA’s fact-specific standard, common sense, and this court’s precedent, that entitlement was not lessened in this case by virtue of the opportunity NuVasive had to respond to other factual assertions about Michelson.

In one of the IPRs the Federal Circuit found that the Notice was adequate, based upon the way that the reference  was described in the Petition, but in the other there was no notice before NuVasive filed its patent owner response.  It was only after the petitioner’s reply that NuVasive as given fair notice, but at no point after the Reply did the Board give NuVasive the required opportunity to respond to that point.

In REG Synthetic Fuels, LLC v. Neste Oil Oyj, [2015-1773] (November 8, 2016), the Federal Circuit affirmed-in-part, reversed-in-part, vacated-in-part, and remanded the PTAB’s unpatentability determinations or claims U.S. Patent No. 8,231,804 directed to paraffin compositions
containing primarily even-carbon-number paraffins, and the Board’s exclusion of certain REG exhibits.

REG complained that the allegedly anticipatory reference discloses area percentages rather than the claimed weight percentages, and petitioners conversion of the area percentages to weight percentages was unreliable.  The Federal Circuit agreed with Petitioner that the conversion was reliable, relying in part upon REG’s own expert who agreed that the conversion could be calculated, concluding that substantial evidence supported anticipation.

With respect to anticipation by other claims, the Federal Circuit found that REG had successfully antedated the allegedly anticipating reference based on admitted exhibits, and exhibits that the Board improperly excluded.   With respect to the excluded exhibits, the Board partially excluded emails with a third party in which the inventor disclosed his conception of the invention on grounds of hearsay.  However, the significance of the email was that they were written, not their content, and thus the Federal Circuit found that the email should not have been excluded.

The Federal Circuit reversed the exclusion of evidence, and based upon the evidence of conception in that improperly excluded evidence, concluded that REG has successfully antedated the reference, and reversed the finding of anticipate.

Edmund C. Rogers, a well-known patent attorney in St. Louis, and a past president of the AIPLA, would often muse at lunch, “when does meat tenderizer stop working?”  A similar question might be posed about any of the qualifying language we lawyers pack into our applications and other legal writings.  In two cases this year, the Federal Circuit addressed to what the qualifications “in the preferred embodiment” and “the present invention” apply.

In Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312 [119 USPQ2d 1290] (Fed. Cir. 2016), the Federal Circuit (O’Malley, Plager and Wallach) rejected Stryker’s arguments that the introductory clause “in the preferred embodiment” applies to not only to the sentences in which it is located, but also to the entirety of the passage. Thus it is error to import the “essentially midway” language from the specification in the claim.  The Federal Circuit disagreed, finding that “context reveals that such introductory clauses limit only the sentences in which they are located in this case.”

In Unwired Planet, LLC v. Apple Inc., 119 USPQ2d 1517 (Fed. Cir. 2016), the Federal Circuit (Moore, Bryson and Reyna), rejected the District Court’s determination that details in a paragraph of the description following a sentence that began “The present invention” became mandatory claim limitations to be read into the claims.  The Federal Circuit disagreed that “the second sentence in the summary of the invention constitutes a disclaimer that limits the scope of every claim.”

The lesson from these cases is that when you use qualifying language, you have to be clear when it applies and when it doesn’t.  You need to be clear what is part of the preferred embodiment and what isn’t.  Likewise, if you can’t resist the temptation to use “the present invention,” you have to control to when, it applies and when it doesn’t.

Controlling language is within our power, meat tenderizer on the other hand . . .

§112(f) allows a patent applicant to claim an element by the function it performs, however functionally claimed elements using §112(f) are limited to what is disclosed in the specification and equivalents.  The classic form of a 112(f) claim element is:

means for + [GERUND]

for example “means for fastening.”  However, many prosecutors, attempting to free themselves from the bounds of the structures disclosed in their specifications, attempt to claim an element by the function it performs.]

However, it is not possible to write a truly functional claim that avoids 112(f).  A claim element that does not use the word “means” is presumed to not invoke §112(f), but if it fails to recite “sufficiently definite structure” or recites “function without reciting sufficient structure for performing that function,” then that element will nevertheless be construed under 112(f).  The standard 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.  Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346 [115 USPQ2d 1105] (Fed. Cir. 2015).

If the functional term is found to have  a sufficiently definite meaning as the name for structure, the prosecutor has succeeded in broadly claiming the invention, while if it is not found to have a sufficiently definite structural meaning, then 112(f) applies, whether or not that is what the prosecutor intended.

While converting the gerund “fastening” in the example above, to “fastener” would seem to be safe, one cannot be completely certain that the selected term conveys a sufficiently definite structural meaning. See Advanced Ground Info. Sys., Inc. v. Life360, Inc., 119 USPQ2d 1526 (Fed. Cir. 2016)(symbol generator) ; Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, [116 USPQ2d 1144, 1148] (Fed. Cir. 2015)(compliance mechanism); Williamson v. Citrix Online, LLC, 792 F.3d 1339 [115 USPQ2d 1105, 1112 (Fed. Cir. 2015) (distributed learning control module). Thus, whenever a claim element is named functionally, the prosecutor should make sure that specification broadly discloses corresponding structure, in case the courts decide to construe the element under 112(f).

In Affinity Labs of Texas v. Amazon.com, Inc., [2015-2080] (September 23, 2016) the Federal Circuit affirmed judgment on the pleadings that U.S. Patent No. 8,688,085 on a System and Method to Communicate Targeted Information was directed to unpatentable subject matter.

The Federal Circuit found that the district court’s conclusion was consistent with its
approach to the “abstract idea” step in prior cases, including In re TLI Communications LLC Patent Litigation, which involved a patent on a method for uploading digital images from a cellular telephone to a server, which would then classify and store the images.  The Federal Circuit further found that the idea of the ‘085 patent was “even broader and more abstract” than the idea in Ultramercial, where a process of allowing
a consumer to receive copyrighted media in exchange for watching a selected advertisement was found to be an abstract idea.

The Federal Circuit rejected the argument that ’085 patent embodied a concrete
technological innovation, noting the purely functional nature of the claim, which confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea.  The Federal Circuit said that claims thus do not go beyond stating the relevant functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology.

The Federal Circuit concluded that In sum, the ‘085 patent was not directed to the
solution of a “technological problem,” nor was it directed to an improvement in computer or network functionality.  It claims the general concept of streaming user-selected content to a portable device. The addition of basic user customization features to the interface did not alter the abstract nature of the claims and does not add an inventive component that renders the claims patentable.

There are a number of ways that a patent applicant can end up with less than the patent applicant appeared to claim:

No. 10 Disclaiming claim scope during prosecution of the application.  However, this disclaimer must be clear and unmistakable.  Omega Engineering, Inc, v. Raytek Corp., 334 F.3d 1314, 1325-26 (Fed. Cir. 2003).

No. 9 Distinguishing the prior art.  See, SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187 [108 U.S.P.Q.2d 1001] (Fed. Cir. 2013)(excluding the use of beads from the claimed three dimensional culturing based upon statements distinguishing the prior art).

No. 8 Criticizing the prior art.  See, Chicago Board Options Exchange Inc. v. International Securities Exchange LLC, 677 F3d 1361 [102 USPQ2d 1683] (Fed. Cir. 2012)(limiting scope of claims based upon characterization of prior art as “antiquated,” and having “inherent inadequacies,” and “deficiencies.”); Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 [58 USPQ2d 1059] (Fed. Cir. 2001)(limiting claims to “coaxial lumen configuration” based, in part, criticisms of the dual lumen prior art in the Background Of the Invention.); Astrazeneca AB v. Mutual Pharmaceutical Co., 72 USPQ2d 1726 [72 USPQ2d 1726, 1730] (Fed. Cir. 2004)(limiting the meaning of solubilizer because of criticisms of prior art).

No. 7 Identifying “Objects” of the Invention.  See, The Gentry Gallery Inc. v. The Berkline Corp., 45 USPQ2d 1498 (Fed. 1998)(liming the location of controls so that the claimed invention meets the objects).

No. 6 Failing to describe more than one embodiment.  See, Wang Laboratories, Inc. v. America Online Inc., 197 F3d 1377 [53 USPQ 1161] (Fed. Cir. 1999)(determining that the claims were properly limited to the “only embodiment described.”); General American Transportation Corp. v. Cryo-Trans, Inc., 93 F.3d 766, 770, 772, [39 USPQ2d 1801, 1803, 1805-06] (Fed.Cir. 1996)(limiting the claims to the disclosure which was “not just the preferred embodiment of the invention; it is the only one described”); Watts v. XL Systems Inc., 232 F3d 877, 56 USPQ2d 1836 (Fed. Cir. 2000)(limiting sealingly connected because the specification “ only describes one method in which ‘tapered external threads [are] dimensioned’ to achieve the sealing connection.”); Modine Mfg. Co. v. United States Int’l Trade Comm’n, 75 F.3d 1545, 1551 [37 USPQ2d 1609, 1612] (Fed. Cir. 1996)(claimed limited to disclosed embodiment because “when the preferred embodiment is described in the specification as the invention itself, the claims are not necessarily entitled to a scope broader than that embodiment.”).

No. 5 Using i.e. instead of e.g.  See Edwards Lifesciences LLC v. Cook Inc., 582 F3d 1322 [92 USPQ2d 1599] (Fed. Cir. 2009)(limiting the construction of the term malleable, because “the specification’s use of “i.e.” signals an intent to define the word to which it refers.”); see, also, Abbott Laboratories v. Novopharm Ltd., 323 F3d 1324 [66 USPQ2d 1200] (Fed. Cir. 2003).

No. 4 Incorporating definitions or limitations “by reference.”  X2Y Attenuators, LLC v. Int’l Trade Comm’n, 757 F.3d 1358 [111 USPQ2d 1607, 1610 (Fed. Cir. 2014)(claims limited by statements incorporated by reference).

No. 3 Failing to Identify described matter as “preferred.”  See Honeywell International Inc. v. ITT Industries Inc., 452 F3d 1312 [79 USPQ2d 1294, 1299] (Fed. Cir. 2006)( limiting “fuel injection system component” to a fuel filter because a fuel filter was not merely discussed as a preferred embodiment); see, also, Cultor Corp. v. A.E. Staley Mfg. Co., 224 F.3d 1328 [56 USPQ2d 1208](Fed. Cir. 2000)(Claims limited to use of citric acid where “preferably” language separated by a comma, and thus did not apply.).

No. 2 Use of unnecessarily narrow language.  For example “very important” (Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 [78 USPQ2d 1786, 1788] (Fed. Cir. 2006)(limiting claims because of “very important” feature described in specification.)); “important feature,” (SafeTCare Manufacturing Inc. v. Tele-Made Inc., 497 F3d 1262 [83 USPQ2d 1618] (Fed. Cir. 2007)(limiting claims because of an “important feature of the present invention” described in specification).);  “critical,” (harmacia & Upjohn Co. v. Mylan Pharm., Inc., 182 F.3d 1373 [50 USPQ2d 1033, 1037] (Fed. Cir. 1999)(limiting the claims because the specification indicated that “the use of spray-dried lactose is a critical feature of the present invention.”).) “necessary,” (Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 [78 USPQ2d 1417, 1421](Fed. Cir. 2006)(Statement in specification that “it is necessary to have a catalyst to have a catalyst containing solely chromium” limited claims).); “solely,” (Atofina v. Great Lakes Chemical Corp 441 F.3d 991 [78 USPQ2d 1417, 1421]( (Fed. Cir. 2006) (Statement in specification that “it is necessary to have a catalyst to have a catalyst containing solely chromium” limited claims).); “essential,” (X2Y Attenuators v. ITC, [110 USPQ2d 1707, 1610] (Fed. Cir. July 7, 2014)(limiting claims to sandwich configuration because of description in specification that the sandwich configuration is “an essential element among all embodiments”).)  “requires,” (Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1367 [81 USPQ2d 1545, 1549] (Fed. Cir. 2007)(limiting the claims because of a statement in the specification that successful manufacture “requires” a particular step).);  and “universal” (X2Y Attenuators v. ITC, [110 USPQ2d 1707, 1610] (Fed. Cir. July 7, 2014)(limiting claims to sandwich configuration because of description in specification that the sandwich configuration is a “feature [] universal to all the embodiments”).)

No. 1 Describing “the invention” rather than embodiments of the invention.  See, Honeywell International Inc. v. ITT Industries Inc., 452 F3d 1312 [79 USPQ2d 1294, 1299] (Fed. Cir. 2006)(limiting “fuel injection system component” to a fuel filter because at least four times the specification described it as “this invention” or “the present invention”); Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021 [113 USPQ2d 1859, 1862] (Fed. Cir. 2015)(noting that “the present invention includes …” or “the present invention is …” or “all embodiments of the present invention are ….” limits the claims); Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1447 [58 USPQ2d 1059] (Fed. Cir. 2001)( limiting claims to “coaxial lumen configuration” based, in part, on description of “the invention” and “the present invention.”); Watts v. XL Sys., Inc., 232 F.3d 877 [56 USPQ2d 1836, 1840] (Fed. Cir. 2000)(limiting claims to use of misaligned taper angles based on description of “the present invention”); Astrazeneca AB v. Mutual Pharmaceutical Co., 384 F.3d 1333 [72 USPQ2d 1726, 1730] (Fed. Cir. 2004)(limiting claims to solubilizers suitable according to the invention).