In Oplus Technologies, Ltd. v. Vizio, [2014-1297] (April 10, 2015), the Federal Circuit vacated and remanded the district court’s decision not to award attorneys’ and expert witness fees under 35 U.S.C. §285 and 28 U.S.C. §1927.  The Federal noted that since the district court issued its opinion, the Supreme Court’s Octane decision lowered Circuit  “considerably” the standard for awarding fees, and thus the it was appropriate to vacate and remand this case in order for the district court to reconsider the propriety of awarding fees.

The Federal Circuit found that the district court opinion details an egregious pattern of misconduct, and that even Oplus’s counsel agreed that the misconduct was quite severe.   The Federal Circuit said that although an award of fees is within the discretion of the district court, nothing in the opinion or in the record substantiates the court’s decision not to award fees. Given that the district court found counsel’s behavior “inappropriate,” “unprofessional,” “vexatious,” and “harassing,” it is difficult to imagine how defendant had not incurred additional expenses defending against such filings.

In Exela Pharma Sciences, LLC v. Lee, [2013-1206] (March 26, 2015) the Federal Circuit affirmed the dismissal of Exela’s challenge to the revival of SCR Pharmatop patent application that resulted in the issuance of U.S. Patent No. 6,992,218. It was undisputed that SCR Pharmatop failed to properly enter the U.S. National Phase by the 30 month deadline. SCR Pharmatop filed a petition to revive the application, stating that the delay was “unintentional,” using the form provided by the PTO for revival requests. The PTO granted the petition on April 25, 2003, and the application was duly examined, resulting in the ’218 patent. After being sued on the patent, Exela filed a petition in the PTO, under the APA and 37 C.F.R. §§1.181, 1.182, and 1.183, challenging the PTO’s revival of SCR Pharmatop’s application, arguing that “unintentional” delay was not an available ground for revival of a U.S. patent application claiming priority under the PCT-implementing statute as then in effect.  The PTO declined to consider Exela’s petition, stating that no statute or regulation authorizes third party challenge to a PTO ruling concerning revival of a patent application.  Exela brought an action in district court to review this determination, but it was dismissed the action as untimely.  The Federal Circuit affirmed the dismissal, but on the grounds that “PTO revival actions are not subject to third party challenge under the APA.”

This decision in effect completely insulates improper and even illegal action by the USPTO, not only can a third party not challenge the action in the Patent Office, but in view of the Federal Circuit’s decision in Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 543 F.3d 657 (Fed. Cir. 2008), the party cannot raise it as a defense in an infringement action.

In In re Imes, [2014-1206] (January 29, 2015) the Federal Circuit reversed the rejection of Imes’ claims to a device for communicating digital camera image and video information over a network. Some of the claims required a “wireless communication module.” Purporting to apply the broadest reasonable interpretation, the Examiner rejected these claims in view of prior art that disclosed the use of a memory card to transfer images and videos, pointing out that no wires are used. The Federal Circuit concluded that this construction was “inconsistent with the broadest reasonable interpretation in view of the specification.” The Federal Circuit found the construction “straightforward,” particularly since the term wireless was defined in the specification, and it was used consistently throughout. Also at issue were claims to “wirelessly communicate streaming video” which the Examiner found met by prior art that serially transmits images by email, reasoning that video is just a series of images. The Federal Circuit held “sending a series of emails with attached still images is not the same as streaming video.” Such a construction is unreasonable as it comports with neither the plain meaning of the term nor the specification.”

Content Extraction and Transmission, LLC v. Wells Fargo Bank, NA, [2013-1588, -1589, 2014-1112, -1687] (Fed. Cir. December 23, 2014) the Federal Circuit affirmed the dismissal under FRCP 12(b)(6) of plaintiff’s action for patent infringement claims, on the grounds that the patent claims did not define patentable subject matter.

The Federal Circuit applied the two-step process established by the Supreme Court in Mayo and Alice. In determining whether the claims were directed to a patent-ineligible abstract idea, the Federal Circuit observed that claims directed to the mere formation and manipulation of economic relations may involve an abstract idea. The Federal Circuit agreed with the district court that the claims are drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory.

The Federal Circuit then moved on to the second step, determining whether the limitations present in the claims represent a patent-eligible application of the abstract idea. The Federal Circuit sad that for the role of a computer in a computer implemented invention to be deemed meaningful, it must involve more than performance of well-understood, routine, and conventional activities previously known to the industry. The Federal Circuit added “the mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent-eligible invention.” The Federal Circuit agreed with the district court that the asserted patents contain no limitations — either individually or as an ordered combination — that transform the claims into a patent-eligible application. The Federal Circuit noted that CET conceded at oral argument that the use of a scanner or other digitizing device to extract data from a document was well-known at the time of filing, as was the ability of computers to translate the shapes on a physical page into typeface characters. The Federal Circuit concluded that At most, CET’s claims attempt to limit the abstract idea of recognizing and storing information from hard copy documents using a scanner and a computer to a particular technological environment. Such a limitation has been held insufficient to save a claim in this context.

The Federal Circuit concluded that we conclude that even when construed in a manner most favorable to CET, none of CET’s claims amount to “significantly more” than the abstract idea of extracting and storing data from hard copy documents using generic scanning and processing technology. It therefore found that the district court’s resolution of PNC’s motion to dismiss at the pleading stage was proper.

In another aspect of the case, the Federal Circuit affirmed the dismissal of defendant’s tortious interference claims arising from the patent owner’s suing defendant’s customers, finding such action protected by the Noerr-Pennington doctrine. The Federal Circuit said that a person’s act of petitioning the government is presumptively shielded from liability by the First Amendment against certain types of claims. To overcome this presumptive immunity, a plaintiff must establish that the defendant’s instigation of litigation was merely a “sham.” This requires the plaintiff to show not only that the litigation was objectively baseless, but also that the defendant subjectively intended to harm the plaintiff through the abuse of a governmental process itself, as opposed to harms flowing from the outcome of that process.

While the Federal Circuit agreed with the result that the district court reached, it disagreed with the district court’s finding that the customer lawsuits were objectively baseless. The Federal Circuit pointed out that “the state of the law of § 101 was deeply uncertain at the time CET filed its complaints” and concluded that “[u]nder these circumstances, we cannot conclude that as a matter of law, no reasonable litigant in 2012 could have expected success on at least one of CET’s claims.”

In Mformation Technologies, Inc, v. Research in Motion Limited, [2012-1679, 2013-1123] (Fed. Cir. 2014), the Federal Circuit commented on the role of grammar in claim cosntruction, citing Credle v. Bond, 25 F.3d 1566, 1571 (Fed. Cir. 1994) (stating that “grammatical structure and syntax” of the claim can be important evidence for claim construction). In Credle the Federal Circuit was left with construing this count:

The method of producing collapsed bags having spouts with evacuation form unit inserts connected therein which comprises, for each bag, providing an insert with an elongated form upon which the bag can collapse as it is evacuated which has at least one continuous longitudinal open passage along its length and has an inner open end, joining two opposed webs of material to produce opposed walls of the bag, and before joining the webs applying a spout to one of the webs extending outwardly therefrom and with its inner end open and flexibly securing the form, with its inner end in liquid communication with the spout and extending transversely therefrom to lie flat between said opposed webs so that as each completed bag is filled with liquid the form will swing into the liquid and the bag will collapse around it as it is evacuated. (Emphasis added).

The Federal Circuit said “it is clear from the structure of the clause that the phrases ‘extending outwardly therefrom,’ ‘with its inner end open,’ and ‘flexibly securing the form’ all modify and describe the spout.  This is both logically and grammatically required by the presence of the emphasized “and.”.”  Thus the Federal Circuit rejected the constrution that “flexibly securing the form” was a separate step, and not a modifier of the word spout.

In Mformation the isssue was whether one step (establishing a connection) had to be completed before another step (transmitting).  The Federal Circuit found that wording chosen by the patentee indicated that the connection had to be established, not merely initiated.

Despite the irony that grammar and syntax are critical in a field dominated by drafters who are engineers and scientists, gopd grammar and good claims are not alternatives.  Claim drafters have to chose their words carefully, and the form of the word and the punctuation chosen can significantly change how the claim is construed.

About is one of the great weasel words of patent claim drafting.  Few things look as dangerous to a patent drafter as the sharp edge of a numerical limitation without the blunting influence of “about.”  “About” has been used in the claims of about 22% of utility patents issuing since 1976.  While it is frequently employed by drafters, often not much care is taken in properly defining its boundaries.  In Ferring B.V. v. Watson Laboratories, Inc. – Florida, [2014-1377] (Fed. Cir. 2014), the determination of infringement turned on the meaning of “about” in the phrase “less than about 70%”.  Ferring argued that about meant +/- 10%, based upon some language in a test referenced in the claim language, so that less than about 70% actually meant less than 63% to 77%.  Apotex meanwhile argued that it meant +/- 5%, so that about 70% actually meant less than 66.5 to 73.5%, which did not encompass the less than 75% of Apotex’s product.  In the absence of any defintion in the patent, the Federal Circuit declined to place a numerical limitation on “about,” instead giving about its ordianry meaning:

“About” is not defined either explicitly or by implication by the specification. We think that the district court did not err in giving the term “about” its ordinary meaning and in refusing to give it a more specific construction. See also Merck & Co., Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1369–70 (Fed. Cir. 2005) (the term “about” should be given its ordinary and accepted meaning of “approximately” unless the patentee clearly redefines “about” in the specification). We affirm the district court’s construction of “about” to mean “approximately,” as well as its refusal to construe “about” to represent a particular numerical error rate.

“About” is a often used and time honored weasel word, but to be used to best effect, some standard should be provided for determining its effect on the so-modified claim element.
construction

In X2Y Attenuators, LLC v. ITC,  2013-1340 (Fed. Cir. 2014), the Federal Circuit affirmed the ITC’s construction of U.S. Patent Nos. 7,609,500, 7,916,444, and 8,023,241. Intel argued that the claims should be limited to a sandwich configuration, while X2Y contended that the electrode terms require no construction and should be given their plain and ordinary meanings, and the ITX agreed with Intel.  The Federal Circuit agreed that the “exacting” standard of disavowall was:

The patents’ statements that the presence of a common conductive pathway electrode positioned between paired electromagnetically opposite conductors is “universal to all the embodiments” and is “an essential element among all embodiments or connotations of the invention” constitute clear and unmistakable disavowal of claim scope.

Labeling an element of embodiment “essential” has been found to be a disavowal, and further labelling it “universal to all embodiments” reinforced the conclusion.

One of the patents contained the “essential” disavowal, and the other patents incorporated the “essential” disavowal by reference.  All of the patents incorporated the “universal” disavowal.  The Federal Circuit said that the incorporated patents are “effectively part of the host patents as if they were explicitly contained therein.”  The Federal Circuit conceded that it was possible that a clear and unmistakable disavowal in an incorporated patent is no longer so when placed in the context of the disclosure of the host patent, but that was not the case with the patents in suit.

The lesson of this case is to be careful what its described as “essential” or “universal,” both in the current specification, and in anything incorporated by reference

Nautlius, Inc. v. Biosig Instruments, Inc., — U.S. —, (2014), the Supreme Court rejected the Federal Circuit’s “insolubly ambiguous” test for indefiniteness under 35 U.S.C. §112, holding that “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” The case arrived at the Supreme Court after the Federal Circuit reversed a district court finding that the claims of U.S. Patent No. 5,337,753 on a heart rate monitor, which claimed electrodes contained the language “spaced relationship” were indefinite. The Supreme Court “cognizant of the competing concerns” read Section 112 to require that a patent’s claims , viewed in light of the prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” The Supreme Court explained that this standard “mandates clarity, while recognizing that absolute precision is unattainable” and accords with the Court’s decisions that the certainty that the law requires of patents “is not greater than is reasonable, having regard to their subject-matter.” The Court declined to apply the standard to the claims, remanding the case for further consideration.

February 10, 2014, marked the 123rd anniversay of the issuance of U.S. Patent No. 446,054 on the Ouija Board.  As the story is told by descendants of the inventors, the Patent Examiner refused to issue a patent without proof tha the invention worked.

The requested demonstration was made during an Examiner Interview, as dramatically recounted in the Smithsonian in October 2013:

the chief patent officer demanded a demonstration—if the board could accurately  spell out his name, which was supposed to be unknown to Bond and Peters, he’d  allow the patent application to proceed. They all sat down, communed with the  spirits, and the planchette faithfully spelled out the patent officer’s name.  Whether or not it was mystical spirits or the fact that Bond, as a patent  attorney, may have just known the man’s name, well, that’s unclear, Murch says.  But on February 10, 1891, a white-faced and visibly shaken patent officer  awarded Bond a npatent for his new “toy or game.”

Read more:  http://www.smithsonianmag.com/history/the-strange-and-mysterious-history-of-the-ouija-board-5860627/#ixzz2t35YW21m.  What actually happened during the interview is a mystery — a problems with many Examiner Interviews today, despite the provisions of 37 CFR 1.133 and MPEP 716.  We do know that the patent did issue, and that the patent owners used the issuance as an endorsement of the operability of their invention for many years.

On February 7, 2014, Magistrate Thynge issued a report and recommendation in  Magnetar Technologies Corp. v Six Flags Theme Parks, Inc., 07-127-LPS-MPT (D.Del) that among other things found Claim 3 of U.S. Patent No. 5,277,125 invalid for indefiniteness.  Claim 3 states:

The problem is that Claim 3 specifies a track, but then calls for magnet assemblies between said tracks.  The inventor testitifed that he knew what it meant:

But it did not say what he meant.  This is reminsecent of Chef America v. Lamb Weston, 358 F.3d 1371 (Fed. Cir. 2004) where the claim “heating to” rather than “heating at” 450° proved fatal to the patent.

There were serveral possible fixes, none of which were made.  Precisely because there were serveral fixes, Magistrate Thynge found that correction would be subject to reasonable debate, so that Court was unable to correct the error under Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003).  The Magistrate granted summary judgment that claim 3 of the ‘125 patent is invalid for indefiniteness under 35 U.S.C. § 112, Paragraph ¶2.

Even of the District Court does not adopt this part of the Magistrate’s recommendation, at a minimum the less than precise language of claim 3 wasted time and resources of the patentee.  Words of a patent claim are critical, and everyone connected with the patent is responsible for making sure it is correct.