In Utto Inc. v. Metrotech Corp., [2023-1435](October 18, 2024), the Federal Circuit we vacated in part the dismissal of Utto’s claim for infringement of U.S. Patent No. 9,086,441, which describes and claims methods for detecting and identifying underground utility lines, and affirmed the dismissal of Utto’s claim for tortious interference with prospective economic advantage.

The court construed the claim language “group of buried asset data points” in both the “receiving” and “generating” limitations of claim 1 to require “two or more” buried asset data points for each buried asset, adopting that construction as reflecting the “ordinary and customary meaning.” The court acknowledged that the specification in two places refers to “one or more buried asset data points” for a given buried asset, but the court said that those references to the singular occur “[o]nly twice” and “neither supports the ordinary reading of the claim language itself.”

On appeal, Utto argued that a district court may never engage in claim construction in deciding a motion to dismiss.  The Federal Circuit did not agree that claim construction is categorically forbidden at the Rule 12(b)(6) stage of a case. But the Federal Circuit agreed that, in this case, additional analysis and proceedings are needed to arrive at a proper construction.  UTTO pointed to several pieces of extrinsic evidence that it sought to present at further proceedings, including encyclopedia articles on “group theory” and “group,” the testimony of its founder, and the testimony and report of an expert.  The Federal Circuit itself saw “several issues relevant to a proper claim construction that would significantly benefit from fuller exploration by the parties and the district court.

The Federal Circuit noted that the claim language does not appear to be the kind of language that has so “plain” a univocal meaning that to give it a contrary construction would require meeting the high standard of redefinition or clear disclaimer.  Relatedly, the Federal Circuit noted, to the extent that “group of [plural term]” shares the character of plurals, the proper meaning is presumptive, but only presumptive—the specification not having to rise to the level of redefinition or disclaimer to overcome the presumed “two or more” meaning.

The Federal Circuit vacated the district court’s dismissal of UTTO’s infringement claim and remand for further claim construction proceedings. We do not here decide whether the district court’s claim construction is correct.

In Promptu Systems Corp. v. Comcast Corp., [2022-1939] (February 16, 2024), the Federal Circuit vacated judgment of non-infringement of U.S. Patent Nos. 7,047,196, 7,260,538, NS RE44,326, and remanded for further proceedings

U.S. Patent Nos. 7,047,196

The ‘196 patent provides speech recognition services to a collection of users over a network that supports cable television and/or video delivery.

U.S. Patent No. 7,260,538

The ’538 patent describes and claims related subject matter, but the ’538 patent’s specification is materially different from the ’196 patent’s specification. At a general level, the primary distinction between the ’196 patent and the ’538 patent is that the former relates to using remote voice-recognition systems to deliver requested (cable or video) content in response to a user’s speech request, while the latter relates to using remote voice-recognition systems to control a user’s television set based on a user’s speech command.

On appeal, Promptu challenged the district court’s construction of four claim limitations: “back channel,” “multiplicity of received identified speech channels,” “speech recognition system coupled to a wireline node” (each from the ’196 patent), and “centralized processing station” (from the ’538 patent).

The Federal Circuit agreed that the district court erred by narrowly construing “back channel” in the ’196 patent as limited to “[a] fixed band of frequencies or time slot(s) for transmitting signals to a speech processing system or engine.” The Federal Circuit said that nothing in the claim language suggests the limitation to a fixed band of frequencies or time slots. “Back” undisputedly refers to the direction (upstream) opposite the direction of transmission of the programming (downstream). And whether “channel” means a path or what is flowing in the path (an issue discussed infra), the Court saw nothing in the meaning of the quite general term “channel” that limits the path to one defined by a fixed band of frequencies or time slots. The Federal Circuit also found that nothing in the ’196 patent’s specification require the particular path-definition technique demanded by the district court’s claim construction. Moreover, the ’196 patent, through an incorporated application, describes schemes that involve signal transmission along the back channel on dynamically assigned
and managed (i.e., not fixed) frequency bands or time slots.

The Federal Circuit found that the use of a fixed frequency band or time slots, in this patent,
is no more than exemplary, not required. The specification did not limit the channel-defining techniques to a fixed frequency band or time slots. Case law has long recognized that particular features recited in the specification merely as aspects of embodiments,
and not expressly or even implicitly identifying requirements of the invention, do not narrow a claim term that is otherwise broader in its ordinary meaning.

The Federal Circuit similarly rejected the district court’s construction of the “multiplicity of received identified speech channels” phrase in the ’196 patent as requiring “a single band of frequencies or a designated time slot” for each identified speech channel. The construction depends on the underlying construction of “channel,” which the Federal Circuit rejected.

The district court construed the “speech recognition system coupled to a wireline node” phrase in the ’196 patent, in sum, as “a system whose function is speech recognition”
“connected in or near” “a network node providing video or cable television delivery to multiple users using a wireline physical transport between those users at the node.” The Federal Circuit said that construction incorrectly construes the constituent terms “speech recognition system,” “coupled to,” and “wireline node” within the claim phrase.

The Federal Circuit said that the district court’s construction of “speech recognition system” as “a system whose function is speech recognition” improperly presupposes that speech recognition is the exclusive function of the speech recognition system. Claim Construction Order, at 2 (emphasis added). The claim term, “speech recognition system,” does not entail such exclusivity. Further, the ’196 patent’s specification describes functions that a “[s]peech processor computer” may perform other than speech recognition, such as billing and system management.

The Federal Circuit said that the district court’s construction of “coupled to” as “connected
in or near” incorrectly reads a proximity requirement (“in or near”) into the claim term at issue. The Federal Circuit has repeatedly held variants of “coupled to” in patent claims to mean simply “connected to.”

The Federal Circuit said that the district court improperly adopted the specification’s
definition of “centralized wireline node” when construing the claim term “wireline node.” The Federal Circuit reasoned that the “centralized” modifier (used in the composite term defined in the specification) must add some meaning to or limitation on the “wireline node” being modified. The absence of the “centralized” modifier in the claims, in turn, means that
the claimed “wireline node” must be broader in some way than the “centralized wireline node” defined in the specification.

The Federal Circuit also found fault with the district court’s claim construction of “centralized processing station” in the ’538 patent as a “device at a cable-TV network head-end unit that receives and performs voice recognition on voice commands, and generates and returns instructions to settop boxes to carry out the commands.” The Federal Circuit noted that the location requirement: that a “centralized processing station” must be located “at a cable-TV network head-end unit.” The “centralized processing station” that is itself “configured to” perform the required voice-recognition actions (i.e., to receive and process output by applying voice recognition, to identify voice commands, and to derive instructions), the claims fairly specify that the “centralized processing station” performs the claimed voice recognition, rather than merely applies the results of such voice recognition performed
elsewhere. The Federal Circuit said that the district court incorrectly required the recited “device” to be located “at a cable-TV head-end unit,” based upon an example in the specification.

The Federal Circuit vacated the district court’s entry of final judgment as it relates to Promptu’s ’196 and ’538 patent-infringement claims. The Fedeal Circuit reversed in part and affirmed in part the district court’s claim constructions, and remanded to the district
court for further proceedings.

Actelion Pharmaceuticals Ltd, v. Mylan Pharmaceuticals Inc., [2022-1889] (November 6, 2023), the Federal Circuit vacated the district court’s claim construction order with respect to the term “a pH of 13 or higher” in U.S. Patent Nos. 8,318,802 and 8,598,227 and the judgment of infringement, and remand for the district court to consider the extrinsic evidence and its impact on claim construction.  The patents in suit were directed to improved epoprostenol formulations.

The claim required “the bulk solution has a pH of 13 or higher.”  Both parties proposed the plain and ordinary meaning of the term but disagreed on what that means.  Actelion argued that “a pH of 13” in the context of the asserted claims is “a value of acidity that is given as an order of magnitude that is subject to rounding.”  More specifically, Actelion’s proposal would allow a pH of 12.5, which rounds to 13, to read on the claim limitation of “a pH of 13 or higher.” By contrast, Mylan argued that the proper construction cannot cover any pH values less than 13.

The Federal Circuit said that there was no blanket rule that ranges, or specifically open-ended ranges, must foreclose rounding.  Unlike other claim terms, the disputed claim term lacks approximation language like “about.”  Mylan argued, “13” and “about 13” would both imply rounding, making the approximation language superfluous.  Actelion argued that rounding is required because approximation language like “about” signals different variations than those of rounding. Actelion also argued that “it is not practically possible to measure exact pH values” because to get an “exact” measurement “one would have to count every hydrogen ion in solution, which is not scientifically possible.”  Ultimately, the Federal Circuit did not find the absence of approximation language dispositive here, and rejected any invitation to create a bright-line rule.

The specification revealed that the inventor inconsistently described the level of specificity for a pH of 13.  The specification explains that “[t]he pH of the bulk solution is preferably adjusted to about 12.5-13.5, most preferably 13.”  Mylan argues that this shows that the inventor (1) knew how to use approximation language when it wanted (“about 12.5-13.5”) and chose not to for a pH of 13; (2) distinguished a pH value of “12.5” from that of “13”; and (3) distinguished a range (“12.5-13.5”) from a definite value (“13”).  Actelion countered that “13” should allow rounding or else a preferred embodiment of the invention, meaning a pH of about 12.5 to 13.5, would be excluded from the claim scope.

The specification seems to equate a pH of “13.0” to that of “13.” Example 4 describes screening several “formulations with the pH of bulk solution . . . adjusted between 10.5 and 13.0.” ’802 patent col. 10 ll. 63–64. Tables 8 and 9 show the resulting stability data and display a bulk solution pH as “13” with no decimal point. Mylan argues that this shows that the inventor equated a pH of “13” with “13.0.”  The Federal Circuit noted that the specification uses both “13” and “13.0”—and various degrees of precision for pH values generally—throughout. In other words, the specification supplies the same clarity as to the desired level of precision as muddied water.

Turning to the prosecution history, the Federal Circuit note that the inventor amended the claim language at issue several times, and that the Examiner said that the inventor had demonstrated that for a pH of 13 “there is a significant difference.”

The Federal Circuit said that this case was one where the proper claim construction cannot be reached without the aid of extrinsic evidence, and that the district court should have considered, at minimum, the textbook excerpts offered and addressed by the parties. The Supreme Court has made clear that there are cases where the district court must “look beyond the patent’s intrinsic evidence and . . . consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period.” The Federal Circuit vacated the district court’s judgment of infringement, and remand for the district court to consider the extrinsic evidence and its impact on claim construction.

In Corephotonics, Ltd., v. Apple Inc., [2022-1340, 2022-1341, 2022-1455, 2022-1456] (October 16, 2023) the Federal Circuit affirmed the PTAB’s determination that two references were analogous prior art, while vacating and remanding the Board’s obviousness determination for the Board to explain why a third reference — Martin — is (or is not) analogous art and how this finding affects its overall conclusion as to obviousness.  The Challenged Patents relate to dual-aperture camera systems and disclose techniques for using the images from both lenses when zooming while capturing video.

Prior art references are applicable to the obviousness inquiry only when they are analogous to the claims being challenged. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992); see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Art that is “too remote” from the patents being attacked cannot be treated as prior art.  The Federal Circuit uses two separate tests to define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.

Apple’s petitions were ambiguous; they did not make clear whether Apple was stating that Golan and Martin are in the same field of endeavor as the Challenged Patents or, instead, merely that Golan and Martin are in the same field of endeavor as one another. The Board wrote, “Martin is reasonably pertinent to the problem faced by the inventor: reducing an image jump effect seen in video output images when switching between cameras that have different fields of view. Apple and Corephotonics agree that these two sentences are, as written, incorrect: Martin does not disclose switching between cameras with different fields of view; rather, it is addressed to cameras with different points of view.  The Federal Circuit was unable We are unable to discern if the Board’s error was, in fact, merely typographical and harmless or, instead, a potentially-impactful error of substance. This prevented the Federal Circuit from concluding either that there is, or is not, substantial evidence to support the Board’s conclusion that Martin is analogous art to the Challenged Patents.  Accordingly, the Federal Circuit remanded to the Board for further explanation and, if needed, further fact finding.

In Century Electric Co. v. Westinghouse Electric & Mfg. Co., 191 F. 350 (8th Cir. 1911), the Eighth Circuit had in interesting perspective on claim construction. The Eighth Circuit said that a patent “is a contract made by the acceptance by the government of the offer which the patentee by his application makes to disclose his invention, in consideration that the United States will secure to him the exclusive use and sale of it for 17 years,”

The Court continued:

The offer embodied in the application becomes the specification of his patent, if his offer is accepted, and with his claims evidences the terms of the agreement. Such an agreement is interpreted by the same rules that determine other contracts. The court, should, as far as possible, place itself in the situation of the parties when they made their agreement and then seek to ascertain from the terms of their contract, in the light of the circumstances then surrounding them, what their intention was.

This intention should be deduced from the entire contract and not from any part of it or without any part of it, because they did not agree to it, or to any part of it, without every other part of it. The specification which forms a part of the same application as the claims must be read and interpreted with them, not for the purpose of limiting, or of contracting, or of expanding, the latter, but for the purpose of ascertaining from the entire agreement, of which each is a part, the actual intention of the parties and that intention when ascertained should prevail over the dry words and inapt expressions of the contract evidenced by the patent, its specification and claims.

Modern claim construction seem more rule-bound, and might be improved if animated by the purpose to determine what the inventor invented, not what the claims literally say.