In Smith v.Orbcomm. Inc. [2:14-CV-666 (E.D. Tex. 2015), Judge Gilstrap invalidated as indefinite two claims of U.S. Patent No. 6,611,686 on a system of remotely tracking vehicles and cargo, rejecting the patent owner’s argument that the claims contained a typographical error that the court had the authority to correct in view of the patent owner’s alternative construction for the erroneous claim language.

The patent owner argued that the phrase “inputs to be controlled” in claims 15 and 48 contain an obvious typographical error that the court should correct to “inputs to be monitored,” explaining that the language arose from errors apparent in the prosecution.  In the alternative, the patent owner proffered an interpretation for the claims as written.

The found that the phrase “said inputs to be controlled” lacks antecedent basis in claim 15
and 48.  The district court found that in view of the patent owner’s alternate construction, this language could not be regarded as an obvious typographical error.  Furthermore the court noted the patent owner’s failure to obtain a Certificate of Correction.finding the patent owner’s arguments and actions show that correction is subject to reasonable debate. and thus not correctable by the court..  In addition, the court found that the error was not evident from the face of the patent, another requirement for the court to make the correction.

While FRCP 8(d)(2) allows pleading in the alternative, the court found the patent owner’s inconsistent position on claim construction prevented the correction that it sought, concluding thatt “Plaintiff cannot have it both ways.”

In Power Integrations, Inc. v. Lee, [2014-1123], (August 12, 2015), the Federal Circuit reversed the PTAB’s decision affirming the rejection of claims of U.S. Patent No. 6,249,876, in a reexamination proceeding.

The Federal Circuit found that the PTAB erred in failing to consider the previous construction of the claims in District Court litigation.  While acknowledging that the PTAB is generally not bound by a prior judicial construction of a claim term, and that in reexaminations the PTAB applies a different claim construction standard than applied by the district court, the Federal Circuit found that the PTAB still had an obligation to “acknowledge” the interpretation, and “assess” whether it is consistent with the broadest reasonable construction of the term.  The Federal Circuit said that het PTAB declined to address or even acknowledged the district court’s prior determination, and because the patent owner’s construction was “tied” to the district courts’ construction, the Federal Circuit thought that the PTAB had an obligation to evaluate that construction and determine whether it was consistent with the broadest reasonable interpretation.

Eidos Display, LLC, v. AU Optronics Corp., [2014-1254] (Fed. Cir. 2014), the Federal Circuit reversed summary judgment of invalidity of the claims for indefiniteness.  The Federal Circuit began its analysis by confirming that its review was de novo because the claims could be construed solely from the intrinsic evidence, citing Teva v. Sansoz.  The Federal Circuit said that to the extent the district court considered extrinsic evidence in its claim construction order or summary judgment order, that evidence is ultimately immaterial to the outcome because the intrinsic record is clear.

In its de novo review of the claims the Federal Circuit observed that the limitation at issue, “a contact hole for source wiring and gate wiring connection terminals” could require a single common or two separate holes, but found that the specification clearly indicated two holes.  First, the Federal Circuit noted that the there was no enabling disclosure of a single hole, and second the only disclosure was of two separate holes.

The Federal Circuit looked to the prosecution history of the parent application, citing Masco Corp. v. United States, 303 F.3d 1316, 1324 (Fed. Cir. 2002), and Elkay Mfg. Co. v. EbcoMfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999)that the prosecution history of a parent application may be considered  in construing claim terms.”  Observing that other claims contained this same limitation the Federal Circuit saw no reason to ascribe a different meaning to the same limitation in the current claim, noting claim terms are normally used consistently throughout the patent, so that the usage of a term in one claim can often illuminate the meaning of the same term in other claims.

Finally the circuit noted that descriptions of other unclaimed embodiments in the patent in suit supported the construction that separate holes were required, noting that the description of a word in the specification for a different structure can inform the meaning of the same word in the claim because “claim terms are normally used consistently throughout the patent,” citing Energy Transp. Grp., Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1349–50 (Fed. Cir. 2012).

The Federal Circuit rejected appellee’s argument that it was rewriting the limitation, noting that determining how a person of ordinary skill in the art would understand  the limitation, however, is different from rewriting the limitation.

In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. No. 13-854, (January 20, 2015), the Supreme Court held that while the ultimate question of claim construction remains a legal question subject to de novo review, the district court’s subsidiary fact determinations are no different than any other factual determinations which under F.R.C.P. 52(a)(6) are reviewed for clear error.  Teva and Sandoz disputed the meaning of the claim requirement “a molecular weight of 5 to 9 kilodaltons.”  The “molecular weight” could be determined by at least three different methods, and the patent did not explicitly state which method should be used.  Sandoz argued that this made the claims fatally indefinite, but after considering conflicting expert testimony from the parties, the district court concluded that the claim was sufficiently definite, and thus valid.  The Federal Circuit reviewed the entire question of claim construction stating “[o]n de novo review of the district court’s indefiniteness holding, we conclude that [Teva’s expert’s] testimony does not save Group I claims from indefiniteness.”

The Supreme Court saw no reason to treat subsidiary factual findings relating to an issue of law any different from any other factual findings subject to review for clear error under F.R.C.P. 52(a)(6).  The Supreme Court found that when the Federal Circuit did not accept Teva’s expert’s explanation as to how a skilled artisan would interpret the curves in the patent specification, it failed to make a determination that the district court’s finding was clearly erroneous.  The Supreme Court said that the Federal Circuit should have accepted the district court’s finding unless it was “clearly erroneous.”

The most significant aspect of Teva v. Sandoz is that it confirmed that claim construction is a question of law that is reviewed de novo, affirming Cybor Corp. v. FAS Technologies Inc., 46 USPQ2d 1169 (Fed. Cir. 1998).  While it modified the review of claim constructions where there are underlying factual determinations, the Supreme Court made it clear that when the claim is construed from the intrinsic evidence alone, no deference is due: “when a district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent’s prosecution history) the judge’s determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo.”

Of course in those cases where there are underlying factual findings, we are back to pre-Cybor days, when those factual findings were entitled to deference.  In Cybor, the Federal Circuit noted in some cases, it had applied a clearly erroneous standard to findings considered to be factual in nature that are incident to the judge’s construction of patent claims, citing Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547, 1555-56, 42 USPQ2d 1737, 1742 (Fed.Cir. 1997); Serrano v. Telular Corp., 111 F.3d at 1586, 42 USPQ2d at 1544, (Mayer, J., concurring); Wiener v. NEC Elecs. Inc., 102 F.3d 534, 539, 41 USPQ2d 1023, 1026 (Fed.Cir. 1996); Metaullics Sys. Co. v. Cooper, 100 F.3d 938, 939, 40 USPQ2d 1798, 1799 (Fed.Cir. 1996).  As Judge Mayer observed in Serrano:

According to the Supreme Court, claim construction is a matter for the judge, and not the jury. . . . As such, if the claim construction does not require the resolution of disputed material facts, it may be treated as a matter of law and so reviewed by this court. However, where material facts are disputed, claim construction requires resolution of both questions of fact and questions of law . . . and this court may be required to give due deference to the trial court’s factual findings.

One might wonder how often this comes up, and it turns out that there are three other Petitions for Certiorari where the review of factual findings were in dispute: Lighting Ballast v. Universal Lighting; Gevo v. Butamax, and Shire v. Watson Pharma.  In the wake of Teva v. Sandoz the Supreme granted certiorari in all three cases, and remanded them for further proceedings consistent with Teva v. Sandoz.

One interesting apect of Augme Technologies, Inc. v. Yahoo! Inc., 2013-1121, -1195 (June 20, 2014), is the Federal Circuit’s application of the Claim Construction Cannon that different words have different meanings.  The claim required an “embeded code module,”   The Federal Circuit noted that each asserted claim recites that the first code module is “embedded” or “configured to be embedded” and that the second code module is “retrieve[d]” or “download[ed].” The Federal Circuit found that this distinction creates a presumption that “embedded” means something different than “retrieved” or “downloaded, ” citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008) (“[D]ifferent claim terms are presumed to have different meanings.”); Applied Med. Res. Corp. v. U.S. Surgical Corp, 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006).  Having created a distinction between embedded  and retrieved and downloaded in structuring its claims, the patent owner could not argue that these different terms meant the same thing.