Category Archives: Claim Construction

District Court Improperly Imported Limitations into the Claims

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In Blackbird Tech LLC v. ELB Electronics, Inc., [2017-1703] (July 16, 2018), the Federal Circuit vacated judgment of noninfringement of claim 12 of U.S. Patent No. 7,086,747 because of the district court error in construing “attachment surface” and remanded.

The ‘747 patent was directed to an energy efficient lighting apparatus, and in one embodiment in particular, retrofitting an existing light
fixture with a more energy efficient lighting apparatus.  The claim required a balast cover comprising “a housing having an attachment surface and an illumination surface.”  The claim further required a fastening mechanism for securing the attachment surface of the lighting apparatus to the illumination surface.  The district court construed “attachment surface” as “layer of the housing that is secured to
the ballast cover.” The parties disputed the meaning of “attachment surface,” specifically whether the attachment surface must be secured to the ballast cover.

The Federal Circuit rejected the district court’s construction, noting that the “plain language” of the claim does not require the attachment surface to be secured to the ballast cover.  The Federal Circuit noted that while the claim expressly recites a fastening mechanism for securing the attachment surface to the illumination surface. It does not refer to any other fastening mechanism. It does not require the attachment surface be secured to anything other than the illumination surface.

The Federal Circuit said that the district court nevertheless read in a second fastening mechanism—this one to secure the attachment surface to the ballast cover.  While an embodiment disclosed in the specification included this second fastening mechanism, the Federal Circuit did not not agree that this fastener limitation should be imported into the claim.

The Federal Circuit noted that there was no suggestion in the specification or prosecution history that this fastener is important in any way that would merit reading it into the claims.  The specification does not refer to the disclosed fastener as the “present invention” or “an essential element” or uses any other language that would cause the
ordinarily skilled artisan to believe that this fastening mechanism is an important component of the invention or that it is critical to the invention for any reason.

The Federal Circuit said that the most important reason not to import the limitation into the claim was that the limitation was expressly eliminated during prosecution — albeit to resolve 112 issues.  The Federal Circuit rejected the defendants’ argument that the amendment was ambiguous because no explanation was given for the amendment as “legally irrelevant to how a skilled artisan reading this history would understand the claim scope.”  As a factual matter, no skilled artisan would understand this claim to require a fastening mechanism connecting the ballast cover to the attachment surface when that very limitation was expressly removed from the claim to secure patentability
with the examiner’s blessing and agreement.

The Federal Circuit concluded that the district court erred in construing “attachment surface,” and because the court’s entry of judgment of noninfringement was based on its erroneous construction, vacated the entry of judgment and remand for further proceedings.

Claim Covered at least the Depicted Enantiomer

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In Sumitomo Dainippon Pharma Co., Ltd. v. Emcure Pharmaceuticals Limited, [2017-1798, 2017-1799, 2017-1800] (April 16, 2018) affirmed determination of infringement of the claim which depicted the enantiomer that was the active ingredient.   While the district court construed the claim as covering both enantiomers and mixtures thereof, the Federal Circuit said that it need not determine what else falls within the claim’s ambit to resolve the dispute.

The plain claim language and specification demonstrate that, at a minimum, the claim covers what it depicts, which suffices to resolve the parties’ dispute because Appellants conceded that the district court’s judgment can be affirmed if the claim at least covers the depicted enantiomer.   Noting a lack of anything in the claim language limiting its scope to a “racemate” or “racemic mixture,” or some indication in the specification
or prosecution history to the contrary, the Federal Circuit held that the plain and ordinary meaning of the claim covers at least the specific enantiomer depicted in the claim itself.

“BRI.” You Keep Using That Word. We Do Not Think it Means What You Think it Means.

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In In re: Power Integrations, Inc., [2017-1304] (March 19, 2018), the Federal Circuit reversed the decision on remand that claims 1, 17, 18, and 19 of U.S. Patent No. 6,249,876 were anticipated, because the Board relied upon an unreasonably broad claim construction.  The patent describes a technique for reducing electromagnetic interference (“EMI”) noise “by jittering the switching frequency of a switched mode power supply.”

The Board affirmed the examiner’s rejection of the claims as anticipated in light of its construction of the term “coupled” that was broad enough to encompass an EPROM between the counter and the digital to analog
converter.  The Federal Circuit noted that the patent had been previously litigated, and the claims were found to be not obvious or anticipated.  When the case was previously before it, the Federal Circuit remanded, finding that the Board had an obligation to evaluate the construction from the litigation to determine whether it was consistent
with the broadest reasonable construction of the term.

The Federal Circuit noted that on remand the Board acknowledged that the Federal Circuit’s “concern” that its original decision had failed to assess whether the district court’s interpretation of the term “coupled” was consistent with the broadest reasonable construction, but the Board concluded that such a comparison was “unwarranted.”  The Federal Circuit said that the Board adhered to a generalist dictionary definition of the term“coupled,” and could glean no substantial guidance from either the context of the claim itself or the specification.

The Federal Circuit said that even under the broadest reasonable
construction rubric the Board must always consider the claims in light of the specification and teachings in the underlying patent, and that there was no reason why this construction could not coincide with that
of a court in litigation.  The Federal Circuit added that while the broadest reasonable interpretation standard is broad, it does not give the Board an unfettered license to interpret the words in a claim without regard for the full claim language and the written description.  The Federal Circuit found that the board’s claim construction here was unreasonably broad and improperly omitted any consideration of the disclosure in the specification.

The Federal Circuit explained under the board’s overly expansive view of the term “coupled,” every element anywhere in the same circuit is
potentially “coupled” to every other element in that circuit, no matter how far apart they are, how many intervening components are between them, or whether they are connected in series or in parallel.  The Federal Circuit pointed out that the correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner.

The Federal Circuit noted that the board has had two opportunities to come up with a sustainable interpretation that differs from the one that
survived litigation and has failed, and concluded there was not one.  The Federal Circuit thus reversed the Board without remand.

 

Stare Decisis: Previous Claim Constriction Prevented Finding of Infringement

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In Ottah v. Fiat Chrysler, [2017-1842] (March 7, 20180, the Federal Circuit affirmed the district court’s grant of summary judgment of non-infringement of U.S. Patent No. 7,152,840 on a book holder.

The Federal Circuit noted that it had previously reviewed claim construction of the ’840 Patent, and ruled that several claim limitations
require that the claimed book holder has a “removable mounting.”  This ruling on claim scope is a matter of “claim construction,” which is ultimately a question of law, and not subject to collateral review.  The Federal Circuit said that no error has been shown in this claim construction, and no reason for departing from the rules of collateral
estoppel or stare decisis as to this claim term.

The Federal Circuit discerned no error in the district court’s grant of
summary judgment of non-infringement, for no reasonable fact finder could find that the accused cameras meet the “removably attached” limitation of claim 1.  The Federal Circuit added that it had liberally
construed the pleadings, but have concluded that the Second Amended Complaint’s accusation of infringement lacks plausibility. The district court correctly dismissed Ottah’s complaint with prejudice.

Process Limitations are Presumed to Impart Structural Limitations, Even Where it is not Clear What those Limitations Are

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In In re Nordt Development Co., LLC, [2017-1445] (February 8, 2018), the Federal Circuit rejected the Board’s claim construction of “injection
molded” as a process limitation with no patentable weight, vacated the Board’s finding of anticipation, and remanded.

The application was directed to an elastic knee brace.   The claims required “an injection molded strut component and injection molded first and second arm components” and “an elastically stretchable framework
injection molded about the strut and arm components of the hinge mechanism.”  The Examiner rejected the claims over as anticipated, and the Board affirmed, after finding that the applicant did not persuasively explain what structural limitation is imparted by “injection molded.”

The Federal Circuit said that when considering the patentability
of product claims that contain process limitations, claim scope is generally based on the product itself, not the process. The Federal Circuit noted that If the process limitation connotes specific structure and may be considered a structural limitation, however, that structure should be considered.

Nordt argued that the Board erred in presuming that “injection molded” was a product-by-process limitation, and the Federal Circuit agreed, stating that in presuming “injection molded” to be a process limitation, the Board confounded two somewhat distinct inquiries—the first being whether “injection molded” is a process or structural limitation, the second being the precise meaning of the limitation if structural.

As to the first inquiry, the Federal Circuit found that “injection molded”
connotes structure. Although the application describes “injection molded” as a process of manufacture, neither the Board nor the examiner disputed Nordt’s assertion that “there are clear structural differences” between a knee brace made with fabric components and a knee brace made with injection-molded components.  The Federal Circuit examined the specification and concluded that, at a minimum, the specification demonstrates that “injection molded” connotes an integral
structure.

The Federal Circuit also noted that a default rule that where words of limitation that can connote with equal force a structural characteristic
of the product or a process of manufacture, they are commonly
and by default interpreted in their structural sense, unless the patentee has demonstrated otherwise.  The Federal Circuit then cited numerous examples where such limitations to convey structure even when they also describe a process of manufacture.  The Federal Circuit that not only does the specification itself convey a structural meaning to “injection molded,” but the applicant has repeatedly represented that it does.

Acknowledging that Nordt failed to persuasively or precisely explain
what structural limitation is imparted by “injection molded,” the Federal Circuit nonetheless said that the failure to identify that structure,
does not affect the conclusion, as the structural nature of “injection molded” can be gleaned from the plain claim language and the specification itself.

The Federal Circuit remanded so that the Board could construe the “injection molded” limitation, noting that the specification supports an interpretation that requires an integral structure, and saying it is up to the Board to determine whether this claim language requires any additional structure.

 

About “About”: “Less Than About 3%” Includes 4%

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In Monsanto Technology LLC v. E.I. DuPont De Nemours & Co., [2017-1032] (January 5, 2018), the Federal Circuit affirmed the PTAB’s decision that affirmed reexamination examiner’s rejection of claims of U.S. Patent No. 7,790,953, on Soybean Seed and Oil Compositions and
Methods of Making Same as anticipated by or obvious from U.S. Patent No. 6,426,448.

Monsanto argued that misconstruing the Board misconstrued the “about 3% or less” limitation in the ’953 patent to include progeny with a linolenic acid content of 4%, but the Federal Circuit found that the PTAB “reasonably interpreted” Booth’s parent line containing 4% linolenic acid “to be within the scope of ‘about 3%,’” as recited in claim 1 step (a).  The Federal Circuit found that the claim language was not instructive, so it turned to the the remainder of the specification.  The Federal Circuit noted that Exhibit 9, which purportedly had a linolenic acid content of about 3%, which included a reference that disclosed linolenic acid contents from 2.3% to 4.1%.  Thus the Federal Circuit found that the intrinsic evidence supported finding that a person having ordinary skill in the art would reasonably consider “about 3%” to encompass a range that includes 4%, and that Monsanto’s counterarguments were “unavailing.”

Monsanto further argued that the finding of anticipation was not supported by substantial evidence because the anticipation was not inherent, as the PTAB found.  The Federal Circuit disagreed, saying that inherent anticipation applies because the prior art “necessarily include the unstated limitation.”  Declarations in the record confirmed that the generation identified in the prior art would necessarily result in progeny within the scope of claim 1. Monsanto challenged the PTAB’s reliance on this “non-prior art data” and “secret data” in the declarations, but the Federal Circuit found this was appropriate, saying that Monsanto was confusing prior art with extrinsic evidence used to support what is “necessarily present” in a prior art’s teaching. Extrinsic evidence may be used to interpret the allegedly anticipating reference and to shed light on what it would have meant to a person of ordinary skill in the art. The Federal Circuit said that the declarations did not expand the
meaning of reference or serve as prior art: they demonstrate
what is inherent in the disclosure.  Second the declarations were not improper “secret data” — the were not used as prior art , but merely in support of prior art already of record.  Third, the Federal Circuit offered no rebuttal evidence to the declarations.

The Federal Circuit further affirmed the obviousness determination, noting that PTAB did not rely solely on its finding of inherent anticipation, but explained that explained that a PHOSITA would have been motivated to modify the reference to meet the requirements of the claims.

 

Ungrammatical Language Not Ambiguous in View of Specification as a Whole

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In Organik Kimya AS v. Rohm and Haas Co., [2015-1983, 2015-2001] (October 11, 2017), the Federal Circuit  affirmed the PTAB decisions in IPR2014-00185 and IPR2014-00350, sustaining the patentability of the challenged claims of U.S Patent Nos. 6,020,435 and 6,252,004, respectively.

The patents are directed to processes for preparing certain emulsion polymers having improved opacity.  In the claimed processes a base swelling agent and excess monomer are introduced into an aqueous emulsion of the polymer, under conditions in which there is no
substantial polymerization.  At issue was was the meaning of “swelling agent” which the PTAB construed as not merely as being capable of permeating a shell and swelling the core of a multistage emulsion
polymer in the abstract, but specifically under the conditions of the specific process for which the agent is to be used.  Organik argued that this improperly limited the term “swelling agent” in a manner that inappropriately distinguished the prior art.

Organik argued that the specification was ambiguous in describing the swelling agent:

Suitable swelling agents include, are those which, in the presence of the multistage emulsion polymer and monomer, are capable of permeating the shell and swelling the core. Swelling agents may be aqueous or gaseous, volatile or fixed bases or combinations thereof.

and that the PTAB improperly adopted the narrower construction.  The Federal Circuit noted that the Board did not find the language ambiguous, and agreed with the Board.  Even under the broadest reasonable interpretation, the Board’s construction cannot be divorced from the specification and the record evidence, and must be consistent with the one
that those skilled in the art would reach.

The Board found that the prior art asserted by Organik lacked the swelling agent as that term was used in the claims.  Organik argued the one example in a reference, inherently showed a swelling agent, but Rohm and Haas provided experimental evidence through expert testimony  that it did not.  While Organik contested this evidence, the Board noted that Organik neither provided its own evidence, or showed how different experiments would have yielded different data.

The Federal Circuit found that Board concluded that neither Toda nor Touda discloses or suggests a “swelling agent” as required by the
’435 and ’004 Patents, and that the Board’s decisions are in accordance
with law and supported by substantial evidence in the record, and are affirmed.

The Board Misses the BRI with a Construction that was too Narrow

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In Owens Corning v. Fast Felt Corp., [2016-2613] (October 11, 2017), the Federal Circuit reversed the PTAB decision that the challenged claims of U.S. Patent No. 8,137,757, which describes and claims methods for printing nail tabs or reinforcement strips on roofing or building cover material, were not obvious.

On appeal Owens Corning argued that the Board effectively treated
the “roofing or building cover material” in the claims as limited to material that either has been or would be coated or saturated with asphalt or asphalt mix, and that this limited construction was incorrect under the broadest reasonable interpretation standard.

The Federal Circuit noted that that the Board construed the claim term “roofing or building cover material” to mean “base substrate materials such as dry felt, fiberglass mat, and/or polyester mat, before coating or saturation with asphalt or asphalt mix, and asphalt coated or saturated substrates such as tar paper and saturated felt.” While the Board correctly noted that this construction “does not require an asphalt-coated substrate,” when evaluating Owens Corning’s arguments regarding
motivation to combine and reasonable expectation of success, the Board made clear its understanding of its construction, and hence of the claims, as requiring materials that would eventually be coated with asphalt even if
they had not already been coated before printing.

After reviewing the Board’s rationale, the Federal Circuit concluded that the Board simply did not address roofing or building cover materials that would never be coated in asphalt, and this was a mistake.  The Federal Circuit concluded that the correct broadest reasonable construction of “roofing or building cover material” would include materials that neither have been nor are to be coated or saturated with asphalt or asphalt mix.

The Federal Circuit found that it was not necessary or appropriate to remand the case, however.  On the evidence and arguments presented to the Board, there is only one possible evidence-supported finding: the Board’s rejection of Owens Corning’s challenge, when the correct construction is employed, is not supported by substantial evidence.  Moreover, Fastfelt did not argue for remand.  The Federal Circuit reviewed the record and concluded that the challenged claims were unpatentable for obviousness.

 

Broadest Reasonable Construction is Not One Not Precluded by the Specification, but is One Consistent with the Specification

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In re: Smith International, Inc., [2016-2303] (September 26, 2017), the Federal Circuit reversed the PTAB’s affirmance of the Examiner’s rejections of claims in an ex parte reexamination of U.S. Patent 6,732,817 directed to a downhole drilling tool for oil and gas operations.

The Board affirmed the examiner’s interpretation of the term “body” as a broad term that may encompass other components such as “mandrel” and “cam sleeve,” reasoning that only the term “body” is recited in the
claims without further limiting features and that the specification neither defines the term “body” nor prohibits the examiner’s broad reading of it.  The Federal Circuit concluded that the Board’s construction of “body”
was unreasonably broad. Even when giving claim terms their broadest reasonable interpretation, the Board cannot construe the claims “so broadly that its constructions are unreasonable under general claim construction principles.”

The Federal Circuit noted that some of the claims at issue recite a
broad term “body” without further elaboration on what the term “body” encompasses. However the Federal Circuit noted that the remainder of the specification does not use the term as a generic body. There is no dispute that the patent specification consistently describes and refers to the body as a component distinct from others, such as the mandrel, piston, and drive ring.

On this record, the Board concluded that the Examiner’s broad construction was not precluded.  However the Federal Circuit  found that the correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the Examiner.  Nor is it simply an interpretation that is not inconsistent
with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is “consistent with the specification.”

The Federal Circuit held that giving the term “body” such a strained breadth in the face of the otherwise different description in the specification was unreasonable.  With the correct construction, the Federal Circuit reversed the rejection of the claims.

Claims Can’t Be Construed Contrary to Specification, and then Invalidated for Being Contrary to Specification

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In Intellectual Ventures I LLC v. Motorola Mobility LLC, [2016-1795](September 13, 2017), the Federal Circuit affirm the district court’s judgment in part, reversed in part, and remanded for further proceedings
on the asserted claims of the ’462 patent.

A jury found the asserted claims of 7,810,144 and 7,120,462 infringed and not invalid, and the district court denied Motorola’s motion for judgment as a matter of law.  The Federal Circuit found substantial evidence supported the validity of the ‘144 patent, but not infringement, and that substantial evidence supported the validity and infringement of the ‘462 patent.

Motorola argued that the district court erred in denying judgment as a matter of law that the asserted claim of the ’144 patent was invalid for lack of written description.  In particular, Motorola contended that the specification of the ’144 patent excludes “long-term” or “permanent” storage of the data being transmitted on an intervening computing
device, while claim 41 covers embodiments that nevertheless
use such long-term or permanent storage, in violation of the written description requirement.

The Federal Circuit noted that the claim language neither plainly includes nor plainly excludes long-term or permanent storage, finding that the limitations must be construed in view of the specification.  The Federal Circuit noted that paradoxically, Motorola contends that the specification excludes long-term or permanent storage from the scope of the invention, while simultaneously arguing that claim 41 should be read to cover such storage.  The Federal Circuit instructed that the proper result is not that claim 41 fails for lack of written description but that it should be construed “in view of the specification” to be limited.  The Federal Circuit reiterated its precedent that it is incorrect to construe the claims contrary to the specification, and then to hold the claims invalid because they are contrary to the specification.

After concluding that substantial evidence supports the jury’s verdict of no invalidity with respect to the claim of the ’144 patent, the Federal Circuit turned to the question of whether there was substantial evidence of direct infringement under 35 U.S.C. § 271(a).  The Federal Circuit said that to use a system for purposes of infringement, a party must put the invention
into service, i.e., control the system as a whole and obtain benefit from it.  The Federal Circuit found that the district court erred when it found an infringing use based on the generalized benefit of using the accused system, rather than finding a benefit from each element of the system, and reversed the finding of infringement.