Category Archives: Claim Construction

Complaints About Claim Construction Irrelevant Without a Showing of How it Would Make a Difference

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In Comcast IP Holdings I LLC v. Sprint Communications Company LP, [2015-1992] (March 7, 2017) the Federal Circuit affirmed a $7.5 million dollar award for infringement of U.S. Patent Nos. 8,170,008,
7,012,916, and 8,204,046 directed to the use of computer network
technology to facilitate a telephone call.

Sprint complained about the construction of “switched telecommunication system” but the Federal Circuit failed to show how is construction would result in a different result.  Moreover, the Federal Circuit found that the claim language and the specification did not support Sprint’s proposed construction.

Sprint also complained that there was insufficient that its met the “call destination” and “identifier of a second party” limitations of the claims, which were given their plain and ordinary meaning because neither party requested a claim construction.  The Federal Circuit found that Sprint was essentially proffering a claim construction argument in the guise of a challenge to the sufficiency of the evidence of infringement.”

Finally, Sprint complained about the construction of “parsing,” arguing that the district court failed to apply disclaimers made by the patent owner during prosecution. But the Federal Circuit again found that Sprint failed to show how this affected the outcome.  However the Federal Circuit ultimately agreed with the district court’s construction.

The Federal Circuit also affirmed the award of prejudgment interest from the date of the earliest patent, finding that would be the date of negotiation of the undifferentiated reasonable royalty.

 

Disavowal is Not Limited to What is Necessary; A Patentee May Give Up More than Necessary

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In Technology Properties Limited LLC v. Huawei Technologies Co., Ltd., [2016-1306, 2016-1307, 2016-1309, 2016-1310, 2016-1311] (March 3, 2017), the Federal Circuit vacated and remanded the case because the district court erred in a portion of its construction
of “entire oscillator” in U.S. Patent No. 5,809,336 on a microprocessor with two independent clocks.

The claims require “an entire oscillator disposed upon said integrated
circuit substrate and connected to said central processing
unit.”  The district court construed the term to mean “an oscillator located entirely on the same semiconductor substrate as the central processing unit that does not require a control signal and whose frequency is not fixed by any external crystal.”  Appellee argued that the second part of this construction was required because of disclaimers made during prosecution to overcome Magar, U.S. Patent No. 4,503,500, and Sheets, U.S. Patent No. 4,670,837.

The Federal Circuit began noting that an applicant’s statements to the PTO characterizing its invention may give rise to prosecution disclaimer. The Fedeal Circuit said that prosecution disclaimer can
arise from both claim amendments and arguments made
to the PTO, but does not apply unless the disclaimer is “both clear and unmistakable to one of ordinary skill in the art.  When determining
whether disclaimer applies, applicant’s statements must be cosnidered in the context of the entire prosecution.  If the statements are ambiguous or amenable to multiple reasonable interpretations, prosecution disclaimer is not established.

After examining the applicants arguments regarding Magar during prosecution, the Federal Circuit agreed with the district court’s conclusion that the “entire oscillator” must be a variable frequency oscillator rather than a fixed-frequency crystal.  The Federal Circuit
said that the disclaimer may not have been necessary, but the statements made to overcome Magar were clear and unmistakable.

The Federal Circuit said that the patent owner presented clear and concise arguments about the distinctions between Magar and the
patent in its briefing, and add that had those same arguments been made to the Patent Office, the construction may have been different because the patentee likely disclaimed more than was necessary to overcome the examiner’s rejection. However, the Federal Circuit admonished:

the scope of surrender is not limited to what is absolutely necessary to avoid a prior art reference; patentees may surrender more than necessary.

As to disclaimers based upon Sheets, the Federal Circuit found that the district court went too far in limiting an “entire oscillator” to one “that does not require a control signal.” The Fedeal Circuit said that this was beyond the arguments made by application that the term is properly construed as one “that does not require a command
input to change the clock frequency.”

The Federal Circuit indicated that its minor modification to the district court’s construction likely does not affect the outcome in this case, because the parties stipulated to non-infringement under the district court’s construction, the proper course was to vacate.

 

The Removal of Matter from the Provisional Application is Significant to the Interpretation of the Claims in the Non-Provisional Application

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In MPHJ Technology Investments, LLC. v. Ricoh Americas Corp., [2016-1243] (February 13, 2016), the Federal Circuit affirmed the PTAB decision that claims 1-8 of U.S. Patent No. 8,488,173 were
invalid on the grounds of anticipation or obviousness.

On appeal MPHJ argued that “interfacing” and “Go button” were single step operations, and that the PTAB erred in construing these claim elements as not limited to single-step operations. MPHJ was relying upon portions of its prior provisional application, which Ricoh pointed out were omitted from the final regualr utility application. MPHJ responded that these omitted sections were not explicitly disclaimed, and therefore that they are part of the prosecution history and are properly relied on to explain and limit the claims, even if the passages do not appear in the issued patent.

The Federal Circuit agreed that a provisional application can contribute to understanding the claims, but found that it was the deletion from the provisional application that contributes understanding of the intended scope of the final application.  The Federal Circuit concluded that a person of skill in this field would
deem the removal of these limiting clauses to be significant.  The Federal Circuit noted that the ’173 Patent in its final form contains no statement or suggestion of an intent to limit the claims to the
deleted one-step operation. Neither the specification nor
the claims state that this limited scope is the only intended
scope. Instead, the ’173 Patent describes the single step
operation as “optional.”

Based upon this construction, the Federal Circuit affirmed that the claims were anticipated or obvious over the prior art.

Strong Presumption that Markush Claim Elements are Closed to Additional Elements

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In Shire Development. LLC v. Watson Pharmaceuticals, Inc., [2016-1785] (February 10, 2017), the Federal Circuit reversed a finding of infringement because the accused product did not meet the Markush claim element, and remanded for entry of an order of non-infringement.

The claims of U.S. Patent No. 6,773,720 required:

an outer hydrophilic matrix wherein the lipophilic matrix is dispersed, and said outer hydrophilic matrix consists of compounds selected from the group consisting of polymers or copolymers of acrylic or methacrylic acid, alkylvinyl polymers, hydroxyalkyl celluloses, carboxyalkyl celluloses,

polysaccharides, dextrins, pectins,

starches and derivatives, alginic acid, and natural or synthetic gums

After noting that a Markush claim is a particular kind of patent claim that lists alternative species or elements that can be selected as part of the claimed invention, the Federal Circuit pointed out that the Markush elements used the language “consisting of” which is presumed to be closed to additional elements.   Though the “consisting of” presumption is very strong,
there have been rare exception for “aspects unrelated to the
invention.”

The Federal Circuit found that magnesium stearate, an excipient
not within the claim 1(b) Markush group, was present in the outer hydrophilic matrix, and thus the claim 1(b) limitation was literally violated.  The district court nonetheless found infringement because the component outside of the Markush group—i.e., the lipophilic magnesium stearate in the hydrophilic outer matrix—was unrelated to the invention.  The Federal Circuit disagreed with the district court’s interpretation of what constitutes a component unrelated to the invention.  The Federal Circuit found that the magnesium stearate structurally and functionally relates to the invention, and its presence in the outer matrix violates the “consisting of” requirement in claim 1(b).

While the magnesium stearate was included as a lubricant, rather than for its lipophilic properties, this was not sufficient to overcome the strong presumption of the closed nature of the claim.  Even the fact that examples in the patent included magnesium stearate was insufficient to overcome this strong presumption.

Disavowal By Description, Disparagement, and Argument Limit Claims

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In Poly America, LP v. API Industries, Inc., [2016-1200] (October 14, 2016), the Federal Circuit  affirmed the district court’s construction of “short seal” in the claims of U.S. Patent No. 8,702,308 to require that such seals extend inwardly, because of clear and unequivocal statements that the inventor intended to limit the claimed invention.

Poly-America argues that in construing the term “short seal” to require inward extension, the district court erred by importing limitations from embodiments described in the specification, misreading the prosecution history, and ignoring principles of claim differentiation.  The Federal Circuit disagreed.

Claim construction departs from the plain and ordinary meaning in only two instances: (1) when a patentee acts as his own lexicographer; and (2) when the patentee disavows the full scope of the claim term in the specification or during prosecution.  There was no indication or assertion of lexicography in this case, so the only question remaining was whether the inventor disavowed trash bags with short seals that do not extend inwardly.  The Federal Circuit noted that disavowal can be effectuated by language in the specification or the prosecution history, but in either case, the standard for disavowal is exacting, requiring clear and unequivocal evidence that the claimed invention includes or does not include a particular feature.  However, while disavowal must be clear and unequivocal, it need not be explicit.

The Federal Circuit noted the short seal was described as “one of the characteristics of the present invention,” and that the specification disparaged prior art without the claimed feature. Furthermore, the Federal Circuit found that Poly-America’s reply to the rejection of all claims also contains a clear and unmistakable disavowal of short seals that do not extend inwardly.

The Federal Circuit said that this analysis did not involve importing limitations from embodiments described in the specification, noting that every embodiment described in the specification has inwardly extended short seals and every section of the specification indicates the importance of inwardly extended short seals.

 

No Disclaimer Found When Statements are Viewed in Context of Claims Pending at the Time They were Made

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In Massachusetts Institute of Technology v. Shire Pharmaceuticals, Inc., [2015-1881] (October 13, 2016), the Federal Circuit affirmed the district court’s construction of “vascularized organ tissue” and “cells derived from a vascularized tissue” and its determination that the term “three-dimensional scaffold” was not indefinite, and thus the parties stipulated to a final judgment of validity and infringement stands.

The Federal Circuit said that the doctrine of prosecution disclaimer precludes patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution. In order for prosecution disclaimer to attach, the disavowal must be both clear and unmistakable.  Where the alleged disavowal is ambiguous, or even amenable to multiple reasonable interpretations, the Federal Circuit said that it has declined to find prosecution disclaimer.

On the first term, “vascularized organ tissue,” the district court determined that there was no clear and unmistakable disclaimer that would exclude skin from the term’s ordinary meaning, and construed the term “vascularized organ tissue” as “vascularized tissue from an organ,” reasoning that because “the dermal layer of skin contains blood vessels, this term encompasses skin,” and the Federal Circuit agreed. The Federal Circuit analyzed the statements identified by Shire in the context of the claims pending at the time they were made.  Federal Circuit determined that a skilled artisan, reading the prosecution history as a whole, would conclude that MIT’s invention does in fact cover vascularized skin.

The Federal Circuit also agreed with the district court’s construction of “cells derived from a vascularized tissue” to include both parenchymal and non-parenchymal cells, noting that the claims themselves do not make a distinction.  After reading the full prosecution history in light of the then-pending claim language, the Federal Circuit concluded that a skilled artisan would not read MIT’s statements made during prosecution — and directed to very different claim language — as limiting the term “cells derived from a vascularized tissue” to parenchymal cells.

Lastly with respect to the district court’s determination that the term “three-dimensional scaffold” is not indefinite, the Federal Circuit affirmed the district court’s claim construction and validity determination.  While Shire asserted that there was no definition of “three-dimensional,” the district court construed the term “three dimensional” according to its accepted, ordinary meaning, as confirmed by dictionary definitions. Shire complained that these were current, non-technical dictionaries, but the Federal Circuit pointed out that Shire failed to show how technical dictionaries or dictionaries contemporaneous to the patents’ filing date would define the term any differently, and in fact the definitions were consistent with Shires own experts.

 

 

Anything You Say Can and Will be Used Against You in a Court of Law

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Consistent with the Miranda warning that anything you say can (and will) be used against you in a court of law.  The Federal Circuit looks to every part of a patent when construing the claims, including the lowly abstract.  In Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 (Fed. Cir. 2000) the Federal Circuit used the Abstract to support its claim construction.  The Federal Circuit rejected the argument that 37 CFR 1.72(b) provides that the abstract “shall not be sued for interpreting the scope of the claims,” pointing out that this was a Patent Office rule, governing the conduct of patent examiners examining patent applications, and not construction of claims by the courts.  The Hill-Rom court noted other instances where it used the Abstract to construe claims: United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1560, 41 USPQ2d 1225, 1230 (Fed.Cir. 1997)(citing the description in the Abstract); Stryker Corp. v. Intermedics Orthopedics, Inc., 96 F.3d 1409, 1412, 40 USPQ2d 1065, 1066 (Fed.Cir. 1996)(citing the description in the Abstract); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1269, 229 USPQ 805, 810 (Fed.Cir. 1986)(citing the description in the Abstract), and found no legal principle that would require it “to disregard that potentially helpful source of intrinsic evidence as to the meaning of claims.”  The Federal Circuit also looked to the Abstract in Honeywell Inc. v. Victor Co. of Japan Ltd., 298 F3d 1317, 63 USPQ2d 1904 (Fed. Cir. 2002).

However, in Innova’Pure Water, Inc., v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1121 [72 USPQ2d 1001, 1008] (Fed. Cir. 2004), the Federal Circuit discounted statements made in an Abstract, noting “While a statement in the Abstract may operate as a clear expression of manifest exclusion, for several reasons, this statement does not.”

 

What’s in a Name?

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Does the title have a role in claim construction?  In Poly-America LP v. GSE Lining Technology Inc., 383 F3d 1303, [72 USPQ2d 1685, 1689] (Fed. Cir. 2004), the Federal Circuit found that the title of the patent in suit (5,763,047) — Blown-film Textured Liner Having a Smooth Welding Strip — supported treating the term blown-film in the preamble of the claims as a claim limitation.

But, see, Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091, 1111 [56 USPQ2d 1225] (Fed. Cir. 2000) (“[T]he bar on importing limitations from the written description into the claims applies no less forcefully to a title.”); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1312 [51 USPQ2d 1161] (Fed. Cir. 1999) (noting patent title’s“near irrelevancy” in claim construction).

Friday Musings: Newton’s Laws of Claim Construction

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When you stop and think about it, Newton’s Laws can be applied to the all-important issue of claim construction.

Newton’s First Law of Claim Construction:  A term in a claim has its ordinary meaning to a person of skill in the art, unless acted upon by the specification or prosecution history.

Newton’s Second Law of Claim Construction: Claim scope is directly proportional to specification disclosure, and inversely proportional to the scope of the prior art.  Put another way, claim scope is the product of the patent’s disclosure and the prior art.

Newton’s Third Law of Claim Construction: For every canon of claim construction, there is an equal an opposite canon of claim construction.

For example: Canon: “Each Word in Claim is Presumed to Have Meaning.”  See Foremost In Packaging Sys. v. Cold Chain Technologies, 485 F.3d 1153 (2007); In re Gabapentin Patent Litigation, 503 F.3d 1254, (2007); Stumbo v. Eastman Outdoors, Inc., 508 F3d 1358, [85 USPQ2d 1275] (Fed. Cir. 2007); Bicon v. Straumann, 441 F.3d at 950 (2006)(Rejecting patentee’s proferred construction, in part because that construction would render some of the claim language superfluous.).   Opposite Canon: “A Preamble is Generally Not a Limitation.”  See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 [63 USPQ2d 1769] (Fed. Cir. 2002)(“Generally”. . . the preamble does not limit the claims.”).

Look for more on Newton’s Third Law of Claim Construction in future posts.

 

 

Substantial Evidence Supported Infringement of Limitations That Did Not Need Construction

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In Lifenet Health v. Lifecell Corporation, [2015-1549](September 16, 2016) the Federal Circuit affirmed the district court’s judgment that the claims of U.S. Patent No. 6,569,200 on plasticized soft tissue grafts suitable for transplantation into humans were not invalid and were infringed.

At issue was the claim language that the “one or more plasticizers are not removed
from said internal matrix of said plasticized soft tissue graft prior to transplantation into a human.”  This language was added during prosecution to distinguish over prior art where the introduced plasticizers were removed before implantation.  The accused product instructed users to soak the grafts in saline which would remove as much as 50% of the plasticizers.

The district court found that no further claim construction was needed.  Lifecell argued that the district court failed to resolve a legal dispute regarding the scope of the claim, however the Federal Circuit found that Lifecell did not properly raise the issue.  Lifecell wanted the jury to be instructed that removal of any plasticizer from any part of the graft was enough to avoid infringement, which the Federal Circuit found was not only an argument about degree of removal, but also an argument about from where the pasticizer is not to be removed.  Regarding degree, Lifecell did get the interpretation  and instruction it wanted.  Regarding location, Lifecell failed to properly raise an issue of what “internal matrix” meant .

Examining the record, the Federal Circuit found that there was substantial evidence to support the jury’s determination that plasticizer is not removed “from the internal matrix” of the accused tissue grafts before transplantation.

The Federal Circuit went on to reject Lifecell’s arguments based on joint infringement, finding that the limitations were not steps that needed to be performed, but limitations on the structure.  Similarly, the Federal Circuit rejected the argument that the claim contained mixed method and apparatus limitations.