PTO Examiners are Entitled to Appropriate Deference

In Nature Simulation Systems Inc. v. Autodesk, Inc., [2020-2257](January 27, 2022), the Federal Circuit reversed the district court’s judgement that U.S. Patent Nos. 10,120,961 and 10,109,105, both entitled
“Method for Immediate Boolean Operations Using Geometric Facets” were not invalid for indefiniteness.

The patents are for data structures and algorithms for the claimed method, which is described as a modification of a the Watson method a Boolean operation published in 1981 for analyzing and representing three-dimensional geometric shapes. There were two claim elements that the district court determined made the claims indefinite: “searching neighboring triangles of the last triangle pair that holds the last intersection point”; and “modified Watson method.” The district court held the claims indefinite based on the “unanswered questions” that were suggested by Autodesk’s expert.

In finding the claims indefinite, the district court declined to consider information in the specification that was not included in the claims. The Federal Circuit found that the district court misperceived the function of patent claims. The Federal Circuit also found that the applicant, in consultation with the examiner, amended the claim to add the disputed language. The Federal Circuit noted that the district court gave no weight to the prosecution history showing the resolution of indefiniteness by adding the designated technologic limitations to the claims. The court did not discuss the Examiner’s Amendment, and held
that since Dr. Aliaga’s questions were not answered, the claims are invalid.

The Federal Circuit said that “[a]ctions by PTO examiners are entitled to appropriate deference as official agency actions, for the examiners are deemed to be experienced in the relevant technology as well as the statutory requirements for patentability.” The Federal Circuit added “[t]he subject matter herein is an improvement on the known Watson and Delaunay methods, and partakes of known usages for established technologies. Precedent teaches that when ‘the general approach was sufficiently
well established in the art and referenced in the patent’ this ‘render[ed] the claims not indefinite.’”

The Federal Circuit concluded that ‘[I]ndefiniteness under 35 U.S.C. § 112 was not established as a matter of law,” and reversed the district court.

Ordinary Meaning Can Be Broader than Disclosed Embodiments

In Evolusion Concepts, Inc. v. HOC Events, Inc., [2021-1963] (January 14, 2022) the Federal Circuit reversed the grant of summary judgment of non-infringement of U.S. Patent No. 8,756,845 on a “Method and Device for Converting Firearm with Detachable Magazine to a Firearm with Fixed Magazine,” , reversed the denial of summary judgment of direct infringement as to the independent claims 1 and 8, and remanded for further proceedings.

The district court held that the term “magazine catch bar” in the asserted claims of the ’845 patent excludes a factory installed magazine catch bar. Claim 15 requires removing “the factory installed magazine catch bar” and then installing “a magazine catch bar.” From this, the district the court concluded that the magazine catch bar that is installed must be “separate and distinct from the factory-installed magazine catch bar”; otherwise, “factory-installed” would be superfluous. Because a term that appears in multiple claims should be given the same meaning in all those claims, the court held that the term “magazine catch bar” in claims 1 and 8 similarly must exclude a factory-installed magazine catch bar. This claim construction precluded literal infringement because Juggernaut’s products use the factory-installed magazine catch bar. The court also determined that Juggernaut does not infringe under the doctrine of equivalents.

The Federal Circuit noted that the principle that the same phrase in different claims of the same patent should have the same meaning is a strong one, overcome only if it is clear that the same phrase has different meanings in different claims. The Federal Circuit noted that while claim 15 was directed to a method, claims 1 and 8 claimed a firearm and a device, respectively. The Federal Circuit said that nothing in the language of claims 1 and 8 limits the scope of the generic term “magazine catch bar” to exclude one that was factory installed—specifically, as Juggernaut asserts, factory installed as part of an original
firearm with a detachable magazine.

The Federal Circuit said that Juggernaut was correct that the meaning of the term in claims 1 and 8 could well be informed by a meaning of the term made sufficiently clear in claim 15, but Juggernaut was incorrect that the use of “magazine catch bar” in claim 15 narrows the meaning of the term to support the
urged exclusion of factory-installed magazine catch bars. The Federal Circuit agreed that claim 15 required removing a factory installed magazine catch but it did not require discarding that catch bar, or installing a different catch bar. The Federal Circuit concluded that the specification supports the ordinary-meaning interpretation of “magazine catch bar.” The Federal Circuit said the specification nowhere limits the scope of a “magazine catch bar” to exclude factory-installed ones from the assembly that achieves the fixed-magazine goal.

Juggernaut argued that the disclosed embodiments do not illustrate OEM magazine catch bars, but the Federal Circuit said that cannot make a difference in this case. The Federal Circuit has repeatedly held that “it is not enough that the only embodiments, or all of the embodiments, contain a particular limitation to limit claims beyond their plain meaning.” The Federal Circuit thus construe the term “magazine catch bar” according to its ordinary meaning, which includes a factory installed magazine catch bar.

Silence is not only Golden, it is a Written Description, if the Skilled Artisan Would Understand it that Way

In Novaritis Pharmaceuticals Corp. v. Accord Healthcare, Inc., [2021-1070](January 3, 2021) the Federal Circuit affirmed the district court’s determination that U.S. Patent No. 9,187,405 on a treatment for relapsing remitting multiple sclerosis (“RRMS”), is not invalid and that HEC’s Abbreviated New Drug Application infringes.

The’405 patent claimed a daily dosage of fingolimod “absent an immediately preceding loading dose,” which HEC challenged as lacking written description. The district court found sufficient written description in the EAE model and the Prophetic Trial, neither of which recited a loading dose.

On appeal, HEC attacked the expert testimony underlying the district court’s determination that the EAE experiment describes a 0.5 mg daily human dose as “undisclosed mathematical sleights of hand.” The Federal Circuit disagreed, noting a disclosure need not recite the claimed invention in haec verba. The disclosure need only clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed. The Federal Circuit said that to accept HEC’s argument would require it to ignore the perspective of the person of ordinary skill in the art and require literal description of every limitation, in violation of our precedent. The Federal Circuit found no clear error in the
district court’s reliance on expert testimony in finding description of the 0.5 mg daily human dose in the EAE experiment results.

The Federal Circuit also rejected HEC’s challenge to the negative limitation “absent an immediately preceding loading dose.” The Federal Circuit began by noting that it was well established that there is no “new and heightened standard for negative claim limitations.” Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1356 (Fed. Cir. 2015). The Court said that negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Adding that a specification that describes a reason to exclude the relevant negative limitation is but one way in which the written description requirement may be met. The Federal Circuit said that the written description requirement
is satisfied where the essence of the original disclosure conveys the necessary information—regardless
of how it conveys such information, and regardless of whether the disclosure’s words are open to different interpretations.

The Federal Circuit pointed to expert testimony that one of ordinary skill in the art would understand the examples to exclude a loading does, so the specification’s apparent silence provided adequate written description of the negative limitation. The Court concluded that written description in this case, as in all cases, is a factual issue. In deciding that the district court did not clearly err in finding written description for the negative limitation in the ’405 patent, the court said that it was not establishing a new legal
standard that silence is disclosure. The Federal Circuit said that it was merely holding that on the record before it, the district court did not clearly err in finding that a skilled artisan would read the ’405 patent’s disclosure to describe the “absent an immediately preceding loading dose” negative limitation.