“Half-Liquid” is Wholly Indefinite

In IBSA Institut Biochemique, S.A. v. Teva Pharmaceuticals USA, Inc., [2019-2400] (July 31, 2020), the Federal Circuit affirmed claims the district court determination that claims 1, 2, 4, and 7–9 of U.S. Patent No. 7,723,390 were invalid as indefinite under 35 U.S.C. § 112.

Central to the appeal was the parties’ dispute over the construction of “half-liquid,” which appears in independent claim 1.  IBSA proposed that the term “half-liquid” should be construed to mean “semi-liquid, i.e., having a thick consistency between solid and liquid.” Teva argued that the term “half-liquid” is indefinite or should be construed as “a non-solid, non-paste, non-gel, non-slurry, non-gas substance.”

The district court determined that IBSA’s proposed construction was not supported by the record, and that a skilled artisan could not otherwise ascertain a reasonably certain meaning for “half-liquid.”

The Federal Circuit began by noting that a claim is invalid for indefiniteness if its language, read in light of the specification and prosecution history, fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.  The Federal Circuit then turned to the language of the claim to determine whether the meaning of “half-liquid” is reasonably clear. Neither party meaningfully disputed that the claim language did not make the meaning of “half-liquid” reasonably clear. The Federal Circuit found that the claim language clarifies only that a “half-liquid” differs from a liquid.  The Federal Circuit then turned to the specification and prosecution history, which did not help. In fact, the fact that at one time a claim to a semi-liquid depended from the claim to the half-liquid established that half-liquid and semi-liquid were not synonyms.

Because the intrinsic evidence failed to establish the boundaries of a “half-liquid,” the  Federal Circuit turned to the extrinsic evidence, and found no error in the district court’s determination that the extrinsic evidence does not supply “half-liquid” with a definite meaning under § 112.

The Federal Circuit concluded that taken together, the intrinsic and extrinsic evidence fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention, and affirmed the judgment of the district court.

It is important to make sure the meaning of every claim term is clear from the specification, particularly where the claims have been translated from another language.

Federal Circuit Asks PTAB to Give it a Go and Decide Whether Indefinite Claims Were otherwise Patentable

In Samsung Electronics America, Inc. v. Prisua Engineering Corp., 2019-1169, 2019-1260 (February 4, 2020) the Federal Circuit affirmed the PTAB determination that claim 11 of U.S. Patent No. 8,650,591 was invalid for obviosuness, but vacated the PTAB’s decision declining to decide whether claims 1-4 and 8 were patentable because these claims were indefinite.

The claims of the ‘591 patent are directed to methods and apparatuses for generating a displayable edited video data stream from an original video data stream. The Board determined that claim 1 (and claims 2-4 and 8) claimed both an apparatus and a method, and thus was indefinite under IPXL Holdings. Because the claims were indefinite, the Board declined to determine whether they otherwise defined patentable subject matter. The Board also found the claims indefinite because of the inclusion of “digital processing unit” which the Board found invoked 112(f), without identifying any corresponding stucture in the claims.

Samsung appealed arguing that the Board should have declared the claims in valid for indefiniteness. The Federal Circuit agreed with the Board that the Board did not have the authority to invalidate claims on that ground.

Samsung’s secondary argument was that the Board should have nonetheless assessed the patentability of claims 1 and 4–8 under sections 102 or 103. On this point, the Federal Circuit agreed.

The Federal Circuit noted that on the first ground of indefiniteness — mixed method and apparatus claiming, the indefiniteness problem was one of understanding when infringement occurred, and not necessarily what the claim actually means. Moreover, the Federal Circuit noted that the Board had previously held that IPXL-type indefiniteness does not prevent the Board from addressing patentability.

Thus the Federal Circuit remanded the case for the Board to attempt to apply 102 and 103 to the claims.

As to the second ground of indefiniteness, that “digital processing unit” invoked 112(f) without providing corresponding structure in the claims, the Federal Circuit disagreed. The Federal Circuit said that the question whether the term “digital processing unit” invokes section 112, paragraph 6, depends on whether persons skilled in the art would understand the claim language to refer to structure, assessed in light of the presumption that flows from the drafter’s choice not to employ the word “means. The Federal Circuit said that the Board pointed to no evidence that a person skilled in the relevant art would regard the term “digital processing unit” as purely functional. In fact, the patent owner argued to the Board, based on testimony from its expert (the inventor), that the digital processing unit recited in the claims is “an image processing device that people in the art are generally familiar with.” Moreover, the fact that claim 1 required the “digital processing unit” to be operably connected to a “data entry device” supports the structural nature of the term “digital processing unit,” as used in the claim.

The Federal Circuit rejected the Board’s conclusion that the term “digital processing unit,” as used in claim 1, invoked means-plus-function claiming,
and that for that reason claims 1 and 4–8 cannot be analyzed for anticipation or obviousness.

Clearly Defining A Term Without Providing Any Way to Determine When it has Been “Optimized” as Claimed Dooms Claims Under 112

In Intellectual Ventures I LLC v. T-Mobile USA, Inc., [2017-2434, 2017-2435](September 4, 2018), the Federal Circuit affirmed the district court’s determination that the claims of U.S. Patent No. 6,640,248 were indefinite, and vacated and remanded summary judgment of non-infringement because of erroneous claim construction.

At issue was the term “Application-Aware Resource Allocator.”  The district court  adopted T-Mobile’s construction of “application-aware resource allocator” as requiring that when allocating bandwidth, the application-aware resource allocator must take into account information obtained from the application layer 7. However the Federal Circuit determined that  application awareness requires only that the resource allocator allocate resources based on application type, which can be discerned using information obtained from any of network layer 3, transport layer 4, or application layer 7.  The plain language of the claims, the specification, and the prosecution history all support this
construction. The Federal Circuit rejected T-Mobile’s arguments about disavowal, noting disavowal is an “exacting” standard under which it must be established that the
patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term through expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope, and the statements in the prosecution history did not meet this exacting standard.

On the definiteness issue, the Federal Circuit found that the district court did not erroneously fail to consider the structure after determining that the function was indefinite.  The Federal Circuit concluded that the claim requirement of optimizing QoS requirements was entirely subjective and user-defined. The Federal Circuit pointed out that the ’248 patent analogizes QoS to “a continuum, defined by what network performance characteristic is most important to a particular user” and characterizes it as “a relative term, finding different meanings for different users.” The patent concluded that ultimately,“the end-user experience is the final arbiter of QoS.”  Thus while specification clearly defines that the QoS relates to the end-user experience, it fails to provide one of ordinary skill in the art with any way to determine whether QoS has
been optimized.




Intervening Rights Apply When There Is a Product that Infringes the Original Claim that Does Not Infringe the Amended Claim

Presidio Components, Inc. v. American Technical Ceramics Corp., [2016-2607, 2016-2650] (November 21, 2017) the Federal Circuit affirmed the district court’s holdings that the claims are not indefinite and that ATC is entitled to absolute intervening rights because a substantive amendment was made during reexamination, but reversed the award of lost profits and remanded for determination of a reasonable royalty.
The case involved U.S. Patent No. 6,816,356 on a multilayer capacitor.

1. A capacitor comprising:
a substantially monolithic dielectric body;
a conductive first plate disposed within the dielectric body;
a conductive second plate disposed within the dielectric body and forming a capacitor with the first plate;
a conductive first contact disposed externally on the dielectric body and electrically
connected to the first plate; and
a conductive second contact disposed externally on the dielectric body and electrically connected to the second plate, and
the second contact being located sufficiently close to the first contact in an edge to
edge relationship in such proximity as to form a first fringe-effect capacitance with
the first contact that is capable of being determined by measurement in terms of a
standard unit.

Regarding indefiniteness, the claim required “first fringe-effect capacitance with
the first contact that is capable of being determined by measurement in terms of a
standard unit.”  Although industry standards for insertion loss testing had not been published at the time the patent was filed, Presidio’s expert testified that insertion loss testing had been well known for many decades and that a person of ordinary skill could use insertion loss measurements to measure capacitance in terms of Farads, the standard unit of measurement for capacitance.   Presidio’s expert further testified that a person of skill in the art would know how to measure fringe-effect capacitance by using insertion loss measurements. The Federal Circuit said that a claim is not indefinite if a person of skill in the art would know how to utilize a standard measurement method, such as insertion loss, to make the necessary measurement, adding that a patent need not explicitly include information that is already well
known in the art.  The Federal Circuit noted that if a skilled person would choose an established method of measurement, that may be sufficient to defeat a claim of indefiniteness, even if that method is not set forth in haec verba in the patent itself.

On the issue of intervening rights, Presidio contested the application of absolute intervening rights.  The Federal Circuit observed that the owner of a patent that survives reexamination is not entitled to infringement damages for the time period between the date of issuance of the original claims and the date of issuance of the reexamined claims if the original and amended claims are not “substantially identical.  In other words, the Federal Circuit said, if an amendment during reexamination makes a substantive change to an original claim, the patentee is only entitled to infringement damages for the changed claim for the period following issuance of the reexamination certificate.  The Federal Circuit reviewed the district court’s assessment of the scope of the original and reexamined claims de novo, and agreed that the scope had changed.  Presidio argued that the scope of the claims did not change because its stated goal in amending the claims was to adopt the district court’s construction in prior litigation.  However, the Federal Circuit said that the patentee’s intent in making the
amendment is not determinative or controlling in determining claim scope.  The relevant inquiry is whether the scope of the amended claims is actually identical to the scope of
the original claims based on normal claim construction analysis, articulated in Phillips. To determine whether an amended claim is narrower in scope, one determines whether there is any product or process that would infringe the original claim, but not infringe the amended claim. The Federal Circuit found that while the construction of the prior claim required that the fringe capacitance be determined, it did not specify it be determined by testing, as the amended claim required, so the claims did in fact have different scopes.

On the issue of lost profits, Presidio claimed lost profits for its sales of the BB capacitors, which Presidio claimed were adversely affected by the sale of ATC’s infringing 550 line of capacitors.  To recover lost profits, the Presidio had to show a reasonable probability that, “but for” infringement, it would have made the sales that were made by the infringer.  “But-for” causation can be proven using the four factor test in Panduit, which requires the patentee to show: (1) demand for the patented product; (2) an absence of acceptable, noninfringing substitutes; (3) manufacturing and marketing capability to exploit the demand; and (4) the amount of profit that would have been made.  A patentee can recover lost profits even if its product does not practice
the claimed invention, where the product directly competes with the infringing device.  Although the BB capacitor does not practice the ’356 patent, Presidio could still recover lost profits because the BB capacitor competes directly with the infringing 550
capacitors.  However the correct inquiry under Panduit is whether a non-infringing alternative would be acceptable compared to the patent owner’s product, not whether it is a substitute for the infringing product.  Thus while defendant’s 560L product was not a an adequate substitute for the accused 550 product, it might be an adequate non-infringing substitute for Presidio’s BB.  The Federal Circuit found that Presidio failed to prove that the 560L was not an acceptable substitute for its BB product, and reversed the award of lost profits, and remanded for a determination of a reasonable royalty.

The Federal Circuit found no abuse of discretion in the district court’s refusal to award increased damages despite the finding of willfulness.  The Federal Circuit also vacated the injunction in view of its reversal of the lost profits award, and remanded the case for the district court to redetermine the propriety of a permanent injunction.


Breadth is not Indefiniteness; If the Relevant Skilled Artisan has Reasonable Certainty as to What is Covered the Claim is Not Indefinite

In BASF Corp. v. Johnson Matthey Inc., [2016-1770](November 20, 2017), the Federal Circuit reverse the judgment of invalidity for indefiniteness of U.S. Patent No. 8,524,185,
which describes and claims systems for performing catalytic conversion of nitrogen oxides (NOx) in an exhaust gas stream, and remanded.

The ’185 patent claims a partly-dual-layer arrangement of catalytic coatings on a substrate over which exhaust gas passes, e.g., the walls of a flow-through chamber having a honeycomb structure, whose function is to remove NOx from a stream of exhaust gas while minimizing the amount of ammonia that ends up being released
from the system.  The claims require a “composition . . . effective to catalyze” or a “composition . . . effective for catalyzing.”  The accused infringer argued, and the district court agreed, that the phrases are indefinite, because the “effective to catalyze” language used to identify the claim compositions is functional, and there are no objective boundaries on (1) what amount of effectiveness is required, or (2) how to measure the effectiveness.

The Federal Circuit framed the issue of indefiniteness after Nautilus as: would the “composition . . . effective to catalyze” language, understood in light of the rest of the patent and the knowledge of the ordinary skilled artisan, have given a person of ordinary skill in the art a reasonably certain understanding of what compositions are covered?  The Federal Circuit found that the district court’s analysis supplied no basis to answer this question in Johnson’s favor.

While the district court focused on the functional nature of the language, Federal Circuit noted that the Nautilus standard of “reasonable certainty” does not exclude claim language that identifies a product by what it does. The Federal Circuit said that nothing inherent in the standard of “reasonable certainty” precludes a relevant skilled artisan from understanding with reasonable certainty what compositions perform a particular function, and noted that it has held that nothing in the law precludes, for indefiniteness, “defining a particular claim term by its function.”  Rather, what is needed is a context-specific inquiry into whether particular functional language actually provides the required reasonable certainty.

The district court also noted that the claims did not recite a minimum level of function needed to meet the “effective” limitation nor a particular measurement method for determining effectiveness.  However the Federal Circuit said that the mere observation of information not recited did not answer the question of whether a person of ordinary skill in the art would need to be given the level and measurement information to understand, with reasonable certainty, whether a composition is “effective to catalyze” the SCR (of NOx) or AMOx reactions.

While the district court said that without this information a person of ordinary skill in the art could not determine which materials are within the limitations and which are not, the Federal Circuit said this conclusion was “entirely unsupported”. The Federal Circuit said that the district court did not consider that the specification makes clear that it is the arrangement of the catalysts, rather than the selection of particular catalysts, that purportedly renders the inventions claimed in the ’185 patent a patentable advance over the prior art.  The Federal Circuit found that the claims and specification let the public know that any known catalysts can be used as long as they play their claimed role in the claimed architecture.

The district court credited the accused infringer’s argument that “a practically limitless number of materials” could meet the claim requirements, and treated this scope as indicating that the claims, as written, fail to sufficiently identify the material  compositions. However the Federal Circuit admonished: “breadth is not indefiniteness.” The Federal Circuit found no persuasive support for the necessary conclusion that a relevant skilled artisan would lack reasonable certainty as to what compositions
are “effective to catalyze” the reactions at issue.

The Federal Circuit focused on the point of novelty, noting:

The intrinsic evidence in this case makes clear that the asserted advance over the prior art is in the partly-dual-layer arrangement to create a two-phase operation for performing the identified conversion processes, not in the choices of materials to perform each of the required catalytic processes. It is in this context that the question of the certainty or uncertainty experienced by a relevant skilled artisan in understanding the claims, read in light of the specification, is presented. And it is in this context that the relevant skilled artisan would be informed by the specification’s numerous examples of qualifying compositions A and B,

The Federal Circuit concluded that the record did not contain intrinsic or extrinsic evidence that would support a judgment of indefiniteness.


Functional Language in an Apparatus Claim does not Always Make Claim Indefinite

In Mastermine Software, Inc., v. Microsoft Corp., [2016-2465](October 30, 2017), the Federal Circuit affirmed the court’s claim construction, but reversed the court’s indefiniteness determination, and remand for proceedings consistent with its opinion.

U.S. Patent Nos. 7,945,850 and 8,429,518 describe a process by which an electronic worksheet is automatically created.  The district court construed the term “pivot table,” resulting in a stipulation of non-infringement.  The district court also agreed with Microsoft that certain of the claims were indefinite for improperly claiming two different subject-matter classes.

On appeal Mastermine argued the district court’s construction of pivot table was incorrect because it excludes tables that do not display data.  However the Federal Circuit found that each time the claims recite the generation of a pivot table, they further recite within the same limitation
that the generated pivot table contains data or presents data.  The Federal Circuit further found that the specification further supports the district court’s construction, noting that in the context of the invention is to display data that can be viewed, summarized, and manipulated by users, and such user action is available upon the generation of the pivot  tables.  The Federal Circuit further found that prosecution history of the patents  provides additional support for the district court’s construction.   Finally, the Federal Circuit found that MasterMine’s arguments in support of its contrary claim construction were not compelling.

With respect to the finding that claims 8 and 10 of the ’850 patent and
claims 1, 2, and 3 of the ’518 patent were invalid for indefiniteness, the Federal Circuit noted that while a claim directed to both a method and an apparatus may be indefinite, apparatus claims are not necessarily indefinite for using functional language.  The Federal Circuit disagreed with the district court, finding the claims were simply apparatus claims with
proper functional language, like HTC and MEC and UltimatePointer.  The Federal Circuit said that like the claims in MEC, HTC, and UltimatePointer, the claims at issue merely claim that the system possesses the recited structure which is capable of performing the recited functions.  Further, the Federal Circuit distinguished IPXL Holdings and Katz, as the claims at issue do not claim activities performed by the user; they do not
explicitly claim the user’s act of selection, but rather, claim the system’s capability to receive and respond to user selection.

Because these claims inform those skilled in the art about the scope of the invention with reasonable certainty, the Federal Circuit reversed the district court’s determination that claims 8 and 10 of the ’850 patent and claims 1, 2, and 3 of the ’518 patent are invalid as indefinite



Applicants Claims “Configured” to be Vague and Unclear

In Ex Parte McAward, [Appeal 2015-006416 (Application 13/435,655)] (August 25, 2017), the Board of Appeals considered in definiteness under 35 U.S.C. § 112 in a rare precedential decision.  Applicant was claiming a water leakage detector that is easily connectable to flexible water hoses to monitor leakage from hot and cold water supply lines.  The claim included language that the detector is “configured to be reliably installed by an untrained installer or a homeowner and to not require the services of a plumber or electrician to perform installation, thereby permitting widespread and cost effective adoption.”

The Board began with an explanation of the rationale for the Office’s application of the Broadest Reasonable Interpretation to claims pending before the Office, one consequence of which is a lower threshhold for ambiguity than in the courts.  The Board explained that it did not understand that the Supreme Court’s Nautilus decision required any change in the Office’s approach to indefiniteness.  Thus the Board applied the approach for assessing indefiniteness approved by the Federal Circuit in Packard, i.e., “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.”  The Board acknowledged that this requirement is not a demand for unreasonable precision, and does not contemplate in every case a verbal precision of the kind found in mathematics, and invokes some standard of reasonable precision in the use of language in the context of the circumstances.

The Board then turned to the “configured” limitation of the claim, noting that it is unusual because, rather than further defining the water detector’s structure, including by reference to a function that the water detector is capable of performing, the claim language attempts to further define the water detector’s structure by the skill level required to install the water detector.  The Board found that this language “fails to provide adequate clarity to the required structure because the skill level of ‘an untrained installer or a homeowner’ is ambiguous and vague, and thus, the meaning of a structure configured to be “reliably installed” by such an installer is unclear.

While the applicant argued that a person having ordinary skill in the art would understand the “configured” limitation to mean “capable of being installed without special knowledge or tools,” the Board observed that the specification did not support this definition.  The Board found that the Specification contains no description of, for example, the knowledge or tools required for installation of the claimed water detector, nor does the Specification define the skill level of an “untrained installer” or a “homeowner.”  The Board concluded that the claim “the claim suffers from general vagueness and ambiguity.”

The Board went on to point out that even if the applicant’s definition was correct the “configured” limitation, when read in light of the Specification, fails to further clearly define the structure encompassed by the limitation.  In other words, the Board said, neither the claim language or specification delineates how a person of ordinary skill would determine whether a water detector that includes each of the structural limitations of claim 1 further satisfies the “configured” limitation.

For these reasons, the Board agreed with the Examiner that the claimed “configured” limitation, under the broadest reasonable interpretation when read in light of the Specification, is vague and unclear, and a person having ordinary skill in the art would not be able to discern the metes and bounds of the claimed invention in light of this claim language.

A Foolish Consistency may be the Hobgoblin of Little Minds, but it is the Hallmark of a Successful Applicant/Patent Owner

In In re Walter, [2016-2256] (August 21, 2017), the Federal Circuit affirmed the PTAB’s decision in ex parte reexamination of U.S. Patent No. 7,513,711 that all twelve claims of the patent lack adequate written description and are indefinite under 35 U.S.C. § 112.

While the opinion is non-precedential, it still has a simple, but valuable lesson for applicants and patent owners.  During the reexamination Walter amended the claims (directed to artificial reefs for cultivating marine life) to require a “support structure” that was “block-like.”  The Examiner found this use of “block-like indefinite because Walter’s proposed construction conflicted with the dictionary meaning of the term “block.”  During the appeal to the PTAB and during the appeal to the Federal Circuit, Walter alternated between two different meanings of the claim term “block-like,” and therein is the lesson of the case.  If the applicant/patent owner can’t decide what a claim term means, then it is hard for the Board or a court to conclude that the term is sufficiently definite.

No-one can say whether one of the possible constructions would have satisfied 35 USC §112, but presenting two possible constructions certainly does not.

Among Other Things, the Federal Circuit Affirms Viability of Assignor Estoppel

In Mentor Graphics Corporation v. EVE-USA, Inc., [2015-1470, 2015-1554, 2015-1556] (March 16, 2016), the Federal Circuit:

  • affirmed the jury verdict of infringement of U.S. Patent Nos. 6,240,376, the denial of JMOL, and the award of $36,000,000 in damages, and that that assignor estoppel bars Synopsys from challenging the validity of the patent.
  • reversed summary judgment that U.S. Patent No.
    6,132,109 is indefinite.
  • affirmed summary judgment that U.S. Patent No. 7,069,526 lacks patent-eligible subject matter.
  • vacated the motion in limine precluding Mentor from
    presenting evidence of willful infringement.
  • reversed summary judgment that U.S. Patent No. 6,947,882 lacks
    written description.
  • reverse summary judgment that Mentor’s infringement allegations
    regarding U.S. Patent Nos. 6,009,531 and 5,649,176 are barred by
    claim preclusion.

Regarding Assignor Estoppel, the Federal Circuit rejected Synopsys argument that the Supreme Court abolished the doctrinal underpinnings of assignor estoppel in Lear, Inc. v. Adkins.

Regarding the Damage Award, the Federal Circuit noted that the facts of this case are remarkably simple for a patent damages appeal and Synopsys does not dispute any of them.

The jury found, and Synopsys does not dispute on appeal, that Mentor
satisfied all of the Panduit factors with regard to the sales to Intel for which the jury awarded lost profits:
(1) there was a demand by Intel for the patented product; (2) there were no non-infringing alternative emulator systems acceptable to Intel; (3) Mentor had the manufacturing and marketing capability to satisfy Intel’s demand; and, (4) Mentor established the amount of profit it would
have made if Synopsys had not infringed.  Synopsys argued that the lost profits shuold be apportioned to cover only the patentee’s inventive contribution.  The Federal Circuit agreed with Synopsys that apportionment is an important component of damages law generally, and we believe it is necessary in both reasonable royalty and lost
profits analysis.  However, the Federal Circuit said that Panduit’s requirement that patentees prove demand for the product as a whole and the absence of non-infringing alternatives ties lost profit damages to specific claim limitations and ensures that damages are commensurate with the value of the patented features.

Regarding indefiniteness, the Federal Circuit said that “a method for displaying the results of synthesized circuit analysis visually near the
HDL source specification that generated the circuit” was not indefinite.The Federal Circuit held that the term “near” informs a person of ordinary skill in the art about the scope of the invention with
reasonable certainty, noting that a skilled artisan would understand “near” requires the HDL code and its corresponding circuit analysis to be displayed in a manner that physically associates the two.

Regarding patentable subject matter, the Federal Circuit held that claims containing “machine-readable medium” renders the claimed
subject matter invalid under 35 U.S.C. § 101.  The specification defined machine-readable medium as including carrier waves, found to be unpatentable in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007).

With respect to willful infringement, the Federal Circuit found the district court erred in barring evidence of willful infringement.  Specificaly, the Federal Circuit rejected a rigid rule that post-filing willful infringement cannot be presented unless the party moves for a preliminary injunction.

With respect to written description, the Federal Circuit found that there was adequate written description.  The Federal Circuit found that the very language of claim 1 which the court held was not supported by the specification was present in the originally-filed claims. Original claims are part of the original specification and in many cases will satisfy the written description requirement.

Finally, with respect to claim preclusion, the Federal Circuit said that claim preclusion does not bar later infringement allegations with respect to accused products that were not in existence at the time of the previous actions for the simple reason that claim preclusion requires that in order for a particular claim to be barred, it is necessary that the claim either was asserted, or could have been asserted, in the prior action.


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

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.