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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Visiting Judge Explains Potential Downfalls of De Novo Standard of Claim Construction Review

Trading Techs. Int'l, Inc. v. eSpeed, Inc. (Fed. Cir. Feb. 25, 2010)

In a case where a claim construction ruling was affirmed, the interesting point from a standpoint of patent law is the public policy discussion of the Visiting Judge concerning the Federal Circuit standard of de novo claim construction review.  Visiting District Judge Clark from the Eastern District of Texas, sitting by designation, explains the potential downfalls of this de novo review in his concurring opinion.  As it is a good read for those interested, the concurring opinion is reproduced in full below for the reader's reference:

Believing that the judgment is correct and that the opinion correctly analyzes the issues in this case in light of current law, I concur. I write separately to respectfully suggest that the current de novo standard of review for claim construction may result in the unintended consequences of discouraging settlement, encouraging appeals, and, in some cases, multiplying the proceedings.

Determination of the meaning that would have been attributed to a claim term by one of ordinary skill in a sophisticated field of art on the date of filing often requires examination of extrinsic evidence—a determination of crucial facts underlying the dispute, as outlined by Judge Rader in the majority opinion. On some occasions, a determination will be made based, in part, on the weight to be given to conflicting extrinsic evidence or even to an evaluation of an expert’s credibility.

The standard of review that will be applied by a higher court sets one of the important benchmarks against which competent counsel evaluates decisions regarding settlement and appeal. The importance is highlighted by the fact that every brief must state the standard of review. See Fed. R. App. P. 28(a)(9)(B), (b)(5); Fed. Cir. R. 28(a)(10),(b).

The de novo review standard has at least two practical results, neither of which furthers the goal of the “just, speedy, and inexpensive determination of every action and proceeding.” Fed. R. Civ. P. 1. First, rejection of settlement is encouraged, and a decision to appeal is almost compelled, where counsel believes the client’s position is valid, even if debatable, depending on the view taken of extrinsic evidence. It is a natural reaction upon receiving an unfavorable claim construction from a trial court to conclude that one’s own view of complicated facts will be better understood by the judges of the Federal Circuit, who generally have more experience with patent cases, and who, by their own authoritative rule, review the claim construction without regard to any determination the lower court has made.

A patentee has the opportunity to write clearly enough so that the meaning of the claims can be determined from the specification. What public policy is advanced by a rule requiring the determination of underlying facts by more than one court, especially when the likely result is that another group of citizens will be required to “volunteer” for lengthy jury duty on remand?

A second, although less common, consequence of the de novo review standard is the opportunity it offers to the party that presents a case with an eye toward appeal rather than the verdict. Skilled counsel who believes a client may not be well received by a jury is tempted to build error into the record by asking for construction of additional terms, and/or presenting only a skeleton argument at the claim construction stage. This is risky, but it would be unusual for this Court to consider a point waived if a particular claim construction had been requested of the trial court and some argument made, but the clearest explanation was presented on appeal. An appellate court normally does not consider an unpreserved point of error, but a more sharply focused argument regarding points presented on appeal, from among those that are technically preserved, is actually the goal of the appellate specialist. This tactic would be less inviting if claim construction was officially accorded some measure of deference, even if it was applied only in those cases in which resort to extrinsic evidence was necessary.


Northwestern Law IP Symposium in Chicago March 5th

On March 5th, the Northwestern School of Law will be holding its fifth annual IP symposium entitled "New Rules for a New Day - Examining Recent Trends in IP Law."  Sharon Barner, Deputy Under Secretary and Deputy Director of the USPTO, will be giving a keynote speech.  Topics for the symposium include:

  • The Patenting of Social Interactions: Bilksi Before the Supreme Court
  • Trademark and Copyright in the Days of Internet: The Google Influence
  • Who Defines the Law?: USPTO Rule Making Authority
  • Redefining "Free": a Look at Open Source Software Management

Symposium speakers include academics and practitioners from the Chicago area.

The event itself is free to the public and Northwestern is also offering up to four CLE credits for the State of Illinois (one credit for each panel attended), for a fee of $200.  This should be a quality event for those interested.

More information about the Northwestern IP Syposium can be found here.


Federal Circuit Finds Harmless Error in Submitting Claim Construction to the Jury

Alloc, Inc. v. Pergo, Inc. (Fed. Cir. Feb. 18, 2010) (nonprecedential)

In a puzzling case where the trial court had referred claim construction to the jury, the Federal Circuit affirmed the district court's findings that the two patents-in-suit were invalid but not unenforceable due to inequitable conduct.  The patents related to mechanical joints that enable flooring panels to be joined without the use of glue or other fasteners, such as nails or metal clips.

The Federal Circuit first found that the prior art references "were more than sufficient to support the jury's finding of obviousness."  It then noted that "although we need not reach the infringement analysis, we note that the district court surprisingly presented the claim construction to the jury.  Claim construction has always been a legal issue for the court and not within the fact-finding role of a jury.  The district court's submission of the claim construction to the jury, leaving the jury free to make its own determination of the meaning of the claims, was error.  Here the error is harmless due to our obviousness ruling but the district court's procedure is not one supported by the law."  (internal citations omitted).

This is a puzzling result.  If the district court improperly allowed the jury to decide claim construction issues, the jury then improperly decided those issues for purposes of both infringement and validity.  It appears that any such "error" should apply to both infringement and validity and cannot be rendered "harmless due to our obviousness ruling."  Of course, if the Federal Circuit had explicitly determined that the patent claims were obvious under any reasonable construction of the claims, a finding of "harmless error" may be appropriate, but there was no such explicit finding here.

Upon further research into this case, it appears that two potential claim construction issues were presented to the jury regarding the claim terms "tight" and "tongue."  For the term "tight", the district court judge appears to have instructed the jury that "[t]he term 'tight joint' means that neither dirt nor water may penetrate the joint.  With respect to water, 'tight' joint means that standing water will not penetrate the joint for several hours."  However, in the verdict form the jurors were asked "[w]hat criteria did you use to determine whether the joints Accused Products are 'tight'?" and were given two options: "[p]enetrate means that neither water nor dirt pass into the joint" or "[p]enetrate means that neither water nor dirt pass through the joint."

Similarly, for the term "tongue", the district court judge appears to have instructed the jury that "the term 'tongue' means a portion of the panel that is designed to mate with a groove of an adjacent panel."  However, in the verdict form the jurors were asked "[w]hat criteria did you use to determine the presence or absence of a protrusion or snapping web on the tongue?" and were given two options: "[t]he tongue includes the tongue side of the panel" or "[t]he tongue includes only the part that extends outwardly from the upper edge."

Arguably, it appears that the jury's determination of whether the term "tight" means that neither water nor dirt pass "into the joint" versus "through the joint" does appear, on its face, to be a claim construction issue.  Conversely, the jury's determination of what part of the accused products comprise the "tongue" is arguably more of a factual issue.  Unfortunately, the Federal Circuit did not specifically point out what portion of the verdict it found to be improper claim construction by the jury.  It is intriguing that these instructions appear to have been proposed by one of the parties with no objection from the other party or by the judge.


"Patent Marking Police" Out in Full Force

As predicted by myself and Hal Wegner in our recent article, "the year 2010 will see the continued renaissance of the newly created ad hoc 'patent marking police.'"  In the roughly 50 days since the Federal Circuit released its decision in Forest Group, Inc. v. Bon Tool Co., at least 14 17 lawsuits alleging false marking have been filed against 29 33 different companies in various district courts, including:

  • San Francisco Tech., Inc. v. Adobe Sys. Inc., No. 5:09-cv-06083-RS (N.D. Cal.) (complaint filed Dec. 30, 2009)
  • Brinkmeier v. Bayer Healthcare LLC, No. 1:10-cv-00001-SLR (D. Del.) (complaint filed Jan. 3, 2010)
  • Heathcote Holdings Corp. v. Crayola LLC, No. 1:10-cv-00342 (N.D. Ill.) (complaint filed Jan. 19, 2010)
  • Hollander v. Hospira, Inc., No. 2:10-cv-00235-JD (E.D. Penn.) (complaint filed Jan. 19, 2010)
  • Dye v. Mag Instrument, Inc., No. 2:10-cv-00167-RDP (N.D. Ala.) (complaint filed Jan. 26, 2010)
  • Hollander v. Timex Group USA, Inc., No. 2:10-cv-00429-BMS (E.D. Penn.) (complaint filed Jan. 29, 2010)
  • Hollander v. EUSA Pharma (USA), Inc., No. 2:10-cv-00492-LDD (E.D. Penn.) (complaint filed Feb. 2, 2010)
  • Hollander v. Etymotic Research, Inc., No. 2:10-cv-00526-PBT (E.D. Penn.) (complaint filed Feb. 5, 2010)
  • Hungerpiller v. S.C. Johnson & Son, Inc., No. 2:10-cv-00290-AKK (N.D. Ala.) (complaint filed Feb. 5, 2010)
  • Zojo Solutions, Inc. v. Leviton Mfg. Co., No. 1:10-cv-00881 (N.D. Ill.) (complaint filed Feb. 9, 2010)
  • Heathcote Holdings Corp. v. Clorox Co., No. 1:10-cv-00942 (N.D. Ill.) (complaint filed Feb. 11, 2010)
  • Josephs v. Federal-Mogul Corp., No. 2:10-cv-10617-SFC-MJH (E.D. Mich.) (complaint filed Feb. 12, 2010)
  • Patent Compliance Group, Inc. v. Timex Group USA, Inc., No. 3:10-cv-00286 (N.D. Tex.) (complaint filed Feb. 12, 2010)
  • Patent Compliance Group, Inc. v. Brunswick Corp., No. 3:10-cv-00287 (N.D. Tex.) (complaint filed Feb. 12, 2010)
  • Patent Compliance Group, Inc. v. Activision Publ'g, Inc., No. 3:10-cv-00288 (N.D. Tex.) (complaint filed Feb. 12, 2010)
  • Patent Compliance Group, Inc. v. Wright Med. Tech., Inc., No. 3:10-cv-00289 (N.D. Tex.) (complaint filed Feb. 12, 2010)
  • Josephs v. Sigma-Adrich Corp., No. 2:10-cv-10660 (E.D. Mich.) (complaint filed Feb. 16, 2010)

Interestingly, two of these fourteen seventeen lawsuits have been filed against Timex Group USA, Inc., were filed within two weeks of each other, and alleged false marking related to the same three patents. Further, two of the other lawsuits were filed against S.C. Johnson & Son related to the same alleged false marking of an expired patent on Edge shaving gel.  As noted in the Gray/Wegner article, "it is certain that Forest Group signals an increased interest in filing qui tam actions for false marking … [however it] remains to be seen whether courts will readily find the necessary mens rea to find false marking [and it is unclear] what courts will do in the exercise of their discretion in terms of the size of damage awards."

Thanks go out to the Docket Navigator service ( for providing pending case information.  It is currently unclear whether additional false marking lawsuits have been filed as these suits are not being consistently categorized within the federal court system.

Gray on Claims has recently added a new feature to track these newly filed false marking cases, as well as those filed prior to the Forest Group decision.  Up-to-date false marking case information can be found here.

(updated February 18, 2010 to add three more false marking complaints)


Reines and Greenblatt Publish "Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009, Part II"

Today, Dennis Crouch's Patently-O blog published an article by Edward Reines and Nathan Greenblatt  of Weil, Gotshal & Manges LLP entitled "Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009, Part II." Edward Reines and Nathan Greenblatt, Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009, Part II, 2010 Patently-O Patent L.J. 7 (2010).

This article is a follow-up to an article the authors published on the same topic in August 2009.  In today's article, the authors discuss a modification to the interlocutory claim construction appeal provision of the Patent Reform Act of 2009.  This modification places four qualifications on the eligibility of such appeals: (1) the claim construction order would need to be "final"; (2) the order would need to be based on a "sufficient evidentiary record" for appeal; (3) interlocutory treatment of the order would need to materially advance the ultimate termination of the litigation or would need to likely control the outcome of the case; and (4) the Federal Circuit would have to find the interlocutory appeal at issue not "clearly erroneous."

While the authors admit that "[t]hese modifications represent an admirable effort to respond to problems with the original proposal", they conclude that "[c]ongress should scrap the proposed interlocutory appeals provision altogether and stick with the time-tested interlocutory appeals provision applicable to civil cases generally."  Id. at 8-9, 13.

The article provides a thought-provoking perspective on the interlocutory appeal debate and is a must-read for those interested.  The article can be found in its entirety here.


Federal Circuit Finds No Prosecution Disclaimer and Affirms Claim Construction From Preliminary Injunction Hearing

SEB S.A. v. Montgomery Ward & Co. (Fed. Cir. Feb. 5, 2010)

In this case, the district court, after holding a claim construction hearing, granted a motion for preliminary injunction in 1999.  The Federal Circuit affirmed the preliminary injunction order without opinion.  After the defendant redesigned the accused product, the plaintiff successfully sought to supplement the preliminary injunction to include the redesigned product.  After a jury trial, the defendant's accused products were found to infringe the patent.  Plaintiff appealed, and the Federal Circuit ultimately affirmed.  While there were many issues discussed on appeal, this post will focus on the claim construction issue.

The patent at issue claimed a deep fryer with an inexpensive plastic outer shell, or skirt.  The patent disclosed that, besides a heat-insulating and heat-resistive ring, the skirt and the pan of the fryer were separated by "an air space of sufficient width to limit the temperature of the skirt."  Because of the insulation provided by the air space, the skirt could be constructed from more inexpensive plastics.  The district court, as part of its 1999 preliminary injunction order, construed the claim term "completely free with respect to the pan" as "there are no thermal bridges between the skirt and the pan."  Defendant argued on appeal that this construction was incorrect and the term should instead be construed as "no solid material between the pan and the skirt." 

The Federal Circuit noted that its "prior affirmance of the district court's preliminary injunction order does not make the district court's claim construction in its 1999 opinion the law of the case."  Ultimately while the Court pointed out a "minor inconsistency" with the district court's construction, it still found that the district court's construction "rings true."  The Federal Circuit disagreed with defendant's proposed construction, relying on the prosecution history, the doctrine of claim differentiation, the fact that defendant's proposed construction would read out the preferred embodiment, and the fact that "the patent stresses that eliminating thermal bridges is not the same as eliminating any solid material."

Defendant had argued that the patentee narrowed the meaning of the claim term "completely free" during prosecution by making the statement "in the case of the present invention, the outer plastic skirt 3 is completely free with respect to the pan with the exception of ring 5.  This means that the space comprised between the skirt 3 and the pan 1 is entirely occupied by air and that there is no solid material therebetween" in distinguishing a prior art reference.  The Federal Circuit found that defendant's "attempt to create a disclaimer simply stretches this prosecution history to far" as "read in context, the applicant's reference to 'no solid material' refers only to the volume between the sides of the pan and the skirt."  Therefore, "[a]t most, the prosecution statement requires 'completely free' to mean 'no solid materials between the sides of the pan and the sides of the skirt and no thermal bridges between the base of the skirt and the base of the pan.'"

The Federal Circuit found no reversible error in the district court's claim construction and affirmed.


Firm Disqualified From Representing Party on Appeal Where Partner Served As Opponent's Expert at Trial

Outside the Box Innovations, LLC v. Travel Caddy, Inc. (Fed. Cir. Feb. 1, 2010) (nonprecedential)

In this case, a partner for King & Spalding had served as an expert witness in support of plaintiff's motion for attorneys fees at trial.  Defendant opposed this motion for attorneys fees and challenged the strength of and analysis in the expert's declaration.  The district court denied the request for attorneys fees.  After the district court proceedings concluded, defendant selected three attorneys from King & Spalding to represent it on appeal.  Plaintiff then filed a motion with the Federal Circuit, asking the Court to disqualify King & Spalding from representing defendant under the principle of imputed disqualification.

The Federal Circuit, in a nonprecedential opinion by Judge Dyk, granted the motion for disqualification, relying on Rule 1.7 of the Georgian Rules of Professional Conduct.  The Court noted that "[t]he question whether King & Spalding should challenge the expert opinion of one of King & Spalding's partners in our view would materially and adversely affect the firm's representation of [defendant] on appeal" as "to properly represent the interests of [defendant], the lawyers from King & Spalding would need to consider whether to challenge the sufficiency of [the] expert opinion in this appeal.  Members of the firm may not be able to provide adequate representation on that issue without challenging [the] opinion."


Omitting Step in Process Does Not Expand Claim to Cover Use Nothing Like That Described as Integral to Invention

Catch Curve, Inc. v. Venali, Inc. (Fed. Cir. Jan. 22, 2010) (nonprecedential)

In the case the Federal Circuit affirmed the district court's order granting summary judgment of noninfringement of patents relating to the transmission and storage of facsimile messages over switched telephone networks.

The claims at issue on appeal concerned methods for transmitting fax messages over switched telephone networks from an originating fax machine to an "SAFF" (a computer-based device known as a "store and forward facility"), which then stores the message.  During claim construction, the district court required that all of the claimed systems and methods use facsimile protocol as the basis for the claimed communications and that the transmissions all be routed over a switched telephone network.  In the accused system, an originating fax machine sent a fax message to a point of presence ("POP") over ordinary telephone lines.  The fax message was then converted into a TIFF, stored in a queue, encoded into XML, sent via HTTP to a data center, where the message was converted into a PDF or different TIFF file, stored in a user-specific mailbox, then sent by SMTP, HTTP, or HTTPS to the intended recipient.  The district court granted summary judgment of noninfringement as the accused process did not exclusively use the facsimile protocol and did not transmit the fax message exclusively using a switched telephone network.

On appeal, the plaintiff argued that the district court erred in limiting the claims to a specific protocol and instead argued that the communications at issue remained fax messages regardless of any subsequent changes in the format used to convey the data after it wa initially sent by a fax machine.  Defendant argued that the district court properly limited the claims because the patent specification used the terms "fax machine" and "fax communications" to mean messages communicated in a fax protocol over a switch telephone network, not conversion of messages into different formats for transmission over the internet.

The Federal Circuit found that "[n]othing in the [patent] specification suggests that the fax messages of the invention are converted to a different format and transmitted to the recipient over a medium other than a switched telephone network … [r]ather, the common specification makes clear that the fax messages that are the subject of the patent are sent and received by conventional fax machines or their proxies over a switched telephone network using fax protocol." 

Defendant countered by pointing to certain claims at issue relating only to the transmission of fax messages from the originating fax machine to the SAFF and not requiring the further step of transmitting the messages from the SAFF to another SAFF or to the ultimate recipient.  The Federal Circuit then explained that "merely omitting a step in a described process does not perforce expand the scope of the claim to encompass the use of devices that are nothing like those described in the specification as integral to the invention."  As the patent specification stated that the SAFF contemplated by the invention was "an integral part of a switch telephone network system" and that the SAFF must have been capable of receiving fax message from, and sending fax messages to, conventional fax machines over a switched telephone network, these claims "must be understood to be limited to an apparatus that contains a storage medium and has the capacity to receive and transmit fax messages in fax protocol over a switched telephone network."  As the accused system did not have the capacity to transmit fax messages over a switched telephone network to a fax-receiving device, the Federal Circuit affirmed the district court's order granting summary judgment of noninfringement.


New Patent Damages Handbook Released

Recently, a committee of patent practitioners, academics, and judges, formed at the request of Chief Judge Michel of the Federal Circuit, has released a Patent Damages Handbook for federal district court judges to consult in patent cases.  As stated on the committee's website:

The goal was to create a handbook drafted by a committee, national in scope, with members from the bench, bar and academia, including in-house counsel from a variety of industries, and patent damages experts.  The underlying idea was to benefit from the collective experience of judges, attorneys, academics and economists in how best to achieve the "just, speedy and inexpensive determination" of patent damages.  Recognizing that patent damages law is an area that continues to evolve, this handbook is not an attempt to restate substantive damages law or predict its future evolution but is instead focused on procedural practices that may be helpful in the adjudication of patent damages.

This handbook appears to be a good resource for both judges and patent practitioners.

Information about the handbook, as well as the handbook itself, can be found here.


Federal Circuit Panel Disagrees Regarding Scope of Disclaimer

Schindler Elevator Corp. v. Otis Elevator Co. (Fed. Cir. Jan. 15, 2010)

In this case, the Federal Circuit, in an opinion by Judge Linn, vacated the district court's grant of summary judgment of noninfringement as the district court erred in construing two claim terms.  Judge Dyk filed a separate opinion concurring in the result but dissenting in part.

The patent at issue related to "an elevator system that recognizes a user when he or she enters an entry location of a building, then dispatches an elevator to bring the user to a destination floor based on user-specific data."  At issue on appeal were the district court's constructions of the terms "information transmitter" and "recognition device."  The district court, relying on statements in the specification and prosecution history that described "hands-free," "automatic," and "contactless" elevator operations, construed both terms as excluding any "personal action" by an elevator user other than "walking into the monitored area."  The defendant argued successfully on summary judgment that the accused system did not infringe as the system required "use of a passenger's hands to bring an RFID card within [a] 3.5-inch effective range of a card reader" and such action was a "personal action" not covered by the patent claims.

On appeal, plaintiff argued that the district court improperly limited the scope of the claim terms and argued that "personal action" encompassed the action of "manually pressing buttons to actuate the transmitter or to select a destination floor, not to the initial act of bringing the transmitter within range of the recognition device."  Defendant argued that the district court correctly relied on limiting statements in the specification and prosecution history.

The Federal Circuit found that the district court's construction was "too narrow" and "[t]he statements in the specification and prosecution history on which the district court relied were directed to elevator operations that occur only after the information transmitter is already within range of the recognition device, not to the initial act of bringing the information transmitter within range of the recognition device."  In its decision the Court relied on the claim language itself, the specification, and the prosecution history.

Looking first to the claim language, the Federal Circuit found that the "claims appear to permit at least those types of personal action that are necessary to bring the information transmitter within range of the recognition device" as the claims allowed for personal actions such as carrying the transmitter, unlocking a door, and clocking in or out of work.  Next considering the specification, the Court found that "unlocking a door and pushing a cart are two 'personal actions,' other than simply walking, which are disclosed in the specification as actions needed to bring a transmitter within range of the recognition device."

Finally, the Court examined the prosecution history, where the patentee added the "information transmitter" limitation to the claims after the claims were rejected as obvious and described the invention during prosecution as operating "automatically, contactlessly, and independently of the orientation of the information transmitter."  While the district court read the prosecution history as "unambiguously disavowing the use of a passenger's hands for any and all purposes," the Federal Circuit disagreed, stating that the actions taken during prosecution did not rise to a "clear and unmistakable" disavowal of scope and instead related to "actions that take place only after the passenger has brought the transmitter within range of the recognition device." 

Ultimately, the Federal Circuit modified the district court construction of the terms at issue by striking the phrase "without requiring any sort of personal action by the passenger" from each construction.  The Court then vacated the grant of summary judgment and remanded.

Judge Dyk, in a separate opinion, concurred with the result but dissented in part.  While he agreed that the district court's construction "unduly limited the scope of the claims," he understood "the action of swiping a card to call the elevator separate from the action required to gain entry to the building is clearly within the disclaimer of both the specification and prosecution history."  He explained that, while the applicant could have distinguished the prior art on other grounds, the applicant "instead emphasized [during prosecution] that the patented device was distinguishable both because of the signal direction and because it was hands-free and automatic … [the applicant's] disclaimer must be based on what he said, not on what he could have said."