Federal Circuit Uses Claim Differentiation, Declines Limiting Claim Scope to Preferred Embodiment

Kara Tech. Inc. v. Stamps.com Inc., (Fed. Cir. Sept. 24, 2009)

In this case, the district court (Central District of California) entered a final judgment of noninfringement following a jury trial.  The Federal Circuit, in an opinion by Judge Moore, held that the district court erred in construing the patent claims and therefore vacated the finding of noninfringement and remanded back to the district court for further proceedings.

The patents at issue are directed toward apparatuses and methods of creating and verifying the authenticity of documents such as postage.  As explained by the Federal Circuit, "[t]he patents concern a technology that allows a customer to print a secured document (such as a stamp or an an airline ticket) at home using preprinted label sheets."  At issue during claim construction were three claim phrases concerning creation and validation of security indicia.  More specifically, as the Federal Circuit noted, the issue turned on "whether the security indicia must be created and validated under control of a key contained in the preestablished data."  The district court had construed the term "security indicia" by stating that it must "be created under control of a key" and stated that the information contained in the preestablished data must be a "key."

The Federal Circuit found that the asserted claims did not require the use of a key for three reasons.  First, the asserted claims did not explicitly mention the existence of a "key" in the preestablished data, only the existence of "information."  Second, all of the nonasserted independent claims require an "encryption key" or "key data."  Under the doctrine of claim differentiation, there is a presumption that the asserted claims, which do not contain such a limitation, do not require the existence of a "key."  Third, while the "specification repeatedly discusses a key embedded in the preestablished data ... [t]his is not enough [] to limit the patentee's clear, broader claims ... [as the patentee] did not act as his own lexicographer or disavow claim scope."  While there were technical experts on both sides that took opposing views on this issue, the Federal Circuit stated that "[i]t is not uncommon in patent cases to have such dueling experts ... [and] [w]hile helpful, extrinsic sources like expert testimony cannot overcome more persuasive intrinsic evidence."

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Kara Tech. Inc. v. Stamps.com Inc., (Fed. Cir. Sept. 24, 2009) [[[link to http://www.cafc.uscourts.gov/opinions/09-1027.pdf]]]
 
In this case, the district court (Central District of California) entered a final judgment of noninfringement following a jury trial.  The Federal Circuit, in an opinion by Judge Moore, held that the district court erred in construing the patent claims and therefore vacated the finding of noninfringement and remanded back to the district court for further proceedings.
 
The patents at issue are directed toward apparatuses and methods of creating and verifying the authenticity of documents such as postage.  As explained by the Federal Circuit, "[t]he patents concern a technology that allows a customer to print a secured document (such as a stamp or an an airline ticket) at home using preprinted label sheets."  At issue during claim construction were three claim phrases concerning creation and validation of security indicia.  More specifically, as the Federal Circuit noted, the issue turned on "whether the security indicia must be created and validated under control of a key contained in the preestablished data."  The district court had construed the term "security indicia" by stating that it must "be created under control of a key" and stated that the information contained in the preestablished data must be a "key."
 
The Federal Circuit found that the asserted claims did not require the use of a key for three reasons.  First, the asserted claims did not explicitly mention the existence of a "key" in the preestablished data, only the existence of "information."  Second, all of the nonasserted independent claims require an "encryption key" or "key data."  Under the doctrine of claim differentiation, there is a presumption that the asserted claims, which do not contain such a limitation, do not require the existence of a "key."  Third, while the "specification repeatedly discusses a key embedded in the preestablished data ... [t]his is not enough [] to limit the patentee's clear, broader claims ... [as the patentee] did not act as his own lexicographer or disavow claim scope."  While there were technical experts on both sides that took opposing views on this issue, the Federal Circuit stated that "[i]t is not uncommon in patent cases to have such dueling experts ... [and] [w]hile helpful, extrinsic sources like expert testimony cannot overcome more persuasive intrinsic evidence."
 
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Federal Circuit Construes Term Found in Specification but Not in the Claims

Edwards Lifesciences LLC v. Cook Inc. (Fed. Cir. Sept. 22, 2009)

In this case, the district court (Northern District of California) granted summary of no infringement.  The Federal Circuit, in an opinion by Judge Lourie, affirmed the underlying claim construction and also affirmed the finding of no infringement.  The Court's opinion, while lengthy, provides examples of how the Court may narrowly construe claim terms despite the existence of broadening amendments made during prosecution, definitions of non-claim terms found only in descriptions of preferred embodiments, and the doctrine of claim differentiation.

The patents at issue relate to intraluminal grafts for treating aneurisms and occlusive diseases of the blood vessels without open surgery.  As explained by the Federal Circuit, the patents (which share a common specification) describe "one method of treating an aneurism using two overlapping grafts, whereby the degree of overlap can be adjusted to change the overall length of the graft … [and also describe] a 'trouser graft,' which has a bifurcation at its downstream end, and a supplemental graft that overlaps with one of the legs of the trouser graft."

During claim construction, the district court had construed the claims terms "graft," "bifurcated base structure," and "bifurcated base graft structure" (1) to be intraluminal; (2) to require wires; (3) to require that those wires be malleable; and (4) to preclude any resilience from such malleable wires.  The defendants successfully argued on summary judgment that their devices could not infringe as the devices did not have malleable wires, but instead had resilient, self-expanding wires.  The district court found that these self-expanding wires cannot be "malleable" as the specification states that "malleable" means they do not "expand[] by virtue of their own resilience."  The Federal Circuit affirmed on each of the four points above, which will be briefly discussed in turn.

1. The Claimed Devices Must Be Intraluminal

Plaintiff argued that, given the language in the claims, the specification, and the prosecution history, an "intraluminal graft" is something different than a "graft."  However, the Federal Circuit pointed out that "the specification consistently uses the words 'graft' and 'intraluminal' interchangeably … akin to a definition equating the two."  Also, "the specification frequently describes an 'intraluminal graft' as 'the present invention' or 'this invention,' indicating an intent to limit the invention to intraluminal devices."  Further, while certain claims used the term "intraluminal graft" and others used the unmodified term "graft," the Federal Circuit found that "the doctrine of claim differentiation does not require us to give the 'graft' devices their broadest possible meaning.  We may instead limit 'grafts' to 'intraluminal' devices, as demanded by the specification."  Finally, while during prosecution the inventors amended an independent claim to delete the modifier "intraluminal" from the term "graft", the remarks accompanying the amendment stated that the amended claim "defines an intraluminal graft", which the Federal Circuit found not to affect the breadth of the claim.

2. Intraluminal Devices Must Have Wires

Plaintiff argued that not all intraluminal devices require wires and certain claims of the patents require wires while others do not.  However, the Federal Circuit noted that "the parties agreed at trial that intraluminal devices require wires."  Also, "every embodiment described in the specification and shown in the drawings includes wires."  Further, every claim at issue requires that the two graft devices be "anchored," "attached," "attachable," or "dockable" to each other, and the parties agreed before the district court that "only wires perform that function."  Finally, while plaintiff argued claim differentiation based on the fact that certain claims add wire limitations, the Federal Circuit held that "claim differentiation is a rule of thumb that does not trump the clear import of the specification."

3. The Wires in Intraluminal Devices Must Be Malleable

Plaintiff argued that, if wires we required by the claims, such wires need not be malleable due to the fact that the term "malleable" does not appear in any of the claims, the doctrine of claim differentiation, statements in the specification, and amendments made to the claims during prosecution.  However, the Federal Circuit found that the inventors "disparages prior art resilient wires in their 'background art' section of the specification" while "[t]he specification then describes the wires of the invention as malleable and states that the device is expanded by use balloons."  Also, while one of the patent claims did explicitly require a "resilient reinforcement wire", this particular wire was found in the "skirt portion of the graft" and therefore "all the rest of the graft is made of malleable wire."  Finally, while during prosecution "the inventors canceled claims requiring 'malleable wires' and replaces them with claims requiring only 'wires,' they conducted the prosecution as if the wires were required to be malleable."

4. Malleable Wires and Resilient Wires Are Mutually Exclusive

Plaintiff argued that malleable wires may still display some resilience and while the inventors apparently defined the term "malleable" in the specification, this definition appeared in the description of a preferred embodiment, not the invention as a whole, so the district court erred by rejecting the plain meaning of the term "malleable."  The Federal Circuit found that the "specification defines 'malleable' to exclude any substantial resilience, and that definition overrides any ordinary meaning of the word 'malleable' that might allow for substantial resilience."  The Court also found that "the location within the specification in which the definition appears is irrelevant … [and] the specification's use of 'i.e.' [in the alleged definition] signals an intent to define the word to which it refers, 'malleable,' and that definition was not limited to the embodiment being discussed."

While the term "malleable" was not in the patent claims and the Court noted that it does "not ordinarily construe words that are not in claims," it pointed out that the district court used the term "malleable" in its initial constructions.  The parties then debated the definition of this term before the district court, so the district court went back to the patent specification to further define "malleable."  The Federal Circuit found the district court was "correct to look to the specification to clarify its initial construction."

Ultimately, the Federal Circuit affirmed the district court's claim construction and finding of no infringement.

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Schott Publishes "An Appeal to the New Patent Office Director: Repeal the Single Sentence Rule"

Last Friday, Dennis Crouch's Patently-O blog published an article by Stephen Schott of Volpe & Koenig entitled "An Appeal to the New Patent Office Director: Repeal the Single Sentence Rule."  Stephen Schott, An Appeal to the New Patent Office Director: Repeal the Single Sentence Rule, Patently-O, http://patentlyo.com/patent/2009/09/an-appeal-to-the-new-patent-office-director-repeal-the-single-sentence-rule.html (Sept. 18, 2009).

In this short article, the author proposes that the new leadership of the USPTO change the roughly 150-year-old rule that claims consist of a single sentence.  The author states "[w]riting claims in multiple sentences, while perhaps flaunting 150-plus years of claim-drafting tradition, promotes clarity … [n]ot only would the patent bar be happier for it, but so would the examiners who are charged with interpreting needlessly unreadable claims, as well as the judges and juries who examine claims in excruciating detail."  Id. at 4.

This article is a good read for those interested in amending MPEP § 608.01(m) (the single sentence rule).  The article can be found in its entirety here.

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District Court's Summary Judgment Opinion Found to be Inconsistent With Its Own Claim Construction

Vita-Mix Corp. v. Basic Holding, Inc. (Fed. Cir. Sept. 16, 2009)

In this case, the district court (Northern District of Ohio) granted summary judgment of no direct infringement, no inducement of infringement, no contributory infringement, no invalidity based on anticipation, obviousness, or lack of enablement, no inequitable conduct, and no laches.  The Federal Circuit, in an opinion by Judge Prost, vacated and remanded the judgments of no direct infringement and no invalidity for anticipation, obviousness, or lack of enablement and affirmed the judgments of no inducement, no contributory infringement, no inequitable conduct, and no laches.

The patent at issue was directed to a method of preventing the formation of an air pocket around the moving blades of a consumer food blender comprising inserting a plunger into the body of the blender that blocks the air channel that creates air pockets when ingredients are blended.  During claim construction, the district court construed the claim term "plunger" as a "device that can be inserted into a blender" and also construed the claim at issue to exclude "stirring to disperse, dislodge, or break-up an air pocket after it has begun to form" based on prosecution disclaimer.  This disclaimer was at issue in the appeal.

Although the district court's claim construction was not itself appealed, Vita-Mix argued that the district court applied to the accused device a claim construction inconsistent with its claim construction order.  In its motion for summary judgment of no infringement, the defendants argued that their devices did not infringe because the stir sticks included with the blenders were used to stir the contents of the blender, and the patentee had disclaimed stirring.  The plaintiff countered by arguing it was irrelevant to the infringement analysis whether the defendants' stir stick was used to stir the ingredients in the blender as the plaintiff's theory of infringement was that it was the positioning of the stir stick, not the stirring action, that prevented air pockets from forming.  Essentially, plaintiff's argument was that the accused blenders infringed when the included stir stick was inserted into the pitcher but not actively stirred.  Plaintiff argued that since the disclaimer was limited to stirring for a particular purpose (namely, breaking up or dislodging air pockets after they begin to form), the defendants could not avoid infringement by just any stirring operation.

The district court held in its summary judgment opinion that plaintiff's position was "untenable" and that the patentee had disclaimed "all-stirring."  Plaintiff argued on appeal that this statement by the district court was inconsistent with the court's prior claim construction.  The Federal Circuit agreed, finding that the district court's initial claim construction was correct as the patentee had disclaimed specific stirring operations during prosecution, finding the district court was not correct in stating the patentee disclaimed all stirring, and stating that "[t]o find that the patentee disclaimed all stirring, regardless of whether and how the stirring acts on air pockets, ignores the nature of the distinction between a positioning that prevents air pockets from forming and an operation that breaks up air pockets after they have begun to form."

The Federal Circuit found that this claim construction issue affected both the direct infringement and invalidity analysis, and therefore vacated and remanded on both issues.  The district court had found that it was undisputed that the accused blenders could be used in either an infringing (when the included stir stick is inserted into the pitcher but not actively stirred) or non-infringing (when the included stir stick is inserted into the pitcher and actively stirred) manner.  Plaintiff had various direct infringement arguments, including a twenty-six second period in a QVC infomercial where an accused blender was allegedly in use and the stir stick was not used to stir the contents of the pitcher, testimony from an expert that the accused blenders would necessarily infringe the patent claims under certain circumstances, and testimony from another expert concerning a double-blind survey of blender users that found a certain percentage of users used the accused blenders in an infringing manner.  In light of the Federal Circuit's discussion on claim construction, the Court found that it would not be "too great an analytical leap for the jury to consider both experts' testimonies and conclude that infringement actually occurs in at least a small percentage of customer use."  For this reason, the finding of no direct infringement was vacated and remanded.

Regarding validity, the Federal Circuit pointed out that the district court had a made a point in its opinion of explaining that it was reviewing the validity issues under "its own" claim construction and not the plaintiff's proffered claim construction.  The Federal Circuit noted that "[w]hile it is not entirely clear what claim construction the [district] court refers to as its own in this application, it appears that the court is applying a construction that excludes all stirring."  Since such a construction was inconsistent with the district court's original claim construction the Federal Circuit vacated and remanded the finding of validity.

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Summary of Local Patent Rules Affecting Claim Construction Practice (Part 3 of 6)

Presently, eleven federal district court have enacted local patent rules. The rules are generally used to help streamline what can be very complicated disputes. Among these rules are rules that affect claim construction practice in each district court. Practitioners should be able to benefit from understanding these differences in practice. In this five-part six-part series, this blog will undertake to briefly summarize the applicable claim construction rules in each of these eleven courts. Today, we focus on the United States District Courts for the Northern District of Georgia and Western District of Washington.

Northern District of Georgia (rules available here)

• The parties first simultaneously exchange a list of claim terms to be construed and claim elements which the parties contend should be governed by 35 U.S.C. § 112 ¶ 6;

• The parties are then required to meet and confer to narrow issues and finalize the list of terms;

• 20 days after the exchange of terms, the parties simultaneously exchange proposed constructions, the structure/acts/materials in the specification for 35 U.S.C. § 112 ¶ 6 claim terms, extrinsic evidence relied upon, and brief description of witness testimony (if applicable);

• The parties are then required to meet and confer again to narrow issues and prepare a Joint Claim Construction Statement for the court;

• 20 days after the exchange of proposed constructions, the parties file a Joint Claim Construction Statement with the court that contains the following information:
  
  
  1. agreed-upon constructions;
  2. each party's proposed constructions and intrinsic and extrinsic evidence relied upon;
  3. length of time needed for the claim construction hearing;
  4. identity of witnesses to be called at the hearing and summaries of opinions to be offered by the witnesses;

• 15 days after the Joint Claim Construction Statement filing, claim construction discovery ends;

• 30 days after the Joint Claim Construction Statement filing, the parties simultaneously file opening briefs;

• 20 days after filing opening briefs, the parties simultaneously file response briefs;

• The Court will the conduct a claim construction hearing if the Court believes a hearing is necessary.

• If, after the Court issues its claim construction ruling, there are fewer than 30 days left in the discovery schedule, the parties will receive 45 days in which to take discovery after the Court files its claim construction ruling.

Western District of Washington (rules available here)

• The parties first simultaneously exchange a list of claim terms to be construed and claim elements which the parties contend should be governed by 35 U.S.C. § 112 ¶ 6;

• The parties are then required to meet and confer to narrow issues and finalize the list of terms;

• 30 days after the exchange of terms, the parties simultaneously exchange proposed constructions, the structure/acts/materials in the specification for 35 U.S.C. § 112 ¶ 6 claim terms, extrinsic evidence relied upon, and brief description of witness testimony (if applicable);

• The parties are then required to meet and confer again to narrow issues and prepare a Joint Claim Construction and Prehearing Statement for the court;

• 45 days after the exchange of proposed constructions, the parties file a Joint Claim Construction and Prehearing Statement with the court that contains the following information:
  
  
  1. agreed-upon constructions;
  2. each party's proposed constructions and intrinsic and extrinsic evidence relied upon;
  3. the ten most important disputed claim terms (if the parties cannot agree on ten terms, the parties submit the terms upon which they agree are the "most important" and then submit separate lists to the extent necessary);
  4. length of time needed and proposed order of presentation for the claim construction hearing;
  5. the parties' positions on live testimony, identification of witnesses, and disclosure of testimony (if applicable);
  6. whether a tutorial is needed and the timing thereof;
  7. whether a prehearing conference is needed;
  8. whether the parties believe the Court should appoint an independent expert;

• 50 days after the Joint Claim Construction and Prehearing Statement filing, claim construction discovery ends;

• 55 days after the Joint Claim Construction and Prehearing Statement filing, the parties simultaneously file opening briefs of no more than 24 pages per side;

• 15 days after filing opening briefs, the parties simultaneously file response briefs of no more than 12 pages per side;

• The Court will the conduct a claim construction hearing if the Court believes a hearing is necessary and the Court will construe a maximum of ten claim terms, unless the Court determines otherwise.

As can be seen, the procedures for the Northern District of Georgia and Western District of Washington are generally similar, besides the time schedule, the additional content required in the Washington Joint Claim Construction and Prehearing Statement, and Washington's general limit of ten claim terms for construction.

Stay tuned for parts four, five and six of this series.  Parts one and two of the series can be found here (Part I) and here (Part II).

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Federal Circuit Declines to Consider Claim Construction Arguments

Fresenius USA, Inc. v. Baxter Int'l, Inc. (Fed. Cir. Sept. 10, 2009)

In this case, the district court (Northern District of California) entered final judgment that the plaintiffs infringed claims of three patents asserted by the defendants.  Among the issues appealed were two claim constructions (along with the grant of JMOL, entry of a permanent injunction, royalty award, and finding of invalidity for one of the patents).  The Federal Circuit, in an opinion by Judge Gajarsa, declined to consider the claim construction arguments on appeal.  Ultimately, the appeal was affirmed in part, reversed in part, vacated in part, and remanded for further proceedings.

The patents at issue related to hemodialysis machines integrated with a touch screen user interface.  The plaintiffs appealed the construction of two claim terms: "means for controlling a dialysate parameter" and "time variable profile."

The Federal Circuit declined to consider plaintiffs' claim construction arguments as the plaintiffs "failed to clearly explain what result would occur if this court adopted [their] proposed claim construction … [and the plaintiffs] gave this court little guidance and cited to no record support regarding why a modified claim construction would affect the infringement judgment, the validity judgment, or both."  Citing to its prior decision in Jang v. Boston Sci. Corp., the Court found that for this reason alone it could decline to consider the claim construction arguments.

Further, the Court explicitly disagreed with the plaintiffs that a modified claim construction would affect the infringement judgment, stating that the plaintiffs "unconditionally stipulated [to the district court] that [their] accused infringing device contains each and every element of the claims … [t]hat stipulation in no way stated or indicated that it was conditioned upon the district court's claim construction."  Further, the Court stated that it did not rely on either of the contested claim terms for holdings adverse to the plaintiffs regarding invalidity.

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Patentee Describing Single Embodiment as "The Present Invention" Leads to Narrow Claim Constructions

Lydall Thermal/Acoustical, Inc. v. Federal-Mogul Corp. (Fed. Cir. Sept. 8, 2009) (nonprecedential)

In this case, the district court (Eastern District of Michigan) entered final judgment of noninfringement pursuant to a stipulation by the parties that allowed the plaintiff Lydall to appeal the district court's claim constructions of any of thirteen terms. Lydall appealed the construction of two terms. The Federal Circuit, in an opinion by Judge Lourie, affirmed the district court's claim construction of these two terms. This case provides a good example of how statements in a patent specification consistently describing "the present invention" in a particular way can potentially lead to narrow claim constructions.

The disputed claims at issue are directed to flexible insulating shields that can be used for thermal and acoustic insulation. At issue on appeal was the construction of two claim terms: "fibrous batt of fibers" and "tufts of fibers." The district court construed "fibrous batt of fibers" to mean "a composite batt having a layer of insulating fibers sandwiched between layers of binding fibers" as the district court found that "there is not a hint in the specification that the batt can be a single homogenous layer" and the specification consistently described the batt has having an insulating layer between binding layers. The district court constructed "tufts of fibers" to mean "clusters of binding fibers which have been intentionally needle-punched on a downstroke and which extend beyond an opposite surface of the batt" as the court found "the specification and the drawings made clear that 'tufts' had to extend beyond the exit or second side of the needle and that the patent made no mention of a tuft appearing on the entry or first side of the needle."

For the term "fibrous batt of fibers", Lydall argued that the term should not be limited to multi-layer batts but should also include single-layer batts, citing to the claim language and various portions of the specification and file history. The Federal Circuit disagreed, stating that the patent specification "discloses a single embodiment of the invention" and "[a]lthough Lydall is correct in saying that the claim language 'fibrous batt of fibers' does not, in isolation, suggest a layered batt, Lydall's arguments completely ignore the consistent use of the term 'batt' in the specification." The specification "identifies a three-layered batt as 'the present invention' ... [and] repeatedly describes the batt as having an insulating layer disposed between two binding layers." Citing its prior Honeywell decision, the Federal Circuit explained that "when a patentee consistently describes one embodiment as 'the present invention,' 'the public is entitled to take the patentee at his word.'" Therefore, the Federal Circuit affirmed the district court's construction of this claim term.

For the term "tufts of fibers", Lydall argued that both the parties and the district court agreed that "tufts of fibers" are "clusters of fibers" and there was nothing in the specification or file history to indicate that this term should be given anything other than its ordinary and customary meaning. Again, the Federal Circuit disagreed. Stating that while Lydall was correct that the ordinary meaning of "tufts" is "clusters," a court "will adopt an alternative meaning 'if the intrinsic evidence shows that the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.'" (quoting from CCS Fitness). Finding that "[e]very time the specification discusses how to create the tufts of fibers, it states that the tufts form on the opposite side of the needle's entry point ...[t]he specification identifies a batt with tufts on the upper and lower surfaces as 'the present invention' ... [and] the specification consistently describes the batt with tufts on both sides", the Federal Circuit affirmed the district court's narrower construct of "tufts of fibers" as "clusters of binding fibers which have been intentionally needle-punched on a downstroke and which extend beyond an opposite surface of the batt."

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Federal Circuit Debates Whether Claim Term "Animal" Includes Humans

Martek Biosciences Corp. v. Nutrinova, Inc. (Fed. Cir. Sept. 3, 2009)

In this case, the district court (District of Delaware) entered final judgment that the defendants infringed certain claims of two of plaintiff's patents and, based on the court's claim construction, plaintiff stipulated that the defendants did not infringe one of plaintiff's patents-in-suit. Both plaintiff and defendant appealed on various issues, including claim construction of two terms. The Federal Circuit, in an opinion by Judge Gajarsa, affirmed the claim claim construction of one term and reversed on the other, remanding back to the district court for further proceedings. Judge Lourie wrote an opinion dissenting in part, to which Judge Rader joined (this particular panel consisted of five judges).

The disputed claims in one of the patents relate to "heterotrophic organisms and a process for culturing them for the production of lipids with high concentrations of omega-3 highly unsaturated fatty acids (HUFA) suitable for human and animal consumption as food additives for use in pharmaceutical and industrial products." One essential omega-3 fatty acid is Docosahexaenoic acid ("DHA"), which is produced in limited quantities by the human body and plays an important role in the development of various organs. The disputed claims in the other patent relate to methods for increasing the concentration of omega-3 HUFA in animals by feeding them microorganisms of the order Thraustochytriales or lipids extracted from such microorganisms.

Two issues on appeal were the constructions of the claim terms "non-chloride sodium salt" and "animal." The district court construed the term "non-chloride sodium salt" to encompass sodium hydroxide (NaOH) and construed the term "animal" to exclude humans.

A. "Non-Chloride Sodium Salt"

Regarding this term, the Federal Circuit found the district court's claim construction "comports with the intrinsic and extrinsic evidence of record." Specifically, defendants primary argument was that the plaintiff disclaimed coverage of NaOH during prosecution, citing to "selected statements spanning two pages of the prosecution history." While the Federal Circuit found that "the selected statements arguably support [the defendants'] assertion, those statements are undercut considerably by additional statements recited in the same two pages of prosecution history relied upon by [the defendants]: (1) the applicant's explicit statement that NaOH is a non-chloride sodium salt, and (2) the applicants' statements distinguishing the prior art at issue from the claimed invention on alternative grounds unrelated to the way NaOH was used in the prior art reference." Citing to its prior precedent, the Court found that the plaintiff "committed no clear and unmistakable disavowal of claim scope" and affirmed the district court's claim construction.

B. "Animal"

The district court had construed this term to mean "any member of the kingdom Animalia, except humans." The Federal Circuit, citing Phillips, stated that "[w]hen a patentee explicitly defines a claim term in the patent specification, the patentee's definition controls." In this case, the patentee explicitly provided in the specification that "[t]he term 'animal' means any organism belonging to the kingdom Animalia." The Court found that since it was "undisputed that humans are members of the kingdom Animalia, it was error for the district court to limit the claim term 'animal' to exclude humans."

Defendants argued that, when the specification is considered in its entirety, it clearly limits "animal" to non-human animals. In this regard, defendants appeared to raise three arguments. First, defendants pointed out that the specification discloses and enumerates a number of "economic food animals" (including cows, sheep, goats, bison, buffalo, antelope, deer, and camels) but the Federal Circuit responded by stating that this actually supports a broad definition of the unmodified term "animal" as found in the patent claims, and the applicable specification language did not contain "words or expressions that manifestly exclude coverage of humans." Second, the defendants argued the fact that the claims refer to "raising" and "feeding" animals, along with the fact that dependent claims are directed to certain types of animals such as cows, sheep, and goats, shows a disclaimer of coverage for humans. The Federal Circuit responded by stating that the terms "raising" and "feeding" can also apply to humans, and "the patent plainly contemplates that the invention is applicable to humans", citing to various passages from the specification. Finally, the defendants argued that the extrinsic evidence of record demonstrated that the ordinary meaning of "animal" is a non-human animal. However, the Federal Circuit found that since "the patentee explicitly defined 'animal,' [the defendants'] extrinsic evidence is simply irrelevant." The district court's construction of "animal" was therefore reversed.

In dissent, Judge Lourie opined that, while the term "animal" was defined "in a single line in the [] patent ... [t]his case illustrates the unusual situation in which a purported definition of a claim term in the written description is totally negated by the remainder of the text of the patent." Judge Lourie found it was "clear that humans should be excluded from the construction of the term 'animal' ... [as] the specification is not directed to raising children; it is directed to raising non-human animals." First, the specification states that "[t]he present invention concerns a method for raising an animal ... and food products derived from such animals." Judge Lourie noted that using the words "the present invention" can limit the invention to what is described (citing Honeywell v. ITT) and "[f]ood products are not derived from humans." Judge Lourie also found the enumeration of "economic food animals" in the specification "strongly supports a conclusion that the term 'animal' encompasses only those animals raised for production of food and milk products, thereby not including humans." Finally, Judge Lourie pointed to various portions of the specification that he believed differentiated between humans and other non-human animals. He concluded "it is clear that one of ordinary skill in the art would conclude that, despite the purported definition in the specification, the term 'animal' in the claims cannot include humans."

This decision shows yet again that reasonable minds (in this case five Federal Circuit Judges) can still disagree over a particular claim construction of an arguably simple term ("animal"), even when the term appears to have been explicitly defined in the patent specification.

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Summary of Local Patent Rules Affecting Claim Construction Practice (Part 2 of 6)

Presently, eleven federal district court have enacted local patent rules. The rules are generally used to help streamline what can be very complicated disputes. Among these rules are rules that affect claim construction practice in each district court. Practitioners should be able to benefit from understanding these differences in practice. In this five-part six-part series, this blog will undertake to briefly summarize the applicable claim construction rules in each of these eleven courts. Today, we focus on the United States District Courts for the Western District of Pennsylvania and the Eastern District of North Carolina.

Western District of Pennsylvania (rules available here)

• The parties first simultaneously exchange a list of claim terms to be construed and claim elements which the parties contend should be governed by 35 U.S.C. § 112 ¶ 6;

• Within 10 days of this exchange, the parties are required to meet and confer to narrow the list of claim terms in dispute and prepare a Joint Disputed Claim Terms Chart to be filed with the Court, including proposed constructions and intrinsic evidence related to each claim term;

• 30 days after filing the Joint Disputed Claim Terms Chart, the Plaintiff (or the Defendant in cases where an alleged infringer has filed a DJA of non-infringement/invalidity and the Defendant patent holder has counterclaimed for infringement) files its opening claim construction brief, including proposed constructions of each claim term in dispute, the function and structure for each 35 U.S.C. § 112 ¶ 6 term, extrinsic evidence, and the anticipated length of time needed to present its case at the claim construction hearing;

• 20 days after the opening brief filing, the opposing party files its response brief, including the same information as required in the opening brief and a concise (under five-page) statement regarding the opening party's offer of extrinsic evidence;

• 15 days after the response brief filing, the opening party files its reply brief, including a concise (under five-page) statement regarding the opposing party's offer of extrinsic evidence;

• Prior to the claim construction hearing (which is routinely scheduled to be 15 days after the reply brief filing, subject to the Court's availability), the Court may issue an order regarding extrinsic evidence and any other matter the Court deems appropriate regarding the hearing.

Eastern District of North Carolina (rules available here)

• 15 days after service of the Preliminary Non-Infringement and Invalidity Contentions, the parties simultaneously exchange a list of claim terms for construction and claim elements which the parties contend should be governed by 35 U.S.C. § 112 ¶ 6;

• 20 days after this exchange, the parties simultaneously exchange preliminary proposed constructions of each claim term, the structures/acts/materials associated with potential 35 U.S.C. § 112 ¶ 6 claim elements, and extrinsic evidence each party intends to rely upon;

• The parties are required to meet an confer to narrow both the list of proposed terms for construction and to resolve differences in proposed constructions;

• 45 days after the exchange of preliminary proposed constructions, the parties are required to file a Joint Claim Construction Statement containing:
  
  
  1. Agreed upon constructions;
  2. Each party's proposed construction of terms in dispute, along with identification of intrinsic and extrinsic evidence;
  3. Anticipated length of time needed for the Claim Construction Hearing; and
  4. A statement indicating whether any party intends to provide live testimony at the hearing, including the identity of witnesses and a summary of expert opinions to be offered live at the hearing.

• 30 days after filing the Joint Claim Construction Statement, claim construction discovery ends;

• 45 days after filing the Joint Claim Construction Statement, the parties simultaneously file opening claim construction briefs;

• 20 days after filing opening briefs, the parties simultaneously file response briefs;

• Prior to the claim construction hearing (which the Court will conduct to the extent it believes a hearing is necessary), the Court may issue an order regarding extrinsic evidence and any other matter the Court deems appropriate regarding the hearing.

Neither of these districts appear to have rules constraining the number of terms that the Courts will construe or the length of claim construction briefs. While the Western District of Pennsylvania does not allow for the exchange of simultaneous briefs, the Eastern District of North Carolina does. Unlike the courts of Massachusetts and New Jersey (discussed in part one of the series), neither of the Pennsylvania or North Carolina courts require the parties to identify the most important claim terms to be construed.

Stay tuned for parts three through five six of this series. Part one of the series can be found here.

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BPAI Construes "Pharmaceutical Compound" as a Compound that "Achieve[s] Any Discernable Physiological Effect"

Ex parte Pickar (BPAI Aug. 31, 2009)

Today, the Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Lebovitz, affirmed a rejection of claims relating to pharmaceutical composition comprising an estrogen and an additional compound.

At issue in the appeal was the proper scope of the term "pharmaceutical composition" as used in the claims. The Applicants argued that the anticipatory prior art reference that disclosed a composition administered to rats would not be understood by persons of ordinary skill in the art to be a "pharmaceutical composition" as described in the patent claims.

The BPAI noted that the phrase "pharmaceutical composition" was not defined in the specification, but the specification did "characterize[] the 'invention as a 'pharmaceutical composition' for 'alleviating the symptoms of post-menopausal syndrome in women' and 'to minimize undesirable side effects of estrogen treatment or therapy.'" However, since the claims did not recite "that the 'pharmaceutically effective amount' is for treating a specific disease, symptom, or condition, or a specific subject," the BPAI interpreted "the claims broadly to include amounts to achieve any discernable physiological effect in a subject produced by administration of the estrogen and [the additional] compound" and would "not interpret 'pharmaceutical composition' more narrowly than the claim language mandates."

Subsequently, the BPAI affirmed the Examiner's rejections of the claims at issue.

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