Search
Subscribe and Connect
Author

Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

Send questions, comments and suggestions to
grayonclaims@gmail.com

Wednesday
Oct212009

Australian Federal Court Finds Claim is a Mere Collocation of Elements in Light of Claim Construction

Smith & Nephew Pty Ltd v. Wake Forest University Health Sciences (Oct. 9, 2009)

In this case, defendants appealed a grant of preliminary injunction.  The issue raised on appeal was whether the defendant made a sufficient showing that the patent claim at issue was invalid, thereby presenting a defense which would defeat the preliminary injunction motion.  Ultimately, the Australian Federal Court set aside the preliminary injunction, finding that the patent claim was a "mere collocation of integers [elements]" and, as such, was likely not valid, and remanded the case back to the primary judge for further proceedings.

The claim at issue recited an apparatus for applying negative pressure to wound including, among other elements, a limitation "wherein said apparatus is in an aseptic package."  The Court summarized the primary issue: "It is not in dispute that the integers of the claim, apart from the aseptic package, interact to form a combination.  It is not in dispute that the aseptic package play no part in the application of negative pressure to a wound.  The issue is whether [the claim] consists of a 'mere collocation' of the combination and the package or whether the package is simply a limitation on the scope of the claim that does not affect the ability to patent the invention under s 18(1) of the Patents Act 1990."

Australian patent law holds that "[a] mere collocation of parts, each performing its own separate function, is not patentable.  However, a claim may validly combine a number of elements which interact with each other to produce a new result or product.  Such a combination may be one constituted by integers each of which are old, or by integers some of which are new, the interaction being the essential element."  All parties agreed that the integers of the claim, other than the aseptic package, interacted with each other to produce a new product and result.  The question became how the aseptic package limitation should be treated: as a limitation of the scope of the claim or as a limitation of the apparatus itself.

The problem here for the patentee was that it argued in support of a claim construction where the aseptic package was an "essential integer" to the claim.  The Federal Court found that, in light of this argument, the aseptic package "must interact purposefully and functionally with the other integers to produce the negative wound pressure.  It may be said that [the aseptic package] has a purpose -- to ensure sterility in treating the wound -- but it lacks any desirable functional result."  Since the aseptic package needed to interact with the other integers to produce negative wound pressure, and it admittedly did not do so, the claim was likely invalid.  Interestingly, there was no discussion in the opinion of why the patentee made this argument and what the ramifications would have been had the patentee instead argued that the aseptic package was only a limitation of the scope of the claim.  Although one would assume that the patentee could have avoided this issue had it simply not argued that the aseptic package was "essential" to the claim.

The Federal Court therefore set aside the preliminary injunction and remanded back to the primary judge for further proceedings.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Saturday
Oct172009

BPAI Finds Claims Indefinite and Not Directed to Patentable Subject Matter Under Bilski

Ex parte Hemmat (BPAI Oct. 13, 2009)

The Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Horner, affirmed a rejection of claims relating to a method for defining and selecting networking approaches for addressing a business need.  At issue on appeal were rejections relating to ineligible subject matter, indefiniteness, and obviousness.  For context, it may be useful to the reader to examine claim 1 of the patent application, which can be found in the BPAI decision itself (link above).

Citing the "machine-or-transformation" test of In re Bilski, the BPAI determined that "the [claimed] method steps are not tied to a particular machine and do not result in a transformation of an article to a different state or thing … [instead] the claim is directed to a method for selecting an approach to address a business need, in which the business need and other information is outlined in a concept document that is provided to various stakeholders, meetings are held to discuss proposed approaches, further information is added to the concept document, and then a final selection of an approach is made."  The BPAI found the claim failed the machine-or-transformation test and was therefore not directed to patentable subject matter.

The BPAI went on to discuss the indefiniteness rejection.  The indefiniteness issue concerned a method step providing "selecting a final selection from the at least one proposed approach with a view of the long-range plans and overall direction of an enterprise rather than to a specific problem."  Citing a dictionary, the BPAI defined "select" as "to take as a choice from among several; pick out."  The BPAI found that when there was only one "proposed approach" in the claim, "it is not possible to select that proposed approach from among several (or at least two) possible approaches."

The BPAI went on to explain how the claim is still indefinite even if a PHOSITA were to understand that if there is only one proposed approach, you could only "select" that one proposed approach.  The needs addressed by the "final selection" step were defined in the claim a "the long-range plans and overall direction of an enterprise rather than to a specific problem" whereas the needs addressed by other steps in the method were to address specific problems.  The BPAI posited that "[i]f the proposed approach was initially proposed to address a specific problem, and if it is the sole approach from which the final selection can be made, then this approach is necessarily selected with a view to that specific problem.  As such, it is unclear how the claim can be met when only a single approach is proposed."

Ultimately, the BPAI found the claims both indefinite and not directed to patentable subject matter.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Monday
Oct122009

BPAI Finds Disputed Claims Did Not Place Any Limitations on Scope of Specific Claim Terms

Ex parte Buabbud (BPAI Oct. 9, 2009)

Last Friday, the Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Dang, affirmed a rejection of claims relating to a communication system for transmitting video signals to a subscriber using optical fibers, for providing bi-directional telephone services for a subscriber using optical fibers, and for providing high-speed data services to a subscriber via a cable modem using optical fibers.

At issue on appeal was whether the examiner was correct in concluding a combination of prior art references disclosed "a high bandwidth bi-directional communication path between the CMTS and a public network" and "a high bandwidth bi-directional communication path … between the optical interface unit and the plain old telephone service (POTS) system."  Issues of claim construction concerned the terms "high bandwidth" and "plain old telephone service (POTS) system."

Regarding "high bandwidth", the BPAI found that the patent claims "simply [did] not place any limitation on what 'high bandwidth' means, includes, or represents."  Therefore, the BPAI did "not confine [the claims] to a path having a particular range of bandwidth."

Regarding "plain old telephone service (POTS) system", the BPAI found that, despite the appellant's arguments that the prior art disclosed using IP telephony services and not a POTS system, the claims "simply do[] not place any limitation on what 'plain old telephone service (POTS)" means, includes, or represents."  Therefore, the BPAI did "not confine the meaning of 'plain old telephone service (POTS)' to exclude any particular telephone service."

Ultimately, the BPAI affirmed the claim rejections.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Thursday
Oct082009

Summary of Local Patent Rules Affecting Claim Construction Practice (Part 5 of 6)

Now that the Northern District of Illinois has officially instituted its set of local patent rules, there are twelve federal district courts that 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 six-part series, this blog will undertake to briefly summarize the applicable claim construction rules in each of these twelve courts.  Today, we focus on the United States District Courts for the Northern District of Illinois and the Eastern District of Texas.

Note that this was formerly a five-part series but given the new Northern District of Illinois patent rules, it has been turned into a six-part series for ease of reading.

Northern District of Illinois (rules available here)

  • The parties first simultaneously exchange lists of claim terms to be construed as well as proposed constructions, elements that should be governed by 35 U.S.C. § 112 ¶ 6, and the function and structure/acts/materials corresponding to such 112 ¶ 6 elements;
  • Within seven days after this initial exchange, the parties are required to meet and confer to narrow the list of claim terms to no more than ten (absent prior leave of court upon a showing of good cause) and also certify whether each term is outcome-determinative;
    • Here, the comments to the rules note that while more than ten terms may be disputed between the parties, "construction of outcome-determinative or otherwise significant claim terms may lead to settlement or entry of summary judgment" and the ten-term limitation "is intended to require the parties to focus upon outcome-determinative or otherwise significant disputes."
  • Within 35 days of the initial exchange, the parties opposing infringement file their opening claim construction brief, which may not exceed 25 pages absent leave of court, including citations to intrinsic evidence and extrinsic evidence;
    • If the parties opposing infringement include witness testimony in their briefs, the parties must provide the Court with a declaration of each witness and must make each witness available for deposition concerning the proposed testimony.
  • At the same time the opening claim construction brief is filed, the parties are also required to file a Joint Appendix containing the patent(s) in dispute and the prosecution history of each patent (the Joint Appendix is to be used by both parties for citation of intrinsic evidence);
  • Within 28 days of the opening claim construction brief filing, the parties claiming infringement file their responsive claim construction briefs, which may not exceed 25 pages absent leave of court, including citations to intrinsic evidence and extrinsic evidence;
    • If the parties claiming infringement include witness testimony in their briefs, the parties must provide the Court with a declaration of each witness and must make each witness available for deposition concerning the proposed testimony.  Also, if the responsive claim construction brief contains citation to witness testimony, the parties opposing infringement receive an additional seven days to file their reply brief.  The responsive claim construction brief must also describe all objections to the extrinsic evidence identified in the opening briefs.
  • Within 14 days (or 21 days if the parties claiming infringement are offering witness testimony) of the responsive claim construction brief filing, the parties opposing infringement file their reply briefs, which may not exceed 15 pages absent leave of court, including all objections to any extrinsic evidence identified in the responsive claim construction brief;
    • Here, the comments to the rules note that the committee opted for consecutive claim construction briefs and having the alleged infringer file the opening brief "to promote a meaningful exchange regarding the contested points."
  • Within 7 days of the reply claim construction brief filing, the parties are required to file a joint claim construction chart setting forth the terms in dispute and each party's proposed construction as well as a joint status report containing each party's proposals for the nature and form of the claim construction hearing;
  • The Court may hold a claim construction hearing within 28 days of the reply brief filing and will issue an order describing the schedule and procedures for the hearing.

Eastern District of Texas (rules available here)

  • First, the parties simultaneously exchange a list of claim terms to be construed and elements that should be governed by 35 U.S.C. § 112 ¶ 6;
  • The parties are then required to meet and confer to finalize the list of claim terms;
  • 20 days after exchanging lists of claim terms, the parties simultaneously exchange preliminary proposed constructions for each term at issue, identification of structures/acts/materials corresponding to terms governed by 35 U.S.C. § 112 ¶ 6, identification of extrinsic evidence relied upon, including brief descriptions of any witness testimony;
  • The parties are then required to meet and confer to narrow issues and finalize preparation of a Joint Claim Construction and Prehearing Statement;
  • 30 days after exchanging proposed constructions, the parties must file a Joint Claim Construction and Prehearing Statement containing the following:

    1. agreed-upon constructions;
    2. each party's construction of each disputed claim term, including identification of intrinsic and extrinsic evidence in support of the party's position;
    3. anticipated length of time needed for claim construction hearing;
    4. whether any party plans to call witnesses, the identification of each witness, and summaries of opinions to be offered by each witness;
    5. a list of issues to be taken up at a prehearing conference prior to the claim construction hearing;
  • 30 days after filing the Joint Claim Construction and Prehearing Statement, claim construction discovery ends;
  • 15 days after claim construction discovery ends, the party claiming patent infringement files its opening claim construction brief (limit of 30 pages, unless otherwise ordered by the Court);
  • 14 days after the opening brief filing, the opposing parties file their responsive briefs (limit of 30 pages, unless otherwise ordered by the Court);
  • 7 days after the responsive brief filing, the party claiming infringement files its reply brief (limit of 10 pages, unless otherwise ordered by the Court);
  • 10 days before the claim construction hearing, the parties must jointly submit a claim construction chart to the court containing each disputed term, each party's construction of that disputed term, a blank column for the court's construction, and agreed-upon constructions of terms (optional);
  • 14 days after the reply brief filing, the Court will conduct a claim construction hearing, if necessary.

As can be seen from the above, the Northern District of Illinois and Eastern District of Texas do not allow for simultaneous exchange of claim construction briefs.  However, the order of briefing is reversed between these two districts, with the patent holder filing the opening brief in Texas and the alleged infringer filing the opening brief in Illinois.

Stay tuned for part six of this series.  Parts one through four can be found at the following links:

  • Part I (District of Massachusetts and District of New Jersey)
  • Part II (Western District of Pennsylvania and Eastern District of North Carolina)
  • Part III (Northern District of Georgia and Western District of Washington)
  • Part IV (District of Minnesota and Southern District of California)

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Tuesday
Oct062009

Eastern District of Texas Court Finds "Close Issue of Claim Construction" Supports JMOL of No Willful Infringement

Centocor Ortho Biotech, Inc. v. Abbott Labs., Case No. 2:07-CV-139-TJW (E.D. Tex. Oct. 1, 2009)

In this case, the defendants ("Abbott") moved for judgment as a matter of law ("JMOL") of no willful infringement after a jury verdict finding Abbott willfully infringed plaintiff's ("Centocor") patent.  Among Abbott's arguments in support of its motion was one of claim construction: "had the Court adopted Abbott's proposed claim constructions the [allegedly infringing product] would necessarily have been outside the scope of the claims."  Centocor countered this argument by stating that "because Abbott never presented [the issue of] claim construction positions before the jury, any arguments on th[is] issue[] cannot be used to overturn the jury's willfulness decision."

Judge Ward found that "the fact that certain facts were not presented to a jury, such as the close issue of claim construction, does not preclude the court to consider them in its determination of, as a matter of law, whether the first prong of Seagate is met … [i]n this case, the issue of claim construction was close and Abbott's proposed interpretation for the claims, although eventually not adopted, was reasonable and based upon the specification and prosecution history of the [patent-in-suit].  Thus, the Court takes the close issues of claim construction into consideration in its determination of whether Abbotts' actions were 'objectively reckless.'"  Judge Ward ultimately granted Abbott's motion for JMOL on the issue of willfulness, based at least in part on the close issue of claim construction.

Thanks go out to the Docket Report blog for its initial reporting of this case. 

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Thursday
Oct012009

Summary of Local Patent Rules Affecting Claim Construction Practice (Part 4 of 6)

Presently, eleven federal district courts 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 District of Minnesota and the Southern District of California.

11/05/09 Note: Rules for the Southern District of Texas were mistakenly initially included in this post.  This has been corrected.

District of Minnesota (rules available here)

As an initial matter, the majority of this district's local rules affecting claim construction are found in the Court's model Rule 26(f) report for patent cases.  This sample report provides for the following:

  • The parties first simultaneously exchange lists of claim terms that each party believes should be construed by the Court;
  • After this exchange, the parties meet and confer to narrow the issues.  As part of this meet and confer, the parties are required to exchange their preliminary proposed constructions and disclose extrinsic evidence, including brief descriptions of witness testimony for each witness either party plans to use;
  • The parties then notify the Court as to whether they request a claim construction hearing and also file with the court a joint claim construction statement containing:

    1. agreed-upon constructions;
    2. each party's construction of each disputed claim term, along with identifying all relevant intrinsic and extrinsic evidence; and
    3. identification of witnesses for the hearing, including a summary of each opinion to be offered by any expert witness.
  • After filing the joint statement, the Court will issue orders concerning briefing schedules, extrinsic evidence that will be received, and the claim construction hearing (if deemed necessary by the Court);
  • Note that the parties are asked to propose deadlines for the initial exchange of claim terms, the initial meet and confer, and the filing of the joint claim construction statement in the Rule 26(f) report.

Southern District of California (rules available here)

  • 14 days after service of preliminary invalidity contentions, the parties simultaneously exchange a list of claim terms to be construed, preliminary proposed constructions of each claim term, identification of the structures/acts/materials corresponding to elements governed by 35 U.S.C. § 112 ¶ 6, identification of extrinsic evidence used, and brief descriptions of witness testimony supporting the constructions (if applicable);
  • 14 days after exchanging proposed constructions, the parties simultaneously exchange responsive claim constructions, identifying whether the party agrees with the other party's proposed construction or identifying an alternative construction, as well as identification of extrinsic evidence used, and brief descriptions of witness testimony supporting the constructions (if applicable);
  • The parties then are required to meet and confer to prepare a joint claim construction chart, worksheet, and hearing statement for the Court;
  • 14 days after exchanging responsive constructions and related materials, the parties then file the Joint Claim Construction Chat, Joint Claim Construction Worksheet and Joint Hearing Statement;

    1. the chart includes each party's construction of each disputed claim term, along with identifying all relevant intrinsic and extrinsic evidence;
    2. the worksheet includes agreed-upon constructions as well as those in dispute;
    3. the hearing statement includes the anticipated time needed for a claim construction hearing, and identification of witnesses for the hearing, including a summary of each opinion to be offered by any expert witness;
  • 28 days after filing the joint claim construction chart, worksheet and statement, claim construction discovery ends;
  • 14 days after claim construction discovery ends, the parties simultaneously file opening briefs;
  • 14 days after the opening briefs are filed, the parties simultaneously file responsive briefs;
  • Not later than 28 days afer the responsive briefs are filed, the Court will conduct a claim construction hearing if the court believes a hearing is necessary.

While Minnesota's rules are fairly sparse, those of the Southern District of California are much more detailed. 

Stay tuned for parts five and six of this series.  Parts one, two and three of the series can be found at the following links:

  • Part I (District of Massachusetts and District of New Jersey)
  • Part II (Western District of Pennsylvania and Eastern District of North Carolina)
  • Part III (Northern District of Georgia and Western District of Washington)

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Sunday
Sep272009

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."

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

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."
 
If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.
Wednesday
Sep232009

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.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Monday
Sep212009

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.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.
 

Thursday
Sep172009

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.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.