Construction of "Multithreading" Affects Proper Priority Date

In re Reiffin Family Trust (Fed. Cir. Jul. 27, 2009) (nonprecedential)

In this case, the Board of Patent Appeals and Interferences ("BPAI") rejected all the claims of an issued patent on reexamination. The Federal Circuit, in an opinion by Judge Bryson, affirmed.

There were two patents involved in this case, but the one that concerned claim construction was directed to a "preemptive multithreading computer system with clock activated interrupt." Before the patent went into reexam, Reiffin had sued Microsoft Corporation, alleging that the operating system and the spell-checking and grammar-checking features of Microsoft Word infringed the patent. The district court held that the patent was not entitled to a priority of 1990 or earlier. After this finding, Reiffin voluntarily requested reexamination of the patent.

At issue was whether the patent could claim priority all the way back to a patent application filed in 1982 or only to the patent's filing date in 1994. Specifically, the debate concerned weather the 1982 patent application taught "multithreading" ("a process by which a computer runs pieces of different 'threads' in alternating sequence so rapidly that it appears to be running all the threads simultaneously") a term found in each of the patent claims at issue.

During the reexamination, the Examiner found that the 1982 patent application did not teach "multithreading," determined that the appropriate priority date was in 1994, and rejected claims in light of the OS/2 operating system described in a publication from 1988. On appeal, the BPAI agreed with the Examiner that the 1982 patent application did not disclose multithreading as the BPAI determined that "in a multithreading system, each thread must be interruptible" while, conversely, the "editor" described in the 1982 patent application was not interruptible.

The patent specification defined "multithreading" as involving "preemptive time-sliced execution of a plurality of threads." The Federal Circuit found that "[t]he most natural reading of that phrase is that each of the threads in the plurality of threads is preempted, which in this context means that each thread is interrupted ... [t]hus, all threads that are part of the multithreading operation must be interruptible by whatever controls the duration of the timeslice." While Reiffin argued that his disclosed "editor" would never operate long enough in practice for that functionality to come into play, the Federal Circuit found this assertion to be irrelevant, stating "irrespective of how the invention that was the subject of Mr. Reiffin's 1982 disclosure would have functioned in practice, the '604 patent describes a multithreading system in which a plurality of threads are interruptible, and the 1982 application does not disclose a plurality of interruptible threads." The Federal Circuit therefore affirmed the BPAI's rejection of the claims.

Interestingly, the Federal Circuit cited to no case law concerning the appropriate claim scope in reexamination proceedings. During both prosecution and reexamination, the appropriate claim scope focuses on the "broadest reasonable interpretation consistent with the specification" whereas during litigation the inquiry focuses on the "ordinary and customary meaning to one skilled in the art at the time of invention."

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Federal Circuit Uses Claim Construction to Determine Proper Inventorship

University of Pittsburgh v. Hedrick (Fed. Cir. Jul. 23, 2009)

In this case, the district court (Central District of California) found that four individuals were not co-inventors of the patent at issue. The Federal Circuit, in an opinion by Judge Mayer, affirmed. This case is interesting as the inventorship issue turned on the construction of the claim term "adipose-derived."

The patent claims related to adipose-derived stem cells. Initially, the patent application listed seven inventors (two from the University of Pittsburgh and five from UCLA ("the REBAR researchers")). After the patent was granted, the University of Pittsburgh filed an action seeking the removal of all five REBAR researchers as co-inventors. One of the REBAR researchers voluntarily dismissed himself from the suit, leaving the dispute between the remaining four REBAR researchers and the University of Pittsburgh.

At issue in this case was the definition of the term "adipose-derived" and specifically whether "adipose-derived" simply meant "derived from fat tissue" or more specifically meant "species of stem cell distinct from the mesenchymal stem cell that is obtainable from bone marrow tissue." The district court determined that the term should have the plain meaning of "derived from fat tissue." Claim construction was important in this dispute because the REBAR researchers "alleged that their research proved that the inventive stem cells were in fact distinct from the prior art mesenchymal stem cells." While the REBAR researchers agreed that "derived from fat tissue" was the plain meaning of the term "adipose-derived," they argued that the proper construction must also include that the stem cell is "a species of stem cell distinct from the mesenchymal stem cell ('MSC') that is obtainable from bone marrow tissue." While the REBAR researchers pointed to both the specification and prosecution history to support their argument, the district court determined that the specification supported the plain meaning of the term and there was no disavowal of any other meaning during prosecution and concluded that the invention had been conceived prior to the REBAR researchers' work on it.

In its analysis, the Federal Circuit considered the patent specification first. The Court found the specification indicated that while "the mesenchymal stem cells require costly prescreening of culture materials, the inventive stem cells can be passaged in culture in an undifferentiated state not requiring prescreened lots of serum." Further, the specification did not state that the cells were a separate species from mesenchymal stem cells collected form bone marrow. However, the Court found "[t]hat other similar prior art cells are described differently than the inventive cells does not rise to an intent to deviate from the meaning of the terms describing the inventive cells."

Next the Federal Circuit focused on the prosecution history. During prosecution, the applicants overcame a rejection of claims by introducing the term "adipose-derived." They then submitted a paper showing that mesenchymal stem cells and the inventive stem cells differed in their intrinsic properties. This submission was made after an examiner interview where the patentees "agreed that a submission to distinguish between adipose derived stem cell and bone marrow stem cell will be submitted." The Examiner then agreed with the inventors that the "adipose-derived stem cells are distinct from the mesenchymal stem cells" of the prior art, but also noted that the claims were in condition for allowance without requiring an amendment.

The Federal Circuit found there was no disavowal, stating that "[a] wide chasm exists between the weak inference from the summary that adipose-derived stem cells in this invention must be a different species from mesenchymal stem cells and a clear and unmistakable disavowal as required to limit a claim term." Subsequently, the Federal Circuit agreed with the district court's claim construction and found that the REBAR researchers should not have been listed as co-inventors on the patent.

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BPAI Reverses Rejection Based On 75-Year-Old Reference and Broad Dictionary Definition of "Strap"

Ex parte Smith (BPAI Jul. 23, 2009)

Today, the Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Horner, reversed a rejection of claims relating to a binding apparatus for holding sheet materials in an notebook.

The examiner's claim rejections focused on a roughly 75-year-old reference combined with a dictionary definition of the term "strap" as found in the claim term "at least one strap interconnected to at least one of said left edge and said right edge of said spine." The dictionary definition of the term "strap" that the examiner used (among a number of definitions in the referenced dictionary) defined the term as "tang, post or rod." The examiner found that the 75-year-old reference disclosed a "post."

While during prosecution terms are given their "broadest reasonable meaning" this meaning is given in light of the specification. The BPAI found that the dictionary definition used by the examiner was not consistent with the ordinary meaning of the term "strap" that a person having ordinary skill in the art would have gleaned from reading the specification. The specification disclosed two embodiments. In each embodiment, the strap was curled or resiliently deflected around a portion of the sheets. The BPAI found that the when the claims are read in light of the specification, "the term 'strap' is used to define an element that can wrap around a portion of the sheets, thereby strapping them in place." This construction was consistent with other definitions of the term "strap" found in the dictionary cited by the examiner. Since there was nothing to indicate that the 75-year-old reference's "posts" were capable of being curled to wrap around the sheets and strap them into place, the BPAI reversed the examiner's rejection of these claims.

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BPAI Finds Broadest Reasonable Construction of "Fixed" Includes Both Direct and Indirect Connections

Ex parte Carranza (BPAI Jul. 22, 2009)

Today, the Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Horner, affirmed a rejection of claims relating to a pull-through tool that allows loading of a graft vessel onto an anastomotic device.

The claim construction issue in this appeal concerned whether the phrase "plurality of wires fixed to [a] handle" in the claim, as properly construed using the broadest reasonable interpretation of the claim, allowed for "intermediate structure, rather than [only] direct fixation." The applicants argued that the prior art taught an intermediate structure, not a direct fixation.

In its opinion, the BPAI pointed out that the specification stated that the flexible members of the handle "are connected to one another, directly or indirectly" and that the specification further provides that "[t]he proximal end of each tension member 52 is connected to the proximal end of the handle 48. The proximal end of the handle 48 may include a stud 66 to which the proximal end of each tension member 52 is fixed. More than one stud 66 may be provided, such that each tension member 52 is connected to a separate stud 66."

The BPAI went on to agree with the Examiner's position that there is no requirement in the claim for direct fixation and the applicants used the term "fixed" interchangeably with the term "connected" in the specification. Citing a Federal Circuit decision and CCPA decision both holding that the term "connected" does not necessarily mean a "direct connection" and pointing back to the specification's statement that the flexible members of the handle "are connected to one another, directly or indirectly," the BPAI found that it was reasonable to interpret the term "fixed" as restricted to neither direct nor indirect fixation.

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Refrigerator Shelf Claim Requires Snap-Securing During Assembly, Not at All Times

Gemtron Corp. v. Saint-Gobain Corp., (Fed. Cir. Jul 20, 2009)

In this case, the district court (Western District of Michigan) granted a permanent injunction in favor of Gemtron regarding Saint-Gobain's infringing refrigerator shelves. The Federal Circuit, in an opinion by Judge Linn, affirmed.

The disputed claims related to refrigerator shelves, more specifically refrigerator shelves made up of two pieces -- a plastic frame and a glass panel where the glass panel is secured in the frame using "relatively resilient" fingers so that the glass panel is "snap-secured" into the frame. There was one claim term at issue in the litigation: "relatively resilient end edge portion [of the frame] which temporarily deflects and subsequently rebounds to snap-secure [the glass into the frame]." The district court construed this term to mean that "the end edge portion is sufficiently resilient that it can temporarily deflect and subsequently rebound when glass is being inserted into the frame" (emphasis added).

The dispute concerned "precisely when the frame must be flexible to satisfy the 'relatively resilient' limitation." The evidence showed that Saint-Gobain's frames were relatively resistant while heated (i.e. after they came out of the mold but before they completely cooled) but not necessarily at room temperature. Naturally, it was shown that Saint-Gobain snapped the glass into place when its frames were warm.

Saint-Gobain argued that the term at issue should have been construed to mean that "the end edge portion is sufficiently flexible to permit the glass in the finished product to be pushed out of the frame and pushed back into the frame." More particularly, Saint-Gobain argued that the term should not mean "temporarily resilient immediately after cooking in an oven and before any opportunity to cool."

In construing the claim term, the Federal Circuit focused exclusively on the claim language and the specification, as the parties made no arguments concerning the prosecution history or extrinsic evidence. The claim itself "had no express temporal or temporal limitation requiring that the end edge portion be relatively resilient 'always,' or 'at all temperatures,' or 'when in use in a refrigerator.'" Further, use of the phrase "temporarily deflects and subsequently rebounds to snap-secure" in the claim suggested to the Federal Circuit "that the claimed resilience of the frame need only be exhibited during assembly." The patent specification also focused "on the characteristics of the frame that enable snap-secure assembly of the claimed shelf" and "every time the structure of the 'relatively resilient' edge portions is mentioned in the specification, it is in the context of a discussion of how that structure function while the shelf is assembled."

For these reasons, the Federal Circuit affirmed the district court's construction of the claim, only requiring that the frame be "sufficiently resilient ... when glass is being inserted into the frame." Although Saint-Gobain also argued that that this construction turned the limitation at issue into a "product-by-process limitation," the Federal Circuit pointed out that the limitation described "the structural relationship between the glass panel and the frame" which was "different from defining a structure solely by the process by which it is made." As Saint-Gobain's refrigerator shelves satisfied the claim limitations when the frames are warm and the glass is snapped into place, the Federal Circuit affirmed the finding of infringement as well.

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BPAI Uses Dictionary Definitions Published Four Years After The Application Filing Date in Construing Claim Terms

Ex parte Courtney (BPAI Jul. 17, 2009)

Today, the Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Silverberg, reversed a rejection of claims related to a broadcast spreader having a movable deflector.

In its opinion, the BPAI made two findings of fact related to the "ordinary and customary meaning" of the terms "arcuate" and "profile" for purposes of the claims at issue. The BPAI found that the term "arcuate" meant "having the form of a bow, curved" and the term "profile" meant "a side view of an object or structure." In support of these constructions, the BPAI cited to The American Heritage Dictionary of the English Language (4th ed. 2007).

Interestingly, the claims at issue were filed with the UPSTO on May 22, 2003, and the Federal Circuit has stated that the "ordinary and customary meaning of claim term is the meaning the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (emphasis added). It is curious that the BPAI cited to a dictionary in support of its construction where the publication date of the dictionary was roughly four years after the filing date of the patent application.

Here, the edition of the dictionary was of no consequence, as the relevant definitions of these two terms did not change between 2003 and 2007 (the author has confirmed that the year 2000 edition of the same dictionary contained identical definitions of these two terms). While in this particular case, the definitions of these two common words did not change over four years, there may be situations where definitions could change drastically in the span of four years (or even less), especially in new and rapidly developing technologies. For at least this reason, it is good practice to cite to dictionaries that were published before the filing date of the patent application.

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BPAI Affirms Rejection of Claims Due To Broad Defining Language Found in Specification

Ex parte Harvey, (BPAI Jul. 15, 2009)

In this appeal, the Applicants appealed the Examiner's final rejections of twenty-two claims as being either anticipated or obvious in light of the prior art. The Board of Patent Appeals and interferences ("BPAI"), in an opinion by Administrative Patent Judge Easthom, affirmed.

The invention at issue related to an apparatus for detecting unauthorized use of a vehicle comprising "an input device for allowing entry of vehicle operator identification information" and "a processor for determining whether said vehicle is in operation, and for initializing an action if a vehicle operator has not been authorized to operate said vehicle prior to a predetermined event." The main issue in the appeal was whether "the Examiner erred in finding that [the anticipatory reference] teaches 'allowing entry of vehicle operator identification' and 'initiating an action if the vehicle operator has not been authorized to operate said vehicle'" as set for in one of the independent claims of the patent application. The focus of the BPAI opinion was on the first element, "allowing entry of a vehicle operator identification information."

The Applicants' specification stated that the vehicle operator identification information "typically comprises a passcode" and may also comprise "other information." The specification also defined the term "validation" or "validate" as "to determine whether or not a vehicle operator is authorized to operate the vehicle." The term "vehicle operator" was defined in the specification as "any person who attempts to become validated." The anticipatory prior art disclosed a vehicle theft-prevention device including a key transponder that generates an "identification code."

The BPAI pointed out that the PTO "is obligated to give claims their broadest reasonable interpretation during examination." However, "a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment." Further, "[i]t is the applicants' burden to precisely define the invention, not the PTO's."

The Examiner had found that an "identification code" described in the prior art reference constituted "vehicle operator identification information." While the Applicants argued that the prior art reference described "a validated or authorized key, not a validated or authorized operator," the BPAI pointed back to the Applicants' specification which stated that the vehicle operator identification information "typically comprises a passcode" and can also comprise "other information" and that the term "vehicle operator" meant "any person who attempts to become validated." This disclosure in the specification "allows for a broad variety of devices to input the 'vehicle identification information'" and does not preclude the prior art reference's "key from being interpreted as an input device." The BPAI found that the Applicants had not demonstrated Examiner error with respect to the claims rejection, and therefore affirmed.

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John Vandenberg Authors Article in IPLaw360 Entitled "Tips For Winning More Defenses In Markman"

Today's IPLaw360 published a piece authored by John Vandenberg of Klarquist Sparkman LLP concerning "moving from old-school Markman to Markman 2.0." In this article, Vandenberg provides fourteen "tips" for practitioners to use to ensure that their Markman proceedings become "Markman 2.0" proceedings. The "tips" include using "must not," "need not," "may," and "must" language in proposed constructions. The article is an interesting and quick read for those interested in claim construction.  A link to the article is provided below.

Tips For Winning More Defenses in Markman (IPLaw360 subscription required)

Patent Claim Does Not Require Meat to be Safe for Immediate Raw Consumption

Ecolab, Inc. v. FMC Corp., (Fed. Cir. Jun. 9, 2009)

In this case, the district court (District of Minnesota) denied Ecolab's motion for JMOL and entered judgment on a jury's verdict that Ecolab infringed FMC's patent. The Federal Circuit, in an opinion by Judge Gajarsa, affirmed the district court in this respect.

The disputed claims related to chemical products used by beef and poultry processors to reduce pathogens, such as E. coli and salmonella, on uncooked beef and poultry. The accused products contained the antimicrobial compound peracetic acid ("PAA"), which had long been used as a surface sanitizer. The claims recited "[a] method for sanitizing fowl ... with an aqueous peracetic acid solution, which consists essentially of a sanitizing concentration of at a 1000 ppm peracetic acid ..." There were two issues in this case relating to claim construction: (1) whether there was prosecution history disclaimer such that the claims cover only solutions containing PAA as the sole antimicrobial agent; and (2) how the term "sanitize" should be construed given a definition of that term in the patent specification.

Regarding prosecution history disclaimer, Ecolab argued that FMC disclaimed compositions containing multiple antimicrobial agents during prosecution when, in response to a rejection by the examiner, FMC made numerous statement that its claims related to using PAA as the "sole antimicrobial agent" and the prior art did not show use of PAA "alone as a sanitizer." While the Federal Circuit noted that it "will find the applicant disclaimed protection during prosecution only of the allegedly disclaiming statements constitute 'a clear and unmistakable surrender of subject matter'", it also pointed out that the "prosecution history as a whole may demonstrate that the patentee committed no clear and unmistakable disclaimer." In this case, after FMC made its statements to the examiner allegedly disclaiming use of multiple antimicrobial agents, the examiner rejected FMC's argument, noting that the claims use the term "consists essentially of" PAA and are thus not limited to compositions containing PAA as the sole antimicrobial agent. In response, FMC made alternative arguments to overcome the prior art. In light of these facts, the Federal Circuit found there was no clear disclaimer.

Regarding claim construction, the patent claims were directed to a "method for sanitizing fowl" and the patent specification explicitly stated that the term "sanitize" "denote[s] a bacterial population reduction to a level that is safe for human handling and consumption." The question here concerned the appropriate point in time that the sanitized meat was safe for human consumption: immediately after treatment with PAA or only after the meat was cooked? The district court had instructed the jury the that the sanitized meat was not safe for consumption until it was cooked. Ecolab argued that the district court overrode the express definition of "sanitize" as set forth in the patent specification.

The Federal Circuit noted that "an inventor may act as his own lexicographer to define a patent term" and that "courts generally may not re-draft claims; we must construe the claim as written." The Court also recognized that FMC "notably fail[ed] to state that the invention can make poultry safe for consumption only after it is cooked." Next, the Court looked to its prior decision in Chef America, a case involving a method of baking cookies where the claim required heating dough to a specific temperature (which was high enough that it would burn the dough to a crisp) but, while the Federal Circuit understood the patentee meant that the oven, not the dough, should be heated to that temperature, the claim still unambiguously required the dough be heated to that temperature.

In this case, the Federal Circuit distinguished Chef America as it found the claim language at issue in Chef America was "unambiguous" whereas the term "sanitize" is ambiguous "in that it does not indicate when consumption is to take place." Regarding this issue, Ecolab's expert testified that in-plant inspectors examine poultry to determine whether it is fit for human consumption. The Court found this testimony helpful, stating "[s]urely, the inspectors do not require the poultry to be 'fit for human consumption' in its uncooked state." Thus, the Federal Circuit found the claims do not require that PAA-treated fowl be safe for immediate raw consumption and therefore affirmed the district court's denial of Ecolab's motion for JMOL of noninfringment.

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Prosecution History Used To Limit Method Claim to Performing Steps in Specific Order Claimed

Fraser v. High Liner Foods (USA), Inc., (Fed. Cir. Jul. 8, 2009) (nonprecedential)

In this case, the district court (District of Massachusetts) entered summary judgment against some of the defendants and dismissed the rest of the suit for patent infringement. The Federal Circuit, in a per curiam opinion, affirmed.

The disputed claim related to a method of preparing a fish product. The method required "immersing a fish fillet in room temperature vegetable oil for five to ten minutes, covering the fillet with crumbs, and then freezing." The district court found that certain defendants did not infringe either literally or under the doctrine of equivalents.

The Federal Circuit agreed with the district court that the prosecution history of the patent "requires respecting the order of the claimed steps" because the patentees "obtained allowance of their claim only after distinguishing the prior art based on the claimed step of immersing the fillet in oil for a period of five to ten minutes immediately following filleting." For its doctrine of equivalents argument, while the patentees "[did] not grapple at all with their statements during prosecution which the trial court properly held to limit the scope of their claims," their "theory of equivalents infringement rest[ed] on the false belief that the mere presence of vegetable oil in the list of ingredients in a fish product [was] sufficient to warrant liability - without consideration of the condition of the fish when processing beings, the required period of immersion, or the temperature of the oil and the fish."

Because the patentees' "theory of infringement require[d] ignoring not only the precise order of steps of the claimed method, but entire claim elements altogether" and the patentees "simply stat[ed] [during summary judgment] that there are disputed issues of fact regarding infringement by equivalents", the Court affirmed the grant of summary judgment against the patentees.

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