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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Federal Circuit Construes Golf Ball Claim to Require Cover Layer Hardness be Measured On the Ball

Callaway Golf Co. v. Acushnet Co. (Fed. Cir. Aug. 14, 2009)

In this case, the district court (District of Delaware) granted summary judgment of no anticipation and entered final judgment after a jury verdict that all but one of the asserted claims of the patent at issue were not obvious. The Federal Circuit, in an opinion by Judge Dyk, reversed the summary judgment order and also vacated the obviousness judgment and remanded for a new trial.

The disputed claims related to multi-layer polyurethane-covered golf balls. As stated by the Federal Circuit, "[a]ccording to the specification, a major advantage of the patented invention is that it presents a 'dual personality' golf ball that is capable of travelling great distances, yet does not exhibit diminished playability or durability." The accused products at issue were the Titleist Pro V1, Pro V1*, and Pro V1x golf balls.

The claim term at issue on appeal was "cover layer having a Shore D hardness." The term "Shore D hardness" refers to a durometer measurement of a material's hardness rated on the Shore D hardness scale, which is described in the ASTM D-2240 standard. The issue between the parties was whether the hardness of the cover layer was to be measured while the cover layer was on or off the golf ball. The district court noted that "on-the-ball" hardness measurements can differ from "off-the-ball" measurements. Ultimately, the district court construed the term such that the hardness measurement of the cover layer was to be taken on the ball.

On appeal, Acushnet argued that the district court's claim construction was erroneous because the patent specification noted in several places that the hardness values are "measure in accordance with the ASTM method D-2240", which states that hardness should not be tested on a rounded or curved surface (i.e. the surface of a golf ball). The Federal Circuit disagreed, stating that the claims focused on "[a] golf ball" with a "cover layer" having a certain hardness, "rather than focusing on the hardness of the material used to create the cover layer." Further, the Court found that the patent specification pointed to "the hardness of the assembled ball (rather than of the cover materials in isolation) as the relevant characteristic." The Federal Circuit also agreed with the district court's finding that "there is no 'cover layer' to measure until a golf ball is produced." Finally, the Court pointed out that Acushnet's own witnesses testified at trial that that persons having ordinary skill in the art typically took Shore D hardness measurements "on the ball." The Federal Circuit therefore affirmed the district court's claim construction.

As a side note, the jury found that dependent claim 5 of the patent at issue invalid as obvious, while finding at the same time that all other asserted claims, including the independent claim from which claim 5 depends, not invalid. This was truly a strange result as an independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness. While this issue was initially raised to the district court judge by the patentee, not the accused infringer, after the jury was polled, the judge indicated she would not send the jury back for additional deliberations. In light of this, Acushnet asked the Federal Circuit for, and was subsequently granted, a new trial on obviousness as the jury verdict contained a "irreconcilable inconsistency."

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Summary of Local Patent Rules Affecting Claim Construction Practice (Part 1 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 a 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 Massachusetts and the District of New Jersey.

District of Massachusetts (rules available here)

  • The parties first simultaneously exchange a list of claim terms to be construed and proposed constructions. The suggested date for this exchange is 120 days after completion of preliminary disclosures;
  • 20 days (suggested) after exchanging the list of claim terms and proposed constructions, the parties simultaneously file opening claim construction briefs. The Court suggests that opening briefs be limited to 25 pages, absent leave of Court;
  • 10 days (suggested) after filing opening briefs, the parties simultaneously file reply briefs. The Court suggests that reply briefs be limited to 15 pages, absent leave of Court;
  • 15 days (suggested) after filing reply briefs, the parties finalize the list of disputed terms and file a joint claim construction and prehearing statement containing the following information:

    1. the anticipated time needed for the Markman hearing and identification of proposed witnesses to testify at the hearing;
    2. procedural information concerning technology tutorials (if needed);
    3. the order of presentation at the hearing (term-by-term, party-by-party, etc.); and
    4. a joint claim construction chart showing the terms at issue, the parties' proposed constructions, and supporting evidence.
  • The Court suggests limiting of the number of claim terms to no more than 10 per patent, and asks the parties to prioritize them in order of importance for the Court.

District of New Jersey (rules available here)

  • First, the parties exchange a list of claim terms for construction and identify any terms which should be governed by 35 U.S.C. § 112 ¶ 6;
  • After this initial exchange of terms, the parties are required to meet and confer to limit the terms in dispute;
  • 21 days after exchanging initial lists, the parties exchange preliminary proposed constructions of all terms in dispute (including all terms suggested by both the patentee and accused infringer), including information related to construction under 35 U.S.C. § 112 ¶ 6 (if applicable), and specifically identifying all intrinsic and extrinsic evidence used in support of the proposed constructions;
  • After this exchange of proposed constructions, the parties are required to meet and confer again to narrow the issues;
  • 30 days after exchanging proposed constructions, the parties file a joint claim construction and prehearing statement containing the following information:

    1. agreed upon claim constructions;
    2. each party's proposed construction of each disputed term with identification of all references to intrinsic and extrinsic evidence to be used in support of the party's construction and in opposition to the other party's proposed construction;
    3. an identification of the most significant terms, including identifying terms that are case or claim dispositive or that would help in promoting settlement;
    4. the anticipated time needed for the Markman hearing; and
    5. identification of witnesses that may called at the Markman hearing, including a summary of testimony.
  • 30 days after filing of the joint claim construction and prehearing statement, claim construction discovery ends;
  • 45 days after filing of the joint claim construction and prehearing statement, the parties simultaneously file opening Markman briefs;
  • 60 days after filing opening briefs, the parties simultaneously file response briefs;
  • 14 days after filing response briefs, the parties propose a Markman hearing schedule to the Court.

In both Massachusetts and New Jersey, the parties simultaneously file both opening and responsive Markman briefs. Also, in both courts the parties are asked to inform the court of which terms are the most important. New Jersey's adds two mandatory meet and confers prior to the filing of briefs, in order to both narrow the list of terms to be construed and to narrow the disputes in proposed constructions. Massachusetts' court adds a request that the parties to narrow the list of terms to ten per patent.

Stay tuned for parts two through five six of this series.

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

Yesterday, Dennis Crouch's Patently-O blog published an article by Ed Reines and Nathan Greenblatt of Weil, Gotshal & Manges LLP entitled "Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009." Edward Reines and Nathan Greenblatt, Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009, 2009 Patently-O Patent L.J. 1 (2009).

In this article, the authors criticize the current proposal in the 2009 Patent Reform Act of interlocutory claim construction appeals as "misguided" and point out that this proposed solution to the Cybor de novo review standard "does not address the true issue in any event - it masks it." Id. at 3-4. The authors raise an interesting point that interlocutory appeals may put the Federal Circuit in the position of "reversing its own interlocutory claim construction order after further development of the facts at trial, resulting in at least two appeals and three proceedings in the district court for the same case." Id. at 10.

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

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Federal Circuit Gives Term "Sealed" Broadest Reasonable Interpretation

In re Shoner (Fed. Cir. Aug. 10, 2009) (nonprecedential)

In this case, the Board of Patent Appeals and Interferences ("BPAI") affirmed the Examiner's rejections of the patent application claims at issue as obvious. The Federal Circuit, in an opinion by Judge Lourie, affirmed.

The disputed claims related to a cellular tire liner and air chamber system for pneumatic tires. The Examiner initially found that a single prior art reference disclosed all of the claim elements except for a claimed "segment configuration" of the tire liners. In rejecting the claims as obvious, the Examiner also cited to numerous prior art publications that she felt demonstrated that it was "notoriously well-known" to produce tire cores in segments in order to facilitate mounting. The BPAI affirmed the Examiner's decision.

On appeal, the applicant argued that its application claimed an air chamber that "is sealed separately from the rest of the tire cavity" and that the prior art did not teach this separately sealed cavity. In response, the Director of the PTO pointed out that the PTO is required to give claims their "broadest reasonable interpretation" and such an interpretation of the applicant's claims was not as limited as the applicant suggested.

The Federal Circuit found that while "the specification of the '800 application describes an invention that has a sealed air chamber that is structurally separate from the rest of the tire cavity ... [the patent claims do] not limit the invention to one in which the air chamber is sealed with an inner tube or similar structure. [The claims] require[] only that the air chamber be 'sealed and pressurized.'" The Court further found there was "no limitation in the language [of the claims] that would narrow the meaning of 'sealed' to a particular structure ... and there is nothing in the specification that would explicitly limit the air chamber to a particular structure." The Court therefore adopted the PTO's broad interpretation of "sealed" as "any structure that seals and pressurizes the air chamber." Not surprisingly, the Federal Circuit agreed with both the Examiner and the BPAI that the prior art did teach a "sealed and pressurized" air chamber and affirmed the rejection of the claims.

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BPAI Rejects Claims, Finding PHOSITA Would Have to Make Speculative Assumptions Concerning the Meaning of Claim Language

Ex parte Brune (BPAI Aug. 7, 2009)

Today, the Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Macdonald, reversed a rejection of claims (and entered a new ground of rejection) relating to a method for data exchange between network devices.

While the examiner rejected the claims under 35 U.S.C. § 102(e), the BPAI first considered whether the claims at issue were definite. Two claim construction issues were involved, one related to steps in a method claim, and the other relating to construction of a means-plus function claim under 35 U.S.C. § 112 ¶ 6.

Before getting to the merits of the appeal, the BPAI noted that the PTO gives claims their "broadest reasonable interpretation" and the PTO is "not required in the course of prosecution to interpret claims in the same manner as courts are required to during infringement proceedings" as district court judges "operate under the assumption the patent is valid." Also, "[a] prior art [rejection] cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language."

First dealing with the method claim, the BPAI stated it was "unable to discern the steps" of the claim. The BPAI quote the following phrases from the claim: "wherein a device can be selected using a control device; "wherein a user interface for the selected device is generated based on description data which [is] stored;" and "wherein the user interface of a first device is displayed." (emphasis in opinion). The BPAI noted that "[a]n undisputable method claim has clauses that are designated by a present participate and separated with a comma (or a semicolon that includes a comma)." In view of the BPAI's "inability to identify the steps" of the claim, it found a "material issue of claim interpretation is present which must be resolved before the merits of the Examiner's and Appellants' position can be properly considered" and therefore rejected the claim as indefinite.

Next dealing with the means-plus-function claim, the claim at issue recited a "control means for generating a user interface display for enabling user control of first and second devices via said user interface display, the control means receiving description data associated with the first and second devices via said digital bus." The BPAI found that while "generating a user interface display" was the function associated with the "control means" of the claim, the specification did "not describe, with particularity, sufficient structure, material, or acts for performing the 'generating' limitation" of the claim. This default would cause a PHOSITA "to make speculative assumptions concerning the meaning of the claim language" and the BPAI therefore rejected this claim as indefinite as well.

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BPAI Uses Dictionary Published Six Years After Filing Date in Rejecting Claims

Ex Parte Davis (BPAI Aug. 5, 2009)

Today, the Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Crawford, affirmed-in-part a rejection of claims relating to a method and implementation for managing a bid/auction over the web or any of the of electronically-enabled procurement process.

One claim construction issue arose in this appeal concerning whether a prior art reference disclosed "selecting a plurality of sellers to each respectively provide at least one competitive bid for the predetermined transaction, wherein the sellers are selected from an appropriate category of a membership database of sellers so as to match buyer requirement information with appropriate seller expertise."

In its decision, the BPAI cited to a dictionary to define the terms "membership" (defined as "the body of members") and "member" (defined as "one of the individuals comprising a group" and "one of the elements of a class or set"). The BPAI subsequently found that the prior art disclosed "identifying suppliers who were predetermined as being 'qualified' to supply particular items for the buyer" and also found that each individual qualified supplier was a "member," therefore the collection of individual qualified suppliers defined a "body of members" or "membership." The claim rejection was affirmed.

The interesting part of this decision lies in the particular dictionary used by the BPAI. The dictionary used was the Merriam-Webster's Collegiate Dictionary, Eleventh Edition, 2007. However, the patent application at issue (10/044,430) was itself filed on January 11, 2002 off of a provisional application filed on January 12, 2001, a full six years before publication of the dictionary used by the BPAI in this appeal. As was noted in a post last month on this blog, the Federal Circuit has stated that the "ordinary and customary meaning of a claim term is the meaning the term would have to a person of ordinary skill in the art 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). The BPAI again used a dictionary published years after the filing date of the application, as it did last month in Ex parte Courtney (click here to see this blog's commentary on that decision).

The author has confirmed that in this case, as in Ex parte Courtney, the definitions from the same dictionary (albeit the tenth edition published in 1997) were identical to those in the dictionary as published in 2007. However, there may be future cases where applicable definitions change over time and using the wrong dictionary could therefore affect the result.

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Northern District of Illinois Proposes Patent Rules Affecting Claim Construction Practice

As noted in an article posted today on Dennis Crouch's Patently-O blog by R. David Donoghue (of the Chicago IP Litigation blog), the Northern District of Illinois is considering a new set of patent rules (available here), including rules concerning claim construction practice. Of note are the following rules:

  • Claim construction briefing starts fairly late in discovery -- 14 days after the final invalidity contentions and roughly 10 months after service of the complaint
  • A general limit of ten (10) terms for construction by the Court, regardless of the number of patents, unless good cause is shown for construction of additional terms
  • The accused infringer submits the initial and reply briefs; the patent holder only submits a response brief
  • A 25-page limit for initial and response briefs, with a 15-page limit for the reply brief

In Mr. Donoghue's article, he notes the potential problem that "[t]he accused infringer necessarily will not have the benefit of the patentee's claim construction position at the outset of the briefing." However, this problem is at least partially solved by Local Patent Rule 4.1(a), which requires the parties to exchange both lists of claim terms for construction prior to briefing and proposed constructions of each of those terms. Nevertheless, LPR 4.1 may be more helpful to the parties, and most importantly the Court, if, after the required meet and confer to narrow the term list down to ten terms or less, the parties are required to exchange proposed constructions of each of those agreed-upon terms before briefing begins. This way, the potential element of surprise in the patent holder's response brief should be lessened.

At the very least, these proposed rules provide a good first step in streamlining claim construction practice in the Northern District of Illinois.

Thanks go out to R. David Donoghue and Dennis Crouch for bringing this to my attention.

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British Claim Construction Practice Summarized in One Sentence

W L Gore & Associates GmbH v. Geox SPA (Court of Appeal Jul. 29, 2009) (Jacob, J.)

In this case, the Court of Appeal construed various terms in two patents related to shoes. Lord Justice Jacob, citing to the Court's prior decision in Kirin Amgen, succinctly described the British system of claim construction in a single sentence: "The task for the court is to determine what the person skilled in the art would have understood the patentee to have been using the language of the claim to mean."

Throughout its opinion, the Court focused on the "purposive construction" of claim terms. For example, in construing the term "mid-sole" the Court pointed out that "there is simply no purposive reason to read in some complicated question of where the line between sole and mid-sole is to be drawn." In construing the term "filler", the Court noted that the term "cannot just mean something which fills its own space for every solid object does that." Finally, in construing the term "unitary" the Court found that the term "must mean something - a complete whole thing. The claim itself, at a later point, calls it 'an article of manufacture' - items held together in a mould cannot reasonably be so described. It must be remembered that this is a method patent. Putting and positioning two components in the mould is simply a different process from putting a single component in."

This decision is a good read for American patent practitioners to see the differences in analysis between the U.S. and British claim construction systems.

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District Court Fails to Construe Claim Term so Federal Circuit Construes Term in the First Instance

Wavetronix v. EIS Electronic Integrated Systems (Fed. Cir. Jul. 29, 2009)

In this case, the district court (District of Utah) granted summary judgment of non-infringement. The Federal Circuit, in an opinion by District Court Judge Patel (sitting by designation), affirmed.

The disputed claim related to a method of teaching a traffic monitoring device the location of traffic lanes on a given thoroughfare using detection and observation of actual automobile traffic. Such methods can be used by urban planners to get accurate traffic counts when planning construction of new roads and determining optimal ways of using existing roads. The sole claim construction issue on appeal was the proper construction of the term "probability density function estimation" as found in the claims. The Federal Circuit noted that since there were "no material issues of fact as to how the accused system works, the construction of [this] term is the key issue for deciding infringement.

This case is somewhat unique in that the district court never explicitly construed this term (or any other terms in the patent claims). Both parties in the litigation urged the Federal Circuit to construe this term on appeal rather than remand to the district court for claim construction, despite the Federal Circuit's general rule that it "generally refuse[s] to construe claims in the first instance." The Federal Circuit granted the parties' request for three reasons. First, while "the district court did not specifically construe the claim term, its opinion references the question of claim construction, and it is apparent that the district court's views on the matter have been exhausted." Second, "both parties have agreed that [the Federal Circuit} should construe the claim limitation." Third, "the record, which includes considerable evidence and expert testimony, has been sufficiently developed to enable us to construe the claim term without prejudicing either party."

In construing this term, the Federal Circuit first noted that there was no dispute that a "probability density function estimation" ("PDFE") was, in some manner, an "estimation" of a "probability density function" ("PDF") (generally a theoretical mathematical function that seeks to model reality). The parties agreed upon the definition of a PDF, but still disputed the definition of a PDFE. The claim language itself did not provide guidance on how to define "PDFE" and the parties did not rely on the prosecution history to determine the proper scope of the term, so the Court looked to the patent specification for guidance.

The specification described the concept of a PDF "in terms of a graph in which enough data is collected to observe peaks, which represent the centers of lanes, and valleys, which represent the lane boundaries or edges." However, the specification did not set forth an explicit definition of PDFE and in fact was described by the Court as "hardly a paragon of clarity" that provided "not entirely consistent" guidance as to the proper meaning of the term. Looking back to the definition of PDF, the Court found that the difference between a PDF and a PDFE was "in the fact that a PDF is a perfectly smooth mathematical function, whereas a PDFE is an estimation of some hypothetical PDF" and that this understanding "comports with the various descriptions and explanations of the PDF and PDFE concepts found in the specification."

Summarizing, the Court found that "what makes a PDFE an estimate of a PDF in the context of the '916 patent is the fact that a PDFE is based on actual data points, rather than a perfectly smooth, if hypothetical, mathematical function or model." The term PDFE was therefore defined by the Court as "a finite data set large enough to approximate a function of a continuous variable whose integral over a region gives the probability that a random variable falls within the region." The Court subsequently found that the accused process did not infringe the claim.

As an aside, the patent at issue was filed in 2001. One of the parties, in its underlying construction of the term "PDF" (which ultimately was not at issue between the parties), cited to a dictionary published in 2001. The Federal Circuit, in a footnote to its opinion, noted that that the cited definition comported with other general reference and technical dictionaries, citing two dictionaries published in 2002 and 2003 (after the filing of the patent application and therefore after the invention by the patentee). While this did not appear to play any significant role in its decision, the citation of these two dictionaries by the Court may go against its prior holding in Philips that the appropriate time frame to consider in construing claim terms is "at the time of the invention."

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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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