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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

Tuesday
Sep012009

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

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

Western District of Pennsylvania (rules available here)

  • The parties first simultaneously exchange a list of claim terms to be construed and claim elements which the parties contend should be governed by 35 U.S.C. § 112 ¶ 6;
  • Within 10 days of this exchange, the parties are required to meet and confer to narrow the list of claim terms in dispute and prepare a Joint Disputed Claim Terms Chart to be filed with the Court, including proposed constructions and intrinsic evidence related to each claim term;
  • 30 days after filing the Joint Disputed Claim Terms Chart, the Plaintiff (or the Defendant in cases where an alleged infringer has filed a DJA of non-infringement/invalidity and the Defendant patent holder has counterclaimed for infringement) files its opening claim construction brief, including proposed constructions of each claim term in dispute, the function and structure for each 35 U.S.C. § 112 ¶ 6 term, extrinsic evidence, and the anticipated length of time needed to present its case at the claim construction hearing;
  • 20 days after the opening brief filing, the opposing party files its response brief, including the same information as required in the opening brief and a concise (under five-page) statement regarding the opening party's offer of extrinsic evidence;
  • 15 days after the response brief filing, the opening party files its reply brief, including a concise (under five-page) statement regarding the opposing party's offer of extrinsic evidence;
  • Prior to the claim construction hearing (which is routinely scheduled to be 15 days after the reply brief filing, subject to the Court's availability), the Court may issue an order regarding extrinsic evidence and any other matter the Court deems appropriate regarding the hearing.

Eastern District of North Carolina (rules available here)

  • 15 days after service of the Preliminary Non-Infringement and Invalidity Contentions, the parties simultaneously exchange a list of claim terms for construction and claim elements which the parties contend should be governed by 35 U.S.C. § 112 ¶ 6;
  • 20 days after this exchange, the parties simultaneously exchange preliminary proposed constructions of each claim term, the structures/acts/materials associated with potential 35 U.S.C. § 112 ¶ 6 claim elements, and extrinsic evidence each party intends to rely upon;
  • The parties are required to meet an confer to narrow both the list of proposed terms for construction and to resolve differences in proposed constructions;
  • 45 days after the exchange of preliminary proposed constructions, the parties are required to file a Joint Claim Construction Statement containing:

    1. Agreed upon constructions;
    2. Each party's proposed construction of terms in dispute, along with identification of intrinsic and extrinsic evidence;
    3. Anticipated length of time needed for the Claim Construction Hearing; and
    4. A statement indicating whether any party intends to provide live testimony at the hearing, including the identity of witnesses and a summary of expert opinions to be offered live at the hearing.
  • 30 days after filing the Joint Claim Construction Statement, claim construction discovery ends;
  • 45 days after filing the Joint Claim Construction Statement, the parties simultaneously file opening claim construction briefs;
  • 20 days after filing opening briefs, the parties simultaneously file response briefs;
  • Prior to the claim construction hearing (which the Court will conduct to the extent it believes a hearing is necessary), the Court may issue an order regarding extrinsic evidence and any other matter the Court deems appropriate regarding the hearing.

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

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

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

Monday
Aug312009

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

Ex parte Pickar (BPAI Aug. 31, 2009)

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

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

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

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

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

Thursday
Aug202009

Prosecution Disclaimer Applies Even if the Disclaimer Results in a Negative Claim Limitation

RFID Tracker, Ltd. V. Wal-Mart Stores, Inc. (Fed. Cir. Aug. 18, 2009) (nonprecedential)

In this case, the district court (Eastern District of Texas) entered final judgment of noninfringement after claim construction and a stipulation by the plaintiff that the defendants did not infringe under the entered claim construction. The Federal Circuit, in a per curiam opinion, affirmed.

The disputed claims relate to an inventory control system that includes radio frequency identification ("RFID") tags attached to inventory items, an interrogator/reader, and a computer. The district court construed the claim term "interrogator/reader" as "an interrogator/reader includes a field generator and a receiver, but not a transmitter." As none of the parties disputed that the accused devices contained a transmitter, the district court entered final judgment of noninfringement.

One disputed claim recited, in part, an "interrogator/reader" that included a "field generator" and a "receiver." RFID argued that the claim used "the open-ended term 'including,' which, similar to 'comprising,' raises a presumption that the 'interrogator/reader' is not limited to a 'field generator' and a 'receiver' and may include a transmitter." The Federal Circuit found that while "the specification does not rebut RFID's alleged presumption that the interrogator/reader can include a transmitter ... [during prosecution] [t]he applicant differentiated its claims from the prior art on the ground that the claimed interrogator/reader was simple, unlike the complex readers of the prior art that contained and used a transmitter." Father, "[i]n light of these statements during prosecution, RFID cannot now contend that the claimed interrogator/reader is anything more than 'simply a receiver and a field generator in its simplest form.'"

While the district court's construction included a negative limitation (the phrase "but not a transmitter"), "[i]f the applicant unequivocally disavows claim scope, the doctrine of prosecution disclaimer applies even if the disclaimer results in a negative claim limitation," (citing Am. Container Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005)). The Federal Circuit therefore affirmed both the claim construction and the final judgment.

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

Friday
Aug142009

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."

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

Thursday
Aug132009

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.

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

Tuesday
Aug112009

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.

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

Monday
Aug102009

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.

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

Friday
Aug072009

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.

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

Wednesday
Aug052009

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.

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

Monday
Aug032009

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.

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