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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

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.

Friday
Jul312009

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.

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

Wednesday
Jul292009

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."

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

Monday
Jul272009

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."

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

Friday
Jul242009

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.

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

Thursday
Jul232009

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.

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

Wednesday
Jul222009

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.

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

Tuesday
Jul212009

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.

Please send comments to grayonclaims@gmail.com with "Blog Comment" in the subject line.

Friday
Jul172009

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.

Please send comments to grayonclaims@gmail.com with "Blog Comment" in the subject line.