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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

Monday
Jul132009

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)

Friday
Jul102009

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.

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

Wednesday
Jul082009

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.

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

Thursday
Jul022009

Which Specification Do You Use For Claim Construction in an Interference? 

Agilent Techs., Inc. v. Affymetrix, Inc. (Fed. Cir. Jun. 4, 2009)

In this case, the district court (Northern District of California) awarded priority to Affymetrix in an interference between Agilent and Affymetrix brought under 35 U.S.C. § 146. The Federal Circuit, in an opinion by Judge Rader, reversed.

The disputed claims pertained to "microarray hybridization," which is a technique for performing multiple genetic analyses on a small fluid sample. After Agilent's patent on this technology issued on February 4, 2003, Affymetrix, believing it had earlier invented the claimed methods, copied Agilent's claims into one of its applications to provoke an interference between the parties. Before the Board of Patent Appeals and Interferences (BPAI), Agilent argued that Affymetrix's application did not describe the invention adequately under 35 U.S.C. § 112 ¶ 1 to show actual possession of the invention. Both the BPAI, and the district court awarded priority to Affymetrix.

The main issue in this case was: which party's specification should control when construing the claims at issue for purposes of written description under 35 U.S.C. § 112 ¶ 1? The written description analysis focused on Affymetrix's specification, but the claims themselves originated from Agilent's patent (and were then copied by Affymetrix into one of its applications).

The Federal Circuit examined two of prior decisions relating to this issue: In re Spina and Rowe v. Dror. In Spina, the applicant copied a claim from another patent to provoke an interference. The Federal Circuit, in considering whether Spina's specification contained an adequate written disclosure for the claim, held that "[w]hen interpretation is required of a claim that is copied for interference purposes, the copied claim is viewed in the context from which it was copied." Similarly, in Rowe, the applicant (Rowe) copied claims from Dror's patent to provoke an interference. The issue in Rowe was whether a third-party patent anticipated Rowe's claims corresponding to the interference count. The Federal Circuit held that "where the issue is whether the claim is patentable to one or the other party in light of prior art ... this court must interpret the claim in light of the specification in which it appears."

So, in the case of Spina, the specification used to interpret the claims was not Spina's specification, but in Rowe, the specification used to interpret the claims was Rowe's specification. The Court here found that the present facts called for application of the Spina rule, due to the fact that the issue was adequate written description and not anticipation.

In response, Affymetrix pointed to 37 C.F.R. § 41.200(b), which provides: "A claim shall be given its broadest reasonable construction in light of the specification of the application or patent in which it appears." This regulation was not in effect at the time of the Spina decision. However, the Federal Circuit recognized that "administrative regulations cannot trump judicial directives."

To summarize, the Federal Circuit provided that "when a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language. When a party challenges a claim's validity under § 102 or § 103, however, this court and the Board must interpret the claim in light of the specification in which it appears."

Ultimately, the Federal Circuit performed an analysis of the relevant claim language using the correct specification, reversed the district court's construction, and reversed the district court's decision, thereby awarding priority to Agilent.

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

Thursday
Jun252009

Properly Construed Claims Failed to Read on Preferred Embodiment and Were Found Indefinite

Purechoice, Inc. v. Honeywell Int'l, Inc. (Fed. Cir. Jun. 1, 2009)

In this case, the district court (Eastern District of Texas) found several claims of the patent at issue invalid under the definiteness requirement of 35 U.S.C. 112. The Federal Circuit, in a per curiam opinion, affirmed.

The patent at issue related to a system and method for acquiring and monitoring certain types of air and water quality data, including a set of sensors and data storage devices couple to the sensors. At issue was construction of the claim element "air quality." Purechoice argued that the term should be construed simply as "the quality of the air." Honeywell argued for a narrower meaning based on the claims, specification, and prosecution history: "the concentration of pollutants or contaminants in the air," excluding "meteorological, climate, or comfort related variables, such as temperature and humidity." The district court held that "air quality" means the "concentration of pollutants or contamina[nts] in the air." The court then agreed with Honeywell that two phrases including the term "air quality" were impossible to construe and differentiate from one another: "sensor for measuring environmental air quality data" and "air quality sensor adapted to measure non-weather data."

The Federal Circuit found that PureChoice's construction of "air quality" "does not inform the public what qualities the invention is concerned with, and is overbroad.". While the Court was "[m]indful not impute an attribute of a preferred embodiment into a claim term" the Court recognized that "preferred embodiments nevertheless are evidence of [the term's] meaning." The preferred embodiment for the patent at issue did not disclose meteorological sensing, but rather employed an organic compound sensor. Further, the specification clearly showed "that the invention is concerned with contaminants and pollutants, and not meteorological attributes."

Relying on the specification, the Court found that the "claimed invention is narrower than the claim language might imply, making it proper to limit the claims." The prosecution history supported this outcome as well, as the inventors amended the claims to get around prior art that disclosed measuring meteorological attributes. The Federal Circuit found this to show PureChoice had "clearly and unmistakably disavowed environmental data insofar as it extends beyond contaminants and particles."

Turning to indefiniteness, the Court determined that once the proper construction of "air quality" was applied to the claim terms "sensor for measuring environmental air quality data" and "air quality sensor adapted to measure non-weather data," the two terms became "identical in meaning" but also "insolubly ambiguous." Father, the claims as construed could not be read on the preferred embodiment. Finally, the Court noted that PureChoice had not reduced the interviews that resulted in its amended claims to writing pursuant to 37 C.F.R. 1.560(b) and therefore the Court was left without a record to explain the difference in meaning between the two terms. For these reasons, the Federal Circuit found the claims to be indefinite and therefore invalid.

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

Thursday
Jun182009

Federal Circuit Rejects Claim Construction That Was Contrary to the Patent Specification

Cartner v. Alamo Group, Inc. (Fed. Cir. Jun. 17, 2009) (nonprecedential)

In this case, the district court (Northern District of Ohio) found the patent at issue invalid for failing to meet the written description requirement of 35 U.S.C. 112 after construing a particular claim limitation. The Federal Circuit, in an opinion by Judge Schall, vacated the judgment and remanded for further proceedings.

The patent at issue related to a deceleration circuit for a hydraulic motor that can be sued in road maintenance equipment. The claim element at issue was "said flow control orifice being constantly operative." The district court rejected Cartner's proposed construction of this term, which relied on the patent's specification and prosecution history, noting that the specification was not instructive and the statements in the prosecution history were not explanatory. Instead, the district court accepted Alamo's proposed construction, which relied on a dictionary definition, as the court found that Alamo's construction provided meaning to every word in the claim - specifically the word "even." The district court construed this term as meaning that "the flow control orifice continuously slows fluid when the first control value is in the open or closed position."

Cartner argued to the Federal Circuit that the district court improperly construed the claim limitation because it not only discounted the specification and prosecution history, but it also adopted a construction that was inconsistent with the specification and relied heavily on dictionary definitions of "constantly" and "operative." Alamo argued that the district court's construction was proper.

The Federal Circuit held that the district court's construction of "said flow control orifice being constantly operative" was contrary to the patent specification. The specification disclosed that there are times where the fluid line may not contain any fluid. As the fluid line at issue does not always contain fluid, and the district court's construction required the slowing of fluid regardless of whether there is fluid flow in the fluid line, such a construction was not in line with the patent specification. Further, the term "constantly operative" was added during prosecution to describe the difference between the invention and the prior art, which disclosed flow control orifices that are not permanently in the fluid line, but instead must be switched into the fluid line at certain times.

Therefore, the Federal Circuit construed "said flow control orifice being constantly operative" to mean "the flow control orifice continuously slows fluid flow when there is fluid flow in the third fluid line, whether the first control valve is in the open or closed position." The district court judgment was vacated and remanded for further proceedings consistent with the Federal Circuit's claim construction.

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

Tuesday
Jun162009

British Court of Appeal Provides Broad Overview of Claim Construction Principles

Ancon Ltd. v. ACS Stainless Steel Fixings Ltd., [2009] EWCA Civ 498 (Court of Appeal June 16, 2009) (Jacob, J.)

In this decision released today, the Court of Appeal contemplated the proper construction of the term "generally elliptical cone shape" for a bolt head that fit into a channel assembly. ACS argued that a proper construction of this term would at least call for "the presence in the head of at least one portion which is more or less oval." In support of its argument, ACS cited to the drawings of the patent (all of which presumably showed a generally oval portion of the head), language in the specification, and the proposition that if the patentee had intended to receive broader coverage for his claim, he could have used different language than that present in the claim.

In an opinion by Lord Justice Jacob, the Court of Appeal took this opportunity to summarize its relevant claim construction principles, which, unlike claim construction in the United States, focus on a "purposive construction." The Court recognized that patentees are often faced with the familiar problem "to describe something which, at any rate ... is new; which has not existed before and of which there may be no generally accepted definition." Ancon, ¶ 25.

In the British system, "claims are to be construed in context" and while "the extent of protection is determined by the terms of the claims ... the description and drawings shall [also] be used to interpret the claims." Id. ¶ 5(b). Claims are construed purposively, "the inventor's purpose being ascertained from the description of the claims." Id. ¶ 5(c). "Purpose is vital to the construction of the claims." Id. ¶ 5(d).

To be sure, "purpose" and "meaning" are different: "there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used." Id. ¶ 5(e). However, "meaning" is still important. "[I]f the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements." Id. ¶ 5(g). When a patentee uses a word "which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context ... [the ultimate question is] what does the word or phrase actually mean, when construed purposively? That can only be done on the language used, read in context." Id. ¶ 5(h).

The Court went on to discuss the relationship between "purposive construction" and the lack of doctrine of equivalents in the British system. "[P]urposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context." Id. ¶ 5(j).

Finally, the Court noted that purposive construction eschews what has been called "the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge." Id. ¶ 5(k). Over-meticulousness is not the same as carefulness: "[c]are in working out what the patentee was aiming at when he chose the words he used is absolutely necessary." Id. The compulsory question is "what would a person skilled in the art have understood the patentee to have used the language of the claim to mean?" Id. ¶ 10.

In this case itself, the Court reasoned that the purpose of the shape of the bolt head is to achieve a camming action into the corners of the channel. Therefore, the shape of the sides of the bolt are important, not the shape of the top. While the accused bolt head had a slight bevel at its base, the Court found that this fact would not matter for purposes of infringement as there was "no technical difference" between the accused bolt head and that described by the claim.

This decision provides practitioners a thorough introduction to the details of United Kingdom patent claim construction.

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

Monday
Jun152009

Reexamination Argument and Lack of Examples in the Specification Used to Limit Claim Scope

Amgen, Inc. v. Ariad Pharms., Inc. (Fed. Cir. June 1, 2009)

In this case, the district court (District of Delaware) granted Amgen's motion for summary judgment of noninfringement after construing the pertinent patent claims. The Federal Circuit, in an opinion by Judge Moore, affirmed.

The patent at issue concerned a protein known as NF-kB and claimed methods comprising "reducing NF-kB activity in cells." The reduction of NF-kB activity is desirable because NF-kB increases the harmful expression of certain genes. The patent at issue described several classes of molecules potentially capable of reducing NF-kB activity by acting inside the cells. In contrast, the accused drug - Amgen's Enbrel - acts outside the cell. Further, the prior art contains example agents (antibiotics) that act outside the cell. The district court agreed with Amgen that the asserted claims are limited to actions that reduce NF-kB activity wherein those actions occur within the cells.

In arguments to the Federal Circuit, Ariad argued that the outer boundary of the asserted claims' scope should be at some place outside the cells such that Enbrel are captured but prior art antibiotics would be left out of the claim scope. Conversely, Amgen argued for the district court's construction of the term.

Although the Federal Circuit found that the ordinary meaning of the term "reducing NF-kB activity in cells" is "unclear" and "admits alternative views," the Court found that the "specification and prosecution history unequivocally point to the conclusion that the term limits the asserted claims to methods wherein the action that reduces NF-kB activity is taken inside the cell." The Federal Circuit noted that while the specification proposes several agents that act within the cell to reduce NF-kB activity, there is no mention whatsoever of agents that act outside the cell to reduce NF-kB activity. Further, in arguments made to the PTO during reexamination of the patent, Ariad lacked a basis in the specification to distinguish Amgen's Enbrel from prior art antibiotics.

The district court's claim construction and summary judgment order of noninfringement were therefore both affirmed.

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

Thursday
Jun042009

Warning: Cite Dictionaries Correctly in Your Briefs

Felix v. American Honda Motor Co., Inc. (Fed. Cir. April 10, 2009)

In this case, the district court (District of Kansas) granted Honda's motions for summary judgment of no infringement after construing the patent claims.  Ultimately, the Federal Circuit, in an opinion by Judge Linn, agreed with the District Court's claim construction "in all relevant respects" and affirmed.

The patent at issue concerned a build-in storage compartment for a pickup truck bed.  The claim element at issue was "a weathertight gasket mounted on said flange and engaging said lid in its closed position."  The district court construed "mounted" as "securely affixed or fastened to" and "engaging" as "coming together and interlocking."  Felix argued to the Federal Circuit that both constructions were too narrow.

First, Felix argued that "mounted" should instead mean "positioned."  The Federal Circuit disagreed because "[i]t [would be] difficult to imagine how - consistent with the law of gravity - any structure could be 'mounted' on the underside of any other structure if 'mounted' merely meant 'positioned.'" Further, both the claims and the specification consistently used "mounted" to mean "securely affixed or fastened to."  Felix also cited a dictionary definition in support of his proposed construction but apparently misquoted the definition, which the Federal Circuit found to be "at best highly misleading and borders on a misrepresentation to the court."

Second, Felix argued that "engaging" should instead mean "contacting or bringing together."  Again, Felix cited a dictionary in support of his proposed construction, but only gave the Federal Circuit a partial quote from the applicable definition which the court found to be "particularly misleading" and the court "further remind[ed] counsel of the importance of providing full, accurate, and undistorted quotations and citations in briefing before this court."

However, the Federal Circuit did find that the district court erred by construing "engaging" to require "interlocking" because, looking to both the specification and relevant dictionaries, the claimed gasket engaged the claimed lid by forming a seal.  The Federal Circuit therefore constructed "engaging" in this context as "coming together to form a seal."

Although the Federal Circuit's construction of "engaging" was different from that of the district court, the Federal Circuit found the district court's error was harmless and did not affect the determination of no infringement.

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

Monday
Jun012009

"an" + "consists of" = "one and only one"

Digene Corp. v. Third Wave Techs., Inc. (Fed. Cir. April 1, 2009)

In this case, the Federal Circuit, in an opinion by Judge Lourie, found that the district court (Western District of Wisconsin) did not err in its determinative claim constructions relating to a patent concerning diagnosis of human papillomavirus ("HPV") type 52 (a primary cause of cervical cancer).

The claim element at issue was "HPV 52 DNA consists of all or a fragment of an HPV DNA." The district court construed "HPV 52 DNA" as "a DNA molecule that is only type 52 HPV" and "consists of all or a fragment of an HPV DNA" as "consists of all or a fragment of one HPV DNA that does not contain any other DNA."

Digene argued that "HPV 52 DNA" should not be limited to a molecule that is only HPV type 52. The Federal Circuit disagreed, focusing its analysis on the fact that during prosecution, Digene explicitly stated that "the claimed HPV 52 DNA must be derived from only type 52 HPV DNA." Therefore, prosecution disclaimer applied and Digene therefore disclaimed any meaning of "HPV 52 DNA" that was derived from anything but HPV 52 DNA.

Next, Digene argued that the term "consists of all or a fragment of an HPV DNA" should not be limited to "one and only one HPV DNA" because the word "an" in the claim should be construed to mean "one or more." However, the Federal Circuit noted that when the term "consists of" appears in the body of a claim, it "limit[s] the clause for which it acts as a transition to only those elements found in that particular clause" and it "generally requires that the word 'an' following it be limited to one and only one."

While the constructions of other claim terms were disputed by Digene, it had conceded during oral argument that it could not prove infringement under the district court's construction of "HPV 52 DNA consists of all or a fragment of an HPV DNA." Since the Federal Circuit affirmed the district court's construction of that term, further analysis was not necessary.

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

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