Subscribe and Connect

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


Cybor Watch: Collection of Briefs Filed in En Banc De Novo Claim Construction Appeal

Lighting Ballast Control LLC v. Philips Electronics North America Corporation

This blog is working to collect all of the briefs filed (both by the parties and amici) in the pending Lighting Ballast appeal regarding de novo review of claim construction.  The Federal Circuit is scheduled to hear the appeal en banc on September 13, 2013.

Below are PDF copies of the briefs collected to date:

This blog is still working on collecting other briefs recently filed by other amici.  From the docket, it appears we should also be expecting briefs from the USPTO, Paul Michel, Google, Intel, Microsoft, the Connecticut IPLA, the Austin IPLA, and the Association of the Bar of the City of New York, which have all successfully filed motions to extend the deadline to file amicus briefs.  As those briefs are filed, they will be made available on this blog.


Federal Circuit Summarily Affirms District Court Decision Dismissing False Marking Case

Public Patent Foundation, Inc. v. McNeil-PPC, Inc.(Fed. Cir. May 3, 2013) (nonprecedential)

In this case, the Federal Circuit issued an order summarily affirming a district court's decision dismissing a qui tam false marking case pursuant to the retroactive changes to the false marking provisions enacted by the America Invents Act ("AIA").

Initially, the Appellant petitioned the Federal Circuit to hear the appeal en banc in the first instance, or, in the alternative, for summary affirmance due to the Court's nonprecedential decision in Rogers v. Tristar Products.  That decision held that the AIA's retroactive application of changes to the false marking statute does not violate either the Takings Clause or the Due Process Clause of the Fifth Amendment.  Appellant also asked the Federal Circuit to make the Rogers decision precedential under Federal Circuit Rule 32.1(e).  Last year, the Court denied Appellant's requests.

Late last year in Brooks v. Dunlop Manfacturing Inc., the Federal Circuit held in a precedential decision that the retroactive application of the false marking provisions in the AIA did not violate the Due Process Clause or the Intellectual Property Clause of the Constitution.  Soon after that decision, Appellant again petitioned the Court to summarily affirm the district court under the Brooks decision.  Appellee agreed that Brooks was controlling, but pointed out that Appellant has made an argument that Rogers and Brooks are distinguishable from its case as its case was filed prior to the Federal Circuit's Forest Group decision and Congress's intent in passing the retroactive false marking provisions of the AIA was due, at least in part, to the growing number of false marking cases filed after Forest Group.

The Federal Circuit ordered that the district court's judgment is summarily affirmed.


Revised Briefing Schedule in En Banc Federal Circuit Appeal Regarding De Novo Claim Construction Review

Lighting Ballast Control LLC v. Philips Electronics North America Corporation (Fed. Cir. Mar. 15, 2013)

This blog had previously reported that in this case where the Federal Circuit has agreed to reconsider the de novo review of claim construction en banc, the Defendant-Appellant's en banc brief was due on April 29, 2013 (45 days from the Court's March 15, 2013 Order granting en banc review).  Recently, the Court modified this due date to May 20, 2013.

Thus, under the current schedule, the Defendant-Appellant's brief is due May 20, 2013.  The Plaintiff-Cross Appellant's response brief will likely be due June 19, 2013 (or 30 days after service of Defendant-Appellant's en banc brief if filed earlier than May 20, 2013).  Then the Defendant-Appellant's reply brief will likely be due July 5, 2013 (or 15 days after service of the response brief if filed earlier than June 19, 2013).

Prior coverage of this case can be found here.


Federal Circuit Affirms Broad Disclaimer of Subject Matter During Prosecution

BASF Agro B.V., Arnhem (NL), Wadenswil Branch v. Makhteshim Agan of North America, Inc. (Fed. Cir. Mar. 20, 2013) (nonprecedential)

In this case, the Federal Circuit affirmed a district court's claim construction that the patentee had disclaimed particular scope during prosecution.  The patents at issue related to methods of applying insecticide to protect buildings against termites.

The district court had determined that during prosecution the patentee had "disclaimed applying insecticide without loopholes around a building, and applying insecticide without loopholes under a building, respectively."  On appeal, the plaintiff argued this disclaimer was too broad, and while the patents teach a treatment "without barrier", the disclaimer should have been limited to "without loopholes both around and under a building."

The Federal Circuit found that the district court correctly construed the claims of the patents based on the determination that the patentee had disclaimed "barrier treatments" without loopholes.  Looking first to the claim language itself, the Federal Circuit stated that "[t]he claims unambiguously require areas that are treated and untreated."  Looking next to the specification, the Federal Circuit determined that language in the specification describing the prior art and the object of the invention "confirms that the claims do not cover the prior art's loophole-free barrier treatments."  Turning to the prosecution history, the Federal Circuit explained that the patentee made specific arguments to distinguish prior art that required "the formation of a barrier that has no untreated locations" and the patentee relied on a declaration that also distinguished the prior art for that same reason and found the patented method was "unobvious and surprising."

Plaintiff made the argument that the patents' use of the term "comprising" overcame the potential disavowal of subject matter, but the Federal Circuit disagreed, stating that "comprising" is not "a talismanic incantation that counteracts a clear disclaimer."

Plaintiff also presented expert testimony that at the time of the invention an ordinarily skilled artisan would have understood barrier treatments to require formation of a complete barrier both around a building and underneath its foundation.  The Federal Circuit disregarded that testimony as inconsistent with the intrinsic evidence, explaining that "[e]ven testimony from a qualified expert has little probative value if it is inconsistent with the intrinsic record."

The Federal Circuit therefore affirmed the district court's claim construction.


Cybor Watch: Federal Circuit Will Reconsider En Banc De Novo Claim Construction Review

Lighting Ballast Control LLC v. Philips Electronics North America Corporation (Fed. Cir. Mar. 15, 2013)

In this case, the Federal Circuit (en banc) has agreed to reconsider the de novo review of claim construction under Cybor Corp. v. FAS Techs., Inc.  The Court has directed the parties and amici to address three questions:

1) Should this court overrule Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998)?

2) Should this court afford deference to any aspect of a district court's claim construction?

3) If so, which aspects should be afforded deference?

Defendant-Appellant's en banc brief is due in 45 days from today, with Plaintiff-Cross Appellant's response brief is due 30 days after service of Defendant-Appellant's en banc brief.  Defendant-Appellant's reply brief is due 15 days after service of the response brief.

The Federal Circuit has invited the views of the USPTO as amicus curiae and has stated that briefs of other amici curiae will be entertained.


Federal Circuit Affirms Construction That Did Not Read Terms Out of the Claims and Covered the Preferred Embodiment

SynQor, Inc. v. Artesyn Technologies, Inc. (Fed. Cir. Mar. 13, 2013)

In this case, the Federal Circuit affirmed the district court's claim construction of "isolation" to be limited to "an input and an output of a particular stage, component, or circuit."  The patents at issue related to high-efficiency DC-DC power converter systems used to power circuitry in large computer systems and telecommunications and data communication equipment.

The district court construed the claim terms "isolation", "isolating", and "isolated" to mean "the absence of an electric path permitting the flow of DC current (other than a de minimus amount) between an input and an output of a particular stage, component, or circuit."  The court went on to grant partial summary judgment of infringement.

On appeal, the defendants argued the the construction should require isolation "between two points" rather than "between an input and an output of a particular stage, component, or circuit", also asserting that "consumers connect the input and output of the claimed system to a common ground such that the system is not isolated."

The Federal Circuit ultimately agreed with the district court's construction, explaining that the term "isolation" was used in the claims "as an adjective describing a stage or converter with the power converter system", citing examples in numerous claims.  The court found that "requiring 'isolation' between every two points in the system would read the terms 'stage' or 'convertor' out of the claims."

The court also stated that while the patent figures "show an isolation stage that has no electrical connection between its input and output" they do not show "the entire power converter system."  Further, the defendants' expert admitted that construing the claims in defendants' fashion would prevent the claims from encompassing the preferred embodiment.

The court held that the district court correctly construed "isolation" and affirmed the grant of partial summary judgment of infringement.


Federal Circuit Reverses Claim Construction That Excludes Preferred Embodiment

Accent Packaging, Inc. v. Leggett & Platt, Inc. (Fed. Cir. Feb. 4, 2013)

In this case, the Federal Circuit found the district court erred in construing the claim terms "each" and "a respective one" and reversed the district court's grant of summary judgment of non-infringement, finding instead that summary judgment of infringement was appropriate.  The patents-in-suit related to wire tier devices that are used to bale recyclables or sold waste for easier handling.

The claims at issue included the claim language "said operator assembly including a pivotal shaft assembly and elongated operator bodies, with each of the operator bodies being operably coupled with a respective one of said gripper, knotter, cutting element and cover so as to supply driving power from the single drive assembly thereto."  The district court concluded that "[t]he word each, in this patent, refers to one of four arms" and that "[a]n ordinary reading of the language, therefore, assigns the machine's four arms a single function."  As the accused device had only two arms, the district court granted summary judgment of non-infringement.

On appeal, the plaintiff argued that the claims were not limited to devices with four arms and the claims also did not require that each arm be coupled to one and one only operator element, pointing to the preferred embodiment disclosed in the specification which had only two arms that were coupled to multiple operator elements.  The defendant argued that because the claims recited four separate and distinct operator elements, the claims required at least four arms so that "each" of the arms is coupled to "a respective one" of the four claimed operator elements.

The Federal Circuit agreed with the plaintiff that the district court erred in its claim construction, relying heavily on the preferred embodiment in the specification and the fact that "[w]e have held that 'a claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.'", quoting On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004).  While the defendant's construction hinged on requiring each arm to correspond to one and only one operator element, the preferred embodiment disclosed arms that were coupled to one or more operator elements.  The Court further found that nothing in the claim language itself required that each arm be coupled to one and only one operator element.

Therefore, the Federal Circuit reversed the district court's grant of summary judgment of non-infringement.  Further, as the defendant did not contest the plaintiff's assertion that, without the limitation that required each arm to be coupled to one and only one operator element, the accused device infringed the asserted claims, the Federal Circuit remanded to the district court with instructions to enter summary judgment of infringement in favor of the plaintiff on those claims.


LoTempio Law Blog Reviews Thesaurus of Claim Construction

Recently a guest blogger at the LoTempio Law Blog posted a review of the Thesaurus of Claim Construction - Second Edition, released in late 2012 by Stuart B. Soffer and Robert C. Kahrl.  The book has been described as directing "practitioners to the cases in which claim terms have previously been constructed, and further to the sources of the evidence used by past courts to construe the terms in dispute" and as including "over 3,500 additional entries [in the Second Edition], some of which focus on Biotechnology, Pharmacology, and Cleantech."  The review can be found here.


Split Federal Circuit Panel Affirms BPAI Giving Means-Plus-Function Term Its Broadest Reasonable Interpretation

In re Avid Identification Systems, Inc. (Fed. Cir. Jan. 8, 2013) (nonprecedential)

In this case, a majority of a Federal Circuit panel affirmed a decision by the BPAI rejecting claims as anticipated and obvious where the BPAI construed a claim element drafted in means-plus-function form by giving it the broadest reasonable interpretation.  The patent at issue related to radio-frequency identification ("RFID") tags.

The claims at issue required "means for permanently storing data in an unalterable fashion, said data being known as unalterable data."  The BPAI construed the term "unalterable data" as "data that is not readily changeable" and found that the prior art disclosed this limitation.

Avid argued on appeal that the BPAI erred in this construction, and instead should have determined that the function of the limitation "means for permanently storing data in an unalterable fashion" is "permanently storing data in an unalterable fashion."  The Director responded that the BPAI "simply gave the claims their broadest reasonable interpretation consistent with the specification."

The majority agreed with the Director and BPAI because "there was no consistent, explicit definition in the specification, and there were varied uses of the phrase in the patent, the Board under its broadest reasonable construction practice did not err."

An issue was raised as to whether the decision should be remanded to the PTO for further consideration as the PTO did not examine the "means for storing" clause under 35 U.S.C. § 112 ¶ 6. 

The majority found that Avid "waived that point by failing to specifically argue that alleged procedural fault ... [and while] the Board has previously evaluated § 112, ¶ 6 cases without invoking waiver ... the fact that the Board has on occasion overlooked particular procedural defaults does not mean that it is compelled to waive those procedural requirements for all subsequent cases."  Thus, "the Board's rejection of the claims under the PTO's 'broadest reasonable interpretation' guideline was sufficient to sustain the Board's rejection."

Judge Clevenger dissented, stating that the issue was "whether the Patent Office ('PTO') may use an unaltered broadest reasonable interpretation standard in examining means-plus-function claims, or if these claims must alwasy be interpreted in accordance with 35 U.S.C. § 112, ¶ 6.  The answer is easy."  The dissent then summarized its position on the issue:  "35 U.S.C. § 112, our en banc decision In re Donaldson, the Manual of Patent Examining Procedure ('MPEP'), and past PTO practice are all in agreement:  under § 112, ¶ 6, 'the broadest reasonable interpretation that an examiner may give means-plus-function language is that statutorily mandated in paragraph six.'  In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1189 [sic]) (en banc).  Here the PTO did not analyze the claim under § 112, ¶ 6, and so the only appropriate action is to remand the case to the Examiner with instructions to apply a correct claim construction."  Citing numerous examples of cases where waiver was not found as to construction under § 112, ¶ 6, the dissent concluded that "[t]here is no reason why this case should be treated differently from past instances where the PTO has correctly construed means-plus-function claims." 


Cybor Watch: CVSG Brief Recommends Supreme Court Not Review De Novo Standard at This Time

Retractable Techs., Inc. v. Becton, Dickinson and Co. (Supreme Court Nos. 11-1154, 11-1278)

In this case, one of the two questions presented to the U.S. Supreme Court is "[w]hether, in reviewing a district court's interpretation of a patent claim, the court of appeals should give deference to the district court's resolution of subsidiary factual questions."  The CVSG brief has urged the Supreme Court not to take the appeal on this issue because this particular case is "not an appropriate vehicle" for determining the appropriate standard of appellate review.

The CVSG brief admitted that "[t]he question whether deferential review is appropriate in those circumstances is of substantial and ongoing importance in patent law" and that "[i]n an appropriate case, this Court's intervention might be warranted to determine the proper standard of appellate review of district court factual determinations that bear on the interpretation of disputed patent claims."

The CVSG brief went on to explain its position that "[i]n many patent cases (including this one), a district court can determine the proper scope of disputed claims without venturing beyond the four corners of the patent instrument itself.  In such cases, there is no reason to depart from the usual understanding that a district court's legal rulings are reviewed de novo on appeal."  The CVSG brief also acknowledged that in certain cases "the court's ultimate claim construction may depend on its resolution of contested questions of historical fact, such as the content of the prior art on a particular date, the accepted meaning of specialized terms in a particular industry, or the level of 'ordinary skill' in the relevant field at the time of invention."

The CVSG brief concluded by stating that "some claim-construction decisions will depend on a district court's resolution of subsidiary factual questions.  The Federal Circuit's decision in Cybor does not identify any reason that such factual finding should not be given the deference ordinarily required by Federal Rule of Civil Procedure 52(a), and appellate courts routinely defer to factual findings made by district courts and juries."  Further, "[t]he Court in Markman had no occasion to address the proper allocation of authority between trial and appellate courts, and its analysis does not logically compel de novo appellate review of all district court findings that bear on patent claim construction."

But, the CVSG brief determined that this case was not an appropriate vehicle for such review by the Supreme Court because "[t]he district court in this case ... did not make any factual findings about the meaning of" the disputed claim term.  Thus, the brief concluded that the petition for writ of certiorari should be denied.

The CVSG brief can be read in full here