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 Cir. Jan. 8, 2013) (nonprecedential)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."
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.
Federal Circuit Finds Lack of Sufficient Structure to Support Means-Plus-Function Claim Language, Reverses District Court
ePlus, Inc. v. Lawson Software, Inc. (Fed. Cir. Nov. 21, 2012)
In this case, the Federal Circuit reversed the district court and found that the system claims of the patents-in-suit were indefinite as they included means-plus-function language without disclosure of corresponding structure in the specification. The patents-in-suit related to enabling businesses and organizations to use computer networks to purchase goods.
The claims at issue each contained the limitation "means for processing said requisition to generate purchase orders for said selected matching items." The defendant argued during summary judgment that this limitation was indefinite because the specification did not disclose adequate structure for this limitation. The district court denied the defendant's motion.
At trial, the defendant did not raise the indefiniteness issue. Nor did the defendant raise this issue in its first JMOL motion. At the hearing for that JMOL motion, the defendant told the Court it disagreed with the Court's indefiniteness ruling but since indefiniteness was an issue of law, defendant believed that the district court did not need to "rerule" on it to preserve the issue for appeal. In the defendant's renewed JMOL motion, it generally argued that the system claims were indefinite and incorporated by reference the indefiniteness arguments it made during claim construction and summary judgment. The district court denied the motion.
On appeal, the plaintiff first argued that the defendant waived its right to appeal indefiniteness because the defendant did not raise the issue of indefiniteness at trial and the defendant's JMOL motions were not sufficiently specific. The Federal Circuit disagreed, stating that "indefiniteness is a question of law and in effect part of claim construction ... when the arguments with respect to indefiniteness are not being raised for the first time on appeal, we do not readily find a waiver." And the Federal Circuit determined from the record that "the district court did not intend to revisit the indefiniteness issue once it denied summary judgment ... [defendant] was not required to ignore the writing on the wall and press the issue over and over again to preserve it for appeal."
The plaintiff next argued that the claims at issue were indefinite as the specification failed to identify sufficient structure for the "means for processing" limitation in the claims. While the district court had determined that the specification disclosed "a purchase order generation module", the Federal Circuit found that "there is no mention of such structure in the specification." The Federal Circuit went on to explain that the three passages of the specification relied on by both the district court and the plaintiff did not disclose any structure related to this claim limitation.
Plaintiff also argued that it was not required to disclose structure corresponding to the "means for processing" limitation in the specification because that functionality was already known in the prior art. The Federal Circuit disagreed, explaining that "[t]he indefiniteness inquiry is concerned with whether the bounds of the invention are sufficiently demarcated, not with whether one of ordinary skill in the art may find a way to practice the invention." As the specification did not disclose sufficient structure, "[t]he patentee has in effect claimed everything that generates purchase orders under the sun" and the system claims were therefore indefinite.
Jang v. Boston Scientific Corp. (Fed. Cir. Aug. 22, 2012) (nonprecedential)
In this case, the Federal Circuit reversed the district court's construction of the term "connecting strut column" as improperly importing a limitation from the specification into the claims. The patents at issue related to improved coronary stents for use in balloon angioplasty catheterization procedures.
At issue was whether a "connecting strut" of the claimed stent was required by the patents to be "unattached" from other connecting struts and instead connect only to the "expansion elements" of the claimed stent, or whether the connecting struts could be attached to one another.
The district court determined that the connecting struts needed to be unattached from one another and granted judgment in the defendants' favor. The Federal Circuit remanded asking the district court to specify "how the claim constructions would render the accused products infringing or noninfringing" so that it would be possible "for the appellate court to ascertain the basis for the judgment challenged on appeal." The district court then provided the requested explanation and the district court's subsequent order was appealed to the Federal Circuit.
On appeal, the plaintiff argued that there was no language in the claims, specifications, or file histories in the patents-in-suit to suggest that the connecting struts were required to be unattached to one another and that the district court erroneously imported limitations from the patent figures into the claims. The defendants argued that the patent specifications did not present "merely a series of 'illustrative drawings,' as Appellant suggests; rather ... the totality of the patents' disclosure" suggests that the invention required unattached connecting struts, relying on ICU Medical, Inc. v. Alaris Medical Systems.
The Federal Circuit agreed with the plaintiff that the "district court impermissibly imported the 'unattached' limitation into the claims based on the examples in the specification." The Court explained that while the examples presented in the patent specifications "do show only connecting strut columns with unattached connecting struts, the specification do not require the connecting struts to be unattached" and noted that the Federal Circuit has "repeatedly held that the fact that the specification describes only a single embodiment, standing alone, is insufficient to limit otherwise broad claim language." The Court went on to distinguish ICU Medical, stating that the "only described function" of the connecting strut column can be performed "whether the connecting struts are attached to one another or not." The Court then reversed the district court's construction and remanded for further proceedings.
In re Taylor (Fed. Cir. June 14, 2012) (nonprecedential)
In this case, the Federal Circuit agreed with the BPAI that the terms "low-calorie" and "palatable" found in the claim preamble of pending claims were not limiting. The patent application at issue disclosed a cellulose-based dough that "can be used to form a variety of low-calorie foods."
Initially, the Examiner rejected numerous pending claims of the application as anticipated; the BPAI upheld the Examiner's rejection of claims. The applicants attempted to traverse the rejection over the prior art by relying on the terms "low-calorie" and "palatable" in the claim preamble as limiting. The BPAI disagreed, finding that the terms "merely reflect intended uses or purposes without imposing any structural limitation on the claimed compositions."
On appeal, the Federal Circuit explained that claims under examination by the PTO are given their broadest reasonable interpretation consistent with the specification, and this "does not prejudice the applicant, who has the ability to correct errors in claim language and to adjust the scope of claim protection as needed during prosecution by amending the claims."
In support of their position, the applicants relied on the Federal Circuit's opinion in Catalina Marketing, which stated in relevant part that "clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention." The applicants argued that during prosecution they expressly relied upon the claim preamble language to distinguish the prior art.
The Federal Circuit disagreed, distinguishing Catalina Marketing as arising "in the context of infringement litigation, where prosecution is closed." In contrast, "[h]ere, where prosecution remains open and [the applicant] retains the option of amending the claim as needed, the Board correctly rejected [the applicants'] rigid reading of Catalina to conclude that the preambles ... are not limiting under the broadest reasonable interpretation of those claims."
Rogers v. Tristar Products, Inc. (May 2, 2012) (nonprecedential)
In this case, the qui tam plaintiff's false marking claim was originally dismissed by the district court for violating the Take Care Clause of the U.S. Constitution. While the plaintiff's appeal to the Federal Circuit was pending, the AIA was passed, which amended 35 U.S.C. 292 to retroactively eliminate the qui tam provision of the statute. In light of the AIA, the Federal Circuit dismissed plaintiff's appeal as moot and remanded with instructions to vacate the trial court's opinion. Plaintiff then moved for reconsideration, challenging the dismissal of his appeal as moot on the grounds that the AIA's amendments violate the Takings and Due Process Clauses of the U.S. Constitution.
The Federal Circuit held that the AIA's amendments to 35 U.S.C. 292 did not violate either the Takings or Due Process Clauses.
First, the Court determined that Congress did intend for its amendments to 35 U.S.C. 292 to apply retroactively, given both the language and the legislative history of the AIA.
Next, the Court considered plaintiff's Takings Clause argument. The Court disagreed with plaintiff's proposition that by initiating a false marking lawsuit, the potential recovery from that suit had become property. Instead, the Court explained that "no 'vested' right attaches until there is a final, unreviewable judgment, so it is of no moment that [plaintiff] expended effort and resources in filing and pursuing the complaint." Further, analogizing to the False Claims Act, the Court stated that "courts long ago rejected the argument that a constitutional protected right vests upon initiating suit." Thus, the Court held that the AIA amendments to the false marking statute did not violate the Takings Clause.
Moving on to the Due Process Clause, the Court explained that "[b]y making the False Marking Act amendments retroactive, Congress was in significant part attempting to reduce the litigation expenditures in the large number of complaints filed, but not yet subject to a final judgment ... [t]hat objective was a legitimate justification for making the AIA amendments to 292 retroactive." The Court therefore found that the AIA amendments to the false marking statute did not violate the Due Process Clause.
This decision should effectively signal the end for all pending non-competitor false marking lawsuits. Since the Federal Circuit's Forest Group decision in December 2009, over 1000 false marking cases were filed in the federal courts. Of those, approximately 521 cases settled for a total of $22,617,835.62, half of which went to the U.S. government and the other half of which went to the various false marking plaintiffs.
ZapMedia Services, Inc. v. Apple, Inc. (Fed. Cir. Apr. 25, 2012) (nonprecedential)
In this case, the Federal Circuit affirmed the district court's construction on numerous terms regarding a patent relating to a system and method for distributing media asserts to user devices and managing user rights of the media assets.
Based on statements made during prosecution and claim language regarding giving "authorized" devices "access" to media assets, the district court found that all of the asserted claims required that access to the media assets be limited to only those media players specified in the user account. The plaintiff argued on appeal that the district court erroneously construed a negative "exclusivity" limitation into the claims and that the claims, directed to a method of managing access to a plurality of media assets, should not be limited such that methods that also grant access to unauthorized devices would not infringe.
The Federal Circuit agreed with the district court that "in light of the claim language, written description, and the prosecution history, the authorizing limitations limit 'access' to media assets only to 'authorized' media play devices by way of the user account."
Looking first to the claim language, the Federal Circuit determined that as "the claims require access to media assets by an authorized media player device, logically an unauthorized media player device cannot access the media asserts. The authorization would be superfluous if unauthorized devices had the same access functionality as authorized devices."
Looking next to the specification, the Federal Circuit cited to three portions of the specification that indicated "authorized devices have access; unauthorized devices do not."
The Court next looked to the prosecution history, where the applicants distinguished a prior art refernece on the issue of authorized versus unauthorized devices.
Finally, the Court also considered statements made during prosecution of the parent application to the patent in suit.
While the Plaintiff argued in response that the prosecution history expressly stated that the patent in suit did not preclude using the technology of the prior art reference at issue, the Federal Circuit determined that the specific technology shared between the prior art reference and the patent in suit was irrelevant to the language construed by the district court.
In re Pond (Fed. Cir. Jan. 18, 2012) (nonprecedential)
In this case, the Federal Circuit affirmed the BPAI's decision rejecting all claims of a patent application related to a dental irrigation tip that can be used to deliver fluids to a dental site.
The claims required that the dental irrigation tip be "unitary [and] one piece". During prosecution, the Examiner rejected the claims as anticipated by a reference that the applicant argued did not disclose the unitary, one-piece construction required by the independent claims of the application and instead disclosed a two-piece tip. The Examiner noted during prosecution that the reference formed a dental tip with the same process claimed in the patent application and the two pieces disclosed in the reference were ultimately fixed together as one piece. The applicant argued that "[u]nitary means a single, whole section." The BPAI found that "the process of insert molding of two materials having similar properties results in bonding of the two parts such that the end product is of a unitary, one-piece construction."
On appeal, the Federal Circuit determined that "[t]he specification for the '914 application does not contain an express definition of 'unitary, one-piece construction.' Therefore [applicant] did not act as a lexicographer and define the phrase 'unitary, one-piece construction.' Moreover the '914 application does not contain any disclosure that renders the PTO's interpretation of that term unreasonable." The Federal Circuit went on to explain that "[t]he specification of the '914 application describes an embodiment that constructs the dental tip by insert molding. Thus, under the broadest reasonable construction the 'unitary, one-piece construction' includes products made by insert molding." The Court concluded that the BPAI did not err in either its interpretation of the contested claim term or its anticipation analysis.
Patent Group, LLC filed suit today against at least seven defendants (as of the time of this writing) in the Eastern District of Texas, alleging infringement of U.S. Patent No. 6,603,490, which it asserts it owns by assignment. As some may recall, Patent Group, LLC was first known as a prolific false marking plaintiff, having filed over 175 false marking cases of the close to 1000 such cases filed since the beginning of 2010. Settlements occurred in the majority of Patent Group, LLC's false marking cases, totaling over $2.8 million, half of which Patent Group, LLC itself kept under the pre-AIA version of the false marking statute. Today's filings are the first affirmative patent infringement cases filed by Patent Group, LLC.