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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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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 Cir. Mar. 20, 2013) (nonprecedential)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


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.


Federal Circuit Declines to Import Limitations From Figures Into Claims, Reverses District Court

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.


Federal Circuit Finds Claim Preamble Not Limiting Under Broadest Reasonable Interpretation

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."