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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 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."


Federal Circuit Rejects Constitutional Challenges to False Marking Provisions of AIA

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. 


Federal Circuit Looks to Related Application in Construing Claim Terms

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.


Federal Circuit Affirms BPAI's Broadest Reasonable Construction

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. 


False Marking Plaintiff Patent Group, LLC Becomes Patent Infringement Plaintiff

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.


Federal Circuit Affirms Examiner's Broadest Reasonable Construction

In re SP Controls, Inc. (Fed. Cir. Dec. 21, 2011) (nonprecedential)

In this case, the Federal Circuit affirmed a patent examiner's broadest reasonable constructions of two claim terms in an ex parte reexamination regarding a patent directed to an apparatus for controlling the input to another device.

The Examiner had construed the claim limitation "a frame to which the control circuitry and keys are mounted, wherein the frame has slots extending through said frame for receiving labels" as not requiring a frame with separate slots for labels and keys.  The Examiner had construed the claim limitation "labels mounted over the slots" as covering structure in which a label covers a key "under a transparent cover of the key top, with the key mounted through the slot, thereby placing the label 'over the slot.'"

On appeal, the assignee argued that both constructions were unreasonably broad but conceded that if the Examiner's constructions stood, the prior art references at issues would render the claims obvious.  Pointing to the specification, the assignee argued that the specification uniformly showed labels and keys occupying separate slots, therefore the claimed slots were to be used for receiving labels only.  and a label mounted over the slot, i.e. mounted so as to cover a slot, could not do so if the slot also had a key extending from it.

The Federal Circuit found that nothing in the claims "limits their reach to a frame in which labels and keys are in separate slots ... claim 1's open-ended 'comprising' language on its faces does not bar other elements, (i.e., keys) from being placed in the slots."  Turning to the specification, the Federal Circuit found that "[w]hile it is true that the embodiments described in the '794 patent's specification all disclose structure in which keys and labels are in separate slots ... there is no language in the specification affirmatively limiting the claims to such embodiments ... [t]his is significant, for the law is clear that, absent such language in the specification, the claims are not limited to preferred embodiments ... [t]his is particularly so where, as here, the claims are to be given their broadest reasonable construction."

The Court therefore affirmed the Examiner's rejection of claims.


Second District Court Rejects Constitutional Challenges to False Marking Provisions of America Invents Act

Brooks v. Dunlop Manufacturing Inc. (N.D. Cal. Dec. 9, 2011)

Since the passage of the America Invents Act, a number of entities with pending false marking claims have challenged the constitutionality of the AIA with respect to its false marking provisions, specifically asserting that the retroactive application of the false marking amendments in the AIA violate Due Process and the amendments operate as an unconstitutional taking of property by the government.

As previously reported by this blog, at least one district court has rejected these constitutional challenges.  Now, a second district court has found that "Congress, by eliminating the qui tamprovision in 292, rationally furthered a legitimate legislative purpose by comprehensively reducing the costs and inefficiencies associated with the 'cottage industry' of false marking litigation" and the Takings Clause protects only vested property rights which the Ninth Circuit "ha[s] squarely held that although a cause of action is a species of property, a party's property right in any cause of action does not vest until a final unreviewable judgment is obtained ... [plaintiff] has not obtained any judgment in his favor, let alone a 'final unreviewable judgment,' and thus has no vested property interest in his cause of action."

A PDF copy of this decision can be found here.

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated periodically with new false marking cases as well as status updates on pending cases.  A downloadable PDF chart is available on this page as well including information on the specific patents and products at issue in each litigation.  Gray on Claims is also providing information on false marking settlements.  Other writings on false marking can be found here


Definiteness of Using "Comprising" in a Dependent Claim and "Is One Of" in an Independent Claim

Ex parte Fauget (BPAI Nov. 9, 2011)

The All Things Pros blog has posted an analysis of a recent BPAI decision concerning the definiteness of a dependent claim that used the transitional phrase "comprising" when the related independent claim used the transitional phrase "is one of."  The Examiner had rejected the dependent claim as indefinite because the Examiner believed the claim contradicted the independent claim.  The BPAI reversed the Examiner's rejection.

The article and corresponding analysis of the decision can be found here.