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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 Construes Claim Term Consistenly With the Object of the Invention

Stone Strong, LLC v. Del Zotto Products of Florida, Inc. (Fed. Cir. Oct. 17, 2011) (nonprecedential)

In this case, the Federal Circuit construed a claim term consistently with the object of the invention.  The patents in suit related to pre-cast concrete blocks and a system and method for making pre-cast concrete blocks for use in constructing retaining walls.  One issue on appeal was the proper construction of the claim term "alignment device."  Each asserted independent claim required a "lift and alignment device" or an "alignment device" to align a subsequently-placed block with respect to the first block.

The plaintiff argued that the recess on the bottom of the block can serve an alignment function regardless of its size in relation to the lift hooks on the top of the block, so long as the recess is shorter than the width of the bock from the face to the rear.  The defendant argued that the "the lifting devices must substantially fill the recess ... in order for the block to come to rest in an aligned state."

The Federal Circuit largely agreed with the defendant's construction, ultimately construing the alignment limitation "to require that when the lift loops of one block are inserted into the recess on the bottom of another, there is no enough play to allow the blocks to be misaligned without further manual adjustment."  In support of this construction, the Federal Circuit looked to the object of the invention, which it described as "to achieve alignment of retaining wall blocks, including setback, without requiring manual alignment as the block is lowered or adjustment after it has been placed."  The court then determined that plaintiff's construction was inconsistent with the object of the invention in that the alignment function "cannot be served if the recess is nearly as large as the width of the block itself ... [w]ith such a large recess, there would be too much play between the rings and the outer edges of the recess to automatically align the block with respect to another."

The Court went on to reverse the district's court finding of nonobviousness, finding that "all the relevant elements of the claimed invention ... existed in the prior art" and because the patents in suit "represent no more than the predictable use of prior art elements to address a known problem, their claims are obvious as a matter of law." 


Federal Circuit Denies Rehearing En Banc for Retractable Technologies v. Becton, Dickinson and Co.

Retractable Technologies, Inc. v. Becton, Dickinson and Co. (Fed. Cir. Oct. 31, 2011)

The Federal Circuit has denied Retractable Technologies' petition for panel rehearing and rehearing en banc regarding claim construction issues.  Three members of the Court dissented.

Judge Moore, joined by Judge Rader, wrote, in part:

Claim construction is the single most important event in the course of a patent litigation.  It defines the scope of the property right being enforced, and is often the difference between infringement and non-infringement, or validity and invalidity.  Despite the crucial role that claim construction plays in patent litigation, our rules are still ill-defined and inconsistently applied, even by us.  Commentators have observed that claim construction appeals are "panel dependent" which leads to frustrating and unpredictable results for both the litigants and the trial court ... Nowhere is the conflict more apparent then in our jurisprudence on the use of the specification in the interpretation of claim language ... This case is a good vehicle to address two important claim construction principles:  the role of the specification in construing the claims and whether deference should be given to the district court in the claim construction process.

Judge O'Malley wrote, in part:

Post-Markman, district judges have been trained to--and do--engage in detailed and thoughtful analysis of the claim construction issues presented to them.  They conduct live hearings with argument and testimony, sometimes covering several days, and certainly always extending beyond the mere minutes that courts of appeals have to devote to live exchanges with counsel.  Simply, "the trial court has tools to acquire and evaluate evidence that this Court lacks."  While no one would urge deference to cryptic, unthinking rulings born of little or no real inquiry, where, as here, the trial court has thoroughly vetted all relevant aspects of the claim constructions at issue, "careful consideration of the institutional advantages of the district court would counsel deference."


An exercise that requires review of often extensive documentary evidence, and, in some cases, expert evidence for purposes of "capturing the scope of the actual invention" sounds tellingly like a factual inquiry, not a legal one.  The fact that this inquiry is to be undertaken from the point of view of one skilled in the art at the time of the invention, moreover, underscores this conclusion.


It is time we stop talking about whether we should reconsider the standard of review we employ when reviewing claim construction decisions from district courts; it is time we do so.

Prior coverage of the July 2011 panel decision can be found here.


District Court Rejects Constitutional Challenge to New False Marking Statute

Serius Innovative Accessories, Inc. v. Cabela's Inc. (S.D. Cal. Oct. 19, 2011)

In this case, the district court rejected a challenge to the constitutionality of the amended False Marking Act, 35 U.S.C. § 292, on grounds of violating both the Due Process and the Takings Clauses of the U.S. Constitution.

The district court found that "Congress enacted AIA [the America Invents Act] for a legitimate purpose, and Congress clearly intended for AIA to apply retroactively", thereby finding that the false marking provisions of the AIA did not violate Due Process.

The district court went on to explain that "a successful Takings Clause argument involves a taking of 'vested property rights' 'for public use'" and "[t]here is no showing of a public use associated with [defendant's] assertion that AIA destroyed its false marking claim, or that [defendant] would prevail on its false marking claim."  The court then denied the defendant's Takings Clause challenge to the false marking provisions of the AIA.

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


Federal Circuit Instructs District Court to Dismiss False Marking Case

FLFMC, LLC v. Wham-O, Inc. (Fed. Cir. Oct. 19, 2011) (nonprecedential)

Today, the Federal Circuit dismissed the Wham-O appeal as moot in light of the amendments to the false marking statute by the America Invents Act.  The court further ordered the case remanded with instructions to dismiss.  In a footnote, the court noted that "[t]he parties do not challenge, and this court does not address, the constitutionality of the retroactive application of the amendments to § 292."

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated daily 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


Eastern District of Texas Dismisses False Marking Case Sua Sponte in Light of America Invents Act

Kilts Resources LLC v. Uniden Direct in USA, Inc. (E.D. Tex. Sept. 19, 2011)

In this case, Judge Ward in the Eastern District of Texas dismissed sua sponte a false marking case without prejudice in light of the America Invents Act.  The court stated:  "The statute notes that the amendments made shall apply to all cases that are pending on or commenced on or after the Act's date of enactment, which was September 16, 2011.  The Court has reviewed Plaintiff's complaint in light of the new amendments to the law.  In accordance, the Court holds that Plaintiff's complaint is DISMISSED for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6).  This dismissal is without prejudice for Plaintiff to re-file its complaint in the event Plaintiff can prove it has suffered a 'competitive injury' and it can satisfy the other requirements under the statute."

A copy of the court's order can be found here.

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated daily 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.


Interaction Between Claim Construction and Patent-Eligible Subject Matter

Ultramercial, LLC v. Hulu, LLC (Fed. Cir. Sept. 15, 2011)

In this case, the Federal Circuit reversed the district court's finding that the patent-in-suit, related to a method of distributing copyrighted products over the Internet where the consumer receives a copyrighted product for free in exchange for viewing an advertisement and the advertiser pays for the copyrighted content, did not claim patent-eligible subject matter. 

While the Court did not ultimately use claim construction in making its Section 101 determination, Chief Judge Rader, writing for the panel, did provide commentary on the interaction between claim construction and Section 101:

This court has never set forth a bright line rule requiring district courts to construe claims before determining subject matter eligibility.  Indeed, because eligibility is a "coarse" gauge of the suitability of broad subject matter categories for patent protection, Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010), claim construction may not always be necessary for a § 101 analysis.  See, e.g., Bilski v. Kappos, 130 S. Ct. 3218, 3231 (2010) (finding subject matter ineligible for patent protection without claim construction).  On many occasions, however, a definition of the invention via claim construction can clarify the basic character of the subject matter of the invention.  Thus, claim meaning may clarify the actual subject matter at stake in the invention and can enlighten, or even answer, questions about subject matter abstractness.


Federal Circuit Finds Construction of Term Unnecessary

Respironics, Inc. v. Invacare Corp. (Fed. Cir. Jul. 8, 2011) (nonprecedential)

In this case, the Federal Circuit determined that, as it held the two patents in suit were anticipated by a prior art reference, "it is not necessary for us to address Respironics' appeal relating to the construction of 'predetermined,' as the dispute over the construction of that term is relevant only to infringement and not to validity."  The patents in suit related to providing "positive pressure support therapy" to patient suffering from sleep apnea, more specifically "a method and a device that reduces the magnitude of the positive pressure that is provided to the patient during the expiratory phase of the breathing cycle as compared to the magnitude of the pressure that is delivered during the inspiratory phase."


Debate Continues Concerning Importing Limitations From Specification Into Claims

Retractable Techs., Inc. v. Becton, Dickinson and Co. (Fed. Cir. July 8, 2011)

In this case, the patent at issue related to retractable syringes, which are medical syringes that feature a needle that retracts into the syringe body after the syringe is used.  Judge Lourie, writing for the majority, reversed the district court’s claim construction and found the term “body”, as used in the patent, required a one-piece structure, rather than including multiple-piece structures.  The majority opinion explained that “none of the [patent] claims expressly recite a body that contains multiple pieces” and the specification distinguished “prior art syringes comprised of multiple pieces” while not disclosing a multiple-piece body as part of the claimed invention. 

In dissent, Judge Rader opined that the majority had improperly imported limitations from the specification into the claims, finding the ordinary and customary meaning of the term “body” “does not inherently contain a one-piece structural limitation”, “neither the claim language or the written description evinces intent by the patentee to limit the scope of ‘body’ to one-piece bodies”, and using the doctrine of claim differentiation as two dependent claims recited a one-piece body limitation.

In a short concurrence, Judge Plager noted that “However much desired by the claim drafters, who want claims that serve as business weapons and litigation threats … the claim cannot go beyond the actual invention that entitled the inventor to the patent.  For that we look to the written description. … I have written elsewhere about the curse of indefinite and ambiguous claims, divorced from the written description, that we regularly are asked to construe, and the need for more stringent rules to control the curse. … I understand how a perfectly competent trial judge can be persuaded by the siren song of litigation counsel to give the jury wide scope regarding what is claimed.  But it is a song to which courts should turn a deaf ear if patents are to server the purposes for which they exist, including the obligation to make full disclosure of what is actually invented, and to claim that and nothing more."


Federal Circuit Panel Disagrees Over Application of Rambus v. Infineon

Markem-Imaje Corp. v. Zipher Ltd. (Fed. Cir. Sept. 9, 2011)

In this case, the patent at issue related to devices for transfer printing, a process where ink is carried by a ribbon that is moved into contact with the substrate to be printed, and a print head impresses upon the ribbon and causes the ink to transfer from the ribbon to the substrate.  The majority per curiam opinion reversed the district court’s claim construction and found that the claims did not generally require “some method of deriving a tension measurement.”  The defendant argued that the claim itself did not explicitly recite measuring tension, and the requirement set forth in the district court’s claim construction would “violate the mandate of Rambus Inc. v. Infineon Tech. AG that ‘the claims need not recite every component necessary to enable operation of a working device.’”  The majority agreed and explained that, while deriving a tension measurement may be required to make the claimed device operational, it was not proper for the district court to incorporate such a method into the claim construction, using an example of “[a] claim to an engine providing motive power to a car should not be construed to incorporate a limitation for an exhaust pipe, though an engine may not function without one.”

In dissent, Judge Newman disagreed with the majority’s interpretation of Rambus and explained that “[t]his court has no authority to enlarge the scope of the patent beyond what the patentee described as its invention, notwithstanding my colleagues’ curious analogy to a car and its tailpipe.”  She went on to find, relying on statements made in the specification regarding measuring tension, that “while the invention is flexible as to how tension is measured, and permits measurement through indirect methods, some method of measurement is contemplated and required, as found by the trial court.”


The Elevated Inter Partes Reexamination Threshold of Leahy-Smith: A Boon To Requesters

Guest Post by Matthew A. Smith1, Andrew R. Cheslock2, and Max Colice, Ph. D.3

Should President Obama sign the Leahy-Smith America Invents Act as expected, the threshold for initiating an inter partes reexamination will immediately change.  Rather than being required to demonstrate a “substantial new question of patentability”, requesters will be required to show a “reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request”.4

This is widely viewed as an elevation of the threshold requirement for initiating an inter partes reexamination.  The current “substantial new question” standard requires the Examiner to find only that “there is a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publica­tion important in deciding whether or not the claim is patentable”.5  Notably, the Examiner does not need to find the art sufficient to reject a claim.6

Although some commentators expect a glut of filings prior to the change to avoid the new standard, it is actually a boon to requesters.  The worst possible result of an inter partes reexamination request is not a denial of the request.  The estoppel of 35 U.S.C. § 315(c) is not triggered by a denial,7 and in some cases the request can be supplemented and refiled.8  The worst possible outcome is a grant of the request, followed by an office action confirming all claims (about 1 in every 30 inter partes cases).  In this scenario, the Examiner can move directly to an Action Closing Prosecution, the patent owner need not respond (foreclosing a requester comment) and the requester is still faced with the estoppel provisions of § 315(c).  If a request can not demonstrate a “reasonable likelihood that the requester would prevail”, then even under the current standard it has no business being filed.

While it is true that the change in the threshold will probably cut down on the number of granted requests, it will do so principally by eliminating only those requests that fall in the space between “substantial new question” and “likely to result in a rejection”.  The change should thus effectively eliminate the single worst possible outcome of an inter partes reexamination for the requester, without having a practical impact on the requester’s ability to submit requests that will result in rejected claims. 

[1] Matthew A. Smith is Senior Counsel in the Washington, D.C. office of Foley & Lardner LLP, and the author of the West Treatise Inter Partes Reexamination 2d.  He also serves as an Adjunct Professor at George Washington University Law School, where  he teaches International Patent Law.  His practice includes litigation, reexamination and counseling in patent matters, especially relating to the fields of electronics, semiconductors and software. He can be reached at  The views in this article reflect only the opinions of the authors, and are not necessarily the views of Foley & Lardner LLP or its clients.

[2] Andrew R. Cheslock is an associate in the Washington, D.C. of Foley & Lardner LLP. He specializes in patent litigation, reexamination, and counseling in the electronics and software fields.  He can be reached at

[3] Max Colice is a patent agent in the Boston office of Foley & Lardner LLP. He specializes in patent prosecution and reexamination, especially relating to optics, electronics, semiconductors, and software.  He can be reached at

[4] H.R. 1249, Sec. 6(c)(3)(A)(i)(I)(aa).

[5] MPEP § 2242.

[6] See, e.g., Procter & Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842, 848 (Fed. Cir. 2008)(quoting MPEP § 2642).

[7] See 35 U.S.C. §§ 315(c) and 313.

[8] See, e.g., inter partes reexamination 95/000106 (2007-06-27 Petition Decision, pp. 7-8).