About bwheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University

The Reference-Back “the” Language Takes its Meaning (Singular or Plural) from the Meaning of the Antecedent

ABS Global, Inc., Genus Plc, v. Cytonome/ST, LLC, [2022-1761] (October 19, 2023), the Federal Circuit reversed the Board’s finding of no unpatentability of claims 1 and 8 of U.S. Patent No. 10,583,439, and vacated the decision of no unpatentability of claims 2, 6, and 9.  The ’439 patent, titled “Hydrodynamic Focusing Apparatus and Methods,” describes and claims a microfluidic device for “particle” processing.

The Board determined that, as a matter of claim construction, “the sample stream” language in claim 1 had a singular-only meaning, not allowing a plurality of streams or a split stream.  The Board also rejected ABS’s obviousness challenges, and their reasoning depended on their claim construction that claim 1 required that there be only a single stream, precluding a split one.

The Federal Circuit rejected the PTAB’s construction, explaining that the specific claim language at issue is “a fluid focusing region configured to focus the sample stream.” The use of the definite article, “the,” means that the phrase “the sample stream” refers back to earlier language as an antecedent. The antecedent language is “a sample stream” in the preceding limitation, and it is the singular-only or plural- allowing meaning of that limitation which is determinative.  The reference-back “the” language takes its meaning from the meaning of the antecedent, so if “a sample stream” has a plural-allowing meaning, so does the reference-back “the sample stream” phrase.

The Federal Circuit said two familiar aspects of claim-construction analysis strongly support the plural-allowing meaning here. First, “at least in an open-ended ‘comprising’ claim,” like claim 1 of the ’439 patent, “use of ‘a’ or ‘an’ before a noun naming an object” requires that the phrase be construed to mean “‘one or more’ unless the context sufficiently indicates otherwise.”  Second, the specification here states: “[F]or the purposes of the present disclosure, the term ‘a’ or ‘an’ entity refers to one or more of that entity. As such, the terms ‘a’ or ‘an’, ‘one or more’ and ‘at least one’ can be used interchangeably herein.”

The Federal Circuit found no sufficient basis for rejecting the plural-allowing meaning of “a sample stream” here. The prosecution history has not been shown, or even meaningfully argued, to do so. Nor does anything in the specification supply a clear and manifest disavowal of that meaning, or totally negate it.  In particular, the singular only meaning is not demanded by the specification’s embodiments, described as nothing more than examples.

Remand Because the Federal Circuit Could Not Determine whether Board’s Error was Merely Typographical and Harmless or an Error of Substance

In Corephotonics, Ltd., v. Apple Inc., [2022-1340, 2022-1341, 2022-1455, 2022-1456] (October 16, 2023) the Federal Circuit affirmed the PTAB’s determination that two references were analogous prior art, while vacating and remanding the Board’s obviousness determination for the Board to explain why a third reference — Martin — is (or is not) analogous art and how this finding affects its overall conclusion as to obviousness.  The Challenged Patents relate to dual-aperture camera systems and disclose techniques for using the images from both lenses when zooming while capturing video.

Prior art references are applicable to the obviousness inquiry only when they are analogous to the claims being challenged. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992); see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Art that is “too remote” from the patents being attacked cannot be treated as prior art.  The Federal Circuit uses two separate tests to define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.

Apple’s petitions were ambiguous; they did not make clear whether Apple was stating that Golan and Martin are in the same field of endeavor as the Challenged Patents or, instead, merely that Golan and Martin are in the same field of endeavor as one another. The Board wrote, “Martin is reasonably pertinent to the problem faced by the inventor: reducing an image jump effect seen in video output images when switching between cameras that have different fields of view. Apple and Corephotonics agree that these two sentences are, as written, incorrect: Martin does not disclose switching between cameras with different fields of view; rather, it is addressed to cameras with different points of view.  The Federal Circuit was unable We are unable to discern if the Board’s error was, in fact, merely typographical and harmless or, instead, a potentially-impactful error of substance. This prevented the Federal Circuit from concluding either that there is, or is not, substantial evidence to support the Board’s conclusion that Martin is analogous art to the Challenged Patents.  Accordingly, the Federal Circuit remanded to the Board for further explanation and, if needed, further fact finding.

Collateral Estoppel Cannot be Based on a Decision that was Subsequently Reversed

Finjan LLC, FKA Finjan, Inc., v. Sonicwall, Inc., [2022-1048] (October 13, 2023) the Federal Circuit vacated the district court’s judgment of invalidity because it was based on collateral estoppel of a decision that was subsequently reversed, and remanded for further proceedings. The Federal Circuit also affirmed the district court’s grant of summary judgment of noninfringement and the district court’s decision to exclude Finjan’s expert analysis.

Finjan asserted U.S. Patent Nos. 8,677,494, 6,154,844, 6,804,780, and 7,613,926, as well as U.S. Patent No. 8,225,408. SonicWall filed a motion seeking judgment of invalidity as to the asserted claims of the ’780, ’844, and ’494 patents due to collateral estoppel based on a decision in related proceedings finding the claims of the ’780 and ’844 patents invalid for indefiniteness.  The district court granted judgment of invalidity due to collateral estoppel and indefiniteness as to claims of the ’844, ’780, and ’494 patents. Subsequently, in the other case which provided the underlying support for the Collateral Estoppel Order, Finjan appealed the district court’s grant of summary judgment of invalidity, and on appeal the Federal Circuit vacated the district court’s grant of summary judgment of invalidity due to indefiniteness and remanded for further proceedings.

During claim construction, the parties agreed that “Downloadable” means “an executable application program, which is downloaded from a source computer and run on the destination computer.” Based on this construction, SonicWall moved for summary judgment of noninfringement of certain of the claims, arguing that its Gateway products could not infringe those claims because they never receive “Downloadables”—“executable application program[s],” which was granted.

The Federal Circuit noted that it cannot uphold applying collateral estoppel based on a vacated judgment. Accordinglv, it vacated the district court’s grant of judgment of invalidity

based on indefiniteness as to the claims of the ’844, ’780, and ’494 patents and remanded for further proceedings.

 Non-Infringement

Finjan argued that the district court erred in determining that SonicWall Gateway products do not infringe the asserted claims because they receive a sequence of packets

and not the downloadables themselves.  According to Finjan, the district court took the parties’ agreed-upon construction of “Downloadable”—“an executable application

program, which is downloaded from a source computer and run on the destination computer,” and added a requirement that the downloadable also be “re-assembled by and executable at the receiver.  SonicWall contended that the district court’s conclusion

is derived directly from the parties’ agreed-upon construction, which describes a downloadable as an “executable application program.

The Federal Circuit agreed with SonicWall that the district court’s judgment of noninfringement flows from the parties’ agreed upon construction. The Federal Circuit noted that the asserted claims use “Downloadable” in different ways.  The Federal Circuit noted that parties’ construction comes verbatim from the definition of “Downloadable” in the ’844 and ’780 patents’ specifications.

Columbus Day 2023

While he may not live up to modern standards, Chrisopher Columbus’ voyages to the New World were, for the time, heroic and skillful, navigating the barely sixty foot Santa Maria wil a crew of 42 on a thirty-five day journey across the Atlantic Ocean. His achievements were celebrated and memorialized, including on Owen Gray’s Educational Globe. the subject of U.S. Patent No. 418455 issued December 31, 1889, which showed two of Columbus’ four voyages in dashed lines on the globe:

as the patent explained:

J.W. Meese patented (U.S. Patent No. D21533) this statue of Columbus in 1892:

There are numerous other Columbus statues, medals, plaques, spoons, and canes, celebrating his bravery.

Independence Day 2023

July 4 is arguably the most important date in the history of the U.S. John Adams had some specific thoughts on how the day should be celebrated: “It ought to be solemnized with pomp and parade, with shows, games, sports, guns, bells, bonfires, and illuminations, from one end of this continent to the other, from this time forward forevermore.” And inventors have long obliged the Founding Father with tech for the celebration.

IN 1923 Arthur Dean received U.S. Patent No. 1,513,536 on a Toy Mortar suitable for Independence Day celebrations.

In 1902, Edward Howard received U.S. Patent No. 716,547 on a Toy Gun for celebrating Independence Day:

In 1931 Harold Barnes received U.S. Patent No, 1,809,825 on a safety cracker for celebrating Independence Day, and hopefully saving little patriots’ fingers.

In 1962 George Eddy received U.S. Patent No. 3,034,786 on an Action Toy for celebrating Independence Day:

In 2001, a group lead by Michael Sullivan, received U.S. Patent No. 3,034,786 on a Thermochromic Candle.

So go ahead and celebrate with pomp and parade, with shows, games, sports, guns, bells, bonfires, and illuminations, but be careful!

Flag Day 2023

Inventors have devoted some attention to the celebration of Flag Day. U.S. Patent No. 4,972,794 on a Flagstaff with Protective Housing is the result. As the Abtract explains:

More recently, U.S. Patent No. 9,672,761 on a Flag and Banner Display System for Motor Vehicles and the Like, reviewed the law before disclosing a way of displaying a flag on a vehicle:

An New (Old) Perspective on Claim Construction

In Century Electric Co. v. Westinghouse Electric & Mfg. Co., 191 F. 350 (8th Cir. 1911), the Eighth Circuit had in interesting perspective on claim construction. The Eighth Circuit said that a patent “is a contract made by the acceptance by the government of the offer which the patentee by his application makes to disclose his invention, in consideration that the United States will secure to him the exclusive use and sale of it for 17 years,”

The Court continued:

The offer embodied in the application becomes the specification of his patent, if his offer is accepted, and with his claims evidences the terms of the agreement. Such an agreement is interpreted by the same rules that determine other contracts. The court, should, as far as possible, place itself in the situation of the parties when they made their agreement and then seek to ascertain from the terms of their contract, in the light of the circumstances then surrounding them, what their intention was.

This intention should be deduced from the entire contract and not from any part of it or without any part of it, because they did not agree to it, or to any part of it, without every other part of it. The specification which forms a part of the same application as the claims must be read and interpreted with them, not for the purpose of limiting, or of contracting, or of expanding, the latter, but for the purpose of ascertaining from the entire agreement, of which each is a part, the actual intention of the parties and that intention when ascertained should prevail over the dry words and inapt expressions of the contract evidenced by the patent, its specification and claims.

Modern claim construction seem more rule-bound, and might be improved if animated by the purpose to determine what the inventor invented, not what the claims literally say.

Earth Day 2023

Earth Day has been the inspiration for numerous environmental initiatives, including the EPA. and it has also been the motivation for many inventions:

U.S. Patent No. 5505114 protects a Simulated Musical Rainmaker, which the patent describes as the “perfect toy to celebrate Earth Day.

U.S. Patent No. D407127 protects the ornamental design for a baseball. which can include an Earth Day logo:

U.S. Patent No. 10,712,723 on a System and Method of Compiling and Organizing Power Consumption Data and Converting such Data into One or More User Actionable Formats, suggests that the invention “could include real-time feedback as events like Earth Day occur, to demonstrate the en-masse savings and conservation, the environmental impact, etc.”

U.S. Patent No. 9336540 on a Method and System for use of Game for Charity Donations suggests that it can be used to raise funds for Earth Day:

On this this 54th Earth Day, the world has accomplished a lot, but there is much more to be done; hopefully with creativity and inventiveness we can continue to make progress.numer

Computer-Readable Recording Medium Is Not a Transitory Medium

In Sequoia Technology, LLC v. Dell, Inc., [2021-2263, 2021-2264, 2021-2265, 2021-2266] (April 12, 2022), the Federal Circuit disagreed with the district court’s claim construction for “computer-readable recording medium,” and thus reverses the district court’s ineligibility determination under 35 U.S.C. § 101. In addition, the Federal Circuit agreed with the district court’s claim construction for “disk partition” and “logical volume,” and thus affirmed the district court’s noninfringement determination.

The magistrate judge adopted and construed “computer-readable recording medium” to include transitory media (i.e., signals or waves),base upon the specification, which discusses “computer readable medium” as “including” a list of items—none of which are transitory— and interpreted that language as leaving the door open for media that could be transitory.

The Federal Circuit noted at the outset that the claim language does not actually recite a “computer-readable medium” or CRM. Instead, it more narrowly recites “computer-readable recording medium storing instructions. The Court said that a person of ordinary skill would not understand transitory signals, such as carrier waves, to record or store instructions in memory systems. This is because transitory signals, by their very nature, are fleeting and do not persist over time. Other elements in the claim confirm that the claim is directed to hardware as opposed to transitory waves or signals.  The Federal Circuit found that the claim language demonstrates that claim 8 is not directed to a transient signal, but rather to a non-transient storage medium.

The Federal Circuit then turned to the specification, which discloses only non-transitory media.  The Court said the use of a term denoting a nonexhaustive list does not eviscerate our obligation to construe terms in the context of the entire patent. The context

here makes clear that the term “computer-readable recording medium” cannot encompass transitory media.

The Federal Circuit declared that its decision rests solely on the intrinsic evidence, and that it was unpersuaded by arguments to the contrary, which rest on extrinsic evidence.  The Court further noted that not only was this extrinsic evidence was inconsistent with the intrinsic evidence and also based on different express definitions of CRM in patent specifications directed to different inventions.

The Federal Circuit disagreed with the district court’s claim construction and, consequently, reversed the district court’s holding that claims 8–10 are ineligible under § 101.

How Many?

An often critical issue in determining patent infringement is how many of a specified claim element are required by the claim. This issue can arise in a variety of ways:

A or An

The general rule is that “a” or “an” means one or more. In KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351 (Fed. Cir. 2000), the Federal Circuit observed:

an indefinite article “a” or “an” in patent parlance carries the meaning of “one or more” in open-ended claims containing the transitional phrase “comprising.” … Unless the claim is specific as to the number of elements, the article “a” receives a singular interpretation only in rare circumstances when the patentee evinces a clear intent to so limit the article. … Under this conventional rule, the claim limitation “a,” without more, requires at least one.

See, also  Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338 (Fed. Cir. 2008).

However, the Federal Circuit indicated that there are situations where “a” or “an” can mean “only one.” See, for example, Harari v. Lee, 656 F.3d 1331 (Fed. Cir. 2011), and Insituform Techs., Inc. v. CAT Contr., Inc., 99 F.3d 1098, 1106 (Fed. Cir. 1996).

How can the careful prosecutor ensure the interpretation he or she wants? One way is to provide a definition in the specification. Thousands of patents do.

  1.  As used herein, “a” or “an” or “the” can mean one or more than one. For example, “a” widget can mean one widget or a plurality of widgets. See, e.g., U.S. Patent No. 1082263.9
  2. As used herein, “a” or “an” may mean one or more than one. See, e.g., U.S. Patent No. 10525082.
  3. Unless otherwise indicated or the context suggests otherwise, as used herein, “a” or “an” means “at least one” or “one or more.” See, e.g., U.S. Patent No. 10546223.
  4.  As used herein, “a” or “an” means “at least one” or “one or more” unless otherwise indicated. See, e.g., U.S. Patent No.7465758.
  5. As used herein, “a” or “an” means at least one, unless clearly indicated otherwise. See, e.g., U.S. Patent No.11275080.
  6. As used herein, “a” or “an” means one or more unless otherwise specified. See, e.g., U.S. Patent No. 9540312.

A problem with definitions is that the prosecutor has to commit to a meaning, and do so by the time of filing. In the examples above definitions #1 and #2 aren’t really definitions at all – they merely state a possible meaning. No options are foreclosed, buy no certainty is achieved. Definitions #3 expresses a preference, but there is still some uncertainty. Definitions #4 – #6 provides a definition that is only superseded by an “indication” or a “specification” otherwise.

More certainty is obtained by specifying “one” or “at least one” when the element is described and claimed.

OR

The simple word “or” has multiple, inconsistent meanings. In some contexts, “or” can express exclusive alternatives. In these cases “A or B” means either A and not B, or B and not A. See, Kustom Signals, Inc. v. Applied Concepts, 264 F.3d. 1326 (Fed. Cir. 2001). In other contexts, “or” can express non-exclusive alternatives. In these cases “A or B” means just A, A and B, or just B. Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001).

As discussed above, definitions can help provide some certainty. There are numerous examples:

  1. The term “or” as used in this disclosure is to be understood to refer a logically inclusive or not a logically exclusive or, where for example the logical phrase (if A or B) is satisfied when A is present, when B is present or where both A and B are present (contrary to the logically exclusive or where when A and B are present the if statement is not satisfied). See, e.g., U.S. Patent No. 9747910.
  2. As used herein, “or” is understood to mean “inclusively or,” i.e., the inclusion of at least one, but including more than one, of a number or list of elements. In contrast, the term “exclusively or” refers to the inclusion of exactly one element of a number or list of elements. See, e.g., U.S. Patent No. 10639598.

The examples above provide definitions of an inclusive “or,” but also provide a template of how to define an exclusive “or.”

Alternatively, the careful prosecutor can be more precise in the specification and claims. One way is to claim “A and/or B” for an inclusive “or”, and “either A or B” for an exclusive “or.”

And

“And” has also caused problems for patent owners.  In Super Guide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 885-86 (Fed. Cir. 2004), the patent owner and the accused infringer disagreed over the effect of “and” in the claim limitation “first means for storing at least one of a desired program start time, a desired program end time, a desired program service, and a desired program type.” The patent owner argued that this language required at least one of any of the four list categories. The accused infringer argued that this language required at least one from each of the four listed categories. The Federal Circuit agreed with the accused infringer, noting that the phrase “at least one of” preceded a series of categories of criteria, and the patentee used the term “and” to separate the categories of criteria, which connotes a conjunctive list. The Federal Circuit cited William Strunk, Jr. & E.B. White, The Elements of Style 27 (4th ed. 2000). The TTAB has reached a similar result in Ex Parte Jung, Appeal 2016-008290 at 2 (P.T.A.B. Mar. 22, 2017).

Thus when enumerating a list, the careful prosecutor must be mindful choosing whether to join the list with “and” or “or”

“And/Or”

If “or” and “and” can cause problems, it would seem that “and/or” can likewise cause problems. As Wikipedia notes, “and/or” has come under criticism in the courts. Judges have called it a “freakish fad”, an “accuracy-destroying symbol”, and “meaningless”. In Ex Parte Gross, Application No. 11/565,411, the Examiner rejected claim 1 as indefinite based upon the use of “and/or.” However, the PTAB reversed – finding that “A and/or B” does have a meaning and that meaning is A alone, B alone, or A and B together. The Board noted the “preferred verbiage” should be more simply “at least one of A and B.”

While not popular with legal purists, “and/or” may be the best choice to get the intended claim scope.