Description of “a” Technique for Carrying Out “The Invention” Did Not Limit Claims

In Continental Circuits LLC v. Intel Corporation, [2018-1076] (February 8, 2019), the Federal Circuit, finding that the district court erred in its claim construction, vacated judgment of non-infringement and remanded the case for further proceedings.

The four patents in suit, U.S. Patents Nos. 7,501,582, 8,278,560, 8,581,105, and 9,374,912 all are directed to the problem of preventing delamination of multilayer electrical devices by forming a unique surface structure comprised of teeth that are preferably angled or hooked like fangs or canine teeth to enable one layer to mechanically grip a second layer having a tooth structure. The district court construed the claims to require that the structure be produced by a repeated desmear process.” The district court noted that the specification not only repeatedly distinguished the process covered by the patent from the prior art and its use of a single desmear process, but also characterized “the present invention” as using a repeated desmear process. Further the district court found that the prosecution history corroborated its construction, because the applicant relied upon repeated desmear processes.

The Federal Circuit found that the district court erred in its construction. The Federal Circuit first noted that none of the claims actually recited a repeated desmear process. Turning to the specification, the Federal Circuit found that none of the statements relied upon by the district court rose to the level of a clear and unmistakable disclaimer. The specification described the repeated desmear process as only “one technique” for forming the required teeth. The Federal Circuit further noted that the specification identified the repetition as “a way” of forming the teeth. The Federal Circuit concluded: “Overall, those statements simply describe how to make the claimed invention using the preferred Probelec XB 7081 in a “new” way that is different from the prior art pro-cess and are not statements clearly limiting the claimed “electrical device” to require a repeated desmear process.”

The Federal Circuit also noted that it has express rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment. The Federal Circuit also said that distinguishing the double desmear process as “contrary to” or “in stark contrast” with the single desmear process is also not clear and unmistakable limiting statements. The Federal Circuit explained that it as held that mere criticism of a particular embodiment is not sufficient to rise to the level of clear disavowal.

As to the use of “the present invention” in the description of the preferred embodiment, the Federal Circuit found that these also were not limiting. Explaining that while descriptions of the ‘present invention as a whole could limit the scope of the invention, use of the phrase “present invention” or “this invention” is not always so limiting, such as where the references are not uni-form, or where other portions of the intrinsic evidence do not support applying the limitation to the entire patent. The Federal Circuit said that in the case before it the references to the present invention do not characterize the present invention “as a whole,” and instead only disclose one way to carry out the present invention using Probelec XB 7081.

Turning to the prosecution history, the Federal Circuit did not agree that a clear disavowal exists in this prosecution history. The expert declaration cited by the district court, explained that the written description disclosed “a technique which forms the teeth” by “performing two separate swell and etch steps.” The Federal Circuit said that describing a particular claim term to overcome an indefiniteness or written description rejection is not the same as clearly disavowing claim scope, and in any event were directed to one technique for carrying out the invention.

The Federal Circuit concluded that to read a process limitation into a product claim it must be clear that the process steps are an essential part of the claimed invention. Because the patentee had not “made clear” that the repeated desmear process is “an essential part of the claimed invention,” it was improper for the district court to read this process limitation into the product claims for this additional reason.

Lastly the Federal Circuit explained the use of extrinsic inventor notes regarding the invention did not support varying the the construction from based upon the extrinsic evidence.

“Capable of” Construction (Rather than “Configured to” Construction) Dooms Apparatus, but Not Method Claims

In Parkervision, Inc. v. Qualcomm Incorporated, [2017-2012, 2017-2013, 2017-2014, 2017-2074] (September 13, 2018), the Federal Circuit affirmed the PTAB’s determination in related inter partes review proceedings, The certain apparatus claims of U.S. Patent No. 6,091,940, generally related to telecommunications devices,  were unpatentable as obvious under 35 U.S.C. § 103(a), and that certain method claims were not unpatentable.

The Federal Circuit rejected the argument that the Board erred by basing its
patentability decisions on theories and evidence regarding the phrase “plurality of harmonics” that Qualcomm did not present in its petitions.  The case came down to whether the claim language required the production of the “plurality of harmonics,” or simply the capability of producing the “plurality of harmonics” —  The Federal Circuit found the claim language merely required the capability of producing the plurality of harmonics, which was met by the prior art that was similarly capable.

The method claims presented a different story —  while Qualcomm was only required to identify a prior art reference that discloses an apparatus “capable of” performing
the recited functions to prove that the apparatus claims would have been obvious, more was required with respect to the method claims. Specifically, Qualcomm needed to present evidence and argument that a person of ordinary skill would have been motivated to operate the prior art in a manner that satisfied the “plurality of harmonics”
limitation, which Qualcomm failed to do.

Clearly Defining A Term Without Providing Any Way to Determine When it has Been “Optimized” as Claimed Dooms Claims Under 112

In Intellectual Ventures I LLC v. T-Mobile USA, Inc., [2017-2434, 2017-2435](September 4, 2018), the Federal Circuit affirmed the district court’s determination that the claims of U.S. Patent No. 6,640,248 were indefinite, and vacated and remanded summary judgment of non-infringement because of erroneous claim construction.

At issue was the term “Application-Aware Resource Allocator.”  The district court  adopted T-Mobile’s construction of “application-aware resource allocator” as requiring that when allocating bandwidth, the application-aware resource allocator must take into account information obtained from the application layer 7. However the Federal Circuit determined that  application awareness requires only that the resource allocator allocate resources based on application type, which can be discerned using information obtained from any of network layer 3, transport layer 4, or application layer 7.  The plain language of the claims, the specification, and the prosecution history all support this
construction. The Federal Circuit rejected T-Mobile’s arguments about disavowal, noting disavowal is an “exacting” standard under which it must be established that the
patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term through expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope, and the statements in the prosecution history did not meet this exacting standard.

On the definiteness issue, the Federal Circuit found that the district court did not erroneously fail to consider the structure after determining that the function was indefinite.  The Federal Circuit concluded that the claim requirement of optimizing QoS requirements was entirely subjective and user-defined. The Federal Circuit pointed out that the ’248 patent analogizes QoS to “a continuum, defined by what network performance characteristic is most important to a particular user” and characterizes it as “a relative term, finding different meanings for different users.” The patent concluded that ultimately,“the end-user experience is the final arbiter of QoS.”  Thus while specification clearly defines that the QoS relates to the end-user experience, it fails to provide one of ordinary skill in the art with any way to determine whether QoS has
been optimized.

 

 

 

District Court Improperly Imported Limitations into the Claims

In Blackbird Tech LLC v. ELB Electronics, Inc., [2017-1703] (July 16, 2018), the Federal Circuit vacated judgment of noninfringement of claim 12 of U.S. Patent No. 7,086,747 because of the district court error in construing “attachment surface” and remanded.

The ‘747 patent was directed to an energy efficient lighting apparatus, and in one embodiment in particular, retrofitting an existing light
fixture with a more energy efficient lighting apparatus.  The claim required a balast cover comprising “a housing having an attachment surface and an illumination surface.”  The claim further required a fastening mechanism for securing the attachment surface of the lighting apparatus to the illumination surface.  The district court construed “attachment surface” as “layer of the housing that is secured to
the ballast cover.” The parties disputed the meaning of “attachment surface,” specifically whether the attachment surface must be secured to the ballast cover.

The Federal Circuit rejected the district court’s construction, noting that the “plain language” of the claim does not require the attachment surface to be secured to the ballast cover.  The Federal Circuit noted that while the claim expressly recites a fastening mechanism for securing the attachment surface to the illumination surface. It does not refer to any other fastening mechanism. It does not require the attachment surface be secured to anything other than the illumination surface.

The Federal Circuit said that the district court nevertheless read in a second fastening mechanism—this one to secure the attachment surface to the ballast cover.  While an embodiment disclosed in the specification included this second fastening mechanism, the Federal Circuit did not not agree that this fastener limitation should be imported into the claim.

The Federal Circuit noted that there was no suggestion in the specification or prosecution history that this fastener is important in any way that would merit reading it into the claims.  The specification does not refer to the disclosed fastener as the “present invention” or “an essential element” or uses any other language that would cause the
ordinarily skilled artisan to believe that this fastening mechanism is an important component of the invention or that it is critical to the invention for any reason.

The Federal Circuit said that the most important reason not to import the limitation into the claim was that the limitation was expressly eliminated during prosecution — albeit to resolve 112 issues.  The Federal Circuit rejected the defendants’ argument that the amendment was ambiguous because no explanation was given for the amendment as “legally irrelevant to how a skilled artisan reading this history would understand the claim scope.”  As a factual matter, no skilled artisan would understand this claim to require a fastening mechanism connecting the ballast cover to the attachment surface when that very limitation was expressly removed from the claim to secure patentability
with the examiner’s blessing and agreement.

The Federal Circuit concluded that the district court erred in construing “attachment surface,” and because the court’s entry of judgment of noninfringement was based on its erroneous construction, vacated the entry of judgment and remand for further proceedings.

Claim Covered at least the Depicted Enantiomer

In Sumitomo Dainippon Pharma Co., Ltd. v. Emcure Pharmaceuticals Limited, [2017-1798, 2017-1799, 2017-1800] (April 16, 2018) affirmed determination of infringement of the claim which depicted the enantiomer that was the active ingredient.   While the district court construed the claim as covering both enantiomers and mixtures thereof, the Federal Circuit said that it need not determine what else falls within the claim’s ambit to resolve the dispute.

The plain claim language and specification demonstrate that, at a minimum, the claim covers what it depicts, which suffices to resolve the parties’ dispute because Appellants conceded that the district court’s judgment can be affirmed if the claim at least covers the depicted enantiomer.   Noting a lack of anything in the claim language limiting its scope to a “racemate” or “racemic mixture,” or some indication in the specification
or prosecution history to the contrary, the Federal Circuit held that the plain and ordinary meaning of the claim covers at least the specific enantiomer depicted in the claim itself.

“BRI.” You Keep Using That Word. We Do Not Think it Means What You Think it Means.

In In re: Power Integrations, Inc., [2017-1304] (March 19, 2018), the Federal Circuit reversed the decision on remand that claims 1, 17, 18, and 19 of U.S. Patent No. 6,249,876 were anticipated, because the Board relied upon an unreasonably broad claim construction.  The patent describes a technique for reducing electromagnetic interference (“EMI”) noise “by jittering the switching frequency of a switched mode power supply.”

The Board affirmed the examiner’s rejection of the claims as anticipated in light of its construction of the term “coupled” that was broad enough to encompass an EPROM between the counter and the digital to analog
converter.  The Federal Circuit noted that the patent had been previously litigated, and the claims were found to be not obvious or anticipated.  When the case was previously before it, the Federal Circuit remanded, finding that the Board had an obligation to evaluate the construction from the litigation to determine whether it was consistent
with the broadest reasonable construction of the term.

The Federal Circuit noted that on remand the Board acknowledged that the Federal Circuit’s “concern” that its original decision had failed to assess whether the district court’s interpretation of the term “coupled” was consistent with the broadest reasonable construction, but the Board concluded that such a comparison was “unwarranted.”  The Federal Circuit said that the Board adhered to a generalist dictionary definition of the term“coupled,” and could glean no substantial guidance from either the context of the claim itself or the specification.

The Federal Circuit said that even under the broadest reasonable
construction rubric the Board must always consider the claims in light of the specification and teachings in the underlying patent, and that there was no reason why this construction could not coincide with that
of a court in litigation.  The Federal Circuit added that while the broadest reasonable interpretation standard is broad, it does not give the Board an unfettered license to interpret the words in a claim without regard for the full claim language and the written description.  The Federal Circuit found that the board’s claim construction here was unreasonably broad and improperly omitted any consideration of the disclosure in the specification.

The Federal Circuit explained under the board’s overly expansive view of the term “coupled,” every element anywhere in the same circuit is
potentially “coupled” to every other element in that circuit, no matter how far apart they are, how many intervening components are between them, or whether they are connected in series or in parallel.  The Federal Circuit pointed out that the correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner.

The Federal Circuit noted that the board has had two opportunities to come up with a sustainable interpretation that differs from the one that
survived litigation and has failed, and concluded there was not one.  The Federal Circuit thus reversed the Board without remand.

 

Stare Decisis: Previous Claim Constriction Prevented Finding of Infringement

In Ottah v. Fiat Chrysler, [2017-1842] (March 7, 20180, the Federal Circuit affirmed the district court’s grant of summary judgment of non-infringement of U.S. Patent No. 7,152,840 on a book holder.

The Federal Circuit noted that it had previously reviewed claim construction of the ’840 Patent, and ruled that several claim limitations
require that the claimed book holder has a “removable mounting.”  This ruling on claim scope is a matter of “claim construction,” which is ultimately a question of law, and not subject to collateral review.  The Federal Circuit said that no error has been shown in this claim construction, and no reason for departing from the rules of collateral
estoppel or stare decisis as to this claim term.

The Federal Circuit discerned no error in the district court’s grant of
summary judgment of non-infringement, for no reasonable fact finder could find that the accused cameras meet the “removably attached” limitation of claim 1.  The Federal Circuit added that it had liberally
construed the pleadings, but have concluded that the Second Amended Complaint’s accusation of infringement lacks plausibility. The district court correctly dismissed Ottah’s complaint with prejudice.

Process Limitations are Presumed to Impart Structural Limitations, Even Where it is not Clear What those Limitations Are

In In re Nordt Development Co., LLC, [2017-1445] (February 8, 2018), the Federal Circuit rejected the Board’s claim construction of “injection
molded” as a process limitation with no patentable weight, vacated the Board’s finding of anticipation, and remanded.

The application was directed to an elastic knee brace.   The claims required “an injection molded strut component and injection molded first and second arm components” and “an elastically stretchable framework
injection molded about the strut and arm components of the hinge mechanism.”  The Examiner rejected the claims over as anticipated, and the Board affirmed, after finding that the applicant did not persuasively explain what structural limitation is imparted by “injection molded.”

The Federal Circuit said that when considering the patentability
of product claims that contain process limitations, claim scope is generally based on the product itself, not the process. The Federal Circuit noted that If the process limitation connotes specific structure and may be considered a structural limitation, however, that structure should be considered.

Nordt argued that the Board erred in presuming that “injection molded” was a product-by-process limitation, and the Federal Circuit agreed, stating that in presuming “injection molded” to be a process limitation, the Board confounded two somewhat distinct inquiries—the first being whether “injection molded” is a process or structural limitation, the second being the precise meaning of the limitation if structural.

As to the first inquiry, the Federal Circuit found that “injection molded”
connotes structure. Although the application describes “injection molded” as a process of manufacture, neither the Board nor the examiner disputed Nordt’s assertion that “there are clear structural differences” between a knee brace made with fabric components and a knee brace made with injection-molded components.  The Federal Circuit examined the specification and concluded that, at a minimum, the specification demonstrates that “injection molded” connotes an integral
structure.

The Federal Circuit also noted that a default rule that where words of limitation that can connote with equal force a structural characteristic
of the product or a process of manufacture, they are commonly
and by default interpreted in their structural sense, unless the patentee has demonstrated otherwise.  The Federal Circuit then cited numerous examples where such limitations to convey structure even when they also describe a process of manufacture.  The Federal Circuit that not only does the specification itself convey a structural meaning to “injection molded,” but the applicant has repeatedly represented that it does.

Acknowledging that Nordt failed to persuasively or precisely explain
what structural limitation is imparted by “injection molded,” the Federal Circuit nonetheless said that the failure to identify that structure,
does not affect the conclusion, as the structural nature of “injection molded” can be gleaned from the plain claim language and the specification itself.

The Federal Circuit remanded so that the Board could construe the “injection molded” limitation, noting that the specification supports an interpretation that requires an integral structure, and saying it is up to the Board to determine whether this claim language requires any additional structure.

 

About “About”: “Less Than About 3%” Includes 4%

In Monsanto Technology LLC v. E.I. DuPont De Nemours & Co., [2017-1032] (January 5, 2018), the Federal Circuit affirmed the PTAB’s decision that affirmed reexamination examiner’s rejection of claims of U.S. Patent No. 7,790,953, on Soybean Seed and Oil Compositions and
Methods of Making Same as anticipated by or obvious from U.S. Patent No. 6,426,448.

Monsanto argued that misconstruing the Board misconstrued the “about 3% or less” limitation in the ’953 patent to include progeny with a linolenic acid content of 4%, but the Federal Circuit found that the PTAB “reasonably interpreted” Booth’s parent line containing 4% linolenic acid “to be within the scope of ‘about 3%,’” as recited in claim 1 step (a).  The Federal Circuit found that the claim language was not instructive, so it turned to the the remainder of the specification.  The Federal Circuit noted that Exhibit 9, which purportedly had a linolenic acid content of about 3%, which included a reference that disclosed linolenic acid contents from 2.3% to 4.1%.  Thus the Federal Circuit found that the intrinsic evidence supported finding that a person having ordinary skill in the art would reasonably consider “about 3%” to encompass a range that includes 4%, and that Monsanto’s counterarguments were “unavailing.”

Monsanto further argued that the finding of anticipation was not supported by substantial evidence because the anticipation was not inherent, as the PTAB found.  The Federal Circuit disagreed, saying that inherent anticipation applies because the prior art “necessarily include the unstated limitation.”  Declarations in the record confirmed that the generation identified in the prior art would necessarily result in progeny within the scope of claim 1. Monsanto challenged the PTAB’s reliance on this “non-prior art data” and “secret data” in the declarations, but the Federal Circuit found this was appropriate, saying that Monsanto was confusing prior art with extrinsic evidence used to support what is “necessarily present” in a prior art’s teaching. Extrinsic evidence may be used to interpret the allegedly anticipating reference and to shed light on what it would have meant to a person of ordinary skill in the art. The Federal Circuit said that the declarations did not expand the
meaning of reference or serve as prior art: they demonstrate
what is inherent in the disclosure.  Second the declarations were not improper “secret data” — the were not used as prior art , but merely in support of prior art already of record.  Third, the Federal Circuit offered no rebuttal evidence to the declarations.

The Federal Circuit further affirmed the obviousness determination, noting that PTAB did not rely solely on its finding of inherent anticipation, but explained that explained that a PHOSITA would have been motivated to modify the reference to meet the requirements of the claims.

 

Ungrammatical Language Not Ambiguous in View of Specification as a Whole

In Organik Kimya AS v. Rohm and Haas Co., [2015-1983, 2015-2001] (October 11, 2017), the Federal Circuit  affirmed the PTAB decisions in IPR2014-00185 and IPR2014-00350, sustaining the patentability of the challenged claims of U.S Patent Nos. 6,020,435 and 6,252,004, respectively.

The patents are directed to processes for preparing certain emulsion polymers having improved opacity.  In the claimed processes a base swelling agent and excess monomer are introduced into an aqueous emulsion of the polymer, under conditions in which there is no
substantial polymerization.  At issue was was the meaning of “swelling agent” which the PTAB construed as not merely as being capable of permeating a shell and swelling the core of a multistage emulsion
polymer in the abstract, but specifically under the conditions of the specific process for which the agent is to be used.  Organik argued that this improperly limited the term “swelling agent” in a manner that inappropriately distinguished the prior art.

Organik argued that the specification was ambiguous in describing the swelling agent:

Suitable swelling agents include, are those which, in the presence of the multistage emulsion polymer and monomer, are capable of permeating the shell and swelling the core. Swelling agents may be aqueous or gaseous, volatile or fixed bases or combinations thereof.

and that the PTAB improperly adopted the narrower construction.  The Federal Circuit noted that the Board did not find the language ambiguous, and agreed with the Board.  Even under the broadest reasonable interpretation, the Board’s construction cannot be divorced from the specification and the record evidence, and must be consistent with the one
that those skilled in the art would reach.

The Board found that the prior art asserted by Organik lacked the swelling agent as that term was used in the claims.  Organik argued the one example in a reference, inherently showed a swelling agent, but Rohm and Haas provided experimental evidence through expert testimony  that it did not.  While Organik contested this evidence, the Board noted that Organik neither provided its own evidence, or showed how different experiments would have yielded different data.

The Federal Circuit found that Board concluded that neither Toda nor Touda discloses or suggests a “swelling agent” as required by the
’435 and ’004 Patents, and that the Board’s decisions are in accordance
with law and supported by substantial evidence in the record, and are affirmed.