Setting the Standard for Claim Drafting

Claims often reference government or industry standards. However standards can change over time, which has the potential to change the scope of the claim, unless it is understood that the meaning is fixed as of the filing date, and that is what the BPAI does.

In Ex parte McClary, Appeal 2009-001300, Application 11/101,897 (May 17, 2010), the Board reversed the Examiner’s 112 rejection that reference to the ARINC 615 protocol (an industry standard in the field of avionics) was indefinite because it was subject to being changed in the future. The Board said:

Compliance with the provisions of 35 U.S.C. § 112 is determined as
of the filing date of the application. W.L. Gore & Assoc., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1556 (Fed. Cir. 1983). There does not appear to be any
dispute here that a particular version of the ARINC 615 protocol was in
existence as of Appellant’s filing date. Thus, one of ordinary skill in the
art, with reference to the standard in effect as of the filing date of
Appellant’s application, would readily be able to determine the metes and bounds of this element found in claims 10 and 12. Accordingly, we will not sustain the rejection of claims 10 and 12 under 35 U.S.C. § 112, second paragraph, as being indefinite.

Some drafters affirmatively control the meaning of their claims by expressly referencing the standard or protocol “in effect on the filing date.

Claim 11 of U.S. Patent No. 9,945,005 provides:

11. The method according to claim 1 wherein the material is leached for a sufficient period of time that the residue after leaching meets the EPA TCLP limits according to EPA Test Method 1311 procedure in effect on the filing date of this application.

Claim 27 of U.S. Patent No. 7,043,402 provides:

27. The system of claim 20, wherein said electrical indication means is comprised of at least one of: (a) a serial communications port; (b) a bi-directional serial data bus chosen from among standards SAE/TMC J1708/J1587 protocol in effect on the filing date hereof, or SAE J1939 communications protocol in effect on the filing date hereof; (c) a CAN data bus; (d) a RF device; and/or (e) an IR device.

Claim 16 of U.S. Patent No. 6,889,385 provides:

16. The apparatus of claim 8 wherein said DOCSIS cable modem is compatible with any DOCSIS national standard for cable modems as of the filing date of the parent patent application of this patent application.

While claims referencing standards are not indefinite merely because the standard could be changed in the future, claim drafters still have to account for how infringement can be proved if the standard is in fact changed.

Board Misread and Mischaracterized Features of the Claims, and Thus Failed to Appreciate that the Claims Provide a Technical Solution to a Technical Problem

In Sipco, LLC v. Emerson Electric Co., [2018-1635] (September 25, 2019), the Federal Circuit reversed the PTAB’s construction of “low power transceiver” and its finding that U.S. Patent No. 8,908,842 does not satisfy the second part of §42.301(b) defining “technological invention.” § 42.301(b). Because the Board did not address the applicability of the first part of § 42.301(b), the Federal Circuit vacated and remanded.

The Board found that the term “low-power” as used in the claims did not necessarily require that the device transmit and receive signals only within a “limited transmission range.” The Federal Circuit reversed, construing “low-power” to mean “a device that transmits and receives signals at a power level corresponding to limited transmission range.”

The Federal Circuit found that the Board’s conclusion that the claims recite an apparatus “for performing data processing or other operations used in the practice, administration, or management of a financial product or service” under AIA § 18(d)(1) was not arbitrary and capricious. The definition of a covered business method patent is not limited to products and services of only the financial industry, or to patents owned by or directly affecting the activities of financial institutions such as banks and brokerage houses. § 18(d)(1) on its face covers a wide range of finance-related activities.

While SIPCO argued before the Board and on appeal that because it disclaimed claims 3 and 4, the Board should not have relied on them in analyzing whether the ’842 patent is CBM eligible. However, SIPCO ultimately conceded at oral argument that a patent may be CBM eligible based on a single claim and that the Board could have properly relied on claims 3 or 4.

The Federal Circuit then turned to the Board’s decision as to whether the ’842 patent qualifies as a “technological invention” under § 18(d)(1). Section 18(d)(1) excludes “patents for technological inventions” from CBM review. However, Congress did not define technological invention, instead leaving it to the USPTO to issue regulations for determining whether a patent is for a technological invention. 37 C.F.R. § 42.301:

In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: [1] whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and [2] solves a technical problem using a technical solution.

If each part of this definition is satisfied, then the patent is not eligible for CBM review.

The Federal Circuit held that the Board misread and mischaracterized the features of claim 1 in its analysis of dependent claims 3 and 4, it did not appreciate that the claims provide a technical solution to a technical problem, under part 2 of 37 C.F.R. § 42.301. The Federal Circuit said that the question of whether a patent is for a “technological invention” is fact-specific and must be considered on a case-by-case basis. The Federal Circuit said that the problem solved by the claims is technical in nature. The Board limited its characterization of the “problem” being solved to an example problem provided in the background that is resolved by the claims—automating machine service requests. But it is clear from both the claims and the specification that the claimed invention implements a communication system that connects an unconnected, remote device with a central station.

The Federal Circuit identified the technical problem solved by the claims as: how to extend the reach of an existing communication system from a central location to a remote, unconnected device while protecting against unwanted interference with the transmitted signals. The Federal Circuit found that the claims solved this problem with a technical solution. Because SIPCO’s claims combine certain communication elements in a particular way to address a specific technical problem with a specific technical solution, the Federal Circuit reversed the Board’s finding that the patent does not satisfy the second part of its “technological invention” regulation.

The Federal Circuit found that the Board did not analyze whether the ’842 patent satisfied the first part of § 42.301(b) because it found that the patent did not satisfy the second part. Rather than address this issue in the first instance on appeal, the Federal Circuit remanded the case for the Board to address the first part of § 42.301(b) under the proper claim construction.

Judge Reyna dissented because the majority’s opinion was contrary to basic tenants of claim construction set forth in Phillips, and the deference owed to underlying factual findings under Teva. Judge Reyna said that the majority reached its own construction by improperly reading a functional limitation into the claim from a preferred embodiment. Further, the Board’s construction rests on factual findings that are supported by substantial evidence, including expert testimony on the meaning of the claim term “low-power transceiver” to a person of ordinary skill in the art.

Arguments Regarding Enablement Confirm Narrow Scope of Claims

In Iridescent Networks, Inc. v. AT&T Mobilitiy, LLC, [2018-1449] (August 12, 2019), the Federal Circuit affirmed judgment of non-infringement of U.S. Patent No. 8,036,119, on System and Method of Providing Bandwidth on Demand, affirming the district court’s construction of “high quality of service connection.”

The ’119 patent discloses a system and method for managing network traffic routes and bandwidth availability to minimize adverse network conditions and to assure that the network connection maintains a requested minimum level of one of these three parameters. Iridescent proposed broadly construing the claim term “high quality of service connection” to mean “a connection in which one or more quality of service connection parameters, including bandwidth, latency, and/or packet loss, are assured from end-to-end based on the requirements of the application.” The magistrate judge, however, largely adopted AT&T’s proposed construction, construing the term to mean “a connection that assures connection speed of at least approximately one megabit per second and, where applicable based on the type of application, packet loss requirements that are about 10-5 and latency requirements that are less than one second.”

The Federal Circuit began with the language of the claims. The district court found that “high quality of service connection” is a coined term that has no ordinary meaning in the industry, and the Federal Circuit agreed. Because the claim was silent as to what amount of quality is sufficient to be “high,” the Federal Circuit looked first to the specification, followed by the prosecution history, to determine the meaning of the term “high quality of service connection.”

The applicant of the ’119 patent relied on Figure 3 during prosecution to support an amendment that gave rise to the term “high quality of service connection.” Figure 3 indicates minimum requirements for connection speed, packet loss, and latency. During prosecution of the parent application, the applicant argued that “the various connection parameters illustrated for high quality of service enabled bandwidth applications in Fig. 3” supported the term “high quality of service connection.” The Federal Circuit found the applicant relied on the minimum connection parameter requirements described in Figure 3 to overcome the examiner’s §112 enablement rejection.

The Federal Circuit rejected the patent owner’s argument that the prosecution history was not relevant in the absence of clear disavowal, noting that any explanation, elaboration, or qualification presented by the inventor during patent examination is relevant, for the role of claim construction is to capture the scope of the actual invention that is disclosed, described, and patented. The Federal Circuit said that where there is no clear ordinary and customary meaning of a coined term of degree, it may look to the prosecution history for guidance without having to first find a clear and unmistakable disavowal.

The Federal Circuit also rejected the argument that statements made in response to an enablement rejection do not affect claim scope. Noting that the enablement requirement prevents claims broader than the disclosed invention.

The Federal Circuit affirmed the District Courts claim construction.

Infringement was a Matter of Degree

In Cobalt Boats, LLC v. Brunswick Corp., [2018-1376] (May 30, 2019), the Federal Circuit, in a NON-PRECEDENTIAL decision, the Federal Circuit reversed district court judgment of nearly $5.4 million for willful infringement of U.S. Patent No. 8,375,880 on a swim step for boats.

The claims at issue required a step “capable of being rotated 180° between a stored position . . . and a deployed position.” It was undisputed that the accused boat step did not rotate 180°. The Federal Circuit began with the fact that while the parties disagreed on the claim construction, the court did adopted the patent owner’s position, holding that the “180 degrees” limitation should be given its “plain and ordinary meaning” and rejecting Brunswick’s proposed construction. The Federal Circuit observed that it is not appropriate to leave to the jury the task of resolving claim construction disputes.

The Federal Circuit found that the “180 degrees” limitation required that the step be capable of rotating at least 180 degrees, not merely “flipping over” as the patent owner contended. The Federal Circuit said that where a precise value is included in the claim without a term such as “about,” it interprets the claim language as imposing a strict numerical boundary, absent evidence that such a construction would be inconsistent with the intrinsic evidence. The Federal Circuit said the claim does not use “about,” which suggests that 180 degrees serves as a precise numerical boundary for the minimum rotation of the step, and the intrinsic evidence did not suggest a different construction. The Federal Circuit construed the 180 degrees limitation to require that the swim step be capable of rotating at least 180 degrees, which meant that a step that can rotate at most 179 degrees would not meet the limitation, while a step that can rotate 181 degrees would.

The Federal Circuit rejected the argument that the 180 limitation way merely a way of saying the steps flipped, noting that the claims also said that the steps flipped, so such a construction would make the 180 limitation redundant.

Based upon its construction of the 180 degree limitation, the Federal Circuit concluded that there was no literal infringement. With respect to infringement under the doctrine of equivalents, the Federal Circuit found that the claims were limited by prosecution history estoppel since the 180 degree limitation was added to obtain allowance of the claims. The Federal Circuit rejected the patent owners argument that estoppel did not apply since the limitation was added to overcome prior art that only rotated 90°, noting that the scope of disclaimer is measured by the difference between the original and the amended claims, not the difference be-tween the amended claims and the prior art that was avoided through the amendment, this is particularly true where the claims are amended to include a specific numeric boundary.

Reversing the finding of literal infringement and infringement under the doctrine of equivalents, the Federal Circuit reversed.

This case highlights the importance of having some wiggle room on numeric limitations in claims. Also the opinion is non-precedential, the Federal Circuit cited several cases illustrating the importance of Wiggle words, such as “about.” Jeneric/Pentron, Inc. v. Dillon Co., 205 F.3d 1377, 1381 (Fed. Cir. 2000); Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995);and Elekta Instrument S.A. v. O.U.R. Scientific International, Inc., 214 F.3d 1302 (Fed. Cir. 2000).

Patent’s Description Was Inconsistent with Patentee’s Claim Construction

In BTG International Limited v. Amneal Pharmaceuticals LLC, [2019-1147, 2019-1148, 2019-1323, 2019-1324, 2019-1325] (May 14, 2019), in consolidated appeals from the District of New Jersey and the PTAB involving U.S. Patent No. 8,822,438, the Federal Circuit affirmed the PTAB’s Final Written Decision in one one of the IPRs, mooting the other appeals.

The ‘438 Patent is directed to methods and compositions for treating cancer. Appellants asserted that the PTAB erred by improperly construing the term “treatment” by not requiring prednisone to have an anti-cancer effect, and then relying on that incorrect construction to find that the asserted claims would have been obvious.

The Federal Circuit agreed with the PTAB’s construction, noting that the claims, specification, and prosecution history teach that treatment includes both anti-cancer effects and palliation or reduction in side effects. The claim required “a therapeutically effective amount,” which was defined in the specification as an amount “effective for treating a disease or disorder . . . such as cancer.” The specification further stated that a “therapeutic agent” may be either “an anti-cancer agent or a steroid.” The Federal Circuit pointed out that the use of “or” in between “anti-cancer agent” and “steroid” suggests that a steroid is not necessarily the same thing as an anti-cancer agent. The Federal Circuit added that if the patentee intended to limit “treating” and “therapeutic agents” to anti-cancer agents, the patentee neither would have identified steroids separately as an agent for reducing adverse side effects, nor described prednisone repeatedly in the specification as a steroid without mentioning any anti-cancer effect.

The Federal Circuit found that the PTAB correctly concluded that the Asserted Claims cover a therapy in which abiraterone has an anticancer effect, while prednisone either has its own anti-cancer effect or has a palliative/side-effect reduction effect.

Based upon this construction, the Federal Circuit found substantial evidence supported the PTAB’s determination of obviousness.

Because the specification is the single best guide to the meaning of claim terms, it is important that the use of the terms in the specification be consistent with the claim construction the patent owner wants.

Federal Circuit gives a Master Class in Claim Construction

In E.I. du Pont de Nemours & Co., v. Unifrax I LLC, [2017-2575] (April 17, 2019), the Federal Circuit affirmed the district court’s determination that the claims of U.S. Patent No. 8,607,926 on a Composite Flame Barrier Laminate for a Thermal and Acoustic Insulation Blanket, were not invalid and were infringed.

The ’926 patent claims composite laminates that are incorporated into thermal-acoustic blankets installed on the interior of the fuselage in aircraft to shield passengers from flames and reduce noise. At issued was the term “100% by weight” in the claims. Unifrax argued that the “100% by weight” term does not allow for any amount of organic additives in the refractory layer. According to Unifrax, “‘100%’ means one hundred percent.” The Federal Circuit considered whether the context of the entire patent and other intrinsic evidence supports such an interpretation, and concluded it did not.

The Federal Circuit began with the language of the claims, which it noted recited: a residual moisture content of up to “[10%] by weight” in addition to “100% by weight” platelets in the refractory layer undercuts Unifrax’s plain meaning argument that “‘100%’ means one hundred percent.” The Federal Circuit said:

That claim 1 recites a residual moisture content of up to “[10%] by weight” in addition to “100% by weight” platelets in the refractory layer undercuts Unifrax’s plain meaning argument that “‘100%’ means one hundred percent.” Unifrax’s position would require that the term “100% by weight” be considered alone, without reference to the surrounding claim language. The claim’s reference to both “100% by weight” platelets and 10% residual moisture, however, supports the conclusion that “100% by weight” is relative to carrier material. It would be nonsensical if the total percentage of components comprising the inorganic refractory layer exceeded 100%

The Federal Circuit then turned to the specification, which described: “preferably at least 85% of the layer comprises platelets” with the remainder being “some residual dispersant.” The Federal Circuit found that this language supports the district court’s conclusion that the disclosed embodiments, including the 100% platelet embodiment, all allow for some amount of residual dispersant.

Unifax argued that all 24 of the examples had 100% by weight inorganic platelets with no residual dispersant, but the Federal Circuit noted that the specification also listed other “suitable materials” that contain a residual dispersant, and thus, less than 100% inorganic material, for the refractory layer.

The Federal Circuit also rejected Unifax’s argument that it was improper to use the specification of the patent’s parent in construing the claims in the C-I-P patent at issue, noting that the subject matter in the parent was common to the continuation-in-part application.

Finally the Federal Circuit rejected the argument that the patent owner limited the scope of the claims during prosecution. During prosecution the patentees amended the claims to add the 100% limitation to distinguish prior art with a 70% concentration. The Federal Circuit found that in making the amendment, the patent owner did not disclaim the presence of non-carrier materials such as dispersants.

Based upon the claim language it self, the specification, and the specification of related cases, and a careful examination of the prosecution history, the Federal Circuit concluded that the district court’s interpretation of “100% by weight” was not erroneous.

Having affirmed the district court’s claim construction, the Federal Circuit went on to affirm the finding of infringement.

The case was a tutorial in claim construction, giving a practical example of how claim terms are construed in light of the surrounding language, how the entire specification and not just the examples are used in determining the meaning of claim terms; how the specifications of related applications are used in determining the the meaning of claims terms; and even how the prosecution history is used in determining the meaning of claim terms.

When There is a Dispute Regarding the Proper Scope of the Claims, the Court must Resolve that Dispute

In Omega Patents, LLC v. Calamp Corp., [2018-1309] (April 8, 2019), the Federal Circuit affirm the judgment of no invalidity, affirm-in-part, reverse-in-part, vacate-in-part, and remand the judgment as to direct infringement, and vacated the remainder of the judgment and remanded for a new trial on indirect infringement, compensatory damages, willful infringement, enhanced damages, and attorney’s fees, in a case involving U.S. Patent Nos. 6,346,876, 6,756,885, 7,671,727, and 8,032,278 on multi-vehicle compatible systems that can remotely control various vehicle functions such as remote vehicle starting.

After a trial, a jury found all asserted claims to be not invalid and infringed, and the jury also found that CalAmp willfully infringed a valid patent, and awarded Omega $2.98 million in compensatory damages, which the district court trebled for willfulness, awarded attorney’s fees to Omega, added damages for post-verdict sales and pre-judgment interest, for a total of $15 million, with an on-going royalty rate of $12.76 per unit.

Although CalAmp appealed the construction of several claim terms, the Federal Circuit found that these terms had no impact on the prior art actually introduced at trial, and CalAmp had failed to identify to the district court any other prior art that would be impacted by the claim construction ruling. Thus, the Federal Circuit declined CalAmp’s invitation to speculate as to how additional prior art may have been rendered irrelevant under the court’s claim construction. While CalAmp’s challenge to the district court’s claim construction was preserved under Federal Rule of Civil Procedure 51 for purposes of challenging the jury instructions, CalAmp failed to satisfy the requirements of Federal Rule of Civil Procedure 46 by not seeking admission into evidence of, or at least specifically identifying, the additional prior art.

On the issue of direct infringement, several of the claims required “a transmitter and a receiver for receiving signals from said transmitter.” However the Federal Circuit found that the evidence at trial only showed that the “transmitter” transmits signals to a “receiver” on a cell tower, which can then relay that information to CalAmp’s servers, and the “receiver” receives signals from a “transmitter” on the cell tower. The Federal Circuit agreed that CalAmp did not provide all of the elements of the system, as was entitled to JMOL on direct infringement of these claims.

On the issue of induced infringement, the Omega argued that CalAmp’s customers directly infringed when they used CalAmp’s products. The Federal Circuit noted that for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it, and said there was evidence from which the jury could infer that customers controlled and used the system and received the required benefits. Based on the record, the Federal Circuit conclude that this theory does not warrant setting aside the jury verdict.

The induced infringement of some of the claims depending on the construction of “vehicle device,” which the district court refused to construe, defaulting to the ordinary meaning. The Federal Circuit said that when the parties raise an actual dispute regarding the proper scope of the claims, the court, not the jury, must resolve that dispute. The Federal Circuit added that the court is not absolved of this duty to construe the actually disputed terms just because the specification of the patent defines the term. Even if the parties had agreed to the construction, the Federal Circuit said that the district court was still obligated to give that construction to the jury in its instructions. The Federal Circuit said: in the absence of guidance in the form of proper claim construction, the jury lacked a yardstick by which to measure the arguments and evidence on this issue and assess whether Omega’s infringement theory was a valid one. In particular the Federal Circuit could not discern if the jury found infringement of the claims at issue based upon a theory of infringement inconsistent with the proper construction. Therefore, the Federal Circuit set aside aside the jury’s verdict of infringement, and ordered a new trial.

On the issue of induced infringement, CalAmp argued that the jury’s verdict could not be sustained because the verdict form given to the jury (proposed by CalAmp) did not provide written questions on the issue of inducement. CalAmp argued that the absence of such questions on induced infringement precluded the jury from awarding damages on that basis, but the Federal Circuit said that one cannot use the answers to special questions as weapons for destroying the general verdict. The Federal Circuit concluded that induced infringement was properly before the jury, and, thus, CalAmp was not entitled to JMOL of no induced infringement on that basis.

However CalAmp also complained about the district court’s exclusion of testimony as to CalAmp’s state of mind substantially prejudiced CalAmp’s ability to present its defense for indirect infringement. The Federal Circuit found that this exclusion deprived CalAmp of the opportunity to support its defense that there was no inducement because it reasonably believed it did not infringe the patents at the time CalAmp launched the products at issue. The Federal Circuit vacated the jury’s findings as to indirect infringement and remand for a new trial.

On the issue of damages, the Federal Circuit found that although the infringement of the one claim that was sustained, this was not enough to support a damage award based upon all of the products, and thus the Federal Circuit vacated the compensatory damage award.

On the issue of enhanced damages for willful infringement, the jury was asked whether it had found CalAmp willfully “infringed a valid patent,” without specifying which patent or patents or which claim or claims were willfully infringed. Based on the vacation of several findings of infringement the Federal Circuit could not determine which patents or claims, so the finding of willfulness had to be vacated as did the resulting enhanced damages and attorney’s fees award by the district court, both of which were explicitly based on the willful infringement finding.

Many lessons form this case, including insisting on a claim construction of disputed terms, and being extremely careful drafting jury verdict forms.

Obviousness Requires a Reason, Suggestion, or Motivation

In Forest Laboratories, LLC v, Sigmapharm Laboratories LLC, [2017-2369, 2017-2370, 2017-2372, 2017-2373, 2017-2374, 2017-2375, 2017-2376, 2017-2389, 2017-2412, 2017-2436, 2017-2438, 2017-2440, 2017-2441]( March 14, 2019) the Federal Circuit vacated and remanded the district court’s validity determination, and we vacated and remanded the question of infringement under a corrected claim construction.

The district court construed claim 1 to be limited to buccal and sublingual formulations. Although claim 1 does not expressly refer to buccal or sublingual administration, the Federal Circuit noted that claims “must be read in view of the specification, of which they are a part.” The Federal Circuit held the district court properly construed claim 1 to be limited to buccal and sublingual formulations.

As to obviousness, the district court found Appellants had not established that there was a motivation to combine asenapine maleate into a sublingual or buccal form, and even if there were a motivation to combine, a skilled artisan would not have had a reasonable expectation that it would work. The Federal Circuit noted that an invention is not obvious simply because all of the claimed limitations were known in the prior art at the time of the invention. Instead, the question is whether there is a reason, suggestion, or motivation in the prior art that would lead one of ordinary skill in the art to combine the references, and that would also suggest a reasonable likelihood of success. The motivation can be found explicitly or implicitly in the prior art references themselves, in market forces, in design incentives, or in any need or problem known in the field of endeavor at the time of invention and addressed by the patent.

The Federal Circuit noted that the district court failed to make an express finding as to whether compliance concerns for patients with trouble swallowing would provide a motivation to combine, and remanded for the district court to address this question.

As to secondary considerations, the Federal Circuit found that the district court did not err in finding long felt need weighs in favor or non-obviousness. However, the Federal Circuit found that the district court did err in finding unexpected results, finding that the results were not surprising and unexpected, since one of ordinary skill in the art would not have expected differently.

On the issue of written description, the Federal Circuit held that the district court’s finding that the specification contains sufficient written description support for the claims was not clearly erroneous.

On the issue of infringement, the district court construed claim 4 to not cover the treatment of bipolar disorders. Because the district court erred in treating “excitation” as being limited to “excitation disorders,” we vacate its finding of non-infringement. We construe “excitation” to refer to a symptom and remand for the district court to assess infringement in light of this construction.

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.