Semicolons Strongly Indicate Each Step is Separate and Distinct; Confuse Most Non-Patent Lawyers

In In re Affinity Labs of Texas, LLC, [2016-1173] (May 5, 2017), the Federal Circuit affirmed the Board’s decision that §317(b) did not bar the reexamination, and that the reexamined claims were in valid.

Affinity sued Apple for infringement of U.S. Patent No. 7,440,772, and Apple requested reexamination of the ‘772 Patent.  Apple and Affinity settled the lawsuit and filed a joint stipulation of dismissal.  Apple also filed a notice of non-participation in the reexamination, and Affinity petitioned to terminate the reexamination under 35 U.S.C. § 317(b), whihc prohibits the USPTO from maintaining an inter partes reexamination after the party who requested the reexamination has received a final decision against it in a civil action.  The USPTO denied Affinity’s petition because because the district court’s dismissal,
without prejudice did not meet section 317(b)’s required condition for terminating the reexamination.  The reexamination resulted in invalidation of all of the claims, which was affirmed by the PTAB.

The claims  the claim included a dual download feature, inter alia, requiring:

in response to receiving the request, making a first version of the piece of selectable content available for downloading to the wireless user device and a second version of the piece of selectable content available for downloading to a personal computer of the user, wherein the first version has the specific format and the second version has a different format playable by the personal computer;
sending the first version of the piece of selectable content to the wireless user device; and
sending the second version of the piece of selectable content to the personal computer.

Affinity argued that the two sending steps must occur automatically, without intervening steps, after the “in response to” language.  The Federal Circuit disagreed, noting that each of the five steps of method claim 4 —including the three steps of the dual download feature— are offset by semicolons. The Federal Circuit said: “This punctuation choice strongly indicates that each step is separate and distinct.” It would, therefore, be reasonable to conclude the fourth and fifth steps—the sending steps—are not tied to the “making . . . available” step and
not performed “in response to” the same request found in
the “making . . . available” step, as Affinity argued.  The Federal Circuit also found that while portions of specification were consistent with automatically downloading, they certain did not require it, and in fact some embodiments did not have automatic downloads.  The Federal Circuit thus affirmed the broad claim construction by the Board, and the invalidation of those broad claims.

Because the Federal Circuit agreed that the estoppel provision of § 317(b) did not prohibit the PTO from maintaining the reexamination
of the ’772 Patent’s claims, and the Board’s construction of the claims was consistent with the broadest reasonable interpretation, the Federal Circuit affirmed the Board’s decision.


Little Words That Can Make a Big Difference: i.e. Versus e.g.

The difference between i.e. (id est — that is) and e.g. (exempli gratia — for example) from time to time comes up in patent cases.  While the difference is not always clear to some practitioners, it is clear to the Federal Circuit.  Recently, in Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., Ltd., [2016-1729] (April 17, 2017), the Federal Circuit held that patentee’s use of i.e. during prosecution was definitional, finding that “two types of modulation methods, i.e., different families of modulation techniques” defined “two types” as involving different families of modulation techniques.  The Federal Circuit noted precedent where i.e. was treated as definitional:

A patentee’s use of “i.e.,” in the intrinsic record, however, is often  definitional.   Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009) (“[U]se of ‘i.e.’ signals an intent to define the word to which it refers.”); see also Abbott Labs. v. Novopharm Ltd., 323 F.3d 1324, 1330 (Fed. Cir. 2003) (holding that a patentee “explicitly defined” a term by using “i.e.” followed by an explanatory phrase).

The Federal Circuit explained that “the term ‘i.e.’ is Latin for id est, which means ‘that is.’”  The Federal Circuit added that whether a statement to the PTO that includes “i.e.” constitutes a clear and unmistakable disavowal of claim scope depends on the context, citing Braintree Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349, 1355 (Fed. Cir. 2014).

Samsung pointed to instances were i.e. was found not to be definitional, such as where it would be internally inconsistent as in Pfizer, Inc. v. Teva Pharm., USA, Inc., 429 F.3d 1364, 1373 (Fed. Cir. 2005) or where it would read out preferred embodiments, as in Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1326 (Fed. Cir. 2012).  But the Federal Circuit did not agree that interpreting “i.e.” as definitional, as it normally is, would result in inconsistency.

The difference between i.e. and e.g. was highlighted by the Federal Circuit in Interval Licensing LLC v. AOL, LLC., [2013-1282, -1283, -1284, -1285] (September  10, 2014).  In considering the definiteness of the claim limitation “unobtrusive manner that does not disturb the user,” the Federal Circuit noted that:

Had the phrase been cast as a definition instead of as an example—if the phrase had been preceded by “i.e.” instead of “e.g.”—then it would help provide the clarity that the specification lacks. But as the specification is written, we agree with the district court that a person of ordinary skill in the art would not understand the “e.g.” phrase to constitute an exclusive definition of “unobtrusive manner that does not distract a user.”

The Federal Circuit said that given a lone example, rather than a definition, a skilled artisan is still left to wonder what other forms of display are unobtrusive and non-distracting. The Federal Circuit concluded that the phrase “unobtrusive manner that does not distract a user” was indefinite.

Issue Preclusion: Patent Owner Does Not Get a Do Over to Assert the Claims Against Similar Products

In Phil-Insul Corp. v. Airlite Plastics Co., [2016-1982] (April 17, 2017), the Federal Circuit affirmed summary judgment of non-infringement of U.S.
Patent No. 5,428,933.  In prior litigation in which Phil-Insul asserted the patent against a different defendant, the district court construed the claims, granted summary judgment, and the Federal Circuit summarily affirmed.  In the present action, Airlite successfully argued to the district court that the accused products have the same design as the products found noninfringing in the prior litigation. The district court agreed, and granted Airlite’s motion for summary judgment of noninfringement.

Airlite raised collarateral estoppe, and Phil-Insul countered that (1) it did not have a full and fair opportunity to litigate the issues in the prior litigation because it now alleges infringement of Claim 2, rather than Claim 1; (2) the district court’s claimconstruction in the prior litigation was incorrect; and (3) the defense of collateral estoppel is not available in this case because the claim construction was not essential to the court’s noninfringement rulings.

In granting summary judgment, the district court found that all of the elements for collateral estoppel were satisfied for both the claim construction and noninfringement issues presented. Specifically,
the district court found that Phil-Insul had a “full and fair
opportunity to litigate” the claim constructions, and that those constructions resulted in a finding of noninfringement. The district court
further found that the infringement issues were “essentially indistinguishable” from those in the prior litigation, and that the accused Airlite products have the same design as the products in the prior litigation.

Collateral estoppel “precludes a plaintiff from relitigating identical issues by merely ‘switching adversaries’” and prevents a plaintiff from “asserting a claim that the plaintiff had previously litigated and lost against another
defendant.”  The Federal Circuit said that regional circuit law applies to the application of collateral estoppel, but Federal Circuit law applies to aspects peculiar to patent law.  In particular in determining whether a later infringement claim is the same as an earlier claim, the products must be “essentially the same,” in other words the differences between them are merely colorable or unrelated to the limitations in the claim of the patent.

Phil-Insul argued that the district court erred when it (1) gave collateral estoppel effect to a Rule 36 judgment; (2) relied on the oral argument transcript from the prior appeal; and (3) failed to construe claim 2.   We
address each argument in turn.  The Federal Circuit found that a Rule 36 affirmance is a valid and final judgment, and can support claim or issue preclusion.  As to the reliance on oral argument transcript, the Federal Circuit found that district court did not err in relying on the transcript to confirm the scope of what was at issue in the prior litigation.  Finally, as to the need to construe claim 2, the Federal Circuit first noted that the parties selected the terms and the claims to be construed, so Phil-Insul complaint is without merit.  The Federal Circuit further noted that claim 2 contains the same terms “adjacent” and “dimension” terms that the court construed in the prior litigation, and that these terms were dispositive, and noting that it is well-established that claim terms are to be construed consistently throughout a patent, citing Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001).


Don’t Exalt Slogans over Real Meaning; Find the Claim Construction that Naturally Aligns with the Specification and Prosecution History

In The Medicines Company v. Mylan, Inc., [2015-1113, 2015-1151, 2015-1181] (April 6, 2017), the Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. 7,598,343, and reversed a bench trial determination of infringement of U.S. Patent No. 7,582,727.

The district court reasoned that the accused product did not infringe the ‘343 patent because this patent required “efficient mixing,” and concluded that the accused product infringed the ‘727 patent because the claims did not include the “efficient mixing” requirement.  The Federal Circuit found that the claims of both patents include a “batches” limitation, which according to the patents requires efficient mixing, thus both patents require “efficient mixing.”

The Federal Circuit noted that both patents included the “batches” limitation, that set a maximum impurity level for the product.  The Federal Circuit said that the claims could not be construed to cover any batch that met the impurity level, because it would cover the prior art, rendering the claim invalid.  Rather, properly construed, what the batches limitation requires is the use of a process that achieves batch
consistency.  The Federal Circuit noted that the patent owner agreed that Medicines agrees that batch consistency is the result of following the patents in suit and is what distinguishes them from the prior art.

The Federal Circuit found a claim construction that covered any process that achieved the impurity standard and was not limited to the disclosed “efficient mixing” was unworkable, because an infringer would not know whether it infringed until all of the batches were completed, and thus would not provide reasonable certainty regarding the claim scope.  This reasoning seems faulty because if the infringer used a process which, like the disclosed process, reliably achieved the claimed impurity level, there would be no uncertainty.

The Federal Circuit also noted that during prosecution the applicant characterized the invention as being the process: “[i]n the
present invention, various embodiments relate to a less
subjective and more consistent process.”  The applicant also took care to distinguish its post-critical date sales from its pre-critical date sales because they were “prepared by the new process of the present invention.”

Finally the Federal Circuit noted that the patent owner distiguished the invention to the district court based upon the process disclosed in the specification, telling the court that it was readily apparent that the definition of pharmaceutical batches refers to the compounding processes described in the patents-in-suit.

After a detailed review of the language of the specification, the Federal Circuit found that the specification teaches efficient mixing as a necessary and sufficient condition for achieving batch consistency, and the prosecution history confirms that achieving batch consistency requires efficient mixing. The Federal Circuit concluded that to attribute to the claims a meaning broader than any indicated in the patents and their prosecution history would be to ignore the totality of the facts of the case and exalt slogans over real meaning.

The Federal Circuit went on to find that the required “efficient mixing” was not met by the accused products, and reversed the district court’s finding of infringement.




Patent Owner Cannot Create New Claim Construction Issues After the Jury Verdict

In TVIIM, LLC v. McAfee, Inc., [2016-1562] (March 21, 2017), the Federal Circuit affirmed jury verdicts that U.S. Patent No.
6,889,168 was invalid and not infringed because substantial evidence supported the jury’s findings, and the district court did not abuse its discretion in denying a new trial.

TVIIM argued that the jury rendered an inconsistent verdict of infringement and invalidity because the claim terms “as a result of/in response to,” “various utility functions,” and “reporting the discovered
vulnerabilities” have more than one ordinary meaning.  However, the Federal Circuit noted that TVIIM did not seek construction of any of the terms, and never asserted that the terms had multiple meanings.  The Federal Circuit said that TVIIM cannot be allowed to create a new claim construction dispute following the close of the jury trial.  THe Federal Circuit went on to find that substantial evidence supported the jury verdict.


Complaints About Claim Construction Irrelevant Without a Showing of How it Would Make a Difference

In Comcast IP Holdings I LLC v. Sprint Communications Company LP, [2015-1992] (March 7, 2017) the Federal Circuit affirmed a $7.5 million dollar award for infringement of U.S. Patent Nos. 8,170,008,
7,012,916, and 8,204,046 directed to the use of computer network
technology to facilitate a telephone call.

Sprint complained about the construction of “switched telecommunication system” but the Federal Circuit failed to show how is construction would result in a different result.  Moreover, the Federal Circuit found that the claim language and the specification did not support Sprint’s proposed construction.

Sprint also complained that there was insufficient that its met the “call destination” and “identifier of a second party” limitations of the claims, which were given their plain and ordinary meaning because neither party requested a claim construction.  The Federal Circuit found that Sprint was essentially proffering a claim construction argument in the guise of a challenge to the sufficiency of the evidence of infringement.”

Finally, Sprint complained about the construction of “parsing,” arguing that the district court failed to apply disclaimers made by the patent owner during prosecution. But the Federal Circuit again found that Sprint failed to show how this affected the outcome.  However the Federal Circuit ultimately agreed with the district court’s construction.

The Federal Circuit also affirmed the award of prejudgment interest from the date of the earliest patent, finding that would be the date of negotiation of the undifferentiated reasonable royalty.


Disavowal is Not Limited to What is Necessary; A Patentee May Give Up More than Necessary

In Technology Properties Limited LLC v. Huawei Technologies Co., Ltd., [2016-1306, 2016-1307, 2016-1309, 2016-1310, 2016-1311] (March 3, 2017), the Federal Circuit vacated and remanded the case because the district court erred in a portion of its construction
of “entire oscillator” in U.S. Patent No. 5,809,336 on a microprocessor with two independent clocks.

The claims require “an entire oscillator disposed upon said integrated
circuit substrate and connected to said central processing
unit.”  The district court construed the term to mean “an oscillator located entirely on the same semiconductor substrate as the central processing unit that does not require a control signal and whose frequency is not fixed by any external crystal.”  Appellee argued that the second part of this construction was required because of disclaimers made during prosecution to overcome Magar, U.S. Patent No. 4,503,500, and Sheets, U.S. Patent No. 4,670,837.

The Federal Circuit began noting that an applicant’s statements to the PTO characterizing its invention may give rise to prosecution disclaimer. The Fedeal Circuit said that prosecution disclaimer can
arise from both claim amendments and arguments made
to the PTO, but does not apply unless the disclaimer is “both clear and unmistakable to one of ordinary skill in the art.  When determining
whether disclaimer applies, applicant’s statements must be cosnidered in the context of the entire prosecution.  If the statements are ambiguous or amenable to multiple reasonable interpretations, prosecution disclaimer is not established.

After examining the applicants arguments regarding Magar during prosecution, the Federal Circuit agreed with the district court’s conclusion that the “entire oscillator” must be a variable frequency oscillator rather than a fixed-frequency crystal.  The Federal Circuit
said that the disclaimer may not have been necessary, but the statements made to overcome Magar were clear and unmistakable.

The Federal Circuit said that the patent owner presented clear and concise arguments about the distinctions between Magar and the
patent in its briefing, and add that had those same arguments been made to the Patent Office, the construction may have been different because the patentee likely disclaimed more than was necessary to overcome the examiner’s rejection. However, the Federal Circuit admonished:

the scope of surrender is not limited to what is absolutely necessary to avoid a prior art reference; patentees may surrender more than necessary.

As to disclaimers based upon Sheets, the Federal Circuit found that the district court went too far in limiting an “entire oscillator” to one “that does not require a control signal.” The Fedeal Circuit said that this was beyond the arguments made by application that the term is properly construed as one “that does not require a command
input to change the clock frequency.”

The Federal Circuit indicated that its minor modification to the district court’s construction likely does not affect the outcome in this case, because the parties stipulated to non-infringement under the district court’s construction, the proper course was to vacate.


The Removal of Matter from the Provisional Application is Significant to the Interpretation of the Claims in the Non-Provisional Application

In MPHJ Technology Investments, LLC. v. Ricoh Americas Corp., [2016-1243] (February 13, 2016), the Federal Circuit affirmed the PTAB decision that claims 1-8 of U.S. Patent No. 8,488,173 were
invalid on the grounds of anticipation or obviousness.

On appeal MPHJ argued that “interfacing” and “Go button” were single step operations, and that the PTAB erred in construing these claim elements as not limited to single-step operations. MPHJ was relying upon portions of its prior provisional application, which Ricoh pointed out were omitted from the final regualr utility application. MPHJ responded that these omitted sections were not explicitly disclaimed, and therefore that they are part of the prosecution history and are properly relied on to explain and limit the claims, even if the passages do not appear in the issued patent.

The Federal Circuit agreed that a provisional application can contribute to understanding the claims, but found that it was the deletion from the provisional application that contributes understanding of the intended scope of the final application.  The Federal Circuit concluded that a person of skill in this field would
deem the removal of these limiting clauses to be significant.  The Federal Circuit noted that the ’173 Patent in its final form contains no statement or suggestion of an intent to limit the claims to the
deleted one-step operation. Neither the specification nor
the claims state that this limited scope is the only intended
scope. Instead, the ’173 Patent describes the single step
operation as “optional.”

Based upon this construction, the Federal Circuit affirmed that the claims were anticipated or obvious over the prior art.

Strong Presumption that Markush Claim Elements are Closed to Additional Elements

In Shire Development. LLC v. Watson Pharmaceuticals, Inc., [2016-1785] (February 10, 2017), the Federal Circuit reversed a finding of infringement because the accused product did not meet the Markush claim element, and remanded for entry of an order of non-infringement.

The claims of U.S. Patent No. 6,773,720 required:

an outer hydrophilic matrix wherein the lipophilic matrix is dispersed, and said outer hydrophilic matrix consists of compounds selected from the group consisting of polymers or copolymers of acrylic or methacrylic acid, alkylvinyl polymers, hydroxyalkyl celluloses, carboxyalkyl celluloses,

polysaccharides, dextrins, pectins,

starches and derivatives, alginic acid, and natural or synthetic gums

After noting that a Markush claim is a particular kind of patent claim that lists alternative species or elements that can be selected as part of the claimed invention, the Federal Circuit pointed out that the Markush elements used the language “consisting of” which is presumed to be closed to additional elements.   Though the “consisting of” presumption is very strong,
there have been rare exception for “aspects unrelated to the

The Federal Circuit found that magnesium stearate, an excipient
not within the claim 1(b) Markush group, was present in the outer hydrophilic matrix, and thus the claim 1(b) limitation was literally violated.  The district court nonetheless found infringement because the component outside of the Markush group—i.e., the lipophilic magnesium stearate in the hydrophilic outer matrix—was unrelated to the invention.  The Federal Circuit disagreed with the district court’s interpretation of what constitutes a component unrelated to the invention.  The Federal Circuit found that the magnesium stearate structurally and functionally relates to the invention, and its presence in the outer matrix violates the “consisting of” requirement in claim 1(b).

While the magnesium stearate was included as a lubricant, rather than for its lipophilic properties, this was not sufficient to overcome the strong presumption of the closed nature of the claim.  Even the fact that examples in the patent included magnesium stearate was insufficient to overcome this strong presumption.

Disavowal By Description, Disparagement, and Argument Limit Claims

In Poly America, LP v. API Industries, Inc., [2016-1200] (October 14, 2016), the Federal Circuit  affirmed the district court’s construction of “short seal” in the claims of U.S. Patent No. 8,702,308 to require that such seals extend inwardly, because of clear and unequivocal statements that the inventor intended to limit the claimed invention.

Poly-America argues that in construing the term “short seal” to require inward extension, the district court erred by importing limitations from embodiments described in the specification, misreading the prosecution history, and ignoring principles of claim differentiation.  The Federal Circuit disagreed.

Claim construction departs from the plain and ordinary meaning in only two instances: (1) when a patentee acts as his own lexicographer; and (2) when the patentee disavows the full scope of the claim term in the specification or during prosecution.  There was no indication or assertion of lexicography in this case, so the only question remaining was whether the inventor disavowed trash bags with short seals that do not extend inwardly.  The Federal Circuit noted that disavowal can be effectuated by language in the specification or the prosecution history, but in either case, the standard for disavowal is exacting, requiring clear and unequivocal evidence that the claimed invention includes or does not include a particular feature.  However, while disavowal must be clear and unequivocal, it need not be explicit.

The Federal Circuit noted the short seal was described as “one of the characteristics of the present invention,” and that the specification disparaged prior art without the claimed feature. Furthermore, the Federal Circuit found that Poly-America’s reply to the rejection of all claims also contains a clear and unmistakable disavowal of short seals that do not extend inwardly.

The Federal Circuit said that this analysis did not involve importing limitations from embodiments described in the specification, noting that every embodiment described in the specification has inwardly extended short seals and every section of the specification indicates the importance of inwardly extended short seals.