The Board Misses the BRI with a Construction that was too Narrow

In Owens Corning v. Fast Felt Corp., [2016-2613] (October 11, 2017), the Federal Circuit reversed the PTAB decision that the challenged claims of U.S. Patent No. 8,137,757, which describes and claims methods for printing nail tabs or reinforcement strips on roofing or building cover material, were not obvious.

On appeal Owens Corning argued that the Board effectively treated
the “roofing or building cover material” in the claims as limited to material that either has been or would be coated or saturated with asphalt or asphalt mix, and that this limited construction was incorrect under the broadest reasonable interpretation standard.

The Federal Circuit noted that that the Board construed the claim term “roofing or building cover material” to mean “base substrate materials such as dry felt, fiberglass mat, and/or polyester mat, before coating or saturation with asphalt or asphalt mix, and asphalt coated or saturated substrates such as tar paper and saturated felt.” While the Board correctly noted that this construction “does not require an asphalt-coated substrate,” when evaluating Owens Corning’s arguments regarding
motivation to combine and reasonable expectation of success, the Board made clear its understanding of its construction, and hence of the claims, as requiring materials that would eventually be coated with asphalt even if
they had not already been coated before printing.

After reviewing the Board’s rationale, the Federal Circuit concluded that the Board simply did not address roofing or building cover materials that would never be coated in asphalt, and this was a mistake.  The Federal Circuit concluded that the correct broadest reasonable construction of “roofing or building cover material” would include materials that neither have been nor are to be coated or saturated with asphalt or asphalt mix.

The Federal Circuit found that it was not necessary or appropriate to remand the case, however.  On the evidence and arguments presented to the Board, there is only one possible evidence-supported finding: the Board’s rejection of Owens Corning’s challenge, when the correct construction is employed, is not supported by substantial evidence.  Moreover, Fastfelt did not argue for remand.  The Federal Circuit reviewed the record and concluded that the challenged claims were unpatentable for obviousness.

 

Broadest Reasonable Construction is Not One Not Precluded by the Specification, but is One Consistent with the Specification

In re: Smith International, Inc., [2016-2303] (September 26, 2017), the Federal Circuit reversed the PTAB’s affirmance of the Examiner’s rejections of claims in an ex parte reexamination of U.S. Patent 6,732,817 directed to a downhole drilling tool for oil and gas operations.

The Board affirmed the examiner’s interpretation of the term “body” as a broad term that may encompass other components such as “mandrel” and “cam sleeve,” reasoning that only the term “body” is recited in the
claims without further limiting features and that the specification neither defines the term “body” nor prohibits the examiner’s broad reading of it.  The Federal Circuit concluded that the Board’s construction of “body”
was unreasonably broad. Even when giving claim terms their broadest reasonable interpretation, the Board cannot construe the claims “so broadly that its constructions are unreasonable under general claim construction principles.”

The Federal Circuit noted that some of the claims at issue recite a
broad term “body” without further elaboration on what the term “body” encompasses. However the Federal Circuit noted that the remainder of the specification does not use the term as a generic body. There is no dispute that the patent specification consistently describes and refers to the body as a component distinct from others, such as the mandrel, piston, and drive ring.

On this record, the Board concluded that the Examiner’s broad construction was not precluded.  However the Federal Circuit  found 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.  Nor is it simply an interpretation that is not inconsistent
with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is “consistent with the specification.”

The Federal Circuit held that giving the term “body” such a strained breadth in the face of the otherwise different description in the specification was unreasonable.  With the correct construction, the Federal Circuit reversed the rejection of the claims.

Claims Can’t Be Construed Contrary to Specification, and then Invalidated for Being Contrary to Specification

In Intellectual Ventures I LLC v. Motorola Mobility LLC, [2016-1795](September 13, 2017), the Federal Circuit affirm the district court’s judgment in part, reversed in part, and remanded for further proceedings
on the asserted claims of the ’462 patent.

A jury found the asserted claims of 7,810,144 and 7,120,462 infringed and not invalid, and the district court denied Motorola’s motion for judgment as a matter of law.  The Federal Circuit found substantial evidence supported the validity of the ‘144 patent, but not infringement, and that substantial evidence supported the validity and infringement of the ‘462 patent.

Motorola argued that the district court erred in denying judgment as a matter of law that the asserted claim of the ’144 patent was invalid for lack of written description.  In particular, Motorola contended that the specification of the ’144 patent excludes “long-term” or “permanent” storage of the data being transmitted on an intervening computing
device, while claim 41 covers embodiments that nevertheless
use such long-term or permanent storage, in violation of the written description requirement.

The Federal Circuit noted that the claim language neither plainly includes nor plainly excludes long-term or permanent storage, finding that the limitations must be construed in view of the specification.  The Federal Circuit noted that paradoxically, Motorola contends that the specification excludes long-term or permanent storage from the scope of the invention, while simultaneously arguing that claim 41 should be read to cover such storage.  The Federal Circuit instructed that the proper result is not that claim 41 fails for lack of written description but that it should be construed “in view of the specification” to be limited.  The Federal Circuit reiterated its precedent that it is incorrect to construe the claims contrary to the specification, and then to hold the claims invalid because they are contrary to the specification.

After concluding that substantial evidence supports the jury’s verdict of no invalidity with respect to the claim of the ’144 patent, the Federal Circuit turned to the question of whether there was substantial evidence of direct infringement under 35 U.S.C. § 271(a).  The Federal Circuit said that to use a system 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.  The Federal Circuit found that the district court erred when it found an infringing use based on the generalized benefit of using the accused system, rather than finding a benefit from each element of the system, and reversed the finding of infringement.

You Can Ignore Claim Language As Long As it is Before the Colon

In Georgetown Rail Equipment Company v. Holland L.P., [2016-2297] (August 1, 2017), the Federal Circuit affirmed judgment of infringement and the award of lost profits and enhanced damages for infringement of U.S. Patent No. 7,616,329 on a system and method for inspecting railroad tracks.

Holland challenged the district court’s conclusion that the claim language “mounted on a vehicle for movement along the railroad track” was not a claim limitation.  The Federal Circuit noted that whether to treat a preamble as a limitation is a determination resolved only on review of the entire patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim, add that there is no simple test for understanding the import of the preamble.

Generally the preamble does not limit the claims, however, a
preamble may be limiting if:

  • it recites essential structure or steps;
  • claims depend on a particular disputed preamble phrase for antecedent basis.
  • the preamble is essential to understand limitations or terms in the claim body.
  • the preamble recites additional structure or steps underscored as important by the specification.
  • there was clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art.

On the other hand a preamble is not a claim limitation if the claim body defines a structurally complete invention and uses the preamble only to state a purpose or intended use for the invention.

The Federal Circuit agreed with the district court that the preamble was not a limitation, noting In the context of the entire patent, it is apparent that the term “mounted on a vehicle for movement along the railroad track” is meant to describe the principal intended use of the invention but not to import a structural limitation or to exclude from the reach of the claims an assembly that does not include a vehicle mount.

Holland argued that it did not infringement the patent  because some of the processing of the acquired data was performed by a third party.  However, the Federal Circuit none-the-less found that Holland used the claim system despite the fact that third parties operated parts of the system.

With respect to damages, the Federal Circuit found that there was a legally sufficient evidentiary basis in the record from which a reasonable
jury could have found that Georgetown would have received business from Union Pacific for data collection services if Holland’s infringing product was not in the market, supporting an award of lost profits.

Finally with respect to enhanced damages, the Federal Circuit  found substantial evidence supports the jury’s finding that subjective recklessness led to willful infringement.  While Holland disputed many of the facts, the Federal Circuit said that the jury was free to decide whose evidence it found more compelling on the question of willfulness and found in Georgetown’s favor.

While the Federal Circuit has long held that in many if not most cases, the preamble of a claim is a not limitation, the reason to ignore words that the inventor selected to describe the invention has never been clear.   Given the strictness with which other words in the claim are construed, giving a fee pass for some words simply because they appear before the colon seems inconsistent.

 

Hey Boo-Boo, Defining Terms in the Specification is a Pic-i-nic

A definition in the patent’s specification can be critical in defining the scope of the claims.  According to the patent statute, the claims and specification are directed to a person of ordinary skill in the art, but it is important to remember that the person construing the patent’s claims — typically a Patent Examiner or a Federal District Judge — is usually not a person of ordinary skill in the art. Thus a readily understood, non-technical definition may better serve the inventor’s purposes.  Moreover, a simple example may more clearly define the term than any definition.  Such is the case in the Yogi Bear inspired examples of the definitions of “or” and “and” in U.S. Patent No. 9,607,066:

These examples make the meaning of the terms clear, in language that can be readily understood by anyone.

 

 

“Means” Does Not Always Mean “Means Plus Function”

In Skky, Inc. v. Mindgeek, S.A.R.L., [2016-2018] (June 7, 2017), the Federal Circuit affirmed the PTAB decision in IPR2014-01236 that all of the challenged claims in  U.S. Patent 7,548,875 were invalid for obviousness.

The ‘875 patent relates to a method of delivering audio and/or visual files to a wireless device.  The prosecution lasted almost seven years, and the claims were only allowed after they were amended to recite a “wireless device means.”  The Board determined that “wireless device means” was not a means plus function element, but even if it was it did not require a device with multiple processors.

The Federal Circuit said that in determining whether a claim term invokes § 112 ¶ 6, the essential inquiry is not merely the presence or absence of the word “means” but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.  It is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.

The Federal Circuit agreed that We agree with MindGeek that “wireless device means” does not invoke § 112 ¶ 6 because it recites sufficient structure.  Although the term uses the word “means” and so triggers a presumption, the full term recites structure, not functionality. The claims do not recite a function or functions for the wireless device means to perform, and “wireless device” is “used in common parlance . . . to designate structure. The Federal Circuit further found that “wireless device means” did not require multiple processors, noting that at least one disclosed embodiment was exclusively software, and thus it would be improper to construe  “wireless device means” to require multiple processors.

The Federal Circuit found that substantial evidence supported the Board’s claim construction, and its resulting finding of obviousness.

 

Drafting Broad Claims to Cover a Competitor is for Naught if the Specification Doesn’t Support Them

In Rivera v, ITC, [2016-1841] (May 23, 2017), the Federal Circuit affirmed the ITC’s decision that there was no violation of 19 U.S.C. §1337, because the claims of U.S. Patent No. 8,720,320 were invalid for lack of a written description.

The ‘320 patent relates to single brew coffee machines, which the patent divides into two categories: those configured to receive pods — small, flattened disk-shaped filter packages of beverage extract, and those configured to accommodate larger, cup-shaped beverage filter cartridges.  The ‘320 patent describes the invention as an adapter assembly configured to effect operative compatibility between a single serve beverage brewer and beverage pods.

The Federal Circuit noted that every embodiment in the ’320 patent shows a cup-shaped “receptacle,” adapted to receive a pod.  Although the claims originally filed referenced a pod adapter assembly, after seven years of prosecution none of the claims included any reference to a pod or a pod adapter assembly.  The accused products were adapted to receive loose coffee grounds.

The issue on appeal was whether the “pod adaptor assembly,” “pod,” and “receptacle” disclosures in the patent application as filed, the patent claim element “container . . . adapted to hold brewing material.”  The Commission concluded that the specification did not provide the necessary written description support for the full breadth of the asserted claims, because the specification was entirely focused on a “pod adaptor assembly” or “brewing chamber,” and did not disclose a container that was itself a pod or that contained an integrated filter.

The Federal Circuit noted that both parties analyze the written description issue under the assumption that the asserted claims read on the accused cup-shaped containers. While the parties further agreed that nothing in the ’320 patent explicitly described a pod adaptor assembly with a filter integrated into the cartridge, Rivera argued that the broad definition that pod:

is a broad term and shall have its ordinary meaning and shall include, but not be limited to, a package formed of a water permeable material and containing an amount of
ground coffee or other beverage therein.

in the specification provided adequate support. The Federal Circuit rejected Rivera’s argument, agreeing with the ITC and the intervenor.  The Federal Circuit noted the “underlying concern” of the ‘320 patent was compatibility between pods and cartridges. The Federal Circuit quoted extensively from the specification, noting the distinction between pods and cartridges “permeates the entire patent.”  The Federal Circuit said there was no hint or discussion of a cartridge or pod adaptor assembly or receptacle that also serves as the “pod.”  The Federal Circuit noted that the distinction carries through to every embodiment.  The Federal Circuit concluded that the “broad” definition of a pod
does not change the fact that however broad “pod” is, it must
still be distinct from pod adapter assembly.

The Federal Circuit made of point of stating that the Patent Owner agreed that the claim covered the accused product.  Setting the scope set the question of adequate written description. Otherwise, construing a claim in view of the specification would result in a narrower scope, rather than invalidity. Perhaps the claim could have been saved, but it wouldn’t cover what the patent owner wanted it to.

While the focus of patent scope is rightly on crafting the claims, to get the full scope of the carefully crafted claims, the specification needs to provide a written description and an enable disclosure.

 

 

 

Patent Owner Statements During an IPR Disclaimed Claim Scope

In Aylus Networks, Inc., v. Apple, [2016-1599] (May 11, 2017), the Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. RE 44,412 on systems and methods for implementing digital home networks having a control point located on a wide area network.

Apple argued that it did not practice the claim requirement “wherein the CPP logic is invoked to negotiate media content delivery between the MS and the MR” recited in the two asserted claims 2 and 21.  Apple argued that this language required that only the CPP logic is invoked to negotiate media content delivery between the MS and the MR, and based upon this construction the district court granted summary judgment.

In construing the “wherein the CPP logic is invoked to negotiate media content delivery between the MS and the MR” limitation, the district court relied on statements made by Aylus in its preliminary responses to Apple’s petitions for IPR of the ’412 patent, finding these  statements
“akin to prosecution disclaimer.”  On appeal Aylus argued that statements made during an IPR cannot be relied on to support a finding of prosecution disclaimer, and that even if they can, the statements it made did not constitute a clear and unmistakable disclaimer of claim scope.

The Federal Circuit rejected Aylus’s first argument, holding that statements made by a patent owner during an IPR proceeding can be relied on to support a finding of prosecution disclaimer during claim construction.  After briefly reviewing the disclaimer doctrine, and noting that disclaimer have been applied in post-issuance proceedings before the patent office, such as reissues and reexaminations, the Federal Circuit said that extending the prosecution disclaimer doctrine to IPR proceedings will ensure that claims are not argued one way in order to maintain their patentability and in a different way against accused
infringers.  The Federal Circuit noted that several district courts have already held that statements in an IPR can be considered for prosecution disclaimer.  The Federal Circuit also rejected Aylus argument that statements in a Patent Owner’s Preliminary Response don’t count as a disclaimer because they are made pre-institution.

The Federal Circuit then turned to the question of whether Aylus’s statements in the IPR were sufficiently “clear and unmistakable.”  After examining the statements themselves, and the fact that the statements worked — avoiding IPR for the subject claims — the Federal Circuit agreed with the district court that the statements represent
an unequivocal and unambiguous disavowal, and found no
error in the district court’s claim construction.

 

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.