Category Archives: Claim Construction

PTAB Departure from Agreed Claim Construction Required Notice and Opportunity to be Heard

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In Qualcomm Inc. v. Intel Corp., [2020-1589, 2020-1590, 2020-1591, 2020-1592, 2020-1593,
2020-1594] (July 27, 2021), the Federal Circuit vacated and remanded six inter partes review final written decisions determining that claims 1–15, 17–25, and 27–33 of U.S. Patent
No. 9,608,675 would have been obvious.

The ’675 patent relates to techniques for generating a power tracking supply voltage for a circuit that processes multiple radio frequency signals simultaneously, using one power amplifier and one power tracking supply generator. During the IPR’s the parties never disputed that the signals were required to increase user bandwidth, and in the International Trade Commission, the Commission’s construction of the term also included the increased
bandwidth requirement.

The Board issued six final written decisions concluding that all challenged claims were unpatentable. In reaching its conclusion, the Board construed the term “a plurality of carrier aggregated transmit signals” in each asserted claim to mean “signals for transmission on multiple carriers,” omitting any requirement that the signals increase or extend bandwidth.

Qualcomm argued that it was not afforded notice of, or an adequate opportunity to respond to, the Board’s construction of “a plurality of carrier aggregated transmit signals,” and the Federal Circuit agreed. The Federal Circuit began by noting that “[a] patent owner in [an IPR] is undoubtedly entitled to notice of and a fair opportunity to meet the grounds of rejection,”
based on due process and Administrative Procedure Act (APA) guarantees.

The Board may adopt a claim construction of a disputed term that neither party proposes
without running afoul of the APA. Parties are well aware that the Board may stray from disputed, proposed constructions, however, but in the instant case the issue of whether increased bandwidth was a required part of the claim construction was not in dispute. The Federal Circuit noted that the patent owner owner agreed with the increased bandwidth requirement proposed by the petitioner. While the Board did not change theories midstream or depart from a construction it previously adopted, it is still difficult to imagine either party anticipating that this agreed-upon matter of claim construction was a moving target. The Federal Circuit said that unlike with disputed terms, it is unreasonable to expect parties to brief or argue agreed-upon matters of claim construction. Thus the Federal Circuit found that in the
the circumstances of this case, the Board needed to provide notice of, and an adequate opportunity to respond to, its construction. The Federal Circuit further found that Qualcomm did not receive notice or an opportunity to be heard regarding the Board’s construction that departed from the agreed-upon increased bandwidth requirement, and thus, the Board violated Qualcomm’s procedural rights under the APA.

Intrinsic Evidence > Dictionary Definitions, Analogies, and Purported Plain Meaning

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 In Uniloc 2017 LLC v. Apple Inc., [2020-1403, 2020-1404] (May 12, 2021), the Federal Circuit affirmed the PTAB determination that claims 1–17 and 23–25 of  U.S. Patent No. 8,539,552 were invalid for obviousness.

The ’552 patent is directed to a system and method to police the use of various optional features, such as caller-ID, call waiting, multi-line service, and different levels of service quality known as the “codec specification.”

On appeal, Uniloc contended that the Board’s construction of “intercepting” in the independent claims was erroneous and that the Board incorrectly held claims 1–17 and 23–25 invalid as a result. In its cross-appeal, Apple argued that the Board erroneously rejected its challenge to claims 18–22.

As to Unilock’s appeal the Federal Circuit noted that because the receiving client device is the ultimate “intended recipient” does not mean that the sending client device cannot intentionally direct the message to the intercepting entity.  The Federal Circuit held that the claims encompass the situation in which a sending client device intentionally sends a signaling message to the intermediate network entity that per-forms the interception. Contrary to Uniloc’s contention, the Federal Circuit said that construction is not at odds with the plain meaning of the claims. The receiving client device is still “the intended recipient” of the message because it is the ultimate, in-tended destination of that message.  The Federal Circuit further further noted that the Board’s construction is supported by the prosecution history. The Federal Circuit said it arrived at its construction by focusing on the prosecution history, the specification, and the context of the particular claims in which the term “intercepting” appears, which outweighed Uniloc’s reliance on dictionary definitions, analogies, and the purported plain meaning of “intercepting” in isolation.

The Federal Circuit said it arrived at its construction by focusing on the prosecution history, the specification, and the context of the particular claims in which the term “intercepting” appears, which outweighed Uniloc’s reliance on dictionary definitions, analogies, and the purported plain meaning of “intercepting” in isolation.

Proper Claim Construction is Essential to a Determination of Patentabilty

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In Intel Corp. v. Qualcomm Inc., [2020-1828, 2020-1867] (December 28, 2021), the Federal Circuit vacated the Board’s decision that claims 1–9 and 12 of U.S. Patent No. 8,838,949 were not unpatentable, because the PTAB failed to tie its construction of the phrase “hardware buffer” to the actual invention described in the specification. The Federal Circuit also vacated the Board’s decision that claims 16 and 17 were not unpatentable, because the Board failed to determine for itself whether there is sufficient corresponding structure in the specification to support the means-plus-function limitations in those claims to determine whether they are sufficiently definite to consider their validity. The ‘949 patent addresses a system with multiple processors, each of which must execute its own “boot code” to play its operational role in the system.

The Federal Circuit said that it was clear from the claim language that “hardware buffer” has meaning, but it is unclear what that meaning was. The Federal Circuit said that there is no definition to be found in the intrinsic evidence, and the determination of that meaning depends on understanding what the intrinsic evidence makes clear is the substance of the invention—what the inventor “intended to envelop.” The Federal Circuit concluded that the Board did not do enough to reach and articulate that understanding, and its claim construction is therefore wanting. The Federal Circuit explained that what was needed, then, was an analysis of the specification to arrive at an understanding of what it teaches about what a “hardware buffer” is, based on both how it uses relevant words and its substantive explanations. In this crucial respect, the Board fell short in its analysis here, and we think the Board is better positioned
than we are to correct the deficiencies.

The Federal Circuit noted that the Board’s construction was entirely a negative one—excluding “temporary” buffers. The Federal Circuit said that although there is no per se rule against negative constructions, which in some cases can be enough to resolve the relevant dispute, the Board’s construction in the present case was inadequate. It was not clear what precisely constitutes a
“temporary buffer” as recited in the Board’s construction.

With respect to claims 16 and 17, there is no dispute that claim 16 (and hence dependent claim 17) contains terms that are in means-plus-function format governed by 35 U.S.C. § 112(f). Because Intel agreed with the Board’s suggestion in the institution decision that two of the means-plus-function terms
in claim 16 were indefinite for lack of supporting structure, the Board concluded that Intel’s statement necessarily meant that Intel, as the petitioner, had not met its burden to demonstrate the unpatentability of those claims.

The Federal Circuit held that this was error and that a remand was required, because the Board did not
decide for itself whether required structure is present in the specification or whether, even if it was not, the absence of such structure precludes resolution of Intel’s prior-art challenges. The Federal Circuit added that to avoid confusion going forward, the Board should, in IPRs where Impossibility because indefiniteness applies, clearly state that the final written decision does not include a determination of patentability of any claim that falls within the impossibility category.

Even If Phrase Was In the Preamble, it is a Claim Limitation that was Not Met

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In Simo Holdings Inc. v. Hong Kong Ucloudlink Network Technology Ltd., [2019-2411] (January 5, 2021) the Federal Circuit reversed the district court’s final judgment of $8,230,654 for infringement of claim 8 of U.S. Patent No. 9,736,689, on apparatuses and methods that allow individuals to reduce roaming charges on cellular networks, rejecting the district court’s claim construction.

At issue was whether claim 8 required a a “non-local calls database.” The Federal Circuit noted that the language at issue follows, rather than precedes, the word “comprising,” which is one of the transition words that typically mark the end of the preamble, with what follows constituting the body of the claim. The Federal Circuit said that the placement of the language suggests that it is part of the body of the claim, a characterization that, if accepted, would place its limiting character beyond dispute. However. the parties treated the language at issue as part of the preamble, treating only the succeeding six paragraphs as the body of the claim. But even under that characterization, the Federal Circuit concluded, the language at issue is limiting. By supplying the only structure for the claimed apparatus, the Federal Circuit said that the preamble language supplies “essential structure,” and the body does not define “a structurally complete invention”—which are two key reasons for preamble language to be deemed limiting. Further supporting its conclusion that the “preamble” was limiting, the Federal Circuit noted thatthe opening language of the preamble provided an antecedent basis for terms in the body of the claim.

Simo argued that even if some parts of the preamble are limiting, some components, including the disputed “non-local calls database”, should not be deemed limiting, because they are “unnecessary to perform the functions specified after the preamble. However, the Federal Circuit declined to parse the preamble in that way where the preamble supplies the only structure of the claimed device and the disputed language does not merely identify an intended use or functional property but is “intertwined with the rest of the preamble.”

The Federal Circuit rejected the district court’s conclusion that claim 8 does not require a “non-local calls database.” The determinative issue was the phrase “a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database.” The Federal Circuit said that the district court treated the word “and” near the end of the phrase as meaning “and/or,” incorrectly concluding that “a plurality of” requires only “at least two” members selected from the entire list of identified items (memory, processors, etc.). The Federal Circuit said instead. “a plurality of” requires at least two of each of the listed items in the phrase at issue in claim 8.

Having concluded that the a non-local calls database was a required element, the finding of infringement should be reversed, and summary judgment of non-infringement should be granted.

Apparatus Claims Sometimes Incorporate Process Limitations, but Not this Time

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In Vectura Limited v. Glaxosmithkline LLC, [2020-1054] (November 19, 2020), the Federal Circuit affirmed the district court determination that U.S. Patent No. 8,303,991 directed to the production of “composite active particles” for use in pulmonary administration was not invalid and was infringed. The jury awarded $89,712,069 in damages, and after unsuccessful motions for JMOL and a new trial, Glaxosmithkline appealed.

The construction of two claim terms were relevant to the appeal. First, the court construed the phrase “promotes the dispersion of the composite active particles” (the dispersion limitation) to mean “wherein a composition that contains one or more composite active particles has increased dispersion of the active material upon activating a delivery device for inhalation into the lungs by a patient, as compared to the same composition wherein unmodified active particles are substituted for the composite active particles.” Second, the court construed the term “composite active particles.” The court construed the term to mean “[a] single particulate entit[y/ies] made up of a particle of active material to which one or more particles of additive material are fixed such that the active and additive particles do not separate in the airstream.”

The parties agreed that, under the district court’s construction of the dispersion limitation, Vectura needed to prove that the use of magnesium stearate in the accused inhalers improves the dispersion of the active ingredient compared to identical products in which only the lactose excipient is coated with magnesium stearate. On appeal GSK argued that there was no substantial evidence of infringement as to that limitation because Vectura staked its case on a defective scientific test. However the flaw in GSK’s position was that Vecture did not rely exclusively on the allegedly defective tests.

While the allegedly defective test was not perfect, the Federal Circuit said that a jury could conclude that despite its drawbacks, the study generally supported the view that coating the active ingredient with magnesium stearate improves dispersion of the active ingredient. The Federal Circuit said that regardless of any infirmities in the test, there was ample other evidence at trial indicating that magnesium stearate improves the dispersion of active ingredients.

GSK also challenged the district court’s construction of the claim term “composite active particles,” contending that the court should have construed that term to require that the composite particles be produced by the “high-energy milling” process referred to in the specification. The Federal Circuit noted that GSK’s argument falls between two prior cases: Continental Circuits LLC v. Intel Corp., 915 F.3d 788 (Fed. Cir. 2019), and Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361 (Fed. Cir. 2007). In Andersen, the Federal Circuit construed an apparatus claim to include a process limitation. While in Continental Circuits, the Federal Circuit declined to import a process limitation into an apparatus claim. In both cases, the Federal Circuit recognized that “process steps can be treated as part of the product claim if the patentee has made clear that the process steps are an essential part of the claimed invention.”

The Federal Circuit noted that although the ’991 patent contains a few statements suggesting that its high-energy milling is required, those statements are outweighed by the numerous statements indicating that high-energy milling is merely a preferred process. The Federal Circuit thus concluded that the specification of the ’991 patent does not make its milling method an essential part of apparatus claim 1. The Federal Circuit also rejected also reject GSK’s argument that the prosecution history requires “composite active particles” to be construed to include a process limitation, and affirmed the district court’s claim construction

“Upper” and “Lower” Claim Limitations Leaves Patent Owner Feeling Down

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The Tops Company, Inc. sued Koko’s Confectionery & Novelty for infringement of U.S. Patent No. 6,660,316, and for trade dress infringement.

The claims of the ‘316 patent required upper and lower chambers:

However the district found on summary judgment that while Koko’s Squeezy Squirt Pop had two chambers, they were not upper and lower chambers, nor were they equivalent to upper and lower chambers.

Directional references in claims such as upper and lower, left and right, top and bottom, etc., can cause problems are best avoided unless the directions are important. While Topps may still prevail on appeal, the wording of the claims has complicated their enforcement efforts.

Pointed Tip is Not a Substantially Flat Surface

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In Neville v. Foundation Constructors, Inc., [2020-1132] (August 27, 2020), the Federal Circuit affirmed summary judgment of the asserted claims of U.S. Patent Nos. 7,914,236 and 9,284,708 relating to foundation piles.

The parties disputed the construction of two claim limitations relating to the “end plate,” which separate the claims at issue into two groups. The first set of claims require an “end plate having a substantially flat surface disposed perpendicular to the centerline of the tubular pile. The second set of claims require “at least one protrusion extending outwardly from the end plate.”

The Patented Product vs. Accused Product: Can you find the end plate with the flat surface?

The district court granted summary judgment of non-infringement as to accused products having finding the accused products “lack (1) an end plate having a substantially flat surface and (2) an end plate with at least one protrusion extending outwardly from it. The district court reasoned that the plain meaning of “end plate having a substantially flat surface” did not encompass “an interior surface facing into the rest of the pile tip.” The district concluded that the patent applicant intended the “substantially flat surface” of the end plate to refer to the side of the end plate facing outward, citing each of the patent figures, as well as from how Plaintiff used the phrase ‘substantially flat surface’ to distinguish the claims from the prior art.

The Federal Circuit agreed that read in light of the specification, the phrase “substantially flat surface disposed perpendicular to the centerline of the tubular pile” does not refer to any interior-facing surface. As suggested by the word “end,” the relevant surface of the end plate is the external one. The Federal Circuit found that the specification reinforces the view that the invention is directed to the exterior surface of the end plate as being “substantially flat.” The Federal Circuit found that the prosecution history likewise confirms that the substantially flat surface of the end plate does not refer to an interior surface.

For similar reasons, the Federal Circuit agreed with the district court that the accused pile tip does not include “at least one protrusion extending outwardly from the end plate.” Nothing in the specification remotely suggests that, contrary to the plain meaning of a “protrusion” and “ex-tending outwardly,” the protrusion could be an indistinguishable part of the end plate from which it protrudes.

The Federal Circuit found that the district court correctly ruled that the “single, conically-shaped” end piece of the accused pile tips does not meet the claimed “protrusion extending outwardly from the end plate.

Clear Claim Language Trumped Written Description in Construction

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In Baxalta Inc. v. Genentech, Inc., [2019-1527] (August 27, 2020), the Federal Circuit vacated the district court’s judgment of non-infringement of the asserted claims of U.S. Patent No. 7,033,590 because the district court erred in construing the terms “antibody” and “antibody fragment,” and remanded.

Generally, antibodies are Y-shaped structures comprising two heavy chains (H chains) and two light chains (L chains). Baxalta argued “antibody” should be construed as a molecule having a specific amino acid sequence comprising two heavy chains (H chains) and two light chains (L chains). Genentech argued “antibody” should instead be construed as an immunoglobulin molecule, having a specific amino acid sequence that only binds to the antigen that induced its synthesis or very similar antigens, consisting of two identical heavy chains (H chains) and two identical light chains (L chains).

The district court determined that the term antibody standing alone without other structural terms can have different meanings to those skilled in the art, and that both Baxalta’s and Genentech’s proposed constructions were acceptable definitions. However, the district adopted Genentech’s narrower definition based on an express definition in column 5 of the patent.

The Federal Circuit said that contrary to the district court’s construction, nothing in the plain language of claim 1 limits the term “antibody” to a specific antibody consisting of two identical heavy chains and two identical light chains or an antibody that only binds the antigen that induced its syn-thesis or very similar antigens. The dependent claims confirm that “antibody” is not so limited.

The Federal Circuit said that the district court’s construction which excludes explicitly claimed embodiments is inconsistent with the plain language of the claims. The district court rejected this inconsistency, suggesting that the proper result here is “invalidation of the inconsistent claims rather than an expansion of the independent claims.” The plain language of these dependent claims weighs heavily in favor of adopting Baxalta’s broader claim construction, and rejected the district court’s construction which renders dependent claims invalid.

As to the definition in the specification that the district court found limiting, the Federal Circuit said that when considered in the context of the remainder of the written description and the claims, it read the excerpt in column 5 as a generalized introduction to antibodies rather than as a definitional statement. The Federal Circuit also noted that these general statements do not include terms we have held to be limiting in other contexts such as “the present invention includes . . .” or “the present invention is . . .” or “all embodiments of the present invention are . . . .” The Federal Circuit further disagreed that the prosecution history supported the narrow construction, recognizing that that the prosecution history “often lacks the clarity of the specification and thus is less useful for claim construction purposes.”

The construction of antibody fragment followed the construction of antibody, and because the district court erred in construing the terms “antibody” and “antibody fragment” and entered judgment of non-infringement based on its erroneous constructions, the Federal Circuit vacated and remand for further proceedings consistent with the correct constructions of the terms.

Federal Circuit explains when you can ignore the words before the “:”

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In Shoes by Firebug LLC v. Stride Rite Children’s Group, [2019-1622, 2019-1623] (June 25, 2020), the Federal Circuit affirmed the PTAB’s determination that the challenged claims of U.S. Patent Nos. 8,992,038 and 9,301,574, directed to illumination systems for footwear, were obvious.

The most interesting part of the case is one that made no difference to the outcome: when a preamble limits a claim and when it doesn’t. A preamble limits a claim if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim. Conversely, a preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.

The body of claim 1 of the ’038 patent recites a structurally complete invention, and therefore the preamble’s recitation of an “internally illuminated textile footwear” is merely an intended purpose that does not limit the claims. A preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention. Unlike claim 1 of the ’038 patent, claim 1 of the ’574 patent does not reintroduce “footwear” in the body of the claim but instead relies on the instance of “footwear” introduced in the preamble for “antecedent basis.”

But it makes no difference: Although the Board did not construe the preamble as limiting, the prior “suggests using a woven, porous material in a light diffusing, internally illuminated part of footwear,” making the claims of both patents obvious.

Small differences in working can make a big difference in interpretation; decide whether you want the preamble to be a limitation and word the application and specification accodingly.

Claim Terms Construed in the Context of the Entire Patent, including the Specification

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In MCRO, Inc., v. Bandai Namco Games America Inc., [2019-1557] (May 20, 2020), the Federal Circuit affirmed summary judgment of noninfringement of U.S. Patent No. 6,611,278, and vacated judgment of invalidity because the specification fails to enable the full scope of the claims and remand for the district court to consider any appropriate further proceedings in light of, among other things, defendants’ offer to withdraw their invalidity counterclaims without prejudice.

With respect to the non-infringement determination, the Federal Circuit said that the district court was correct as a matter of law in ruling that a “vector,” in the context of the ’278 patent must have “3-D magnitude and direction computed by pure subtraction/addition between the neutral and target models, with one vector corresponding to each set of two vertices.” Because the parties agreed that there is no infringement under this construction, the Federal Circuit affirmed the district court’s grant of summary judgment of noninfringement.

The Federal Circuit said that the proper claim construction is based “not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.”  The Federal Circuit said that the only meaning that matters in claim construction is the meaning in the context of the patent.’” The Federal  Circuit said the specification compels the three-dimensional geometric construction of “vector” adopted by the district court. On the issue of validity, the Federal Circuit agreed that the defendants failed to identify with particularity any method of animation that falls within the scope of the claims that was not enabled. Without any specific examples, the district court’s reasoning is too abstract, too conclusory, to support summary judgment.  The Federal Circuit saw no reason to depart from its usual requirement that the challenger identify specifics that are or may be within the claim but are not enabled. Specifics have always mattered. A fuller set of fact-findings about what is within the scope of the claims is necessary to decide the enablement issue.