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

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

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

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 “:”

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

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.

A Claim is not Indefinite Merely Because Infringement Can’t be Determined in Advance

In Nevro Corp. v. Boston Scientific Corporation, [2018-2220, 2018-2340] (April 9, 2020) the Federal Circuit vacated and remanded the District Court determination on summary judgment that claims 7, 12, 35, 37 and 58 of U.S. Patent No. 8,712,533, claims 18, 34 and 55 of U.S. Patent No. 9,327,125, claims 5 and 34 of U.S. Patent No. 9,333,357, and claims 1 and 22 of U.S. Patent No. 9,480,842 were indefinite. The claimed invention purportedly improves conventional spinal cord stimulation therapy by using waveforms with high frequency elements or components, which are intended to reduce or eliminate side effects.

The district court determined that “paresthesia-free” has a “clear meaning,” namely that the therapy or therapy signal “does not produce a sensation usually described as tingling, pins and needles, or numbness.” The district court therefore held that the term “paresthesia-free” does not render the asserted method claims indefinite. does not render the asserted method claims indefinite. Id. The district court held indefinite, however, the asserted “paresthesia-free” system and device claims. It held that infringement of these claims depended upon the effect of the system on a patient, and not a parameter of the system or device itself and therefore, “a skilled artisan cannot identify the bounds of these claims with reasonable certainty.”

Claims, viewed in light of the specification and prosecution history, must “inform those skilled in the art about the scope of the invention with reasonable certainty.” This standard “mandates clarity, while recognizing that absolute precision is unattainable.” The Federal Circuit concluded that the district court correctly determined that the “paresthesia-free” method claims are not indefinite, but that it erred in holding indefinite the “paresthesia-free” system and device claims. The test for indefiniteness is not whether infringement of the claim must be determined on a case-by-case basis. Instead, it is simply whether a claim “inform[s] those skilled in the art about the scope of the invention with reasonable certainty.”

The Federal Circuit said that “paresthesia-free” is a functional term, defined by what it does rather than what it is, but that that does not inherently render it indefinite. In fact, the Federal Circuit said that functional language can promote definiteness because it helps bound the scope of the claims by specifying the operations that the claimed invention must undertake. When a claim limitation is defined in purely functional terms, a determination of whether the limitation is sufficiently definite is highly dependent on context (e.g., the disclosure in the specification and the knowledge of a person of ordinary skill in the relevant art area). The ambiguity inherent in functional terms may be resolved where the patent provides a general guideline and examples sufficient to enable a person of ordinary skill in the art to determine the scope of the claims.

The Federal Circuit found that the specification teaches how to generate and deliver the claimed signals using the recited parameters. Accordingly, a person of ordinary skill would know whether a spinal cord stimulation system, device or method is within the claim scope. Thus, the patents provide reasonable certainty about the claimed inventions’ scope by giving detailed guidance and examples of systems and devices that generate and deliver paresthesia-free signals with high frequency, low amplitude, and other parameters.

The Federal Circuit rejected Boston Scientific’s argument that the “paresthesia-free” claims are indefinite because infringement can only be determined after using the device or performing the method. The Federal Circuit said that “Definiteness does not require that a potential infringer be able to determine ex ante if a particular act infringes the claims.”

Several of the claims recited a signal generator “configured to” generate a therapy signal with certain parameters and functions. The district court concluded that “configured to” could be “reasonably construed to mean one of two things: (1) the signal generator, as a matter of hardware and firmware, has the capacity to generate the described electrical signals (either without further programing or after further programming by the clinical programming software); or (2) the signal generator has been programmed by the clinical programmer to generate the described electrical signals. Because the term was susceptible to two different constructions, the district court concluded that “configured to” made the claims indefinite.

The Federal Circuit said that this was the incorrect legal standard. The test for indefiniteness is whether the claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. The Federal Circuit said that the test is not merely whether a claim is susceptible to differing interpretations, as such a test would render nearly every claim term indefinite so long as a party could manufacture a plausible construction. The Federal Circuit held that “configured to” does not render the claims indefinite.

Several of the claims included the limitation “means for generating” a paresthesia-free or non-paresthesia-producing therapy signal. The district court determined that there was not an adequate disclosure of a corresponding structure in the patent specification and sua sponte held the claims indefinite.

The Federal Circuit noted that the specification clearly recites a signal or pulse generator, not a general-purpose computer or processor, as the structure for the claimed “generating” function. The Federal Circuit furtner noted that the specification teaches further how to configure the signal generators to generate and deliver the claimed signals using the recited parameters, clearly linking the structure to the recited function. The Federal Circuit reversed the finding of indefiniteness.

Finally, all but four of the claims used the term “therapy signal,” which the district court construed as an “electrical impulse” or “electrical signal,” but which the patent owner argued meant “a spinal cord stimulation or modulation signal to treat pain.”

The Federal Circuit disagreed that the specification met the exacting standard of define “therapy signal” as the Federal Circuit found. The Federal Circuit also rejected the argument that the language was indefinite, holding that the fact that a signal does not provide pain relief in all circumstances does not render the claims indefinite. The Federal Circuit held that the district court incorrectly construed the claim, but correctly determined that the claim was not indefinite.

Patent’s Prosecution History Informs the Meaning of the Claim Language, Saving them from Invalidity

Kaken Pharmaceutical Co., Ltd. v. Iancu, [2018-2232] (March 13, 2020), the Federal Circuit   reversed the PTAB’s claim construction, and vacated its determination that the challenged claims of U.S. Patent No. 7,214,506 on a method for treating onychomycosis were unpatentable as obvious.

Kaken proposed that the phrase “treating a subject having onychomycosis” means “treating the infection at least where it primarily resides in the keratinized nail plate and underlying nail bed.” The Board rejected Kaken’s construction as too narrow, concluding that “the express definition of onychomycosis includes superficial mycosis, which in turn is expressly defined as a disease that lies in the skin or visible mucosa.

The Federal Circuit found that the prosecution history—which includes, specifically, statements made by Kaken to overcome a rejection and the examiner’s statements explaining withdrawal of the rejection based on those statements — provides decisive support for limiting the claim phrase at issue to a plate-penetrating treatment of an infection inside or under the nail plate.  A patent’s prosecution history can “inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.  Particularly useful are “express representations made by or on behalf of the applicant to the examiner to induce a patent grant,” which include “arguments made to convince the examiner that the claimed invention meets the statutory requirements of novelty, utility, and nonobviousness.”  The Federal Circuit said that Kaken’s statements during prosecution, followed by the examiner’s statements, make clear the limits on a reasonable understanding of what Kaken was claiming.

The Federal Circuit thus reversed the Board’s claim construction, and vacated the determination of obviousness based upon the erroneous construction.

Prosecution History Doesn’t Have to Rise to the Level of Disclaimer to Inform the meaning of the Disputed Claim Term

In Personalized Media Communications, LLC, v. Apple Inc., [2018-1936] (March 13, 2020), the Federal Circuit reversed the Board’s construction of a claim term of U.S. Patent No. 8,191,091 ON methods for enhancing broadcast communications, vacating the anticipation and obviousness determinations of the corresponding claims, and affirmed the remainder of the Board’s determinations of anticipation and obviousness.

The Federal Circuit noted that the prosecution history, in particular, may be critical in interpreting disputed claim terms because it contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims.  Accordingly, even where prosecution history statements do not rise to the level of unmistakable disavowal, they do inform the claim construction.

At issue was the meaning of “an encrypted digital information transmission including encrypted information,” and in particular whether this term is limited to digital information or can also include analog information.  The Federal Circuit began its analysis with the claim language, noting that the claims use the adjective “digital” to describe the “information transmission,” thus supporting the view that the information is, in fact, digital. On the other hand, the Federal Circuit added, the claims do not say “entirely digital.”

Although the Federal Circuit agreed that with the Board that the specification’s broad definition of “programming” could encompass analog signals, it did not agree that it necessarily requires them. Instead, the definition is largely agnostic to the particular technology employed.

The Federal Circuit turned to the specification, finding some relevant statements, but noting that they are not definitional; instead, they are merely illustrations that use open-ended, permissive phrases such as “usually,” “for example,” and “with capacity for.” And when considered in the context of the more than 280 columns of text in the specification of the ’091 patent, these two passages fall far short of defining the relevant terms through repeated and consistent use.

Finally, the Federal Circuit turned to the prosecution history.  While the Board found the prosecution history inconclusive, the Federal Circuit disagreed, noting that even where prosecution history statements do not rise to the level of unmistakable disavowal, they do in-form the claim construction.  The Federal Circuit said an applicant’s repeated and consistent remarks during prosecution can define a claim term—especially where, as here, there is no plain or ordinary meaning to the claim term and the specification provides no clear interpretation.  The Federal Circuit found that the Board erred by effectively requiring the prosecution history evidence to rise to the level of a disclaimer in order to inform the meaning of the disputed claim term, adding the prosecution history provides persuasive evidence that informs the meaning of the disputed claim phrase and addresses an ambiguity otherwise left unresolved by the claims and specification.

Because the Federal Circuit concluded that the disputed claim term was limited to all-digital signals, it reversed the Board’s unpatentability determination for those claims.

Affirmed; Patent Owner’s Claim Construction that Excluded Preferred Embodiments Was Not Correct

In Eko Brands, LLC, v. Adrian Rivera Maynez Enterprises, Inc., [2018-2215, 2018-2254] (January 13, 2020), the Court of Appeals for the Federal Circuit affirmed the judgment of invalidity of U.S. Patent No. 8,720,320 owned by ARN, on an adaptor device for use with Keurig® single-brew coffee machines and of infringement of U.S. Patent No. 8,707,855 owned by EKO on a reusable filter cartridge device for use with single-serve beverage brewing machines.

On appeal ARM argued that brewing chamber in the claims of the ‘320 patent required a closed chamber, and thus the prior art did not make the claimed invention obvious.  The Federal Circuit distinguished other patents that showed closed brewing chamber, noting that these specifically describe the chamber as sealed. The Federal Circuit also rejected the argument that several embodiments of in the ‘320 patent that showed sealed brewing chambers, meant that brewing chamber had to be sealed, because there were also several embodiments with unsealed brewing chambers.  The Federal Circuit applying the Canon of Claim construction that “a claim construction that ‘excludes the preferred embodiment is rarely, if ever, correct and would require highly persuasive evidentiary support” to find that the district court’s construction was correct.  The Federal Circuit also affirmed the award of attorneys fees to the accused infringer of the ‘320 patent.

On the issue of infringement of the ‘855 patent, ARM argued that the claims of the patent required a single serve beverage brewer (“A beverage brewing device for use with a single serve beverage brewer having a brewing holster . . .”).  The Federal Circuit disagreed, noting that on its face does not require a beverage brewer, even if the preamble is limiting. To the extent that claim mentions a beverage brewer it is only as a “reference point” to define the purpose and structure of the brewing device.  Thus the Federal Circuit affirmed the finding of infringement.  The Federal Circuit also affirmed the finding of no willful infringement, noting that the instruction as a whole was not legally erroneous given the limited nature of Eko’s objection.

Markush Groups Open to Additional Elements

Amgen, Inc. v. Amneal Pharmaceuticals LLC, [2018-2414, 2019-1086] (January 7, 2020), the Federal Circuit vacated and remand the district court’s judgment that Amneal did not infringe U.S. Patent 9,375,405, and affirmed that Piramal did not infringe and that Zydus did infringe the ‘405 patent.

On appeal Amgen challenged the district court’s construction of a Markush group of binders:

from about 1% to about 5% by weight of at least one binder selected from the group consisting of povidone, hydroxypropyl methylcellulose, hydroxypropyl cellulose, sodium carboxymethylcellulose, and mix-tures thereof

and a Markush group of disintegrants:

from about 1% to 10% by weight of at least one disintegrant selected from the group consisting of crospovid[o]ne, sodium starch glycolate, croscarmellose sodium, and mixtures thereof

The district court held both of these Markush groups were closed, such that additional binder and disintegrant substances in addition to the ones specified in the Markush ground avoided infringement.

The Federal Circuit said that Multilayer and Shire did not hold broadly that, whenever “consisting of” Markush group language is present in a particular claim limitation, even when the limitation follows a general claim transition phrase of “comprising,” all components of an accused product that perform the general function of the particular limitation must meet the requirements of that limitation, thus precluding components outside the Markush group.  The Federal Circuit explained that those decisions do not apply in this case, where the question is whether the “binder” or “disintegrant” claim limitations are written to preclude other binders and disintegrants in the claimed composition. The Federal Circuit concluded that they are not.

In Multilayer, the Markush group was closed because the language of the claim was closed, requiring “each layer being selected from the group consisting of . . . “.  In Multilayer the Federal Circuit further held that dependent claim 10, which added a requirement that “at least one said inner layer” contain a resin not listed in the element, was invalid because it was inconsistent with the independent claim.  In particular, the Federal Circuit said, it had no occasion to, and did not, consider the effect of the transition phrase “comprising”.

In construing the (a) and (b) Markush groups in Shire, the Federal Circuit explained that the “consisting of” language defined the groups and created a “very strong presumption” that the Markush groups were closed to additional elements not specified in the claim.  The Federal Circuit pointed out that this was also decided without reference to the comprising transition.  The claim specified that  the outer matrix of the claimed composition “consists of” the compounds in the Markush group. The outer matrix, by the terms of the element, had to “consist of” of those compounds to meet that limitation.

The Federal Circuit found that the decisive issue in the current case is critically different from any issue decided in Multilayer or Shire. The issue is whether all binders or disintegrants in the claimed formulation are subject to the specific binder or disintegrant limitations. The Federal Circuit concluded that they were not.  First, the Federal Circuit noted that there is no language in Amgen’s claim indicating that every binder or disintegrant in the claimed formulation must be within the Markush groups.  The Federal Circuit said that the limitations merely require that those particular binders or disintegrants meet the specified weight-percentage requirements, which is not inconsistent with the overall composition containing other binders or disintegrants.

The Federal Circuit said that the plain language of the claim requires “at least one” of the Markush members and certainly does not indicate that the only binders and disintegrants in the claimed formulation are those listed in the groups. The Federal Circuit did not see a sufficient basis for a different conclusion in the specification or in the prosecution history.  The Federal Circuit also noted the transition “comprising,” which makes clear that the claim does not preclude the presence of components or steps that are in addition to, though not inconsistent with, those recited in the limitations that follow.  The Federal Circuit said that the use of the “comprising” transition phrase reinforces the conclusion that the language of those limitations is best construed not to foreclose such additional binders and disintegrants. The Federal Circuit vacated the district court’s decision as to the Amneal product.  However, the Federal Circuit agree that prosecution history estoppel prevented Amgen from asserting that Piramal’s product infringed under the doctrine of equivalents.