De Novo Review Where Claim Can Be Construed Using Canons of Construction from Instrinsic Reference

Eidos Display, LLC, v. AU Optronics Corp., [2014-1254] (Fed. Cir. 2014), the Federal Circuit reversed summary judgment of invalidity of the claims for indefiniteness.  The Federal Circuit began its analysis by confirming that its review was de novo because the claims could be construed solely from the intrinsic evidence, citing Teva v. Sansoz.  The Federal Circuit said that to the extent the district court considered extrinsic evidence in its claim construction order or summary judgment order, that evidence is ultimately immaterial to the outcome because the intrinsic record is clear.

In its de novo review of the claims the Federal Circuit observed that the limitation at issue, “a contact hole for source wiring and gate wiring connection terminals” could require a single common or two separate holes, but found that the specification clearly indicated two holes.  First, the Federal Circuit noted that the there was no enabling disclosure of a single hole, and second the only disclosure was of two separate holes.

The Federal Circuit looked to the prosecution history of the parent application, citing Masco Corp. v. United States, 303 F.3d 1316, 1324 (Fed. Cir. 2002), and Elkay Mfg. Co. v. EbcoMfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999)that the prosecution history of a parent application may be considered  in construing claim terms.”  Observing that other claims contained this same limitation the Federal Circuit saw no reason to ascribe a different meaning to the same limitation in the current claim, noting claim terms are normally used consistently throughout the patent, so that the usage of a term in one claim can often illuminate the meaning of the same term in other claims.

Finally the circuit noted that descriptions of other unclaimed embodiments in the patent in suit supported the construction that separate holes were required, noting that the description of a word in the specification for a different structure can inform the meaning of the same word in the claim because “claim terms are normally used consistently throughout the patent,” citing Energy Transp. Grp., Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1349–50 (Fed. Cir. 2012).

The Federal Circuit rejected appellee’s argument that it was rewriting the limitation, noting that determining how a person of ordinary skill in the art would understand  the limitation, however, is different from rewriting the limitation.


Subsidiary Facts Underlying a District Court’s Claim Construction are Reviewed for Clear Error, but De Novo Review Survives for Most Cases

In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. No. 13-854, (January 20, 2015), the Supreme Court held that while the ultimate question of claim construction remains a legal question subject to de novo review, the district court’s subsidiary fact determinations are no different than any other factual determinations which under F.R.C.P. 52(a)(6) are reviewed for clear error.  Teva and Sandoz disputed the meaning of the claim requirement “a molecular weight of 5 to 9 kilodaltons.”  The “molecular weight” could be determined by at least three different methods, and the patent did not explicitly state which method should be used.  Sandoz argued that this made the claims fatally indefinite, but after considering conflicting expert testimony from the parties, the district court concluded that the claim was sufficiently definite, and thus valid.  The Federal Circuit reviewed the entire question of claim construction stating “[o]n de novo review of the district court’s indefiniteness holding, we conclude that [Teva’s expert’s] testimony does not save Group I claims from indefiniteness.”

The Supreme Court saw no reason to treat subsidiary factual findings relating to an issue of law any different from any other factual findings subject to review for clear error under F.R.C.P. 52(a)(6).  The Supreme Court found that when the Federal Circuit did not accept Teva’s expert’s explanation as to how a skilled artisan would interpret the curves in the patent specification, it failed to make a determination that the district court’s finding was clearly erroneous.  The Supreme Court said that the Federal Circuit should have accepted the district court’s finding unless it was “clearly erroneous.”

The most significant aspect of Teva v. Sandoz is that it confirmed that claim construction is a question of law that is reviewed de novo, affirming Cybor Corp. v. FAS Technologies Inc., 46 USPQ2d 1169 (Fed. Cir. 1998).  While it modified the review of claim constructions where there are underlying factual determinations, the Supreme Court made it clear that when the claim is construed from the intrinsic evidence alone, no deference is due: “when a district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent’s prosecution history) the judge’s determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo.”

Of course in those cases where there are underlying factual findings, we are back to pre-Cybor days, when those factual findings were entitled to deference.  In Cybor, the Federal Circuit noted in some cases, it had applied a clearly erroneous standard to findings considered to be factual in nature that are incident to the judge’s construction of patent claims, citing Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547, 1555-56, 42 USPQ2d 1737, 1742 (Fed.Cir. 1997); Serrano v. Telular Corp., 111 F.3d at 1586, 42 USPQ2d at 1544, (Mayer, J., concurring); Wiener v. NEC Elecs. Inc., 102 F.3d 534, 539, 41 USPQ2d 1023, 1026 (Fed.Cir. 1996); Metaullics Sys. Co. v. Cooper, 100 F.3d 938, 939, 40 USPQ2d 1798, 1799 (Fed.Cir. 1996).  As Judge Mayer observed in Serrano:

According to the Supreme Court, claim construction is a matter for the judge, and not the jury. . . . As such, if the claim construction does not require the resolution of disputed material facts, it may be treated as a matter of law and so reviewed by this court. However, where material facts are disputed, claim construction requires resolution of both questions of fact and questions of law . . . and this court may be required to give due deference to the trial court’s factual findings.

One might wonder how often this comes up, and it turns out that there are three other Petitions for Certiorari where the review of factual findings were in dispute: Lighting Ballast v. Universal Lighting; Gevo v. Butamax, and Shire v. Watson Pharma.  In the wake of Teva v. Sandoz the Supreme granted certiorari in all three cases, and remanded them for further proceedings consistent with Teva v. Sandoz.

Out of Order: The Order of Steps in a Method Claim

In Mformation Technologies, Inc. v, Research in Motion Limited, [2012-1679, 2013-1123] (Fed. Cir. 2014), the Federal Circuit affirmed the grant of JMOL because it agreed that the order of the steps was important to infringement.  The Federal Circuit noted the general rule that “[u]nless the steps of a method [claim] actually recite an order, the steps are not ordinarily construed to require one.” Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (citation omitted).  However, the Federal Circuit went on to explained that a claim “requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires” an order of steps. TALtech Ltd. v. Esquel Apparel, Inc., 279 F. App’x 974, 978 (Fed. Cir. 2008); see also Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1320 (Fed. Cir. 2013) (concluding that a claim that recites “processing” an “electronic advertisement” necessarily indicates that “the creation of the ad must happen before the processing begins”).

The order of the steps in a method claim is in the control of the claim drafter:  if the order of steps is not important, then the draft should make sure the words chosen don’t imply an order as a matter of “logic or grammar.”  Numbering or lettering the steps can also imply an order, and should be used judiciously.


Different Words Have Different Meanings

One interesting apect of Augme Technologies, Inc. v. Yahoo! Inc., 2013-1121, -1195 (June 20, 2014), is the Federal Circuit’s application of the Claim Construction Cannon that different words have different meanings.  The claim required an “embeded code module,”   The Federal Circuit noted that each asserted claim recites that the first code module is “embedded” or “configured to be embedded” and that the second code module is “retrieve[d]” or “download[ed].” The Federal Circuit found that this distinction creates a presumption that “embedded” means something different than “retrieved” or “downloaded, ” citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008) (“[D]ifferent claim terms are presumed to have different meanings.”); Applied Med. Res. Corp. v. U.S. Surgical Corp, 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006).  Having created a distinction between embedded  and retrieved and downloaded in structuring its claims, the patent owner could not argue that these different terms meant the same thing.


Usage in Other Claims Reveals Meaning (without Claim Differentiation)

In Ancora Technologies, INc. v. Apple, Inc., [2013-1378, -1414] (Fed. Cir. 2014), the Federal Circuit reversed the district courts claim construction, which limited “programs” to applications, thereby excluding operating systems.  The Federal Circuit said that unless the patentee has made clear its adoption of a different definition or otherwise disclaimed that meaning. See, e.g., Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The Federal Circuit found no reason in the case to depart from the term’s ordinary meaning. Ahthoungh not strictly claim differentialtion, the Federal Circuit found that the text of other claims, not in issue, which use specifically referenced “application software program” indicated that “program” in the claims at issue should be more broadly construed.

The Federal Circuit also rejected Apple’s attempt to manufacture uncertainty over the meanings of “volatile” and “non-volatile” based on “oddly phrased” reference to a hard disck as an example of volatile memory. Finding the terms had well understood meanigns, the cited passages in the specification had a reasoanble explanation, and the prosecution history removed all doubts.

Interesting is the Court’s description of claim differentiation as an interpretive principle “often of limited importance”.