Inconsistent Term Usage in Specification and Lack of Claim Term Definitions Does Not Lead to Disaster for Patentee…This Time
Ken Salen | January 16, 2013
Presidio Components, Inc. v. American Technical Ceramics Corp.
December 19, 2012
Panel: Rader, Plager and Wallach. Opinion by Rader.
The Federal Circuit affirmed the district court’s finding that substantial evidence supported the jury’s verdict that ATC’s capacitors infringed the asserted claims of the ‘356 patent. However, questions with regard to the definiteness of the specification and claim terms that could have changed the result are identified.
Presidio Components, Inc. owns U.S. Patent No. 6,816,356 relating to integrated broadband ceramic capacitor arrays. Presidio sued American Technical Ceramics Corp. (ATC) asserting that ATC’s 545L capacitors infringed the ‘356 patent. The jury found that the asserted claims were infringed and not invalid, and denied ATC’s post-trial motions for a new trial on validity and infringement of the ‘356 patent. ATC appealed these decisions.
The ’356 patent is related to a capacitor with a lower frequency portion and a higher frequency portion. The claims are directed to a multilayer integrated network of capacitors electrically connected in series and in parallel and disposed within a “substantially monolithic dielectric body,” as shown in Fig. 10A.
The invention is a one-piece design, which is an improvement over previous two-piece structures. A two-piece design, such as shown in Fig. 8A, had to be joined both together and to a circuit board through soldering or epoxy. This time-consuming process yielded a less reliable product that in turn was more difficult to use in mass production of end products.
Independent claim 1 is representative and reads as follows:
1. A capacitor comprising:
a substantially monolithic dielectric body;
a conductive first plate disposed within the dielectric body;
a conductive second plate disposed within the dielectric body and forming a capacitor with the first plate;
a conductive first contact disposed externally on the dielectric body and electrically connected to the first plate; and
a conductive second contact disposed externally on the dielectric body and electrically connected to the second plate, and the second contact being located sufficiently close to the first contact to form a first fringe-effect capacitance with the first contact.
Presidio filed the application leading to the ’356 patent with the U.S. PTO in April 2003; the patent issued in November 2004. In September 2003, ATC filed a provisional patent application for its work on the 545L broadband capacitor. After reviewing Presidio’s published patent application in March 2004, ATC proceeded to file its non-provisional application in September 2004.
In February 2006, the PTO rejected ATC’s application, citing the ’356 patent as prior art. Nonetheless, ATC started selling 545L capacitors in June 2006. In August 2006, ATC overcame the PTO’s rejection by arguing that the ’356 patent did not teach “orientation insensitivity,” a claimed limitation of its application. ATC’s patent issued in July 2007. Presidio sued ATC in February 2008, alleging ATC’s 545L capacitors infringe its ’356 patent.
The district court conducted a jury trial in December 2009, which found the asserted claims willfully infringed and not invalid. The jury found that ATC’s 545L capacitors literally infringe the asserted claims of the ’356 patent. ATC challenged the jury’s finding that the 545L capacitor meets the “substantially monolithic dielectric body” limitation of the asserted claims. The Federal Circuit reviews a finding of infringement for substantial evidence.
To prove literal infringement, a plaintiff must show that the accused device contains each and every limitation of the asserted claims. In infringement cases, the court first interprets the claims to determine their scope and meaning. Next, the jury compares the properly construed claims to the allegedly infringing device. If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law.
The district court materially adopted ATC’s proposed construction of “a substantially monolithic dielectric body” as
“a dielectric body largely but not wholly without seams from the inclusion of plates within the dielectric body.”
On appeal, ATC asserted that its 545L capacitors did not contain seams and therefore the jury could not possibly have found infringement.
ATC’s assertion focused on the alleged admission of Presidio’s expert, Dr. Huebner, who at some point, declared that that “there are no seams” in the 545L capacitors.
When discussing the term “seams” on cross examination, Dr. Huebner indicated that the term “seams” is not used by persons of ordinary skill in the art, and therefore he did not find “seams” in the allegedly infringing 545L capacitor.
However, Dr. Huebner further testified that if one were to examine any ceramic multilayer capacitor that is referred to as monolithic, one would find tiny voids present in the solid. These tiny voids are referred to as “porosity” in the art. He explained: “the term substantially monolithic, to me, implies that the vast majority of the component is solid, albeit there could be a percent or two [of porosity], and the same is true for the 545L. There is some tiny amount of porosity present.”
Dr. Huebner further testified that no ceramic capacitor can be 100% monolithic, which is why the patent claims a “substantially monolithic” capacitor. Further, ATC’s counsel asked Dr. Huebner to assume that a seam is the boundary between a plate and the dielectric. Dr. Huebner testified that under this hypothetical, ATC’s 545L capacitor would have 140 seams and would thus be “largely, but not wholly, without seams.” Thus, ATC’s characterization of Dr. Huebner’s testimony was not accurate.
ATC’s expert, Dr. Dougherty, also testified that the 545L capacitor has 70 plates and corresponding seams. Thus, there was sufficient basis for the jury’s conclusion that ATC’s 545L capacitor has “a substantially monolithic body”, and therefore infringes the claims.
Federal Circuit affirmed the district court’s finding that substantial evidence supports the jury’s verdict that ATC’s 545L capacitors infringe the asserted claims of the ’356 patent.
It appears that the ultimate ruling could easily have been negatively affected by questionable drafting of the specification.
The patent at issue depended on the claimed phrase “substantially monolithic”, the definition of which patentees were able to secure to their advantage. However, it appears that the patentees secured their claim construction ruling in spite of lack of consistent use of the phrase “substantially monolithic” in the specification, and with no clear definition of the phrase “substantially monolithic”.
For example, the specification of the ‘356 patent shows the following inconsistent uses:
Abstract: “A monolithic capacitor” (not “substantially”)
Field of Invention: “miniature monolithic capacitors” (not “substantially”)
Background: 5 out of 5 instances of “monolithic” (not “substantially”)
Summary: 2 out of 3 instances of “substantially monolithic”
Claims: 5 out of 6 instances of “substantially monolithic”
Further, there is no clear definition in the specification, which describes that, “the capacitor has a substantially monolithic dielectric body formed from a plurality of ceramic tape layers laminated together in a green ceramic state and fired to form a sintered or fused monolithic ceramic structure.”
The Manual of Patent Examining Procedure (MPEP) §2713.05(b)(II)(D) specifically discusses the definiteness of the term “substantially”, which hinges on whether one of ordinary skill in the art would know what was meant by it.
The drafter of the specification should have been on warning that the phrase “substantially monolithic” could have been open to different interpretations.
The infringement finding appears to have been secured in no small part based on expert testimony (ironically, testimony that was elicited by the infringer’s counsel and testimony provided by the infringer’s expert).
The patentees ultimately secured a claim interpretation wherein the accused device infringed the claims. However, it appears that damaging questions could likely have been raised based on the patentee’s inconsistent usage and lack of concrete definition in the specification as to what constitutes a “substantially monolithic” capacitor.
Applicants cannot consistently count on such lack of clarity to be to their benefit. Thus, Applicants concerned with a clearly defined claim should consider defining each and every claim term, especially those that might be subject to alternative interpretation.
Patent At Issue