Back to Basics: In re Chudik offers a refresher on the law of anticipation for functional limitations
Cindy Chen | April 17, 2017
In re Chudik
March 27, 2017
Before Dyk, Reyna, and Stoll. Opinion by Reyna.
This decision is a refresher on the basic law of anticipation for functional claim elements. A prior art does not anticipate a functional claim element merely because it is “capable of” performing the recited function, but rather, such capability must be achieved without “distortion” or “modification” to the prior art.
CAFC reiterates criteria for disavowal of broad claim scope based on patent’s disclosure and prosecution history.
Linda Shapiro | November 2, 2016
Poly-America, L.P. v. API Industries, Inc.
October 14, 2016
Before Prost, Reyna, and Hughes. Opinion by Reyna
Infringement of Poly-America’s patent hinged on construction of “short seal” in claim 10. Based on the specification and prosecution history, the district court adopted the accused infringer’s proposed construction, which incorporated structure described in the specification but not explicitly recited in the claim. The CAFC affirmed, finding clear and unequivocal statements in the specification and prosecution history “that the inventor intended to limit the claimed invention to a trash bag with ‘short seals’ at its upper corners that extend inwardly to narrow the bag’s upper opening,” and thus disavowed a broader interpretation.
Definition in specification trumps asserted meaning to a person of ordinary skill in the art and the doctrine of claim differentiation.
Linda Shapiro | June 10, 2016
Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC
May 31, 2016
Before Prost, Reyna, and Stark. Opinion by Reyna, Dissent by Stark.
The specification consistently characterized “communications path” in terms of wired connections. In the absence of any evidence, either intrinsic or extrinsic, to the contrary, these characterizations are understood as definitional and limit “communications path” to a wired connection.
The patent in suit: Innovative Wireless Solutions (“IWS”) owns U.S. Patent Nos. 5,912,895; 6,327,264; and 6,587,473 (the “Terry patents”), directed to techniques for providing access to a local area network (“LAN”) from a relatively distant computer, using an approach by which a “master” modem in the LAN dictates the timing of one-way communications between the master modem and a “slave” modem in the distant computer.
The patents, which are related to each other as parent and continuations, only describe connecting the master and slave modems over physical wires, such as a telephone line, and make no mention of wireless communications, but the claims recite that the two modems are connected via a “communications path.”
Issue at trial: The central dispute during claim construction was whether the recited “communications path” captures wireless communications or is limited to wired communication.
Ruckus argued “that its wireless equipment does not infringe the Terry patents because the Terry patents are limited to wired rather than wireless communications.”
The district court’s claim construction: The district court based its claim interpretation on intrinsic evidence, primarily the specification, which repeatedly refers to “two-wire lines and telephone lines,” and with respect to alternative embodiments says that “although as described here the line 12 is a telephone subscriber line, it can be appreciated that the same arrangement of master and slave modems operating in accordance with the new protocol can be used to communicate Ethernet frames via any twisted pair wiring which is too long to permit conventional 10BASE-T or similar LAN interconnections.”
The district court construed “communications path” to mean “communications path utilizing twisted-pair wiring that is too long to permit conventional 10BASE-T or similar LAN (Local Area Network) interconnections.”
The CAFC’s opinion: Because the district court relied on intrinsic evidence, its claim construction was a legal determination reviewed de novo by the CAFC.
Claim interpretation is based on the ordinary and customary meaning of the words in a claim, which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention,” but importantly, within the context of the patent. The CAFC pointed out that it is legal error to rely “on extrinsic evidence that contradicts the intrinsic record.”
IWS presented three arguments on appeal:
- The district court imported the wired limitation into the claims, thereby committing reversible error.
- The district court read a “wired” limitation into the claims on the basis that every disclosed embodiment was wired, thereby committing reversible error.
- Several dependent claims limited the communications path to wired lines, so the doctrine of claim differentiation requires that the independent claims to be interpreted not to be so limited.
Ruckus argued that “communications path” does not actually have a plain and ordinary meaning to a person of ordinary skill in the art and that the specification limited the scope of “communications path” to a wired connection. It also countered the “claim differentiation” argument by pointing out that the type of wired line recited in the dependent claims is only one of several types disclosed in the specification, so that all that the doctrine of claim differentiation requires is that the “communication path” not be limited to the type of wired line recited in the dependent claims.
The CAFC agreed with Ruckus that IWS could not point to any intrinsic or extrinsic evidence in support of an ordinary meaning for “communications path” encompassing both wired and wireless communications, and that the dependent claims merely exclude other types of wired communications disclosed in the patents; and agreed with the district court that the intrinsic evidence (specifically, the specification’s description of the invention) strongly supported an understanding that “communications path” must be a wired connection.
Finally, the CAFC pointed out that the canons of claim construction require that “if, after applying all other available tools of claim construction, a claim is ambiguous, it should be construed to preserve its validity”; but that “[b]ecause the specification makes no mention of wireless communications, construing the instant claims to encompass that subject matter would likely render the claims invalid for lack of written description.”
The CAFC accordingly affirmed the district court’s claim interpretation and final judgment of noninfringement.
Dissent: The dissent states that the district court’s judgment should have been vacated and the case remanded to the district court to provide the parties an opportunity to present extrinsic evidence on the meaning of “communications path.”
When preparing an application, check dictionaries and do an online search to verify that terms used to designate elements of the invention have a well-understood meaning. If a term does not have a well-understood meaning, be aware that descriptions of the element and its embodiments may be viewed as implicit definitions that limit its scope.
Sadao Kinashi | May 11, 2016
Sport Dimension v. The Coleman Company
April 19, 2016
Before Moore, Hughes and Stoll. Opinion by Stoll.
The district court interpreted the claim of a design patent for a personal flotation device eliminating armbands and side torso tapering entirely from the claim because these are functional. CAFC rejected the claim construction vacating the judgment of non-infringement and remanded. CAFC ruled that even though the elements served a functional purpose, the construction improperly converted the claim scope of the design patent from one that covered the overall ornamentation to one that covered individual elements.
Scott Daniels | March 7, 2016
UltimatePointer v. Nintendo
March 1, 2016
Before Lourie, Dyk and Wallach. Opinion by Lourie.
The trial judge issued summary judgment that Nintendo’s Wii console did not infringe the asserted claims and that most of those claims were invalid as indefinite. On appeal, the CAFC agreed with the trial judge’s claim construction and affirmed the non-infringement judgment, but reversed the indefiniteness judgment.
Bernadette McGann | February 4, 2016
Akzo Nobel Coatings, Inc. v. Dow Chemical Co.
January 29, 2016
Before Lourie, Reyna and Chen. Opinion by Lourie.
The CAFC affirmed the District Court’s holding that the claims of the ‘956 patent are valid and not indefinite and affirmed the holding that the process of Dow does not infringe, either literally or DOE, the ‘956 patent. This case provides additional guidance on the reasonable certainty standard of Nautilus.
In a post-Williamson decision, “compliance mechanism” is a means-plus-function element that does not comply with the requirements under §112.
Cindy Chen | January 20, 2016
Media Rights Technologies, Inc. v. Capital One Financial Corp.
September 4, 2015
Before O’Malley, Plager, and Taranto. Opinion by O’Malley.
In Williamson v. Citrix Online, LLC, the Federal Circuit relaxed the presumption against interpreting a claim element as a means-plus-function element in the absence of the word “means”. In this first decision applying the Williamson standard, the Federal Circuit interpreted the claim term “compliance mechanism” as a means-plus-function element within the scope of §112, 6th paragraph.
Bill Schertler | August 27, 2015
Power Integrations v. Lee
August 12, 2015
Before: Moore, Mayer, Linn, opinion by Mayer
Power Integrations challenged a decision of the Board of Patent Appeals and Interferences (“board”) affirming the rejection of claims 1, 17, 18 and 19 of US Patent No. 6,249,876 (the ‘876 patent) as anticipated under 35 U.S.C. §102(b). The board’s construction of the claim term “coupled” was not adequately explained. The court vacated and remanded the board’s decision, holding only that the board on remand should carefully and fully assess whether the disputed claims of the ’876 patent are anticipated by the prior art, setting out its reasoning in sufficient detail to permit meaningful appellate review.
Ryan Chirnomas | June 11, 2015
Shire Development et al. v. Watson Pharmaceutical et al.
June 3, 2015
Before: Prost, Chen and Hughes. Opinion by Hughes.
In 2014, the CAFC reversed and remanded a district court finding of infringement, due to incorrect claim construction. Shire appealed to the Supreme Court, which vacated and remanded in view of Teva v. Sandoz. The CAFC again reached the same conclusion, and found that de novo review is appropriate in this case, since extrinsic factual findings did not “underlie” the district court’s claim construction. Because the district court claim construction was based only on intrinsic evidence, de novo review was appropriate.
Michael Caridi | June 3, 2015
ArcelorMittal France v. AK Steel Corp. et al.
May 12, 2015
Before: Dyk, Wallach and Hughes. Opinion by Hughes.
ArcelorMittal had filed suit on the ‘805 patent against the appellees. However, the construction of a key term “very high mechanical resistance” was unfavorable to ArcelorMittal and a jury subsequently found the claims of the ‘805 patent not infringed and invalid. During appeal of the decision ArcelorMittal filed a Reissue application at the USPTO which included a new dependent claim with a broader construction of “very high mechanical resistance” than that construed during the judicial action. The CAFC affirmed the District Court’s claim construction but remanded the case on other grounds.
ArcelorMittal filed new suits based on the Reissue patent, but the District Court granted Summary Judgment invalidating the claims on the basis that the term “very high mechanical resistance” was earlier construed during the ‘805 litigation narrower than the subsequent claims of the Reissue patent. The CAFC affirmed the District Court asserting that under the law-of-the-case-doctrine and mandate rule, ArcelorMittal could not use the Reissue process at the PTO to broaden construction after the decision on the ‘805 patent.Next Page »