claim construction : CAFC Alert

The Board Stretches the Broadest Reasonable Interpretation Standard to Broadest Possible Interpretation

Bill Schertler | October 20, 2017

In re Smith International, Inc.

September 26, 2017

Before Lourie, Reyna, Hughes.  Opinion by Lourie.

Procedural History:

Smith International (“Smith”) owns U.S. Patent No. 6,732,817 (the ‘817 patent) directed to a downhole drilling tool for oil and gas operations.  In 2012, Smith’s corporate parents, Schlumberger Holdings Corp. and Schlumberger N.V., sued Baker Hughes Inc. (“Baker Hughes”) in the United States District Court for the Southern District of Texas for, inter alia, infringement of the ’817 patent.  Baker Hughes requested ex parte reexamination of claims 28–37, 39–46, 49, and 50 of the ’817 patent.  The PTO granted the request for ex parte reexamination, which is the subject of appeal in this case.

In the reexamination, the Examiner finally rejected claims 28–36, 39, 40, 42, 79–80, 93–98, and 100 as anticipated by International Publication No. WO 00/31371 (“Eddison”).  The Examiner rejected claims 43–46, and 49 as obvious over Eddison in view of U.S. Patent 6,059,051 (“Jewkes”), and claims 28, 40, 41, 43, 50, 80, 81, 93, and 99 as obvious over Eddison, European Publication No. EP 0 246 789 (“Wardley”), and Jewkes.  Smith appealed to the Patent Trial and Appeal Board (“Board”), and the Board affirmed all of the examiner’s rejections.  The Court of Appeal for the Federal Circuit (“CAFC”) reversed the Board.

Details:

This case primarily concerns what the word “body” means in the context of the ’817 patent.

Representative claim 28 is set forth below.

28.  An expandable downhole tool for use in a drilling assembly positioned within a wellbore having an original diameter borehole and an enlarged diameter borehole, comprising:

 a body; and

at least one non-pivotable, moveable arm having at least one borehole engaging pad adapted to accommodate cutting structures or wear structures or a combination thereof and having angled surfaces that engage said body to prevent said arm from vibrating in said second position;

wherein said at least one arm is moveable between a first position defining a collapsed diameter, and a second position defining an expanded diameter approximately equal to said enlarged diameter borehole.

Fig. 4 of the ‘817 patent is reproduced below to show, inter alia, the “body” (tool body 510) and the “moveable arm” (moveable tool arm 520).

 

 

 

 

 

 

 

 

 

Reexamination

During reexamination, using the broadest reasonable interpretation standard, the Examiner construed the term “body” broadly to correspond to the “body” 18, “mandrel” 16 and “cam sleeve” 28 of Eddison.  Eddison discloses a drilling tool having a “mandrel 16” that “extends through the body 18” and “provides mounting for a cam sleeve 28,” which “cooperates with the extendable members 30 in the form of cutters 30 mounted in respective body ports 32.”  See Fig. 1 of Eddison reproduced below.

 

 

 

 

 

 

 

 

 

Relying on the broad construction of “body”, the Examiner found that Eddison teaches “at least one non-pivotable, moveable arm…having angled surfaces that engage said body” in claim 28 and corresponding elements in other independent claims.

The Board

On appeal to the Board, the Board affirmed the Examiner’s interpretation of the word “body” as a broad term that may encompass other components such as “mandrel” and “cam sleeve”.  The Board reasoned that the term “body” is a generic term that by itself provides no structural specificity.  The Board also reasoned that although “the specification describes the body as a discrete element separate from other elements,” the specification neither defines the term “body” nor precludes the Examiner’s broad reading of it.

The Board rejected Smith’s argument that one of ordinary skill in the art would understand the term “body” as a distinct element from other components.  Based on the Board’s interpretation of the term “body,” the board affirmed the Examiner’s anticipation and obviousness rejections based on Eddison.

CAFC

On appeal to the CAFC, Smith challenged the Board’s construction of the term “body” and the anticipation and obviousness determinations.  Smith argued that the Board’s interpretation of the term “body” was unreasonable and inconsistent with the specification.  More specifically, Smith argued that the Board’s interpretation of “body” as a generic term encompassing the drilling tool’s internal components was unreasonable because the specification consistently refers to and depicts the body of the drilling tool as a component distinct from other separately identified components, such as the “mandrel” or “piston” that reside inside the drilling tool.  In light of the consistent description of the body, Smith urged that the term “body” should be interpreted as an “outer housing.”

The CAFC, using the expressions “strained interpretation” and “arbitrary inclusion of elements” to describe the Board’s construction, concluded that the Board’s construction of “body” was unreasonably broad.

The CAFC reasoned that the ‘817 specification does not use the term as a generic body.  Instead, the ’817 patent separately identifies and describes various components of its drilling tool, such as the “body,” “moveable arms,” “mandrel,” “piston,” and “drive ring,” which do not support the Board’s broad reading of the claim term “body.”  In this connection, the CAFC stated “There is no dispute that the ’817 patent specification consistently describes and refers to the body as a component distinct from others, such as the mandrel, piston, and drive ring.  Therefore, the Board’s reasoning that because the specification does not ‘in and of itself proscribe the Examiner’s construction,’ the Examiner’s interpretation was reasonable, was erroneous.”

The CAFC addressed the Board’s reasoning in support of adopting the broad interpretation that “the patentee here did not act as a lexicographer, and that the specification neither defines nor precludes the examiner’s reading of the term ‘body’.”  Using this reasoning, the Board found that nothing in the specification would disallow the examiner’s interpretation, rendering it “reasonable.”  However, the CAFC responded “following such logic, any description short of an express definition or disclaimer in the specification would result in an adoption of a broadest possible interpretation of a claim term, irrespective of repeated and consistent descriptions in the specification that indicate otherwise. That is not properly giving the claim term its broadest reasonable interpretation in light of the specification.” [Emphasis added.]

Finally, the CAFC stated, “The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is ‘consistent with the specification.’”

Full Opinion

Statements made in IPR proceeding can be relied on to support a finding of prosecution disclaimer during claim construction

Shan Gong | July 5, 2017

Aylus Networks, Inc., v. Apple Inc.

May 11, 2017

Before Moore, Linn, and Stoll.  Opinion by Stoll.

Summary

Patent owner Aylus Networks, Inc. sued Apple Inc. in district court for infringement of the U.S. Patent No. RE 44,412 (“the ‘412 patent”). Apple filed two separate IPRs challenging validity of all the claims. PTAB denied to institute claim 2 based on Aylus’s explanation of a limitation to claim 2. During claim construction in district court, this same explanation is relied on to support a finding of prosecution disclaimer. CAFC affirmed the district court’s finding of prosecution history disclaimer. CAFC also stated that prosecution disclaimer applies whether a statement is made before or after instituting an IPR.


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The Federal Circuit indirectly imports limitations from the specification into the claims through claim construction

John M. Wang | April 24, 2017

The Medicines Company v. Mylan Inc. Etc.

April 6, 2017

Before Dyk Wallach, and Hughes.  Opinion by Dyk.

Summary

Mylan submitted two Abbreviated New Drug Applications (“ANDA”) to seek approval of Food and Drug Administration (“FDA”) for selling generic bivalirudin drug products before the expiration of patents-in-suit: the ‘727 patent and the ‘343 patent. In its ANDA, Mylan stated that it would limit the Asp9 level of its generic product to less than 2.0 percent. Medicines sued Mylan for infringement of the ‘727 and ‘343 patents. Mylan filed counter-claims seeking declaratory judgments of invalidity. The district court held that Mylan infringed the ‘727 patent, but not the ‘343 patent. The Federal Circuit reverses in part, and held that Mylan does not infringe both patents.


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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.

Summary

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.


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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

Summary

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.


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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.

Summary

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.

Details

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.”

Take-away

 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.

Full Opinion

Design patent claim must not be construed eliminating functional elements.

Sadao Kinashi | May 11, 2016

Sport Dimension v. The Coleman Company

April 19, 2016

Before Moore, Hughes and Stoll.  Opinion by Stoll.

Summary:

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.

地裁は、救命胴衣に関するデザイン特許のクレームの解釈で、アームバンドと、次第に細くなる胴体側部をクレームから除外して解釈した。CAFCは、クレーム解釈及び非侵害の判断を破棄し、地裁に差戻した。CAFCはそれらの要素が機能的目的のものであっても、地裁の解釈は、全体的な装飾的観点をカバーするデザイン特許のクレーム範囲を、個々の要素をカバーするものに不当に変更するものであるとした。


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UltimatePointer v. Nintendo

Scott Daniels | March 7, 2016

UltimatePointer v. Nintendo

March 1, 2016

Before Lourie, Dyk and Wallach.  Opinion by Lourie.

Summary:

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.


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Guidance on the standard for “reasonable certainty” in an indefiniteness evaluation

Bernadette McGann | February 4, 2016

Akzo Nobel Coatings, Inc. v. Dow Chemical Co.

January 29, 2016

Before Lourie, Reyna and Chen. Opinion by Lourie.

Summary

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.


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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.

Summary

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.


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