claim interpretation : CAFC Alert

Ambiguity in specific definition of claim terms

Tsuyoshi Nakamura | October 25, 2017

ORGANIK KIMYA AS, v. ROHM AND HAAS COMPANY

October 11, 2017

Before Prost, Newman, and Taranto. Opinion by Newman.

Summary:

In the inter partes review (“IPR”) proceedings, the Patent Trial and Appeal Board (“PTAB”) made claim interpretation about claimed “swelling agent” by relying on patentee’s specific definition provided in the specification and decided that the alleged prior arts fail to disclose such “swelling agent.”  Appellant, Organik Kimya AS argues that the specific definition includes ambiguity due to open-ended definition and the claims cannot be reasonably interpreted to exclude those prior arts.  The court affirmed the decision of PTAB.  The specification contained many definitions of technical terms.  Careful wording would be more desired in drafting functional definition for claim terms, which provides specific meaning different from ordinary and customary one.


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A Distinction Without A Difference

Adele Critchley | March 21, 2016

Ulf Bamberg, Peter Kummer, Ilona Stiburek v. Jodi A. Dalvey, Nabil F. Nasser

March 9, 2016

Before Moore, Hughes and Stoll.  Opinion by Hughes.

Summary:

The CAFC upheld the Board’s decision that the Bamberg claims were correctly interpreted in light of the Dalvey patents from which they were copied, and functional limitations were not improperly imported.

The CAFC upheld that, in light of the claim interpretation, the Bamberg specification failed to provide adequate written description.

The CAFC found that the Board did not err in denying Bamberg’s motion to amend the claim set due to a lack of claim chart.


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Claim term “at least one component of [a unit]” excludes the entire unit – expert testimony cannot override intrinsic evidence

Nicolas Seckel | April 17, 2015

Enzo Biochem Inc. v. Applera Corp. (Precedential)

March 16, 2015

Before: Prost, Newman and Linn. Opinion by Prost, Dissent by Newman.

Summary

In this case, grammatical construction and invention “purpose” beat expert testimony and claim differentiation, leading to reversal of the District Court’s claim interpretation.

One might have thought that the Federal Circuit would make a point of carefully applying the different standards of review when a District Court’s claim construction relied in part on extrinsic evidence (“clear error” for findings based on extrinsic evidence, instead of “de novo” review for intrinsic evidence, see Teva Pharm. USA, Inc. v. Sandoz, Inc. (Jan. 20, 2015)).

This decision suggests a different trend, toward minimizing the importance of extrinsic evidence in claim interpretation, which allows the Federal Circuit to maintain its customary high level of scrutiny.


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Entirely reasonable? “Black box” claim interpretation by split Federal Circuit panel leaves us in the dark

Nicolas Seckel | February 13, 2013

Harris Corp. v. Fed Ex Corp. (non-precedential)

January 17, 2013

Panel:  Lourie, Clevenger, and Wallach.  Opinion by Clevenger.  Dissent by Wallach

Summary:

Over a dissent, the Federal Circuit panel makes a strict interpretation of “antecedent basis,” which results in a reversal of the District Court’s claim interpretation, and a remand to re-evaluate the infringement issue.

Harris’s patents cover methods and systems for using spread spectrum radio signals to send flight data from a plane’s “black box” to an airport receiver at the end of the flight.  The invention includes steps of generating, accumulating and storing flight data in the plane during the flight, followed by a step of “transmitting the accumulated, stored generated aircraft data” once at the airport.

At the District Court, a jury found that Fed Ex willfully infringed Harris’s patents by using a “design-around” system that transmits all flight data except an optional 5-minute segment.

On appeal, the Federal Circuit panel majority holds that Harris patent claims are limited to the transmission of “all data generated during the flight,” not just any data subset representative of the flight.  The panel’s view is that the narrower interpretation is “entirely reasonable” since the transmitting step refers to the generating step.

In contrast, the dissent sees the claim language as open, so that it would be “counterintuitive” to require that all the generated data must be transmitted.


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Attempting to Rely on Claim Preambles is Still a Bad Idea

Ken Salen | August 1, 2012

In re Taylor (nonprecedential)

June 14, 2012

Panel:  Lourie, Dyk, Wallach.  Opinion by Lourie.

Summary

Taylor appealed from a decision of the Board of Patent Appeals and Interferences (BPAI) affirming the rejections of all pending claims of its U.S. Patent Application No. 11/429,507 as anticipated and obvious.

On appeal, the CAFC affirmed that the BPAI correctly construed the pending claims of the ’507 application and did not err in finding those claims unpatentable in view of the cited prior art. Of note, the BPAI and the CAFC held that Taylor could not rely on its preamble to limit its claim over the cited references.


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