No Claim Preclusion. No Issue Preclusion. No Problem. The Kessler Doctrine Fills the Gap.
| March 26, 2014
Brain Life, LLC v. Elekta Inc.
March 24, 2014
Before O’Malley, Bryson, Wallach. Opinion by O’Malley
Summary:
In a prior case, Medical Instrumentation Diagnostics Corporation (MIDCO) brought a patent infringement suit against Elekta asserting the apparatus claims and the method claims of US Patent No. 5,398,684 (“the ‘684 patent”). The method claims were later dropped from the suit “without prejudice.” MIDCO ended up losing the infringement action. Brain Life, the successor-in-interest of the ‘684 patent, brought a suit against Elekta alleging infringement of the method claims of the same patent against the same products except for one additional product.
The CAFC held that claim preclusion did not bar the suit with regard to alleged acts of infringement occurring after the judgment in the first suit brought by MIDCO. The CAFC also held that issue preclusion did not bar the suit with regard to the method claims because the method claims were not “actually litigated.” However, under the “Kessler Doctrine,” Elekta has a right to use the products held not to be infringing the ‘684 patent in the first action freely and without harassment. Thus, the CAFC affirmed the District Court’s determination that the suit is barred with regard to the products involved in the first action, albeit, on different grounds from the District Court. The CAFC vacated the District Court’s decision and remanded the case with regard to the product that was not previously litigated in the MIDCO case.
There must be a Clear and Compelling Reason to Construe a Claim Term in a Way Other than its Ordinary Meaning
| March 19, 2014
Ancora Technologies v. Apple
Decided March 3, 2014
Before Chief Judge RADER, Circuit Judges TARANTO and CHEN. Opinion by Circuit Judge TARANTO.
Summary:
Ancora stipulated that its patent was not infringed by Apple’s iOS operating system, in view of the trial judge’s narrow construction of the term “program” in Ancora’s patent claims. Ancora appealed the judge’s claim construction. Apple cross-appealed the judge’s construction of two other claim terms, “volatile memory” and “non-volatile memory” in the context of the judge’s determination that the claim terms were not indefinite.
The CAFC agreed with Ancora on both issues and remanded the case to the lower court for further proceedings.
Details:
Ancora’s patent claimed a method for determining whether software on a computer is authorized, and if not, taking remedial action. A significant feature of the claimed method is that encrypted license information is stored in the computer’s basic input/output system (BIOS), where that information is less vulnerable to hacking than when stored in other types of memory space, as in the prior art.
Representative claim 1 recited
A method of restricting software operation within a license for use with a computer including an erasable, non-volatile memory area of a BIOS of the computer, and a volatile memory area; the method comprising the steps of:
selecting a program residing in the volatile memory,
using an agent to set up a verification structure in the erasable, non-volatile memory of the BIOS, the verification structure accommodating data that includes at least one license record,
verifying the program using at least the verification structure from the erasable nonvolatile memory of the BIOS, and
acting on the program according to the verification.
Apple argued, and the trial judge agreed, that in view of the specification and the prosecution history, the claim term “program” would be understood by one skilled in the art as “an application program,” i.e., a program that relies on an operating system to run but is not itself an operating system, specifically “a set of instructions for software application that can be executed by a computer.”
Holding:
The CAFC recited the principle of law that each claim term is given ordinary meaning in the context of the claimed invention, unless the applicant has clearly adopted a different meaning or clearly disclaimed the literal scope of the claim. Here, one in the art would understand that “program” in the context of computers include application programs and operating systems that run application programs, plus other types of programs. They are not limited to application programs.
Further, the recitation of “application software program” in another claim in the asserted patent suggests that the applicants did not intend the bare term “program” in representative claim 1 to have the same meaning.
The specification refers to the programs to be verified as “software programs,” “software” and “programs” without limiting them to application programs. Examples in the specification do refer to “application programs,” but they are non-limiting examples.
Apple’s reliance on applicants’ statements during prosecution of the patent were also unpersuasive. Those arguments distinguishing prior art, “concerned software that implemented the invented method. The to-be verified software is different from the verifying software. The statements from the prosecution history on which Apple relies do not say that the program being verified must be an application program.” (Emphasis added).
The CAFC also affirmed the trial judge’s rejection of Apple’s defense that the claims were indefinite because of the claim phrases “volatile memory” and “non-volatile memory.” The CAFC began by noting the agreement among the parties and the lower court that the phrases are well-understood in the art: “to one of ordinary skill in the art, a volatile memory is memory whose data is not maintained when the power is removed and a non-volatile memory is memory whose data is maintained when the power is removed.”
The CAFC acknowledged certain “loose wording” in the specification regarding these phrases, but the panel found that “the terms at issue have so clear an ordinary meaning that a skilled artisan would not be looking for clarification in the specification. There is no facial ambiguity or obscurity in the claim term. Moreover, the specification nowhere purports to set out a definition for ‘volatile’ or ‘non-volatile’ memory, and nothing in it reads like a disclaimer of the clear ordinary meaning.” (Emphasis added).
Takeaway:
Of course, drafters need to be careful in their use of claim terminology. Nonetheless, where claim terms are quite well understood in the relevant art, courts will not apply those terms in a manner contrary to their common understanding, unless the applicant clearly intended to redefine the term or clearly disclaimed a portion of the literal scope of the claim.
COURT REAFFIRMS THAT EXTRINSIC EVIDENCE SHOULD NOT BE USED TO CONSTRUE CLAIM WHEN IT IS INCONSISTENT WITH MORE RELIABLE INTRINSIC EVIDENCE
| March 11, 2014
Tempo Lighting Inc. v. Tivoli, LLC.
Decided February 10, 2014
Before RADER, Chief Judge, MOORE, and WALLACH, Circuit Judges. Opinion by RADER.
Summary
Tivoli owns USP 6,554,446. The ‘446 patent relates to a reflective strip of material that illuminates the edge of stair steps in low light situations. Claim 1, for example, recites:
1. A lighting apparatus comprising:
a first extruded portion shaped to mount on the nose of a stair step; and
a second extruded portion coextruded with said first portion and mounted on top of the first portion so as to be above the nose of the stair step, said second portion comprising a material inert to light and selected to have a reflectance factor greater than or equal to light gray polyvinyl chloride.
Tivoli sued Tempo for infringement of the ‘446 patent in February of 2004. Tempo responded by filing an inter partes reexamination against the ‘446 patent. The USPTO issued the first Office Action in March of 2005. Soon after that, the district court stayed the infringement suit pending the result of the reexamination. The district court case remained stayed for over 8 years while the reexamination continued grinding its way through the USPTO.
Tempo filed sixty different proposed rejections in the reexamination. The examiner adopted only five of the rejections. The examiner provided a dictionary definition of the term, “inert to light.” In May of 2009 the examiner closed prosecution, retaining his rejection of the claims, and Tivoli appealed the examiner’s rejection of the claims to the Board.
The Board held that:
1. The examiner’s definition of “inert to light” was wrong and used the one based on the prosecution history, in which the term “inert to light” was “non-photoluminescent and not activated to glow by absorbing ambient light.”
2. The rejection of claims 1-3 and 6-13 were improper. The Board stated that the references did not show the feature of “inert to light.”
3. Tempo had waived alternative arguments because it did not file a cross-appeal raising such arguments.
Tempo appealed to the CAFC.
In 6-4 en banc decision, Federal Circuit maintains no-deference review of District Courts’ claim constructions
| March 11, 2014
Lighting Ballast v. Philips Electronics (en banc, Precedential)
Decided February 21, 2014
Before NEWMAN, LOURIE, O’MALLEY. Opinion by NEWMAN, Concurrence by LOURIE, Dissent by O’MALLEY.
Summary:
In a patent dispute involving the interpretation of a “means-plus-function” term, a three-judge panel of the Federal Circuit revised the District Court’s claim construction on appeal and held the patent claim invalid for indefiniteness, in the absence of any structure in the description corresponding to the “means” recited in the claim.
The Federal Circuit granted rehearing of the panel decision by the full Court (“en banc”), for the purpose of revisiting its practice of reviewing claim construction without giving any deference to the District Court. In a 6-4 decision, the Federal Circuit en banc maintains the plenary review (“de novo”) rule established by its 1998 decision Cybor Corp. v. FAS Technologies, Inc.
Tags: appeal > claim construction > means-plus-function
