CAFC upheld ITC’s ruling under the ‘Infrequently Applied’ Anderson two-step test regarding the enablement of open-ended ranges
| June 8, 2023
FS.com Inc. v. ITC and Corning Optical Corp.
Decided: April 20, 2023
Before Moore, Prost and Hughes. Opinion by Moore.
Summary:
Corning filed a complaint with the ITC alleging FS was violating §337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), (a.k.a ‘unfair import’) by importing high-density fiber optic equipment that infringed several of their patents – U.S. Patent Nos. 9,020,320; 10,444,456; 10,120,153; and 8,712,206. The patents relate to fiber optic technology commonly used in data centers.
The Commission ultimately determined that FS’ importation of the high-density fiber optic equipment violated §337 and issued a general exclusion order prohibiting the importation of infringing high-density fiber optic equipment and components thereof and a cease-and-desist order directed to FS.
Subsequently, FS appealed the Commission’s determination that the claims of the ’320 and ’456 patents are enabled and its claim construction of “a front opening” in the ’206 patent.
ISSUE 1: ENABLEMENT
FS challenges the Commission’s determination that claims 1 and 3 of the ’320 patent and claims 11, 12, 15, 16, and 21 of the ’456 patent are enabled. These claims recite, in part, “a fiber optic connection density of at least ninety-eight (98) fiber optic connections per U space” or “a fiber optic connection of at least one hundred forty-four (144) fiber optic connections per U space.” FS argued these open-ended density ranges are not enabled because the specification only enables up to 144 fiber optic connections per U space.
A patent’s specification must describe the invention and “the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same.” 35 U.S.C. § 112(a). To enable, “the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.”
In determining enablement, the Commission applied the two-part standard set forth in Anderson Corp. v. Fiber Composites, LLC, 474 F.3d 1361 (Fed. Cir. 2007):
[O]pen-ended claims are not inherently improper; as for all claims their appropriateness depends on the particular facts of the invention, the disclosure, and the prior art. They may be supported if there is an inherent, albeit not precisely known, upper limit and the specification enables one of skill in the art to approach that limit.
Although the CAFC acknowledged that the Anderson test is infrequently applied, both FS and Corning agreed that the test governed their legal dispute. In applying this standard, the Commission determined the challenged claims were enabled because skilled artisans would understand the claims to have an inherent upper limit and that the specification enables skilled artisans to approach that limit.
The CAFC agreed, understanding the Commission’s opinion as determining there is an inherent upper limit of about 144 connections per U space. See Appellant’s Opening Br. at 51 (“The only potential finding by the Commission of an inherent upper limit to the open-ended claims is approximately 144 connections per 1U space.”). Specifically, that determination was based on the Commission’s finding that skilled artisans would have understood, as of the ’320 and ’456 patent’s shared priority date (August 2008), that densities substantially above 144 connections per U space were technologically infeasible. This was supported by expert testimony.
ISSUE 2: CLAIM CONSTRUCTION
The Commission construed “a front opening” in claim 14 of the ’206 patent as encompassing one or more openings. FS argued the proper construction of “a front opening” is limited to a single front opening and therefore its modules, which contain multiple openings separated by material or dividers, do not infringe claims 22 and 23. The CAFC disagreed.
The CAFC held that, generally, the terms “a” or “an” in a patent claim mean “one or more,” unless the patentee evinces a clear intent to limit “a” or “an” to “one.” 01 Communique Lab’y, Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1297 (Fed. Cir. 2012). The CAFC concluded here that the claim language and written description did not demonstrate a clear intent to depart from this general rule.
Comments:
- Open-end ranges are not automatically improper. If such a range is required/desired during prosecution, apply the two-part standard set forth in Anderson: (1) is there inherent, albeit not precisely known, support for an upper limit and (2) does the specification enables one of skill in the art to approach that limit.
- The terms “a” or “an” in a patent claim remain to mean “one or more,” unless the patentee evinces a clear intent to limit “a” or “an” to “one.”
