TRANSACTIONS WITHOUT PRIMARY EXPERIMENTAL-USE PURPOSE DO NOT INSULATE FROM THE ON-SALE BAR
Bo Xiao | June 3, 2022
Sunoco Partners Marketing & Terminals L.P., v. U.S. Venture, Inc., U.S. Oil Co., Inc.
Decided: April 29, 2022
Before PROST, REYNA, and STOLL, Circuit Judges.
Summary
The Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded judgement of the United States District Court for the Northern District of Illinois regarding patent infringement. In one of the decisions, the Federal Circuit overturned a district court judgment on some of Sunoco’s claims insulating from the on-sale bar.
Background
Sunoco Partners Marketing & Terminals L.P. (“Sunoco”) sued U.S. Venture, Inc. and U.S. Oil Co., Inc. (collectively, “Venture”), alleging that Venture’s operation butane-blending systems infringed claims of U.S. Patent Nos. 7,032,629 (“the ’629 patent”), 6,679,302 (“the ’302 patent”), 9,494,948 (“the ’948 patent”), and 9,606,548 (“the ’548 patent”) owned by Sunoco.
The patents claimed systems and methods that are directed to blending butane into gasoline before the end chain of distribution. Butane blended with gasoline has some advantages: butane’s volatility helps cars start more easily at low temperatures, and butane is cheaper than gasoline. However, since butane causes air pollution when burned in warm climate, the Environmental Protection Agency (EPA) established regulations on butane blending. Sunoco’s patented technology seeks to maximize butane content while complying with EPA’s (U.S. Environmental Protection Agency) regulations.
The district court ruled on various summary judgment motions and sided with Sunoco in a bench trial to affirm the award of $2 million in damages, later trebled to $6 million.
Discussion
Venture appealed the district court’s decision on (I) rejection of its on-sale-bar defense, (II) determination that it infringed two patents, (III) construction of two claim terms, and (IV) decision to enhance damages. On cross-appeal, Sunoco challenged the district court’s decision not to grant lost-profits damages and its reasonable-royalty award.
The discussion is focused on the topic of on-sale-bar. Venture’s on-sale-bar defense, if successful, would invalidate some claims in two of Sunoco’s patents. The “on-sale-bar” provides the principle that “no person is entitled to patent an ‘invention’ that has been ‘on sale’ more than one year before filing a patent application” (i.e., before the critical date). “On sale” defined by the courts should meet two criteria that the invention is both “the subject of a commercial offer for sale” and “ready for patenting.” Pfaff v. Wells Elec’s., Inc., 525 U.S. 55 (1998). In addition, the on-sale bar can be negated if the patent owner demonstrates that the sale qualifies as “primarily for purposes of experimentation.”
The inventor’s company (MCE) offered to sell and install a butane-blending system to Equilon on February 9, 2000, two days before the critical date. The agreement indicated that Equilon would not pay anything for the machine, but would agree to purchase at least 500,000 barrels of butane from MCE over the next 5 years. The district court found that the equipment was being given away since “the contract did not require Equilon to pay MCE anything in exchange for the system in the normal course of events.” The district court later determined that Sunoco’s systems were sold for experimental-use purposes rather than commercial purposes. However, the Federal Circuit disagreed and opined that the sale “agreement bears ‘all the hallmarks of a commercial contract for sale.’”
The Federal Circuit states that “the agreement begins by expressly describing the transaction as a sale, without reference to any experimental purpose” as recited in the agreement:
MCE agrees to sell to Equilon, and Equilon agrees to purchase, the Equipment (as hereinafter defined) along with a license to use certain technology and software owned by MCE pertaining to the computerized blending of Butane and gasoline stocks, in consideration for the purchase and sale of Butane as set forth herein.
The section of the agreement characterized the sale’s commercial purpose and indicated that “MCE already ‘developed’ the relevant technology and equipment, that Equilon wanted to purchase it, and that MCE was willing to sell it, install it, and supply butane for it.”
Sunoco argued that a primarily experimental purpose is a section of the agreement entitled “Equipment Testing” including two sets of testing: pre-installation testing and post-installation testing. Sunoco drew an analogy to the Supreme Court’s seminal City of Elizabeth case. However, the Federal Circuit pointed out that “the nature of a street pavement,” the invention in the case of the City of Elizabeth, “is such that it cannot be experimented upon satisfactorily except on a highway, which is always public,” City of Elizabeth, 97 U.S. at 134. The Federal Circuit found that the testing was not done by Equilon but a third party. Sunoco also acknowledged that the test could have been done at any time prior to entering the deal with Equilon in January of 2000.
For the posit-installation testing, the section of the agreement states:
Upon completion of installation of the Equipment, MCE shall provide Equilon with written notice of such completion. Within three (3) days of said notice, Equilon shall (i) make all necessary arrangements within the Terminal to enable MCE to test the Equipment to determine whether the Equipment is properly blending butane, and (ii) provide notification to MCE that said arrangements have been made. MCE shall test the Equipment according
to parameters set forth in Schedule 1.10. MCE shall proceed with testing in a timely manner and have a period not to exceed ninety (90) days from the date of said notification by Equilon to complete its testing.
The Federal Circuit found that the post-installation tests were also not experiments, but are acceptance tests to confirm that the equipment “is properly blending butane”—that is, that it is working as promised. It further noted that there was no objective evidence that supported a conclusion that the “primary purpose” of the sale was “to conduct experimentation.”
The Federal Circuit further noted that the district court should have considered “whether the invention was under development, subject to testing, or otherwise still in its experimental stage at the time of the asserted sale.” But that consideration is not the question of Pfaff prong 1. The district court’s “still under development” observation would be better considered at Pfaff prong 2.
Therefore, the Federal Circuit reversed the district court’s experimental-use determination and remand the district court to assess whether the invention was “ready for patenting.”.
Takeaway
- Transactions without primary experimental-use purpose do not insulate from the on-sale bar.
Primer in Patent Enforcement
Stephen G. Adrian | May 26, 2022
NICHIA CORPORATION, v. DOCUMENT SECURITY SYSTEMS, INC.
Decided: April 26, 2022
Before DYK, REYNA, and STOLL. Opinion by REYNA
Summary
Although not precedential, this decision serves as a primer on patent enforcement and the interplay of district court actions by a patent owner, and defenses raised by an alleged infringer with a petition for inter partes review. A review of the underlying Board decision reveals eight district court cases brought by Document Security Systems, Inc., against six different entities, where three inter partes reviews were requested. There were also petitions for inter partes reviews (IPRs) of different patents owned by Document Security Systems, Inc. not involved in this appeal.
In one of the IPRs, the Board found claims 1, 6-8, 15 and 17 of USP 7,524,087 (the ‘087 patent which is the patent involved in the decision) unpatentable (Seoul Semiconductor Co. v. Document Sec. Sys., Inc., IPR2018-00522 and Everlight Elecs. Co. v. Document Sec. Sys., Inc., IPR 2018-01226 – motion for joinder with IPR 2018-00522). In another IPR, the Board declined to institute inter partes review due to the petition being filed more than one year after service of the complaint alleging infringement (Cree, Inc., v. Document Sec. Sys., Inc., IPR2018-01221).
In the present decision, the Board found claims 1 and 6-8 of the ‘087 patent unpatentable and found that claims 2-5 and 9-19 of the ‘087 patent are not unpatentable. Nichia appeals the decision upholding claims 2-5 and 9-19 while Document Security Systems appeals the holding that claims 1 and 6-8 are unpatentable. The CAFC affirmed the Board’s findings as to all claims except claims 15-19, reversing on claim 15 and remanding on dependent claims 16-19.
Background
The ‘087 patent relates to an optical device with an LED die, such as for use in a large display panel. As an example, a stadium display may include numerous small light emitting elements arranged in an array and consisting of an LED die mounted to a plastic housing. In an exemplary embodiment, LEDs are mounted in a housing and encapsulated for protection from the environment. The device contains reflector housing 20 with a sidewall 26 extending between top 22 and bottom 24, with a first pocket or cavity 30 formed on top and a second pocket 34 formed on bottom shown in Figs. 1 and 2:
The first pocket 30 may be filled with encapsulant to cover and protect the LED dies. Claim 1 is representative.
1. An optical device comprising:
a lead frame with a plurality of leads;
a reflector housing formed around the lead frame, the reflector housing having a first end face and a second end face and a peripheral sidewall extending between the first end face and the second end face, the reflector housing having a first pocket with a pocket opening in the first end face and a second pocket with a pocket opening in the second end face;
at least one LED die mounted in the first pocket of the reflector housing;
a light transmitting encapsulant disposed in the first pocket and encapsulating the at least one LED die; and
wherein a plurality of lead receiving compartments are formed in the peripheral sidewall of the reflector housing.
The Board found that claims 1 and 6-8 are unpatentable as obvious over Takenaka (teaching most of claim 1) in combination with Kyowa (teaching the remaining limitation requiring multiple lead-receiving compartments in the reflector housing sidewall). The Board further found that Nichia did not demonstrate that claims 1 and 6-14 are unpatentable over Okazaki and Kyowa because Okazaki discloses a tubular vessel instead of the claimed two pockets. The Board found that Document Security’s expert was more credible than Nichia’s expert in that one of ordinary skill would understand Okazaki as teaching a tubular vessel instead of two pockets. The Board also found that Nichia did not demonstrate that claims 9-19 are unpatentable over Takenaka in view of Kyowa because Nichia did not identify disclosure in Takenaka regarding claim 9’s plastic limitation: “A display comprising a plurality of plastic leaded chip carrier LEDs, the plastic leaded chip carrier LEDs each comprising ….” The Board determined that the underlined phrase was not part of the preamble. Lastly, the Board found that Nichia also did not identify any disclosure in Takenaka that teaches or suggests the “electrical connection limitation” in independent claim 15.
Discussion
The CAFC first notes the standard of review: the Board’s legal conclusions are reviewed de novo whereas the factual findings underlying obviousness are reviewed for substantial evidence.
Nichia’s Appeal
Nichia makes three arguments that the Board erred in finding that Nichia failed to show that claims 9-19 are unpatentable over Takenaka in view of Kyowa.
In the first argument, Nichia argued that the Board erred in the construction of the preamble of claim 9. Nichia argued that the preamble should be considered as the entirety of “A display comprising a plurality of plastic leaded chip carrier LEDs, the plastic leaded chip carrier LEDs each” comprising” (the second “comprising” being considered the transitional phrase). The Board found the preamble to be “A display.” Claim construction is an issue of law reviewed de novo. The CAFC simply found that the phrase “[a] display comprising” is a general description followed by the transition word “comprising” and then the required elements.
In the second argument, Nichia argued that the Board abused its discretion by not including information contained in claim charts regarding plastic from Takenaka. The CAFC found that Nichia failed to establish anywhere in its petition or expert declaration that Takenaka disclosed “plastic.” Nichia’s claim charts disclosed use of resin with no argument comparing plastic and resin.
In the third argument, Nichia argued that the Board abused it’s discretion in finding that Nichia did not prove claim 15 unpatentable based on Takenaka in view of Kyowa. Claim 15 is similar to claim 1 but includes the additional limitation of “at least one LED die … electrically connected to said plurality of electrically conductive leads.” Nichia argues that the Board abused its discretion by ignoring Nichia’s reference to its claim chart for claim 1. Unlike with the plastic phrase, Nichia’s petition specifically stated that Takenaka disclosed an electrical connection. Therefore, the CAFC reversed the Board’s determination regarding claim 15 and remanded with respect to dependent claims 16-19.
Document Security’s Cross-Appeal
The cross-appeal challenged the determination that claims 1 and 6-8 are unpatentable over Takenaka in view of Kyowa. Document Security made two arguments. In the first argument, Document Security argued that Takenaka meets all the limitations of the asserted patent’s disclosed method to protect the leads from external forces, and therefore there was no need to combine with Kyowa.[1] Motivation to combine is a finding of fact. The Board relied on Nichia’s expert that a person of ordinary skill in the art would have been motivated to add the compartments described in Kyowa to the LED housing sidewall of Takenaka to protect the leads from external forces. The expert testimony and Kyowa’s disclosure provide “relevant evidence as a reasonable mind” would find supports the Board’s conclusion.
In the second argument, Document Security argued that even if there was motivation to combine, the Board erred because Kyowa does not teach a required element of the claims at issue, arguing that Kyowa does not disclose or suggest reflector housing and therefore cannot teach the lead-receiving compartments limitation. What the prior art teaches is a finding of fact. The Board explained that Kyowa teaches the device is enclosed in a resin package, which is an LED housing, and the sidewall contains multiple compartments in the housing. The Board reasoned that since Takenaka teaches a housing formed of white resin having high reflectance, it would correspond to the required reflector housing. As such, the CAFC found the Board’s findings supported by substantial evidence.
Takeaways
- Any IPR petition needs to clearly tie elements of the prior art to elements of the claim(s) at issue. For example, the resin of the prior art needed to be shown to correspond to plastic of claim 9. On the other hand, Nichia’s petition clearly set forth “electrical” connection which resulted in reversal.
[1] The author notes that this seems to be strange that the patent owner was arguing that it’s claim would be taught by one prior art reference. It is suspected that the strategy was to save the claim based on the multiple compartments limitation which was taught by the secondary reference.
Insufficient Extrinsic Evidence and Prosecution Disclaimer Led to Claim Construction in Patentee’s Favor
Fumika Ogawa | May 6, 2022
Decided: April 1, 2022
Newman, Reyna, and Stoll. Opinion by Reyna.
Summary
The CAFC found in favor of a patentee seeking broad interpretation of a claim term, where an expert testimony offered by an opponent in support of narrower claim scope was insufficient to overcome a clear record of the patent, and the prosecution history lacked “clear and unmistakable” statements to establish express disavowal of claim scope.
Details
This is an appeal from a district court action where Genuine Enabling Technology LLC (“Genuine”) sued Nintendo Co., Ltd. and Nintendo of America, Inc. (“Nintendo”) for infringing certain claims of U.S. Patent No. 6,219,730. The patent relates to user input devices, such as mouse and keyboard, and its representative claim 1 recites:
1. A user input apparatus operatively coupled to a computer via a communication means additionally receiving at least one input signal, comprising:
user input means for producing a user input stream;
input means for producing the at least one input signal;
converting means for receiving the at least one input signal and producing therefrom an input stream; and
encoding means for synchronizing the user input stream with the input stream and encoding the same into a combined data stream transferable by the communication means.
(Emphasis added.)
The inventive idea may be pictured as a “voice mouse.” As seen in Fig. 1B of the patent, the inventive apparatus or mouse 18, connected with a computer 10 via a communication link 12, serves the traditional function of allowing user to move an object 14 on the computer monitor 13 (i.e., “user input means for producing a user input stream”), while also capable of receiving a speech input from a microphone 16 (i.e., “input means for producing the at least one input signal”) and transmitting a speech output to a speaker 17.
At issue in the case is the construction of the term “input signal.”
During prosecution, the inventor distinguished his invention over U.S. Patent No. 5,990,866 (“Yollin”) cited in an office action, arguing that the “input signal” limitation was missing in the reference. Specifically, the inventor argued that various physiological sensors disclosed in Yollin, such as those detecting user’s muscle movement, heart rate, brain activity, blood pressure, skin temperature, etc., only produce “slow varying” signals as opposed to “signals containing audio or higher frequencies” to which his invention pertains. The inventor pointed out that the inventive apparatus would resolve a specific problem presented by the use of high frequency signals, which, unlike slow varying signals, tend to “collide” with other signals in producing a composite data stream. This “slow varying” vs. “audio or higher frequencies” distinction is repeatedly noted in the inventor’s argument.
The parties disputed the extent of prosecution disclaimer resulting from the inventor’s statements as to the term “input signal.” In the district court, Genuine proposed to construe the term as
“a signal having an audio or higher frequency,”
whereas Nintendo maintained that the proper scope should be narrower:
“A signal containing audio or higher frequencies. [The inventor] disclaimed signals that are 500 Hertz (Hz) or less. He also disclaimed signals that are generated from positional change information, user selection information, physiological response information, and other slow-varying information. Alternatively, indefinite.”
Nintendo argued that the inventor disclaimed the certain types of “slow-varying” signals taught by Yollin. While specific frequencies were not disclosed in Yollin, Nintendo relied on its expert testimony citing a reference purportedly showing that Yollin’s physiological sensors encompassed the range of “at least 500 Hz.”
Genuine contended that the disclaimed scope should be limited to “slow-varying signals below the audio frequency spectrum [of 20 Hz to 20,000 Hz],” in accordance with the inventor’s argument which only had distinguished the reference “slow-varying” signals from “fast-varying” signals.
The district court sided with Nintendo, finding non-infringement in its favor. In particular, the district court noted that “an applicant’s argument that a prior art reference is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds as well.” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007). That is, according to the district court, the fact that the inventor’s argument distinguished Yollin as lacking “audio or higher frequencies” did not negate the effect of the inventor’s statement also distinguishing Yollin’s range as “slow-varying” signals.
On appeal, the CAFC rejected the district court’s claim construction.
First, the CAFC noted that the role of extrinsic evidence in claim construction is limited, and cannot override intrinsic evidence where there is clear written record of the patent. And as one form of extrinsic evidence, “expert testimony may not be used to diverge significantly from the intrinsic record.” Here, the 500 Hz frequency threshold was not identified in the intrinsic record nor Yollin, and its only basis was Nintendo’s expert testimony which relied on another extrinsic reference that was not in the record. The extrinsic evidence conflicted with the prosecution history in which the examiner had accepted the inventor’s argument distinguishing Yollin without drawing a bright line between “slow-varying” and “audio or higher frequenc[y]” signals. As such, the CAFC found that the expert testimony cannot overcome the clarity of the intrinsic evidence.
Second, the CAFC noted that prosecution disclaimer requires that the patentee make a “clear and unmistakable” statement to disavow claim scope during prosecution. The fact that the inventor repeatedly distinguished the reference “slow-varying” signals from “audio or higher frequenc[y]” signals—the argument which successfully traversed the rejection—led the CAFC to decide that the “clear and unmistakable” disavowal was limited to “signals below the audio frequency spectrum.” Although the CAFC noted that the inventor’s statements “may implicate” certain frequency ranges such as 500 Hz or less, the intrinsic record was not unambiguous enough for the particular range to be disclaimed. For similar reasons, the CAFC also found no disclaimer of “signals that are generated from positional change information, user selection information, physiological response information, and other slow-varying information,” which had not been directly addressed in the inventor’s argument.
The CAFC concluded that the district court erred in the claim construction and that the proper scope of the term “input signal” is “a signal having an audio or higher frequency.”
Takeaway
This case provides a reminder that caution should be taken not to make “clear and unmistakable” statements in arguing around the prior art during prosecution. Although there appears to be no fixed criteria for assessing what qualifies as a “clear and unmistakable” disavowal, applicant’s consistency in presenting one main argument—focused on an essential distinction between the claim and the prior art—without introducing unnecessary details may help limit the extent of potential prosecution disclaimer.
Claim differentiation helps broaden the scope of a claim to a Fuse end cap
Andrew Melick | April 29, 2022
Littlefuse, Inc. v. Mersen USA EP Corp.
Decided: April 4, 2022
Prost, Bryson and Stoll. Opinion by Bryson.
Summary:
Littlefuse sued Mersen for infringement of its patent to a fuse end cap. In construing the claims, the district court held that the claims are limited to a multi-piece apparatus even though some dependent claims recite a single-piece apparatus. Upon review of the claims, specification, and prosecution history, and based on principles of claim differentiation, the CAFC concluded that the district court’s construction is incorrect. The CAFC concluded that the independent claims should be construed as including multi-piece fuse end caps as well as single-piece fuse end caps. Thus, the CAFC vacated the district court’s judgment and remanded.
Details:
Littlefuse owns U.S. Patent No. 9,564,281 to a “fuse end cap for providing an electrical connection between a fuse and an electrical conductor.” Independent claim 1 is provided:
1. A fuse end cap comprising:
a mounting cuff defining a first cavity that receives an end of a fuse body, the end of the fuse body being electrically insulating;
a terminal defining a second cavity that receives a conductor, wherein the terminal is crimped about the conductor to retain the conductor within the second cavity; and
a fastening stem that extends from the mounting cuff and into the second cavity of the terminal that receives the conductor.
Dependent claims 8 and 9 are also important in this case and are provided:
8. The fuse end cap of claim 1, wherein the mounting cuff and the terminal are machined from a single, contiguous piece of conductive material.
9. The fuse end cap of claim 1, wherein the mounting cuff and the terminal are stamped from a single, contiguous piece of conductive material.
The specification describes three embodiments: (1) a “machined end cap” that may be manufactured from a single piece of any suitable, electrically conductive material; (2) a “stamped end cap” that may be manufactured from a single piece of any suitable, electrically conductive material; and (3) an “assembled end cap” in which the terminal and mounting cuff are formed from separate pieces of material, the material being any suitable, electrically conductive material. With the “assembled end cap,” the terminal and mounting cuff are “joined together, such as by press-fitting a fastening stem of the mounting cuff into the cavity of the terminal” or by using “a variety of other fastening means including … various adhesives, various mechanical fasteners, or welding.”
The following is an example of the “machined fuse end cap”:
And the following is an example of the “assembled end cap”:
During prosecution, the Examiner issued a restriction requirement stating that each of the three embodiments represented a distinct species. Littlefuse elected to prosecute the species corresponding to the “assembled end cap” embodiment. Claims 8 and 9 directed to the “machined end cap” and the “stamped end cap,” respectively, were then withdrawn. These dependent claims were subject to reinstatement if a generic claim was found to be allowable. Upon a rejection issued by the Examiner, claim 1 was amended to include the “fastening stem” limitation shown above. Amended claim 1 was then allowed and claims 8 and 9 were rejoined since the Examiner concluded that claims 8 and 9 require all the limitations of the allowable claims.
District Court
In the district court, the term “fastening stem” was construed to mean “a stem that attaches or joins other components”; and “a fastening stem that extends from the mounting cuff and into the second cavity of the terminal that receives the conductor” was construed to mean “a stem that extends from the mounting cuff and into the second cavity of the terminal that receives the conductor, and attaches the mounting cuff to the terminal.” The district court further construed claim 1 such that the fuse end cap “is of multi-piece construction” and that claim 1 does not cover a single-piece apparatus. The parties stipulated to non-infringement based on the district court’s construction of claim 1 as covering only a multi-piece apparatus, and Littlefuse appealed the claim construction ruling.
CAFC
The court first explained claim construction principles citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) stating that “A claim term is generally given the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention” and that “How the term is used in the claims and the specification of the patent is strong evidence of how a person of ordinary skill would understand the term.”
The court further stated that “The structure of the claims is enlightening.” Citing Baxalta Inc. v. Genentech, Inc., 972 F.3d 1341 (Fed. Cir. 2020), the court stated that “By definition, an independent claim is broader than a claim that depends from it, so if a dependent claim reads on a particular embodiment of the claimed invention, the corresponding independent claim must cover that embodiment as well.” The court stated that if this were not the case, then the dependent claim would be meaningless, and a claim construction that leads to that result is generally disfavored. Thus, the court concluded that the recitation of a single-piece apparatus in claims 8 and 9 is persuasive evidence that claim 1 also covers a single-piece apparatus.
The court then explained principles regarding claim-differentiation stating that “the presumption of differentiation in claim scope is not a hard and fast rule” citing Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361 (Fed. Cir. 2005) and that “any presumption created by the doctrine of claim differentiation will be overcome by a contrary construction dictated by the written description or prosecution history” citing Retractable Techs., Inc. v. Becton, Dickinson, and Co., 653 F.3d 1296 (Fed. Cir. 2011).
Mersen argued that notwithstanding the doctrine of claim differentiation, a construction that renders certain claims superfluous need not be rejected if that construction is consistent with the teachings of the specification citing Marine Polymer Technologies, Inc. v. HenCon, Inc., 672 F.3d 1350 (Fed. Cir. 2012) (en banc). However, the court stated that Littlefuse’s construction is supported by the specification. The court further stated that Mersen’s construction “would not merely render the dependent claims superfluous, but would mean that those claims would have no scope at all, a result that should be avoided when possible.”
The court pointed out that the district court recognized the inconsistency between its construction of claim 1 as covering only a multi-piece apparatus and the recitation of a single-piece apparatus in dependent claims 8 and 9. The district court concluded that the Examiner’s rejoinder of those dependent claims was a mistake. However, the CAFC said that the record in this case does not support the district court’s conclusion. The CAFC agreed with the Examiner that the dependent claims “require all the limitations of the … allowable claims” since the independent claims are not limited to a multi-piece construction and “the dependent claims form a coherent invention in that they each recite a fuse end cap that comprises a mounting cuff, a terminal, and a fastening stem.
The court also addressed the specification which only refers to a “fastening stem” with respect to the “assembled end cap” embodiment, which is a multi-piece apparatus. But the court said that “courts ordinarily should not limit the claimed invention to preferred embodiments or specific examples in the specification.” The court pointed out that the specification does not state that a fastening stem cannot be present in a single-piece apparatus and “one can envision a stem that projects from the side of the mounting cuff even in an embodiment in which the fuse end cap is formed from a single piece of material.”
The court concluded that the construction of “fastening stem” that is most consistent with the claims, specification, and prosecution history is a construction that includes a multi-piece end cap as well as a single-piece end cap. Thus, the court vacated the district court’s judgment of non-infringement and remanded.
Comments
Claim differentiation can be a useful tool for providing broader claim scope to independent claims. Thus, when drafting patent applications, it is a good idea to include various dependent claims.
Also, when faced with a restriction requirement due to distinct species and upon allowance of some claims, make sure to review whether other claims can be rejoined. In this case, the fact that the Examiner rejoined some species claims as being covered by a generic independent claim helped persuade the CAFC to provide a broader construction of the independent claim.
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