It all begins with Claim Construction
| February 15, 2019
Duncan Parking v. IPS Group
January 31, 2019
Before Lourie, Dyk, and Taranto. Decision by Lourie.
Summary:
The trial judge construed the claims and subsequently granted summary judgment in favor of Defendant Duncan that the accused parking meters do not infringe U.S. Patent No. 8,595,054 owned by Plaintiff IPS. On appeal the CAFC determined that the trial judge had misconstrued the claims, vacated the summary judgment of non-infringement, and remanded the case to the trial judge for reconsideration of the infringement issue in light of the proper claim construction.
Details:
Claim 1 of the ‘054 patent recites:
- A parking meter device that is receivable within a housing base of a single space parking meter, the parking meter device including:
a timer;
a payment facilitating arrangement operable in cooperation with a non-cash payment medium for effecting payment of a monetary amount for a parking period;
a display configured to visually provide a balance remaining of the parking period;
a power management facility that supplies power to the timer, payment facilitating arrangement, and display;
a wireless communications subsystem configured to receive information relating to the non-cash payment medium in respect of the payment facilitating arrangement;
a keypad sensor that receives input comprising manipulation by the user;
a coin slot into which coins are inserted for delivery to the coin sensor and then to a coin receptacle; and
a lower portion and an upper portion;
wherein the keypad sensor operates the parking meter and determines parking time amount for purchase in accordance with the received input from the user;
wherein the display provides the amount of time purchased in response to the received input from the user;
wherein the upper portion of the parking meter device includes a solar panel that charges the power management facility;
wherein the lower portion of the parking meter device is configured to have a shape and dimensions such that the lower portion is receivable within the housing base of the single space parking meter; and
wherein the upper portion of the parking meter device is covered by a cover that is configured to accommodate the upper portion and that is engageable with the housing base of the single space parking meter such that the payment facilitating arrangement is accessible by the user for user manipulation effecting the payment of the monetary amount for the parking period when the lower portion of the parking meter device is received within the housing base and the upper portion is covered by the cover.
10 – parking meter device
34 – housing
36 – cover
41 – window
Duncan’s accused parking meter is shown below.
The trial judge court construed “receivable within” as “capable of being contained inside,” and applied this construction to require that the “entire lower portion” of the infringing product be “receivable within the housing base.” The trial judge granted summary judgment of non-infringement because it found that the keypad of the accused meter extends through an opening in the lower portion of the housing and, as a result, the lower portion of Duncan’s meter is not “receivable within” its housing base.
On appeal IPS argued that the trial judge had
- construed the claim term “receivable within,” in the claim limitation “a lower portion [of the parking meter device] . . . receivable within the housing base” too narrowly, requiring that the entire lower portion of the parking meter device be contained inside the parking meter housing;
- erroneously construed claim 1 to exclude a potential unclaimed “middle portion” of the device between the upper and lower portions; and
- excluded the preferred embodiment from the scope of claim.
On the latter point, IPS explained that the card slot and the coin slot (both parts of the device itself) cannot be part of the upper portion of the device because the upper portion must be covered by the cover panel. But they also cannot be a part of the lower portion of the device because they are not “receivable within” the housing base as per the district court’s claim construction. Instead, they are accessible through openings in the housing. Thus, either the coin slot and card slot comprise a “middle portion” not defined by the ‘054 claims or the ‘054 specification, or the trial judge’s construction of “receivable within” is too narrow.
DPT replied
- that the plain meaning of “within” is “inside,” and IPS choose not to modify the term with the words “generally” or “substantially”;
- that the trial judge’s claim construction does not actually exclude the preferred embodiment because the coin slot is still inside the housing base; while the coin slot of the preferred embodiment is accessible through an opening in the housing, it does not actually protrude through that opening; and
- that prosecution history estoppel bars IPS from asserting that claim 1 includes parking meter devices that are not entirely contained within a housing.
The CAFC touched on familiar issues, commenting on the trial judge’s approach to claim construction and then addressing the parties’ argument.
The Trial Judge’s Approach:
The trial judge construed the term “receivable within” as “capable of being contained inside,” but upon applying the claim construction in its infringement analysis added a requirement that the “entire” lower portion of the device must be contained within the housing, id. at 8, effectively altering the construction to “capable of being contained entirely inside.”
Dictionaries:
A reasonable meaning of the term “receivable within” in the context of the ’054 patent is “capable of being contained inside.” Receive, The New Oxford American Dictionary (2d ed. 2005) (defining “receive” as “to act as a receptacle for” and “receptacle” as “an object or space used to contain something”).
The suffix “-able” implies that the lower portion of the device is capable of being contained within the housing base. But this definition contains no limitation to “completely” or “entirely” contained, nor is there any evidence that persons of skill in the art would understand it to be so limited. Indeed, Duncan touted its accused meter because it “fits within” existing parking meter housings.
The ‘054 Specification:
The only use of the term “receivable” in the ‘054 specification does not imply any limitation to devices “entirely” contained by the housing (“The parking meter device in accordance with the invention may be receivable in a conventional single space parking meter housing, such as that supplied by Duncan Industries, POM or Mackay.”).
The trial judge’s claim construction did indeed exclude the preferred embodiment. The specification defines the coin slot as a part of the lower portion, even though it is not located “within” the housing base but is instead accessible through an opening. Whether the coin slot “protrudes” or not is beside the point; it is a part of the lower portion of the parking meter device but is not “capable of being contained [entirely] within” the housing base as required by the trial judge’s claim construction.
The ‘054 Prosecution History:
Duncan argued that a narrow construction was warranted by the ‘054 prosecution history because IPS had disavowed parking meter devices not fully enclosed by a housing in its response to an office action. Thus Duncan contended that by differentiating the prior art on the basis that it discloses an embodiment exposed to the elements, rather than one enclosed within a housing, IPS disavowed parking meter devices not entirely enclosed within a housing. IPS’s statements fall far short of a claim scope disavowal. IPS distinguished the cited prior art—an actual parking meter, not an insertable device—on the basis that it discloses a “self-contained unit,” as opposed to the claimed device, which is “a retro-fit upgrade to existing parking meters.”
Conclusion:
Because the CAFC agreed with IPS that the district court’s claim construction of “receivable within” was erroneous, it vacated the trial judge’s grant of summary judgment of non-infringement of the ’054 patent and remanded the case to the trial judge for further proceedings.
Takeaways:
The scope of claims is determined on the basis of how they are written, not as how they might have been written.
Dictionaries are almost always important.
A claim construction that excludes a preferred embodiment in the specification from the claim scope is usually wrong.
Disavowal of claim scope in a prosecution history is rare.
To narrow, or not to narrow a claim without lexicography or disavowal in a patent specification: the U.S. Supreme Court is asked to answer the question.
| December 11, 2018
Cave Consulting Group, LLC v. OptumInsight, Inc., 725 Fed. App’x 988 (Fed. Cir. 2018) (nonprecedential) (Case No. 2017-1060)
March 21, 2018 (Rehearing Denied: August 14, 2018; Petition for A Writ of Certiorari Filed: November 2, 2018)
Before Lourie, Dyk and Taranto, Circuit Judges. Court opinion by Lourie.
Summary
In a nonprecedential opinion, in view of the specification’s consistently limiting description, the Federal Circuit reversed the district court’s claim construction of “weighted episode of care statistics” recited in a disputed independent claim as including direct standardization where some of dependent claims specifically provide that the calculating of weighted episode of care statistics utilizes direct standardization. Accordingly, the Court vacated the judgment of infringement and award of damages because the error in the claim construction is dispositive of the infringement issue based on undisputed facts. A petition for a writ of certiorari has been filed to ask the U.S. Supreme Court if narrowing claims without lexicography or disavowal in a patent specification may be justified.
To read, or not to read an unrecited limitation into a patent claim, that is a question
| July 26, 2018
Blackbird Tech LLC v. ELB Electronics, Inc.
July 16, 2018
Before Prost, Moore and Reyna. Opinion by Moore. Dissenting opinion by Reyna.
Summary
Finding no suggestion in the specification or prosecution history that the disputed unrecited limitation is important in any way that would merit reading it into the patent claim in dispute, the Federal Circuit vacated district court’s entry of judgment of noninfringement based on the contrary claim construction, and remanded the case to the district court for further proceedings. Dissenting opinion expressed totally opposite view on the issue, and affirmed the district court’s judgment.
Newly Adopted Claim Construction Overcomes Anticipation & Obviousness Rejections
| May 2, 2018
Wonderland NurseryGoods Co., Ltd. v. Baby Trend, Inc., Denny Tsai, Betty Tsai
April 19, 2018
Before Moore, Prost & Newman. Opinion by Moore.
Summary:
The CAFC reversed the Board’s findings of anticipation and obviousness due to an erroneous claim construction. The newly adopted claim construction by the CAFC is consistent with the specification and prosecution history. Further, the CAFC held that the references of record did not anticipate nor render obvious the claims in light of the newly adopted claim construction.
要旨:
米国連邦巡回控訴裁判所(cafc)は、米国特許庁審判部のクレーム解釈が誤りであることを認め、誤ったクレーム解釈に基づく新規性ならびに自明性の判断を覆した。cafcが示したクレーム解釈は、当該米国特許の明細書ならびにプロセキューションヒストリに鑑みたものである。再発行特許(リイシュー)の手続き内で行なわれた補正が、権利範囲を拡張するためのものであったのか、あるいは、引例を回避するためのものであったのかが争点となった。
Details:
U.S. Reissued Patent43,919 (hereinafter ‘919) is directed towards “an easy to assemble baby crib in which a fabric member is positioned on a bed frame structure.” Id. at 2. The terms at issue are “a fabric member” and “an enclosure member”.
In two inter partes review (IPR) proceedings, the Board determined that “a fabric member” means “one or more pieces of fabric” and “an enclosure member” means “one or more members.” Id. at 2. In light of this construction, the Board held that the claims of the ‘919 Patent were anticipated U.S. Patent No. 6,004,182 (“Pasin”) and Australian Patent No. 715,883 (“Bidwell”) and would have been rendered obvious by Pasin in view of U.S. Patent No. 7,063,096 (“Stoeckler”), Bidwell in view of Stoeckler; U.S. Patent No. 3,924,280 (“Vaiano”) in view of Pasin and the combination of Vaiano, Pasin and Stoeckler. It is noted that the Board “stated that Vaiano taught ‘a single, continuous member’.” Id. at 3. Wonderland appealed.
“In IPR proceedings, the Board gives claims their broadest reasonable interpretation consistent with the specification. PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 751 (Fed. Cir. 2016).” Id. at 3. The CAFC reversed the Board and held that the Board erred in its constructions of the terms “a fabric member” and “an enclosure member.”
Although the use of the singular articles “a” and “an” often means “one or more” when the transitional phrase “comprising” is used, Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016), in this instance, the Board’s construction is inconsistent with the use of the terms in the claims.
The ordinary language of the claims indicates that a single fabric or enclosure member is capable of separating the interior of the claimed crib from the exterior.
Id. at 3. The CAFC held that “a fabric member” and “an enclosure member” “must be unitary structures able to ‘delineate’ or ‘surround []’ an ‘enclosed space’.” Id. at 4. The CAFC held that their claim construction is consistent with the specification, including preferred embodiments, examples and the drawings. “Although we must be careful not to read limitations from the specification into the claims, the specification’s use of the claim terms in a manner consistent with their use in the claims further supports our conclusion.” (emphasis added) Id. at 4. The CAFC dismissed the Board and Baby Trend’s reliance upon prosecution history to support the original claim construction by noting that claim amendments by Wonderland “were part of a series of changes emphasizing that the ‘fabric/enclosure member surrounds an enclosed space adapted for receiving a baby therein’ J.A. 1853, made in response to the examiner’s citation to a prior art reference directed to chairs.” Id. at 4-5. The CAFC held that the proper construction of “a fabric member’ and ‘an enclosure member’ refer to unitary elements that separate the interior of the claimed crib from the exterior.” Id. at 5.
In light of the newly adopted claim construction, the CAFC held that the “Board’s alternative finding that the claims are unpatentable under the construction we now adopt is not supported by substantial evidence.” Id. at 5. Baby Trend, relying upon the Board’s finding that Vaiano taught a single, continuous member, argued that Vaiano disclosed the claimed features under the newly adopted claim construction. The CAFC disagreed, noting that the citation of Vaiano cited by the Board did not support their position, and that Vaiano merely discloses a netting feature. The CAFC concluded that the disclosure of Vaiano “does not indicate that the netting is a single, continuous member.” Id. at 5. Further, the CAFC dismissed Baby Trend’s argument that Vaiano depicts a continuous, single member because the lines of netting are aligned in one corner, as illustrated in Figure 1, by noting that the lines in the other corners were not aligned. “While it is possible that a single, continuous piece could be used in Vaiano, that is not the question before us. Instead, we ask whether Vaiano discloses a single, continuous piece. Substantial evidence does not support the Board’s finding that it does.” Id. at 6.
Id. at 5. Lastly, the CAFC dismissed Baby Trend’s argument that the Board inherently relied upon their expert testimony regarding the disclosure of Vaiano by noting that merely finding an argument persuasive does not deem said evidence adopted. “When the Board intends to rely on extrinsic evidence, it does so expressly. A single citation to 10 pages in a petition does not incorporate by reference every piece of evidence referenced therein. Similarly, Baby Trend may not rely on statements made by Administrative Patent Judges at the oral hearing that were not included in the Board’s written decisions.” Id. at 6.
Takeaway:
Review claim construction to ensure it is consistent with the specification. The disclosed use of a claim term can affect claim construction.
Carefully review each reference to determine if the Examiner’s understanding is accurate.
The CAFC Finds the Board’s Claim Construction to Be Unreasonably Broad
| April 13, 2018
In re Power Integrations, Inc.
March 19, 2018
Before Moore, Mayer, and Stoll. Opinion by Mayer.
Summary
Power Integrations, Inc. (“Power Integrations”) appeals a remand decision of the Patent Trail and Appeal Board (“Board”) rejecting claims 1, 17, 18 and 19 of US Patent No. 6,249,876 (the ‘876 patent) as anticipated under 35 U.S.C. §102(b). On appeal, the CAFC found the board’s claim construction to be unreasonably broad. Because the Board’s anticipation rejection was based on an unreasonably broad claim construction, the CAFC reversed.
要旨:
連邦巡回控訴裁判所(CAFC)の判決である。先に米国特許庁審判部へ差し戻され、米国特許庁審判部が再度判断を下したその判断の適否が争われた。米国特許庁審判部が広いクレーム解釈に基づいて「新規性なし」と判断した審決をCAFCは覆した。CAFCは、米国特許庁審判部のクレーム解釈はいわゆるBRI(Broadest Reasonable Interpretation)ではなく、Unreasonably(不当)に広いと判断した。そのような不当に広いクレーム解釈に基づいて引例の開示が当てはめられた新規性の判断が覆された。
Tags: 35 U.S.C. §102 > anticipation > broadest reasonable interpretation > claim construction
CAFC looks to complete disclosure of patent at issue and its related patents to counter patent owner’s arguments based on cherry-picking.
| February 8, 2018
Paice LLC v. Ford Motor Company
February 1, 2018
Before Lourie, O’Malley, and Taranto. Opinion by O’Malley
Summary
Due to error in the PTAB’s interpretation of incorporation by reference, the CAFC vacated the PTAB’s obviousness determination with respect to claims that relied on the incorporation by reference for their written description, and found substantial evidence to affirm the PTAB’s findings of obviousness of all other claims.
Tags: claim construction > Incorporation by reference > obviousness > written description
The Board Stretches the Broadest Reasonable Interpretation Standard to Broadest Possible Interpretation
| 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.’”
Statements made in IPR proceeding can be relied on to support a finding of prosecution disclaimer during claim construction
| 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.
The Federal Circuit indirectly imports limitations from the specification into the claims through claim construction
| 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.
Back to Basics: In re Chudik offers a refresher on the law of anticipation for functional limitations
| 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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