Claim Construction
| March 18, 2015
Fenner Investments, LTD., v. Cellco Partnership (doing business as Verizon Wireless)
February 12, 2015
Before: Newman, Schall and Hughes. Opinion by Newman.
Summary
Fenner owns US Patent No. 5,561,706 (the ‘706 patent) directed to a personal communications services (PCS) system that permits users to access a communications network from different locations. The US District Court for the Eastern District of Texas granted summary judgment that Cellco does not infringe claim 1 of the ‘706 patent. Fenner appealed to the CAFC arguing that the district court erred in construing the term “personal identification number” in claim 1. The CAFC affirmed the summary judgment of noninfringement.
A Refined Standard for Appellate Review of Patent Claim Construction: “de novo” on Ultimate Claim Construction with “Clear Error” on Subsidiary Factfindings
| March 10, 2015
Teva Pharmaceuticals USA, Inc., Et Al. v. Sandoz, Inc., et al.
January 20, 2015
Justice Breyer delivered the majority opinion; Justices Thomas and Alito dissented.
Summary
The Supreme Court of the United States held that when reviewing a District Court’s resolution of subsidiary factual matters made in the course of its construction of a patent claim, the Federal Circuit must apply a “clear error,” not a “de novo”, standard of review.
总结
美国最高法院裁定:在审查地方法院的裁定专利权利要求解释时使用的附属事实,美国联邦巡回法院必须使用“明确错误”，而不是“从头”，审查标准。
Tags: claim construction > clear error > de novo > molecular weight > standard of review
CAFC redefines the singular phrase “a patient” as a plural patient population
| November 18, 2014
Braintree Laboratories, Inc. v. Novel Laboratories, Inc.
April 22, 2014
Panel: Dyk, Prost Moore. Majority opinion by Prost. Concurrence by Dyk. Dissent by Moore.
Summary
In this ANDA litigation, the claims recited a composition for purgation of the colon of “a patient”. The majority imported the preamble phrase of “a patient” into the claim, and also interpreted this as not a single patient, but rather a “patient population”. Judge Moore dissented on this point. Additionally, Judge Dyk dissented on the grounds that the majority based its analysis on an accused infringing product different from the subject of the ANDA application, contrary to Hatch-Waxman rules.
CAFC holds “Dolly the Sheep” claims ineligible, but leaves door open to claims reciting clones “markedly different” from nature
| May 21, 2014
In Re Roslin Institute (Edinburgh)
May 8, 2014
Panel: Dyk, Moore, Wallach. Opinion by Dyk.
Summary
Although the method of creating a cloned animal was patent eligible, the CAFC held that claims directed to the clone itself were not patent-eligible. The court further holds that simply because something is made by man is insufficient to render it patent-eligible, absent a showing that the claimed composition is markedly different from that found in nature. Although a cloned animal may have some differences from the DNA donor animal, unless these differences are claimed, the CAFC will not consider them.
The Court Gives Roadmap to Patent Trolls on How to Obtain Lucrative Settlements from Customers without Declaratory Judgment Recourse from Manufacturers.
| April 11, 2014
Microsoft v. DataTern, Inc. and SAP v. DataTern, Inc. (Precedential Opinion).
April 4, 2014
Before Chief Judge Rader, Prost and Moore. Opinion by Moore. Opinion dissenting-in-part by Rader.
Summary
DataTern, Inc., a company established to exploit IP opportunities (aka patent troll), sued hundreds of customers of Microsoft and SAP alleging infringement of its’ patents for a software product that facilitates interfacing of object-oriented applications with relational databases, seeking lucrative settlements from consumers disinterested in combating a full patent lawsuit without suing Microsoft and SAP. Despite DataTern’s effort to avoid litigation with Microsoft and SAP, who as manufacturers of the products were well equipped and interested to seek legal recourse, Microsoft and SAP successfully filed declaratory judgment actions in New York district court and were awarded summary judgments for non-infringement. DataTern appealed to the CAFC. Although the CAFC affirmed the district court’s decision, as explained in the dissenting-in-part opinion of Chief Judge Rader, the CAFC’s opinion “creates a roadmap [for patent troll’s] to avoid declaratory judgment” actions by taking steps to ensure that their claim charts presented to allegedly infringing customers reference only customer activity and not activity of the product manufacturers.
Tags: claim charts > claim construction > contributory infringement > Declaratory judgment > inducement > subject matter jurisdiction
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
Beware of Relying on a Single Example, Since It May Limit Claim Scope
| October 17, 2013
Sunovion Pharmaceuticals, Inc. v. Teva Pharmaceuticals, et al.
September 26, 2013
Panel: Lourie, Schall and Reyna. Opinion by Lourie
Summary
In this case arising from an ANDA, the claims recited the vague term of “essentially free of”, which was undefined by the specification. Although probably never intended to limit the scope of the claims, the CAFC held that the content of the sole substantive example in the specification and a declaration citing this—which was heavily relied upon during prosecution—defined the scope of this ambiguous term. However, the patent owner managed to win the litigation nonetheless, due to the CAFC recognizing the ineffectiveness of an unconventional “certification” of non-infringement to the district court which contradicted the defendant’s FDA filing.
Disavowal of Claim Terms is a Stringent Hurdle to Overcome, which must be “Clear and Unmistakable” Disavowal to Limit the Scope of Claims
| August 14, 2013
Plantronics, Inc. v. Aliph, inc. and Aliphcom, Inc.
July 31, 2013
Panel: Rader, O’Malley and Wallach. Opinion by Wallach.
Summary
This is a patent infringement suit by Plantronics against Aliph. Plantronics is owner of US Patent 5,712,453 (‘453 patent) entitled, “Concha Headset Stabilizer.” This is a concha-type headset to anchor in a user’s ear for use in a telephone receiver.
The district court granted-in-part summary judgment for Aliph, for noninfringement and invalidity. After appeal, the Federal Circuit reversed-in-part, vacated in part and remanded for further proceedings. More specifically, the Federal Circuit reversed the summary judgment of noninfringement and invalidity. The discussion below will focus on the issue of noninfringement.
Tags: claim construction > drawings > prosecution history estoppel > restriction > species
How to claim triangle relationships among three elements to win broader claim construction
| June 19, 2013
Douglas Dynamics LLC v. Buyers Products Co.
May 21, 2013
Panel: Rader, Newman, and Mayer. Opinion by Rader. Dissent by Mayer.
Summary
Connection between two elements is relatively clear and does not cast heavy doubt. Adding another element allows possible variations in connections among three elements and requires deeper thoughts of a claim drafter. In this case, the CAFC reversed the district court’s narrower claim interpretation of “connected to” in light of its ordinary meaning and the usage in the specification. Judge Mayer dissented from the majority’s claim construction. Contexts of a claim are source for supporting specific claim interpretation. A functional limitation supported a favorable interpretation for patentee and saved a problematic structural limitation from a pitfall.
特許クレームは、3つの部品(フレーム)相互の接続関係を“connected to”という用語で定義した。クレームは、最初のフレームが3番目のフレームに直接接続されている態様だけに限定されるべきか、それとも2番目のフレームを介して間接的に接続されている態様も権利範囲に含まれるのかが争点となった。クレーム解釈の技法として、クレーム用語の通常の意味、明細書の実施形態の参酌に加えて、地裁およびCAFCともクレームの文脈に基づいて自身のクレーム解釈を正当化した。しかしながら、両者が認定した文脈には違いが存在する。地裁は構造的な限定に注目して解釈をし、CAFCは機能的な限定に鑑みて理由付けを行った。
Tags: claim construction > claim context > context > superfluous
Limitations describing how an apparatus is made can structurally limit the apparatus
| June 12, 2013
Regents of University of Minnesota v. AGA Medical Corp.
June 3, 2013
Panel: Rader, Wallach, Dyk. Opinion by Dyk.
Summary
Regents of University of Minnesota (“University”) sued AGA Medical for infringement of U.S. Patents 6,077,281 and 6,077,291 directed to medical devices called septal occluders. A claim at issue recites two disks having central membranes, the two disks being “affixed” to each other at the central membranes “to define a conjoint disk.” The accused product was a molded one-piece device. In the district court, the claim was construed as to require that the disks, before being affixed, exist separately as individual disks that are then attached to each other. Since the accused device was a single molded device and was not constructed from two separate disks, the district court entered summary judgment of non-infringement. The CAFC affirmed this construction and the summary judgment of non-infringement.
Another claim at issue was found to be anticipated. The University attempted to use prosecution disclaimer to narrow the claim and avoid anticipation. However, the court rejected the prosecution disclaimer because the prosecution disclaimer was from a parent application and applied to “materially” different claim language.
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