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 Cir. 2018) (nonprecedential) (Case No. 2017-1060)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In a nonprecedential opinion, in view of the specification’s consistently limiting description, the Federal Circuit reversed the district court’s claim construction of “weighted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.
Details
I. Background
- U.S. Patent 7,739,126 (“the ’126 patent”)
Cave Consulting Group, LLC (“Cave”) owns the ’126 patent directed to a method of determining physician efficiency, of which claims 22 and 29 are at issue in the appeal. Claim 22 and some dependent claims recite as follows:
22. A method implemented on a computer system of determining physician efficiency, the method comprising:
obtaining medical claims data stored in a computer readable medium on the computer system;
performing patient analysis using said obtained medical claims data to form episodes of care utilizing the computer system;
performing output process based on performed patient analysis utilizing the computer system, the output process comprising:
assigning episodes of care to physicians; and
applying a first maximum duration rule to identify episodes of care;
assigning at least one physician to a re- port group utilizing the computer system;
determining eligible physicians and episode of care assignments utilizing the computer system;
calculating condition-specific episode of care statistics utilizing the computer system;
calculating weighted episode of care statistics across medical conditions utilizing a predefined set of medical conditions for a specific specialty type utilizing the computer system; and
determining efficiency scores for Physicians from said calculated condition- specific episode of care statistics and said weighted episode of care statistics calculated across medical conditions utilizing the computer system (emphases added).
23. The method in claim 22 wherein: the calculating of weighted episode of care statistics across medical conditions utilizes indirect standardization.
26. The method in claim 22 wherein: the calculating of weighted episode of care statistics across medical conditions utilizes direct standardization.
Claim 29 is directed to a computer program product that performs the same steps recited in claim 22.
It may be notable that claim 26 was not an issue. The claim specifically provides that the claimed method performs direct standardization while it is undisputed that Optum’s method performs direct standardization.
- The District Court Decision
In 2011, Cave sued Ingenix, Inc. (the predecessor of the defendant, OptumInsight, Inc. (“Optum”)), in the Northern District of California, alleging infringement of the ’126 patent.
In 2013, the district court issued a Claim Construction Order construing the “weighted episode of care statistics” recited in claim 22 as “cost or length of care statistics for a group of medical conditions calculated using the relative importance of each condition to the others of the group.” The court rejected to construe the “weighted” feature to exclude direct standardization from the scope of the claim, which would lead to non-infringement (Optum proposed to construe the “weighted” feature as requiring a usage of “predetermined weight factors” rather than the actual episode composition). The court denied Optum’s construction, reasoning that it would “essentially read out the nine dependent claims that rely on direct standardization“(e.g., claim 26, reproduced above). In short, the district court (and Cave) characterized the method in the ’126 patent that employs indirect standardization as merely one embodiment, and construed the “weighted” feature as including direct standardization primarily based on the doctrine of claim differentiation.
In 2015, at the conclusion of the trial, the jury found, inter alia, that the “weighted episode of care statistics” does not violate the written description requirement (under the above construction including direct standardization), that Optum infringed claims 22 and 29, and that Cave is entitled to $12,325,000 in damages.
The district court denied all but part of Cave’s post-trial motion to amend the judgment, awarding prejudgment interest, supplemental damages, and post judgment interest, and concluded that the jury’s infringement verdict was supported by the substantial evidence of Cave’s expert testimony that Optum performed that limitation and that the jury reasonably found that the “weighted” feature construed as covering both direct and indirect standardizations was supported by adequate written description.
Optum timely appealed.
II. The Federal Circuit Decision
- Claim Construction (“weighted episode of care statistics”)
The Federal Circuit agreed with Optum that the district court erred in construing “weighted episode of care statistics” as including direct standardization. Specifically, the Court pointed out that Cave did not identify any indication in the ’126 patent’s description that its invention employs direct standardization, and, that other than the dependent claims, Cave’s support for including direct standardization comes exclusively from the description of the prior art methods in the background section. The Court then found that the ’126 patent repeatedly and consistently describes that the calculation of “weighted episode statistics” according to its method uses indirect standardization. Citing Retractable Techs., 653 F.3d 1296, 1305 (Fed. Cir. 2011) (construing the claim limitation in question to “tether the claims to what the specifications indicate the inventor actually invented”), the Court further noted that the patent’s distinguishing its method with indirect standardization from the purportedly error-generating prior art methods with direct standardization demonstrates that the scope of the “weighted episode statistics” is affirmatively limited to indirect standardization.
In response to Cave’s argument that a disclaimer through a “clear and unmistakable” disavowal is required to be found for Optum’s argument to prevail, the Federal Circuit noted that the case law does not require explicit redefinition or disavowal when the description itself is affirmatively limiting, and concluded that a finding of a disclaimer is not correct when, as here, the description of the invention itself is affirmatively limiting, and is without any indication that direct standardization is within the scope of the invention because that the ’126 patent repeatedly and consistently describes that the calculation of “weighted episode statistics” according to its method uses indirect standardization. In short, the Court construed the “weighted” feature more narrowly than what it appears to be without finding of a disclaimer in the specification.
As for the district court’s reliance on the doctrine of claim differentiation, the Federal Circuit noted that “the doctrine of claim differentiation [is] not absolute,” and stated that the fact that the dependent claims relied upon by Cave (e.g., claim 26) were added after the filing of the original application is significant in this case. The Court then concluded that the doctrine of claim differentiation cannot overcome the claim scope that is unambiguously prescribed by the specification in view of the specification’s consistently limiting description.
- Infringement (Claims 22 and 29)
Noting that it is undisputed that Optum’s method performs direct standardization and that Cave does not argue that any factual dispute remains if “weighted episode of care statistics” is interpreted to exclude direct standardization, the Federal Circuit concluded that the infringement verdict cannot stand as a matter of law because no reasonable jury could find that Optum infringes claims 22 and 29 of the ’126 patent under the correct construction of the “weighted” feature that excludes direct standardization.
- Conclusion
In conclusion, the Federal Circuit reversed the district court’s claim construction, vacated the jury verdict to the extent that it was based on the district court’s incorrect claim construction, and 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.
III. Certiorari Petition
On November 2, 2018, Cave filed a petition for a writ of certiorari. The issue presented in the petition is: “May a court construe a patent claim in a way that contradicts its plain and ordinary meaning by relying on statements in the specification that do not constitute lexicography or disavowal?”
Cave observes that while the Federal Circuit attempted to resolve the significant uncertainty surrounding the proper approach to claim construction in Phillips, 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the decision “offered a little something for both camps:” the primacy of the claims and the importance of the specification in the claim construction process. Cave then states, “the cases before and after Phillips consistently evidence this marked split at the Federal Circuit and the need for the U.S. Supreme Court to establish certainty as to whether and how the specification serves to limit the scope of the claims during claim construction.” Cave argues that the use of the specification to limit claim scope without requiring explicit redefinition or disavowal is impossible to reconcile with the actual claim language—expressly covering direct standardization, and prompts the U.S. Supreme Court to pick the case for more stability and predictability of claim construction.
Takeaway
- Some judges may narrow claim scope over presumption of claim differentiation and without presence of explicit lexicography or disavowal in a patent specification if the description itself is found to be affirmatively limiting. The affirmative limit may be found in a situation where the specification repeatedly and consistently describes that a certain limitation unrecited in a claim is relevant to the disputed term recited in the claim.
