A Year in
Review
Federal Circuit 2004-
2005
June/July 2004 – June/July
2005
Gale R. Peterson
Cox Smith Matthews
San Antonio, Texas
IPO Annual Meeting
September 11-13, 2005, Seattle, Washington
Novelty and the Loss of Right
to a Patent - § 102
Highlights
– Increased emphasis on claim construction
– Disagreements re inherency resolved
– Continuing struggle w/ “on sale” and “in
public use” issues
2
Claim Construction-Anticipation
More than 9 new cases
Unitherm Food Sys. v. Swift-Eckrich, Inc., 340
F.3d 1314 (Fed. Cir. 2004)(J. Bryson – JJ. Lourie and
Rader) – p. 6
In re Crish, 393 F.3d 1253 (Fed. Cir. 2004) (J.
Lourie – Circuit Judge Mayer, J. Dyk) – p. 8
Alza v. Mylan Labs., 391 F.3d 1365 (Fed. Cir.
2004)(SJ. Archer – J. Newman – concurring-in-part,
dissenting-in-part J. Dyk) – p. 9
Medrad, Inc. v. MRI Devices Corp., 401 F.3d
1313 (Fed. Cir. 2005)(J. Bryson – SJ. Friedman and
J. Radar) – p. 12
3
Claim Construction-Anticipation
More than 9 new cases
Sentry Protective Products, Inc. v. Eagle Manufacturing
Co., 400 F.3d 910 (Fed. Cir. 2005) - J. Prost – JJ. Lourie and
Schall p. 14
MercExchange, L.L.C. v. eBay, Inc., 401 F.3d 1323 (Fed.
Cir. 2005) – J. Bryson - CJ Michel, J. Clevenger – p. 16
ArthroCare Corp. v. Smith & Nephew, Inc., 406 F.3d 1365
(Fed. Cir. 2005) J. Bryson – JJ. Mayer and Lourie – p. 17
Prima Tek II, L.L.C. v. Polypap, S.A.R.L. (Prima Tek -2),
___ F.3d ____ (Fed. Cir. 2005) – J. Dyk – J. Gajarsa, SCJ.
Plager p. 18
Northpoint Tech., Ltd. v. MDS-Am., Inc., ___ F.3d ___
(Fed. Cir. 2005)(J. Bryson – J. Schall, concurring-in-part,
dissenting-in-part J. Dyk) – p. 22 4
Claim Construction-Anticipation
Unitherm Food Sys. v. Swift-Eckrich, Inc.,
340 F.3d 1314 ( Fed. Cir. 2004)(J. Bryson – JJ. Lourie and Rader) – p. 6
Numeric Ranges - Not Read Into Claims
Evid - Accused Inf‟r – Prior “In Public Use”
− Method - browning of pre-cooked meat
− ConAgra - ltr to industry – will enforce patent
− Unitherm – d/j – invalid & Walker-Process Sherman 2
− Process - invented & demonstrated to ConAgra 1 yr after US clinical trials
SK – “experimental testing”
Fed Cir – NO
– Everybody – petitions for rehearing & rehearing en banc 15
Anticipation - Shown Through
Inherency
SmithKline III - Cont’d
– Fed Cir (Second Opinion) – inherent anticipation by
„196 patent under Schering rationale
– Problems
D Ct – rejected inherent anticipation – Apotex did not
appeal
SKB – pet re‟hrg – did not use „196 process – cannot be
inherent anticipation
Pet re‟hrg & re‟hrg en banc denied
− Judge Gajarsa concurring
− B/C claim to cmpd – invalid under § 101 as naturally
occurring. 16
Anticipation - Anticipation of Quantitative
Claim Terms Cannot Be Shown by Relying on
Prior Art Patent Drawings Alone
Nystrom v. TREX Co.,
Inc., 374 F.3d 1105 (Fed. Cir.
2004)(J. Linn - CJ Mayer & J. Gajarsa) -
p. 37
Claim: “defining a difference in thickness between the
longitudinal centerline and the opposite side edges, with the ratio
of said difference in thickness to the width of the board being
about 1:40”
17
Anticipation
Nystrom v. TREX Co.- Cont’d
– TREX – invalid – computer modeling p/a dwg
– D Ct – s/j – invalid
– Fed Cir - REV‟D
– “Under the principles set forth in our prior
cases, the speculative modeling premised on
unstated assumptions in prior art patent
drawings cannot be the basis for challenging
the validity of claims reciting specific
dimensions not disclosed directly in such prior
art.”
18
Anticipation - Summary Judgment is Not
Appropriate Where the Opposing Party Offers Specific
Facts That Call into Question the Credibility of the
Movant’s Witnesses
TypeRight Keyboard Corp. v. Microsoft Corp.,
374 F.3d 1151 (Fed. Cir. 2004)(JJ. Dyke - Lourie and Shall) - p. 40
– TypeRight – owner 2 patents – V-shaped keybrds – critical date =
2/21/90
– MS – invalid – “Marquardt” doc – undated – showed unlabeled pix of
V-shaped keybrds
– Fed Cir – MS - “several consultants who were paid for the time they
spent testifying.”
– Dr. Cakir – fd doc in his “file from 1990” – but thought he had rec‟d
doc at trade show in 1986
– Dr. Hirsch – recalled seeing “similar” pix in 1986
– No one ever contacted Marquardt GmbH
– Fed Cir – “summary judgment is not appropriate where the opposing
party offers specific facts that call into question the credibility of the
19
movant‟s witnesses.”
Anticipation - Testimony
Schumer v. Lab. Computer Sys., Inc. (2002)
Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381
F.3d 1142 (Fed. Cir. 2004)(J. Gajarsa – JJ. Bryson and Dyk) - p. 42
Testimony Concerning Anticipation Must (1) Be From One Skilled in
the Art, (2) Identify Each Claim Element, (3) State the Witnesses‟
Interpretation of the Claim Element, and (4) Explain in Detail How
Each Claim element is Disclosed in the Prior Art
– Turn-Key‟s patent – “cross-laminating” layers of plastic
– Koito – d/j – invalid – jury agreed
– Turn-Key – JMOL
– D Ct – DENIED – relied on single p/a ref Koito introduced
into evid but w/o testimony
– Fed Cir – ERROR – In order to prove anticipation –
testimony of the type described in Schumer is req‟d
20
Anticipation – Enabling Disclosure
In re Elsner, 381 F.3d 1125 (Fed. Cir. 2004)(JJ. Lourie - Clevenger
and Bryson)(companion case w/ similar facts) – p. 43
Evidence of a Foreign Sale of a Claimed Reproducible Plant Variety May
Enable an Otherwise Non-Enabled Printed Publication Disclosing That
Plant and Thereby Creating a § 102(b) Bar
– Elsner – plant breeder – Germany – new geranium – “Pendec”
– 1997 – filed Community Plant Variety Rts cert. in Germany
– Published w/ name & address of breeder
– 1998 – Pendec sold in Germany
– 1999 – Elsner w/drew application
– 2000 – filed plant patent appl. in U.S.
– PTO – rej‟d – CPVO pub and sale placed skilled artisan in possession
of the invention
– LeGrice – CCPA – 1962 - § 162 – plant patent appl‟s need not
comply w/ § 112 – BUT reference must be “enabling”
21
Anticipation – Enabling Disclosure
In re Elsner – Cont’d
– PTO – LeGrice – did not decide - foreign sale could enable
– Fed Cir – agreed – issue – “whether evidence of the foreign sale of a
claimed reproducible plant variety may enable an otherwise non-
enabled printed publication disclosing that plant, thereby creating a §
102(b) bar.” – YES
– Fed Cir – “When a publication identifies the plant that is invented or
discovered and a foreign sale occurs that puts one of ordinary skill in
the art in possession of the plant itself, which, based on the level of
ordinary skill in the art, permits asexual reproduction without undue
experimentation, that combination of facts and events so directly
conveys the essential knowledge of the invention that the sale
combines with the publication to erect a statutory bar. “
22
Anticipation – Enabling Disclosure
In re Elsner – Cont’d
– REMANDED – to consider “how readily one skilled in the
art could have learned of the foreign sales from the
printed PBR applications.”
– “[i]t is unclear * * * whether a skilled artisan would have
known of the foreign sales. The foreign sale must not be
an obscure, solitary occurrence that would go unnoticed
by those skilled in the art. Its availability must have been
known in the art, just as a printed publication must be
publicly available.”
23
Anticipation – Rule 105
Star Fruits v. United States., 343 F.3d 1277 (Fed.
Cir. 2005)(J. Clevenger – J. Dyk, dissenting J. Newman) – p. 49
Failure to Respond to a Request for
Information Under Rule 105 May Lead to
Abandonment of the Application – Rule 105 is
Enforceable
– Rule 105 ex‟r may “require” submission of “information as
may be reasonably necessary to properly examine or
treat the matter”
– Peach tree
– Ex‟r – Any info re sale/public distribution of plant variety
anywhere in the world
– Star Fruits – ref‟d – Rule 56
– PTO - abnd 24
– Fed Cir – Aff‟d abandonment
Anticipation – Enabling Disclosure
Rasmusson v. SmithKline Beecham Corp.,
___ F.3d ___ (Fed. Cir. 2004)(J. Bryson – SJ. Plager and J.
Prost) – p. 56
A Reference Must Be “Enabling” to Anticipate, But That is
Different from the Enablement Requirement of § 112(1)
– Method treating prostate cancer - finasteride
– Bd - publ‟d app could not anticipate b/c app failed to
demonstrate finasteride effective in treating prostate cancer,
plus app provided no reasonable expectation of success
– Fed. Cir. – REV‟D & REMANDED – “the standard for * * *
proper enablement of a prior art reference for * * * anticipation
under section 102 * * * differs from the enablement standard
under section 112.” “[P]rior art reference need not
demonstrate utility in order to serve as an anticipating
reference under section 102.” 25
Loss of Rights - § 102(b) – Patented or
Described in a Printed Publication - Public
Accessibility
In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004)(J. Prost, JJ
Michel and Schall) – p. 67
Poster Presentation May Qualify as a “Printed Pub”
– Method - preparing food using extruded soy fiber
– Fed Cir – Factors - poster presentation = printed pub:
the length of time the display was exhibited,
the expertise of the target audience,
the existence (or lack thereof) of reasonable expectations
that the material displayed would not be copied, and
the simplicity or ease with which the material displayed
could have been copied.
– Fed Cir – key ? Is whether ref is “publicly available”
– 14 slides displayed on poster for 2 ½ days – publicly
available 26
Loss of Rights - § 102(b) – “On Sale”
UMC Electronics Co. v. United States, 816 F.2d 647
(Fed. Cir. 1987) – ARTP not a prerequisite
Pfaff v. Wells Electronics, 525 U.S. 55 (1998) (1) “First,
the product must be the subject of a commercial offer for sale”
and (2) “Second, the invention must be ready for patenting.”
Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d
1041 (Fed. Cir. 2001) – (1) “a commercial offer for sale” requires
an offer that meets the level of an offer for sale in the contract
sense, (2) decided per Federal Circuit law – will look to UCC,
Restatement (2d) of Contracts, among other sources
Linear Technology Corp. v. Micrel, Inc., 275 F.3d
1040 (Fed. Cir. 2001) – UCC varies – will look for “common
denominator”
27
Loss of Rights - § 102(b) – “On Sale”
Sparton Corp. v. United States, 399 F.3d 1324 (Fed.
Cir. 2005)(SJ. Archer - CJ. Michel and J. Schall) – p. 74
With No Conception of an Invention, There Cannot Be
An Offer for Sale or Sale of That Invention
– Alleged sale - 1971 ECP to Navy - dual depth - sonobuoys
– ECP did not propose patented invention
– Invention later developed – included in actual buoys
– Gov‟t & Claims Ct – U.C.C. § 2-106, 2-311 – Sparton could
substitute “conforming goods” – therefore sale.
– FED CIR – “[u]nder the Claims Court‟s analysis, the patented
single part release plate was the subject of an offer for sale
before it was even conceived. Such a result is illogical.”
28
Loss of Rights - § 102(b) – “On Sale”
“in public use” and “on sale” bars – diff rationales
“experimental use” – negation of “in public use”
EZ Dock, Inc. v. Schafer Systems, Inc., 276 F.3d
1347, 61 USPQ2d 1289 (Fed. Cir. 2002) – J. Rader, CJ Mayer,
“additional views” J. Linn –
“the question posed by the experimental use doctrine,
assessed under the first prong of the two-part on-sale
bar test *** is *** whether the primary purpose of
the inventor at the time of the sale, as determined
from an objective evaluation of the facts surrounding
the transaction, was to conduct experimentation.”
Suggests 13 factors - Baker Oil Tools - 1987
29
Loss of Rights - § 102(b) – “On Sale”
Allen Engineering Corp. v. Bartell Industries,
Inc., 299 F.3d 1336 (Fed. Cir. 2002) – J. Linn, JJ. Gajarsa and Prost
– First prong Pfaff analysis -
– Whether product was “(1) the subject of a
commercial offer for sale not primarily for purposes
of experimentation * * *.”
– Instructions to D. Ct. –
– Must determine “whether a commercial offer for
sale has occurred, applying traditional contract law
principles,” and also “whether the circumstances
surrounding the transaction show that the
transaction was not primarily for purposes of
experimentation.”
– Use 13 factors - EZ Dock 30
Loss of Rights - § 102(b) – “On Sale”
- Customer Awareness and Control by the Inventor
Are Critical to a Finding of Experimental Negation
of “on sale” Activity: Analysis is First to
Determine Whether Any Pre-Critical Date “Sales”
As Contemplated by § 102(b) Were Made and Then
to Determine Whether Such “Sales” Were
“Negated” By Experimentation
Electromotive Division of General Motors Corp.
v. Transportation Systems Division of General
Electric Co., ___ F.3d ____, ____ USPQ2d ____ (Fed. Cir.
2005) – C.J. Michel, SCJ Plager, J. Linn – NEW
– Bearings – locomotive turbochargers
– EMD – in-house testing & field durability testing 31
– Substituted bearings – preordered locomotives
Obviousness - § 103 – Claim
Construction
Merck & Co. v. Teva Pharms., 395 F.3d 1364 (Fed. Cir. 2005)(J.
Gajarsa – J. Prost, dissenting J. Radar) – p. 90
The Term “about” Means “approximately”: When a Patentee
Redefines a Term in the Specification, He Must Clearly do so:
Circuit Judge Rader Dissenting – Court has a Truth in Advertising
Problem
– Cmpds – treat osteoporosis – but adverse gastrointestinal side
effects – administered in small daily doses
– Invention - Once weekly – higher doses
– Claim - “about” 70/35 mg once weekly
– Spec – defined “about” – equivalent to 70 or 35 mg
– P/a - intermittent treatment program & once weekly dosage
schedule of 40mg OR 80mg
– D. Ct. - “about” means exactly 70/35 mg - not obvious
– Fed. Cir. REV‟D – “about” means “approximately”
– J. Radar – spec defined “about”
32
Obviousness
In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004) (J.
Rader – J. Schall, dissent by J. Newman) – p. 94
Claims Are Given Their Broadest Reasonable
Interpretation During Ex Parte Prosecution -
“Hair Brush” Not Limited to One For
Brushing Scalp Hair
– Claims – “hair brush”
– P/A – toothbrushes
– Fed. Cir. majority – tooth brushes could be
used for brushing hair, ie, facial hair
– J. Newman dissented noting a “brush for
hair has no more relation to a brush for
teeth than does hair resemble teeth”
33
Obviousness – Range Cases
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317 (Fed. Cir.
2004)(J. Dyk – J. Newman and SJ. Archer) – p. 103
Where There is a Range Disclosed in the Prior Art, and the Claimed
Invention Falls Within That Range, There is a Presumption of
Obviousness
– Invention – plate w/ 3 handle openings
Patent-in-Suit – Three-Grip Plate weight
– p/a – weight plates w/ 1, 2 and 4 grips
– Fed Cir – “where there is a range disclosed in the p/a, and the claimed
invention falls within that range, there is a presumption of obviousness” that
may rebutted by showing (1) teaching away, or (2) unexpected results.
Invention Prior art
34
Obviousness – Range Cases
In re Harris, ____ F.3d ____ (Fed. Cir. 2005)(J. Rader – J. Clevenger
and SJ. Friedman) – p. 111
Where Claimed Range Is Completely Covered by P/A, Prima
Facie Obvious Even More Compelling
– Nickel-based superalloy for turbine engine blades – 12
elements
– P/A – Overlapped all 12 elements – completely overlapped 11
elements
– No teaching away – No unexpected results
– PTO rejection – AFF‟D
– Fed. Cir. “[w]here the „claimed ranges are completely
encompassed by the prior art, the conclusion [that the claims
are prima facie obvious] is even more compelling than in
cases of mere overlap.‟ ”
35
Obviousness
Commercial Success
Merck & Co. v. Teva Pharms., Inc., 395 F.3d
1364 (Fed. Cir. 2005)(J. Gajarsa - J. Prost, dissenting J. Rader) – p.
115
Commercial Success is Not a Factor Where Market
Entry by Others is Barred by FDA – Developing Split
– Method – treating osteporosis – administering once-weekly
doses cmpd
– Teva – obvious – Lunar News articles suggesting once-
weekly doses close to claimed doses
– Fed Cir – “about” means “approximately” – invalid
– D Ct – Evid of commercial success
– Fed Cir majority – Not a factor
– Merck had another patent that precluded practicing the
Lunar News method & FDA procedure gave Merck exclusive
rts. 36
Obviousness
Commercial Success
Merck & Co. v. Teva Pharms., Inc. –
Cont’d
− “Financial success is not significantly probative of that
question [obviousness] in this case because others were
legally barred from commercially testing the Lunar News
ideas.”
– “[b]ecause market entry by others was precluded on those
bases, the inference of non-obviousness of weekly-dosing,
from evidence of commercial success, is weak. Although
commercial success may have probative value for finding
non-obviousness of Merck‟s weekly-dosing regimen in some
context, it is not enough to show the claims at bar are
patentably distinct from the weekly-dosing ideas in the Lunar
News articles.”
37
Obviousness
Commercial Success
Merck & Co. v. Teva Pharms., Inc. –
Cont’d
– Denied petitions for re‟hrng & re‟hring en banc
– J. Lourie dissented – joined by J. Newman & C.J.
Michel
– J. Lourie – “[c]ommercial success is a fact
question, and, once it is established, as found here
by the trial court, the only other question is
whether the success is attributable to the claimed
invention („nexus‟), rather than to other factors
such as market power, advertising, demand for all
products of a given type, a rising economy that
„lifts all boats,‟ etc.”
38
Obviousness
Commercial Success
Syntex (U.S.A.) LLC v. Apotex, 407 F.3d 1371
(Fed. Cir. 2005)(J. Gajarsa - J. Clevenger, concurring J. Prost) – 118
Evidence of Commercial Success is a Weak Factor
Where Market Entry by Others is Barred by Other
Patents: Disagreement Between Examiners May Be
Evidence of Obviousness
– Ophthalmic formulation – non-steriodal anti-inflammatory drug
+ preservative + surfactant (octoxynol 40 – known, but not in
ophthalmic formulations)
– Problem – preservatives didn‟t mix well w/ NASIDs
– Surfactant – used to make insoluble chems soluble
– Parent – rej‟d – art taught NASIDs + preservative + surfactant
(but not octoxynol 40)
– Syntex – declaration – unexpected results
– Ex‟r not persuaded 39
Obviousness
Commercial Success
Syntex (U.S.A.) LLC v. Apotex – Cont’d
– Continuation – new ex‟r
– Same rejection
– Syntex – had shown in parent – unexpected results
– Ex‟r allowed
– Fed Cir – inconsistency between ex‟rs significant
– Apotex – ANDA
– D Ct – infringed & not invalid
– Fed Cir – REV‟D – D Ct had not properly considered evid of
obviousness – especially views of first ex‟r
– Com‟l success – D Ct should re-evaluate in view of Merck –
“Assuming that the active ingredient in the formulation was
previously patented, the com‟l success of ACULAR may heavily
derive from subject matter that does not on the whole 40
contribute to the patentable distinctiveness of these claims.”
Enablement-Written Description-
Best Mode
Highlights
– Divisions within court on the test for
compliance with the written description
requirement
– Best mode analysis tied to claimed
invention
41
Enablement-Written Description-Best Mode
Written Description
Test for Compliance
– Vas-Cath, Inc. v. Mahurkar (1991)
“Although the applicant does not have to describe
exactly the subject matter claimed, the description
must clearly allow persons of ordinary skill in the art
to recognize that he or she invented what is claimed.
The test for sufficiency of support * * * is whether
the disclosure of the application reasonably conveys
to the artisan that the inventor had possession at that
time of the later claimed matter.”
– “Possession of the invention” currently under attack by
some on the court.
42
Enablement-Written Description-Best Mode
Written Description
Test for Compliance
– Regents v. Eli Lilly (1997)(J. Lourie – JJ. Newman
& Bryson)
Gene material identified only by a statement of
function or result did not adequately describe
the claimed invention
Written description of genetic material “requires
a precise definition, such as by structure,
formula, chemical name, or physical properties.”
43
Enablement-Written Description-Best Mode
Written Description
In re Wallach, 378 F.3d 1330 (Fed. Cir. 2004)(J. Lourie - JJ Mayer and
Gajarsa) – 130
Failure to Disclose Less Than a Complete DNA Sequence May Not
Satisfy the Written Description Requirement
– Discovery – 2 specific proteins isolated from human urine selectively
inhibited cytotoxic effect of tumor necrosis factor- TBP-I and TBP-II
– Disclosed – partial DNA sequences + molecular weight
– Claimed – DNA molecules encoding those proteins
– Brd – insufficient written description
– Fed Cir – Aff‟d – “Appellants concede that it is now known that
urinary TBP-II has a sequence of 185-192 amino acids. Without the
approximately 95% of the amino acid sequence that Appellants did
not disclose, we cannot say that the DNA molecules claimed in the
„129 application have been described.”
– Fed Cir - “[u]ntil Appellants obtained the complete amino acid
sequence of TBP-II, they had no more than a wish to know the 44
identity of the DNA encoding it.”
Enablement-Written Description-Best Mode
Written Description
Capon v. Eshhar, ___ F.3d ____ (Fed. Cir. 2005) –
J. Newman, JJ. Mayer and Gajarsa - New
Whether the Written Description Requirement
is Satisfied Must Take Into Account the State
of Scientific Knowledge
patent-application interference
chimeric gene - combined DNA segments -
enhanced immune response
Brd – w/o complete sequence – Lilly et al. – no
written description support
Fed Cir – Rev‟d – depends on tech.
45
Enablement-Written Description-Best Mode
Written Description
Northpoint Tech., Inc. v. MDS-America, Inc., ___ F.3d
___ (Fed. Cir. 2005)(J. Bryson – J. Schall, concurring-in-part, dissenting-
in-part J. Dyk) – 137
Expert Testimony That “Elaborate Measures,” Not Described in
the Patent, Were Required to Make the Claimed Invention Work
Supports Conclusion That Claims are Invalid Due to Lack of
Enabling Support
– Method and apparatus for transmitting terrestrial signals on a
common frequency with satellite transmissions
– Jury - MDS infringed, but claims invalid as anticipated and non
enabled
– Panel AFF‟D – expert testimony
– J. Dyk – dissenting – experimentation not “undue”
46
Enablement-Written Description-Best Mode
Best Mode
Best Mode
– Unintentional omission of information
known in the art is not deliberate
concealment
– Best Mode – analyzed in terms of
claimed invention
47
Enablement-Written Description-Best Mode
Best Mode
The Best Mode Requirement Is Not
Violated by Unintentional Omission of
Information That Would be Readily
Known to Persons in the Field of the
Invention
– High Concrete Structures
v. New Enterprise, 377 F.3d
1379 (Fed. Cir. 2004)(J. Newman - CJ.
Mayer and J. Clevenger) – p. 142
Tilt carrying heavy concrete
structures
Spec – can be rotated manually
Inventors – depo – helps to use
a crane
No concealment of best mode 48
Enablement-Written Description-Best Mode
Best Mode
Cardiac Pacemakers v. St. Jude, 381 F.3d 1374
(Fed. Cir. 2004)(J. Newman – SJ. Friedman and J. Rader) – p. 143
The Best Mode Requirement Relates to Invention
Disclosed and Claimed
– Implantable cardiac defibrillators – could detect type of
arrhythmia
– Asked Honeywell to develop new battery – it did
– Battery not disclosed or claimed – other batteries could be
used
– Persons knowledgeable in the field would know where to
get batteries
49
Particularly Point Out and Distinctly Claim
What the Applicant Regards as His
Invention
§ 112(2) – Particularly Point Out and
Distinctly Claim
– Judged from perspective of one of
ordinary skill in the art
– Not invalid unless insolubly ambiguous
50
Particularly Point Out and Distinctly Claim
What the Applicant Regards as His Invention
Bancorp v. Hartford Life, 359 F.3d 1367 (Fed. Cir.
2004)(J. Bryson – JJ. Rader and Prost) – p. 146
If Claim is Not Insolubly Ambiguous, It is Not
Invalid for Indefiniteness
– System for tracking value of life insurance policies in separate
accounts
– “surrender value protected investment credits” – not defined
in patent & not a term of art
– D Ct – invalid – indefinite
– Fed. Cir. – REV‟D – “components of the term have well-
recognized meanings, which allow the reader to infer the
meaning of the entire phrase with reasonable confidence.”
51
Particularly Point Out and Distinctly Claim
What the Applicant Regards as His Invention
Howmedica Osteonics Corp. v.
Tranquil Prospects, Ltd., 401 F.3d 1367
(Fed. Cir. 2005)(J. Rader - JJ. Dyk and Prost) – p. 147
A Claim is Definite if Its Legal Scope is Clear Enough
That a Person of Ordinary Skill in The Art Could
Determine Whether a Particular Product or Process
Infringes or Not
– intramedullary prosthesis and method of implanting –
hip joint
– Claim – 70% of “transverse sectional dimensions” of
long bone
– ? “dimensions” refer to 1-D or 2-D
– D Ct – indefinite Fed Cir – REV‟D – one of ordinary skill
in the art would understand from spec that
“dimensions” referred to 2-D
52
Particularly Point Out and Distinctly Claim
What the Applicant Regards as His Invention
Marley Mouldings Ltd. v. Mikron Indus., Inc., ___
F.3d ____ (Fed. Cir. 2005) J. Newman – JJ. Schall and Dyk
Claims Are Not Indefinite Even Though Tests Do Not
Definitively Show Infringement or Non-Infringement
– Composite frame molding
– Claims – wood flour – “in parts (volume)”
– Equations – relating weigh & volume – depends on density
– Marley – inf – tests using lowest density spec sheet range
– Mikron – non-inf – tests using avg density
– Fed Cir – not indefinite – not insolubly ambiguous
53
Particularly Point Out and Distinctly Claim
What the Applicant Regards as His Invention
Datamize, L.L.C. v. Plumtree Software, Inc., ___ F.3d
____ (Fed. Cir. 2005) J. Prost, JJ. Clevenger and Bryson - NEW
“aesthetically pleasing” Renders Claims Indefinite:
Some Objective Standard Must Appear in the Claims,
Specification or Prosecution History
– software - authoring user interfaces - electronic kiosks
– Claims – “aesthetically pleasing look and feel for said interface
screens”
– Fed Cir – indefinite - “[s]imply put, the definition of
„aesthetically pleasing‟ cannot depend on an undefined
standard.”
– Look to claims – spec – prosecution history
54
Inventorship
Eli Lilly v. Aradigm, 376 F.3d 1352 (Fed. Cir. 2004)(J. Clevenger –
J. Gajarsa, concurring J. Lourie) – p. 153
One Claiming To Have Been Improperly Omitted As A Joint
Inventor Must Show A Contribution To Conception Of The
Claimed Invention, And That Showing Must Meet A “Clear And
Convincing” Level Of Proof
− Methods of aerosolized administration of insulin analogs
− Fed. Cir. – pty claiming nonjoinder/misjoinder must meet
heavy burden by “clear and convincing evidence” and “must
provide evidence to corroborate the alleged joint inventor‟s
conception * * *.”
Caterpillar, Inc. v. Sturman Indus., Inc., 387 F.3d 1358
(Fed. Cir. 2005)(J. Prost – JJ. Newman and Dyk) – p. 155
There Is a Presumption That Patents Name Correct Inventors
55
Legal Ethics & Inequitable Conduct
WATCH OUT FOR
– Changing standard of materiality
56
Legal Ethics & Inequitable Conduct
The Elements
– Materiality
– Intent
57
Legal Ethics & Inequitable Conduct
Materiality – Evolving Standard
– Pre-1977 – ‟74 OG Guidelines – Rule 56 (appl. stricken if “fraud”) –
Case law (generally related to patentability)
– 1977 – “reasonable examiner” standard paraphrased from SEC
disclosure standard for unsophisticated investors
– 1982 – Claims may be rejected – appeal to Brd
– 1983 – Renamed “P/A Statement” to “IDS”
– 1987 – AIPLA “Blue Ribbon” Committee
– 1988 – PTO Proposed Rule 57 – “but for” standard
– 1988 – Kingsdown & Harita – PTO disbands “fraud squad” – will not
investigate or reject
– 1989 – Revised Rule 57 proposed – Comm‟r Quigg resigns
– 1990 – Comm‟r Manbeck formally w/draws Rule 57
– 1991 – Draft “new” Rule 56 announced
– 1992 – “New” Rule 56 eff. March 16, 1992
– 2000 – Duty to disclose “new” art in CIP 58
Legal Ethics & Inequitable Conduct
“New” Rule 56
– Applies to applications & reexams pending & filed aft. 3/16/92
– Duty of disclosure applies to pending claims
– Duty satisfied if material art is cited by PTO or submitted to PTO
– Materiality
Cumulative art not material
Prima Facie Standard
– Claim not patentable
– Refutes/inconsistent w/ argument or position
Preponderance of the evidence standard
Terms given broadest reasonable construction
Before considering contrary evidence
January 11, 2005 - CAFC panel adopts “new” Rule 56
Does not reconcile prior cases “strongly suggesting”
to
materiality standard of “new” Rule 56 does not apply 59
IE
Legal Ethics & Inequitable Conduct
J.P. Stevens I (1984)
– Inequitable conduct requires clear & convincing proof
– Non-disclosed or false info must meet a “threshold”
degree of materiality
Hoffman-La Roche (2003)
– Interpreted “New” Rule 56 as not a significant break
in the previous “reasonable examiner” standard
Dayco Products II (2003)
– Final disposition the same under either materiality
standard - pass on disposing of the issue – but also
suggests “new” Rule 56 is not the standard 60
Inequitable Conduct
Which Standard Controls?
Bruno Indep. Living Aids, Inc. v. Acorn Mobility Servs.
Ltd., 394 F.3d 1348 (Fed. Cir. 2005)(J. Lourie – JJ. Gajarsa and Linn) –
p. 160
A Panel of the Court Adopts the “Materiality” Standard of “New”
Rule 56
– Stairlift
– P/A – Wecolator – similar stairlift mf‟d by 3/P
– Urged stairlift was “Substantial Equivalent” to Wecolator when
seeking FDA approval
– Did not disclose Wecolator to PTO
– D. Ct. invalid for IE – case “exceptional” for atty fees
– Fed. Cir. – AFF‟D – Adopted “new” Rule 56 - Bruno knew or should
have known of materiality
– If Wecolator had been disclosed, Bruno could not have made
argument during prosecution
61
Inequitable Conduct
Purdue Pharma L.P. v. Endo Pharms., Inc., 394 F.3d 1348
(Fed. Cir. 2005)(SJ. Plager – JJ. Gajarsa and Linn) – p. 168
Repeated Assertions of a “Surprising Discovery” May Constitute
Inequitable Conduct When Not Based on Scientific Proof
– Controlled release of oxycodone formulations
– Purdue relied on “surprising discovery” to overcome §103 rejections
– Inventor testified it was “insight,” rather than scientific proof, that
formed basis of assertion
– D. Ct. – p-i-s infringed, but unenforceable due to inequitable conduct
– Fed. Cir. – absent statement re origin of “surprising discovery,”
arguments enough of a “suggestion that clinical trials had been
performed * * *.”
– Fed. Cir. - “Purdue made a deliberate decision to withhold and thus
misrepresent the origin of its „discovery‟ to the PTO.”
– AFF‟D
62
Inequitable Conduct
Intent
Bruno Indep. Living Aids, Inc. v. Acorn
Mobility Servs. Ltd., 394 F.3d 1348 (Fed. Cir.
2005)(J. Lourie – JJ. Gajarsa and Linn) – p. 171
Inferred – Failure to Provide a Good Faith
Reason for Nondisclosure May lead to an
Inference of Intent to Deceive
– Fed. Cir. – “Intent need not, and rarely can, be
proven by direct evidence.”
– “Rather, in the absence of a credible explanation,
intent to deceive is generally inferred from the facts
and circumstances surrounding a knowing failure to
disclose material information.”
63
Inequitable Conduct
Intent
Frazier v. Roessel Cine Photo Tech, Inc., ___ F.3d
____ (Fed. Cir. 2005) J. Linn – J. Dyk, concurring-in-part and
dissenting-in-part J. Bryson - NEW
Inferred – Allowing a Video to be Submitted to the
PTO in Order to Represent the Capabilities of a Lens,
Knowing That The Video Was Shot With a Different
Lens is Sufficient to Infer Intent to Deceive
– D Ct – Frazier – not credible – changed story
– Fed Cir “[t]he district court‟s unchallenged findings establish
that Frazier allowed a video to be submitted to the PTO in
order to represent the capabilities of the claimed lens,
knowing that portions of the video were shot with a different
lens. The district court‟s finding of intent is not clearly
erroneous on these facts.”
64
Inequitable Conduct
Intent
Pharmacia Corp. v. Par Pharma., Inc., ___
F.3d ____ (Fed. Cir. 2005) – J. Rader, JJ. Schall &
Linn- NEW
A Terminal Disclaimer Does Not Cause Inequitable
Conduct in One Patent to Infect Another Patent: A
High Degree of Materiality, in The Absence of a
Credible Explanation, May Support an Inference of
Intent to Deceive
– Patent A – Ineq. Cond. – Declaration inconsistent
w/ prior article by declarant – not disclosed
– Patent B – ineq. cond. Not inferred b/c of term
discl.
65
Inequitable Conduct
Intent
A Plausible, Good Faith Explanation of Why
Information Was Not Cited May Avoid a
Finding of Intent to Deceive
– Warner-Lambert Co. v. Teva Pharma. USA,
Inc., ___ F.3d ____ (Fed. Cir. 2005) – J. Schall, JJ. Linn &
Prost – New – Non-disclosed prior tests of competitive product
– TAP Pharma. Products, Inc. v. OWL Pharma.,
L.L.C.,___ F.3d ____ (Fed. Cir. 2005) – J. Bryson, JJ.
Newman & Gajarsa – New – Prior art – Foreign search report
66
Legal Ethics & Inequitable Conduct
Unitherm Food Sys. v. Swift-Eckrich, Inc.,
375 F.3d 1341 (Fed. Cir. 2004)(J. Gajarsa - JJ. Schall and Linn)
– p. 172
A Walker Process -Type Antitrust Claim Requires
Proof Not Only Of Fraud On the PTO, But The Other
Elements Of A Sherman Act § 2 Claim As Well
− Federal Circuit antitrust law centers on a single
question: What behavior by the patentee in
procuring or enforcing a patent can strip the
patentee of antitrust immunity?
– Found elements of Walker Process -type AT
satisfied, but other elements – product market –
for Sherman 2 claim not satisfied
67
Reissue - Reexamination
N. Am. Container, Inc. v. Plastipak Packaging, Inc.,
___ F.3d ___ (Fed. Cir. 2005)(J. Lourie - JJ. Bryson and Linn) – p. 177
Recapture Estoppel Applied
– Blow-molded bottles
– Prosecution – added “generally convex” - overcome §103
rejections
– Reissue app – deleted “inner wall portions are generally
convex”
– Protests - recapture - ex‟r – not “critical”
– D. Ct. – claims invalid – violated recapture rule
– Fed. Cir. – AFF‟D – ex‟rs denial of protests “demonstrates
[his] inattention to the rule against recapture.”
68
Claim Construction
Highlights
Division among judges re strict application of
the “ordinary meaning” of claim terms
Refusal to limit claims to disclosed embodiment(s),
unless clear statements that invention is so limited
May be ltd to spec when claim is “ambiguous”
BUT some judges rebelling – claims should be ltd to
actual invention
Phillips v. AWH – anti-climatic – but does
case signal narrower construction?
69
Claim Construction
Johnson Worldwide v. Zebco 1999
Renishaw v. Marposs 1998
– Focus on “ordinary meaning” of the claims
Trend – 1997 – most of 2001 – limit claims b/c of written
description
– Wang Labs. v. AOL
– SciMed v. Advanced Cardiovascular Systems
– Netword v. Centraal Corp.
– Toro v. White Consolidated
– Bell Atlantic v. Conrad
Trend – 2002-2003 – refocus on “ordinary” meaning
– CCS Fitness, Inc. v. Brunswick Corp.
– Teleflex, Inc. v. Ficosa North America Corp.
– Texas Digital v. Telegenix
2003-2005 – Some Judges – what is the invention?
2005+ - Phillips v. AWH ? 70
Claim Construction
– Cases generally emphasizing claim language –
not ltd by specification
71
Claim Construction
Nystrom v. TREX, 374 F.3d 1105 (Fed. Cir. 2004)(J. Linn and
CJ. Mayer, dissent J. Gajarsa) – p. 187
– “a board”
– D Ct – wood
– Dictionary def‟s – “wood” or other
rigid material
– Maj – not ltd to “wood”
J. Gajarsa – when multiple
definitions are conflicting – look to
intrinsic evid – Novartis v. Eon
– Maj – Construction should add all
definitions – found support in spec
– although tenuous – Novartis
cannot override earlier panel
opinions 72
Claim Construction
Numeric Ranges From Specification Examples Do
Not Represent a Disavowal of the Common
Meaning of the Term
– Unitherm Food Sys. v. Swift-Eckrich, Inc.,
375 F.3d 1341 (Fed. Cir. 2004)(J. Gajarsa – JJ. Schall and
Linn) – p. 190
ConAgra urged that Unitherm process not the same
b/c it did not produce “golden-brown color”
D. Ct. concluded that patentee did not act his on
lexicographer
Reference to “Hunter-Lab Color Meter”
measurements to describe color merely “examples”
No disavowal of common meaning 73
Claim Construction
W.E. Hall v. Atlanta
Corrugating, 370 F.3d 1343
(Fed. Cir. 2004) (J. Gajarsa – JJ.
Linn and Prost) – p. 191
If the Written Description or
Prosecution History are
Ambiguous as to Whether a
Patentee Used a Term
Consistent with the Ordinary
and Custom Meaning, the
Ordinary and Customary
Meaning Prevails
– “ribs defining a * * *
plurality of open channels
74
Claim Construction
W.E. Hall v. Atlanta Corrugating –
Cont’d
– Argued over p/a Nyssen pipes – didn‟t need element 30
75
Claim Construction
W.E. Hall v. Atlanta Corrugating –
Cont’d
– Arguments during prosecution – clear meaning of “open”
76
Claim Construction - Summary
Housey Pharms. v. Astrazeneca, 366 F.3d 1348 (Fed.
Cir. 2004)(J. Clevenger - CJ. Mayer, dissenting J. Newman) – p. 194
– The plain meaning of claim terms control even though the
result is that the claims concededly are invalid and non-
infringed
– Split – plain meaning v. read in the context of the spec
Vanderlande Ind. V. U.S. ITC, 366 F.3d 1311 (Fed. Cir.
2004) – (J. Michel – JJ. Gajarsa and Linn) – p. 195
– General-usage dictionaries are irrelevant where there is
evidence that artisans in the field would attach a special
meaning to a claim term, or no meaning at all
77
Claim Construction - Summary
TI Group v. Automotive, 375 F.3d 1126 (Fed. Cir.
2004)(J. Prost – J. Gajarsa, dissent J. Bryson) – p. 198
– The plain meaning of “reservoir” and “within” avoids
infringement
Mars, Inc. v. H.J. Heinz, 377 F.3d 1369 (Fed. Cir.
2004)(J. Dyk – JJ. Schall and Prost) – p. 200
– “Containing” and “Mixture” are open-ended terms that do
not exclude the presence of unlisted ingredients
78
Claim Construction - Summary
Innova/Pure Water v. Safari Water, 381 F.3d 1111 (Fed.
Cir. 2004)(J. Clevenger – JJ. Rader and Linn) – p. 202
– It is a bedrock principle of patent law that the claims of a
patent define the invention to which the patentee is entitled
the right to exclude
Home Diagnostics v. LifeScan, 381 F.3d 1352 (Fed. Cir.
2004) (J. Rader – JJ. Dyk and Prost) – p. 206
– Preferred embodiment does not alone undermine customary
meaning and scope of the claim language
79
Claim Construction
Eolas Techs. v. Microsoft, 399 F.3d 1325 (Fed.
Cir. 2005)(J. Rader – JJ. Friedman and Plager) – p. 208
Absent a Disclaimer, Claims Are Not Limited to the
Embodiment Disclosed in the Specification
– Drawn to a “distributed hypermedia method” - allowed a user
to operate a web browser in an interactive environment
– Claims – “executable application”
– D Ct – “any computer code *** that is launched” – includes
DLLs
– Microsoft - spec described only standalone programs
– Fed. Cir. – no clear disclaimer – embodiments in spec do not
limit broader claim language
80
Claim Construction
Gemstar-TV Guide Int’l v. ITC, 383 F.3d 1352
(Fed. Cir. 2004)(J. Linn and J. Clevenger) – p. 210
Statement in Specification that “innovative cursor ***
is required” Does Not Limit Claim to Such a Cursor
– Interactive program guides
– Claims – “visual identification”
– Spec – “an innovative cursor *** is required ***.”
– ITC - “innovative cursor” was required & ltd “visual
identification” to that cursor
– Fed. Cir. - error – Spec simply described advantages of
“innovative cursor”
81
Claim Construction
NTP, Inc. v. Research In Motion, Ltd., ___ F.3d
___ (Fed. Cir. 2005)(J. Linn – JJ. Michel and Schall) – p. 211
(new opinion – this portion unchanged)
Statement in Specification that “electronic mail
system” is “basically” a Wireline System Together With
Drawing Figure Illustrating Wireless Link Indicates
System May Be Wireless
– Claims “electronic mail system”
– D. Ct. - willful infringement
– RIM - “electronic mail system” should be limited to “wireline”
sys
– Fed. Cir. disagreed
Spec – “basically” a wireline system – dwg showed
wireless link 82
Fed Cir – “basically” means could include wireless
Claim Construction
Playtex Prods., Inc. v. Proctor &
Gamble Co., 400 F.3d 901 (Fed. Cir. 2005)(J. Gajarsa –
JJ. Lourie and Linn) – p. 213
– “Substantially” is a Descriptive Term Commonly
Used in Patent Claims to Avoid a Strict Numerical
Boundary to the Specified Parameter
Asyst Techs. v. Emtrak, Inc., 402 F.3d 1188
(Fed. Cir. 2005)(J. Bryson – CJ. Michel and J. Newman) – p. 215
– The Phrase “mounted on” Given its Ordinary
Meaning” – a Conclusory Expert Opinion Does not
Override Ordinary Meaning 83
Claim Construction
– Cases generally emphasizing specification
84
Claim Construction
Limited by Specification
Metabolite Labs, Inc. v. Lab. Corp. of Am.
Holdings, 370 F.3d 1354 (Fed. Cir. 2004)(J. Rader – SJ.
Friedman, dissenting-in-part & concurring-in-part J. Schall) – p. 252
Reading Claim “in the context of” the Specification May Result
in a Broader Construction Than Warranted by the Claim
Language
– Methods of detecting B vitamin deficiency
– “correlating an elevated level of * * * homocysteine * * * with
deficiency of cobalamin or folate.”
– Panel Majority – “correlating” means relating homocysteine levels
to presence or absence of a vitamin deficiency
– J. Schall dissenting – panel‟s construction “expands the scope of
claim 13 beyond the actual words of the claim.”
– Claim limited to “elevated” levels – 80-84% of tests shows
“unelevated” levels – damages should be reassessed.
85
Claim Construction
Limited by Specification
Irdeto Access v. Echostar, 383 F.3d 1295 (Fed. Cir. 2005)(J.
Michel – JJ. Newman and Bryson) – p. 254
Where a Disputed Term Lacks an Accepted Meaning in the Art, There is
no “Heavy Presumption” of Ordinary Meaning
– Method of controlling broadcast of enciphered info using “service
keys” – “group keys” – “box keys”
– ? whether “group keys” included less than all subscribers
– Terms had no accepted meaning in the art
– “Having conceded that the „key‟ modifiers have no accepted meaning
in the art, the applicant expressly directed the public to the
specification to discern that meaning and thus measure the scope of
the claimed invention. And while the specification does not contain
any statements of explicit disavowal or words of manifest exclusion,
it repeatedly, consistently, and exclusively uses „group‟ to denote
fewer than all subscribers, manifesting the patentee‟s clear intent to
so limit the term.”
86
Claim Construction
Limited by Specification
AstraZeneca AB v. Mutual Pharms. Co., 384
F.3d 1333 (Fed. Cir. 2004)(J. Michel – SJ. Archer and J.
Bryson) – p. 258
Specification May Always be Consulted to Confirm
Construction
– AZ – 2 patents - felodipine - PLENDIL® - treating
hypertension
– Mutual – ANDA – generic felodipine
– “a solution or dispersion of an effective amount of the
active compound in a semi-solid or liquid nonionic
solubilizer”
– Artisans - understand - “solubilizer” - 3 types of chemicals:
(1) surface active agents (also known as “surfactants”),
(2) co-solvents, and (3) complexation agents.
– Mutual - “solubilizer” per spec - only surfactants
87
Claim Construction
Limited by Specification
AstraZeneca AB v. Mutual Pharms. Co. –
Cont’d
– “A long line of cases indicates that evidence intrinsic to the
patent -- particularly the patent‟s specification, including
the inventors‟ statutorily-required written description of
the invention -- is the primary source for determining
claim meaning.”
– “Language in some of our recent cases suggests that the
intrinsic record, except for the claims, should be consulted
only after the ordinary and customary meaning of claim
terms to persons skilled in the pertinent art is
determined.” - Texas Digital
– “Under this approach, where the ordinary meaning of a
claim is evident, the inventor‟s written description of the
invention, for example, is relevant only insofar as it
provides clear lexicography or disavowal of the ordinary
meaning.” 88
Claim Construction
Limited by Specification
AstraZeneca AB v. Mutual Pharms. Co. –
Cont’d
– No need to decide which approach here.
– Inventors acted as lexicographers.
– “Description of the Invention” - “[t]he solubilizers suitable
according to the invention are defined below”
– “[t]he solubilizers suitable for the preparations according
to the invention are semi-solid or liquid non-ionic surface
active agents”
– AZ - preferred embodiments of “suitable” solubilizers.
– Might agree if “a solubilizer suitable for the preparations
according to the invention,”
– But – spec - “the solubilizers suitable for the preparations
according to the invention” 89
Claim Construction
Limited by Specification
Fuji Photo Film Co. v. ITC, 386 F.3d 1095 (Fed. Cir.
2004)(J. Bryson – JJ. Clevenger and Linn) – p. 260
Claims Must Be Read in the Context of the
Specification of Which They Are a Part
– Drawn to “single use” or “disposable” 35 mm file camera
– ITC construed “opening” as “hole, breach, or aperture”
– Fuji urged “opening” be construed broader, i.e., “[a]n
open space serving as a passage or gap” or an
“unobstructed or unoccupied space or place”
– Use of “opening” throughout patent strongly suggested
“hole, breach, or aperture”
– Relied on description in spec
90
Claim Construction
Limited by Specification
Boss Control, Inc. v. Bombardier, Inc.,
___ F.3d ___ (Fed. Cir. 2005)(J. Prost – JJ. Shall and Gajarsa) – p.
261
Where Specification Gives Claim Term a
Special Definition, That Definition Controls
– Power interrupt system
– Accused products – watercraft & snowmobiles
– Fed. Cir. – spec distinguished “interrupt” between on-off
interruption & interruption in two stages
– Accused device did not maintain elec connection once pwr
supply interrupted
– Fed. Cir. – AFF‟D – “* * * the intrinsic evidence binds Boss
to a narrower definition of „interrupt‟ than the extrinsic
evidence my support.” 91
Claim Construction
Limited by Specification
C.R. Bard, Inc. v. United States Surgical, Inc.,
388 F.3d 858 (Fed. Cir. 2004)(J. Michel - J. Newman, concurring J.
Prost) – p. 264
Certain Sections of the Specification, Such As The
Summary of the Invention, Are More Likely to Contain
Statements Limiting the Scope of the Invention
– Mesh “plug” w/ conformable surface – hernias
– “the surface of said hollow plug being conformable to
irregularities” and “said hollow plug being extremely pliable”
– Spec - “[t]he implant includes a pleated surface which
increases the pliability of the implant, allowing the prosthesis
to conform to irregularities in the tissue or muscle wall
surrounding the opening.”
– D Ct - plug must contain “pre-formed pleats.”
92
– Fed Cir – AFF‟D
Claim Construction
Limited by Specification
C.R. Bard, Inc. v. United States Surgical,
Inc. – Cont’d
– “A long line of cases indicates that the intrinsic record is
the primary source for determining claim meaning.”
– “Language in some of our recent cases, however, suggests
that the intrinsic record, except for the claims, should be
consulted only after the ordinary and customary meaning
of claim terms to persons skilled in the pertinent art is
determined.”
– “Bard cites these cases in a failed attempt to contend that
dictionary definitions somehow trump or override the
intrinsic record in determining the meaning of a claim
term.”
– “Like the many other litigants who have advanced such a
position, Bard extracts dicta from these cases that is taken
out of context.” 93
Claim Construction
Limited by Specification
C.R. Bard, Inc. v. United States Surgical,
Inc. – Cont’d
“[B]oth the specification and the prosecution history require
that the plug in claim 20 be pleated.”
Summary of the Invention - “[t]he implant includes a pleated
surface.”
Abstract - “[a]n implantable prosthesis including a conical
mesh plug having a pleated surface”
“certain sections of the specification are more likely
to contain statements that support a limiting
definition of a claim term than other sections”
“specification explicitly defines the inventive plug as „having‟
or „including] a pleated surface.‟ ”
– J. Prost – Concurring – Prosecution history supports construction
– would not reach other points.
94
Claim Construction
Limited by Specification
V-Formation, Inc. v. Benetton Group SpA,
401 F.3d 1307 (Fed. Cir. 2005)(J. Rader – JJ. Mayer and Prost)
- p. 266
Prior Art Listed in a Patent is Part of the Intrinsic Record and
May Be Used to Guide Claim Interpretation
– Inline roller skates having modular construction
– “a plurality of fasteners for releasably attaching said first and
second sidewalls to respective ones of said toe and heel plate
flange pairs”
– D. Ct. - “releasably attaching” - fasteners “must permit the
sidewalls to be easily removed and replaced”
– Accused device - rivets
– D. Ct. relied on ref listed on face of patent which taught plates
were “permanently attached” through use of rivets
– D. Ct. – not infringed
– AFF‟D
95
Claim Construction
Limited by Specification
ASM America, Inv. v. Genus, Inc., 401 F.3d
1340 (Fed. Cir. 2005)(J. Bryson – SJ. Friedman and J.
Newman) – p. 268
A “Definition” of a Term in the Specification is
Subject to Interpretation
– Atomic Layer Deposition – req‟d removing reactant gas – either
(1) sucking, or (2) blowing – stream of inert gas
– Spec - “evacuation of reaction space” defined in spec as
“pumping gas * * * to a sufficiently high vacuum” and “may be
simultaneously filled with an inactive gas which promotes
purging * * * from the reaction space”
– ASM - “evacuation” meant any process that removed reactant
gases from the reaction chamber.
– D. Ct. – ltd to “sucking” the gasses out of the reaction space –
Not Infringed
– Fed. Cir. – AFF‟D – spec indicated that purging was in addition to
evacuating
96
Claim Construction
Limited by Specification
Rhodia Chimie v. PPG Indus., Inc., 402 F.3d 1371 (Fed.
Cir. 2005)(J. Gajarsa – JJ. Newman and Clevenger) – p. 272
Claims May Be Limited by Example in the Specification
– Spheroidal precipitated silica particulates used as filler to
reinforce elastomeric prods – like auto tires
– “dust-free and non-dusting, * * * atomized precipitated silica
particulates”
– Dispute - “dust-free and non-dusting”
– PPG - literal construction – no dust
– Rhodia - “very low dust”
– D. Ct. – spec - German DIN 53 583 standard – spec examples
gave specific dust levels – Not Infringed
– Fed. Cir. – AFF‟D – “[b]ecause the only measurement of the
dust produced by Examples 5 and 10 was articulated in terms
of the DIN *** standard, the district court properly
incorporated that articulation into its construction ***.” 97
Claim Construction
Phillips v. AWH Corp. -
Rehearing en banc GRANTED – July 21, 2004
En banc opinion – July 12, 2005
98
Claim Construction
Phillips v. AWH Corp., - Rehearing en banc GRANTED – July 21,
2004: - p. 217
– 1. Is the public notice function of patent claims better served by referencing
primarily to technical and general purpose dictionaries and similar sources to
interpret a claim term or by looking primarily to the patentee‟s use of the
term in the specification? If both sources are to be consulted, in what order?
2 questions
– 2. If dictionaries should serve as the primary source for claim interpretation,
should the specification limit the full scope of claim language (as defined by
the dictionaries) only when the patentee has acted as his own lexicographer
or when the specification reflects a clear disclaimer of claim scope? If so,
what language in the specification will satisfy those conditions? What use
should be made of general as opposed to technical dictionaries? How does
the concept of ordinary meaning apply if there are multiple dictionary
definitions of the same term? If the dictionary provides multiple potentially
applicable definitions for a term, is it appropriate to look to the specification
to determine what definition or definitions should apply? 99
6 questions
Claim Construction
Phillips v. AWH Corp. - Cont’d
– 3. If the primary source for claim construction should be the
specification, what use should be made of dictionaries? Should the
range of the ordinary meaning of claim language be limited to the
scope of the invention disclosed in the specification, for example,
when only a single embodiment is disclosed and no other indications
of breadth are disclosed?
2 questions
– 4. Instead of viewing the claim construction methodologies in the
majority and dissent of the now-vacated panel decision as
alternative, conflicting approaches, should the two approaches be
treated as complementary methodologies such that there is a dual
restriction on claim scope, and a patentee must satisfy both limiting
methodologies in order to establish the claim coverage it seeks?
1 question
100
Claim Construction
Phillips v. AWH Corp. - Cont’d
– 5. When, if ever, should claim language be narrowly construed for the sole
purpose of avoiding invalidity under, e.g., 35 U.S.C. §§ 102, 103 and 112?
3 questions
– 6. What role should prosecution history and expert testimony by one of
ordinary skill in the art play in determining the meaning of the disputed claim
terms?
1 question
– 7. Consistent with the Supreme Court‟s decision in Markman v. Westview
Instruments, Inc., * * * and our en banc decision in Cybor Corp. v. FAS
Technologies, Inc., * * * is it appropriate for this court to accord any
deference to any aspect of trial court claim construction rulings? If so, on
what aspects, in what circumstances, and to what extent?
2 questions
101
Claim Construction
Phillips v. AWH Corp. - Cont’d
– Judge Rader:
Is claim construction amenable to resolution by resort to strictly
algorithmic rules, e.g., specification first, dictionaries first, etc.?
Or is claim construction better achieved by using the order or
tools relevant in each case to discern the meaning of terms
according to the understanding of one of ordinary skill in the art
at the time of the invention, thus entrusting trial courts to
interpret claims as a contract or statute?
– 2 questions
– Overall – some 19 en banc questions + permutations
102
Claim Construction
Phillips v. AWH Corp. – Cont’d
– CJ. Mayer – dissent:
Until the court is willing to reconsider its holdings in
Markman v. Westview Instruments, Inc., * * * and
Cybor Corp. v. FAS Techs., Inc., * * * that claim
construction is a pure question of law subject to de novo
review in this court, any attempt to refine the process is
futile.
103
Claim Construction
Phillips v. AWH Corp., ___ F.3d ___ (Fed. Cir.
2005)(en banc)(J. Bryson) – p. 218
Vandalism resistant walls
Spec – “baffles” – (1) deflect bullets, (2) increase
load bearing
104
Claim Construction
Phillips v. AWH Corp. - Cont’d
Claim – “means disposed inside the shell for
increasing its load bearing capacity comprising
internal steel baffles extending inwardly from the
steel shell walls.”
– D Ct - § 112(6)
– Panel opinion (J. Lourie w/ J. Newman) – “baffle”
sufficient structure to avoid m-p-f
– Panel opinion – disposed at angles other than 90 deg.
– J. Dyk – dissent – “baffle” should not be so ltd.
– Panel majority – only embodiment disclosed 105
Claim Construction
Phillips v. AWH Corp. - Cont’d
En Banc Opinion – all except J. Mayer
– Part I – Not m-p-f under § 112(6)
– Part II A – words given their ordinary & customary meaning
as understood by one of ordinary skill in the art
– Part II B(1) – look first to the language of the claim and
context in which words are used
– Part II B(2) – appropriate to “rely heavily” on spec
– Part II B(3) – appropriate to rely on prosecution history, but
less reliable
– Part II C – extrinsic evid – including dictionaries etc. – may be
used by less reliable than intrinsic record
– Part III – Texas Digital went too far in elevating dictionaries
106
etc. as first step in claim construction
Claim Construction
Phillips v. AWH Corp. - Cont’d
En Banc Opinion
– Part IV A – “baffle” not ltd to one at acute/obtuse angle
– Part IV B – maxim that claims construed to preserve validity
ltd to cases where meaning is ambiguous
– Part V – trade secret claim barred by statute of limitations
– Part VI – unnecessary to revisit Cybor
– J. Lourie (w/ J. Newman) – did not join Part IV – “claims need
not necessarily be limited to specific or preferred
embodiments *** although they are limited to what is
contained in the overall disclosure of the specification.”
– J. Mayer (w/ J. Newman) – Cybor – wrong – “The court‟s
opinion today is akin to rearranging the deck chairs on the
Titanic – the orchestra is playing as if nothing is amiss, but
the ship is still heading for Davey Jones‟ locker.” 107
Claim Construction
Phillips v. AWH Corp. - Cont’d
En Banc Opinion – Points Emphasized
– Claims define right to exclude
– Claims given ordinary & customary meaning as understood by
one of ordinary skill in the art – Query – how determined?
– One of ordinary skill in the art reads claims in context of
specification & prosecution history
– Role of spec – “It is therefore entirely appropriate for a court
*** to rely heavily on the written description for guidance as
to the meaning of the claims.”
Adopted position urged by PTO, FTC & DoJ
Other amicus (e.g., ABA, AIPLA) urged balanced approach
108
Claim Construction
Phillips v. AWH Corp. - Cont’d
En Banc Opinion – Query – Written Description
Cases
– Univ. of Rochester (2004) – J. Lourie w/ JJ. Bryson & Dyk
(1) emphasized WD requirement separate & distinct from
enablement; (2) one may be satisfied w/o satisfying the other;
(3) characterized WD as providing a “public notice” function.
– Enzo Biochem (2002) – J. Lourie w/ JJ. Dyk & Prost
“Even if a claim is supported by the specification, the language
of the specification *** must describe the claimed invention so
that one skilled in the art can recognize what is claimed.”
– Rochester – cites In re [Wm] Moore (CCPA 1946)
It “is well-settled that claims in an application which are broader
than the applicant‟s disclosure are not allowable”
– And In re Sus (CCPA 1962) – aff‟g rej – claims‟ “failure to
meet the requirements of *** [§ 112] in that they are 109
broader than the invention described in the written
description ***.”
Claim Construction
Post - Phillips v. AWH Corp. – Cases
Pause Technology LLC v. TiVo Inc., ___ F.3d
____ (Fed. Cir. 2005) J. Linn, JJ. Newman and Lourie – NEW
The Court Cannot “Ignore” Words in a Claim
– DVRs – “circular storage buffer”
– TiVo - ltd to physical addressing - buffer stored newest values
by writing over values stored at oldest physical addresses
– Claim – “to write over the oldest of said input signal values
recorded in said digital memory”
– Fed Cir – Cannot ignore explicit claim language
110
Claim Construction
Post - Phillips v. AWH Corp. – Cases
Pause Technology LLC v. TiVo Inc., Cont’d
Courts Cannot “Rewrite” Claims, But Can Use Words Not
Appearing in a Claim in Clarifying the Meaning So Long As
The Resulting Interpretation Accords With the Original Claim
Scope
– D Ct – “a physical memory device that contains digital signal
values and that is circular in the sense that when the last
address is reached, the next address accessed is the first
address location. While the digital input signal values are
always stored in the same repeating physical addresses, these
addresses do not have to be physically contiguous. The
“circular buffer limitation” requires that the circular buffer
store the digital input signal values in continually advancing
physical addresses.”
– Fed Cir – OK – stayed true to original claim language 111
Claim Construction
Post - Phillips v. AWH Corp. – Cases
Research Plastics, Inc. v. Federal
Packaging Corp., ___ F.3d ____ (Fed. Cir. 2005) – J.
Gajarsa, JJ. Newman and Bryson– NEW
“Rear End” Impermissibly Narrowed to Outer Most
Edge
– Caulking tubes w/ ribs
– Claims – ribs extended to “rear end” of hollow body
– Fed Cir – “rear end” = rear edge not just rear
portion
112
Claim Construction
Post - Phillips v. AWH Corp. – Cases
Terlep v. Brinkmann Corp., ___ F.3d ____ (Fed.
Cir. 2005) – J. Linn, JJ. Bryson and Gajarsa – NEW
“Clear” Means “Transparent” and Excludes
“Translucent”
– “omnidirectional” LED lamp
– Claims – “a first clear plastic tubular holder”
– Terlep – includes translucent
– Fed Cir – NO – Spec - “Summary of the Invention” - patentee
had “implicitly” drawn a distinction between lenses or holders
that diffused light and those that transmitted light.
113
Claim Construction
Post - Phillips v. AWH Corp. – Cases
CollegeNet, Inc. v. ApplyYourself, Inc., ___
F.3d ____ (Fed. Cir. 2005) – J. Rader, JJ. Lourie and Schall –
NEW
“A Format Specified By The Institution” Does Not
Require an Unlimited Number of Formats:
“Automatically” Does Not Exclude Human
Intervention
– Processing college appl. Forms – (1) stored data for multiple
applications, (2) colleges could retrieve in selected format
– D Ct – “a file format” = “any file format” = an unlimited
number of formats
– Fed Cir – No – spec listed 5 exemplary formats – “one or
more” file formats
114
– “automatically” did not exclude human initiation
Claim Construction
Post - Phillips v. AWH Corp. – Cases
AquaTex Indus., Inc. v. Techniche
Solutions, ___ F.3d ____ (Fed. Cir. 2005) – J. Mayer, JJ.
Gajarsa and Dyk – NEW
Claim May Be Limited By Patents Incorporated By
Reference
– Multi-layered, liquid-retaining composite material
comprising, inter alia, “fiberfill batting material.”
– ? whether ltd to synthetic fibers, or whether could
include synthetic and natural materials.
– Techniche used commercially available material
Vizorb® - both synthetic and natural materials
– Ltd to synthetic materials – only examples in spec 115
+ patents incorporated by ref only synthetic
Claim Construction
Procedure - Waiver
NTP, Inc. v. Research In Motion, Ltd., 392
F.3d 1336 (Fed. Cir. 2004)(J. Linn – JJ. Michel and Schall) – p.
280
Presenting a Proposed Claim Construction on
Appeal Which Alters Claim Scope Invokes the
Doctrine of Waiver
– On appeal, RIM argued that “electronic mail
system” should be limited to “pull” tech
Fed. Cir. -
– “Because RIM failed to raise before the district
court the argument that the claim should be
limited to pull technology, the argument was
waived, and we decline to address it on the
merits.” 116
But ct has not strictly enforced waiver
Claim Construction
Procedure - Waiver
Harris Corp. v. Ericsson Inc., ___ F.3d ____ (Fed. Cir.
2005) – J. Prost w/ J. Clevenger, dissenting opinion – J. Gajarsa -
NEW
Federal Circuit Law Controls the Issue of Waiver in the
Context of Claim Construction: Panel Majority Accused
of Introducing an “Oops I Forgot” Exception to Waiver
Rule
– Communications system – “intersymbol interference”
– “time domain processing means” - § 112(6)
– “corresponding structure” – “symbol processor 37”
– On appeal – Ericsson – WMS Gaming – must include algorithm
– not previously argued
– Panel majority – (1) Federal Circuit law controls waiver; (2) not
waived because “same concept” argued below
– J. Gajarsa – waived – E had 10 opportunities to make argument
117
Claim Construction
Procedure - Waiver
SanDisk Corp. v. Memorex Products, Inc., ___
F.3d ____ (Fed. Cir. 2005) – J. Gajarsa, JJ. Rader and Dyk- p. 309
Equity Does Not Favor Applying Judicial Estoppel To
“Evolving” Claim Construction Arguments After A
Preliminary Injunction
– Flash EEprom
– Earlier litigation – another party – construction – judgment
– Present litigation – sought injunction
– D‟s – SanDisk ltd to earlier claim construction
– Fed Cir – not necessarily
– Judicial estoppel factors - (1) later position “clearly inconsistent”
w/ earlier position; (2) court adopted earlier position; (3) unfair
advantage or unfair detriment – here not “clearly inconsistent”
– Fed Cir – construction – interlocutory – ct can revisit after full
record following preliminary injunction. 118
Claim Construction
Procedure
Nazomi Communications, Inc. v. ARM Holdings,
PLC., 403 F.3d 1364 (Fed. Cir. 2004)(J. Rader – CJ. Michel and J.
Prost) – p. 282
Where the District Court Does Not Properly Analyze Claim
Construction and/or Infringement, the Case Must be Remanded:
(2) Although Review is De Novo, the Federal Circuitry Does Not
Undertake Claim Construction Without a District Court‟s Analysis
– Java accelerator – hardware
Disputed “instructions”
D Ct – gave no analysis for its construction
ARM – Fed Cir reviews de novo – should decide
construction & infringement – D Ct‟s views “does not
matter.”
Fed Cir – reviews de novo – but “takes into account the
views of the trial judge ***.”
119
Claim Construction
Procedure
Power Mosfet Techs. v. Siemens, 378
F.3d 1396 (Fed. Cir. 2004)( J. Gajarsa – JJ. Michel
and Prost) – p. 201
A Claim Construction Focusing on Individual Words in
a Claim May Not Resolve All Ambiguities; A Court
May Then Have to Resolve Those Ambiguities Within
the Context of the Claim as a Whole in Deciding
Infringement
– D Ct adopted SM‟S Markman report
– Construction of individual words in report did not
resolve infringement issue
– Fed Cir - D Ct properly resolved infringement issue
by interpreting claims as a whole w/ prior
construction of individual words
120
Claim Construction
Claim Differentiation
Seachange Int’l , Inc. v. C-COR, Inc., __ F.3d ___ (Fed.
Cir. 2005)(J. Linn – JJ. Bryson and Gajarsa) – p. 276
(a) Presumption That Claims are of Different Scope May Be
Rebutted by the Prosecution History (b) Grouping Claims and
Arguing Patentability May Lead to a Narrower Construction
– Video servers - video-on-demand – problem – storage space
– D. Ct. - “network for data communications” = computer sys
using “any kind of network”
– Cls 1 & 37 different – cl 37 not ltd to point-to-point network
– Doctrine supports broad construction
– However, not hard/fast rule – “and will be overcome by a
contrary construction dictated by the written description or
prosecution history”
– Fed. Cir. – patentee groped claims & relied on “point-to-point”
limitation to overcome p/a – “it would be improper to now
broadly construe [the claim] not to contain those limitations.”
– REV‟D 121
Claim Construction
Reliance on Prosecution History
Examiner’s Reasons for Allowance
Salazar v. Procter & Gamble Co., ___F.3d ___
(Fed. Cir. 2005)( J. Rader – J. Gajarsa, dissenting opinion J.
Bryson) – p. 288
An Applicant‟s Failure to Respond to an Examiner‟s
Statement in the Reasons for Allowance Concerning a
Claim Limitation Does Not Lend to a Disavowal
– Toothbrush w/elastic stimulator & elastic polishing rods
– Ex‟r - p/a = nylon – not “elastic”
– Applicant – no response
– D. Ct – ltd per exr‟s stmt
– P&G prod not elastic therefore not infringing
– Fed. Cir. - applicant‟s silence re exr‟s statement on
allowance “without more, cannot amount to a „clear and
unmistakable disavowal‟ of claim scope * * * After all, the
applicant has disavowed nothing.”
– Distinguished prior cases on facts 122
Claim Construction
Reliance on Prosecution History
Goldenberg v. Cytogen, 373 F.3d 1158 (Fed. Cir.
2004)(J. Gajarsa – J. Schall, concurring-in-part, dissenting-in-
part J. Prost) – p. 295
A Related Patent or its Prosecution History May Be Relied on to
Construe the Claims of a Patent-at-Issue Only if the Patents
Have a Familial Relationship
– Cannot rely on prosecution history of „744 patent
123
Claim Construction
Miscellaneous – Correcting Patent in
District Court
Hoffer v Microsoft Corp., 406 F.3d 1365 (Fed.
Cir. 2005)(per curiam)(JJ. Newman, Bryson and Dyk) – p. 302
A Court May Correct Harmless Error in a Patent
That is Not Subject to Reasonable Debate
– Claims renumbered by ex‟r
– Dependent claim erroneously referred to original
indep claim #
– D. Ct. – Claims invalid under §112(2) as indefinite –
powerless to correct
– Fed Cir. REV‟D - harmless error not reasonably
subject to debate can be corrected by D. Ct.
124
Claim Construction
Miscellaneous – Correcting Patent in
District Court
ArthroCare Corp. v. Smith & Nephew, Inc., 406
F.3d 1365 (Fed. Cir. 2005)(J. Bryson – JJ. Mayer and Lourie) – p. 302
The Correction of a Ministerial Error in the Claims, Which Also
Serves to Broaden the Claims, is Allowable if it is “clearly evident
from the specifications, drawings, and prosecution history how
the error should appropriately b corrected” to One of Skill in the
Art
Electro surgery – current passes through electrodes
Before exam “active electrode” changed to “electrode terminal”
in three out of four places
Filed Cert of Corr to change four instance
S&N - enlarged scope of clam by calling for 3 electrodes rather
than 2
Fed. Cir. disagreed – nothing in claims calls for 3 electrodes –
plus that would not make sense
125
Correction unambiguous in light of prosecution history
Claim Construction
Miscellaneous – Correcting Patent in
District Court
Group One, Ltd. v. Hallmark Cards, Inc. (Group One II),
407 F.3d 1365 (Fed. Cir. 2005)(per curiam)(JJ. Newman, Bryson and Dyk)
– p. 302
A District Court May Not Correct an Error In a Patent
Claim Even Though it is Evident From the Prosecution
History
– PTO printing error left off end of a claim
“stripping means (36) for separating the ribbon from said
mechanical drive wheel means in order to prevent said
ribbon from adversely affecting operation of said mechanical
drive wheel means by adhering to said mechanical drive
wheel means.”
D. Ct. – invalid under §112(2) as indefinite – powerless to fix
Fed. Cir. – AFF‟D
– Error could have been corrected by cert of corr – but
was not
– Error not evident from face of the patent 126
Claim Construction
Miscellaneous
PC Connector Solutions v. SmartDisk
Corp., 406 F.3d 1359 (Fed. Cir. 2005)(J. Lourie – CJ. Michel and J.
Prost) – p. 307
Terms Such as “Conventional” Limit Claims to What
Was “Conventional” as of the Filing Date
– Connecting peripherals to computer thru coupler inserted into
diskette drive
– Claims – “conventional computer input/output port” –
“peripheral is traditionally connectable *** by means of an
input/output port ***”
– Accused products – flash memories in adaptors for diskette
drives
– D. Ct. - what was “conventional” in 1988 – flash memories not
connected via convention I/O ports - Not Infringed
– AFF‟D - “Conventional,” etc., are implicitly time-dependant127
Construction of Means- and Step-
Plus-Function Limitations
Highlights
Generally, but not always, construed
narrower
May be used to avoid dedication issue
If “means” is not used, there is a “strong”
presumption against construction as a mpf
limitation
128
Is It a MPF Limitation?
Linear Tech. v. Impala, 379 F.3d 1311 (Fed. Cir. 2004)(J. Linn –
JJ. Newman and Schall) – p. 314
When “Circuit” Is Used With a Description of the Circuit's
Operation, There Is Sufficient Structural Meaning and § 112(6)
Presumptively Will Not Apply
– Apparatus & method for controlling switching voltage regulator
– “first circuit for * * *” “second circuit * * *” “third circuit for * * *”
– D Ct – construed under § 112(6)
– Fed Cir – error – none use “means”
– “[t]echnical dictionaries, which are evidence of the understandings of
persons of skill in the technical arts, plainly indicate that the term
„circuit‟ connotes structure.”
– “when the structure-connoting term „circuit‟ is coupled with a
description of the circuit‟s operation, sufficient structural meaning
generally will be conveyed to persons of ordinary skill in the art, and
§ 112 ¶ 6 presumptively will not apply.”
129
Is It a MPF Limitation?
Cardiac Pacemakers v. St. Jude, 381 F.3d 13(Fed. Cir.
2004)(J. Newman - SCJ Friedman and J. Rader) – p. 315
Claiming a Step by Itself, or Even a Series of Steps,
Does not Implicate § 112(6)
– Implantable cardiac defibrillators – could detect type of
arrhythmia
– Claim – “A method *** comprising the steps of: (a)
determining a condition of the heart from among a plurality
of conditions ***.”
– D Ct – step-plus-function
– Fed Cir – error – BUT – must be construed in light of spec
– REMANDED
130
Is It a MPF Limitation?
Lighting World v. Birchwood, 382 F.3d 1354
(Fed. Cir. 2004)(J. Bryson – J. Linn and SJ Plager) – p.
317
Absence of the Word “Means” Creates a “Strong”
Presumption Against Construction Under § 112(6):
Claim Language May Use Generic Phrases Here
“Connector Assembly” and Yet Avoid § 112(6)
– Lighting fixtures
– “connector assembly for * * *”
– “while it is true that the term „connector assembly‟ does not
bring to mind a particular structure, that point is not
dispositive. What is important is whether the term is one that
is understood to describe structure, as opposed to a term that
is simply a nonce word or a verbal construct that is not
recognized as the name of structure and is simply a substitute
131
for the term „means for.‟ ”
Construction of Means- and Step-Plus-
Function Limitations – Corresponding
Structure
Linear Tech. Corp. v. Impala Linear Corp., 371 F.3d
1364 (Fed. Cir. 2004)(J. Linn, JJ. Newman and Schall) – p. 320
“Corresponding Structure” Does Not Necessarily Have
to be Restricted to a Single Structure
– Apparatus & method - controlling switching regulator
– Claims – “second means *** to vary the duty cycle of the
switching transistors”
– Spec – one-shot circuit & “could be replaced by pulse-width
modulator circuit – PWM circuits known in the art
– “[t]hat the disputed term is not limited to a single structure
does not qualify it as a corresponding structure, as long as
the class of structures is identifiable by a person of ordinary
skill in the art.”
132
Construction of Means- and Step-Plus-
Function Limitations – Corresponding
Structure
Versa Corp. v. Ag-Bag Int’l Ltd., 392 F.3d 1325 (Fed.
Cir. 2004)(J. Dyk – J. Rader – dissenting J. Newman) – p. 325
When Multiple Embodiments, Either Illustrated in the
Drawings or Described in the specification, Correspond
to the Claimed Function, § 112(6) Requires Reading the
Limitation to Cover Each Embodiment
– Compost bagging machine
– “means creating air channels ***”
– Spec – perforated pipes & V-shaped flutes
– D. Ct. - structure - both perforated pipe and flutes
– Not Infringed - Accused device did not use flutes
– Fed. Cir. REV‟D – spec - either or both could be used
J. Newman –not new question – doesn‟t need new answer - every
embodiment described & illus included both pipe & flutes
133
Construction of Means- and Step-Plus-
Function Limitations – Corresponding
Structure
Playtex Prods. Inc. v. Procter & Gamble, 400
F.3d 901 (Fed. Cir. 2005)(J. Gajarsa, JJ. Lourie and Linn) – p.
327
“Corresponding Structure” Must Take into Account
What is Shown in the Drawings and What is
Described in the Specification as Well
– Tampon applicator
– “means for limiting the movement of said plunger through
said rearward portion of said barrel”
– Playtex – dwg - curved lip req‟d on each end of the plunger
– D. Ct. disagreed – based on spec – could be on one end only
– Fed. Cir. – Agreed – spec broader than dwg
134
Construction of Means- and Step-Plus-
Function Limitations – Corresponding
Structure
Default Proof Credit Card Sys., Inc. v. Home
Depot USA, Inc., ___ F.3d ___ (Fed. Cir. 2005)(J.
Gajarsa, JJ. Lourie and Linn) – p. 331
Testimony by One of Ordinary Skill in the Art cannot
Supplant the Total Absence of Structure from the
Specification
– Point-of-sale terminals – prepaid debit cards
– “means for dispensing at least one debit card.”
– D. Ct. – INVALID - structure not recited in spec and could
not be the POS terminal
– Fed. Cir. – AFFIRMED – “It is not proper to look to the
knowledge of one skilled in the art apart from and
unconnected to the disclosure of the patent.”
135
Infringement – Product Claims
Literal Infringement
– Pure Product Claims May Be Infringed
Irrespective of the Method of Manufacture
AFG Indus, Inc. v. Cardinal IG Co.
(AFG II)., 375 F.3d 1367 (Fed. Cir. 2004) – p.
338
136
Infringement - § 271(a)
Section 271(a) provides:
– Except as otherwise provided in this title, whoever
without authority [1] makes, [2] uses, [3] offers
to sell, or sells any patented invention, within the
United States or [4] imports into the United States
any patented invention during the term of the
patent therefor, infringes the patent.
137
Infringement - § 271(a)
MEMC Electronic Materials, Inc. v.
Mitsubishi Materials Silicon Corp., __ F.3d
____ (Fed. Cir. 2005) – J. Schall, JJ. Newman and Dyk - NEW
There is No Infringement Under § 271(a) Where
There is No Sale or Offer for Sale of the Accused
Products in the United States
– Samsung (Korea) – spec‟s – silicon wafers
– Samsung (Japan) – placed order w/ SUMCO
– SUMCO – mf‟d & shipped to Samsung (Austin)
– E-mails – SUMCO - Samsung (Austin)
– Fed Cir – e-mails – no price quotes – not a
sale/offer for sale
– “Sale” took place in Japan
138
Infringement - § 271(a)
NTP, Inc. v. Research In Motion, Ltd., ___ F.3d ____ (Fed. Cir.
2005) – J. Linn, C.J. Michel, J. Schall – NEW – w/drew prior 2004
opinion
There May Be Infringement Based on the “Use” Prong of §
271(a) of “System” Claims Even Though One Component of the
Accused System is Located in Canada Where the System is Used
From Within the Unites States, But Method Claims Are Not So
Infringed Under the “Use” or the Other Prongs of § 271(a)
– BlackBerry – all e-mails go thru “relay” – Canada – “relay”
part of claims
– Claims – (1) system, and (2) method
– Claimed “system” not on “made” in U.S., but “used” in U.S.
– “place where control of the system is exercised and
beneficial use of the system obtained.”
139
Infringement - § 271(a)
NTP, Inc. v. Research In Motion, Ltd., ___ F.3d ____
(Fed. Cir. 2005) – J. Linn, C.J. Michel, J. Schall – NEW – w/drew
prior 2004 opinion
Different result re method claims
“[i]t is well established that a patent for a method or
process is not infringed unless all steps or stages of the
claimed process are utilized.”
“a process cannot be used „within‟ the United States as
required by section 271(a) unless each of the steps is
performed within this country.”
Method also not “sold” or “imported” into the U.S.
140
Inducing Infringement - § 271(b)
MEMC Electronic Materials, Inc. v. Mitsubishi
Materials Silicon Corp., __ F.3d ____ (Fed. Cir. 2005) – J.
Schall, JJ. Newman and Dyk - NEW
E-Mail Exchange of Technical Data May Constitute Inducement
of Infringement
– Samsung (Korea) – spec‟s – silicon wafers
– Samsung (Japan) – placed order w/ SUMCO
– SUMCO – mf‟d & shipped to Samsung (Austin)
– E-mails – SUMCO - Samsung (Austin)
– Fed Cir – e-mails – no price quotes – not a sale/offer for sale
– However – evidence (1) SUMCO provided technical support
to Samsung Austin in the form of e-mail communications,
(2) SUMCO sent wafers directly to Samsung Austin to
address technical problems, and (3) SUMCO personnel made
on-site visits - Samsung Austin - technical presentations –
may evidence inducement.
141
Infringement - § 271(e)(1) – Safe
Harbor
“uses reasonably related to the development and
submission of information under a Federal law which
regulates the manufacture, use, or sale of drugs or
veterinary biological products” Are Not Necessarily
Limited to Data Developed for Submission to the FDA
– Integra Lifesciences I, Ltd v. Merck KGaA, 331 F.3d 860
(Fed. Cir. 2003) – J. Rader, J. Prost, concurring-in-part, dissenting-
in-part opinion J. Newman - § 271(e)(1) does not extend to activity
that is not directly related to seeking regulatory approval
– Merck KGaA v. Integra Lifesciences I, Ltd., ___ U.S. ___
(2005) - “the use of patented compounds in preclinical studies is
protected under § 271(e)(1) as long as there is a reasonable basis
for believing that the experiments will produce „the types of
information that are relevant to an IND or NDA.‟ ”
– Fed Cir – has called for further briefing
142
Infringement - § 271(f)
Section 271(f) provides:
– (1) Whoever without authority supplies or causes to be supplied
in or from the United States all or a substantial portion of the
components of a patented invention, where such components
are uncombined in whole or in part, in such manner as to
actively induce the combination of such components outside of
the United States in a manner that would infringe the patent if
such combination occurred within the United States, shall be
liable as an infringer.
– (2) Whoever without authority supplies or causes to be supplied
in or from the United States any component of a patented
invention that is especially made or especially adapted for use in
the invention and not a staple article or commodity of commerce
suitable for substantial noninfringing use, where such component
is uncombined in whole or in part, knowing that such component
is so made or adapted and intending that such component will
be combined outside of the United States in a manner that
would infringe the patent if such combination occurred within
the United States, shall be liable as an infringer.
143
Infringement - § 271(f)
Pellegrini v. Analog Devices, 375 F.3d 1133 (Fed. Cir.
2004) J. Lourie, JJ. Rader & Bryson– p. 339
– As a Matter of First Impression, There is No Infringement Under
§ 271(f) When a US Company has Allegedly Infringing Devices
Made in Foreign Facilities and Sells Those Devices in Countries
Other Than the United States
Analog (1) U.S. corp responsible for ADMC products; (2)
conceived & designed products; (3) exclusive mf‟r; and (4)
made all R&D decisions for products, BUT products “made”
outside of U.S.
Fed Cir - § 271(f) “applies only where components of a
patent[ed] invention are physically present in the United
States and then either sold or exported *** ”
“[t]he plain language of § 271(f)(1) focuses on the location
of the accused components, not the accused infringer.”
“supplies or causes to be supplied” “clearly refers to physical
supply of components, not simply to the supply of
instructions or corporate oversight.” 144
Infringement - § 271(f)
Exporting Computer Code to Foreign Computer
Manufacturers for Replication on Hard Drives
Falls Within the Scope of § 271(f)
Eolas Techs., Inc. v. Microsoft Corp.,
399 F.3d 1325 (Fed. Cir. 2004) – p. 341
– Internet Explorer – accused infringing product
– MS exported “golden master disks” – loaded on hard
drives
– MS - § 271(f) did not apply b/c disks never became part
of infringing product
– Fed Cir – rejected - § 271(f) – “components of a patented
invention” not limited to “machines or „physical
structures,‟ but extends to every component of every
form of the invention.” 145
Infringement - § 271(f)
Exporting a Master Disk Containing Windows®
Operating System and Speech Codecs Alleged to
Infringe Constitutes “Suppl[ing]” “Components of a
Patented Invention” Under §271(f)
– AT&T Corp. v. Microsfot Corp., ___ F.3d ___ (Fed.
Cir. 2005) J. Lourie, J. Mayer, dissent – J. Rader – p. 342
MS – (1) s/w not a “component” – decided in Eolas; (2)
copies of Windows “made” from master disks outside of
U.S.
Panel – “supplying” software generally involved making
a copy
“Accordingly, for software „components,‟ the act of
copying is subsumed in the act of „supplying,‟ such that
sending a single coy abroad with the intent that it be
replicated invokes § 271(f) liability for those foreign-
made copies.
J. Rader – “copies” were “made” by foreign mf‟rs.
146
Infringement - § 271(f)
Merely Supplying Products to Customers in the United
States Does Not Constitute Supplying or Causing to be
Supplied Any Steps of a Patented Process for
Combination Outside the United States and Therefore
Cannot Infringe Method Claims Under § 271(f) – Under
The Facts of This Case
– NTP, Inc. v. Research In Motion, Ltd., ___ F.3d
____ (Fed. Cir. 2005) – J. Linn, C.J. Michel, J. Schall – NEW –
w/drew prior 2004 opinion
RIM‟s supply of the BlackBerry handheld devices and
Redirector products to its customers in the United States is
not the statutory „supply‟ of any „component‟ steps for
combination into NTP‟s patented methods. 147
Infringement – Expert Testimony
In Cases Involving Complex Technology, Where the
Accused Infringer Offers Expert Testimony Negating
Infringement, the Patentee Cannot Satisfy Its Burden
of Proof by Relying Only on Testimony From Those
Who Are Admittedly Not Expert in the Field
– Centricut, LLC v. Esab Group, Inc., 390 F.3d
1361 (Fed. Cir. 2004) – J. Dyk, JJ. Michel & Clevenger – p.
360
Centricut (DJ plaintiff) – expert testimony
Esab – no expert testimony
“We do not state a per se rule that expert testimony is required
to prove infringement when the art is complex. Suffice it to say
that in a case involving complex techology, where the accused
infringer offers expert testimony negating infringement, the
patentee cannot satisfy its burden of proof by relying only on
148
testimony from those who are admittedly not expert in the field.”
Doctrine of Equivalents
“All Elements” Rule
When the Substitution of One Feature for Another Into an
Element of an Accused Product Places it Outside the Scope
of the Recited Claim Element, the Doctrine of Equivalents
May Not Be Applied
Novartis Pharms. v. Abbott Labs., 375 F.3d
1328 (Fed. Cir. 2004) – p. 369
The Doctrine of Equivalents Does Not apply if Applying the
doctrine Would Vitiate an Enter Claim Limitation
Seachange Int’l, Inc. v. C-COR, Inc., ___
F.3d ___ (Fed. Cir. 2005) – p. 371
149
Doctrine of Equivalents
“All Elements” Rule
Where a Theory of Equivalents Would “Entirely Vitiate” a
Particular Claim Element, Summary Judgment May Be
Entered by the Court
Searfoss v. Pioneer Consolidated, 374 F.3d
1142 (Fed. Cir. 2004) – p. 373
There is No Equivalent to “mounted on” – The Issue is
Binary
Asyst Techs., Inc. v. Emtrak, Inc., 402
F.3d 1188 (Fed. Cir. 2005) – p. 375
150
Doctrine of Equivalents
“All Elements” Rule
No Set Formula Determines Whether a Finding of
Equivalence Would Vitiate a Claim Limitation – Judged
by the Totality of the Circumstances: But, That Result is
More Likely in Cases Involving Mechanical Inventions
Where the Equivalent Was Known
– Freedman Seating Co. v. American Seating
Co., ___ F.3d ____ (Fed. Cir. 2005) – J. Schall, J. Mayer & S.C.J.
Pager – NEW
Folding public transportation seats
151
Doctrine of Equivalents
“All Elements” Rule
Freedman Seating Co. v. American
Seating Co. - Cont‟d
152
Doctrine of Equivalents
“All Elements” Rule
Freedman Seating Co. v. American Seating Co., -
Cont‟d
– Claims – “a cantilevered seatbase having *** a moveable end
slidably mounted to said seatbase *** ”
– Generic – “four bar mechanism”
Patent – “slider crank”
Accused – “fourth link”
– Compared Ethicon Endo-Surgery - finding of infringement
under DOE would not vitiate limitation - “a subtle difference in
degree, not a clear, substantial difference or difference in
kind,” with Sage Prods., Inc. v. Devon Indus., Inc. -
finding of equivalence would vitiate limitation - based “on
several conclusions, including the simplicity of the structure,
the specificity and narrowness of the claim, and the
foreseeability of variations at the time of filing the claim with
the PTO.”
– Here – simple and forseeable 153
Doctrine of Equivalents – Dedication
Rule
(1) Dedication is Reviewed as an Issue of Law; (2) Intent is
Not a Part of the Disclosure-Dedication Analysis; (3) The
Disclosure-Dedication Rule Does not Impose a § 112
Requirement on the Disclosed but Unclaimed Subject
Matter
Toro Co. v. White Consolidated (Toro
III), 383 F.3d 1326 (Fed. Cir. 2004)(J. Linn – JJ. Rader and Dyk)
– p. 379
– Leaf blower
– White – two-piece cover/ring disclosed not claimed
– Toro – (1) unintentional; (2) didn‟t have § 112(1)
support
– Fed Cir. – doesn‟t matter
154
Prosecution History Estoppel
Warner-Jenkinson Presumption – p. 382
– If no explanation is given for claim
amendment, the court should presume that
the PTO had a substantial reason related to
patentability for requiring amendment and
therefore estoppel should apply.
155
Prosecution History Estoppel
Festo VIII – S Ct – p. 383
– Estoppel arises from amendments that narrow
claim scope to satisfy any requirement of the
patent statute
– Narrowing amendment creates a rebuttable
presumption of estoppel
– Rebuttal if -
[1] equivalent was unforseeable
[2] amendment has only tangential relationship to
equivalent
[3] some other reason why patentee could not have been
reasonably expected to cover equivalent literally 156
Festo IX
Question # 1:
Was an amendment filed No
1. When the prosecution
that narrowed the literal No estoppel history record reveals no
scope of a claim? reason for the narrowing
amendment, Warner-
Jenkinson presumes that
the patentee had a
substantial reason relating
Yes to patentability;
consequently, the patentee
must show that the reason
for the amendment was not
Question # 2: No one relating to patentability
Was the reason for that if it is to rebut that
amendment a substantial one presumption.
relating to patentability? 2. A patentee’s rebuttal of
the Warner-Jenkinson
presumption is restricted to
the evidence in the
Yes No estoppel prosecution history record.
Question # 3:
1. Festo VIII imposes the
Scope of the subject
presumption that the patentee has
matter surrendered by the
surrendered all territory between
narrowing amendment.
the original claim limitation and the
Has Festo VIII presumption
amended claim limitation.
been rebutted?
No 2. The patentee may rebut that
presumption of total surrender by
demonstrating that it did not
Yes surrender the particular equivalent
in question.
Question # 4:
PHE bars patentee from
On the merits, is the accused
relying on DOE for accused
element in fact equivalent to the
element.
limitation at issue?
157
Prosecution History Estoppel –
Post Festo IX
The Presumption Does Not Apply When a
Claim is Broadened
Business Objects, S.A. v. MicroStrategy,
393 F.3d 1366 (Fed. Cir. 2005)(J. Rader – JJ. Schall and Prost) – p.
394
– Method - searching relational databases
– Claim-at-issue added during prosecution – as construed by Fed
Cir – broader than original claims
– Festo presumption does not apply
158
Prosecution History Estoppel –
Post Festo IX
Tangential Relationship
– Insituform Techs., Inc. v. CAT
Contracting, Inc., 385 F.3d 1360 (Fed. Cir. 2004)(J.
Schall – CJ. Mayer and J. Michel) – p. 395
Long history – had previously held that PHE did not bar
inf under DOE
Claims amd‟d during prosecution to avoid p/a – ltd claims
to one suction cup – accused process used multiple cups
HELD – amd to avoid p/a was “tangential” to use of
multiple cups – overcame Festo presumption
159
Miscellaneous
False Marking
– False Marking Requires Proof That a Product Does Not Fall
Within the Scope of at Least One Properly Construed Claim in
Each Patent Marked on the Product, and an Intent to
Deceive
Clontech Labs., Inc. v. Invitrogen Corp., 406
F.3d 1347 (Fed. Cir. 2005)(J. Clevenger – JJ. Dyk and
Prost) – pg. 400
– Honest though mistaken mismarking of an article will not
trigger liability under the statute
– Statute is not a strict liability for mismarking
– Intent to deceive required
160
Relief – Injunctions
Concern Over Business Method Patents and Contentious
Litigation are Insufficient Reasons to Refuse to Enter a
Permanent Injunction
– MercExchange, L.L.C. v. eBay, Inc., 401 F.3d 1323
(Fed. Cir. 2005)(J. Bryson – CJ. Michel and J. Clevenger) – p. 405
D. Ct.‟s grounds for refusal to grant injunction insufficient to
depart from general rule that permanent injunction should issue
following finding of infringement
District Court May Refuse to Issue Permanent Injunction Despite
Finding of Infringement Where the Proofs Required for
Determining Infringing Activity are not Amenable to a Narrowly
Tailored Order
– Fuji Photo Film Co. v. Jazz Photo Corp., 394 F.3d
1368 (Fed. Cir. 2005)(J. Rader –JJ. Clevenger and Linn) – p. 406
D. Ct‟s reasoning sufficient to depart from general rule for grant
of permanent injunctions
161
Relief – Actual Damages
Lost Profits Damages Can Not be Claimed for
Related Company
– Poly-America, L.P. v. GSE Lining Tech.,
383 F.3d 1303 (Fed. Cir. 2004)(J. Lourie – JJ. Michel and
Rader) – p. 410
Poly-American could not recover lost profits by related
company Poly-Flex
Despite sharing interests in collaborating in the
manufacture & sale of landfill liners, “that relationship by
itself is not sufficient to permit Poly-America to claim
Poly-Flex‟s lost profits from Poly-Flex‟s lost sales.”
162
Relief – Enhanced Damages – Willful
Infringement
Inference From Failure to Introduce Opinion of Counsel
– Knorr-Bremse v. Dana Corp., 383 F.3d 1337 (Fed. Cir.
2004)(en banc)(J. Newman – concurring-in-part, dissenting-in-part
opinion by J. Dyk) – p. 404
– Four En Banc Questions – Answered NO!
1. When the attorney-client privilege and/or work product
privilege is invoked by a defendant in an infringement suit, is it
appropriate for the trier of fact to draw an adverse inference
with respect to willful infringement?
2. When the defendant has not obtained legal advice, is it
appropriate to draw an adverse inference with respect to willful
infringement?
3. If the court concludes that the law should be changed, and
the adverse inference withdrawn as applied to this case, what
are the consequences for this case?
4. Should the existence of a substantial defense to
infringement be sufficient to defeat liability for willful
infringement even if no legal advice has been secured?
163
Relief – Enhanced Damages – Willful
Infringement
Knorr-Bremse v. Dana Corp., - cont‟d
– First 2 – (1) perceived widespread disregard for
patent rts no longer exists, (2) special rule for patent
cases not req‟d
– Third – case specific - remanded
– Fourth – part of the willfulness analysis
164
Relief – Enhanced Damages – Willful
Infringement
Affirmative Duty of Care Triggered by Actual Notice of Patent Rts
Imonex Services, Inc. v. W.H. Munzprufer Dietmar
Trenner GmbH, 408 F.3d 1374 Fed. Cir. 2005)(J. Rader – SJ.
Archer and J. Bryson) – p. 429
– Affirmative duty of care – after actual notice – remains
– Note – marking alone does not trigger duty of care
– Ds – no opinion until after suit was filed
– Coin selectors
– Imonex – OEM D‟s – actual notice (1) display of products w/ patent
#s at trade shows, (2) distribution of ads with patent notices, (3)
correspondence w/ D‟s employees
– D‟s – only low-level employees w/o decision-making authority
– Fed Cir – jury could have found actual notice
– Caution – D Ct did not use willful finding to enhance damages
throughout term of inf – only awarded atty fees for cont‟d sales after
first trial finding patent valid, enforceable and infringed. 165
Miscellaneous
Government’s Right to Federally Funded Inventions
– (1) Failure to Follow Requirements of Regulations Governing
Reporting of Federally Funded Inventions Allows Government to
Receive Title; (2) Government May Insist on Title Without Showing
Harm to the Government
Campbell Plastics Eng’g & Mfg. v. Brownlee, 389 F.3d
1243 (Fed. Cir. 2004)(J. Clevenger – JJ. Michel and Dyk) – p.
504
19 USC § 1337 – International Trade Commission
– Enforcement Proceedings are Governed by § 1337(b) – Participants
in Such Proceedings are Entitled to Raise “all defenses” (i.e.,
Validity)
VastFrame Camera, Ltd. v. ITC, 386 F.3d 1108 (Fed. Cir.
2004)(J. Linn – JJ. Clevenger and Bryson) – p. 506 166
Miscellaneous
Antitrust
– (1) Antitrust Consequences of Patent Tying is Governed by
Federal Circuit Law; (2) A Rebuttable Presumption of Market
Power Arises From Possession of a Patent Over a Tying
Product
Independent Ink, Inc. v. Illinois Tool Works,
Inc., 396 F.3d 1342 (Fed. Cir. 2005)(J. Dyk – JJ. Clevenger
and Prost) – p. 507
167