Archive for the ‘Claim construction’ Category

Some Recent Functional Language Decisions

Sunday, September 23rd, 2012

It is worth highlighting that in the recent opinion of Medtronic v. Boston Scientific Corp. et al., App. No. 2011-1313 (Fed. Cir. Sept. 18, 2012) the Federal Circuit noted the limiting effect of functional language in a claim.  The technology of the patents in the appeal concerned implantable defibrillators.  The district court had construed the claims at issue in the case (from Reissue patent RE38,119) as being limited to:  “for the treatment of congestive heart failure.”   That limitation was not expressly part of the claim language.  Upon appeal of that claim construction, the Federal Circuit noted that claim 171 of a continuation patent of the RE38,119 patent, the RE39,897 patent, expressly recited “to improve the pumping ability of the heart suffering from heart failure.”  Claim 171 recites:

171.  A method of improving the pumping ability of a heart suffering from heart failure comprising:

sensing for depolarization signals only from one ventricle of the heart;

stimulating the left ventricle and the right ventricle when a depolarization signal from the one ventricle is detected for effecting a coordinate contraction of ventricles contracting in an incoordinate manner to improve the pumping ability of the heart suffering from heart failure.

The Federal Circuit stated:

Moreover, inclusion of the express limitation “to improve the pumping ability of the heart suffering from heart failure,” RE’897 Patent col. 21 ll. 33-35, in claim 171 of the RE’897 Patent, a continuation of the RE’119 Patent, suggests that the other claims that do not recite such a limitation should not be so limited. We therefore conclude that the district court erred by restricting the claimed invention to the treatment of congestive heart failure.

Thus, the Federal Circuit noted that the functional language “to improve the pumping ability of the heart suffering from heart failure” has limiting effect on the scope of the claim.

Ex Parte Miles

Another functional language decision, Ex Parte Miles, was previously highlighted by the All Things Pros blog.  In that appeal to the Board, the Board gave limiting effect to the language “adapted to be removably secured to said base.”  The claim at issue recited:

2. A gas fireplace insert assembly, comprising:

a firebox having a base a top and at least one wall, said at least one wall extending between said top and said base such that said base, said top and said at least one wall define a front opening firebox;

legs adapted to be removably secured to said base;

said at least one wall has a rear portion and side portions having a dark color and a contrasting light color, said light color extending downward from a demarcation between said dark and said light colors to said base; and

said demarcation being continuous across said rear and

said side portions.

The Examiner had argued that “adapted to be removably secured to said base” was not a positive limitation but only required the ability to perform.  Moreover, the Examiner argued that the legs of a cited reference were capable of being removed because they were “removable by a blowtorch.”  The Board reversed the Examiner noting Federal Circuit precedent that claim construction should be firmly anchored in reality:

Under the Examiner’s interpretation, because it is possible to remove anything using a blow torch, every means of attaching or securing two parts is removable. This interpretation is incorrect because it would effectively expunge the word “removably” from the claim language. See Stumbo v.Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous).

The Specification does not provide a definition for the terms “removably secured” or “removably attached.” An ordinary meaning of removable is “that can be removed or taken away,” and an ordinary meaning of “secure” is “to fix or attach (something) so as not to become loose, giveway, fall off, or come apart.”1 Consistent with these ordinary meanings, the Specification describes removable legs as attached by screws.2 Spec. 13, ll. 17-25 (describing legs 100 and 102 as releasably secured to base rim 20 ofinsert 12 by screws 116); figs. 6-8.

An artisan would interpret that removably secured or attached legs are those that they may be removed in the ordinary sense of the word, such as by unscrewing a screw. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1365 (Fed. Cir. 1999) (interpreting that rivets and laminate permanently affix while, in contrast, screws are removable). Consequently, removal by means such as a blow torch is not within the scope of claims 2, 10, and 16. Id. at 1365 (“claim construction is firmly anchored in reality by the understanding of those of ordinary skill in the art”).

As such, we cannot sustain the rejection of independent claims 2, 10, and 16, and their respective dependent claims 3-9, 11-13, and 17-29.

Having determined that the Examiner’s proposed combination of references did not satisfy the language “legs adapted to be removably secured to said base,” the Board reversed the rejection.

You Be the Judge: Rembrandt Technologies v. Cablevision

Sunday, July 15th, 2012

The Rembrandt Technologies v. Cablevision oral argument took place last week.  This appears to be a rather high-stakes patent litigation involving multiple cable companies.  The technology at issue concerns a viterbi decoder for a trellis encoded signal.  The patent that is the subject of the oral argument is U.S. patent 5,243,627.

This is an opportunity for you to be the judge of the claim construction issue and to see if your prediction matches the forthcoming panel decision.

1)  Do you think “signal point” would have had a plain and ordinary meaning to one of ordinary skill in the art?

2)  If “signal point” did not have a plain and ordinary meaning, did the “present invention” language, Abstract, “Summary of the Invention,” and repeated embodiments using only two-dimensional signal points limit the meaning of “signal point” to a two-dimensional signal point.  Or, if “signal point” did have a plain and ordinary meaning, did those portions of the specification serve as a clear and unmistakable disavowal of dimensions other than two?

3)  Did the paragraph beginning

“The foregoing merely illustrates the principles of the invention. Thus although the illustrative embodiment utilizes a four-dimensional signaling scheme, the invention can be used with signaling schemes of any dimensionality. ”

cause one of ordinary skill in the art to believe that the claims should encompass signal schemes of any dimensionality?

You can listen to the oral argument [here].

Oral Argument of the Month: Timebase v. Thomson

Sunday, July 8th, 2012

The case of Timebase v. Thomson, App. No. 2012-1082 (Fed. Cir. June 8, 2012) was recently decided by the Federal Circuit via a Rule 36 affirmance.  The oral argument highlighted a couple of interesting issues.  First, how should the word “each” be construed.  Second, does a construction of the word “displaying” that requires the displaying to be performed by a consumer’s computer raise divided infringement issues when an on-line publisher is the party being sued for infringement.  You can listen to the entire oral argument here: [Listen].

Claim 1 of the ‘592 patent at issue reads:

1. A computer-implemented system for publishing an electronic publication using text-based data, comprising:

a plurality of predefined portions of text-based data with each predefined portion being stored;

at least one predefined portion being modified and stored;

a plurality of linking means of a markup language, each predefined portion of said text-based data and said at least one modified predefined portion of text-based data being encoded with at least one linking means; and

a plurality of attributes, each attribute being a point on an axis of a multidimensional space for organising said plurality of predefined portions and said at least one modified predefined portion of said text-based data.

Claim 1 of the 7293228 patent at issue reads:

1. A method for electronically publishing text-based data, the method comprising:

dividing the text-based data into a plurality of portions of text-based data;

obtaining an amended portion of text-based data that is amended relative to one of the plurality of portions of text-based data;

storing each of the plurality of portions of text-based data;

storing the amended portion of text-based data;

providing a plurality of attributes, wherein the attributes define a manner in which the plurality of portions of text-based data and the amended portion of text-based data can be organized, displayed and linked in a multidimensional space;

encoding each of the plurality of portions of text-based data and the amended portion of text-based data with a markup language to include at least one link defined by one of the plurality of attributes;

allowing a user to search the text-based data using at least one of the plurality of attributes; and

displaying the text-based data to the user by:

displaying at least one of the plurality of portions of text-based data or the amended portion of text-based data in response to the search; and

displaying text, and/or one or more selectable links representing at least one additional attribute.

With respect to the word “each,” Judge Newman remarked on her philosophy of construing claim language: [Listen] and [Listen].

See these earlier posts with respect to the word “each”:  [Link], [Link], and [Link].

Oral Argument of the Month: AllStar Tire and Wheel, Inc. v. Wheel Pros, Inc.

Saturday, May 28th, 2011

The oral argument of the month for the month of May is AllStar Tire and Wheel, Inc. v. Wheel Pros, Inc., 2011-1015 (Fed. Cir. May 12, 2011).  This oral argument raised interesting issues concerning functionality in design patent infringement cases.  

For background, it appears that the inventor was deposed and through his testimony gave the impression that the commercial embodiment (not necessarily the claim of the design patent) possessed functional traits.  The accused infringer relied on that testimony to prevail on summary judgment that the design patent was merely functional.  The plaintiff-appellant argued on appeal that the claim was not ambiguous on its face and that there was no reason to turn to the inventor’s testimony because it is extrinsic evidence of last resort for consideration only when a claim is ambiguous.  Moreover, the plaintiff-appellant argued that the inventor’s testimony was about a commercial embodiment, as opposed to the design patent itself. 

During the oral argument the panel raised a number of interesting issues as to whether summary judgment was appropriate in this case.  Judge Linn noted that the contour of a wheel cover design might not be functional but rather ornamental.  And, if the design element (i.e., the contour of the wheel cover) was ambiguous as to whether it was ornamental or functional, was it appropriate to decide such an ambiguous issue on summary judgment. 

The panel also asked if functionality is a question of fact that should be given to a jury if a jury trial has been requested (or resolved by the court acting as a fact finder if there is no jury).  The panel asked about PHG Technologies, LLC v. St. John Companies, Inc., which stated that whether a design element is functional is a matter of fact; and how should that case be applied in view of the court’s unanimous en banc opinion in Egyptian Goddess, Inc. et al. v. Swisa, Inc. et al., which stated that functionality is a matter of claim construction.  The panel queried whether Egyptian Goddess had overruled PHG Technologies.  Also, the panel inquired if Egyptian Goddess has not expressly overruled PHG Technologies, should the en banc opinion of Egyptian Goddess be given more weight than the earlier decided PHG Technologies decision.

You can listen to the discussion of those issues here: [Listen].

 The panel also asked about an inconsistency in the district court’s opinion.  At one point the district court’s opinion apparently stated that the wheel cover design included both functional and non-functional elements.  The district court then went on to discuss only the functional elements.  Judge Clevenger asked whether that suggests that the district court was incorrect in deciding the issue on summary judgment.  You can listen to the discussion of that issue here: [Listen].

A third issue was raised by Judge Linn concerning whether the ordinary observer standard has any role to play in determing functionality in the context of interpreting claim scope.   At that point, Judge Linn said “this is the gift that keeps on giving here; this question, it gets more and more involved and convoluted every minute.” [Listen].

 The plaintiff-appellant responded on rebuttal that in view of the number of open questions highlighted by the discussion, that it was clear that the district court should not have granted summary judgment.

After the panel raised these interesting issues and questions, it promptly issued a Rule 36 decision affirming the summary judgment . . . .

You can listen to the entire oral argument here: [Listen].

You can view the court’s Rule 36 decision here: [Read].

“Feature of the present invention”

Sunday, May 1st, 2011

In Lexion Medical, LLC v. Northgate Technologies, Inc. et al., 2009-1494 (Fed. Cir. April 22, 2011), the Federal Circuit addressed the construction of a phrase in a claim that included the word “within.”   The court addressed whether a time limitation, such as “always within,” should be included in the claim construction of “within.” 

What interested me most about the oral argument was something that does not appear in the court’s opinion.  Namely, there was a discussion of the weight that should be given to the language from the specification that referred to ”an important feature of the present invention.”  Judge Prost had the following exchanges with the counsel for the appellee: [Listen] and [Listen]. 

It is arguable whether the word “feature” is any different from the word “aspect.”  See this link for a recent discussion of the phrase ”aspect of the invention.”

On an unrelated note, you often hear the admonishment of no new issues should be argued on appeal.  In this case, the appellee argued that construction of the word “within” was a new argument on appeal: [Listen].  Nevertheless, the court addressed the argument in its opinion.

You can read the court’s opinion here: [Read].

You can listen to the oral argument here: [Listen].

(The other interesting thing about this case is that it was an affirmance by the Federal Circuit of a summary judgment of infringement of a means plus function claim.)

“Aspect of the invention”

Thursday, March 10th, 2011

In the book Drafting Patents for Litigation and Licensing (published by BNA Books and the ABA section of Intellectual Property) the authors caution that to avoid an argument that a patent specification has described an invention narrowly, patent drafters should avoid making references to specific features or aspects of “the invention” or “the present invention.”  Instead, all features, aspects, and characteristics should be described as being possible or potential or exemplary embodiments of the invention.

In the recent oral argument of St. Clair Intellectual Property Consultants, Inc. v. Canon, Inc., the appellant indeed made an “aspect of the invention” argument.  Judges Moore and Dyk seemed unconvinced, with Judge Moore commenting that “aspect of the invention” doesn’t necessarily require that every claim have that aspect.  [Listen]  Nevertheless, patent prosecutors might want to take heed that such arguments are actually being made against their work product during patent litigation and that not all judges think alike.

You can listen to the entire oral argument here: [Listen].

You can read the court’s split decision here: [Read].

Oral argument addresses the word “having” in a patent claim

Wednesday, March 9th, 2011

If you use the word “having” interchangeably with the word “comprising” in your claim drafting practice, you might want to listen to the oral argument in Biopolymer Engineering, Inc. and Massachusetts Institute of Technology v. Immunocorp, et al., 2010-1096 (Fed. Cir. Feb. 22, 2011).  The counsel for plaintiff-appellant spent most of the oral argument trying to persuade the panel that the district court had inappropriately given “having” a closed meaning such as that given to “consisting of” in patent claims rather than an open meaning as typically applied to “comprising” in patent claims.  The claim at issue read as follows:

A method for improving the growth and survival of animals comprising: administering an effective amount of a nutritional supplement to an animal, said nutritional supplement comprising water-insoluble yeast cell wall extract comprising purified beta (1,3) glucan having a particle size of about 1.0 micron or less.

The plaintiff-appellant argued that the district court had erred by excluding administration of nutritional supplements that included particle sizes less than about 1.0 micron as well as particle sizes greater than about 1.0 micron.

The panel affirmed the district court decision via a Rule 36 opinion without weighing in on the “having” argument in a written opinion. 

You can listen to the oral argument here: [Listen].  The pertinent discussion begins at about the 3:07 minute mark.

The district court’s claim construction opinion is available here: [Read].

The Federal Circuit per curiam opinion is available here: [Read].

For more on “having” see Crystal Semiconductor Corp. v. Tritech Microelecs. Int’l, Inc., 246 F.3d 1336 (Fed. Cir. 2001) and Regents of University of California v. Eli Lilly and Co., 119 F.3d 1559 (Fed. Cir. 1997).

More Hybrid Claims Invalidated

Wednesday, February 23rd, 2011

The Federal Circuit expanded on its hybrid claim jurisprudence with its recent decision in In re Katz et al. v. American Airlines, et al., 2009-1450 et al., (Fed. Cir. February 18, 2011).  The court ruled that three of Katz’s claims – claims 1, 2, and 83 – were indefinite hybrid claims.  Those claims are shown below, but the relevant portion is in the independent claims 1 and 68:

1. An interface control system for use with, (1) a communication facility including remote terminals for individual callers to make calls, wherein said remote terminals comprise a telephone capability including voice communication means and some of said remote terminals comprise digital input means for providing data, (2) a multiple port, multiple format processor for concurrently processing data from a substantial number of callers in any one of a plurality of formats, said communication facility automatically providing call data signals, as to indicate called data (DNIS), to select a specific format from said plurality of formats, and (3) a plurality of live operator attended terminals, for a plurality of formats, said interface control system comprising:

call data means for receiving call data signals from said communication facility for a calling remote terminal indicative of calling number identification signals automatically provided by said communication facility and call data signals to indicate called data (DNIS) to select a specific format from said plurality of formats;

interface means for providing automated voice messages relating to said specific format to certain of said individual callers, wherein said certain of said individual callers digitally enter data, including at least caller information data, through said digital input means;

means for directly forwarding, under control of said specific format, a call coupled to said interface means from any one of said remote terminals to one of said plurality of live operator attended terminals for inputting of caller identification data and caller information data when said remote terminals do not have capability to digitally provide data; 

qualification means coupled to said live operator attended terminals for controlling access by at least certain of said callers to at least a portion of said system, said qualification being based at least in part on caller identification data entered through said digital input means by at least certain of said callers having digital input means and at said live operator attended terminal when said remote terminals do not have capability to digitally provide data,

means for processing coupled to said live operator attended terminals for processing caller information data entered by an operator at said live operator attended terminal; and

means for storing coupled to said interface means and said processing means for storing certain select data from said caller information data entered by said operator and data entered digitally by said individual callers to update records on said individual callers.

2. An interface control system according to claim 1, wherein said call data signals automatically provided from said communication facility for a calling remote terminal indicative of calling number identification signals are used to access a positive file of data with respect to said individual callers stored in said means for storing.

68. An interface control system for use with, (1) a communication facility including remote terminals for individual callers to make calls, wherein said remote terminals comprise a telephonic instrument including voice communication means and some of said remote terminals comprise digital input means for providing data, and (2) a multiple port, multiple format processor for concurrently processing data from a substantial number of callers in any of a plurality of formats, said communication facility automatically providing call data signals, as to indicate called data (DNIS), to select a particular format from said plurality of formats, and (3) a plurality of live operator attended terminals, for a plurality of formats, said interface control system comprising:

call data means for receiving signal-represented call data from said remote terminals indicative of called number identification signals (DNIS) automatically provided by said telephonic communication facility;

interface means for providing automated voice messages relating to a specific format to certain of said individual callers, wherein said certain of said individual callers digitally enter data through said digital input means;

means for directly forwarding certain of said calls coupled to said interface means from any one of said remote terminals to one of said plurality of live operator attended terminals under control of said call data signals when necessary;

qualification means for controlling access by at least certain of said callers to at least a portion of said system,

means for processing coupled to said live operator attended terminals for processing caller information data entered by an operator at said live operator attended terminal; and

means for transferring certain of said calls from said live operators to said interface means to receive processed data via a voice generator.

83. An interface control system according to claim 68, wherein said qualification means controls access at least in part based upon said call data signals.

The Federal Circuit had the following to say about these hybrid claims:

The district court held that Statistical Interface claims 1, 2, and 83 of the ’893 patent are indefinite under IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), because they claim both an apparatus and a method of use. In IPXL, this court addressed a claim that covered a system with “an input means” and required a user to use the input means. This court held that the claim was indefinite because it was unclear “whether infringement . . . occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means.” Id.

 

Claims 1, 2, and 83 of the ’893 patent cover a system with an “interface means for providing automated voice messages . . . to certain of said individual callers, wherein said certain of said individual callers digitally enter data.” The district court found “no meaningful distinction” between those claims and the claim at issue in IPXL.

 

Katz seeks to distinguish IPXL on the ground that the term “wherein” does not signify a method step but instead defines a functional capability. We disagree and uphold the district court’s ruling. Like the language used in the claim at issue in IPXL (“wherein . . . the user uses”), the language used in Katz’s claims (“wherein . . . callers digitally enter data” and “wherein . . . callers provide . . . data”) is directed to user actions, not system capabilities.

 

In the alternative, Katz contends that this court nar-rowed IPXL in the subsequent decision in Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1374-75 (Fed. Cir. 2008). That case dealt with a method claim that recited structural elements. The claim took the form of a “method of executing instructions in a pipelined processor comprising: [structural limitations of the pipelined processor]; the method further comprising: [method steps implemented in the pipelined processor].” Id. at 1374. The court in Microprocessor distinguished IPXL because the method claim in Microprocessor did not create any confusion as to when the claim was directly infringed; direct infringement occurred upon practicing the claimed method in a processor with the required structural limitations. Simply making or selling a proces-sor having that structure would not have infringed. Katz’s claims, however, create confusion as to when direct infringement occurs because they are directed both to systems and to actions performed by “individual callers.” Katz’s claims therefore fall squarely within the rationale of IPXL and are indefinite.

As a point of reference, the relevant portion of the IPXL v. Amazon decision discussing hybrid claims reads as follows:

The district court found that claim 25 is indefinite under 35 U.S.C. § 112, as it attempts to claim both a system and a method for using that system. Section 112, paragraph 2, requires that the claims of a patent “particularly point[] out and distinctly

claim[] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112 (2000). A claim is considered indefinite if it does not reasonably apprise those skilled in the art of its scope. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1217 (Fed. Cir. 1991).

 

Whether a single claim covering both an apparatus and a method of use of that apparatus is invalid is an issue of first impression in this court. The Board of Patent Appeals and Interferences (”Board”) of the PTO, however, has made it clear that reciting both an apparatus and a method of using that apparatus renders a claim indefinite under section 112, paragraph 2. Ex parte Lyell, 17 USPQ2d 1548 (BPAI 1990). As the Board noted in Lyell, “the statutory class of invention is important in determining patentability and infringement.” Id. at 1550 (citing In re Kuehl, 475 F.2d 658, 665 (CCPA 1973); Rubber Co. v. Goodyear, 76 U.S. 788, 796 (1870)). The Board correctly surmised that, as a result of the combination of two separate statutory classes of invention, a manufacturer or seller of the claimed apparatus would not know from the claim whether it might also be liable for contributory infringement because a buyer or user of the apparatus later performs the claimed method of using the apparatus. Id. Thus, such a claim “is not sufficiently precise to provide competitors with an accurate determination of the ‘metes and bounds’ of protection involved” and is “ambiguous and properly rejected” under section 112, paragraph 2. Id. at 1550-51. This rule is well recognized and has been incorporated into the PTO’s Manual of Patent Examination Procedure. § 2173.05(p)(II) (1999) (”A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph.”); see also Robert C. Faber, Landis on Mechanics of Patent Claim Drafting § 60A (2001) (”Never mix claim types to different classes of invention in a single claim.”).

 

Claim 25 recites both the system of claim 2 and a method for using that system. The claim reads:

 

The system of claim 2 [including an input means] wherein the predicted transaction information comprises both a transaction type and transaction parameters associated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters.

 

‘055 patent, col. 22, ll. 8-13 (emphasis added).

 

Thus, it is unclear whether infringement of claim 25 occurs when one creates a system that allows the user to change the predicted transaction information or accept the displayed transaction, or whether infringement occurs when the user actually uses the input means to change transaction information or uses the input means to accept a displayed transaction. Because claim 25 recites both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope, and it is invalid under section 112, paragraph 2.

A total of four claims have now been invalidated by the Federal Circuit under the hybrid claim principle.

Claim Construction and the Microsoft Computer Dictionary

Wednesday, January 26th, 2011

computer-dictionary1Have you ever wondered if Microsoft’s computer dictionary has been used against it in patent litigation to construe patent claim terms?  Apparently, at the district court level in Uniloc v. Microsoft an argument was made by Uniloc that relied on Microsoft’s computer dictionary to construe claim language.  That argument was noted in the oral argument of the subsequent appeal to the Federal Circuit  [Listen].  The dictionary argument did not prevail at the district court level, however. [Link].

Feelin’ Groovy — Spine Solutions, Inc. et al. v. Medtronic Sofamor Danek USA,Inc. et al.

Friday, September 24th, 2010

UPDATED 9/25/2010

Spine Solutions, Inc., et al. v. Medtronic Sofamor Danek USA, Inc. et al., 2009-1538 (Fed. Cir. September 9, 2010) is an interesting case in that it deals with “adapted to” language and “operative engagement” language.

6936071_intervertebral_implant1-fig-2

Claim 1 of the 6,936,071 patent, the only independent claim at issue, reads as follows:

 

An intervertebral implant insertable between ad-jacent vertebrae, comprising,

 

an upper part having an upper surface for engaging a vertebrae and a lower surface which includes a rounded portion,

 

a lower part having a lower surface for engaging a vertebrae and an upper surface portion in operative engagement with the rounded portion of the upper part,

 

said implant being constructed to be the sole im-plant in its intervertebral space,

 

the implant having a lead end which leads as the implant is inserted along a path into the intervertebral space and a trailing end opposite the lead end, and lateral planes which pass through the outermost boundaries of the implant and parallel to the said path, and

 

a single anchor on each of the upper surface of the upper part and the lower surface of the lower part, each said anchor being elongated, having a height greater than its width, and located along a line parallel to said path, the two anchors lying essentially in the same vertical plane, which plane is essentially midway between said lateral planes,

 

each said anchor being adapted to enter a groove in the adjacent vertebrae as the implant moves along said path into the intervertebral space, to anchor its respective part to the vertebrae which its surface engages.

The issue with respect to the “adapted to” language was whether the written description of the patent had been satisfied for the claim language “adapated to enter a groove.” This language was added after filing the application and according to the appellant had no basis in the specification. The court decided this isssue as follows:

Medtronic asserts that the district court erred in granting summary judgment that the ’071 patent contains adequate written description to support the limitation “single anchor . . . adapted to enter a groove.” We review a grant of summary judgment de novo, reapplying the standard applicable at the district court. Young v. Lu-menis, Inc., 492 F.3d 1336, 1345 (Fed. Cir. 2007). Sum-mary judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). “Compliance with the written description requirement is a question of fact but is ame-nable to summary judgment in cases where no reasonable fact finder could return a verdict for the non-moving party.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008).

Claim 1 recites that the “single anchor” is “adapted to enter a groove in the adjacent vertebrae.” ’071 patent col.7 ll.3-10 (emphasis added). Medtronic argued that the written description does not disclose the “adapted to enter a groove” limitation. SSI argues that the ’071 patent necessarily discloses anchors that are “adapted to enter a groove” because it discloses that the adjacent vertebrae rest on the support faces of the intervertebral implant after insertion. The district court granted summary judgment holding that the claim was adequately sup-ported by the written description. We see no error in this judgment.

Medtronic is correct that the ’477 patent disclosure was not incorporated by reference and therefore cannot provide the disclosure of the “adapted to enter a groove” limitation. In the two pages Medtronic devotes to this issue, it argues that the patent makes no mention of grooves. See, e.g., Medtronic’s Br. at 37 (“patent’s failure to disclose any information concerning the grooves located in the vertebrae and their interaction with the anchor is a prime example of SSI’s attempt to expand its claims beyond its disclosures”); Medtronic’s Reply Br. at 8 (argu-ing that the patent diagrams do not show any grooves). Because the claims at issue relate to the implant and do not cover the groove itself, applicants were not required to disclose grooves or how grooves should be formed or cut. The limitation at issue does not recite cutting a groove into vertebrae, or even inserting an anchor into a groove; rather, it recites “a single anchor . . . adapted to enter a groove.” The issue for written description purposes is whether a person of skill in the art would understand the ’071 patent to describe a single anchor that is adapted to enter a groove. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (“the test for sufficiency [of the written description requirement] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date”).

We see no error in the district court’s determination that there is no genuine dispute of material fact; the specification describes the claimed “single anchor” as necessarily being “adapted to enter a groove.” The disclosure of the shape of the anchor in combination with its placement adequately describes an anchor adapted to enter a groove. The specification discloses that each of the top and bottom parts of the implant has a support face that includes a single anchor. ’071 patent col.3 ll.56-58, col.4 ll.9-12, figs. 1-7. These anchors affix the upper and lower parts into the adjacent vertebrae such that the end face of each vertebrae “rests . . . on the support face” of the corresponding part of the implant. Id. col.3 ll.58-60, col.5 ll.59-64. Thus, the specification discloses that the single anchor enters the adjacent vertebrae in such a way that the vertebrae “rest” on the support faces of the top and bottom parts of the implant. For such direct contact between the implant and vertebrae to occur, the single anchor must be entirely inserted into the adjacent vertebrae: that is, the anchors must be fully inserted into a “groove” of some type, whether that groove is pre-cut or formed by the anchor itself (e.g., by a “self-cutting” an-chor). The specification, therefore, discloses that the single anchor is inserted into a vertebral groove. The record lacks adequate evidence to create a genuine dis-pute over whether the specification discloses that the anchors are “adapted to enter a groove.” The fact that the specification never mentions the word groove is not suffi-cient to create a genuine dispute of material fact.

We agree with the district court that the specification of the ’071 patent provides adequate written description to support the “single anchor . . . adapted to enter a groove” limitation. Therefore, we affirm the court’s grant of SSI’s motion for partial summary judgment dismissing Medtronic’s 35 U.S.C. § 112 defenses.

The parties spent a good portion of oral argument discussing the “adapted to enter a groove” issue. You can listen to Appellant’s argument [Here], Appellee’s argument [Here], and Appellant’s rebuttal argument [Here].

Another issue concerned the claim construction of the language “operative engagement.” The Appellant argued as follows: [Listen]. The Appellee did not have a chance to discuss this issue during oral argument.

The panel had the following to say in regard to “operative engagement”:

Medtronic asserts that the district court erred in con-struing the claim term “operative engagement.” Claim construction is a matter of law, and we review the court’s claim construction without deference. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1451 (Fed. Cir. 1998) (en banc). In doing so, we are mindful of the principle that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). We read the claims “in view of the specification,” which is “the single best guide to the meaning of a disputed term.” Id. at 1315.

Claim 1 recites the limitation of “a lower part having a lower surface for engaging a vertebrae and an upper surface portion in operative engagement with the rounded portion of the upper part.” ’071 patent col.6 ll.60-62 (emphasis added). At claim construction, Medtronic proposed construing “operative engagement” to mean “the interaction between the pivot insert and the rounded portion of the upper part.” Claim Construction Order, 2008 U.S. Dist. LEXIS 116648, at *18. The court ob-served that although the preferred embodiment of the ’071 patent has a pivot, claim 1 does not recite such a limitation: rather, claim 1 recites only an upper and a lower part that are “in operative engagement” with each other. The court also found that claim differentiation weighed against reading a pivot limitation into claim 1, because various dependent claims add limitations relating to a two-piece lower part with a pivot insert. Therefore, the court adopted SSI’s proposed construction, construing “operative engagement” as “permitting movement (for example pivotability).” Id. at *23.

     Medtronic asserts that the court erred in construing “operative engagement” as not incorporating a pivot insert. According to Medtronic, the only “engagement” disclosed by the specification occurs between the upper part and the pivot insert, not between the upper and lower parts. SSI asserts that the court’s construction is correct because the plain language of the claim does not limit the invention to the preferred three-piece embodi-ment.

We agree with SSI that the court correctly construed “operative engagement.” The language of the limitation is straightforward: the lower part of the implant engages “operatively” with the rounded portion of the upper part. Given that the claimed invention is an intervertebral implant designed to replace a disc in a spinal column, “operative engagement” must be engagement such that the upper and lower parts of the implant can move rela-tive to each other; otherwise, the implant would be rigid and would inhibit movement of the adjacent vertebrae. Thus, the court correctly determined that “operative engagement” relates to permitting movement. The court also did not err in identifying pivotability as an example type of movement; the ’071 patent specifically discloses pivotability in association with the preferred embodiment. However, nothing in the claim suggests that the upper part of the implant must be specifically engaged with a pivot insert, as opposed to the lower part of the implant. To the contrary, the claim indicates that the upper and lower parts are engaged with each other directly. ’071 patent col.6 ll.60-62 (“a lower part having . . . an upper surface portion in operative engagement with the rounded portion of the upper part”). Therefore, the court did not err in construing “operative engagement” as “permitting movement (for example pivotability).”

     Medtronic asserts, in the alternative, that under the court’s construction claim 1 is invalid for failure to comply with the written description requirement. Therefore, Medtronic argues, the court erred in granting summary judgment that the ’071 patent contains adequate written description to support the limitation “lower part having . . . an upper surface portion in operative engagement with the rounded portion of the upper part.” Medtronic argues that the ’071 patent only describes a three-piece device with a separate pivot insert, not a two-piece device that permits movement between the top and bottom parts. However, Figures 3 and 6 of the ’071 patent illustrate the implant outside the intervertebral space (i.e., prior to insertion) and show the pivot insert as embedded in the lower part. Additionally, the evidence at summary judg-ment included deposition testimony from Medtronic’s expert that a person of skill in the art would have known that an implant having a lower plate with an embeddable pivot insert—such as that disclosed by the ’071 patent—could have been assembled prior to insertion and inserted into the patient as a two-piece device. Medtronic does not point to any evidence rebutting this testimony. Therefore, we agree with the district court that a person of skill in the art would have understood the ’071 patent to describe an implant that could be pre-assembled prior to insertion, such that the upper surface of the lower part is “opera-tively engaged” with the lower surface of the upper part.
     Medtronic contends that the ’071 patent does not de-scribe a two-piece implant because the ’071 patent ac-tively disparages the two-piece design of the ’477 patent. In discussing the two-piece design of the ’477 patent, the ’071 patent notes that it is “particularly difficult” to achieve a minimum structural height for an implant if the pivot is embedded prior to insertion. Id. col.1 ll.11-19. However, this does not rise to the level of an express disclaimer sufficient to limit the scope of the claims; “[d]isavowal requires expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Epistar Corp. v. ITC, 566 F.3d 1321, 1335 (Fed. Cir. 2009). Further, claim 1 is not directed to the height-minimizing embodiment. The originally-filed claims recited limitations directed to “protrusions and recesses . . . which are offset laterally from one another in such a way that . . . [the upper and lower parts] mesh with one an-other,” see J.A. 17167; claim 1 as issued recites no such limitation.

 
You can read the court’s opinion here: [Read].
You can listen to the entire oral argument here: [Listen].

You can review extrinsic evidence here: