Archive for the ‘Claim construction’ Category

Prior Art Used to Construe Claim

Tuesday, September 21st, 2010

In Laryngeal Mask Co. Ltd v. Ambu A/S, 2010-1028 (Fed. Cir. September 21, 2010), the Federal Circuit dealt with some complicated claim construction issues.  One issue concerned the meaning of the word “backplate” used in a laryngeal mask patent.  The oral argument for this case was featured in an earlier post as the Oral Argument of the Month [Link]. 

What caught my eye in today’s opinion was the use of prior art patents as a guide to construe a claim term.  The court wrote:

Although there was no dictionary or treatise defini-tion introduced for backplate, there are two prior art patents also related to laryngeal mask devices which use the term. U.S. Patent No. 5,355,879 (’879 patent); U.S. Patent No. 5,305,743 (’743 patent). Both prior art patents list the same inventor as the patent at issue, Dr. Brain. Both of these patents disclose a backplate, but neither includes a tube joint. This prior art use of the term would further inform one of skill in the art as to the common meaning of the term backplate.

The term backplate has a somewhat self-descriptive nature. As the prior art patents indicate it is the plate on the back. In light of the claims, specification, prosecution history, and prior art patents, we conclude that one of skill in the art would understand the claimed backplate to be “the relatively rigid mask structure surrounded by the cuff.” We conclude that one of skill in the art would not conclude that the backplate must have a tube joint. We also conclude that the inventor did not act as his own lexicographer here and clearly require the backplate to have a tube joint. Because the district court’s judgment of noninfringement was based on an erroneous claim con-struction, we vacate that judgment and remand for fur-ther proceedings.


The court’s statement  “in view of the claims, specification, prosecution history, and prior art patents” is a little redundant because the prior art patents were cited during the prosecution history — therefore under Phillips v. AWH, 415 F.3d 1303 (Fed. Cir. 2005) those cited prior art patents actually form part of the prosecution history.  See Phillips at 1317 (“The prosecution history, which we have designated as part of the “intrinsic evidence,” consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent. Autogiro, 384 F.2d at 399.”).

This case is reminiscent of Arthur A. Collins, Inc. v. Northern Telecom Ltd., 216 F.3d 1042 (Fed. Cir. 2000), where the court said:

Even when prior art is not cited in the written description or the prosecution history, it may assist in ascertaining the meaning of a term to a person skilled in the art. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584, 39 USPQ2d 1573, 1578 (Fed.Cir.1996). When prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper construction of the term, because it may indicate not only the meaning of the term to persons skilled in the art, but also that the patentee intended to adopt that meaning.

You can read the entire Laryngeal Mask opinion here: [Read].

Cybor Watch

Friday, August 27th, 2010

It has been almost four years since the Federal Circuit declined to take en banc review of the case Amgen, Inc. v. Hoechst Marion Roussel that would have allowed the court to review its en banc ruling in Cybor Corp v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998).   In declining to hear the Amgen case en banc, several of the judges noted that when the right case came along, they would be willing to grant en banc review to reconsider Cybor.   [Read].

Judge Clevenger and Judge Moore recently made these comments which seemed to imply discontent with the Cybor precedent during the oral argument of Lincoln National Life Insurance Co. v. Transamerica Life Insurance Co., 2009-1403 (Fed. Cir. June 23, 2010): [Listen]. 

Judge Moore also made a comment about revisiting Cybor back in 2009 during the oral argument of Kara Technology, Inc. v., Inc. [Listen].

And, you might recall that the court can take en banc review sua sponte.  They did so in Abbott Labs v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009) on the limited issue of product-by-process claims, for example.

One wonders if the time is now ripe and whether the vacancies on the court favor granting en banc review of Cybor

The Cybor decision is available here: [Read].

(I should note that I am not advocating an en banc review of Cybor — just curious if it is coming down the pike.)

“At Least” and the Specific Exclusion Principle as a Limit on the Doctrine of Equivalents

Saturday, August 21st, 2010

The Federal Circuit addressed the doctrine of equivalents recently  in the case of Adams Respiratory Therapeutics, Inc. et al. v. Perrigo Co. et al., 2010-1246 (Fed. Cir. Aug. 5, 2010).  One issue facing the panel was whether the term “at least 3500 hr*ng/mL” can be interpreted under the doctrine of equivalents to be a value less than 3500 hr*ng/mL.

The panel chose to read the language “at least 3500 hr*ng/mL”  as the simplest way of expressing a range that is “greater than or equal to 3500 hr*ng/mL.”  See Adams at 18.   However, one might make the alternative argument that “at least 3500 hr*ng/mL” is actually the simplest way of expressing  a range that is “not less than 3500 hr*ng/mL.”  Moreover, this would comport with the Patent Office’s preference for avoiding the use of negative limitations in claims.  If such an interpretation is adopted for the “at least 3500 hr*ng/mL” language, the “specific exclusion principle” might serve to limit application of the doctrine of equivalents and require a different outcome than that reached by the panel.

For background, the Adams panel concluded:

We previously determined that the doctrine of equivalents may apply to claims containing specific numeric ranges. See Philips, 505 F.3d at 1378 (concluding that “resort to the doctrine of equivalents is not foreclosed with respect to the claimed concentration range”); Abbott, 287 F.3d at 1107-08 (“The fact that a claim recites numeric ranges does not, by itself, preclude Abbott from relying on the doctrine of equivalents.”); Jeneric/Pentron, Inc. v. Dillon Co., 205 F.3d 1377, 1383 (Fed. Cir. 2000) (noting that “the district court will have the opportunity to adjudicate fully the merits of infringement under the doctrine of equivalents” of a claim to composition comprising specific weight percentages of various oxides). In Philips, we addressed a claim requiring the presence of a halogen “in a quantity between 10-6 and 10-4 umol/mm3,” which we construed as “between 1 × 10-6 and 1 × 10-4 umol/mm3.” 505 F.3d at 1376. We rejected the argument that applying the doctrine of equivalents would vitiate this claim limitation because “[a] reasonable juror could make a finding that a quantity of halogen outside that [claimed] range is insubstantially different from a quantity within that range without `ignor[ing] a material limitation’ of the patent claim.” Id. at 1379. We thus concluded that the doctrine of equivalents was not foreclosed with respect to the claimed range. Id. at 1380. Similarly, in Abbott, we concluded that the doctrine of equivalents could apply to a claim requiring a 68.8% to 94.5% by weight of a phospholipid. 287 F.3d at 1107-08. Abbott’s expert testified that 95% phospholipid “would be exactly the same as the claimed phospholipid.” Id. at 1107. We concluded that “[a]lthough this testimony expands the upper limit beyond the range literally recited by the claim, it does not eliminate the upper limit altogether.” Id. We therefore concluded that infringement under the doctrine of equivalents would not eliminate the upper limit of the phospholipid claim. Id. “The fact that a claim recites numeric ranges does not, by itself, preclude Abbott from relying on the doctrine of equivalents.” Id. at 1107-08. Finally, in Jeneric, the district court denied Jeneric’s request for a preliminary injunction, concluding that Jeneric failed to establish a likelihood of success on infringement under the doctrine of equivalents. 205 F.3d at 1383. Although we affirmed the court’s denial of Jeneric’s request for a preliminary injunction, we indicated that the record on infringement under the doctrine of equivalents was premature. Id. at 1384. We noted that the accused composition contained 0.041% of lithium oxide, which fell outside the claimed range of 0.5% to 3%. Id. We concluded that “[a] full record will show whether that difference is insubstantial.” Id. We are bound by these cases which hold that the doctrine of equivalents can apply to a range—a numerical limitation in a claim. The mere existence of a numerical value or range in a claim, absent more limiting language in the intrinsic record, does not preclude application of the doctrine of equivalents.

Adams Respiratory Therapeutics, Inc. et al. v. Perrigo Co. et al., slip op. at 17-18.


This explanation by the panel is logical based on the cases they rely upon.  But, other cases would suggest that a different result could also be reached.  For example, the panel’s decision does not address the Athletic Alternatives, Inc. v. Prince Mfg., Inc. case.  And, the panel’s decision does not address the “specific exclusion principle” that is a corollary to the All Elements Rule.

Athletic Alternatives, Inc. v. Prince Mfg., Inc.

 In the Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573 (Fed. Cir. 1996) case, a case that concerned the stringing of tennis racquets, the Federal Circuit construed a claim term to mean “at least three values”:

We conclude that Claim 1 of the ‘097 patent includes the limitation that the splay-creating string end offset distance take on at least three values, i.e., a minimum, a maximum, and at least one intermediate value. We thus affirm the district court’s conclusion that Claim 1 does not literally read on the Vortex racket.

Athletic Alternatives, Inc. v. Prince Mfg., Inc., at 1581.

In applying the doctrine of equivalents to this term, the court indicated that “at least three” specifically excluded two and was thus barred by the doctrine of equivalents:

As a corollary to the “all limitations” rule discussed above, we have held that “the concept of equivalency cannot embrace a structure that is specifically excluded from the scope of the claims.” Dolly, Inc., 16 F.3d at 400, 29 USPQ2d at 1771. Applying this formulation to the undisputed facts of the instant case, we conclude that the intermediate offset distance required by the properly construed claim cannot have an equivalent in a racket with only two offset distances. In other words, the two-distance splayed string system was “specifically excluded from the scope of the claims.” Id. To hold Prince liable for infringement of Claim 1 of the ‘097 patent for its production and sale of the Vortex racket would thus run afoul of our holding in Dolly, Inc. and the “all limitations” rule from which it derives. As a result, AAI is precluded as a matter of law from successfully asserting that the Vortex racket infringes Claim 1 of the ‘097 patent under the doctrine of equivalents.

Athletic Alternatives, Inc. v. Prince Mfg., Inc., at 1583.

Quite succinctly, the Athletic Alternatives majority concluded that the language “at least three” excluded “at least two.”

The Specific Exclusion Principle

The “specific exclusion principle” was explained in the Scimed v. Advanced Cardiovascular, 242 F.3d 1337 (Fed. Cir. 2001) case:

A particular structure can be deemed outside the reach of the doctrine of equivalents because that structure is clearly excluded from the claims whether the exclusion is express or implied. In Moore, U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091, 56 USPQ2d 1225 (Fed.Cir.2000), for example, the court considered a claim to a mailer-type business form in which the longitudinal strips of adhesive extend “the majority of the lengths” of the longitudinal margins of the form. The patentee argued that the accused form, in which the longitudinal strips of adhesive extended a minority of the length of the longitudinal margin of the form, infringed under the doctrine of equivalents. The court rejected the argument, holding that “it would defy logic to conclude that a minority — the very antithesis of a majority — could be insubstantially different from a claim limitation requiring a majority, and no reasonable juror could find otherwise.” 229 F.3d at 1106, 56 USPQ2d at 1236. Similarly, in Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547, 42 USPQ2d 1737 (Fed.Cir.1997), the patent claimed a process that included crystallizing a particular substance at high temperature “under an inert gas atmosphere.” The patentee argued that certain of the accused processes, which used “heated air” rather than “an inert gas atmosphere” infringed under the doctrine of equivalents. The court rejected that argument, explaining that “the claim language specifically excludes reactive gases — such as `heated air’ — from the scope of the claims” and in light of that specific exclusion, the accused processes could not infringe under the doctrine of equivalents. 114 F.3d at 1561, 42 USPQ2d at 1747. In each of these cases, by defining the claim in a way that clearly excluded certain subject matter, the patent implicitly disclaimed the subject matter that was excluded and thereby barred the patentee from asserting infringement under the doctrine of equivalents.

The court did effectively the same thing in Sage Products, Inc. v. Devon Industries, Inc., 126 F.3d 1420, 44 USPQ2d 1103 (Fed.Cir.1997). In that case, the claim was to a syringe disposal container having an elongated slot at the top of the container body and a “first constriction extending over said slot.” Although those limitations did not literally read on the accused device, the patentee argued that the device infringed under the doctrine of equivalents. The court rejected that argument, noting that the claim

defines a relatively simple structural device. No subtlety of language or complexity of the technology, nor any subsequent change in the state of the art, such as later-developed technology, obfuscated the significance of this limitation at the time of its incorporation into the claim…. If Sage desired broad patent protection for any container that performed a function similar to its claimed container, it could have sought claims with fewer structural encumbrances…. [A]s between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure.

126 F.3d at 1425, 44 USPQ2d at 1107. Thus, the court determined that because the scope of the claim was limited in a way that plainly and necessarily excluded a structural feature that was the opposite of the one recited in the claim, that different structure could not be brought within the scope of patent protection through the doctrine of equivalents. See Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1317, 47 USPQ2d 1272, 1277 (Fed.Cir.1998) (subject matter is “specifically excluded” from coverage under the doctrine of equivalents if its inclusion is “inconsistent with the language of the claim”).

Finally, in Athletic Alternatives, Inc. v. Prince Manufacturing, Inc., 73 F.3d 1573, 37 USPQ2d 1365 (Fed.Cir.1996), the court addressed a claim directed to a system for stringing tennis rackets with splayed strings. The court construed the claim to require that the stringing system produce rackets with at least three different splay-creating offset distances for the strings. Having construed the claim in that manner, the court held that, for purposes of the doctrine of equivalents, “the properly construed claim cannot have an equivalent in a racket with only two offset distances,” i.e., the two-distance splayed string system was “specifically excluded from the scope of the claims.” 73 F.3d at 1582, 37 USPQ2d at 1373 (quoting Dolly, 16 F.3d at 400, 29 USPQ2d at 1771). See also Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc., 206 F.3d 1408, 1416, 54 USPQ2d 1141, 1147 (Fed.Cir.2000) (“[N]o reasonable jury could find that a stop which extends to the peripheral edge of a disk is equivalent to one that is `substantially inward’ of the very same disk.”); Wiener v. NEC Elecs., Inc., 102 F.3d 534, 541, 41 USPQ2d 1023, 1029 (Fed.Cir.1996) (doctrine of equivalents does not extend to an accused device in which “the required structure is specifically excluded” by the patent).

The principle articulated in these cases is akin to the familiar rule that the doctrine of equivalents cannot be employed in a manner that wholly vitiates a claim limitation. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29-30, 117 S.Ct. 1040, 137 L.Ed.2d 146 1347*1347 (1997); Athletic Alternatives, 73 F.3d at 1582, 37 USPQ2d at 1373 (“specific exclusion” principle is “a corollary to the `all limitations’ rule”). Thus, if a patent states that the claimed device must be “non-metallic,” the patentee cannot assert the patent against a metallic device on the ground that a metallic device is equivalent to a non-metallic device. The unavailability of the doctrine of equivalents could be explained either as the product of an impermissible vitiation of the “non-metallic” claim limitation, or as the product of a clear and binding statement to the public that metallic structures are excluded from the protection of the patent. As the court made clear in Sage, the foreclosure of reliance on the doctrine of equivalents in such a case depends on whether the patent clearly excludes the asserted equivalent structure, either implicitly or explicitly.

In that respect, this case is an even stronger one for not applying the doctrine of equivalents than cases such as Dolly, Sage, Eastman Kodak, Moore, and Athletic Alternatives. Each of the SciMed patents specifically recognized and disclaimed the dual lumen structure, making clear that the patentee regarded the dual lumen configuration as significantly inferior to the coaxial lumen configuration used in the invention. Where such an explicit disclaimer is present, the principles of those cases apply a fortiori, and the patentee cannot be allowed to recapture the excluded subject matter under the doctrine of equivalents without undermining the notice function of the patent. As the court observed in Sage, the patentee had an opportunity to draft the patent in a way that would make clear that dual lumens as well as coaxial lumens were within the scope of the invention, but the patentee did just the opposite, leaving competitors and the public to draw the reasonable conclusion that the patentee was not seeking patent protection for catheters that used a dual lumen configuration. Under these circumstances, the district court was justified in concluding that a reasonable jury could not find that the accused devices infringe the SciMed patents under the doctrine of equivalents.

Scimed at 1345-47.


More recently in Trading Technologies Intl., Inc. v. Espeed et al., 595 F.3d 1340 (Fed. Cir. 2010) the Federal Circuit cited the Scimed case stating:

 The all-elements rule requires this court to consider “the totality of circumstances of each case and determine whether the alleged equivalent can be fairly characterized as an insubstantial change from the claimed subject matter without rendering the pertinent limitation meaningless.” Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1359 (Fed.Cir.2005). In other words, this rule empowers a court to perform again the standard “insubstantial variation” test for equivalency, but this time as a question of law. Claim vitiation applies when there is a “clear, substantial difference or a difference in kind” between the claim limitation and the accused product. Id. at 1360. It does not apply when there is a “subtle difference in degree.” Id.

In this case, the trial court considered whether an occasional automatic re-centering of the price axis in Dual Dynamic is equivalent to “never chang[ing] positions unless by manual re-centering or re-positioning.” The court determined that the automatic re-centering would render the claim limitation “static”—synonymous with only manual re-centering—meaningless. The trial court’s construction of the claim limitation “static” specifically excludes any automatic re-centering. See SciMed Life Sys. v. Advanced Cardiovacsular Sys., 242 F.3d 1337, 1347 (Fed.Cir.2001) (“[I]f a patent states that the claimed device must be `non-metallic,’ the patentee cannot assert the patent against a metallic device on the ground that a metallic device is equivalent to a non-metallic device.”).

Thus, if one were to interpret the claim language “at least 3500 hr*ng/mL” to mean “not less than 3500 hr*ng/mL,” the specific exclusion principle would seem to prevent the patent from being expanded under the DOE to cover the range that is less than 3500 hr*ng/mL  — just as the Scimed case counsels against interpreting non-metallic to be expanded to include metallic, and the Moore USA case counsels against majority being expanded to include minority, and Eastern Kodak counsels against inert being expanded to include non-inert .     

 The famous language from Sage Products rings true when applied to the use of the claim language “at least”:

[A]s between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure.


“Each of a plurality”

Thursday, August 19th, 2010

Karen Hazzah noted on her All Things Pros blog on July 21st, the results of the Ex Parte Jourdan (Intel) appeal.  It is worth highlighting  again as it concerned the language “each of a plurality.”  

Given the prevalence of this language (as well as the language “each of the plurality . . .”)  in computer system claims, I think it will be a frequent  point of contention in the future — particularly during patent litigation.

The illustrative claim at issue read as follows:


1. A method comprising:

assigning an identification number (ID) to each of a plurality of micro-operations (uops) to identify a branch path to which the uop belongs;

determining whether one or more branches are predicted correctly;

determining which of the one or more branch paths are dependent on a mispredicted branch; and

determining whether one or more of the plurality of uops belong to a branch path that is dependent on the mispredicted branch based on their assigned IDs.

The Board ruled as follows:

The Appellants argue that “the cited claim language as a whole explicitly requires that a separate ID is assigned ‘to each of a plurality of micro-operations (uops)’ (emphasis added).” (Reply Br. 2.) “[T]he PTO gives claims their ‘broadest reasonable interpretation.'” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). “Moreover, limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).


Here, claim 1 does not require that the ID assigned to each microoperation be “separate.” i.e., unique. We refuse to read such a requirement into the representative claim. Assigning the same ID to each microoperation in one of the reference’s instruction streams is enough to anticipate the disputed limitations. Based on the aforementioned facts and analysis, therefore, we conclude that the Examiner did not err in finding that Sharangpani assigns an ID to each of a plurality of micro-operations as required by representative claim 1.

For other issues that arise from use of the word “each,” see these previous posts: [Link] and [Link].

Oral Argument of the Month — Laryngeal Mask Co. Ltd. v. Ambu

Saturday, August 14th, 2010

The Federal Circuit heard oral argument in Laryngeal Mask Co. Ltd. v. Ambu earlier this month.  The court has not yet issued its opinion in the case.  The case concerns US patents 7,156,100 and 5,303,697.

This was an interesting oral argument.  It is one of those arguments that is good for new prosecutors to listen to so that they are aware of the arguments that will be brought against their work product.  The oral argument included a host of arguments that go toward the preparation and prosecution of an application. 

“The Present Invention”

Usually, “the present invention” argument is raised by an accused infringer who wants to narrow claim language to what was described as “the present invention” or “the invention” in the specification or prosecution history.  This case was a little different in that the patentee (rather than the accused infringer) argued that the language describing “the present invention” did not include the element that the accused infringer was trying to read into the claim.  Therefore, the patentee argued that the claim should be construed broadly based upon “the present invention” language.

Detailed Description of the Invention vs. Detailed Description of the Preferred Embodiments

Similar to the above, use of “the invention” as part of the Detailed Description heading was this time argued by the accused infringer to limit the claims to the disclosed embodiment.

Disclosure of a Single Embodiment

Judge Lourie asked about the disclosure of a single embodiment described as the preferred embodiment.  He queried whether disclosure of a single embodiment described as “the preferred embodiment” might require “preferred” to be read as “only.”  You can listen to his comment here: [Listen].

Broad Summary language

The patentee argued for a broad claim construction based on a broad Summary section of the patent.

Language from the Brief Description of the Drawings

The accused infringer argued that the claims should be limited based on use of the phrase “the present invention” to describe Fig. 1 of the patent.

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

Duratech Ind. v. Bridgeview Mfg. Oral Argument

Friday, August 13th, 2010

The Federal Circuit heard oral argument in Duratech Ind. v. Bridgeview Mfg. on August 2, 2010.    I’ve commented a couple of times in recent days on the Becton Dickinson v. Tyco decision where the judges appeared to ignore the rule of Liebel-Flarsheim v. Medrad that a claim should be construed to preserve its validity only when the claim is first determined to be ambiguous after applying all other rules of claim construction.

The following sound bite from the recent oral argument in Duratech Ind. v. Bridgeview Mfg. is another example of a judge reciting the obsolete canon of claim construction that a claim should be construed to preserve its validity.  [Listen].  That is simply no longer the law in view of the Liebel-Flarsheim and Phillips decisions which require that one construe a claim to preserve its validity only after all other rules of claim construction have been exhausted and the claim is still ambiguous.

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

Liebel-Flarsheim Acknowledged

Wednesday, August 4th, 2010

Judge Dyk acknowledged the role of Liebel Flarsheim v. Medrad when construing patent claims.  Judge Dyk’s dissenting opinion today in Intervet, Inc. v. Merial Ltd., 2009-1568 (Fed. Cir. Aug. 4, 2010) stated in-part:

I write separately primarily to make clear that in construing the claims, we are not deciding that the claims as construed are limited to patentable subject matter. As we noted in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), we do not take validity into account in construing claims, unless “the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.” Id. at 1327 (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004) (quotation marks omitted)). That is not the case here.


The majority opinion responded to this part of Judge Dyk’s dissent with a footnote:

4 We do not address the issues of validity and non-patentable subject matter discussed by the dissent  because these issues were not addressed by the district court or raised on appeal.  

It would seem that Judge Dyk was taking the opportunity to reassure the patent bar that Liebel-Flarsheim is to be followed despite the recent failure to adhere to it in  Becton Dickinson and Co. v. Tyco Healthcare Group, LP, 2009-1053 (July 29, 2010).


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

The meaning of “coupled to” in a patent claim

Wednesday, July 14th, 2010

The Federal Circuit panel in Atser Research Technologies, Inc. v. Raba-Kistner Consultants, Inc., 2010-1088 (Fed. Cir. July 8, 2010) had an opportunity to explore the meaning of “coupled to” in the oral argument of that case.  The case was decided with a rule 36 opinion last week.  So, there is no panel opinion discussing the meaning of “coupled to.”  But, you might find the discussion interesting as it highlights some of the questions running through the minds of judges when they are looking at such language. [Listen].

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

Some Favorite Quotations

Monday, June 7th, 2010

As someone who prepares patent opinions and drafts patent applications, I find the following quotations to be right on point.  You might enjoy them, too. 

“The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy; and, in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee.”

Topliff v. Topliff, 145 U.S. 156, 171 (1892).


“Claim drafting is itself an art, an art on which the entire patent system today depends.  The language through which claims are expressed is not a nose of wax to be pushed and shoved into a form that pleases and that produces a particular result a court may desire.  The public generally, and in particular, the patentees’ competitors, are entitled to clear and specific notice of what the inventor claims as his invention.  That is not an easy assignment for those who draft claims, but the law requires it, and our duty demands that we enforce the requirement.”

Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1563 (Fed. Cir. 1995)(Plager, J. concurring).


“This court recognizes that such reasoning places a premium on forethought in patent drafting.  Indeed this premium may lead to higher costs of patent prosecution.  However, the alternative rule – allowing broad play for the doctrine of equivalents to encompass foreseeable variations, not just of a claim element, but of a patent claim – also leads to higher costs. . . .Given a choice of imposing the higher costs of careful [patent] prosecution on patentees, or imposing the costs of foreclosed business activity on the public at large, this court believes the costs are properly imposed on the group best positioned to determine whether or not a particular invention warrants investment at a higher level, that is, the patentees.”

Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1425-26 (Fed. Cir. 1997).


“These are ordinary, simple English words whose meaning is clear and unquestionable. . . . The dough is to be heated to the specified temperature. . . . Thus, in accord with our settled practice we construe the claim as written, not as the patentees wish they had written it.  As written, the claim unambiguously requires that the dough be heated to a temperature range of 400°F to 850°F.”

Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373-74 (Fed. Cir. 2004).

“If [the patentee], who was responsible for drafting and prosecuting the patent, intended something different, it could have prevented this result through clearer drafting. . . . It would not be appropriate for us now to interpret the claim differently just to cure a drafting error made by [the patentee].  That would unduly interfere with the function of claims in putting competitors on notice of the scope of the claimed invention.”

Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993).


“At best, the patent and the prosecution history show that the inventors or their representatives who drafted the claims and prosecuted the patent left considerable confusion in the record about whether the claimed invention uses heading or bearing.  However, it is not the province of the courts to salvage poorly – or incorrectly—drafted patent claims.

Fair notice to the public, and to competitors, of what is claimed depends on our holding patentees to what they claim, not to what they might have claimed.  It is the responsibility of those who seek the benefits of the patent system to draft claims that are clear and understandable.   When courts fail to enforce that responsibility in a meaningful way they inevitably contribute an additional element of indeterminacy to the system.  Sometimes being kind to a party results in being unkind to the larger interests of society.”

Honeywell International, Inc. v. Universal Avionics Systems Corp., 493 F.3d 1358, 1368 (Fed. Cir. 2007)(Plager, J., dissenting).


“This court acknowledges that the standard requiring control or direction for a finding of joint infringement may in some circumstances allow parties to enter into arms-length agreements to avoid infringement.  Nonetheless, this concern does not outweigh concerns over expanding the rules governing direct infringement. . . . The concerns over a party avoiding infringement by arms-length cooperation can usually be offset by proper claim drafting.  A patentee can usually structure a claim to capture infringement by a single party . . . .  In this case, for example, BMC could have drafted its claims to focus on one entity.  The steps of the claim might have featured references to a single party’s supplying or receiving each element of the claimed process.  However, BMC chose instead to have four different parties perform different acts within one claim. . . . Nonetheless, this court will not unilaterally restructure the claim or the standards for joint infringement to remedy these ill-conceived claims.”

BMC Resources, Inc. v. Paymentech, L.P., 498 F. 3d 1373 (Fed. Cir. 2007).


“We take the characterization ‘functional,’ as used by the Patent Office and argued by the parties, to indicate nothing more than the fact that an attempt is being made to define something (in this case, a composition) by what it does rather than by what it is (as evidenced by specific structure or material, for example).  In our view, there is nothing intrinsically wrong with the use of such a technique in drafting claims.”

In re Swinehart, 439 F.2d 210, 212 (C.C.P.A. 1971).


“A purely subjective construction of ‘aesthetically pleasing’ would not notify the public of the patentee’s right to exclude since the meaning of the claim language would depend on the unpredictable vagaries of any one person’s opinion of the aesthetics of the interface screens.  While beauty is in the eye of the beholder, a claim term, to be definite, requires an objective anchor.”

Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005).


Most recently in Haemonetics Corp. v. Baxter Healthcare Corp., 2009-1557 (Fed. Cir. June 2, 2010), the Federal Circuit provided another quote:

 “An ‘error’ may have occurred in drafting claim 16, as Haemonetics’s counsel indicated during the district court’s claim construction hearing, J.A. 923, but it is what the patentee claimed and what the public is entitled to rely on.”

Haemonetics Corp. v. Baxter Healthcare Corp., 2009-1557 (Fed. Cir. June 2, 2010)

Means plus function hybrid claim?

Tuesday, June 1st, 2010

One of the issues percolating at the Federal Circuit is to what extent a hybrid claim, i.e., a claim that includes claim elements for more than one class of patentable subject matter in 35 U.S.C. § 101, satisfies the definiteness requirement of 35 U.S.C. §112.  Judge Clevenger recently wrote in his dissent in Vizio, Inc. v. ITC, 2009-1386 (Fed. Cir. May 26, 2010):

The majority is incorrect that the phrase “for identifying” imposes an additional requirement that an allegedly infringing DTV actually use the channel map for identifying. Imposing a method limitation on an apparatus claim is improper. See Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1374 (Fed. Cir. 2008) (“A single patent may include claims directed to one or more of the classes of patentable subject matter, but no single claim may cover more than one subject matter class.”). This is so because it would be “unclear whether infringement [] occurs when one creates a system that allows the user to practice the claimed method step, or whether infringement occurs when the user actually practices the method step.” Id. at 1374-75 (quoting IPXL Holdings, L.L.C. v., Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)). Here, the majority’s additional use limitation unnecessarily creates doubt about the timing of infringement and the definiteness of claim 1 when no such quandary exists in the plain language of the claim. Claim 1 does not require use of the channel map to occur; instead only a means for forming the channel map is required.


The claim Judge Clevenger is concerned about reads:

1.  Apparatus for decoding a datastream of MPEG compatible packetized program information containing program map information to provide decoded program data, comprising:


means for identifying channel map information conveyed within said packetized program information; and


means for assembling said identified in-formation to form a channel map for identifying said individual packetized datastreams constituting said program,




said channel map information replicates information conveyed in said MPEG compatible program map information and said replicated information associates a broadcast channel with packet identifiers used to identify individual packetized datastreams that constitute a program transmitted on said broadcast channel.


I think Judge Clevenger has a logical point with respect to his analysis of hybrid claims that have method and apparatus aspects.  What about the claim in Diamond v. Chakrabarty, though?  In that case, the Supreme Court approved of Chakrabarty’s micro-organism claim as satisfying section 101.  Indeed, the Court seemed to suggest that Chakrabarty’s claim satisfied two of the four classes of subject matter under section 101:


Judged in this light, respondent’s micro-organism plainly qualifies as patentable subject matter. His claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter — a product of human ingenuity “having a distinctive name, character [and] use.” Hartranft v. Wiegmann, 121 U. S. 609, 121 U. S. 615 (1887).

Diamond v. Chakrabarty, 447 U.S. 303, 310-11 (1980).