Transformation of data surviving §101 challenges in some circumstances

November 6th, 2014

In two recent instances, a transformation of data has been recognized as potentially sufficient to satisfy the patent eligibility test under 35 U.S.C. §101.

In the Board’s decision in PNC Bank v. Secure Axcess, CBM2014-0100 (PTAB Sept. 9, 2014) (available [here]), the Board noted that the particular transformation of data under consideration was (1) not an abstract idea and (2) satisfied the “machine or transformation test”:

Petitioner challenges claims 1-32 of the ‘191 patent as directed to patent-ineligible subject matter under 35 U.S.C. § 101. Pet. 72-77. Patent­ eligible subject matter is defined in 35 U.S.C. § 101:

Whoever  invents  or  discovers  any  new  and  useful  process, machine,  manufacture,  or  composition  of matter,  or any  new and useful  improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

There are, however, three limited, judicially-created  exceptions to the broad categories of patent-eligible subject matter in §.101:  laws of nature; natural phenomena; and abstract ideas.  Mayo Collaborative Servs. v.Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012).  The Supreme Court has made clear that the test for patent eligibility under § 101 is not amenable to bright-line categorical rules.  See Bilski v. Kappos, 130 S. Ct. 3218, 3222 (2010).

1. Whether the Claims Are Directed to an Abstract Idea

Petitioner challenges each claim of the ‘191 patent as failing to recite patentable subject matter under § 101, because the claims fall within the judicially created exception encompassing abstract ideas. Pet. 73-76. In Alice Corp. Pty, Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Supreme Court reiterated the framework set forth previously in Mayo, “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent­ ineligible concepts.” Id. If they are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination’” to determine whether there are additional elements that ‘”transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1291, 1297). In other words, the second step is to “search for an ‘inventive concept’- i.e., an element or combination of elements that is ’sufficient to ensure that the patent in practice amounts to significantly more than a patent on the [ineligible concept] itself.”‘ Id. (alteration in original) (quoting Mayo, 132 S. Ct. at 1294).

Turning to the Petition, Petitioner, relying on the framework set forth in Mayo and followed in Alice, asserts that claims 1-32 are unpatentable under § 101, because the claims are drawn to patent-ineligible “abstract ideas, with only insignificant, well-known subject matter added.” Pet. 73; see also Pet. 73-76. Patent Owner disagrees. Prelim. Resp. 56-65.

In determining whether a method or process claim recites an abstract idea, we must examine the claim as a whole. Alice, 134 S. Ct. at 2355 n. 3. Claim 1, as a whole, relates to a computer-implemented method to transform data in a particular manner-by inserting an authenticity key to create formatted data, enabling a particular type of computer file to be located and from which an authenticity stamp is retrieved. On its face, there is nothing immediately apparent about these physical steps that would indicate the claim is directed to an abstract idea.

Moreover, claim 1, as a whole, is distinguishable from the patent­ ineligible abstract concepts found in Alice or Bilski. Alice involved “a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk.” Alice, 134 S. Ct. at 2356. Bilski involved the concept of hedging risk, which the Court deemed “a method of organizing human activity.” Bilski, 130 S. Ct. at 3222. Like the concept of hedging risk in Bilski, Alice’s “concept of intermediated settlement” was held to be “‘a fundamental economic practice long prevalent in our system of commerce.”‘ Alice, 134 S. Ct. at 2356. Similarly, the Court in Alice found that “[t]he use of a third-party intermediary . . . is also a building block of the modem economy.” Id. “Thus,” the Court held, “intermediated settlement . . . is an ‘abstract idea’ beyond the scope of § 101.” Id.

Petitioner asserts that claim 1 is an abstract idea, because it is nothing more than computerizing a purported centuries old practice of placing a trusted stamp or seal on a document to indicate the authenticity of the document. Pet. 74. Petitioner’s position is unpersuasive, because as indicated by Patent Owner (Prelim. Resp. 64-65), Petitioner does not tie adequately the claim language to the purported abstract concept of placing a trusted stamp or seal on a document. Although the claim recites retrieving an authenticity stamp, the claim does not recite placing the stamp, much less. doing so on a paper document, presumably as “centuries-old” practices have done.  Similarly, the claim does not recite a paper document.  Moreover, claim 2, which depends from claim 1, additionally recites that the formatted data is a web page, not a paper document.

We also find that Petitioner does not provide sufficient persuasive evidentiary support that the placing of a trusted stamp or seal on a document is “a fundamental economic practice” or a “building block of the modern economy.” See Alice, 134 S. Ct. at 2356 (citing various references concerning the concept of intermediated settlement, including an 1896 reference).

Petitioner further asserts claim 1 is patent-ineligible abstract idea, because it “relates to nothing more than manipulating and collecting data.” Pet 73 (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011); In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989)).  Patent Owner disagrees, indicating that claim 1 recites (1) transforming at an authentication host computer, received data (a) by inserting an authenticity key (b) _to create formatted data; and (2) returning, from the authentication host computer, the formatted data (a) to enable the authenticity key to be retrieved fro the formatted data and (b) to locate a preferences file.  Prelim. · Resp. 58-59.

Petitioner’s reliance on CyberSource and Grams is unpersuasive. In CyberSource, the Federal Circuit indicated that mere collection and organization of data does not satisfy the transformation prong in the machine-or-transformation  test  See CyberSource, 654 F.3d at 1370.  The Federal Circuit also indicated that the mere manipulation or reorganization of data also did not satisfy the transformation prong.  See id. at 1375. The Federal Circuit concluded, however, that the claims at issue were to a patent­ ineligible abstract idea, not merely because of the collection, organization, and manipulation of data, but because all the claimed steps could be performed in the human mind, which is not the case here.  See id. at 1373, 1376-77.  Rather, the challenged claims specifically recite “transforming . . . received data by inserting an authenticity key to create formatted data,” thereby authenticating a web page with an authenticity stamp.  Thus, the claims require a fundamental change to the data; a change that cannot be performed in the human mind.

Although the Federal Circuit in Grams held that data gathering steps cannot make an otherwise nonstatutory claim statutory, the court did not indicate that a claim with only data gathering steps and a mathematical algorithm necessarily always would be nonstatutory. Grams, 888 F.3d at 840 (quoting In re Meyer, 688 F.2d 789, 794 (CCPA 1982)).

Claim 1 of the ‘191 patent recites “transforming . . . at an authentication host computer” and “returning . . . from the authentication host computer,” which are not immediately apparent as being limited to data gathering. As such, on this record, claim 1 can be distinguished from claims in Grams, which rely on data gathering as the recited physical steps.  Petitioner does not provide further arguments specifically addressing limitations in claims 2-32 (see generally Pet. 73-76).

For these reasons, we are not persuaded by Petitioner’s assertion that claims 1-32 are patent-ineligible abstract ideas. As such, we need not tum to the second step in the Mayo framework to look for additional elements that can transform the nature of the claim into a patent-eligible application of an abstract idea.

2. Whether the Claims Satisfy the Machine-or-Transformation Test

Petitioner also contends that claims 1-32 are unpatentable under § 101, because the claims are not tied to any particular machine and transform no article into a different state or thing, and thus do not satisfy the machine-or-transformation  test.  We understand that the machine-or­ transformation test is a useful tool, but is not sole test for whether an invention is a patent-eligible process under § 101. See Bilski 130 S. Ct. at 3227.

Petitioner asserts claim 1 does not transform an article into a different state or thing. Pet 76. Rather, according to Petitioner, the transforming limitation in claim 1 is merely manipulation or reorganization of data, which is not patent eligible. Pet. 76-77 (citing CyberSource, 654 F.3d 1375).

We are not persuaded that “transforming . . . received data by inserting an authenticity key to create formatted data” fails to satisfy the transformation prong. The claim language recites “transforming” one thing (”received data”) “to create” something else (”formatted data”) and further recites a particular manner of transforming (”by inserting an authenticity key”).

Petitioner does not provide persuasive argument or supporting evidence to support its position that the transforming limitation is merely manipulation or reorganization of data. Because Petitioner has not persuaded us that claim 1 does not meet the transformation prong of the machine-or-transformation test, we need not consider Petitioner’s other assertions that claim 1 does not meet the machine prong of the test. Furthermore, Petitioner does not provide further arguments regarding claims 2-32 (see generally Pet. 76-77), thus, we are not persuaded claims 1- 32 fail to satisfy the machine-or-transformation  test.

Therefore, having considered the information provided in the Petition, as well as Patent Owner’s Preliminary Response, we are not persuaded Petitioner has demonstrated that it is more likely than not that the claims challenged in the Petition are unpatentable under 35 U.S.C. § 101.

(emphasis added).

In addition to noting that transformation of data can satisfy the test for patent eligibility in some circumstances, this decision is also important for noting that the determination of an abstract idea is sometimes grounded in underlying factual determinations — that is the determination of an abstract idea sometimes requires factual evidence.  See also Arrhythmia Research Technology v. Corazonix Corp., 958 F. 2d 1053 (Fed. Cir.  1992)(”Whether a claim is directed to statutory subject matter is a question of law. Although determination of this question may require findings of underlying facts specific to the particular subject matter and its mode of claiming“).

Providing factual evidence of what is an abstract idea implicates In re Zurko and the associated  procedural requirements for evidencing a factual finding:

Finally, the deficiencies of the cited references cannot be remedied by the Board’s general conclusions about what is “basic knowledge” or “common sense” to one of ordinary skill in the art. As described above, the Board contended that even if the cited UNIX and FILER2 references did not disclose a trusted path, “it is basic knowledge that communication in trusted environments is performed over trusted paths” and, moreover, verifying the trusted command in UNIX over a trusted path is “nothing more than good common sense.” Ex parte Zurko, slip op. at 8. We cannot accept these findings by the Board. This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support. As an administrative tribunal, the Board clearly has expertise in the subject 1386*1386 matter over which it exercises jurisdiction. This expertise may provide sufficient support for conclusions as to peripheral issues. With respect to core factual findings in a determination of patentability, however, the Board cannot simply reach conclusions based on its own understanding or experience — or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings.

See In re Zurko, 258 F.3d 1379, 1385-86 (Fed. Cir. 2001).

Thus, PNC  Bank v. Secure Axcess reminds us of several important points:

(1)  the assessment of 35 U.S.C. §101 is a question of law grounded in underlying factual findings;

(2)  the assessment of whether something is an abstract idea can be based on factual findings — failure to provide sufficient evidence of facts with respect to an abstract idea can cause an abstract idea challenge to fail;

(3) with respect to core factual findings in a determination of patentability . . . the Board must point to some concrete evidence in the record in support of [its] findings.

The second recent decision of note is from  Card Verification v. Citigroup, Docket No. 13 C 6339 (N.D. Ill.  Sept. 29, 2014), where a district court stated in response to a 12(b)(6) motion:

But the claims may be sufficiently limited by the plausible transformation that occurs when the randomly-generated tag is added to the piece of confidential information. Typically, transforming data from one form to another does not qualify as the kind of transformation regarded as an important indicator of patent eligibility. See CyberSource, 654 F.3d at 1375 (“[T]he mere manipulation or reorganization of data … does not satisfy the transformation prong.”). But here, the claimed invention goes beyond manipulating, reorganizing, or collecting data by actually adding a new subset of numbers or characters to the data, thereby fundamentally altering the original confidential information. Contra id. at 1372 (process of constructing “map” of credit card numbers was no different than writing down a list of numbers and compiling information).

The use of a credit card number provides an illustrative example. Once the computer in the process splits up the credit card number into two separate pieces, randomly generated tags are added to the two pieces. The addition of the tag transforms what was once a credit card number into an identifier for use by the verifying party. The verifying party then matches up the two pieces of the information solely because the randomly-generated tag is affixed to both. At least one of the objects of the ‘245 Patent process is to transform data from one form into another “that will be recognized by the intended recipient but secure against decryption by unintended recipients.” See, e.g., TQP Dev., LLC v. Intuit, Inc., No. 2:12 CV 180 WCB, 2014 WL 651935, at *5 (E.D. Tex. Feb. 19, 2014). The claim requiring the addition of the tags plausibly does just that. The patent not only recites a process for verifying transaction information, it also involves a protocol for making the communication system itself more secure. (‘245 Patent, 2:14-20). Therefore, even though the method does not result in the physical transformation of matter, see Diehr, 450 U.S. 175, it utilizes a system for modifying data that may have a concrete effect in the field of electronic communications. Accordingly, when viewing the patent in the light most favorable to Card Verification, it plausibly recites a patent-eligible application of the abstract idea of verifying a transaction. Citigroup’s Motion to Dismiss is therefore denied without prejudice. Citigroup is free to challenge the validity of the ‘245 Patent after discovery and claim construction are completed in this case.

Notably, in both of these decisions, the transformation of data occurred by adding an additional piece of data to an original piece of data so as to create a new piece of data.

Teva v. Sandoz Oral Argument Recording

October 24th, 2014

The Supreme Court has published the oral argument recording for the Teva v. Sandoz case.  You can listen/download the oral argument recording [here].

The transcript of the oral argument is available [here].

PNC Bank v. Secure Axccess, LLC

October 17th, 2014

The Patent Docs website had an interesting post yesterday about recent §101 decisions by the PTAB. [Link] One decision discussed is PNC Bank v. Secure Axccess, LLC.  In that PTAB proceeding, the Board rejected an assertion that a claim directed at a computer implemented method failed to satisfy §101 under the Alice v. CLS test.   You can review the Board’s opinion by judges Barbara Benoit, Trenton Ward, and Georgianna Braden [here].

If you think this decision warrants being designated precedential by the Board, see this earlier post:  [Requesting That a Board Decision Be Made Precedential].

Federal Circuit Judges of the American Law Institute

October 6th, 2014

You might recall that the American Law Institute is the association of judges, scholars, and attorneys that formulates the various Restatements of the Law.  I have been curious why there is no Restatement of Patent Law — perhaps because there is a single intermediate appellate court.  At any rate, given the turmoil associated with 35 U.S.C. §101, among other issues, a restatement might not be a bad idea.

I was curious which Federal Circuit judges are members of the ALI.  It appears that Judges Bryson, Wallach, Dyk, and O’Malley are all members.  Congratulations to Judges Dyk and O’Malley who became members in 2013.

Riding Circuit?

September 25th, 2014

The Federal Circuit has posted the oral argument schedule for October and November and it appears that all sessions are going to be held in D.C. this year.  Usually, the Federal Circuit sits outside of D.C. during the fall.  Perhaps the court is counting its visit to Baltimore in February as its trip for the year.  Or, perhaps the court will ride circuit to a warm weather location in December.  Florida? San Diego?  U.S. District Court of the Virgin Islands (St. Thomas and St. Croix)?  U.S. District Court for the District of Puerto Rico?  U.S. District Court for the Northern Mariana Islands?  U.S. District Court of Guam?

Here’s a list of previous locations where the court rode circuit through 2009. [List]   Since 2010, the court also rode circuit to Atlanta, Oregon, Denver, and various Third Circuit locales.

Akamai v. Limelight, Take 3

September 12th, 2014

The Federal Circuit heard oral argument in Akamai v. Limelight yesterday for the third time.  The case is back at the Federal Circuit after remand from the Supreme Court.  You can listen to the oral argument [here].

Sitting by Designation

September 11th, 2014

george_h_wu_district_judgeThe Federal Circuit hasn’t had a district court judge sit by designation for quite some time.  During Chief Judge Rader’s tenure there was a marked decline in judges sitting by designation, as compared to his predecessor Chief Judge Michel.

Here’s one suggestion:  Judge George Wu of the Central District of California.

See Judge Wu’s most recent patent opinion over at Patently-O [Link].

Russell Slifer to be Keynote Speaker at BioWest 2014

September 4th, 2014


Those of you in the Denver area might be interested to know that Russell Slifer — former Micron chief patent counsel and new head of the USPTO-Denver office — will be the keynote speaker at BioWest 2014, on September 10th.  Details are available [here].

Got Passport?

September 4th, 2014

Just a heads up to those of you thinking of conducting a hearing or personal interview at a USPTO facility — depending on which state you hail from, your driver’s license may not be sufficient for access.  Practitioners visiting the USPTO from Alaska, American Samoa, Arizona, Kentucky, Louisiana, Maine, Massachusetts, Minnesota, Montana, New York, Oklahoma, and Washington are at risk. See the PTO announcement below. [Link]


USPTO to Institute New Visitor Policy Effective August 4, 2014

As of August 4, 2014, the U.S. Patent and Trademark Office (USPTO) will be instituting new access control procedures that may affect visitors to the USPTO campus in Alexandria, Virginia, as well as visitors to USPTO’s satellite offices in Denver and Detroit.

These changes are the result of the Federal Government’s enforcement of the REAL ID Act, which enacts one of the key recommendations of the 9/11 Commission.  The Act establishes minimum security standards for state-issued driver licenses and identification cards and prohibits Federal agencies from accepting those documents for official purposes unless the Department of Homeland Security (DHS) determines that the state meets the minimum standards.

As of April 21, the following states do not meet the REAL ID standards:

  • Alaska
  • American Samoa
  • Arizona
  • Kentucky
  • Louisiana
  • Maine
  • Massachusetts
  • Minnesota
  • Montana
  • New York
  • Oklahoma
  • Washington

Visitors to the USPTO with state issued identification from these states must present alternate forms of identification to facilitate access.  Three of the states listed above offer an Enhanced Driver’s License that is identifiable by an American flag on the license; they are New York, Minnesota, and Washington.  USPTO will accept the Enhanced Driver’s Licenses from those states.

DHS currently accepts other forms of Federal-issued identification in lieu of a state-issued driver’s license, such as a:

  • Passport
  • Passport card
  • DoD’s CAC
  • Federal agency HSPD-12 ID
  • Veterans ID
  • Military dependents ID
  • Trusted Traveler card – Global Entry, SENTRI, or NEXUS
  • Transportation Workers Identification Credential (TWIC)

For visitors using state-issued ID to access the USPTO, only driver’s licenses or identification cards from states that meet Federal standards will be honored.  USPTO will continue to accept other forms of government-issued identification, including Federal employee badges, passports, military identification cards, or Enhanced Driver’s Licenses as noted above.

If visitors do not have acceptable identity documents, the person to be visited at USPTO will need to provide an escort in order for the visitor to access the USPTO. The visitor must be escorted at all times while in USPTO secured areas.

For additional information about the REAL ID Act, please visit

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Headings and Boilerplate, Hill-Rom v. Stryker

August 14th, 2014

The Hill-Rom v. Stryker case decided in June has not gotten a lot of coverage.  There are some interesting portions of the opinion that will appeal to patent prosecutors.

Present Invention

Judge Moore, writing for the court, gave a summary of recent case law and when the use of the term “present invention” can be limiting:

Disavowal requires that “the specification [or prosecution history] make[] clear that the invention does not include a particular feature,” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001), or is clearly limited to a particular form of the invention, Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1330 (Fed. Cir. 2009) (”[W]hen the preferred embodiment is described in the specification as the invention itself, the claims are not necessarily entitled to a scope broader than that embodiment.”) (quotation omitted). For example, we have held that disclaimer applies when the patentee makes statements such as “the present invention requires . . .” or “the present invention is . . .” or “all embodiments of the present invention are . . . .” See Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013)Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1316-19 (Fed. Cir. 2006)SciMed, 242 F.3d at 1343-44;Astrazeneca AB v. Hanmi USA, Inc., 554 F. App’x 912, 915 (Fed. Cir. 2013) (nonprecedential). We have also found disclaimer when the specification indicated that for “successful manufacture” a particular step was “require[d].” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1367 (Fed. Cir. 2007) (”Those statements are not descriptions of particular embodiments, but are characterizations directed to the invention as a whole.”). We found disclaimer when the specification indicated that the invention operated by “pushing (as opposed to pulling) forces,” and then characterized the “pushing forces” as “an important feature of the present invention.”SafeTCare Mfg., Inc. v. Tele-Made, Inc., 497 F.3d 1262, 1269-70 (Fed. Cir. 2007). We found disclaimer when the patent repeatedly disparaged an embodiment as “antiquated,” having “inherent inadequacies,” and then detailed the “deficiencies [that] make it difficult” to use. Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361, 1372 (Fed. Cir. 2012) (”[T]he specification goes well beyond expressing the patentee’s preference . . . and its repeated derogatory statements about [a particular embodiment] reasonably may be viewed as a disavowal . . . .”). Likewise, we found disclaimer limiting a claim element to a feature of the preferred embodiment when the specification described that feature as a “very important feature . . . in an aspect of the present invention” and disparaged alternatives to that feature. Inpro II Licensing, S.A.R.L. v. T-Mobile USA Inc., 450 F.3d 1350, 1354-55 (Fed. Cir. 2006).

There is no such disclaimer or lexicography here. There are no words of manifest exclusion or restriction. The patents-in-suit do not describe the invention as limited to a wired datalink. There is no disclosure that, for example, the present invention “is,” “includes,” or “refers to” a wired datalink and there is nothing expressing the advantages, importance, or essentiality of using a wired as opposed to wireless datalink. Nor is there language of limitation or restriction of the datalink. Nothing in the specification or prosecution history makes clear that the invention is limited to use of a cable as a datalink. Absent such language, we do not import limitations from the specification into the claims.

At another point in the opinion, Judge Moore, writing for the court, noted with respect to a different claim term:

The fact that the specification indicates that in one embodiment, messages are sent to the wall interface unit “in accordance with the present invention,” does not mean that a wall interface unit must be present in all embodiments of the invention.

During oral argument, Judge Moore made the following comments about “embodiments of the present invention”:  [Listen].


The opinion also took into account boilerplate, as well as a heading from the specification.  Namely, the opinion stated:

In fact, this specification states that the figures depicting the use of a wired datalink merely “illustrate embodiments of the invention.” `038 patent col. 4 ll. 59-65; see also id. col. 5 ll. 30-31 (”DETAILED DESCRIPTION OF SPECIFIC EMBODIMENTS”); id.col. 22 ll. 20-31 (the “description of various embodiments” is not intended “to restrict or in any way limit the scope of the appended claims to such detail”).

I’ve reproduced these sections below.




What particularly caught my eye was the mention of the heading “Detailed Description of Specific Embodiments.”  I think many prosecutors these days follow the philosophy of just using the heading “Detailed Description.”  You can judge for yourself  in view of this case whether the Federal Circuit has given a stamp of approval to “Detailed Description of Specific Embodiments” as being non-limiting.

Doctrine of Claim Differentiation

The CAFC has been a little bit schizophrenic in how it treats the doctrine of claim differentiation.  In the Hill-Rom v. Stryker oral argument, Judge Schall had the following comments about the role of the doctrine of claim differentiation after Phillips v. AWH:  [Listen]. In the Hill-Rom opinion, Judge Moore, writing for the court, noted that the doctrine of claim differentiation creates a presumption that a limitation added by a dependent claim is not required by the independent claim:

The only distinction between claim 1 and claim 2 is the limitation that the “datalink” is a wired datalink. See also 10, 18. “[T]he presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim.” Liebel-Flarsheim, 358 F.3d at 910. This presumption is especially strong where the limitation in dispute is the only meaningful difference between an independent and dependent claim. Id. Of course, claim differentiation is not a hard and fast rule, and the presumption can be overcome by a contrary construction required by the specification or prosecution history. Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005). However, nothing in this specification or prosecution history rebuts the presumption established by the doctrine of claim differentiation.

Hill-Rom v. Stryker, __ F.3d __ (Fed. Cir. 2014).

Note also what the Phillips v. AWH en banc court said about the DOCD:

Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term. Vitronics, 90 F.3d at 1582. Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims. See Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed.Cir.2001); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159 (Fed.Cir.1997). Differences among claims can also be a useful guide in understanding the meaning of particular claim terms. See Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed.Cir.1991). For example, 1315*1315 the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.Cir.2004).

Phillips v. AWH, 415 F.3d 1303, 1314-15 (Fed. Cir. 2008).

In contrast to Hill-Rom v. Stryker, a panel in a recent opinion made no reference to the DOCD presumption.

We now turn to the extent it should inform the claim

construction. Albecker’s position is that “if claim 11

depends on claim 10, it is axiomatic that claim 10 is broad

enough to include embodiments that have a top cushion

which is integral and continuous with the foundation.”

Appellant’s Br. 8. This is essentially a claim differentiation

argument. And, importantly, “[c]laim differentiation

is a guide, not a rigid rule.” Laitram Corp. v. Rexnord,

Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991)) (quoting Auto

giro Co. of Am. v. United States, 384 F.2d 391, 404 (Ct. Cl.

1967)); see also Seachange Int’l, Inc. v. C–COR, Inc., 413

F.3d 1361, 1369 (Fed. Cir. 2005) (reiterating that claim

differentiation is “not a hard and fast rule and will be

overcome by a contrary construction dictated by the

written description or prosecution history” (citation

omitted)). Thus, our task is to determine if the evidence

supporting the district court’s construction is strong

enough to overcome Albecker’s claim differentiation


Albecker v. Contour Products, Inc., 2014-1318 (Fed. Cir. Aug. 7, 2014).


The opinion in Albecker later concludes:

Accordingly, we hold that the presence of claim 11 is

insufficient to overcome the strong evidence in the claims,

specification, prosecution history, and reexamination

record that the district court’s construction is correct.

Albecker v. Contour Products, Inc., 2014-1318 (Fed. Cir. Aug. 7, 2014).
You can read the Hill-Rom v. Stryker opinion [here].
You can listen to the Hill-Rom v. Stryker oral argument: [here].

For more on the Hill-Rom case, see Ryan Alley’s blog:  [Link].