Archive for the ‘Claim construction’ Category

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).

Deference to the district court out of respect for judicial economy?

Monday, April 12th, 2010

In Hearing Components, Inc. v. Shure, Inc., 2009-1364 (Fed. Cir. April 1, 2010),  Judges Rader, Schall, and Lourie explored when it would be appropriate to defer to a  district court judge’s handling of issues in order to enhance the district court’s docket management. The issue was raised by Judge Rader who is currently sitting by designation at the district court level and presiding over some patent cases in the Eastern District of Texas.  Essentially, Judge Rader seemed to be inquiring whether it would be appropriate to defer to the district court judge on a claim construction issue when it is apparent that the district court judge was using the claim construction to expeditiously dispose of a less important patent so that the district court judge could devote more resources toward a more important patent in the litigation.  You can listen to the judges’ comments here: [Listen].

Judge Plager troubled with Federal Circuit’s “Indefiniteness” law

Wednesday, March 31st, 2010

On the heels of the Ariad v. Eli Lilly en banc case which dealt with the issue of “written description” under 35 USC §112, the Federal Circuit has now issued several decisions dealing with “indefiniteness” under 35 USC §112.  One of those cases is Enzo v. Applera, 2009-1381 (Fed. Cir. Mar. 26, 2010).

In the oral argument of Enzo, Judge Plager expressed some frustration with the Federal Circuit’s current law on the issue of indefiniteness: [Listen].

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

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

Judge Plager was the author of the “nose of wax” line from Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553 (Fed. Cir. 1995) in which he stated:

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.  There is no room in patent claim interpretation for the equivalent of the cy pres doctrine; that would leave the claiming process too indefinite to serve the purposes which lie at the heart of the patent system.

How would Shakespeare construe the claim?

Tuesday, March 23rd, 2010

250px-thomas_keene_in_macbeth_1884_wikipedia_crop4 In the oral argument in WNS Holdings, LLC, v. United Parcel Service, Inc., 2009-1498 (Fed. Cir. March 8, 2010), the attorney for UPS used an analogy to Shakespeare’s “The Tragedy of Macbeth” for purposes of arguing his claim construction case: [Listen].

Perhaps Shakespearean analogies are the key to winning at the Federal Circuit.  UPS prevailed on the appeal.

Another “present invention” opinion

Tuesday, March 2nd, 2010

The Federal Circuit recently added yet another case to its jurisprudence in regard to the language “the present invention.”  In Trading Technologies International, Inc. v. Espeed, Inc., 2008-1392 (February 25, 2010), Judge Rader wrote for the majority:

In the first place, the “re-centering command” must indeed occur as a result of a manual entry. The specification shows that the inventors defined the term “static” in the specification. Notably, that definition expressly promises to discuss “a re-centering command . . . later” in the specification. Id. From that point forward, the specification only discusses manual re-centering commands. The specification contains no reference to automatic re-centering. Perhaps in response to the promise to discuss re-centering later, the patents describe the invention as follows:

“As the market ascends or descends the price column, the inside market might go above or below the price column displayed on a trader’s screen. Usually a trader will want to be able to see the inside market to assess future trades. The system of the present invention addresses this problem with a one click centering feature.”

’132 patent col.8 ll.49-54; ’304 patent col.9 ll.14-19 (emphasis added). This reference to “the present invention” strongly suggests that the claimed re-centering command requires a manual input, specifically, a mouse click. See Honeywell Int’l, Inc. v. ITT Indus., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (concluding that the invention was limited to a fuel filter because the specification referred to the fuel filter as “this invention” and “the present invention”).

This court recognizes that this interpretation relies heavily on the specification and risks reading improperly a preferred embodiment into the claim. See Saunders Group, Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1332 (Fed. Cir. 2007) (holding that claim scope is not limited to the disclosed embodiments “unless the patentee has demonstrated a clear intention to [do so]”). This court takes some comfort against this risk from the inventors’ use of the term “the present invention” rather than “a preferred embodiment” or just “an embodiment.” The inventors’ own specification strongly suggests that the claimed re-centering feature is manual.

 Judge Clark from the Eastern District of Texas sat by designation on the panel.  He, too, focused on the “present invention” language in his questioning: [Listen].


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

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

Inequitable Conduct — Standards of Review

Thursday, February 18th, 2010

In an unusual disposition in Sensormatic Electronics LLC v. Von Kahle, et al., 2009-1193 (Fed. Cir. Feb. 17, 2010), the Federal Circuit issued an “order” affirming the district court with a brief explanation of the issues on appeal, rather than a perfunctory Rule 36 Judgment containing no explanation.  It will be interesting to see if the court follows up with a Rule 36 Judgment.  Absent a judgment by the panel, I’m curious whether the losing party is procedurally in a position to request a panel rehearing, request rehearing en banc, or petition for certiorari.

The court’s order is available here: [Read].

Inequitable Conduct Issues

At the district court, the defendant asserted inequitable conduct by the inventors for failure to cite during original examination a reference that was later cited by an examiner during a reexamination of the patent.  The inventors stated that they did not believe the reference was material and therefore did not cite the reference to the PTO in the original prosecution of the patent.  The district court judge found the inventors’ testimony credible and therefore made a factual finding that the inventors did not have the requisite intent for inequitable conduct.  In the “order” above, the Federal Circuit “affirmed” the district court.

The Federal Circuit stated its standard of review of a district court’s unenforceability decision in Scanner Technologies v. Icos Vision Systems, 528 F.3d 1365(Fed. Cir. 2008) by stating:

The ultimate question of inequitable conduct is committed to the discretion of the district court and we review the court’s determination that the patentee engaged in inequitable conduct for abuse of discretion. Modine Mfg. Co. v. Allen Group, Inc., 917 F.2d 538, 541 (Fed. Cir. 1990), cert. denied, 500 U.S. 918 (1991). An abuse of discretion occurs when (1) the court’s decision is clearly unreasonable, arbitrary, or fanciful, (2) the court’s decision is based on an erroneous construction of the law, (3) the court’s factual findings are clearly erroneous, or (4) the record contains no evidence upon which the court rationally could have based its decision. Nilssen v. Osram Sylvania, Inc., 504 F.3d 1223, 1229 (Fed. Cir. 2007).


In order to establish inequitable conduct, the party challenging the patent is required to establish by clear and convincing evidence that the patent applicant “(1) either made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the U.S. Patent and Trademark Office.” Symantec Corp. v. Computer Assoc. Int’l, Inc, 522 F.3d 1279, 1296 (Fed. Cir. 2008) (quoting Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1363 (Fed. Cir. 2007). Both intent and materiality are questions of fact, and must be proven by clear and convincing evidence. Young v. Lumenis, Inc., 492 F.3d 1336, 1344 (Fed. Cir. 2007). We review a district court’s findings on the threshold issues of materiality and intent for clear error. Pfizer, Inc. v. Teva Pharms. USA, Inc., 518 F.3d 1353, 1366 (Fed. Cir. 2008). Under the clear error standard, the court’s findings will not be overturned in the absence of a “definite and firm conviction” that a mistake has been made. Id. “Once threshold findings of materiality and intent are established, the district court must weigh them to determine whether the equities warrant a conclusion that inequitable conduct occurred.” Flex-Rest, LLC v. Steelcase, Inc., 455 F.3d 1351, 1363 (Fed. Cir. 2006) (quoting Purdue Pharma, 438 F.3d at 1128).


One of the issues asserted by the appellant/defendant in the oral argument of Sensormatic was that one of the inventors (who was accused of inequitable conduct by the defendant) stated at trial that if he had it to do over again, he would not cite the reference in question to the examiner.  [Listen].  This assertion went unchallenged — during oral argument at least.
The statement of “If I had it to do over again, I’d do it again” may sound familiar to those familiar with the McKesson v. Bridge Medical, 487 F.3d 897 (Fed. Cir. 2007) case.  The patent attorney accused of inequitable conduct in that case stated that if he had it to do over again he would not have cited the information in question.  In McKesson, however, the district court judge found intent and the Federal Circuit affirmed.  In Sensormatic, the district court judge found no intent and the Federal Circuit has now affirmed.  Hence, this demonstrates the significance of the “clear error” standard of review for the intent prong in inequitable conduct cases and the importance of prevailing at the district court level.


Use of Summary and Abstract for Claim Construction

For those of you that are concerned that judges might put too much emphasis on statements in the Abstract and Summary of a patent, you might find this part of the Sensormatic oral argument interesting in that some of the judges appeared willing to read in a limitation of “abruptness” into the claims without first identifying some sort of textual “hook” from the claims. [Listen] and [Listen].  The inventors asserted that they understood the claims to include an abruptness limitation even though that language apparently does not appear in the claims.


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

When should a “whereby clause” be treated as a claim limitation?

Thursday, January 28th, 2010

The Federal Circuit quietly issued a Rule 36 opinion in Finisar v. DirecTV, 2009-1410 (Fed. Cir. Jan. 8, 2010) earlier this month. This was the second time that the Federal Circuit has addressed this dispute. In an earlier opinion, the court reversed the claim construction of a vital claim term, vacated a $78.9M jury verdict, and remanded the case back to the district court in the Eastern District of Texas. Upon remand, the district court subsequently found the remaining claims at issue invalid on summary judgment in view of the new claim construction.

An important issue on remand was the construction of a “whereby clause.” For example, claim 39 of the 5,404,505 patent reads:

39. An information transmission method comprising the steps of:

storing an information database on one or more memory devices;

generating and storing on said memory devices a set of indices for referencing data in said information database, including distinct indices for referencing distinct portions thereof, and embedding said indices in said information database;

scheduling transmission of selected portions of said information database, including assigning each selected portion of said information database a transmission repetition rate and one or more scheduled transmission times in accordance with said assigned repetition rate;

transmitting a stream of data packets containing said selected portions of said information database in accordance with said scheduled transmission times;

receiving said transmitted stream of data packets at subscriber stations;

at each subscriber station, storing filter data corresponding to a subset of said indices, said filter data specifying a set of requested data packets which comprises a subset of said transmitted data packets; and

at each subscriber station, downloading into a memory storage device those of said received data packets which match said specified set of requested data packets;

wherein said generating step generates indices including timestamps therein, said timestamps indicating when each said portion of the information database referenced by an index is to be transmitted;

said method including decoding said timestamps in said indices at said subscriber stations;

whereby subscribers can be informed as to when a specified portion of the information database will be received.

Surprisingly, with both Judges Rader and Moore on the panel, the panel passed up a golden opportunity to wade in on the issue of what test should be used when assessing whether a “whereby clause” is a claim limitation.  Instead, the panel simply issued a Rule 36 opinion without any detailed discussion. Presumably, the panel felt that regardless of whether the whereby clause was considered a limitation, the prior art clearly invalidated the claims.

Nevertheless, the recording of the oral argument concerning the whereby clause issues is very interesting.  Among other things, counsel for the plaintiff-appellant appeared to argue that the whereby clause was not simply an inherent result that necessarily followed from the preceding claim elements. Rather, purportedly the whereby clause addressed when data will be received. This distinguished the whereby clause as specifying when data “will be received” as opposed to when data “is being received” or when data “was received.”  Thus, appellant’s counsel argued that the whereby clause actually added a further claim element that could not be inherent from the earlier claim elements, as it specified one of three possible options. [Listen]

Counsel for the appellee-defendant first countered that a “whereby clause” should be treated similar to a claim preamble and that claim preambles and whereby clauses are just bookends to a claim that state an intended result.  Judge Moore then asked whether there should be a presumption that claim language that appears in the body of the claim should be considered a claim limitation.  Appellee’s counsel then discussed the court’s two opinions on whereby clauses from the last decade Hoffer v. Microsoft, 405 F.3d 1326 (Fed. Cir. 2005) and Minton v. National Assn of Securities Dealers, Inc., 336 F.3d 1373 (Fed. Cir. 2003).  [Listen]

Counsel for the appellant would later argue during rebuttal that the Hoffer case is in conflict with prior court precedent — which again begs the question of why this panel passed up an opportunity to wade in on the issue.

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

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

*Like many oral arguments, this oral argument comprised a number of strong-minded individuals who spent a good deal of time talking on top of one another. If you’re like me in those situations, you may find yourself having flashbacks to the scene from “Cool Hand Luke” where the work camp warden says “What we’ve got here, is failure to communicate.”

Use of “present invention” in prosecution history

Sunday, January 24th, 2010

While not mentioned in the court’s opinion, the Federal Circuit panel that heard oral argument in Catch Curve, Inc. v. Venali, Inc., 2009-1121, (January 22, 2010) inquired about  a statement in the prosecution history that used the phrase “the present invention.”  The court was trying to determine whether the term  “fax protocol” of the patents should be construed to include packet switched network communications.  A reference had been cited in the prosecution of one of the patents and that reference used packet switched network communications.  The Applicant responded to the rejection by admitting that packet switched network communications would be encompassed by “the present invention” but that the cited reference could be distinguished on other grounds.  Judge Bryson focuses on this issue in the following sound bite: [Listen].

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

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

Hybrid Claims

Tuesday, January 19th, 2010

The recently decided case of Schindler Elevator Corp. v. Otis Elevator Co., 2009-1146 (Fed. Cir. January 15, 2010) concerned a claim that read as follows:

1. An elevator installation having a plurality of elevators comprising:
a recognition device for recognizing elevator calls entered at an entry location by an information transmitter carried by an elevator user, initializing the entry location as a starting floor of a journey;

a control device receiving the recognized elevator call and allocating an elevator to respond to the elevator call, through a predetermined allocating algorithm;

a call acknowledging device comprising one of a display device and an acoustic device to acknowledge recognition of the elevator call and to communicate a proposed destination floor to the elevator user;
the recognition device, mounted in the access area in the vicinity of the elevators and spatially located away from elevator doors, actuating the information transmitter and comprising a unit that independently reads data transmitted from the information transmitter carried by the elevator user and a storage device coupled between the unit and the control device;

the recognition device one of transmitting proposed destination floor data, based upon the data transmitted from the information transmitter, to the control device, and, transmitting elevator user specific data, based upon individual features of the elevator user stored in the storage device, to the control device.

The Federal Circuit panel construed two claim limitations. Namely, it construed “information transmitter” to mean “a device that communicates with a recognition device via electromagnetic waves, after being actuated by that recognition device, without requiring any sort of personal action by the passenger.” And, the Federal Circuit construed the term “recognition device” to mean “a device that actuates and reads data transmitted by an information transmitter without requiring any sort of personal action by the passenger.” The strikeout shows the modification made to the District Court judge’s claim construction of the two terms.

Much of the oral argument concerned a discussion of what a user could or could not do. This was sometimes confusing because all the claims at issue were apparatus claims — not method claims. So, it seemed odd to be focusing on actions by the user. Nevertheless, the Federal Circuit states at one point in the opinion:

First, “the context in which a term is used in the asserted claim can be highly instructive.” Id. In claim 1, the term “information transmitter” itself suggests that the transmitter is a thing, separate and apart from an “elevator user” (a separate limitation), which transmits information. The claim also provides that “elevator calls [are] entered at an entry location by an information transmitter.” Thus, at least with regard to the transmission of information and the entry of calls, it is the information transmitter—not the elevator user—that performs these tasks. Similarly, the claim provides that a “recognition device . . . actuat[es] the information transmitter” and that “a unit . . . independently reads data transmitted from the information transmitter.” Accordingly, the tasks of actuating the transmitter and reading data are performed by the recognition device and the unit, respectively, not by the elevator user. The claim also explicitly provides that the transmitter is “carried by an elevator user.” Carrying a transmitter is thus a type of “personal action” that is expressly required in the claims. Nowhere does claim 1 limit the act of carrying to any specific manner of carrying.

(emphasis added)

Thus, the Federal Circuit noted that an elevator user is a separate claim limitation and that “carrying a transmitter” by a user is required by the claims. Moreover, the attorney for the plaintiff-appellant emphasized this step during oral argument: [Listen].

This would seem to suggest that at least claim 1 of Schindler’s patent is a hybrid claim that includes both structural elements and a method step that is performed by a user. How should this claim be treated under the Federal Circuit’s precedential opinion IPXL Holdings v., 433 F.3d 1377 (Fed. Cir. 2005)?

In IPXL Holdings, the Federal Circuit held that a hybrid claim that included both structural elements and elements performed by a user of the system was indefinite under 35 USC section 112. The basis for the holding was that when a claim is written in this format it is unclear whether infringement occurs when one creates a system that allows a user to use the structure, or whether infringement occurs when the user actually uses the structure. The IPXL panel stated:

     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.

It will be interesting to see on remand to the District Court whether Otis Elevator pursues an indefiniteness argument under section 112.

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

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

What does “connect” mean?

Wednesday, January 6th, 2010

If you have ever written mechanical patents or spent time analyzing them, you have probably run across the issue of how broadly should the word “connect” be interpreted.  (Similarly, you have probably contemplated the meaning of “coupled with.”)  The case of Restaurant Technologies, Inc. v. Jersey Shore Chicken, 2009-1176, (Fed. Cir. January 6, 2010) broached this issue with respect to the word “interconnecting.”   The patent at issue concerned a chicken fryer.*

The claim term at issue read:

(e) piping network interconnecting said first and second containers, said filter unit and said first and second couplings.

One of the interesting aspects of the oral argument was when Peter Lancaster of Dorsey and Whitney’s Minneapolis office made the argument that the defendant’s own patent (stipulated to describe the accused device) described the elements of the allegedly infringing product as “connected.”  [Listen].  In my review of the court’s opinion, I did not see that the panel ever addressed that argument.

The panel also noted that the doctrine of equivalents would not cover indirectly connected elements — elements are either connected or not connected.

Furthermore, the court was correct in limiting possible equivalents as a matter of law, finding that claim 8, paragraph (e), “warrant[s] few or no equivalents because there are no insubstantial or trivial changes that could be made to this limitation; the specified components are either connected or not connected to one another by a piping network.” Summary Judgment Opinion, 2007 WL 4081737 at *19.  Based on the claim construction, the court was correct in finding that Oilmatic was entitled to summary judgment of noninfringement.

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

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

*Appropriately, the inventors for the chicken fryer patent at issue hail from Kentucky.

Do you speak American?

Sunday, January 3rd, 2010

PBS has an interesting website on American English at that they title “Do you speak American?”  One fun page at the site is an interactive quiz to see if you can match a speaker to a region of the country: [Link].

Another page explains how various presidents have coined new words throughout the years, such as “administration,” “lunatic fringe,” and “misunderestimate”: [Link].

The article refers to one who coins new words as a neologist.  My reaction to reading that was “Oh, they meant to say lexicographer.”  But, it turns out that PBS has the better word.    According to my dictionary, a lexicographer is “a writer, editor, or compiler of a dictionary.”  However, neologize means “to make or use new words or create new meanings for existing words.”  It would seem that a lexicographer is merely a person who records established definitions rather than the more creative neologist who coins entirely original meanings for words.

A lesser known corollary to the lexicographer [sic: neologist] rule is that a patentee is also entitled to be his or her own grammarian.  See Chicago Steel Foundry Co. v. Burnside Steel Foundry Co., 132 F.2d 812, 814-15 (7th Cir. 1943), cited in Jonsson v. Stanley Works, 903 F.2d 812, 820-21 (Fed. Cir. 1990).

*By the way, while playing SCRABBLE over the holidays, I tried to explain to my family that as a patent attorney, I was entitled to be my own lexicographer [sic: neologist] when proposing new words on the board.  They didn’t buy it.