Archive for April, 2017

Axiom of the day — Claims construed the same for purposes of assessing patent validity and patent infringement

Saturday, April 29th, 2017

In the recent oral argument of TVIIM v. McAfee, the appellant argued that claims must be construed the same way for purposes of validity as they are for infringement.  The Federal Circuit acknowledged that principle in its opinion.

I thought it would be interesting to list some of the quotations reciting the principle because I think it might play a role in how the court assesses patent eligibility in future cases.  Namely, if certain panels of the Federal Circuit are going to abridge the construction of claims for purposes of a patent eligibility analysis  —  e.g., “collecting information, analyzing it, and displaying certain results of the collection and analysis” are “a familiar class of claims ‘directed to’ a patent-ineligible concept.” See Elec. Power Grp. v. Alstom, 830 F.3d 1350, 1353 (2016) — the court should prepare itself for bold patent litigants to assert equally abridged constructions in the infringement context.


Claim terms must be construed the same way for the purpose of determining invalidity and infringement. Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003).

TVIIM, LLC v. McAFEE, INC., No. 2016-1562 (Fed. Cir. Mar. 21, 2017) (Judge Reyna writing for the court).

It is axiomatic that claims are construed the same way for both invalidity and infringement. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 842 F.2d 1275, 1279, 6 USPQ2d 1277, 1280 (Fed.Cir.1988).

Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (Judge Michel writing for the court).

Having construed the claims one way for determining their validity, it is axiomatic that the claims must be construed in the same way for infringement. See, e.g., Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1449, 223 USPQ 603, 610 (Fed.Cir.1984). The district court was bound by this court’s interpretation of the term “rate of stretch” as the law of the case in deciding infringement on remand.

W.L. Gore & Assoc., Inc. v. Garlock, Inc., 842 F.2d 1275, 1279 (Fed.Cir.1988) (Judge Rich writing for the court).

Regardless of how patent claims may be arrived at during the vicissitudes of prosecution, the invention patented is no more and no less than what the finally issued claims, as construed by the court, define; and they must be construed in the identical way for both infringement and validity. That Roeder may have once thought he could get a claim allowed on the broad idea of merely using two lines of adhesive, or that his attorney may have made the attempt without success, is not determinative of what he finally succeeded in patenting as his invention. The court must consider, on the obviousness issue, only what was granted, not the unsuccessful — and not unusual — attempts at overreaching in the early stages of the patent application prosecution.

Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1449 (Fed.Cir.1984) (Judge Rich writing for the court).

Having construed the claims one way for determining validity, it is axiomatic that the claims must be construed in the same way for infringement.

SmithKline Diagnostics, Inc. v. Helena Laboratories Corp., 859 F. 2d 878 (Fed. Cir. 1988) (Judge Nies writing for the court).

Bristol stated its view in response to requests for admission that the claims of each patent would be infringed without a showing of an objective response in every patient. Bristol cannot have an expression be limiting in this context and non-limiting in another. W.L. Gore Assocs., Inc. v. Garlock, Inc., 842 F.2d 1275, 1279, 6 USPQ2d 1277, 1280-81 (Fed.Cir.1988) (“Having construed the claims one way for determining their validity, it is axiomatic that the claims must be construed in the same way for infringement.”). We therefore affirm the district court’s interpretation of “antineoplastically effective amount” as non-limiting.

Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001) (Judge Lourie writing for the court).

As above indicated, the district court held in its opinion after the first trial that none of the prior art “showed a combination of one fixed and several free floating sprockets, whether mounted on a keyed round shaft or on a square shaft,” and that “it was a known principle . . . that a square shaft could be substituted for a keyed round shaft,” and that “variations on the non-round shaft have been around for years in one application or another,” and that “[T]he essence of patent ‘341 is the need to maintain a positive drive relationship between the sprocket and the belt” in light of expansion caused by temperature fluctuations. Thus, the court, in considering the validity issue, interpreted the claim as drawn to fixed and free floating sprockets on a non-round shaft, without regard to the particular cross sectional shape of the non-round shaft. “Having construed the claims one way for determining their validity, it is axiomatic that the claims must be construed in the same way for infringement.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 842 F.2d 1275, 1279, 6 USPQ2d 1277, 1280 (Fed.Cir.1988). Here, the district court committed legal error in interpreting claim 1 differently for infringement, i.e., as though it were limited to use of a square or other regular polygonal shaft (“The inventiveness in 341 was putting together the square shaft or other regular polygonal shaft, which gives you a very positive drive mechanism, putting that together with fixing one sprocket and letting others float.”).

Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 9 U.S.P.Q.2d 1289 (Fed. Cir. 1988) (Chief Judge Markey writing for the court).

New USPTO Quick Reference Sheet on Patent Eligibility

Thursday, April 27th, 2017

The USPTO issued a new Quick Reference Sheet yesterday on its patent eligibility page.  The new eligibility quick reference guide is available here:


Coe v. U.S.

Sunday, April 23rd, 2017

I was researching an issue in the Chisum treatise the other day and stumbled upon the Coe v. U.S., 84 F.2d 240 (D.C. Cir. 1936) case.  I thought it might be of historical interest to some.  It was a rare use of a writ of mandamus to require the Patent Office to take action — in the Coe case that action was entry of an amendment.


COE, Commissioner of Patents,

No. 6607.United States Court of Appeals for the District of Columbia.

Decided April 27, 1936.241*241 R. F. Whitehead, of Washington, D. C., for appellant.

Charles M. Thomas, of Washington, D. C., and S. E. Darby, Jr., of New York City, for appellee.

Before MARTIN, Chief Justice, and ROBB, VAN ORSDEL, GRONER, and STEPHENS, Associate Justices.

VAN ORSDEL, Associate Justice.

The Commissioner of Patents appeals from an order of the Supreme Court of the District of Columbia granting appellee’s petition for a writ of mandamus directing the Commissioner to enter and consider a certain amendment filed on September 20, 1934 to a pending application for patent of one Lasker, serial No. 681,333, filed December 18, 1923 and assigned to the appellee, Remington Rand, Inc.

It appears that, during the period in which the Lasker application was pending in the Patent Office, eight different official actions were had, in five of which new art was cited by the Primary Examiner. It may be assumed that the delay in the consideration of this case by the Patent Office was due to these numerous actions.

After his application was allowed, applicant copied claims from a patent which had been issued to Lake and Storey on September 9, 1930. The Primary Examiner held that Lasker’s application supported certain of the claims, and accordingly, by direction of the Commissioner, an interference was declared involving the Lake and Storey patent. Lake and Storey moved to dissolve the interference, urging the failure of Lasker’s application to support the interference issues. The Examiner of Interferences granted the motion to dissolve, thereby reversing the decision of the Primary Examiner. Lasker then appealed to the Board of Appeals, which affirmed the decision of the Examiner of Interferences, and dissolved the interference.

This operated to restore the Lasker application to the Primary Examiner, where its prosecution was resumed. Upon further hearing the Primary Examiner rejected all claims involved in the interference, including the claims which had been previously allowed to Lasker. Lasker promptly filed an amendment to his application, traversing the new ground of rejection. The amendment included not only matter taken from prior art patents, which had been used as cross-references in the Lasker application as filed, but also additional claims tending to avoid the new ground of rejection found by the Examiner.

The Examiner refused to enter and consider the amendment, although the prosecution of the application was still pending; that is, the case had the status of a regularly pending application. Thereafter the Commissioner refused to enter the amendment, and it is urged that, since no appeal lies from his refusal, the remedy is by mandamus to compel him to order the Examiner to enter and consider the amendment.


Helsinn v. Teva — Six months and counting

Thursday, April 20th, 2017

It has been more than six months since the Federal Circuit heard oral argument in Helsinn v. Teva, which dealt with whether the AIA overruled Metallizing Engineering in regard to secret commercial use.  The oral argument was covered by the Written Description blog:  [Link].  Six months+ is quite a long time for the Federal Circuit to take to write an opinion, even with dissents.  Is it too early to wonder if this secretly went en banc?

Fox Television Stations v. Aereokiller Oral Argument

Monday, April 17th, 2017

The Ninth Circuit issued its opinion in Fox Television Stations, Inc. v. AEREOKILLER, LLC, No. 15-56420 (9th Cir. Mar. 21, 2017) last month.  You can watch the oral argument of this copyright appeal below.  Listen carefully and you can hear mention of the Charming Betsy case.  The court’s decision is available [here].

Here is a link to a Note from the Harvard Law Review in regard to the Charming Betsy canon: [Link].

Judge Sleet to take Senior Status

Sunday, April 16th, 2017

Judge Sleet of the district of Delaware is slated to take senior status on May 1st.

Quote of the Day

Monday, April 10th, 2017

Chief Judge Rader’s (retired) opinion for the court in Ultramercial, Inc. v. HULU, LLC, 722 F.3d 1335 (Fed. Cir. 2013) was ultimately GVR’d (granted, vacated, and remanded) by the Supreme Court due to the Alice v. CLS decision.  I think it is interesting, nevertheless, to review what Chief Judge Rader said about the factual nature of a §101 analysis:

First, it will be rare that a patent infringement suit can be dismissed at the pleading stage for lack of patentable subject matter. This is so because every issued patent is presumed to have been issued properly, absent clear and convincing evidence to the contrary. See, e.g., CLS Bank Int’l v. Alice Corp., 717 F.3d 1269, 1304-05, 2013 WL 1920941, *33 (Fed. Cir. May 10, 2013) (Chief Judge Rader, and Judges Linn, Moore, and O’Malley, concluding that “any attack on an issued patent based on a challenge to the eligibility of the subject matter must be proven by clear and convincing evidence,” and Judges Lourie, Dyk, Prost, Reyna, and Wallach, concluding that a statutory presumption of validity applies when § 101 is raised as a basis for invalidity in district court proceedings.). Further, if Rule 12(b)(6) is used to assert an affirmative defense, dismissal is appropriate only if the well-pleaded factual allegations in the complaint, construed in the light most favorable to the plaintiff, suffice to establish the defense. See Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 1339*1339 929 (2007)Jones v. Bock, 549 U.S. 199, 215, 127 S.Ct. 910, 166 L.Ed.2d 798 (2007). Thus, the only plausible reading of the patent must be that there is clear and convincing evidence of ineligibility. For those reasons, Rule 12(b)(6) dismissal for lack of eligible subject matter will be the exception, not the rule.

Second, as is shown more fully below, the analysis under § 101, while ultimately a legal determination, is rife with underlying factual issues. For example, while members of this court have used varying formulations for the precise test, there is no doubt the § 101 inquiry requires a search for limitations in the claims that narrow or tie the claims to specific applications of an otherwise abstract concept. CLS Bank, 707 F.3d at 1298-1302, 2013 WL 1920941 at *27-30 (meaningful limitations); Id. at 1282-83, 2013 WL 1920941 at *10 (opinion of Lourie, J.). Further, factual issues may underlie determining whether the patent embraces a scientific principle or abstract idea. Id. (opinion of Lourie, J.) (“The underlying notion is that a scientific principle … reveals a relationship that has always existed.”) (quoting Parker v. Flook, 437 U.S. 584, 593 n. 15, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978)). If the question is whether “genuine human contribution” is required, and that requires “more than a trivial appendix to the underlying abstract idea,” and were not at the time of filing “routine, well-understood, or conventional,” factual inquiries likely abound. Id. at 1283-85, 2013 WL 1920941 at *11-12. Almost by definition, analyzing whether something was “conventional” or “routine” involves analyzing facts. Id. at 1284-85, 2013 WL 1920941 at *12. Likewise, any inquiry into the scope of preemption — how much of the field is “tied up” by the claim — by definition will involve historic facts: identifying the “field,” the available alternatives, and preemptive impact of the claims in that field. The presence of factual issues coupled with the requirement for clear and convincing evidence normally will render dismissal under Rule 12(b)(6) improper.

Judge Moore and Learned Hand

Monday, April 3rd, 2017

Those of you who know me, know that I am a big fan of stand-up desks.  I was in Austin the other day and stopped by the University of Texas Law School’s law library to check out their IP collection.

In addition to this antique stand-up desk (with built-in swiveling ink well!) located near the IP stacks, I noticed that the law library has a rare copy of Blaustein’s Learned Hand on Patent Law.  That reminded me of an oral argument in which Judge Moore mentioned one of her favorite Learned Hand quotes:  [Listen].

By the way, to hear Learned Hand singing folk songs, go to this [link].

Supreme Court Intellectual Property Oral Arguments — 2016-17 Term

Sunday, April 2nd, 2017

Updated: 5/6/17; 6/14/17

I lose track of how far along each of the Supreme Court’s IP cases are this term.  So, here’s a handy chart:


Oral Argument


Samsung v. Apple

10/11/16   [Link]

12/6/16     [Link]

Star Athletica v. Varsity   Brands

10/31/16   [Link]

3/22/17     [Link]

SCA Hygiene v. First Quality Baby

11/1/16     [Link]

3/21/17     [Link]

Life Technologies v. Promega

12/6/16     [Link]

2/22/17     [Link]

Lee v. Tam

1/18/17     [Link]

Impression Products v. Lexmark

3/21/17     [Link]

5/30/17      [Link]

TC Heartland v. Kraft

3/27/17     [Link]

5/22/17      [Link]

Amgen v. Sandoz

4/26/17     [Link]

6/12/17      [Link]