Category: Claim Construction

Patent Month in Review: February 2017

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Supplying a Single Part of Many in an Infringing Device Does not Give Rise to Infringement Liability
The Supreme Court weighed in on whether supplying a single part for export in a multi-part infringing assembly gave rise to liability in Life Technologies Corp. v. Promega Corp. (Supreme Court 2017). In finding no liability, its conclusion was succinct: “supply of a single component of a multicomponent invention for manufacture abroad does not give rise to §271(f)(1) liability.”
Board (and Examiners) Must Sufficiently Identify Elements in Prior Art and Justify Motivation to Combine References
Patent applicants sometimes feel frustrated by loose rejections where examiners don't explicitly point out where each claim element may be found in a reference, or more often, what would motivate a person of ordinary skill in the art to combine references. In PersonalWeb Tech v. Apple (Fed. Cir. 2017), the Federal Circuit gave some support to the frustrated applicant, stating that "[t]he Board did not sufficiently explain and support the conclusions that (1) Woodhill and Stefik disclose all of the elements recited in the challenged claims of the ’310 patent and (2) a relevant skilled artisan would have been motivated to combine Woodhill and Stefik in the way the ’310 patent claims and reasonably expected success."
"Consisting of" Still Sets of a Closed List
Careful claim drafters know that "comprising" and "comprised of" set off open lists that include the elements therein and others unidentified, and "consisting" sets off closed lists that are limited to the elements in the list and no others. Shire Development v. Watson Pharma (Fed. Cir. 2017) confirmed this reading on "consisting of:" "'consisting' creates a very strong presumption that that claim element is ‘closed’ and therefore excludes any elements, steps, or ingredients not specified in the claim."
Sovereign Immunity Protects Public Universities from IPR Challenges
According to the Patent Trial and Appeals Board, the 11th Amendment shields public universities from IPR challenges. The 11th amendment reads, "The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State." The case has not gone higher than the PTAB at this point but this is good news for public universities with large patent portfolios. It will be interesting to see how this might apply to public university licensees. See Covidien LP v. University of Florida Research Foundation Inc., Case Nos. IPR 2016-01274, 01275, and -01276 (PTAB January 25, 2017).
Who is the Director of the USPTO: Solved
For reasons unknown, the identity of the USPTO director was unclear since President Trump's inauguration. In response to FOIA requests from Patently-O's Dennis Crouch, the USPTO now confirms that Michelle Lee is still Director.

[T]he Agency is responding that Michelle K. Lee is the Director of the United States Patent and Trademark Office and Anthony P. Scardino is the Acting Deputy Director of the United States Patent and Trademark Office.

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April 2016 Patent Law Update

By Stephen B. Schott
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USPTO Subject Matter Guidelines Updated
If you haven’t seen them, the USPTO published patentable subject matter hypotheticals, with an accompanying analysis. The PTO published these examples last year but recently added more examples that include a focus on bio-related technologies.
Courts Cannot “Factor Out” Functional Elements When Construing Design Patent Claims
Sport Dimension, Inc. v. Coleman Co., Inc. (Fed. Cir. April 2016)
For the 3rd time in a year, the Federal Circuit made it clear that while functional elements in a design patent are not protectable, when construing a design patent claim, courts cannot “factor out” or ignore functional elements as if they don’t exist.
The Court summarized this clearly: “[T]he armbands and side torso tapering serve a functional purpose, so the fact finder should not focus on the particular designs of these elements when determining infringement, but rather focus on what these elements contribute to the design’s overall ornamentation."
Patentees Cannot File a Reexamination (or Reissue) to Avoid an Invalidity Judgment
Cardpool v. Plastic Jungle (Fed. Cir. April 2016)
The patentee filed for reexamination of its patent before the district court issued a final judgment. After the district court invalidated the patent’s claims, the USPTO issued a reexamination certificate amending the patent’s claims. The parties jointly moved for the district court to vacate its invalidity judgment but the district court refused and the Federal Circuit affirmed stating, "The Supreme Court counsels that “vacatur must be decreed for those judgments whose review is . . . ‘prevented through happenstance’—that is to say, where a controversy presented for review has ‘become moot due to circumstances unattributable to any of the parties.”
Claim Construction Required Even if Claim Term has Plain and Ordinary Meaning
Clare v. Chrysler Grp. LLC (Fed. Cir. April, 2016)
Even a simple claim term with a plain and ordinary meaning must be construed. Point finale.
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Federal Circuit Broadens Application of 35 USC 112(f)

By Stephen B. Schott
Federal-Circuit-cafcUS courts interpret patent claims written in a specific way under a special claim interpretation statute. Claims written in this way include “means plus function” elements that courts interpret under 35 USC 112(f) (often referred to as 35 USC 112(6)).
Most patent practitioners in the US avoid means plus function style claims but they are common in other parts of the world, particularly Europe, and thus sometimes make it into US applications that originate overseas. Further, means plus function claims can be found when a court reads a claim as not explicitly invoking the means plus function statute.
A recent Federal Circuit en banc case shed some light on identifying means plus function cases.
Interpreting Means Plus Function Claims
The statute that governs means plus function claim interpretation reads as follows:

Element in Claim for a Combination.— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Such a claim element might read like this:

“release means for retaining the guide in the charged position.”

A court interpreting such a claim follows 35 USC 112(f) above and first identifies the claimed function and then looks to the patent specification for the structure that performs this function. From the patent owner’s perspective, this method of claim interpretation is potentially problematic for two reasons: (1) If the specification fails to show a corresponding structure, a court will consider that the means plus function term is indefinite and the claim is invalid, or (2) The structure in the specification often provides a narrower interpretation of a claim element than the patent owner would want.
Thus in the US, many patent drafters try to avoid means plus function claims. Dennis Crouch at Patently O has charted an ongoing decline in the number of claims that use means plus function language (and interestingly the number of patents using language that is functional but lacks the magic “means” word has increased.)
Unclear Claims May Be Interpreted as Means Plus Function Claims
The Federal Circuit’s en banc Richard A. Williamson v. Citrix Online, LLC opinion may make it a little more challenging to avoid interpretation under the means plus function statute.
In the claim at issue, the element that the Federal Circuit scrutinized to determine if it was written in means plus form was this:

a distributed learning control module for receiving communications transmitted between the presenter and the audience member computer systems and for relaying the communications to an intended receiving computer system and for coordinating the operation of the streaming data module.

If the claim had been written as a “distributed learning control means for receiving…” its interpretation as a means plus function would be clear. But because the claim used the word “module,” the issue arose as to whether the court should apply 35 USC 112(f).
dreamstime_xs_2123998The court reviewed its precedent and in particular, a line of cases that held that where a claim does not use “means,” there is a “strong” presumption that 35 USC 112(f) does not apply. It rejected this “strong” presumption and adopted a slightly broader view of when 35 USC 112(f) applies:

The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. Greenberg, 91 F.3d at 1583. When a claim term lacks the word “means,” the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to “recite sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function.” Watts, 232 F.3d at 880. The converse presumption remains unaffected: “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.” Personalized Media, 161 F.3d at 703.

The court found that the limitation was subject to interpretation as a means-plus-function limitation. As noted above, these means-plus-function limitations require disclosure in the patent specification of adequate “corresponding structure” to perform the claimed function. The court found that the specification failed to disclose this structure and held the patent invalid.
The takeaway is that if a claim drafter wants to avoid the means plus function claim interpretation rules, they should draft claims that steer further from any linguistic construction that is similar to the traditional means plus function language.
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The Federal Circuit Breathes More Life Into Claim Preambles

By Stephen B. Schott
?????????????????????????????????????????????????????????????Claim preambles are given little weight in claim interpretation, which is seemingly incongruous with the amount of scrutiny courts give to all the other words in patent claims. But the Federal Circuit recently breathed just a little more life into preambles in Pacing Technologies, Inc. v. Garmin International, Inc.
The decision focused on US patent 8,101,843 claim 25:

A repetitive motion pacing system for pacing a user comprising:
a web site adapted to allowing the user to pre-select from a set of user-selectable activity types an activity they wish to perform and entering one or more target tempo or target pace values corresponding to the activity;
a data storage and playback devices; and
a communications device adapted to transferring data related to the pre-selected activity or the target tempo or the target pace values between the web site and the data storage and playback device.

In explaining its decision, the Federal Circuit repeatedly referred to claim 25's preamble, pointing out how certain preamble terms affect the meaning of terms later in the claims.
Claim 25’s preamble uses two terms, “user” and “repetitive motion pacing system” that are then referred back to in subsequent claim elements. The Federal Circuit pointed out that this construction made claim 25’s preamble language so important to the entirety of the patent as to render it a “necessary component of the claimed invention,” and therefore “limiting.”
Does this case elevate the importance of claim preambles, and, if so, will it change the way that practitioners structure them? It’s hard to know if the import of preambles is now elevated or whether this case will stand by itself, but in either case, practitioners would be wise to craft preambles with care.
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Towards More Reliable Trial Court Decisions on Claim Construction

By Stephen B. Schott
dreamstime_xs_225321The Federal Circuit, which has exclusive domain over patent-related appeals, overrules district court findings at an alarming rate. The Supreme Court has decided that turnabout is fair play. Continuing a string of reversals or at least in this case remands, the Supreme Court recently overturned years of Federal Circuit precedent and outlined a new standard of review for claim interpretation in patent litigation.
Teva v. Sandoz focused on the question of an active pharmaceutical ingredient claimed as having “a molecular weight of 5 to 9 kilodaltons.” This may seem definite but the district court thought otherwise, noting that there are 3 methods of calculating molecular weight: the weight of the most prevalent molecule, the weight of the average of all molecules, or a weighted average where heavier molecules contribute more to the calculation.
The trial court heard expert testimony on which of these definitions would be proper, found that there was no conclusive definition, and thus concluded that the claims were invalid because they were indefinite. The patent owner (Teva) appealed that holding to the Federal Circuit.
The Federal Circuit has different “standards of review” depending on what it is reviewing. Before the Teva case, when the Federal Circuit interpreted claims, it followed a de novo “from the beginning” review standard, meaning that it interpreted the claims anew, giving little deference to all the work the trial court did in interpreting the claims.
Ignoring a trial court’s analysis has been a controversial topic because trial court judges spend a lot of time getting to know the parties, their experts, inventors, and the facts surrounding the case during the trial process. The de novo standard, however, the Federal Circuit disregards much of that work and looks at just the paper record to interpret the claims.
In Teva, the Supreme Court abandons the de novo standard of review of a trial court’s claim interpretation, in part. The “in part” is a fine blade the Supreme Court draws through claim interpretation. One of the district court judge’s jobs is to determine the facts, and claim interpretation involves a mixed effort of interpreting facts (for example, expert and inventor testimony) and law (the words of the claims themselves, the patent specification) to arrive at a claim interpretation.
The Supreme Court says that the Federal Circuit can no longer review matters of fact in claim interpretation de novo, but instead must review them for “clear error,” which means that a district court judge’s reliance on facts like expert testimony will be no longer ignored; instead, a judge's reliance on facts will be given substantial deference.
This is a boon for experts, no doubt. It should also make District Court decisions on claim interpretation less prone to being overturned. Since many claim interpretation decisions are case dispositive, and the claim interpretation decisions happen before expensive patent trials, this may reduce the total costs for patent litigation in the future.
imgresIn a lengthy dissent, Justice Thomas, joined by Justice Alito, argues that claim construction is a mixed question of fact and law that should be decided as a matter of law under the de novo standard.
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