CAFC Rules En Banc: Terms in Product-by-Process Claims are Limitations in Determining Infringement

Abbott Laboratories v. Sandoz, Inc., (Fed. Cir. 2009) (en banc in part) 07-1400

While considering an appeal of a claim construction ruling from the Eastern District of Virginia, the court suddenly found itself faced with a dilemma regarding the construction of certain product-by-process claims: the plaintiff argued that the district court erred in construing the process steps of the claims by using rule in Atlantic Thermoplastics, 970 F.2d at 846-47, which stated that "process terms in product-by-process claims serve as limitations in determining infringement." According to the plaintiff, the proper construction lied with Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1583 (Fed. Cir. 1991), which stated that "the correct reading of product-by-process claims is that they are not limited to product prepared by the process set forth in the claims."

Acting sua sponte, (or as Professor Crouch puts it: "en banc sua sponte sub secretum") the CAFC took the issue for en banc resolution, despite the fact that the court received no briefing and held no argument on the issue.

In Atlantic Thermoplastics, the CAFC considered the scope of a product-by-process claim that recited "[t]he molded innersole produced by the method of claim 1." The patentee urged that competing, indistinguishable innersoles made by a different method nonetheless infringed. The CAFC rejected the patentee’s position, and construed the product-by-process claims as limited by the process.

Looking at the line of 7 Supreme Court cases dealing with the issue (spanning over the years 1874-1938), the CAFC concluded that the Atlantic Rule "finds extensive support in Supreme Court opinions that have addressed the proper reading of product-by-process claims . . .
The Supreme Court has long emphasized the limiting requirement of process steps in product-by-process claims. " Moreover,

[T]he Supreme Court has reiterated the broad principle that "[e]ach element contained in a patent claim is deemed material to defining the scope of the patented invention." Warner-Jenkinson, 520 U.S. at 19. Although Warner-Jenkinson specifically addressed the doctrine of equivalents, this rule applies to claim construction overall. As applied to product-by-process claims, Warner-Jenkinson thus reinforces the basic rule that the process terms limit product-by-process claims. To the extent that Scripps Clinic is inconsistent with this rule, this court hereby expressly overrules Scripps Clinic.

Furthermore, the majority opinion (Chief Judge Michel and Judges Rader, Bryson, Gajarsa, Linn, Dyk, Prost, and Moore) stated that

The dissenting opinions lament the loss of a "right" that has never existed in practice or precedent – the right to assert a product-by-process claim against a defendant who does not practice the express limitations of the claim. This court’s en banc decision in no way abridges an inventor’s right to stake claims in product-by- process terms. Instead this decision merely restates the rule that the defining limitations of a claim – in this case process terms – are also the terms that show infringement.

Thus this court does not question at all whether product-by-process claims are legitimate as a matter of form. The legitimacy of this claim form was indeed a relevant issue in the nineteenth century . . . However, this court need not address that settled issue. The issue here is only whether such a claim is infringed by products made by processes other than the one claimed. This court holds that it is not.

Product-by-process claims, especially for those rare situations when products were difficult or impossible to describe, historically presented a concern that the Patent Office might deny all product protection to such claims. See In re Butler, 17 C.C.P.A. 810, 813 (CCPA 1930) ("Process claims are valuable, and appellant thinks he is entitled to them; but it is submitted that he should not be limited to control of the process when the article which that process produces is new and useful."). In the modern context, however, if an inventor invents a product whose structure is either not fully known or too complex to analyze (the subject of this case – a product defined by sophisticated PXRD technology – suggests that these concerns may no longer in reality exist), this court clarifies that the inventor is absolutely free to use process steps to define this product. The patent will issue subject to the ordinary requirements of patentability. The inventor will not be denied protection. Because the inventor chose to claim the product in terms of its process, however, that definition also governs the enforcement of the bounds of the patent right. This court cannot simply ignore as verbiage the only definition supplied by the inventor.

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Newman's Dissent (Joined by Mayer and Lourie)

Heretofore a new product whose structure was not fully known or not readily described could be patented as a product by including in the product description sufficient reference to how it can be made, to distinguish the new product from prior art products. Patentability was determined as a product, independent of any process reference in the claim, and validity and infringement were based on the product itself. This expedient for patenting products whose structure was not fully known at the time of filing the patent application has been called the "rule of necessity." It was pragmatic, fair, and just, for it attuned patent law and practice to the realities of invention.

Today the court rejects this expedient and discards this practice, ruling that all claims containing a process term under the rule of necessity now must be construed, for purposes of infringement, as limited to use of any process term that was used to assist in defining the product. That is, such a product is not patented as a product, however it is produced, but is limited to the process by which it was obtained. This is a new restraint on patents for new products, particularly today’s complex chemical and biological products whose structure may be difficult to analyze with precision. It is a change of law with unknown consequences for patent-based innovation.

The court acts sua sponte, without explanation of what policy is intended to be served by this change, without consideration of the technologies that may be adversely affected by elimination of this expedient, without notice to those whose property rights may be diminished. In so doing, the court departs from statute, precedent, and practice. This change is as unnecessary as it is flawed, gratuitously affecting inventions past, present, and future. I respectfully dissent.

NOTES:

- The en banc ruling clearly mitigates a potential certiorari showdown at the SCOTUS, which would have had a good chance of review if the Scripps ruling prevailed.

- While there appears to be some legitimate concern over procedural violations on the sua sponte ruling, Hal Wegner has notes that the CAFC's actions follow previous, similar actions in Kingsdown Medical Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988)(Markey, C.J.)(en banc in part); Midwest Industries, Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed.Cir.1999)(Bryson, J.)(en banc in part); and DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293 (Fed. Cir. 2006)(Rader, J.)(en banc in part).

- This ruling appears to follow a judicial trend of firming up the notice provision for patentees and their claim terms, and adding a further level of complexity to patent claim drafting: while insufficient claim detail may lead to invalidity, additional claim details may foreclose avenues of infringement.

- For whatever it's worth, 2 of the 3 dissenting judges hold PhD's in the chemical arts (Newman: PhD Yale, 1952, Lourie: Univ. of Penn., 1965).

CAFC: Extrinsic Evidence OK When Patentee Chooses Inconsistent Claim Language

Helmsderfer v. Bobrick Washroom Equipment, Inc. (2008-1027), June 4, 2008

The patentee appealed the claim construction for the term "partially hidden from view" on a patent related to baby diaper changing stations. The district court construed the term to mean "hidden from view to some extent but not totally hidden from view."

In contrast, the patentee agued that the plain meaning of the term "partially" would include "totally hidden." In support of its argument, patentee pointed to the written description which stated that a top surface is "generally hidden from view."

The CAFC disagreed with the patentee. Looking to the claim language, the court noted that the terms "generally" and "at least" were used elsewhere in the claim. Applying CAFC precedent, "[i]n absence to evidence to the contrary, [it must be presumed] that the use of these different terms in the claims connote different meanings." Since there was no evidence to rebut the presumption, the court declined to give "partially" the same meaning as "generally" or "at least partially."

In addition, the CAFC found the district court's use of dictionaries proper when construing the term:

Here, partially is not defined in the specification. In fact, the phrase "partially hidden from view" does not even appear in the written description. The district court’s statement that there is no clear meaning of the term "partially hidden from view" apparent from the intrinsic record is correct.

The patentee also argued that the district court's construction was erroneous because it excluded both the preferred embodiment and every illustrated embodiment from the claims. Again, the CAFC disagreed:

Our case law generally counsels against interpreting a claim term in a way that excludes the preferred embodiment from the scope of the invention . . . It is true that the plain meaning of "partially hidden from view" does not include totally hidden from view, and that therefore claims 6-7 do not cover the preferred embodiment or the other illustrated embodiments. However, this does not mean that these embodiments are all excluded from the scope of the invention, but rather that they are excluded from the scope of these particular claims. Without opining on the construction of claims not at issue in this appeal, we note that none of the other independent claims of the ’928 patent recite the term "the platform top surface is partially hidden from view." Therefore, our construction of claims 6-7 leaves open the possibility that claims not at issue in this appeal encompass omitted embodiments. It is often the case that different claims are directed to and cover different disclosed embodiments. The patentee chooses the language and accordingly the scope of his claims.

Moreover, Brocar’s proposed construction is not consistent with any plain meaning of the term "partially" as interpreted in light of the specification. In this case there is only one ordinary meaning attributable to the word "partially" and this meaning does not include "totally." As Brocar did not act as its own lexicographer and alter the ordinary meaning of the term "partially," we cannot construe these particular claims to encompass the preferred embodiment or other illustrated embodiments. Courts cannot rewrite claim language.

AFFIRMED

CAFC: Unasserted/Cancelled Claims are "Probative Evidence" of Embodiments Covered

PSN Illinois, LLC v. Ivoclar Vivadent, Inc. (2007-1512)

After reexamination, PSN was left with a single claim in a patent covering a method of fabricating porcelain veneers for teeth. The method recited the step of eroding away a "statute" of a tooth from a porcelain veneer restoration "leaving said restoration ready for mounting on said tooth." The claim language did not define what was meant by "ready for mounting," and the specification provided no explicit definition.

While the summary of the invention provided additional examples of a restoration that was "ready for mounting," the district court focused on a preferred embodiment in the detailed description, which was stated to be "a feature of this invention." Taking this narrow construction, the district court granted summary judgment of noninfringement.

On appeal, the CAFC found the district court incorrectly placed greater weight on the detailed description, noting that the detailed description expressly provided that the embodiment "may" be used when performing the claimed method. Also, PSN cited the recent CAFC case of Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008), which held that

At leas[t] where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence on the contrary (emphasis added).

While finding discrepancies in the claim construction, the CAFC nevertheless found that "'ready for mounting' can and should be construed in a way that encompasses the preferred embodiment."

We note that Oatey is not a panacea, requiring all claims to cover all embodiments. Instead, courts must recognize that disclosed embodiments may be within the scope of other allowed but unasserted claims. Likewise, during prosecution, an applicant may have cancelled pending claims but not amended the specification to delete disclosure relevant only to the cancelled claims. In such cases, unasserted or cancelled claims may provide "probative evidence" that an embodiment is not within the scope of an asserted claim.

AFFIRMED

New Study On Claim Construction Reversal Rates

"Learn from the mistakes of others - you can never live long enough to make them all yourself"

- John Luther

With all the talk of claim construction and CAFC reversal rates, Professor David Schwartz from the John Marshall Law School set out to see if there was any empirical data that could signal a possible solution to the courts and the claim construction conundrum (the "Safire-esque" sound to this phrase is purely coincidental). Specifically, a core premise of the U.S. legal system is that legal doctrine is taught by the higher courts, and applied by the lower courts (i.e., the "teacher-learning theory"). Applying this theory to the CAFC, the court would presumably teach district courts how to construe claims, and they would apply CAFC tautology to a given set of facts to achieve a relatively predictable result.

However, this is clearly not happening, especially on issues of claim construction. Professor Schwartz poked at some statistics to see if he could uncover why. A few of his findings follow.

Active Judicial Districts

Theory: Jurisdictions that appear the most before the CAFC on claim construction issues would absorb the most institutional knowledge and, thus, have the more accurate take on claim interpretation during litigation.

Finding: Not really. In fact, the second busiest district (C.D. Cal.) had the highest reversal rate of claim construction (43.5%). The most active judicial districts, appearances at the CAFC on claim construction, and % of claim construction appeals reversed or vacated because of claim construction error are:

(1) N.D. Cal. - 84 (28.6% reversed or vacated)
(2) C.D. Cal. - 69 (43.5% reversed or vacated)
(3) N.D. Ill. - 65 (26.2% reversed or vacated)
(4) D. Del. - 54 (22.2% reversed or vacated)
(5) S.D.N.Y. - 45 (28.9% reversed or vacated)
(6) D. Mass. - 42 (26.2% reversed or vacated)
(7) D. Minn. - 33 (36.4% reversed or vacated)
(8) E.D. Mich. - 29 (31.0% reversed or vacated)
(9) D.N.J. - 28 (32.1% reversed or vacated)
(10) E.D. Va. - 27 (22.2% reversed or vacated)
(11) N.D. Tex. - 21 (42.9% reversed or vacated)
(11) S.D. Tex. - 21 (23.8% reversed or vacated)
(13) W.D. Wisc. - 19 (21.1% reversed or vacated)
(14) W.D. Wash. - 18 (38.9% reversed or vacated)
(14) D. Col. - 18 (27.8% reversed or vacated)

Thus the average % of cases reversed or vacated among the top 15 is about 30.12%, and 4 out of the top 10 exceed this amount. Since Markman, 32.4% of overall claim terms were "wrongly" construed by the lower court, and 38.2% of cases had at least one term wrongly construed. Moreover, 30% of cases overall had to be reversed, vacated or remanded because of an erroneous claim construction. As a point of reference, the CAFC's overall reversal rate of district court judges' judgments in patent cases was 13% for each of the years 2004-06.

Number of Previous Appeals

Theory: A district court judge with more prior CAFC feedback should have a lower reversal rate than a judge with less experience.

Finding: "There does not appear to be a clear trend that the reversal rate decreases when a district court judge appears multiple times before the Federal Circuit on claim construction."

Looking at judges having 1, 2, 3, 4, or "5 or more" previous appeals, the reversal rates appear to be the same throughout, with the exception of judges that had exactly four prior claim construction appeals. In this case, the chances of an erroneous claim constructions upticks to 56.7%, and the chance of a case being reversed or vacated jumps to 50%.

Prior Reversals

Theory: When a particular district court judge has been reversed, vacated or remanded at least once due to an erroneous claim construction, the judge will "learn the lesson" and perform better on subsequent constructions.

Finding: "The first reversal does not have a substantive or statistically significant effect on future performance . . . It does not appear that district court judges improve their claim construction accuracy after their first reversal from the Federal Circuit."

Judges With Experience

The paper also looked at Judges with the most patent experience, and overall judicial experience. While a slight decrease was detected for judges with the most overall experience, no substantive effects were detected.

Age of Judges

Interestingly, the trend in reversal rates generally decrease until the district court judge is 70 years old. Thereafter, the reversal rate spikes to nearly 35-40%. One possible explanation for this is that judges seventy or older are more likely to have taken senior status, and that senior status affects claim construction accuracy.

The study concludes:

As to the specific problem in patent law, the article points to three possible explanations for the lack of improvement: (1) an indeterminate nature of claim construction; (2) a failure of the Federal Circuit to teach properly how to construe claims; and (3) a failure of district court judges to learn claim construction. The data suggests that quasi-specialized patent trial judges, as proposed in pending legislation, will not automatically reduce the reversal rate . . . Further, with regard to the court system more broadly, the data leads one to consider whether the teaching-learning hypothesis should be revisited. Further empirical studies should be considered to see if what is happening in the patent context, namely a failure to learn or teach, occurs in other areas of law. If trial courts do not learn from appellate courts, a different model of understanding the entire court system, not just as applied to patent law, may be necessary.

Download a draft copy of Professor Schwartz's paper here (70 pages).

CAFC Reverses Key Parts of Judgment in Finisar v. DirecTV

Finisar Corp. v. The DirecTV Group (2007-1023) April 18, 2008 (link)

By a jury verdict, the E.D Texas found that DirecTV willfully infringed Finisar's U.S. Patent No. 5,404,505 (the ’505 patent), and the jury awarded $78.9 million in reasonable royalty damages, and $25 million in enhanced damages. On appeal, DirectTV challenged numerous issues in the case.

Claim Construction: On appeal, the CAFC found that the district court provided an "unjustifiably broad" interpretation to a key term found in each asserted claims. More interestingly, the CAFC reached this conclusion after turning to a claim construction provided by the N.D. California in a related case (Comcast v. Finisar):

Given “the importance of uniformity in the treatment of a given patent,” . . . this court would be remiss to overlook another district court’s construction of the same claim terms in the same patent as part of this separate appeal. In the interest of uniformity and correctness, this court consults the claim analysis of different district courts on the identical terms in the context of the same patent. Here, the Northern District of California’s efforts in the Comcast case are particularly helpful because that court repeatedly referred back to the Eastern District of Texas’s constructions—the subjects of this appeal.

Grammatical interpretation of prior art - Quite a bit of hay was thrown about over the interpretation of a passage in an anticipatory prior art reference. After analyzing referential and qualifying words and phrases, preceding antecedents, commas and modifiers, the CAFC concluded that "to avoid slipping into a realm of ambiguity that could render jury verdicts wholly unreviewable, this court imputes an understanding of English grammar and usage to the jury."

Finding that the new grammatical interpretation, coupled with additional supporting disclosure in the prior art, clearly and convincingly disclosed claimed features, the CAFC reversed the district court's denial of JMOL on anticipation.

Willfulness: The CAFC took issue with the district court faulting DirecTV in part for not obtaining an opinion on validity, weighing its failure to do so in Finisar's favor on the question of willfulness. Noting the Graco decision (“[t]here is no requirement that an opinion must address validity to negate a finding of willful infringement”), the CAFC concluded that "a competent opinion of counsel concluding either that DirecTV did not infringe the ’505 patent or that it was invalid would provide a sufficient basis for DirecTV to proceed without engaging in objectively reckless behavior with respect to the ’505 patent."

Software and Means-Plus-Function: Beware! Finisar's patent covered software elements, claimed in MPF format. However, the specification provided "nothing more than a restatement of the function, as recited in the claim." The CAFC upheld the finding of indefiniteness:

For computer-implemented means-plus-function claims where the disclosed structure is a computer programmed to implement an algorithm, “the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” . . . Thus the patent must disclose, at least to the satisfaction of one of ordinary skill in the art, enough of an algorithm to provide the necessary structure under § 112, ¶ 6. This court permits a patentee to express that algorithm in any understandable terms including as a mathematical formula, in prose . . . or as a flow chart, or in any other manner that provides sufficient structure.

The district court correctly determined that the structure recited in the ’505 specification does not even meet the minimal disclosure necessary to make the claims definite. Simply reciting “software” without providing some detail about the means to accomplish the function is not enough . . . This court does not impose a lofty standard in its indefiniteness cases . . . But in this case, the claims are already quite vague. Without any corresponding structure, one of skill simply cannot perceive the bounds of the invention.

AFFIRMED-IN-PART, REVERSED-IN-PART, AND REMANDED

CAFC Creates Potential Conflict in De Nove Review of MPF Claims

Aristocrat Tech. v. Multimedia Games, Inc. (2007-1375), February 22, 2008, Non-Precedential

Aristocrat appealed the order from the Central District of California entering summary judgment of invalidity for indefiniteness of their patent. Multimedia filed a motion for summary judgment arguing that a disputed claim was invalid for indefiniteness, because the specification of the patent failed to disclose necessary structure corresponding to several of the means-plus-function limitations. The district court agreed with Multimedia and concluded that the claims were invalid as indefinite.

One of the disputes surrounded the construction of "control means." Aristocrat argued that the term as claimed was not in means-plus-function (MPF), because one skilled in the art would recognize it as a processor, and because the "subsidiary" limitations (e.g., memory, programming, etc.) together provided enough structure to escape 112, paragraph 6. The CAFC disagreed, but added:

[W]e do not agree with the apparent argument by Multimedia that subsidiary means-plus-function limitations can never define sufficient structure to rebut the presumption concerning means-plus-function treatment of a parent clause on the ground that they only recite additional functions . . .The structure of a parent means clause must be disclosed in terms of the functions that the claim states the means performs. Here, it is not clear that the structures allegedly associated with the subsidiary means as a whole are capable of performing all of the functions associated with the parent means. However, under different circumstances it may be possible that once identified, structures corresponding to the subsidiary means-plus-function limitations may as a whole sufficiently recite the structure for performing the superior function such that resort to the specification for further corresponding structure is not necessary. Because that is not the case here, we conclude that the presumption of means-plus-function treatment applies, and "control means" should be construed as a means-plus-function limitation subject to having structural support in the specification.

Identifying the claims as MPF, the CAFC then concluded that additional factual determinations were needed to properly construe the claims

We conclude that genuine issues of material fact exist concerning whether one skilled in the art of computer programming would identify structure in the specification associated with the various asserted claim limitations, thereby precluding summary judgment, and we thus reverse the district court’s summary judgment order.

What's the big deal?

In Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc., 145 F.3d 1303 (Fed. Cir. 1998), the CAFC held that MPF claim construction is a legal matter, subject to de novo review under Cybor:

A determination of the claimed function, being a matter of construction of specific terms in the claim, is a question of law, reviewed de novo. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed.Cir.1998) (en banc); Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370 (1996).”

This would explain why the opinion was issued as nonprecedential. But the implication seems clear: the rethinking of Cybor de novo review may well be underway.

See Hal Wegner's article "Rethinking Cybor De Novo Review: Inherent Factual Determinations" (link)

Vonage Verdict Upheld Amidst Claim Construction Differences

"We have made clear the methods by which claims must be construed. "

- Judge Michel, dissenting-in-part,

Verizon Services Corp. v. Vonage Holdings Corp. (2007-1240), September 26, 2007

Verizon successfully sued Vonage for infringing 3 patents related to IP telephony, and was awarded $58 million of compensatory damages, a 5.5% royalty rate on any future infringing sales, and an injunction barring Vonage from using certain methods and devices. Vonage appealed, arguing that (1) the lower court improperly construed the claims, (2) the injunction was unwarranted, and (3) the judge's instructions on obviousness didn't square with KSR.

On claim construction, the majority opinion upheld the construction on all the patents, except for one patent, where the CAFC found that the patentee disclaimed subject matter through argument during prosecution.

We have held that a statement made by the patentee during prosecution history of a patent in the same family as the patent-in-suit can operate as a disclaimer. Microsoft Corp. v. Multi-tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) . . . The applicants gained allowance of the claims of the [] application after stating that the prior art systems "all appear to be directed to non-localized systems," and that the "present invention," by contrast, was "restricted to operate within a few feet from a base station (i.e. wireless handsets)." . . . We think that this language clearly disclaimed coverage of systems operating with a range greater than a "few feet," and that the district court erred in failing to construe the localized system as requiring a range of a few feet.

Notably, Judge Michel dissented from the disclaimer ruling and stated that the entire judgment should be affirmed. Judge Gajarsa dissented from the claim construction of one of the other patents-in-suit, and thought a remand was necessary. Of the three patents, only one managed to get a unanimous claim construction from the bench.

Regarding the injunction, the CAFC found no error in the district court's ruling which relied on the eBay v. MercExchange factors. In a footnote, the court added the following comment:

One factor that is relevant to the balance of the hardships required by the Supreme Court’s decision in eBay was not considered by the district court, namely whether the district court should have allowed time for Vonage to implement a workaround that would avoid continued infringement of the ’574 and ’711 patents before issuing its injunction. Verizon had a cognizable interest in obtaining an injunction to put an end to infringement of its patents; it did not have a cognizable interest in putting Vonage out of business. However, as Verizon points out, Vonage made no request for a workaround period to the district court, and Vonage has already had several months since the district court’s judgment to implement a workaround.

Finally, Vonage challenged the district court’s instructions to the jury on obviousness concerning the need to find a "suggestion in the prior art to combine the elements." The CAFC noted that, since only one reference was being considered on the patents in question, the error in those cases was harmless:

[W]e note that there cannot be prejudicial error with respect to the ’574 and ’711 patents because Vonage does not dispute that the obviousness testimony at trial centered on a single reference ["Jonas"], and thus any alleged error in instructions requiring a finding of motivation to combine several references would have been harmless.

CAFC Issues Split Decision on the Meaning of "Transverse Holes"

Acumed LLC v. Stryker Corp. (06-1260), April 12, 2007

The CAFC reviewed the district court's finding of willful infringement of Acumed's patent on orthopedic devices for the treatment of fractures to the upper arm. Stryker argued that the district court erroneously construed numerous claim terms, including the term "transverse holes":

An elongated tapered nail for securing fractures of the proximal humerus comprising:

. . . a contiguous butt portion extending proximally from the shank and configured to occupy the humeral cortex;

the butt portion being shorter than the shank and defining a plurality of at least three transverse holes, each defining a hole axis, with the three hole axes angularly offset from each other . . .

The district court defined "transverse holes" as "holes across the butt portion of the nail." Stryker argued that this term should mean holes that are perpendicular to the nail shaft, since every description of the transverse holes in the patent only teaches a perpendicular hole.

While the majority acknowledged that every description in Acumed's patent showed a perpendicular hole, the court refused to read this limitation into the claim under Phillips.

The plain meaning of Claim 1 covers more than the particular embodiment shown in the figures. While the disclosed embodiment possesses "perpendicular" holes, the claim language covers all "transverse" holes—a word that does not necessarily imply right angles. Moreover, the patentees’ description of their preferred embodiment itself implies a difference between the words "perpendicular" and "transverse." The written description states that Figure 2 "illustrates a plurality of transverse holes, each of which is . . . perpendicular to the portion of the nail axis at the butt portion 14 of the nail" . . . This implies that a "transverse" hole need not be "perpendicular" - if it were, the patentee would not have needed to clarify that these holes, in addition to being transverse, were perpendicular to the nail axis. Just as in Phillips, where the asserted claim mentioned "steel baffles" and hence "strongly implie[d] that the term 'baffles’ does not inherently mean objects made of steel," 415 F.3d at 1314, this usage of language is strong evidence that the patentee considered "transverse" and "perpendicular" to have distinctly different meanings.

The intrinsic evidence of the specification therefore suggests that the patentees knew how to restrict their claim coverage to holes passing through at right angles. They could have used the word "perpendicular," as they did in discussing their preferred embodiment. Instead, they chose a different term that implies a broader scope. The intrinsic evidence does not indicate that one of skill in the art would believe the patentees meant "perpendicular" when they said "transverse."

The majority also found that the specification phrase "each of which is defined" does not imply a lexicographic definition, and especially not a definition of "transverse" to mean "perpendicular" (e.g., "the butt portion . . . defining a plurality of at least three transverse holes, each defining a hole axis"; "the curved shank includes a curved portion defining a curved central axis"; "the butt portion defines a central axis").

Also, the majority discounted the fact that the inventor of Acumed's patent filed a related application, where the transverse holes were clearly defined as perpendicular in nature. Relying on Phillips, the majority concluded that "the specification and claims of the ’444 patent itself should be given significantly greater weight. "

Judge Moore's Dissent: In a strongly worded (13 page) dissent, Judge Moore took issue with the manner in which the district court established its claim construction. For one, the claim construction hearing occurred prior to Phillips. Second, Moore pointed out that the district court started the claim construction by turning to a common English language dictionary, published ten years after the issuance of Acumed's patent. Furthermore, there were two definitions for "transverse" offered by the dictionary, and the district court chose the broader definition, because it found no express disavowal of claim scope in the specification. Under Phillips, Moore argued that such an approach was clearly improper.

Moore also argued that the public notice of a patent's scope becomes muddles when courts construe claim terms to have meanings broader that the meaning derived from the intrinsic evidence. Since Acumed's patent only discloses a perpendicular hole, "it is inappropriate to give that term a broader interpretation, particularly where the only support for the broader interpretation is extrinsic evidence—in this case, a dictionary (which supports the narrower construction as well). "

Finally, Moore lets off this parting shot at the majority:

Tellingly, the majority opinion offers no other support—intrinsic or extrinsic—for its construction, and in fact, offers no explanation at all for its conclusion that "the claim language covers all ‘transverse’ holes—a word that does not necessarily imply right angles." What, if not the specification, is the majority using to determine the plain meaning of this term? The district court based its conclusion regarding the plain meaning of transverse on Webster’s Dictionary, which it acknowledged supported both the definition across and perpendicular. In the present case, as in Nystrom, I see no reason why we should adopt one, broader, plain meaning of the term "transverse" when there is another plain meaning that is completely consistent with the intrinsic evidence. When one begins with the patent specification, in my opinion, there is no doubt which of the two meanings of "transverse" is correct.

I'm losing track of this, but Acumed is now the 13th or 14th split decision on a claim construction issue since Phillips (which is almost a 300% increase over the Pre-Phillips days).

Specification, Admissions Vitiate Infringement

MyMail, Ltd. v. America Online et al. (06-1147) February 20, 2007

MyMail appealed a grant of Summary Judgment by the E.D. Tex., finding that 8 Internet service providers did not infringe MyMail's patent (6,571,290). Claim 1 of the patent reads as follows:

1. A method of connecting a use to a given NSP (Network Service Provider) comprising the steps of:

providing a network device user with an initial use set of log-in information for initially communicating with an access [service provider] via an available NSP;

storing in a database of the network device a hidden time shared set of log-in information supplied by said access service for accessing said given NSP; and

causing the network device to reestablish communication with the network via said given NSP using the hidden set of log-in information.

Generally speaking, the the claims use the term Network Service Provider or "NSP" to refer to a party in a generic network performing the function of an ISP and providing modem services to network users. During the Markman hearing, the court construed the term NSP as "a party that provides a connection to the network and authenticates users for access to the network."

MyMail's theory of infringement claimed that third-party modem banks associated with the defendants served as the NSP, and the service providers (i.e., AOL) served as the access service provider, and together they infringed. However, under the district court's interpretation of the claims, only the third-party modems performed authentication, and not the service providers. Thus, summary judgment of noninfringement was granted.

MyMail argued that the authentication did not have to occur at the NSP, but could also be performed by the access service provider. For support, MyMail pointed out an unclaimed embodiment disclosed in the specification.

The CAFC dismissed this argument, and pointed out portions of the specification the defined "the invention," where NSP authentication was "necessary" to allow an ISP to grant access to a user. Regarding the unclaimed embodiment, the CAFC found that the embodiment had no effect on the scope of the claimed subject matter. Furthermore, admissions made by MyMail's counsel made clear that the NSP had to perform the authentication:

In that statement, as in the earlier one, MyMail’s counsel agreed as to the entity that had to perform authentication but disagreed as to the method of authentication, i.e., what information was employed to authenticate the user. Having agreed to that construction before the district court, MyMail "cannot now argue against that claim construction simply because it resulted in an adverse ruling on summary judgment."

AFFIRMED

Fraud in Obtaining Ownership of Patent: The CAFC also considered arguments from the defendants alleging that MyMail fraudulently obtained ownership of the patent. The CAFC noted:

While it is true that later-discovered fraud relating to patent procurement can be raised as a defense in federal court, the same is not true of fraud relating to patent ownership. Fraud in the procurement bears on the enforceability of the patent and thus implicates the public’s interest in ensuring that the grant of patent rights is legitimate . . . Asserting that a third party owns a particular patent, however, is a different matter. In that case, the enforceability of the patent is not challenged; the only question is one of ownership . . . State law, not federal law, addresses such property ownership disputes.

CAFC: Specification and Prosecution History Triggers Vitiation

Ortho-McNeil v. Caraco (06-1102) January 19, 2007

The CAFC considered a district court's SJ finding of non-infringment where a claim term of "about 1:5" was interpreted as meaning "approximately 1:5, encompassing a range of ratios no greater than 1:3:6 to 1:7.1."

In reaching this conclusion, the district court relied upon both intrinsic and extrinsic expert testimony. The district court also considered evidence related to Ortho’s reissue application to the same patent, which was pending while proceedings involving the original patent were ongoing in the district court.

The claims of the reissue application were written in a more narrow form than the original claims, using the phrase "comprising an active ingredient that consists essentially of," instead of the broader "comprising" language of the original patent. More importantly, the court found that the distinct claiming of modified ratios throughout the claims indicated that a narrow range was intended:

The intrinsic evidence points to a meaning for the term "about 1:5" that is narrow because the 1:5 weight ratio, along with the 1:1 weight ratio, is distinctly claimed and distinguished from other broader weight ratio ranges in the patent. There are fifteen claims in the ’691 patent, all of which use the term "about" to modify the weight ratio or weight ratio ranges of tramadol to acetaminophen . . . There are two claims, claim 4 and disputed claim 6, that claim a single weight ratio; the other claims distinctly point out ranges of weight ratios . . . This leads to a conclusion that one of ordinary skill in the art would understand the inventors intended a range when they claimed one and something more precise when they did not.

Finding that Caraco’s ratio of 1:8.67 was outside the upper range of the claims 1:7.1 ratio, the CAFC found no literal infringement. On the doctrine of equivalents, the court found that the prosecution history barred Ortho from expanding the range since the argued ranges would vitiate other ranges contained in the claims (note: estoppel was not addressed in the opinion):

Also relevant is the prosecution history of the ’691 patent and the ’221 reissue patent, described above. Ortho admitted that it claimed more than it was entitled to claim in the ’691 patent when, in its reissue application, it cancelled the broader "comprising" claims, except for claim 6. In sum, having so distinctly claimed the "about 1:5" ratio, Ortho cannot now argue that the parameter is broad enough to encompass, through the doctrine of equivalents, ratios outside of the confidence intervals expressly identified in the patent. We agree with the district court that to do so would eviscerate the limitation. The intrinsic evidence in this case points to the criticality of the "about 1:5" parameter, which necessitates a narrow claim construction and range of equivalents that does not encompass Caraco’s product.

AFFIRMED