Back to
Patenting

Federal Circuit Case Law

<Headlines>
<ALL CASES>

 

Ventana Medical Systems, Inc. v. Biogenex Laboratories, Inc.

Decided December 29, 2006  pdf

Judge Prost with Judges Lourie and Dyk, Lourie dissenting

 

“[T]he doctrine of prosecution disclaimer generally does not apply when the claim term in the descendent patent uses different language.”


Ventana sued Biogenex at the U.S. District Court for the District of Arizona for allegedly infringing claims to a diagnostic test method for “dispensing” reagent onto microscope slides.  Judge Raner Collins construed the claim term “dispensing”  to mean “direct dispensing” directly “from the reagent container.”  Ventana stipulated to a judgment of non-infringement and appealed to the Federal Circuit for a more favorable claim interpretation that would cover Biogenex’s product.

 

The Federal Circuit construed the term “dispensing” more broadly and vacated the non-infringement judgment.  The Federal Circuit explained that prosecution history arguments about a similar term in an ancestor application “will generally not limit different claim language in a continuation application.”  Judge Lourie dissented with a view that “direct dispensing is the essence of the invention” and the claims should be limited to this essence as revealed in the specification.

 

This litigation was complicated by an extensive prosecution history of multiple continuation applications from a common specification that emphasized one specific mode of operation.  In the more restrictive claim construction world following the Philips decision, patent drafters should assist litigators of their patents by including alternative (broadening) descriptions for claim terms.

 

 

MIT et al. v. Abacus Software, et al.
Decided September 13, 2006

Judge Michel with Judges Friedman and Dyk, Michel dissenting

 

A claim term such as “circuit” that is “used in common parlance….to designate structure, even …a broad class of structures” is not a means plus function.

 

MIT sued many companies at the U.S. District Court for the Eastern District of Texas for allegedly infringing claims to “a system for reproducing a color original” using “aesthetic correction circuitry.”  Judge David Fosom accepted a magistrate’s interpretation of “correction circuitry” as a means plus function claim.  Both sides stipulated to a final judgment of non-infringement based on the court’s claim construction, for a rapid appeal of claim construction to the Federal Circuit.

 

The Federal Circuit reversed the claim construction and vacated the summary judgment because “technical dictionaries….plainly indicate that the term ‘circuit,’ connotes structure.”  The Federal Circuit held that this term “is clearly limited to hardware” and further noted that the specification references and examples did not use the term to mean software.  Judge Michel dissented with a view that “not every adjectival qualification … connotes sufficiently definite structure” and agreed with the district court’s more narrow interpretation as a means plus function claim. 

 

Patent claims in the engineering fields should exploit broad, structural terms such as “sensor” and “circuit” to denote a wide range of intended embodiments.

 

 

Amgen Inc. V. Hoechst Marion Roussel, Inc. and Transkaryotic Therapies, Inc.
Decided August 3, 2006  pdf
Judge Schall with Judges Michel and Clevenger, Judge Michel dissenting


A patent practitioner can broaden the meaning of a vague claim term by employing “non-limiting” words such as “included” in the specification.


This is a second appeal following a second Markman hearing and bench trial by Judge William Young at the U.S. District Court for the District of Massachusetts over alleged patent infringement by Hoechst’s (now Aventis) EPO preparation.  Hoechst appealed various issues to the Federal Circuit after a jury found infringement of 5 asserted patents.

 

In its previous remand, the Federal Circuit instructed the district court to construe the claim term “therapeutically effective amount” and to re-determine invalidation for some claims.  In this second appeal, the Federal Circuit, “[u]sing Philips as a guide” relied on broadening statements in the specification and file history to determine that the term does not require an amount that heals or cures disease, and thus reversed several holdings of the district court, for a second remand.

 

In a dissent Chief Judge Michel argued that the district court correctly construed the claim term from prior art, statements in the specification and the file history.  Judge Michel also lamented that the Federal Circuit affirmed infringement for claims for several patents for this 9 year old litigation “yet the end is nowhere in sight.”  Amgen’s patents may expire before the litigation is completed.

 

 

Ncube Corporation (Now C-COR Inc.) v. Seachange International, Inc.
Decided January 9, 2006

Judge Rader with Judges Friedman and Dyk

 

A specification with only one embodiment does not limit a broader claim interpretation when a dependent claim states that embodiment.

 

nCube sued Seachange at the U.S. District Court for the District of Delaware for infringing claims to a high bandwidth server that uses an “upstream manager” to accept information from different types of networks.  Judge Joseph Farnan Jr. construed this term to include use of logical addresses, as well as physical addresses, despite a limiting description in the specification of only logical addresses.  A jury relied on the broad definition and found infringement.  Seachange appealed to the Federal Circuit.

 

The Federal Circuit affirmed the broad claim construction and a literal infringement holding.  The Federal Circuit noted that a dependent claim recited the use of logical addresses and under the principle of claim differentiation the independent claim should be broader with respect to this recited term.  Judge Dyk dissented, with a view that the “key innovation” and “purpose” of the patent arises from “how…the data are ‘addressed’” and that only one address type was taught by the specification.

 

Claim differentiation sometimes can overcome a narrow patent specification to provide a broadening construction for a claim term.  A patent practitioner might add dependent claims that recite specific features listed in a specification during prosecution when relying on an unusually narrow specification during prosecution.

 

Conoco, Inc. v. Energy & Environmental International, L.C. et al.

Decided August 17, 2006
Judge Gajarsa with Judges Bryson and Archer


The term “’consisting of’ does not exclude additional components or steps that are unrelated to the invention.”

 

Conoco sued Energy at the U.S. District Court for the Southern District of Texas for allegedly infringing claims to a process for making pipeline drag reducing ingredients that combine “material selected from the group consisting of water and water-alcohol mixtures.”  Energy stipulated validity and enforceability of the claims, and argued non-infringement, but appealed after Judge John Rainey adopted an undesirable claim construction and found infringement.  

 

The Federal Circuit affirmed, with a claim construction that allowed other substances in the accused material, if not particularly related to the invention’s function.  The court noted that “[t]ransitional phrases, such as ‘comprising,’ ‘consisting of,’ and ‘consisting essentially of,’ are terms of art in patent law” and have meanings that are found in the PTO’s Manual of Patent Examination Practice (“MPEP”) section 2111.03. 

 

The Federal Circuit often cites the MPEP and seems to defer to written guidelines of the PTO.  Practitioners should review and perhaps even quote the MPEP as appropriate, when explaining claim terms during patent preparation and prosecution, to minimize claim construction surprise during litigation.

 

 

 

Lava Trading, Inc. v. Sonic Trading Management, LLC et al.
Decided April 19, 2006  pdf

Judge Rader with Judges Mayer and Linn, Mayer dissenting

 

Claims are to be interpreted “in the context of the entire patent, including the specification.”


This appeal came from the Southern District of New York, after Judge Thomas Griesa tersely construed a software claim that recites “distributing” and “displaying” a financial trade order as covering only a “whole combined order book.”  Lava had stipulated final judgment of non-infringement under this undesirable claim construction and the court certified that at least one claim was ready for appeal under Rule 54(b). 

 

The Federal Circuit, once again citing the Phillips claim construction case and referring to embodiments in the specification, construed the claims more broadly, set aside the district court’s claim construction and remanded.  The claims had employed simple English to describe a software invention but the specification included examples that poked outside the meaning arrived at by the district court.  Such good patent drafting of broad embodiments thus helped prevent narrow claim construction during litigation.

 

As seen here, the Federal Circuit can review district court claim construction at an early stage.  A dissenting Judge Mayer however, argued that the Federal Circuit should not have accepted this case, because of “the interrelatedness of the infringement claim and the unresolved unenforceability counterclaim.” 

 

Varco, L.P. v. Pason Systems USA Corp 
Decided February 1, 2006  pdf copy
Judge Rader with Judges Clevenger and Dyk


“References to a preferred embodiment, such as those often present in a specification, are not claim limitations.”
Varco sued Pason at the U.S. District Court for the District of Colorado for allegedly infringing claims to methods and apparatuses for automatically regulating the release of a drill string on a drilling rig.  Judge Richard Matsch construed claim language for automated release of a drill bit as limited to a two step manual process and held that Pason’s automated process does not infringe.  The court refused Varco’s request for a preliminary injunction and Varco appealed to the Federal Circuit.


The Federal Circuit affirmed because the district court improperly had relied on a specification statement that regulators “must” be manually calibrated before use, despite further description of automated features.  The court noted that the lower court decision was limited to literal infringement and that because “this case seems to present….improvements on prior innovations… the district court (on remand) may…consider infringement under the doctrine of equivalents.”

 

A practitioner should not make absolute statements in a specification such as that a particular procedure “must” be carried out.  During litigation a defendant may use such statement to limit the scope of the asserted claims, as happened here.

 

 

J. Ole Sorensen et al. v. International Trade Commission et al.
Decided October 31, 2005 pdf copy
Judge Rader with Judges Michel and Linn

Claim terms are defined primarily by the specification, and file history must "clearly and unambiguously express surrender of subject matter" to alter their meanings.

Ole charged Mercedes at the ITC for importing tail light lenses made with two colored plastics, in alleged violation of his US patent claims to a molding method that allows two different plastic materials in the mold. Because Ole qualified the claims by adding the term "different characteristics" during prosecution, the ITC, in its investigation under 19 USC 1337, found no infringement based on a narrow view that the molded materials must differ in some characteristic other than color. Ole appealed to the Federal Circuit.

The Federal Circuit vacated the decision because statements in the specification indicated that the two plastics may be merely "different." The court noted the primacy of the specification and that Ole’s comments during prosecution "in no way shows a clear and unambiguous disavowal of the broad scope of the claim."

The Federal Circuit appears to rely more heavily on the patent specification and less on file history for construing claims, in the wake of the en banc Philips claim construction case earlier this year. Because of this emphasis on the specification, a practitioner should prepare very detailed specifications for later assertion of broad claims during patent enforcement.
 

Free Motion Fitness, Inc. v Cybex International, Inc.; The Nautilus Group et al.
Decided September 16, 2005  pdf copy
Judge Dyk with Judges Rader and Prost

*       "’A’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open ended claims containing the transitional phrase ‘comprising.’"

Free sued Cybex at the U.S. District Court for the District of Utah for allegedly infringing claims for machines, which recite "a cable linking" and "a first end pivotally supported." Judge Bruce Jenkins granted Cybex summary judgment of non-infringement after construing "a cable" to mean only one. The court found non infringement because the accused devices had multiple cables. Free appealed to the Federal Circuit.

A Federal Circuit panel majority explained that the "convention" of "a" or "an" meaning "one or more" only is overcome when a specific number of elements are recited or "when the patentee evinces a clear intent to ..limit the article."

Judge Prost dissented and construed "a" to mean "one" because the specification discloses "’a single cable’ in each embodiment." A patent drafter should provide alternative broadening examples as much as possible because even a Federal Circuit appellate judge may not agree on the meaning of a simple word such as "a."

The Gillette Company v. Energizer Holdings, Inc.
Decided April 29, 2005   pdf copy
Judge Rader with Judges Michel and Archer, Archer dissenting

*              "'[F]irst, second, and third' are terms to distinguish different elements of the claim, not terms supplying a numerical limit."

Gillette sued Energizer at the U.S. District Court for the District of Massachusetts for allegedly infringing claims to a multiple blade razor, which recite "a group of first, second, and third blades" arranged a certain way. Judge Patti Saris denied Gillette's request for a preliminary injunction against Energizer's four blade razor after interpreting the claims as limited to a three blade razor. Gillette appealed.

The Federal Circuit found that the district court erroneously construed the terms "first, "second," and "third" as numerical limitations. The court emphasized that the claims include "the 'open' claim terms 'comprising' and 'group of',…..to encompass subject matter beyond a razor with only three blades." Regarding the phrase "group of," the majority opinion explained that "to 'close' a Markush group, the PTO insists on the transition phrase 'group consisting of." Thus, "without the word 'consisting' the simple phrase 'group of' is presumptively open.'" Judge Archer dissented with a view that the patentee used these terms "in a manner other than their ordinary meaning'"

Broad claims are a major focus of patent prosecution. This case teaches that the term "group," by itself, can have a broad meaning similar to that of "comprising."

 

Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc.
Decided August 11, 2004  pdf copy
Judge Clevenger with Judges Rader and Linn

*        "In the absence of modifiers, general descriptive terms are typically construed as having their full meaning."

Innova sued Safari at the U.S. District Court for the Middle District of Florida for alleged infringement of patent claims to an in-bottle water filter having a filter tube "operatively connected" to the cap. Judge Steven Merryday construed the term "operably connected" to require that the filter be affixed "to the cap by some tenacious means of physical engagement" and granted summary judgment of non infringement because the accused device is reversibly attached by screwing. Innova appealed to the Federal Circuit.

The Federal Circuit held that the district court erroneously construed the term and reversed. The Federal Circuit noted that "[n]either party asserts that the term "operably connected" is a technical term having a special meaning" and that the intrinsic evidence provides no evidence of "any clear and unmistakable disavowal" of claim scope. Thus, the broad common meaning of this term rules.

The Federal Circuit considered the patent abstract when interpreting the claims, noting that the abstract "reflects the applicant's attempt to disclose the broad array of means" for connecting the filter. It seems that broad, sweeping statements in an abstract can help maintain broad claim meaning during litigation.

 

Home Diagnostics, Inc. v. Lifescan, Inc.
Decided August 31, 2004  pdf copy
Judge Rader with Judges Dyk and Prost

*       Prior art cited by a patentee that "sheds light on the meaning of a term …may indicate not only the meaning of the term…but also that the patentee intended to adopt that construction."

Home sued Lifescan at the U.S. District Court for the Northern District of California for declaratory judgment that Home's glucose meter does not infringe Lifescan's patent. Lifescan counterclaimed for infringement. Judge James Ware construed the claim term "upon detection of a suitably stable endpoint" to mean "predetermined time period," and held no-infringement by Home's devices, which use variable time periods. Lifescan appealed.

The Federal Circuit reversed, because the district court erroneously had limited the claims to embodiments in the specification and "[a]bsent a clear disavowel or contrary definition in the specification or the prosecution history, the patentee is entitled to the full scope of its claim coverage." The Federal Circuit also noted that "the prior art identified … gives additional reasons" for an expanded claim meaning."

The Federal Circuit explained that prior art cited by a patentee "can have particular value as a guide to the proper construction of the term." Patent drafters should be careful of how others use important claim terms that are not defined expressly, and litigators should consider art cited in a patent as fertile ground to construe claims.

 

Playtex Products, Inc. v. Proctor & Gamble Company
Decided March 7, 2004  
Judge Gajarsa with Judges Lourie and Linn

*      "Words of approximation, such as 'generally' and 'substantially,' are descriptive terms commonly used in patent claims to avoid a strict numerical boundary."

The U.S. District Court for the Southern District of Ohio granted P&G summary judgment of no infringement of Playtex's tampon inserter claims that recite "two ….opposed, substantially flattened surfaces." Judge Thomas Rose construed "substantially flattened" as flattened enough to fall within a manufacturing tolerance, based on extrinsic evidence from Playtex's expert, after deciding that the patentee's preferred embodiment did not fall within a more common definition based only on intrinsic evidence. No infringement was found because the accused devices did not "fall within a manufacturing tolerance for flatness." Playtex appealed to the Federal Circuit.

The Federal Circuit reversed because "the district court found ambiguity where there is none" and "erred in going beyond the intrinsic evidence" to construe the term "substantially flattened." Instead, the intrinsic evidence simply shows that such surfaces are "material flatter than" other parts of the device.

Patent practitioners often use terms of approximation such as "substantially" to describe an invention. If the practitioner desires claims that are easily construed in court, further description should be provided, by way of explicit definition or examples.