Back to Patenting Federal Circuit Case Law   

 

Anderson Corporation v. Fiber Composites, LLC
Decided January 26, 2007 pdf
Judge Bryson with Judges Prost and Saris

"[C]haracterizations directed to the invention as a whole (in the specification) may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess."

Anderson sued Fiber at the U.S. District Court for the District of Minnesota for allegedly infringing claims to "composite composition" for deck railings and claims to materials made from compositions. Judge Joan Ericksen construed "composite composition" narrowly because of process steps "that the specification identifies as critical" to the composites and found no infringement for those narrow claims. The court found infringement of the broader material claims. Both sides appealed various issues.

The Federal Circuit affirmed the non-infringement holding, noting that limitations are read into claims particularly where "the prosecution history….definitely resolves the question with a clear disavowal and confirms" a narrow interpretation of broadly written claims. Following this principle, the Federal Circuit construed the claims to materials more narrowly than the district court did, and reversed summary judgment of non-infringement.

The patentee’s characterization of the gist of the invention in this case may have been fatal to the later litigation, which was dominated by claim construction.

 

Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Inc.
Decided November 15, 2006  pdf
Judge Lourie with Judges Plager and Rader

 “[T]he specification …[u]usually …is the single best guide to the meaning of a disputed claim.”

Abraxis obtained a patent claiming a more stable formulation of the anaesthetic Diprivan ™ as a salt with “edentate.”  Abraxis sued Mayne at the U.S. District Court for the Southern District of New York for infringement after Mayne filed an Abbreviated New Drug Application at the Food and Drug Administration for the same drug but made as a calcium salt that is similar to “edentate.”  Judge William Pauley interpreted the claim term “edentate” broadly to include “compounds structurally related,” such as the calcium complex used by Mayne, and found literal infringement and infringement under the doctrine of equivalents.  Mayne appealed to the Federal Circuit.

 The Federal Circuit interpreted the term “edentate” narrowly, based on the specification disclosure that “listed several derivatives of EDTA” of which “none are structural analogs.”  (EDTA is a common metal binding compound found in shampoo etc.).  From this definition, the Federal Circuit reversed literal infringement but maintained infringement under the doctrine of equivalents because Mayne’s calcium salt had similar structure and effect.

 When defining a new claim term such as “edentate,” a practitioner should include a wide variety of examples, because a court might not travel outside the specification to determine the term’s meaning.  Interestingly, the doctrine of equivalents saved the day for the patentee, who proved equivalence with the accused product.  In this regard, Abraxis elicited helpful testimony from Mayne’s formulator, who “noted that” Mayne’s accused product is “is structurally similar to edentate, product stability is predicted to be unaffected.”

Mymail, Ltd. v. America Online, Inc. et al.
Decided February 20, 2007  pdf
Judge Bryson with Judges Newman and Schall

In the claims, a “coined term, without a meaning apart from the patent” requires interpretation from the specification.


“[F]raud relating to patent ownership” cannot “be raised as a defense in federal court.”

Mymail sued AOL at the U.S. District Court for the Eastern District of Texas over method claims for providing internet access when away from home.  The claims recite registering into a “network service provider” that contacts another “access” provider, which in turn provides login info for a more convenient provider of services.  Judge Leonard Davis construed “network” service provider as “authenticating users by checking ID and password,” but found no infringement because the accused did not carry out this authentication.  Mymail appealed to the Federal Circuit.  Some defendants cross-appealed, arguing that Mymail did not have correct title to the patent and lacks standing.

The Federal Circuit affirmed non-infringement after reviewing the specification and noting that the term “network service provider” was new, and properly construed from the specification.  The court also affirmed that the defendants could not raise fraud issues over ownership in federal court because ownership is a state law issue.

New technical terms made from simple words often are found software patents.  These terms must be supported by broad definitions and examples in the specification.

Cook Biotech Incorporated et al. v. Acell Incorporated et al.

Decided August 18, 2006
Judge Prost with Judges Newman and Lourie


Incorporation by reference of another document in a patent specification permits use of that document for claim construction.

 

Cook sued Acell at the U.S. District Court for the Northern District of Indiana for alledgedly infringing claims to a tissue graft composition that includes “the luminal portion of the tunica mucosa” of bladder.  A jury found literal infringement of claims as interpreted by Judge Allen Sharp and both sides appealed various issues to the CAFC.

 

The Federal Circuit construed the claims more narrowly, citing a definition from a third party patent that Cook had incorporated by reference, as a “similar...procedure for preparing intestinal submucosa.”   The Federal Circuit explained that statements in the incorporated reference are “intrinsic evidence” and fair game for determining “patentee’s definition of the claim term.”

 

Practitioners in the biotech field often specifically incorporate by reference other patents, partly to enable how to make and use a claimed invention.  However, such voluminous, uncontrolled and unedited statements by others via reference in a patent specification provide a rich source of material for destroying a patent or flipping a patentee’s case on its head, as occurred here. 

 

 

Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc.

Decided May 11, 2006  pdf

Judge Newman with Judges Dyk and Prost, Newman separately concurs

 

A specification that characterizes a “very important feature” to achieve an aim of the invention may limit the claims to that feature.


Inpro sued T-Mobile at the U.S. District Court for the District of Delaware for alleged infringement of claims to a credit card sized PDA that has a “host interface.”  Judge Gregory Sleet construed “host interface” narrowly to mean “a direct parallel bus interface” based on statements in the specification that exalted the use of this particular type of host interface to overcome a “big drawback” of prior designs.  From this construction and others, Inpro stipulated that it could not prove infringement, the court entered final judgment of invalidity, and Inpro appealed.

 

The Federal Circuit affirmed, despite Incyte’s doctrine of claim differentiation argument based on recitation of “parallel bus interface” in narrower, dependent claims.   The Federal Circuit explained that a specification, which describes a lone embodiment that overcomes a specific problem in the prior art, can overcome claim differentiation, which otherwise can broaden an independent claim.   Judge Newman wrote a second concurring opinion, which complained that other claim construction issues should have been included in the interests of economy. 

 

A practitioner should not over-characterize a prior art problem versus an inventive solution.  A court may interpret such description as teaching the gist of an invention, and rely on this comparison to narrow the claims.

 

 

 

Honeywell International, Inc. v. ITT Industries, Inc. et al.
Decided June 22, 2006
Judge Lourie with Judges Mayer and Dyk

 

Repeated identification within a patent specification to “the invention,” rather than to merely preferred embodiments can narrow claim scope.

 

Honeywell sued ITT at the U.S. District Court for the Eastern District of Michigan for alleged infringement of claims to a “fuel injector component” made from plastic impregnated with electrically conductive particles to prevent electrostatic breakdown.  Judge Avern Cohn granted ITT summary judgment of non-infringement for its connector part after construing the claim term “fuel injector component” as limited to fuel filters, due to statements in the specification that refer to “fuel filter as “the present invention.” 

 

The Federal Circuit affirmed, noting that “[t]he public is entitled to take the patentee at his word and the word was that the invention is a fuel filter.”

Patent specifications sometimes are relied on heavily for interpreting claims. 

 

A patent drafter should be careful when stating in the specification that a structure or method is “the invention,” because a court might believe him and limit the claims accordingly.

 

Old Town Canoe Company v. Confluence Holdings Corp.

Decided May 9, 2006  pdf
Judge Linn with Judges Mayer and Schall, Judge Mayer dissenting

 

*           A patent applicant may not be “entitled to a claim construction divorced from the context of the written description and prosecution history.”

 

Old sued Confluence at the U.S. District Court for the District of Oregon for allegedly infringing claims to methods of making molded canoes via opening the mold “after coalescence” of melted particles “is completed.”  Judge Donald Ashmanskas granted summary judgment of no infringement after 5 days of trial because “completion” of coalescence of particles in the process required that no bubbles remain, whereas the accused process leaves bubbles. 

 

Old appealed to the Federal Circuit, arguing that the district court “wrongfully imposed” a narrow claim construction based on the specification, but the Federal Circuit affirmed no infringement, commenting that “Old Town is not entitled to a claim construction divorced from the context of the written description and prosecution history.”  The Federal Circuit also noted expert evidence and vacated the district court’s grant of judgment as a matter of law of no invalidity, enablement, and no best mode violation.  Judge Mayer agreed with the non-infringement holding but dissented to argue that such non-infringement mooted the remaining issues.

 

Old lost its infringement case because Old’s patent specification statements narrowed the claims by extolling the virtues of “complete” finishing of a claimed industrial process.  On remand, Old now has to defend charges of violating best mode, because the inventor gave the attorney a document that described process details, which were not written into the specification.

 

Network Commerce, Inc. and CRS, LLC v. Microsoft Corporation
Decided September 8, 2005  pdf copy
Judge Dyk with Judges Mayer and Friedman

* A claim term that "does not have a specialized meaning in the relevant art" and that has no "widely accepted meaning" may be defined strictly by a specification.

Network sued Microsoft at the U.S. District Court for the Western District of Washington for alleged infringement of computer electronic commerce claims that recite the term "download component" for use in coordinating data. Judge Marsha Pechman construed the term narrowly and granted Microsoft summary judgment of non-infringement. Network appealed.

The Federal Circuit affirmed, noting that the disputed term had been added during prosecution and only a terse reference to a related term "download file" appeared in the specification. The court found that the disputed term had no widely accepted meaning and no specialized meaning. The court then followed its dictum that a court should "rely heavily on the written description for guidance" for claim meaning, and derived a narrow description from the specification for interpretation.

If a desired claim term has no generally accepted meaning and no specialized meaning, a patent drafter should provide a definition in the specification or risk having a court construe the term narrowly based on whatever might be gleaned from the specification. The Federal Circuit in this case rejected Networks' desire to use dictionary definitions of "download" and "file," rendering unpleasant results to this patentee.

 

Seachange International, Inc., v. C-Cor Inc.
Decided June 29, 2005  pdf copy
Judge Linn with Judges Bryson and Gajarsa

* "Explicit arguments made during prosecution to overcome prior art can lead to narrow claim interpretations."

Seachange sued C-Cor at the U.S. District Court for the District of Delaware for allegedly infringing claims for electronic data storage between interconnected "systems through a network for data communications." Judge Joseph Farnam, Jr. construed "network for data communications" to include both direct and indirect communication. A second, almost identical claim further recited point to point connection, prompting the broader meaning of the earlier claim due to the doctrine of claim differentiation. C-COR stipulated to infringement, lost a subsequent jury trial and appealed to the Federal Circuit.

The Federal Circuit construed "data communications" to mean only direct communication despite the existence of a narrower claim that recited this limitation. Prosecution history arguments had relied on point to point communication in several respects, trumping the doctrine of claim differentiation. The court also explained that such clarifying statements "may lead to a disavowel of claim scope even if the Examiner did not rely on the argument."

Most interestingly, a third party filed a "protest petition" (arguments and prior art) against Seachange’s application after the examiner issued a notice of allowance. The examiner asked Seachange to respond even though substantive examination otherwise was over. File histories are available on line (www.uspto.gov/external/portal/pair) and updated quickly, allowing competitors to see correspondence. The PTO responded favorably to a third party submission during this ex parte process.

 

Boss Control, Inc. et al. v. Bombardier Inc. et al.
Decided June 8, 2005  pd copy
Judge Prost with Judges Schall and Gajarsa

* "In fact, the specification is the single best guide to the meaning of a disputed term."

Boss sued Bombardier at the U.S. District Court for the Southern District of Texas for allegedly infringing patent claims to a power interruption system used in snowmobiles and watercraft that senses unauthorized use. Judge Kenneth Hoyt granted Bombardier summary judgment of non-infringement, after construing "operative to interrupt power" to mean sensing a power load threshold, which the accused devices lack. Both sides appealed various issues.

This case centered on construing simple words used to describe an innovative circuit that outputs a response based on the amount of sensed electrical current. The Federal Circuit agreed with the district court's interpretation from statements in the specification that compared the invention with prior art devices that do not sense a power threshold. The Federal Circuit found that "[i]n this case the specification …clearly gives the term 'interrupt' a special definition" narrower than a definition and thus "the intrinsic evidence binds Boss to a narrower definition of 'interrupt' than the extrinsic evidence might support."

U.S. patent practitioners avoid teaching a "gist" of the invention to discourage a court from construing a claim narrowly. However, as seen in this case, simple claim words that require explanation can prompt a court to study the specification to figure out a theory of what was invented. To prevent such unintended consequences, a practitioner should make sure that the claim terms are clear enough on their face, or provide specific explanation in the specification as a guide.

 

ASM America, Inc. et al. v. Genus, Inc.
Decided March 16, 2005  pdf copy
Judge Bryson with Judges Newman and Friedman

*   "When a patentee defines a term in the specification, that definition ordinarily controls."

ASM sued Genus at the U.S. District Court for the Northern District of California for allegedly infringing claims to a process for sequential layer deposition on semiconductors, using an "evacuating step." Judge Elizabeth Laporte, noting the frequent use of "vacuum pump" and "evacuation" in the patent specification and file history, granted summary judgment of noninfringement because the accused process lacked an evacuating step. Genus appealed to the Federal Circuit.

The Federal Circuit affirmed for the same reasons given by the district court in a decision dominated by claim construction arguments. In addition to the intrinsic evidence regarding the need to evacuate with a partial vacuum to carry out the claimed invention, the court also noted that when "considering purchasing" the patent, ASM's "own Chief Technology Officer stated that the claims…were limited" to evacuation processes. Furthermore, the inventor in his notebook had stated that "an essential requirement of this new process is that it be done in a vacuum chamber."

Statements about limitations of a new invention by an inventor and by a technology manager can haunt a party that later asserts a patent during litigation. Defendants in such litigation should look for these admissions during discovery.

 

Medrad, Inc. v. MRI Devices Corporation
Decided March 16, 2005  pdf copy
Judge Bryson with Judges Rader and Friedman

*      "The manner in which (a) term is used in the patent" dictates a different definition from "the same term in a different patent with a different specification."

Medrad sued MRI at the U.S. District Court for the Western District of Pennsylvania for allegedly infringing claims to an MRI system that coordinates overlapping coils to maintain a "substantially uniform" magnetic field. Judge Terrence McVerry granted partial summary judgment of invalidity based on prior art that also produced an arguably uniform field with overlapping coils. Medrad appealed to the Federal Circuit, which affirmed.

Claim construction dominated this case. The main issue was whether the definition for "substantially uniform" was broad enough to cover the prior art. One debate concerned whether the Federal Circuit's construction of "substantially uniform" in another case involving a solid detergent shape should inform interpretation of the term in this case. The Federal Circuit specifically declined to follow its earlier definition because "[t]he use of a term in a patent on a detergent is of little pertinence to the use of a similar term in a patent on MRI RF coils." The Federal Circuit explained that it is "entirely proper to consider the functions of an invention in seeking to determine the meaning of particular claim language."

Although simple English words often are used to claim an invention, the purpose and proper functioning of the invention may be relied on to put a gloss on their construed meanings.

 

V-Formation, Inc., v. Benetton Group SPA, et al.
Decided March 15, 2005  pdf copy
Judge Rader with Judges Mayer and Prost

*       A listed prior art reference is intrinsic evidence for claim construction because it shows claim "usage in context as understood by one of skill in the art at the time of invention."

V-Formation sued Benetton at the U.S. District Court for the Southern District of New York for allegedly infringing claims to a roller skate having "fasteners for releasably attaching" sidewalls. Judge Harold Baer Jr. granted Benetton summary judgment of non-infringement because Benetton's accused skates used a rivet instead of a releasable attachment. V-Formation appealed to the Federal Circuit.

The Federal Circuit affirmed, based on a review of the "intrinsic record" as "the primary tool to supply the context for interpretation of disputed claim terms." Within the intrinsic evidence was a statement in a publication submitted in an information disclosure statement. This cited document stated (referring to a prior art skate) that "[i]n alternative embodiments, a more permanent fastener such as a rivet could also be used." The Federal Circuit approved this use of cited art, noting that "when prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper construction of the term."

The use of cited prior art for claim construction could become very powerful in litigation because patentees, particularly in fields such as biotechnology, often cite many patents and other documents, in an effort to sweep such publications into the record. However, as seen here, such references contain numerous statements that are intrinsic evidence, possibly on equal footing with the patent specification itself, to interpret patent claims.

 

Alza Corporation and Janssen Pharmaceutica, Inc. v. Mylan Laboratories et. al.
Decided December 10, 2004  pdf copy
Judge Archer with Judges Newman and Dyk, Dyk dissenting in part

*            Claim terms may be construed from statements made during prosecution.

Alza sued Mylan at the U.S. District Court for the District of Vermont for allegedly infringing patent claims to the transdermal (passing through the skin) administration of a form of fentanyl, a narcotic. During trial, Judge William Sessions III further construed the claim term "skin permeable form" to exclude the citric acid salt of fentanyl, based on statements made during patent application prosecution to avoid prior art. Under this definition, which replaced a narrower pH limitation, the court found infringement and Mylan appealed to the Federal Circuit.

The Federal Circuit agreed with the district court's claim construction and affirmed the holdings. The Federal Circuit pointed out that both sides confusingly argued claim construction under the old pre-trial definition, which the Federal Circuit did not adopt. Judge Dyk wrote separately to disagree with a finding of no inequitable conduct because a declaration filed by the inventor during reexamination was knowingly misleading.

Claim construction often is crucial to infringement and invalidity determinations. In this case, the parties agreed on the definition of a critical claim term, but "at trial the district court determined that this definition was not sufficiently precise to answer the questions relevant to the litigation" and subsequently modified the definition from a review of the intrinsic evidence.

A practitioner should remember that claim meaning can be altered during trial as well as after trial in an appeal. The practitioner can provide clear and unambiguous statements to illuminate intended claim meaning in the specification and during prosecution to minimize such unexpected tilting of the patent claim landscape by a court.

 

C.R. Bard, Inc. and Davol Inc. v. United States Surgical Corp.
Decided October 29, 2004  pdf copy
Judge Michel with Judges Newman and Prost

*           A statement in a patent specification that describes the invention as a whole, rather than just an embodiment can limit claim scope.

Bard sued Surgical at the U.S. District Court for the District of Delaware for allegedly infringing claims to a mesh surgical plug that is "conformable" for repairing hernias. Judge Kent Jordan construed this term to mean having "pre-formed pleats" and granted summary judgment of non-infringement because the accused plugs lacked a pleated structure. Bard appealed to the Federal Circuit.

A theme of this case was how a court can balance the use of customary meaning, dictionaries, specification statements and file history statements for interpreting common meaning claim terms. The panel pointed out that the Federal Circuit will resolve this issue in an en banc rehearing of the Phillips v. AWH Corp. and that the intrinsic evidence for the present case provided ample support for reading the structural limitation of "pre-formed pleats" into the "conformable" plug claim. In particular, the Federal Circuit noted that the patent specification states that "[t]he implant includes a pleated surface."

This decision emphasized a holistic approach to claim construction and the primacy of statements by the patent applicant in the specification and during prosecution, over the use of dictionaries to construe claim terms, particularly for well known terms. The patent drafter had stated that "the invention" included pleats. A practitioner should not overly characterize "the" invention in a specification, as was done here.

 

On-Line Technologies, Inc. v. Bodenseewerk Perkin-Elmer GMBH et al.
Decided October 13, 2004  pdf copy
Judge Bryson with Judges Michel and Archer

*             An ambiguous claim term may be interpreted from statements in the specification.

On-line sued Boden at the U.S. District Court for the District of Connecticut, for allegedly infringing patent claims to an optical cell having "substantially spherical …surfaces." Judge Janet Arterton granted summary judgment of noninfringement because Boden's cell used "toroidal" surfaces and On-line's patent specification described the claimed mirrors as merely "approaching toroidal." On-line appealed to the Federal Circuit.

The Federal Circuit noted that the contested claim term "has no precise and generally understood meaning (and therefore) we look to the intrinsic evidence, in this case the specification, for guidance." The specification referred to toroidal surfaces in a preferred embodiment and a contrary statement "approaching toroidal" merely was an acknowledgement that "it is impossible" to make a perfectly toroidal surface. The Federal Circuit concluded that the district court was mislead by extrinsic evidence and reversed, based on the new construction.

Claim construction often dominates litigation and can provide surprising reversals at the appeals stage, particularly when claims are drafted poorly. The Federal Circuit complained that "[b]ecause of the lack of precision in the language used to define (the invention), this case was made more difficult than it needed to be."

 

Milton D. Goldenberg and Immunomedics, Inc., v. Cytogen, Inc. and C.R. Bard, Inc.
Decided June 23, 2004  pdf copy
Judge Gajarsa with Judges Schall and Prost, Judge Prost dissenting in part

*               A claim term that "has no accepted meaning to one of ordinary skill in the art" is construed "only as broadly as is provided for by the patent itself."

Goldenberg sued Cytogen at the U.S. District Court for the District of New Jersey for allegedly infringing patent claims to a tumor detection method using antibodies that bind to a "marker substance" from tumor cells. Judge Anne Thompson granted Cytogen summary judgment of noninfringement because Cytogen's antibody binds the inside portion of a protein that exists both inside and outside a cell at the same time. Goldenberg appealed.

The Federal Circuit affirmed the claim construction because Goldenberg had emphasized during prosecution that the marker substance was from "inside" the tumor cell. Unfortunately, the term, "intracellular marker substance," was "unknown to those of ordinary skill in the art at the time the patent application was filed," yet was not clearly defined in the specification. The Federal Circuit pointed out that "[i]t thus fell to the applicants, as a duty, to provide a precise definition…" The Federal Circuit also reversed summary judgment of infringement under the doctrine of equivalents because Goldenberg's expert testified that Cytogen’s transmembrane proteins are a "grey category" of protein that might be equivalent. Judge Prost dissented with a view that Goldenberg's new claim term should be interpreted more broadly.

Without a precise definition, ambiguity of a new claim term seemed to work against the patentee. Claim terms that consist of a) common words having multiple common meanings, or b) unfamiliar language should be defined clearly in a specification to avoid a literary adventure during litigation.

Narrow definition based on the accused device: "the court’s awareness of the accused device is permissible. See Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1326-27 (Fed. Cir. 2006) ("While a trial court should certainly not prejudge the ultimate infringement analysis by construing claims with an aim to include or exclude an accused product or process, knowledge of that product or process provides meaningful context for the first step of the infringement analysis, claim construction."); Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991) ("Of course the particular accused product (or process) is kept in mind, for it is efficient to focus on the construction of only the disputed elements or limitations of the claims."). " frp,

 

The case summaries and other information here represent the contemporary, private views of Marvin Motsenbocker and are intended to be informative only and not to give legal advice or opinions. Any views expressed or implied are subject to change and are not necessarily those of any law firm, its attorneys or clients.