As the late Judge Rich famously wrote in 1990, “the name of the game is the claim.” Extent of Protection and Interpretation of Claims—American Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499. That is, a beautifully-written Detailed Description section of a patent’s specification is pointless if the patent’s claims are drafted in a manner that renders their infringement remote or even near impossible! Okay, so why is this important? Well, let’s start with one of the Patent Bar’s best-kept secrets: not all of us, despite having earned our USPTO registration numbers, are truly gifted at drafting claims! With that said, we have taken a keen interest in studying the specific issue of how practitioners employ the conjunctions “and” and “or” in patent claims.
For those of us of a certain age, we can probably remember the School House Rock series of musically-animated, educational short films produced by the American Broadcasting Company from 1973 to 1985. One of the more well-known titles of the series, “Conjunction Junction: What’s Your Function,” sought to teach grade school children how to use conjunctions to connect words, phrases and clauses. (For older readers seeking some nostalgia, or younger readers wondering what we are talking about, the three-and-a-half minute film can be found here.) Fast forward a decade or two, now that we are registered patent attorneys, is a refresher course in order? More specifically, when writing patent claims, have we mastered when to use the conjunctions “and” and “or”? Have we even recognized the difference in the two?
The en banc Federal Circuit on September 13, 2013, heard oral argument on whether to overrule its en banc decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998), and hold that claim construction can involve issues of fact reviewable for clear error, and that it is not entirely an issue of law subject only to de novo review. Lighting Ballast Control LLC v. Universal Lighting Technologies, Inc., Fed. Cir., No. 2012-1014, 3/15/2013.
Lighting Ballast Control LLC (LBC) owns a patent (5,436,529) on control and protection circuits for electronic lighting ballasts commonly used in fluorescent lighting. The patent includes the term “voltage source means” in the following context: “voltage source means providing a constant or variable magnitude DC voltage between the DC input terminals.” LBC sued Universal Lighting Technologies, Inc. (ULT).
District Court Decision
On appeal is the district court decision that a person of ordinary skill in the art would understand the claim term “voltage source means” to correspond to a rectifier or other voltage supply device. It thus rejected ULT’s argument that the term invokes Section 112 ¶6 and that the claim is invalid for indefiniteness for lack of specific structure in the specification. A Federal Circuit panel reversed in a nonprecedential decision, concluding from a de novo review that “voltage source means” does invoke Section 112 ¶6 and that the claim is invalid for indefiniteness. That panel decision was vacated when the appellate court decided to consider the claim construction issue en banc.
Back in January, Scott Daniels pondered the question of whether patent applicants and patentees have a chance of success when appealing Patent Office rejections to the Court of Appeals for the Federal Circuit. The sad and candid truth is “not much of a chance.” As Scott pointed out, where the Federal Circuit is reviewing a validity decision from the district courts, the Federal Circuit reviews the claim construction de novo. The Federal Circuit also chooses not the most likely meaning, but the broadest reasonable meaning for disputed claim language. That is, the claim construction most likely to invalidate the claim in question. Now, we ask whether the same fate is likely to befall claims that are being asserted in a patent infringement action. Asked differently, does the Federal Circuit choose the claim construction most likely to lead to a conclusion of no infringement? Saffran v. Johnson & Johnson seems to suggest that the answer is sadly, yes.
Dr. Bruce Saffran (“Saffran”) is the owner and sole inventor of U.S. Patent No. 5,653,760 (the “’760 patent”). The ’760 patent describes an apparatus for spurring the repair of bone fractures by containing tissue fragments and tissue growth-promoting macromolecules within the fracture site. A single-layered sheet, which is selectively impermeable to the macromolecules and the tissue fragments, is affixed to the injured bone tissues. The selective barrier properties of the sheet prevent macromolecules from leaking out into neighboring tissues, thus concentrating the macromolecules at the fracture site.
In addition, drugs facilitating tissue regeneration can be bonded via hydrolysable chemical bonds to the inner surface of the single-layered sheet. This inner surface faces the injured tissues. Water molecules present at the fracture site causes lysing of the chemical bonds, which in turn releases and delivers the drugs into the fracture site. Bond lysis occurs at a constant rate, which enables the steady and controlled release of the drugs.
A critical look ahead at the en banc rehearing of Lighting Ballast Control LLC v. Philips Electronics N. Am. Corp. through the exemplary lens of a recent jury verdict in Syntrix Biosystems, Inc. v. Illumina Inc.
Patent litigants have long expected an appeal to follow nearly every jury verdict and that a key question (if not the key question) on appeal will be the district court’s construction of one or more disputed claim terms. Syntrix’s recent infringement verdict against Illumina[iii] would be seen as no exception if not for what happened the very next day — the Federal Circuit’s decision to rehear en banc the panel’s decision in Lighting Ballast Control LLC v. Philips Electronics N. Am. Corp.[iv] to consider whether to reset the standard of review for claim construction, long recognized as a question of law reviewed de novo on appeal.
First, some background on Syntrix’s suit against Illumina. Illumina sells BeadArray technology that includes BeadChips used for a broad range of DNA and RNA analysis applications by self-assembling microscopic beads into microwells on a substrate slide. The beads are covered with specific oligonucleotides that act as a capture sequence in one of Illumina’s assays. Two days before closing arguments, Illumina asked the district court to find, as a matter of law, that Illumina’s BeadChips could not infringe the Syntrix patent, US Patent No. 6,951,682. The district declined this request and the case went to the jury. The jury found that the claims were infringed, not invalid, and applied a 6% reasonable royalty against BeadChip sales of approximately $1.58 billion over the relevant period, awarding Syntrix $96 million in damages.
What a coincidence that the disputed patent in Harris Corp. v. Fed Ex Corp., decided by the CAFC last month, involved a plane’s black box technology! Of course, both the majority and the dissent of this Federal Circuit panel scrupulously follow the interpretative roadmap of Phillips v. AWH, 415 F.3d 1303 (Fed. Cir. 2005) (en banc), but ultimately, neither the majority’s “entirely reasonable” explanation nor the minority’s views on “natural” and “intuitive” interpretation provide a convincing analysis. We are left with the definite impression that the appellate judges, while giving lip service to Phillips, kept the real determinants of their thought process hidden inside the proverbial black box.
Over a dissent by Judge Wallach, Judges Clevenger and Lourie strictly interpreted the “antecedent basis” in the claims, resulting in a reversal of the trial judge’s claim interpretation, and a remand for him to reconsider his patent infringement judgment.
Harris’s patents cover methods and systems for using spread spectrum radio signals to send flight data from a plane’s “black box” to an airport receiver at the end of the flight. The invention includes steps of generating, accumulating and storing flight data in the plane during the flight, followed by a step of “transmitting the accumulated, stored generated aircraft data” once at the airport.
There are some that will tell you that the use of the term “invention” or “present invention” in the specification will limit the claims. This misguided belief suggests that merely using the word “invention” or the phrase “present invention” in the specification creates a problem for the claims. I have heard this numerous times over the years. Every time I hear this it is like fingers on a chalkboard.
The way the objection to the term “invention” or phrase “present invention” manifests itself is in a matter-of-fact manner. I am told: “You cannot use the term ‘invention’ in the specification because it is limiting.” As if not using the term “invention” or phrase “present invention” saves the drafter from the problem of to narrowly describing the invention in the specification. If only inadequacy of disclosure were so simple to solve!
The reality is that there is nothing wrong with using the term “invention” or the phrase “present invention.” Moreover, the belief that avoiding those terms inoculates a disclosure from insufficiency issues is an extraordinarily simplistic view of what the law really says. Those that believe this are missing for the trees, and may be unwittingly making the very mistake that they are so desperately trying to ovoid through the excising of specific terms from their vocabulary.
Since at least the 1930s, courts have construed patent claims under examination according to their “broadest reasonable interpretation” (BRI). In 1932, the Court of Customs and Patent Appeals, which preceded the Federal Circuit, provided a rationale for BRI rule as follows:
After a patent has issued, and it no longer is possible for the patentee to control the phraseology of his claims, the courts will so interpret them, if possible, as to protect him; but there is no reason as we many times have observed, why an applicant in the Patent Office should not draw his claims to cover his actual invention only. For this reason we have uniformly ruled that claims will be given the broadest interpretation of which they reasonably are susceptible. This rule is a reasonable one, and tends not only to protect the real invention, but to prevent needless litigation after the patent has issued.
In the intervening eighty years, the CCPA and then the Federal Circuit repeatedly and vigorously upheld the BRI rule. The Federal Circuit upheld the BRI rule after a challenge based on Markman, a major Supreme Court decision on claim construction.The Federal Circuit now applies the ruleto all Patent Office proceedings (except those involving expired patents), including examination of applications, interference proceedings, reissue applications, and reexamination proceedings. The Patent Office cites a desire for a unitary standard as justifying application of the BRI rule to issued patents in postgrant review, where application of the rule is more controversial.
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