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.
Summary:
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.[2]
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.[3]The Federal Circuit now applies the ruleto all Patent Office proceedings (except those involving expired patents), including examination of applications, interference proceedings,[4] reissue applications,[5] and reexamination proceedings.[6] 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.[7]
On December 2, 2011 the district court in the Apple v. Samsung patent litigation issued a 65 page ruling [ii] denying Apple’s motion to preliminarily enjoin the U.S. sales of several Samsung products, [iii] based upon such products’ alleged infringement of three design patents [iv] and one utility patent, [v] owned by Apple.
In this ruling, the district court:
(1) recognized that “certain aspects of the design patent that are dictated by function” may limit the scope of such patent; [vi]
(2) listed elements contained in Apple’s design patents that are “dictated by function;” [vii]
(3) explained that it should “consider only the remaining aspects of the design in the infringement and anticipation analysis of the design patent” [viii] (citing Richardson v. Stanley Works, Inc. [ix] and OddzOn Prods., Inc. v. Just Toys, Inc. [x]);
(4) identified functional features in Apple’s design patents; [xi] and
(5) performed an infringement analysis of these design patents “in light of” its claim construction. [xii]
The above described claim construction and infringement analysis appear balanced and consistent with Federal Circuit authority cited by the district court.
We say all the time that in a patent application you can define the terms you want to use in the claims to give them the meaning you intend; the meaning that will apply during any claim interpretation. But what happens when you do not define a term in the specification? Well, that really all depends. As a general rule the ordinary plan meaning of the term will be used. This issue of defined meaning arose recently in a high profile case, giving us a chance to review the ruling and discuss defining terms more generally.
Recently in the ongoing patent war between Apple and Motorola, Judge Richard Posner of the United States Court of Appeals for the Seventh Circuit issued a ruling, while sitting by designation as a trial judge. See Apple v. Motorola No. 1:11-cv-08540 (N.D. IL., Jan. 17, 2012). Motorola had argued that Apple’s U.S. Patent No. 7,479,949 was invalid because it used the term “heuristic,” thereby rendering the claims invalid as being indefinite and in violation of 35 U.S.C. 112, ¶ 2.
In what seems to be a continuing trend, the United States Court of Appeals for the Federal Circuit is continuing to show increasingly little tolerance for abusive patent litigation tactics. In the most recent pronouncement along these lines the Federal Circuit, per Judge O’Malley (with Judges Newman and Prost joining), ruled the district court appropriately awarded the defendant $3,873,865.01 in attorney fees and expenses under § 285, as well as $809,788.02 in expert fees. See MarcTec, LLC v. Johnson & Johnson (Jan. 3, 2012).
MarcTec originally filed suit in the Southern District of Illinois against Cordis Corporation and Johnson & Johnson, who is the parent company of Cordis Corporation, but not otherwise involved in making or selling the accused product. MarcTec alleged Cordis infringed U.S. Patent Nos. 7,128,753 and 7,217,290. After claim construction, the district court granted Cordis’s motion for summary judgment of noninfringement. On a prior appeal the Federal Circuit then affirmed the district court’s construction and the judgment of noninfringement based on that construction. See the non-precedential opinion in MarcTec v. Johnson & Johnson 2009-1457.
Earlier today the United States Court of Appeals for the Federal Circuit decided not grant a petition for en banc rehearing in Retractable Technologies Inc. v. Becton, Dickinson and Company. See Order and dissents. While a failure to order rehearing en banc is typically not newsworthy, this one was because there were two separate and passionate dissents. Judge Moore wrote the first dissent and was joined by Chief Judge Rader (who was on the original panel along with Judge Lourie and Judge Plager). The second dissent was written by Judge O’Malley. Both dissents make compelling cases for this case to have been reheard en banc to once and for all address the split among the Federal Circuit relative to claim interpretation.
Judge Moore started her dissent by saying: “Claim construction is the single most important event in the course of a patent litigation.” She would then go on to explain what we all know to be true: “claim construction appeals are “panel dependent” which leads to frustrating and unpredictable results for both the litigants and the trial court.” Bravo to Judge Moore for saying what patent attorneys whisper to each other at cocktail parties out of earshot of one or another Federal Circuit Judge.
One of the canons in the perplexing world of patent claim construction is the doctrine of claim differentiation. As stated in the seminal 2005 claim construction case of Phillips v. AWH Corp., this doctrine holds that “the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” But the recent case of Retractable Technologies, Inc. v. Becton, Dickinson & Co. saw a split panel of the Federal Circuit take very divergent views on whether the “presumption” created by this doctrine was rebutted by other facts. In my opinion, dissenting Chief Judge Rader’s view is correct. Rader explained that the “strong presumption” created by this doctrine was not rebutted by the facts in this case. Conversely, the view of Judge Lourie (writing for the panel majority that included Judge Plager) was that this “implication [was] not a strong one” and won’t hold up under careful scrutiny.
In Retractable Technologies, the claimed invention related to retractable syringes, i.e., medical syringes that feature a needle that retracts into the syringe body after the syringe is used. Independent Claim 1 of U.S. Pat. No. 7,351,224 (the “’224 patent”) recited a “syringe comprising a hollow body,” while independent Claim 43 of the ’224 patent recited a syringe assembly which comprised a “hollow syringe body.” Dependent Claim 14 of the ’224 patent recited “[t]he syringe of claim 1 comprising a one-piece barrel,” while dependent Claim 57 recited “[t]he syringe assembly of claim 43 wherein the body comprises a one-piece barrel.” In other words, both dependent Claim 14, as well as dependent Claim 57, were limited to a “one-piece” structure for the “hollow [syringe] body.” And under the doctrine of claim differentiation, that would raise the “strong presumption” that the “hollow [syringe] body” of independent Claims 1 and 43 need not be a “one-piece” structure, but could also be a “multi-piece” structure.
Yesterday the United States Court of Appeals for the Federal Circuit issued a precedential opinion in American Medical Systems, Inc. v. Biolitec, Inc. The decision dealt with the scintillating topic of whether a term in the preamble of the claim is limiting. The district court determined it was, and so did the dissenting Judge on the panel, Judge Dyk. The majority of the panel (Judges Bryson and Prost), however, determined it was not limiting, and I think correctly reached that decision. What is of particular interest, however, is the fact that Judge Dyk in dissent came out and said that it was time for the Federal Circuit to en banc decide the appropriate standard for when the preamble is limiting because any fair reading of Federal Circuit “preamble jurisprudence” is difficult to reconcile. While I disagree with Judge Dyk on this case, I am all for settling of the law and in areas where there are conflicting panel decisions, which is pretty much everywhere. The Federal Circuit should aspire to certainty wherever possible. After all, that was why the Court was formed in the first place.
If someone can divine an answer for this five judge panel from the Pressure Products case, they’re far more clairvoyant than I. Nothing in the appealed issues in Pressure Products (claim construction, denial of motion for JMOL, leave to amend answer) even remotely hints at or suggests the basis for this five judge panel. In fact, Pressure Products has all the markings of a fairly ordinary, garden variety patent infringement case. So why not the standard three judge panel? Not a word of explanation.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
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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.
What a coincidence that the disputed patent in 
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.
On December 2, 2011 the district court in the Apple v. Samsung patent litigation issued a 65 page ruling [ii] denying Apple’s motion to preliminarily enjoin the U.S. sales of several Samsung products, [iii] based upon such products’ alleged infringement of three design patents [iv] and one utility patent, [v] owned by Apple.
We say all the time that in a patent application you can define the terms you want to use in the claims to give them the meaning you intend; the meaning that will apply during any claim interpretation. But what happens when you do not define a term in the specification? Well, that really all depends. As a general rule the ordinary plan meaning of the term will be used. This issue of defined meaning arose recently in a high profile case, giving us a chance to review the ruling and discuss defining terms more generally.
In what seems to be a continuing trend, the United States Court of Appeals for the Federal Circuit is continuing to show increasingly little tolerance for abusive patent litigation tactics. In the most recent pronouncement along these lines the Federal Circuit, per Judge O’Malley (with Judges Newman and Prost joining), ruled the district court appropriately awarded the defendant $3,873,865.01 in attorney fees and expenses under § 285, as well as $809,788.02 in expert fees. See 
Earlier today the United States Court of Appeals for the Federal Circuit decided not grant a petition for en banc rehearing in Retractable Technologies Inc. v. Becton, Dickinson and Company. See 
Some may recall my candidate for “Strangest Case of 2009”: 
