Posts Tagged: "claim interpretation"

“It seems self-evident that the same patent contested in different tribunals should have its meaning – its boundaries – determined using the same standard,” Director Iancu said when discussing the final rules implementing the Phillips standard at the PTAB… Those few who were not pleased by the change have cited a believe that the change to the Phillips standard would usher in a return to lower quality patents. With a bit of a confrontational tone, Director Iancu took issue with that, finding the argument without merit.

On Monday, July 16th, the Court of Appeals for the Federal Circuit issued a precedential decision in Blackbird Tech v. ELB Electronics, which vacated an earlier judgment of non-infringement of a patent asserted by Blackbird in the District of Delaware. The Federal Circuit majority panel of Chief Judge Sharon Prost and Circuit Judge Kimberly Moore determined that the district court had erred at construing the claim term “attachment surface” in finding non-infringement of the asserted claims. Circuit Judge Jimmie Reyna dissented in this case.

On May 9, 2018, Network-1 Technologies, Inc. filed a combined petition for panel rehearing or rehearing en banc with the United States Court of Appeals for the Federal Circuit, requesting reconsideration of the panel’s Claim Construction Ruling in Context of Database Search Algorithms in a consolidated appeal from inter partes review decisions relating to four of Network-1’s patents. 

Nalco asserted that the only difference between its patented method and the Chem-Mod Process was the location of the injection. The district court dismissed Nalco’s complaints for failure to state a claim, including its Fourth Amended Complaint (“4AC”) at issue in the present appeal… The Federal Circuit, in an opinion authored by Judge O’Malley, rejected Defendants’ argument that Nalco’s direct infringement claims were implausible and instead agreed with Nalco that the resolution of its claims depended on the construction of the terms “flue gas” and “injecting.” Resolution of this claim construction dispute was inappropriate at the Rule 12(b)(6) stage of the proceedings.

The Federal Circuit heard the case of Microsoft Corp. v. Biscotti, Inc. After Biscotti, Inc. (“Biscotti”) sued Microsoft Corp. (“Microsoft”) for patent infringement, Microsoft filed three unsuccessful inter partes reviews (“IPR”) challenging certain claims of U.S. Patent No. 8,144,182 (“the ‘182 patent”) as anticipated or obvious. The ‘182 patent relates to tools and techniques for providing video calling solutions. The IPRs focused on independent claims 6 and 69, and their dependent claims. On appeal Microsoft challenged the Board’s standard of review… The Federal Circuit reiterated that anticipation is a question of fact subject to substantial evidence review, that ultimate claim construction and claim construction relying solely on intrinsic evidence is subject to de novo review, and subsidiary factual findings based on extrinsic evidence are reviewed for substantial evidence.

In HTC Corp. v. Cellular Communs. Equip., Appellants HTC Corporation and ZTE (USA) Inc. (“HTC”) appeal a final written decision by the Patent Trial and Appeal Board (“PTAB”) in an inter partes review. The Board instituted inter partes review of challenged claims in patents owned by Appellee Cellular Communications Equipment, LLC’s (“CEE”). The PTAB concluded that HTC failed to show that any of the challenged claims were unpatentable… There is no need for the PTAB to explicitly construe claim terms if the PTAB’s findings were sufficient to establish its understanding of the scope of the claimed subject matter.

The Federal Circuit concluded that the Board’s construction of the term ‘body’ was unreasonably broad even given proper usage of the broadest reasonable interpretation claim standard… This ruling obviously makes perfect sense. Absent a comprehensive glossary that defines each and every term appearing in a patent application it would be impossible for any applicant to ever proscribe and/or preclude any and all possible broad readings for various terms that a patent examiner may come up with after the fact. Defining every term has never been required and anticipating frivolous examiner arguments has never been required, and is in fact considered inappropriate.

What happens if a patent owner who suffered that Rule 36 summary loss to Google at the Federal Circuit were to decide to sue another party – perhaps Apple – on the same claims that were invalidated in the above mentioned hypothetical Google proceeding? No doubt Apple’s attorneys would be rightfully indignant, and if the proceeding were in federal district court you could guarantee there would be sanctions, likely against both the patent owner and the attorneys representing the patent owner. Why? Because those claims have been lost (i.e., invalidated) in a prior proceeding, and it does not matter that Apple was not privy to that prior proceeding. The underlying property right has been lost, and whether the Federal Circuit wants to admit it or not that is binding precedent.

LAB sued Eli Lilly & Company, alleging marketing of the drug Cialis induced infringement of LAB’s patent. Eli Lilly subsequently requested that the Board conduct inter partes review of the patent. The Board agreed to do so and ultimately found the patent to be obvious in light of three prior art references… The Court then found the Board’s construction of certain claim terms to be overly broad, stating the Board’s construction “would make the patent claims applicable to individuals with erectile dysfunction not caused by penile fibrosis.”

Hands on exercises were part of the program. In reading and understanding a patent application, materials were provided how examiners learn to break down an application in order to prepare to conduct a search. Work sheets and a sample problem of a mechanical device (a tortilla making machine) application with prior art references were provided to the attendees so they could do a disclosure analysis, determine any §112(f) issues, create a claim diagram, create a claim tree and ascertain if there are any other §§112 and/or 101 grounds of rejection. Another exercise was claim mapping using the same sample problem and additional prior art using PTO forms to formulate allowances and rejections. After the exercises were completed, there was discussion of what was learned and how there are many different ways to reach a conclusion.

Claim differentiation does not broaden claims beyond their meaning in light of the patent as a whole, and cannot override clear statements of claim scope found the specification and prosecution history… Disavowal can occur when the specification plainly describes “the present invention” as having that feature. Here, the specification states that an important characteristic of the present invention is a “reduction in upper width … resulting from the extended short seals.” Disavowal can also occur when the specification distinguishes or disparages prior art based on a specified feature. The specification did that here, by stating that prior art bags are difficult to secure over trash receptacle lips and explaining how the described short seals solve this problem.

what is particularly interesting about this case is that Smith, who had prevailed at the district court and was awarded about $322,500 in damages, thought he could not challenge the correctness of a claim construction made by the district court. While Smith could not have filed a cross appeal in this case concerning the claim construction, Smith could have asserted ‘alternative grounds in the record for affirming the judgment.’ Because Smith did not raise any such alternate grounds on appeal, the Federal Circuit could not address the correctness of the district court’s claim construction.

GPNE sued Apple for direct infringement of claims in two of GPNE’s patents. The patents at issue relate to a two-way paging system, where the paging devices are capable of not only receiving messages but also sending messages back in response. The claims asserted by GPNE all recited “nodes” rather than “pagers,” even though the word “node” was not used anywhere other than in the Abstract of the two patents containing the asserted claims. Seizing on this, Apple argued at the Markman hearing that a “node” as claimed should be construed as being a “pager.” The district court ultimately agreed with Apple, and ultimately so too did the Federal Circuit.

The Court found that “fractionation” referred only to distillation-based techniques. The specification’s use of the term “fractionation” controlled even if the definition was idiosyncratic. By that standard, the Court found that “fractionation” did not encompass solubility-based techniques. The specification identified the limits of “conventional fractionation” which were only limits of “conventional distillation,” and no other fractionation techniques known in the art were mentioned. Therefore, the specification equated “conventional fractionation” and “conventional distillation.” More broadly, this demonstrated that the specification equated the terms “fractionation” and “distillation.” This finding was further supported by the repeated and consistent use of the term “fractionation” in discussion of processes to separate mixtures by distillation.