If patent owner intends a special meaning, clear disavowal of ordinary meaning required

Wasica Fin. GmbH v. Cont’l Auto. Sys., (Fed. Cir. Apr. 4, 2017) (Before Prost, C.J., Schall, and Chen, J.) (Opinion for the court, Schall, J.)

In an April 4, 2017 decision, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (the “Board”) findings of anticipation or obviousness in two inter partes review (IPR) proceedings. The Court also affirmed in part and reversed in part the Board’s findings of patentability for certain claims.

Wasica Finance GmbH et al. own the ’524 patent, which describes systems for monitoring tire pressure in vehicles. In the ‘295 IPR, Continental Automotive  challenged all 21 claims of the ’524 patent as anticipated by Oselin and/or obvious over some combination of Oselin and Williams, Schultz, Barabino, Li, and 4,750,118. In the ‘476 IPR, Schrader-Bridgeport  and others (collectively, “Schrader”) challenged claims 1-6, 9-19, and 21 as anticipated by Oselin and/or as obvious over some combination of Oselin, Schultz, Barabino, and Nowicki. The Board instituted separate trials on the two petitions. Both trials focused primarily on Oselin, which relates to vehicular systems for monitoring tire pressure. In two Written Decisions, the Board first construed “pressure measuring device” from independent claim 1, “bit sequence” from claim 9, and “emittance” from claim 17. The Board then found that Oselin anticipated claims 1, 2, 5, 10, 13, 15, 17-19, and 21. Further, Oselin alone, or in combination with Williams, Schultz, Nowicki, Barabino, and/or Li, rendered claims 3, 4, 10-12, 14, 16, and 17 obvious. However, claims 6-9 and 20 were not instituted. Wasica appealed the Board’s decisions that claims 1-5, 10-19, and 21 are unpatentable. Continental and Schrader cross-appealed the Board’s decisions that claims 6-9 and 20 are patentable.

The unpatentability of claims 1-5, 10-19, and 21 based upon Oselin concerned whether “electrical pressure signal” and “pressure transmitting signal” encompassed non-numeric representations of pressure. Using ordinary meaning, in light of the patent’s specification, the Court found that the disputed claim terms are not limited to numeric values. Claim 1 recites displaying data “as numbers or symbols which have been taken from the pressure transmitting signal” (emphases added). The disjunctive “or” as in “numbers or symbols” designates them as distinct alternatives to one another. Because they are “taken from the pressure transmitting signal” directly, claim 1 contemplates a pressure transmitting signal that encodes non-numerical “symbols.” Additionally, the Court saw no reason to limit the “electrical pressure signal” to numerical values, as Claim 1 requires that signal to be “representative of the air pressure” (emphasis added). A non-numeric signal can be “representative of” air pressure in much the same way as a vehicle’s gas warning light might “serve to symbolize” a low fuel level. Consequently, the Board did not err in construing the signal terms broadly enough to encompass non-numeric representations of air pressure. The Court affirmed the Board’s decision that the claims were unpatentable.

Regarding dependent claim 17, the Board construed “emittance of a predetermined switching signal” to include both wired and wireless transmissions. Wasica argued that the “emittance” must be wireless. Continental and Schrader responded that “emit” means “to send out,” which does not preclude wired transmissions. Absent a clear disavowal or alternative lexicography by a patentee, he or she “is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning.” Thus, the Court then agreed with the Board that “emittance” includes both wired and wireless transmissions. Also, Wasica did not urge any special definition or disavowal. The specification supports this construction, because the ’524 patent contains exemplary embodiments where the switching signal propagates in both wireless and wired form. Additionally, the specification and claims use the words “emit” and “transmit” interchangeably. The Court found no error in the Board’s construction, and it affirmed the Board’s decisions that claim 17 is unpatentable.

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Next, the Court analyzed whether claim 6 is patentable over Oselin and other references. Oselin explains that its “transmissions from the sensors 10 use structurally analogous signals, on a frequency that is the working frequency common to the oscillators 11 of all transmitters 10 of the group of the receiver 20.”  In the IPRs, Continental and Schrader argued that this embodiment discloses the constant frequency limitation of claim 6. However, the Board held that the artisan would have understood Oselin’s “common” working frequency to allow for carrier waves of changing frequencies. On appeal, Schrader argued that Oselin discloses transmitting signals at “a” frequency, suggesting that it must be constant. Anticipation requires that a single reference “describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.” Next, evidence suggested that Oselin could use signals of either constant or nonconstant frequency, and so is ambiguous about the pertinent features of claim 6. Because ambiguous references do not anticipate a claim, the Court found no error in the Board’s conclusion.

The Court then turned to Continental’s argument that Oselin can employ “any modulation scheme,” which implicates constant-frequency signals. The Court found no error in the Board’s conclusion that this argument was insufficiently precise and underdeveloped. Oselin’s broad invocation of “any modulation scheme” (a genus) does not disclose with sufficient particularity the constant-frequency modulation scheme of claim 6 (a species). Thus, the Court found the Board’s conclusions to be supported by substantial evidence. The Court also found that obviousness “cannot be sustained by merely conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” The Court held that rather than explaining how Continental’s original obviousness argument from the IPR was correct, its subsequent arguments amounted to an entirely new theory of prima facie obviousness absent from the petition. Shifting arguments in this way is foreclosed by statute, the Court’s precedent, and Board guidelines.

Next, the Court found that Continental did not separately argue the unpatentability of claims 7, 8, and 20. Therefore, the Court deemed these claims as standing or falling with claim 6. As a result, it affirmed the Board’s decision on the nonobviousness of claims 7, 8, and 20.

Finally, claim 9 requires the transmitter to send data to the receiver through “at least a 4 bit sequence” having four smaller “bit sequence[s]” of information. Continental and Schrader argued that “bit sequence” should be construed as a sequence of “one or more bits.” Wasica argued that the plain meaning of “sequence” implies two or more items, so that a “bit sequence” must contain “two or more bits.” The Board agreed with Wasica, ruling that “bit sequence” must include “two or more bits.” Claim 9 describes its transmission as including “at least” four bits, but, under the Board’s construction, the transmitted signal must include at least eight bits (two for each component “bit sequence”). The Court found that this incorrectly rewrote “at least 4” to mean “at least 8,” and also incorrectly excluded four, five, six, or seven bits, expressly covered by the claim. Additionally, “the context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning” of terms in a claim. Here, context requires “bit sequence” to encompass single-bit sequences. The specification also confirms the use of “bit sequence” in this context by providing an embodiment where a bit sequence can contain only a single bit. The Court construed “bit sequence” to include one bit, and reversed the Board’s decision that claim 9 is patentable over Oselin.

If the patent owner intends claim terms to have a special meaning, the patent must provide a clear disavowal of ordinary meaning or an alternative lexicography. Otherwise, the patent owner can expect to obtain the full scope of the term’s plain and ordinary meaning. Ordinary meaning also may yield to context, as where “sequence” may include “one bit,” not “at least two.” The Court also stresses that anticipation requires that a single reference “describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.” Ambiguous references do not anticipate a claim.

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