Federal Circuit Corrects District Court’s Claim Construction

The Court highlighted that the first step in claim construction should always be to determine the plain and ordinary meaning of the claims. Further, the specification should serve to limit the plain and ordinary meaning only when it includes a definition for a claim term or a clear disclaimer or disavowal of claim scope.

The United Stated Court of Appeals for the Federal Circuit recently held that a district court erred in its claim construction and vacated the district court’s judgment of noninfringement, which the parties stipulated to based on the erroneous construction. See Continental Circuits LLC v. Intel Corp., No. 2018-1076, 2019 U.S. App. LEXIS 3920, 2019 WL 489069 (Fed. Cir. Feb. 8, 2019) (Before Lourie, Linn, and Taranto, J.) (Opinion for the court, Lourie, J.).

The Patents

Continental Circuits LLC (Continental) owns four patents, which are directed to a “multilayer electrical device . . . having a tooth structure,” as well as methods for making the device. The four patents are continuations of one another and share substantially the same specification, which describes methods for “forming a unique surface structure . . . comprised of teeth that are preferably angled or hooked like fangs or canine teeth to enable one layer to mechanically grip a second layer.” The patents explain this surface structure is useful for overcoming the tendency of multilayer electrical devices to undergo “delamination, blistering, and other reliability problems,” particularly after being “subjected to thermal stress.” The patents also explain that “the best methods for producing the teeth [are] to use non-homogenous materials and/or techniques . . . such that slowed and/or repeated etched will form teeth instead of a uniform etch.”

Construing the Claims

Continental sued Intel Corp., Ibiden U.S.A. Corp., and Ibiden Co. Ltd. (collectively, Intel) for patent infringement, asserting several claims from all four patents. All of the asserted claims include claim limitations regarding the “surface,” “removal,” or “etching” of the “a dielectric material” or “epoxy,” which the district court construed together as the “Category 1 Terms.” The collective construction of the Category 1 Terms depends on determining whether the claims should be limited to a repeated desmear process or should be more broadly construed to include a single desmear process.

The district court construed the Category 1 Terms to require “a repeated desmear process.” The district court found that the specification “repeatedly distinguishe[d] the process covered by the patent from the prior art and its use of a ‘single desmear process’” and “characterized ‘the present invention’ as using a repeated desmear process.” The district court also found that the prosecution history supported this construction. During prosecution of one of the patents, the examiner made indefiniteness and written description rejections “concerning the claim limitation ‘etching of the epoxy uses non-homogeneity with the solid content,’” which refers to facilitating the formation of the non-uniformly roughened surface. In response, Continental submitted an expert declaration explaining that the etching process disclosed in the specification uses a “known Probelec XB[ ]7081 resin” and “two separate swell and etch steps” as “a technique which forms teeth.” The district court interpreted the submission of this expert declaration as “clearly describ[ing] the patented method as involving two etching processes,” i.e., a repeated desmear process. Finally, the district court found that extrinsic documents authored by the inventors concede they “use a double pass desmear to achieve the tooth structure.” And while acknowledging that those extrinsic statements were “not reliable enough to be dispositive,” the district court found them to “provide helpful corroboration.” The district court then entered a judgment of noninfringement based the parties’ stipulation to noninfringement in view of the district court’s construction, and Continental appealed the claim construction.

Ordinary and Customary Meaning

On appeal, the Court explained that courts should give claims their ordinary and customary meaning, and looking at the claim language itself, the Court found that, “at least based on the plain language, the claims are not limited to a repeated desmear process” because “none of the asserted claims actually recite a ‘repeated desmear process.’”

The Court then “read[] the claims in view of the specification, of which they are a part.” (citation and internal quotation marks omitted). Noting that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” the Court pointed out that for the patentee to act as its own lexicographer, the “patentee must clearly set forth a definition of the disputed term other than its plain and ordinary meaning.” (citation and internal quotation marks omitted). Similarly, for a specification to include a disclaimer or disavowal of claim scope, “the specification must contain expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” (citation and internal quotation marks omitted). The Court acknowledged that it can be difficult to navigate construing the claims in light of the specification without improperly importing a limitation from the specification into the claims. To avoid improper importation, “it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so.” (citation and internal quotation marks omitted).

Here, the Court found that “none of the statements relied upon by the district court rises to the level of ‘a clear and unmistakable disclaimer.’… Overall, [the patents] simply describe how to make the claimed invention using the preferred Probelec XB 7081 in a ‘new’ way that is different from the prior art process,” such as when they state:

  • [o]ne technique for forming the teeth,” which is “contrary to all known teachings in the prior art,” is the double desmear process;
  • “the present invention can be carried out by a new use” of a dielectric material called Probelec XB 7081;
  • [f]or example, the present invention differs from the common desmear process in that sub-steps in the desmear process are repeated as a way of forming the teeth,” and this process is “[i]n stark contrast with the etch and swell process of the known prior art”; and
  • the peel strength produced by the new use of Probelec XB 7081 is greater than that of “the prior art, i.e., a single pass desmear process.” (emphases in decision).

Claim Scope

The Court reiterated that it has “expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.” Thus, while the patents disclose only the Probelec XB 7081 embodiment, that “does not result in a clear disavowal of claim scope,” “without more.” Further, the Court interpreted the patents’ “distinguishing the double desmear process as ‘contrary to’ or ‘in stark contrast’ with the single desmear process” as merely comparing and contrasting the present technique to that of the prior art does not ‘rise to the level of [a] clear disavowal of claim scope.’”

And “[w]hile descriptions ‘of the ‘present invention’ as a whole’ could limit the scope of the invention, ‘use of the phrase ‘present invention’ or ‘this invention’ is not always so limiting, such as where the references . . . are not uniform, or where other portions of the intrinsic evidence do not support applying the limitation to the entire patent.’” (citation and internal quotation marks omitted). In view of this proposition, the Court found that the statements relied on by the district court “do not characterize the present invention ‘as a whole,’” but instead “disclose one way to carry out the present invention using Probelec XB 7081.” To that end, the Court found that portions of the patents describe the invention’s “‘unique surface structure’ . . . without any requirement that the invention must encompass the repeated smear process.”

Expert Declaration and Extrinsic Documents

Turning to the expert declaration, the Court found that “[t]he expert declaration . . . explained that the written description disclosed ‘a technique which forms the teeth’ by ‘performing two separate swell and etch steps.’” (emphasis in decision). Thus, the Court found the expert declaration to merely explain one technique for forming teeth and not to amount to clear statements of disavowal.

Finally, the Court evaluated the extrinsic documents, in which the inventors stated that they “used ‘two passes through desmear’ and a ‘double pass desmear’ to achieve the tooth structure.” The Court found that these statements also merely “reflect use of the preferred embodiment” and fail to indicate any limiting effect.

Accordingly, the Court found that the Category 1 Terms are not limited to requiring a repeated desmear process and should instead be given their plain and ordinary meaning. And because the parties stipulated to noninfringement based on the district court’s erroneous claim construction, the Court vacated the judgment of noninfringement and remanded for further proceedings.

 

The Author

Dustin Weeks

Dustin Weeks is a Partner in the intellectual property practice group at Troutman Sanders. His practice spans all areas of intellectual property law, including patent prosecution, patent litigation (including Hatch-Waxman litigation), and client counseling. He represents clients ranging from start-ups and solo inventors to Fortune 500 companies. Dustin works closely with his clients to learn their business objectives so that he can tailor strategies to procure, protect, and enforce their intellectual property. Dustin specializes in post-grant proceedings (e.g. Inter Partes Reviews) before the Patent Trial and Appeal Board (PTAB) where he has extensive experience representing both patent owners and petitioners across a wide range of technologies, including wireless networking, pharmaceuticals, MEMs devices, medical devices, and electro-mechanical consumer devices. Dustin's broad experience in patent prosecution, counseling, and patent litigation uniquely positions him to navigate the blended practice of post-grant proceedings.

For more information or to contact Dustin, please visit his Firm Profile Page.

Dustin Weeks

Robert Schaffer & Joseph Robinson  

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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