“For a brief time at the Federal Circuit, ‘the name of the game [was] the claim.’ Now that is uncertain, and depends on random panel assignment.” – US Inventor amicus brief
Inventor advocacy group US Inventor has filed an amicus brief in support of a petition to the U.S. Supreme Court asking the justices to clarify “[w]hether the Federal Circuit’s “heavy presumption” line of cases or its “holistic” line should govern claim construction.
An Unconstructive Conflict
The petition was filed in December by Akeva, LLC, owner of a portfolio of athletic footwear patents, and is an appeal from a July 2020 nonprecedential Federal Circuit decision, Akeva, LLC v. Nike, Inc. In that case, the Federal Circuit upheld a district court’s grant of summary judgment of noninfringement to a number of defendants—including Asics, Nike, adidas America, Inc., New Balance Athletic Shoe, Inc., and Puma North America, Inc.—finding in part that the district court had “correctly construed the claim term ‘rear sole secured’ to exclude conventional fixed rear soles.”
Claim 25 of Akeva’s U.S. Patent No. 5,560,126 reads:
- A shoe comprising: an upper having a heel region; a rear sole secured below the heel region of the upper; and a flexible plate having upper and lower surfaces and supported between at least a portion of the rear sole and at least a portion of the heel region of the upper, peripheral edges of the plate being restrained from movement relative to an interior portion of the plate in a direction substantially perpendicular to a major axis of the shoe so that the interior portion of the plate is deflectable relative to the peripheral edges in a direction substantially perpendicular to the major axis of the shoe.
All of the defendants argued that the term “rear sole secured…could not include a shoe with a conventional fixed rear sole,” and the Federal Circuit held that “numerous statements in the specification make it clear a conventional fixed rear sole is not within the scope of the invention.”
Akeva had argued that the specification “did not disclaim conventional fixed rear soles because, in its view, the specification discloses two distinct inventions that do not depend on each other: (1) rotatable and/or detachable rear soles and (2) a flexible plate in the midsole.”
Akeva’s petition to the High Court maintains that the decision underscores the Federal Circuit’s “wholly inconsistent” precedents and its “unpredictable” constructions that are based in two divergent sets of claim construction principles: the “Heavy Presumption” and “Holistic” principles.
The Heavy Presumption Principle applies a “’heavy presumption’ that a term carries its ordinary meaning, as understood by “ordinary artisans” in the field—and that permits the specification to affect that meaning “only” if it meets an ‘exacting’ standard and demonstrates (i) a ‘clear’ disclaimer of claim scope, or (ii) ‘clear’ lexicography.”
The Holistic Principle, which Akeva says was applied in its case, “allows the specification to affect claim meaning even when it does not demonstrate an ‘exacting’ disclaimer or lexicography—as when, e.g., the specification describes ‘the present invention’; ‘disparages’ prior art; describes embodiments as ‘consistently,’ ‘uniformly,’ or ‘repeatedly’ using features; or provides an ‘implied definition.’”
These conflicting approaches have caused significant confusion for patent stakeholders, says Akeva.
Get Back to the Text
US Inventor’s brief summarizes its argument in support of Akeva as follows:
Just as textualism is now accepted as the way to interpret statutes, this Court should grant certiorari to resolve a split within the Federal Circuit whether textualism should also guide how courts interpret the claims in an issued patent.
The amicus brief characterizes the question presented as “the most sweeping and vexing inconsistency in patent law.”
In the Akeva case, “’Rear sole secured’ was held to mean ‘rear sole connected and rotatable.’ This was a radical and unpredictable departure from the unambiguous and clear text,” says the US Inventor brief, adding that the Court’s approach to claim construction should match its approach to statutory construction, which has moved toward textualism over the last several decades.
Likening the complex and compromise-heavy legislative process that results in statute to the patent examination process, which results in granted patent claims, the brief explains:
Just as uncertainty in statutory sources of meaning create unwarranted transaction costs in public behavior, so does claim construction methodology uncertainty among private parties. Petitioner Akeva’s saga exemplifies this. Had everyone agreed at the out-set that the word “secured” received the full scope of its meaning in a shoe sole context (regardless of details about the embodiments), the parties would never have spent the vast litigation resources they did, over nearly a decade, on the question of whether “secured” ought to mean a particular subtype of “secured” (i.e., fixed but rotatable).
If courts were forced to embrace textualism, matters would be kept out of litigation more often, industry actors would know better how to design around patent rights, and patentees will have more certainty about their own rights, says the brief.
The holistic approach, on the other hand, “creates wasteful uncertainty” such as in Akeva’s case, “where the panel divined the invention of the patented athletic shoe to require not just a fixed rear sole, but also a fixed rear sole that pivots (even though the pivot concept is not within any plain text of the claim).”
The brief concludes:
For a brief time at the Federal Circuit, “the name of the game [was] the claim.” Now that is uncertain, and depends on random panel assignment. The name of the game might be the claim, unless it is something else, like the written description examples, a stray remark disparaging some aspects of a claimed feature, or someone’s sense of justice in divining what ought to be (but was not written out as) the “actual invention”…. [T]his Court should grant certiorari to resolve that “textual” patent claim construction methodologies, not “holistic” ones, will govern the meaning of claim terms. (Citations omitted)
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