Posts Tagged: "claim construction"

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.

The Federal Circuit found that the specification explicitly supported the district court’s claim construction, which precluded a finding of infringement. Two passages specified the meaning of, and provided context for, a claim term that referred to the relative location among certain claim elements. A “relative location” claim term is often read in light of, and by relying on, the written description. Because the district court’s claim construction was proper, the Court found the grant of summary judgment of non infringement was proper.

After much public comment and debate, new changes to rules for post-grant administrative trials before the Patent Trial and Appeal Board (PTAB) go into effect on May 2, 2016. These final rule changes, which are the second set of changes since the America Invents Act (AIA) went into effect, are the culmination of a series of PTAB listening tours and public comments to the rule change proposals published in August 2015. Among other things, the new rules are intended to address concerns that patent owners were at a disadvantage in responding to patent challenges, particularly during the pre-institution stage of a PTAB proceeding. The rule changes also introduce certification requirements for documents filed with the PTAB, confirm the broadest reasonable interpretation (BRI) standard, as well as exceptions to the BRI standard for expiring patents, and adopt an appellate-style word count limit for major briefs.

Pride Mobility appealed, and noted that the Board construed claim 7 as requiring a “substantially planar” mounting plate “oriented perpendicular” to the axis of the wheelchair’s drive wheel, which the Board found in Goertzen. The Court found that the Board had misconstrued Claim 7, because the claim language made clear that the surface which rendered the mounting plate “substantially planar” must be perpendicular to the drive axis, not some other geometric feature of the mounting plate.

On one hand, logic dictates that the broader the interpretation of the claim, the more extensive the array of relevant prior art—and in turn the more likely that the claim will be held invalid in light of that prior art. On the other hand, evaluating whether the Board’s use of the BRI protocol in an IPR claim construction will lead to “different results” than the plain and ordinary meaning construction used by federal courts in claim construction is complicated by the relatively scant evidence on the subject, and the inevitable fact that this evidence is naturally dependent on particular prior art and invalidity and obviousness arguments specific to a particular patent. Even putting aside the question of what impact a different claim construction standard may have in an IPR, In re Cuozzo Speed Technologies will not address several powerful differences between an IPR and district court litigation that impact whether a particular patent claim survives.

Unified Patents Inc. explained in its amicus brief in Cuozzo Speed v. Lee that “[t]he phrase ‘broadest reasonable interpretation’ describes the same procedure applied in both the PTO and by the courts.” An inconvenient truth for Cuozzo — but a truth nonetheless. Gene attacked Unified Patent’s position here last Sunday as “false on its face” and “unequivocally incorrect.” Those pejoratives miss the point of Unified’s brief. Unified did not argue that the courts and PTO both apply BRI in name; indeed, Cuozzo would lose his semantic gripe if that were the case. Rather, Unified argued that peeling away the Phillips and BRI labels reveals that both standards employ the same procedure. On this point, Unified’s position is hardly controversial, and Unified is hardly alone.

Clare sued Chrysler for infringement of two patents on hidden storage boxes for pick-up trucks. Clare argued that the limitations do not need a construction because the meaning is plain to a lay person. The Court disagreed, holding that even where a term has a plain and ordinary meaning, claim construction is appropriate where there is a dispute over the scope of the terms. Here, Clare argued that a storage box with a fluorescent orange external panel on a white pickup truck, and labeled “STORAGE” would meet the limitations, so long as the inside of the storage box was not visible from the outside. Chrysler argued that the external appearance limitations should take into account the external hinged panel used to access the storage box. In view of this dispute, the district court correctly resolved it construing the claim.

The Court noted that the Board failed to account for how the claims and specification inform the ordinary skilled artisan as to what ordinary definition the patentee was using. The Court noted that just because “around” has several dictionary definitions does not mean all these meanings were reasonable in light of the specification. The Court argued that all of the components of the cable connectors encircled an inner electrical conductor, and thus it would seem odd to construe “reside around” without recognizing the context of its use in terms of the cable.

The broadest reasonable interpretation standard is frequently referred to simply as BRI within the industry. The Patent Office applies the broadest reasonable interpretation in virtually all circumstances. Whether the Patent Trial and Appeal Board (PTAB) should be using the broadest reasonable interpretation when it reconsiders previously issued patents in post grant proceedings will soon be considered by the United States Supreme Court. Notwithstanding, the focus of this article is not specifically to evaluate the merits of the Cuozzo appeal, but rather to generally discuss the broadest reasonable interpretation standard and what it means from an analytical perspective.

In a January 29, 2016 decision, the Federal Circuit vacated a jury judgment of non-infringement and ordered the District of Delaware to conduct a new trial where construction of a claim term based on prosecution history disclaimer was found to be too narrow. In rejecting the district court’s construction as too limiting, the Court emphasized the high standard for finding prosecution history disclaimer of claim scope. Examining the two prosecution history passages said to be a disclaimer, the Court found that each was readily susceptible to a narrower reading than the one needed to support the district court’s conclusion.

Wi-LAN argued that even if they could not prove direct infringement, a structure that performs the steps in the reverse order should properly be found to infringe under the doctrine of equivalents. Curiously, the Federal Circuit disagreed despite finding the Wi-LAN argument to have merit. Exactly how the Federal Circuit came to the determination that there was substantial evidence to support the jury verdict on the doctrine of equivalents is unclear.

On remand, the Federal Circuit used the de novo standard. Teva’s deferential “clear error” standard did not apply, because the district court did not make any factual findings based on extrinsic evidence in connection with its claim construction. Although extrinsic evidence may be used at trial, a district court must rely on subsidiary factual findings from that evidence to reach its claim construction, in order for any deference to arise on appeal. In this case, the Federal Circuit held that the intrinsic evidence led to a de novo conclusion that the district court conflated the claimed virtual machine with applications written to run on the virtual machine.

The NYIPLA asks the Court to grant the petition in order to make clear that judicial review is available when the PTO institutes an IPR proceeding and invalidates patent claims in violation of its statutory authority, and to determine the claim construction standard that the PTO should apply to determine patent validity. The NYIPLA explains that the Supreme Court’s review of both questions is critical at this juncture since to a large and increasing extent, IPRs are supplanting district court litigation as the forum for resolving issues of patent validity based on the prior art, and in proceedings below the Panel was split 2-1 with a vigorous dissent on both issues, and the Federal Circuit then split 6-5 in denying a petition for rehearing en banc.

The district court erred by relying entirely on the plain meaning of the claim where context-based interpretations were necessary. The Court held that the plural terms “intervals” and “remotes” in isolation could mean what must occur during each interval and what was applicable to all the remotes, but there was no requirement indicated in the remaining claim language or specification that at least one remote transmit and receive frames during at least one interval. The Court held that this evidence, together with other language in claim 21, and teachings in the specification, showed that each cycle in the claims must have intervals in which remotes were allowed to transmit.

The Federal Circuit reversed the district court’s claim construction, and held that the claim language does not require that the start and duration of remote-transmission intervals be communicated prior to the beginning of the cycle. St. Jude had not explained why, in accordance with the specification, it was not sufficient that a remote know roughly when to expect an upcoming cycle to begin, rather than its exact starting time, and why such interval information could not be communicated during a cycle. The Court postulated that a remote unit could power up its communications equipment for the entirety of a first cycle, receive interval information whenever it was transmitted, then only power up that equipment during its assigned interval for subsequent cycles.