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Fish Federal Circuit Summary Service: Issue #311

February 5, 2008

Fish Federal Circuit Summary Service: Issue #311

February 5, 2008

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Examiner’s Characterization of Claims As Means-Plus-Function Is Insufficient To Require Construction Under § 112 ¶ 6 Where Adequate Structure Is Recited
Trimed, Inc. v. Stryker Corp.
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Date: January 29, 2008
Panel: Linn, Dyk, Moore
Author: Moore
District Court: C.D.Cal.
Trial Judge: Real
Summary: Fed Cir reverses summary judgment of noninfringement arising from an incorrect claim construction of a patent relating to an implantable device for fixing bone fractures. The district court construed the limitation “said holes in said plate providing means for allowing the pin to slide…” as a means-plus-function. The Fed Cir disagreed because, while the claims used the term “means,” they recited structure for performing the functions. The court of appeals further disagreed that an interview summary stating “[a]greement was reached that the expression of [covered by the disputed limitation] in a means-plus-function format and better defining the holes of the plate would distinguish over the prior art of record,” did not compel a means-plus-function construction because the remarks which accompanied the subsequent amendments had indicated the patentee’s intention to recite adequate structure instead of function.


Failure to Disclose Internal Notes Forms Basis For Inequitable Conduct; District Court Retains Jurisdiction To Render Patents Unenforceable Even Without DJ Jurisdiction
Monsanto Co. v. Bayer Bioscience N.V., LLP
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Date: January 25, 2008
Panel: Bryson, Gajarsa, Dyk
Author: Gajarsa
District Court: E.D.Mo.
Trial Judge: Webber
Summary: Fed Cir affirms judgment of inequitable conduct on four patents claiming chimeric genes encoding a particular bacterial toxin. During prosecution of the patents, Bayer disclosed an abstract which was presented at a large scientific conference and which formed the basis of an obviousness rejection by the examiner. Bayer, however, failed to disclose notes taken by a Bayer employee who attended the conference, took substantial notes about the more detailed poster linked to the abstract, and widely circulated the notes to various people within Bayer, including to a person in the Bayer’s IP department who was substantially involved in the prosecution of the patents.

Materiality: While the employee’s notes did not show the specific claimed toxin, the Fed Cir ruled that, at the time of the examiner’s rejection, Bayer’s pending claims covered the broad genus of such toxins and affected the allowability of those claims. In addition, the contents of the notes directly contradicted Bayer’s arguments before the patent examiner, thus satisfying the standard of materiality under rule 1.56(2)(i). As the Fed Cir explained, “[w]e hold that the Mariani notes are material because they directly contradict arguments Bayer made to the PTO in support of patentability. We do not suggest that all internal documents of potential relevance must be submitted to the PTO as a matter of course. Rather, it is the particular circumstances that render the internal documents material in this case.” Slip op. at 17.

Intent: The IP department employee admitted that he was aware of the notes during prosecution, that he had discussed the content of the notes with the person who took them, and that the notes were important to the examiner. But he could not provide a credible explanation for his failure to disclose the notes to the PTO, and the Fed Cir declined to disturb the district court’s credibility findings. “Intent is easily inferred when, as here, an applicant makes arguments to the PTO that it knows, or obviously should have known, are false in light of information not before the examiner, and the applicant knowingly withholds that additional information.” Id. at 20.

Jurisdiction over withdrawn patents: Having found one patent unenforceable, the district court then found the remaining three patents unenforceable, even though Bayer previously dismissed them from the suit by submitting a covenant not to sue Monsanto on the three patents and thus eliminated Monsanto’s declaratory action. While the district court lost jurisdiction over the declaratory action, it retained jurisdiction to rule on Bayer’s motion for attorney fees under section 285 and thus to decide the unenforceability of the dismissed patents. “The question facing this court is, thus, whether a district court’s jurisdiction under § 285 to determine whether there was inequitable conduct in the prosecution of patents that are otherwise no longer in suit confers on that court the jurisdiction to hold such patents unenforceable for inequitable conduct. We hold that it does.” Id. at 22-23. Extending its recent holding in Nilssen v. Osram Sylvania, Inc., 504 F.3d 1223 (Fed. Cir. 2007), the Fed Cir held that “[h]ere, the outcome is even clearer as there is no dispute that the court had an independent grant of jurisdiction under § 285 to consider inequitable conduct relating to the withdrawn patents.” Id. at 24.


Putting Teeth In the Definiteness Requirement: Claims May Be Indefinite If They Fail To Distinguish Over The Prior Art, They Could Cover All Future Improvements, Or They Fail To Provide Proper Notice of Circumstances Under Which Infringement Would Occur
Halliburton Energy Servs., Inc. v. M-I LLC
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Date: January 25, 2008
Panel: Michel, Bryson, Fogel
Author: Michel
District Court: E.D.Tex.
Trial Judge Davis
Summary: Fed Cir affirms summary judgment rendering indefinite certain claims which were directed to oil field drilling fluid and which recited the disputed term “fragile gel.” On appeal, Halliburton advanced a three-part construction of the term. After rejecting one part of the construction as reducing the independent claims to the scope of certain dependent claims, the Fed Cir noted that the two remaining parts had support in the specification. But “[t]he fact that Halliburton can articulate a definition supported by the specification, however, does not end the inquiry.” Slip op. at 10.

As to the second part of the construction, the Fed Cir ruled that the construction would render the claims indefinite by covering the prior art, covering all future improvements, and violating the notice functions of claims. Rejecting Halliburton’s attempt to limit consideration of the prior art to anticipation and obviousness challenges, the Fed Cir explained that “[w]e disagree that the evaluation of a claim’s definiteness cannot include whether the patent expressly or at least clearly differentiates itself from specific prior art. Such differentiation is an important consideration in the definiteness inquiry because in attempting to define a claim term, a person of ordinary skill is likely to conclude that the definition does not encompass that which is expressly distinguished as prior art.” Id. at 12. The court of appeals, however, cautioned that a claim which would read on the prior art may be definite if “a person of ordinary skill in the art would know the boundaries of the claim, and the focus would properly be on other validity challenges (e.g., anticipation).” Id. Applying these rules, the Fed Cir determined that a skilled artisan would not know the scope of Halliburton’s claims because they failed to distinguish over very close prior art. But even if there was a distinction over the prior art, the proposed construction still rendered the claims indefinite because it would cover “all future improvements” to the gel’s properties. Id. at 13-14. While noting that it has construed ambiguous claims narrowly in the past to preserve their validity, the Fed Cir ruled that Halliburton’s interpretation would resolve the ambiguity in favor of the broadest possible construction and would thus “undermine the notice function of the claims because it would allow Halliburton to benefit from the ambiguity, rather than requiring Halliburton to give proper notice of the scope of the claims to competitors. Additionally, adopting the broadest possible construction could retard innovation because cautious competitors may steer too far around that which Halliburton actually invented, neglecting improvements that otherwise might be made.” Id. at 14-15.

As to the third part of the proposed construction, the Fed Cir ruled that the second construction’s use of tests and measurements did not clarify the scope of the claims, that infringement would be too unpredictable, and that the construction improperly used functional language. Indeed, “that an artisan would know how to perform these measurements and tests, however, says nothing about whether the artisan would also know which fluids were ‘fragile gels’” as claimed. Id. at 15. In further rejecting the argument that a fragile gel would be a gel “adequate for the circumstances,” the Fed Cir explained that “[w]hen a proposed construction requires that an artisan make a separate infringement determination for every set of circumstances in which the composition may be used, and when such determinations are likely to result in differing outcomes (sometimes infringing and sometimes not), that construction is likely to be indefinite.” Id. at 16-17. Finally, the court noted that the flaw in the proposed construction was its use of functional rather than structural elements, because “use of functional language can fail ‘to provide a clear-cut indication of the scope of subject matter embraced by the claim’ and thus can be indefinite.” Id. at 17. While noting a few ways of avoiding indefiniteness when using functional language, the Fed Cir concluded that there was “no other construction that can properly be adopted that would render the claims definite.” Id. at 19.


The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.