Entire Express Definition In Specification Must Be Adopted; Construction Does Not Need To Cover Every Disclosed Embodiments Sinorgchem Co. v. Int’l Trade Comm’n Sinorgchem Co. v. Int’l Trade Comm’n Date: December 21, 2007 Panel: Newman (dissent), Dyk, Yeakel (sitting by designation) Author: Dyk District court: ITC Trial judge: Luckern Summary: Fed Cir vacates and remands ITC exclusion order based on erroneous claim construction. The method claims-in-suit, which relate to rubber antidegradant technology to counter environmental deteriorative effects on tires, includes the limitation “controlled amount.” Because the specification states “[a] ‘controlled amount’ of protic material is an amount up to that which inhibits the reaction of aniline with nitrobenzene, e.g., up to about 4% H2O based on the volume of the reaction mixture when aniline is utilized as the solvent[,]” the ITC concluded that the patentee acted as its own lexicographer, defined the term to mean “an amount up to that which inhibits the reaction of aniline with nitrobenzene,” and reasoned that the phrase “e.g., up to about 4% …” was not part of the definition because it was just an example and was inconsistent with one of the disclosed embodiments. Infringement & claim construction: While agreeing that the patentee acted as a lexicographer where it set off a term with quotation marks followed by the word “is,” the Fed Cir faulted the ITC for disregarding the phrase “e.g., up to about 4% …” Reasoning that the phrase was more than a mere example in light of another passage in the specification, the Fed Cir ruled that “vague language [in the specification] cannot override the express definitional language.” Slip op. at 10. Moreover, a claim does not need to cover every disclosed embodiments and examples, especially where the disclosed example is one of 21 distinct embodiments and relates to a different reaction than the one in the claims. “Where, as here, multiple embodiments are disclosed, we have previously interpreted claims to exclude embodiments where those embodiments are inconsistent with unambiguous language in the patent’s specification or prosecution history.” Id. at 11. The Fed Cir also rejected the patentee’s claim differentiation argument where the express definition does not render the two claims identical in scope. Although the correct claim construction precludes literal infringement, the Fed Cir remanded the matter to the ITC to address infringement by equivalents.
In her dissent, Judge Newman argued that the majority “made findings contrary to the detailed and unchallenged text of the patent specifications, and have construed the claims so that they exclude a major part of the invention described in the patents.” Dissent slip op. at 1.
PTO Incorrectly Excluded Evidence In Interference Proceeding; Actual Reduction to Practice Requires Proof That Invention Worked for Its Intended Purpose In re Garner In re Garner Date: December 5, 2007 Panel: Rader, Schall, Moore Author: Moore District court: BPAI Trial judge: Summary: Fed Cir affirms BPAI’s conclusion that junior party failed to make a prima facie showing of priority in interference proceeding. The BPAI refused to consider evidence of priority that Garner failed to timely submit with his Rule 202(d), and concluded that there was no good cause for the untimeliness. At the threshold, the Fed Cir refused to review the PTO’s interpretation of its own regulations under the de novo standard, holding that the “agency’s interpretation of its own regulations is entitled to substantial deference and will be accepted unless it is plainly erroneous or inconsistent with the regulation.” Slip op. at 4. Despite this deferential standard, the court of appeals concluded that the PTO’s interpretation of Rule 202(d) was incorrect because it created an internal inconsistency between subsections (a) and (d) of Rule 202. The BPAI thus erred in excluding Garner’s evidence. But even with the priority evidence as part of the record, the Fed Cir ruled that the evidence was insufficient to corroborate an earlier actual reduction to practice date, because there was no evidence that the device operated or worked for its intended purpose. “[C]orroboration of the existence of the device is not sufficient in this case to establish corroboration of reduction to practice. It is also necessary to corroborate that the device worked for its intended purpose.” Slip op. at 8.
Prosecution Statement Is Not A Clear and Unambiguous Disclaimer Where It Is Inconsistent With Other Portions of the Prosecution History and Results in A Non-Operable System Elbex Video, Ltd. v. Sensormatic Electronics Corp. Elbex Video, Ltd. v. Sensormatic Electronics Corp. Date: November 28, 2007 Panel: Dyk, Moore, Cote (dissent) (sitting by designation) Author:Moore District court: S.D.N.Y. Trial judge: Owen Summary: Fed Cir affirms in part, reverses in part, and remands summary judgment of noninfringement. The patent-in-suit relates to CCTV systems which include a supervisory station and several remote-controllable television cameras. Claim construction: The parties disagreed whether the patentee’s statement during prosecution was a prosecution disclaimer. The Fed Cir ruled that the patentee’s statements during prosecution were not clear and unmistakable enough to constitute prosecution disclaimer, because (i) the prosecution statement was unsupported by the specification or drawings, (ii) other portions of the prosecution history considered as a whole renders the statement ambiguous, (iii) the infringer’s expert admitted that the prosecution statement, if taken literally, would result in an inoperable system. Infringement: The Fed Cir agreed that the district court properly granted summary judgment of noninfringement on two of the three accused Sensormatic systems. But on the third system, the court of appeals ruled that there were material disputes of facts, and on this basis, reversed summary judgment as to this system and remanded.
In dissent, Judge Cote, U.S. District Judge for the Southern District of New York sitting by designation, argued that the prosecution history was clearly and unambiguously a disclaimer.
Where Specification Is Silent On Desired Result for The Function-Way-Result Test, Courts Should Turn to The Skilled Artisan Stumbo v. Eastman Outdoors, Inc. Stumbo v. Eastman Outdoors, Inc. Date: November 28, 2007 Panel: Schall, Bryson, Moore Author: Moore District court: D.Colo. Trial judge: Matsch Summary: Fed Cir affirms summary judgment of noninfringement. Claim construction: The claims-in-suit, which relates to a portable and collapsible hunting shelter or blind that allows quick and easy set-up, require a “closable vertical opening.” The Fed Cir construed this limitation to mean a slit-like shape instead of any shape that is longer than it is wider, because (i) the patentee’s incorrect construction would render another claim limitation redundant and superfluous, (ii) the specification’s disclosed embodiment is consistent with an opening having a slit-like shape, and (iii) the summary of the invention does not compel the patentee’s incorrect construction. The Fed Cir distinguished CCS Fitness [288 F.3d 1359 (Fed. Cir. 2002)], where it held that “reciprocating members” covered all possible configurations, because the only workable shape here is the slit-like shape. “A linear slit is the only fathomable shape of an opening with the described characteristics…. There is nothing in the specification to suggest that the patentee contemplated that any other shape of opening could work with this invention.” Slip op. at 8. Noninfringement: There was no dispute on literal infringement under the adopted construction. With regards to the Doctrine of Equivalents, the patentee argued that the accused infringer’s discussion of safety factors associated with the result prong of the function-way-result test was irrelevant. The court disagreed: “We have indeed held in prior cases that the function-way-result test focuses on ‘an examination of the claim and the explanation of it found in the written description of the patent.’ … When the claims and specification of a patent are silent as to the result of a claim limitation, as they are in the ‘338 patent, we should turn to the ordinarily skilled artisan.” Slip op. at 10. Because the accused infringer presented evidence that a skilled artisan would consider safety and the patentee only offered conclusory evidence or no evidence at all, summary judgment of noninfringement by equivalents was proper.
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.