Posts Tagged: "claim construction"

Patent litigants have long expected an appeal to follow nearly every jury verdict and that a key question (if not the key question) on appeal will be the district court’s construction of one or more disputed claim terms. Syntrix’s recent infringement verdict against Illumina would be seen as no exception if not for what happened the very next day — the Federal Circuit’s decision to rehear en banc the panel’s decision in Lighting Ballast Control LLC v. Philips Electronics N. Am. Corp. to consider whether to reset the standard of review for claim construction, long recognized as a question of law reviewed de novo on appeal.

Over a dissent by Judge Wallach, Judges Clevenger and Lourie strictly interpreted the “antecedent basis” in the claims, resulting in a reversal of the trial judge’s claim interpretation, and a remand for him to reconsider his patent infringement judgment. It would probably have helped the patentee if the description had included broadening statements regarding the type of data that may be generated, stored and transmitted. Claim language is given the “broadest reasonable interpretation” during examination at the U.S. Patent and Trademark Office, but a Federal Court’s “entirely reasonable” interpretation will often be significantly narrower, even when the claim has a “comprising” transition and generic terminology.

Even if the BRI rule made sense in 1932—and it is not clear to me that it ever made sense—the rule no longer makes sense. Dramatic changes in the field of patents have undermined even the alleged reasons for the BRI rule. The solution to the problem of the BRI rule is to replace it with the only rule that is natural and makes sense. After 80 years of inventors suffering under the BRI rule, it is time for Congress or the Supreme Court to say: regardless of whether the patent application has been granted, the claims mean the exact same thing. Always.

The functionality issue, as it relates to design patent claim scope, mysteriously vanished from the district court’s application of design patent law between the December 2011 issuance of the Order denying preliminary injunction and the August 2012 issuance of the Final Jury Instructions. By failing to expressly identify non-ornamental (functional) features of Apple’s design patents and instruct the jury that such features were not to be considered in its infringement analysis, the district court materially, and perhaps fatally, prejudiced Samsung’s non-infringement defenses. The district court unleashed a “free range jury” that was unconstrained in its ability to forage for patentable subject matter that could be used to evaluate infringement among the functional features disclosed in Apple’s design patents.

The question of whether a term is defined adequately is really a legal question, so the views and opinions of those who are not well versed in the law are hardly probative. Inventors invent and patent attorneys describe those inventions to satisfy the legal requirements. If inventors could describe their inventions to meet the legal requirements they wouldn’t need patent attorneys, but we all know that inventors who represent themselves make numerous errors and always obtain far more narrow protection than they would have been entitled to receive. They just don’t understand the law well enough and are not qualified to offer opinions on matters of law.

In what seems to be a continuing trend, the United Stats Court of Appeals for the Federal Circuit is continuing to show increasingly little tolerance for abusive patent litigation tactics. In the most recent pronouncement along these lines the Federal Circuit, per Judge O’Malley (with Judges Newman and Prost joining), ruled the district court appropriately awarded the defendant $3,873,865.01 in attorney fees and expenses under § 285, as well as $809,788.02 in expert fees.

I have wondered out loud whether the Judges of the Federal Circuit realize that the outcome is unpredictable until the panel has been announced. It seems that at least some do. How is that defensible? How do others not on the Court not see a problem? The law needs to be certain and predictable and at the Federal Circuit far too many times it is neither. Claims construction is but one of the areas as clear as mud. The Federal Circuit was created to bring certainty to the law, but what has transpired over the course of the last 10 years or so seems to be anything but certainty and stability. For crying out loud a patent is a property right and for any property rights regime to flourish it must be stable and certain! In the words of this generation: OMG!

Whether the term “body” encompassed “multi-piece” structures became the crux of the claim construction issues in Retractable Technologies. The District Court for Eastern Texas, apparently applying the doctrine of claim differentiation, construed independent Claims 1 and 43 to cover a “body” which might be a “multi-piece” structure. Accordingly, the District Court denied post-trial motions by the alleged infringer (Becton Dickinson or “BD”) to overturn the jury verdict that BD infringed these Claims of the ‘224 patent. Judge Lourie (writing for the panel majority) reversed the District Court, ruling that the term “body” was limited to a “one-piece” structure in light of the ‘224 patent specification.

I would also like to take issue with Judge Dyk’s statement that it would simply be easier, and better, to say that anything in the preamble is limiting. Yes, that would certainly be easier and probably a better approach than the nebulous standard presently in place, but I doubt that would be to the Supreme Court’s liking given they seem to detest bright line rules, even when they make sense. I also protest such an approach because that has, as far as I can tell, never been the law, or at least not at any time during my practice career. So regardless of whether it is a better test it absolutely should not be applied retroactively to affect those rights obtained under the belief that what is in the preamble is not limiting.

Nothing in the appealed issues in Pressure Products (claim construction, denial of motion for JMOL, leave to amend answer) even remotely hints at or suggests the basis for this five judge panel. In fact, Pressure Products has all the markings of a fairly ordinary, garden variety patent infringement case. So why not the standard three judge panel? Not a word of explanation.

The meaning of words often depends on the context in which they appear.  That principle is also true of terms which appear in patent claims.  In Ultimax Cement Manufacturing Corp. v. CTS Cement Manufacturing Corp., the Federal Circuit reaffirmed that the context matters in reversing a district court grant of summary judgment that certain patent claims were not infringed or…

The attorneys for 800 Adapt, Inc. have recently filed a Petition for a Writ of Certiorari review of 800 Adapt, Inc. v. Murex Sec. Ltd., 539 F.3d 1354 (Fed. Cir. 2008) claiming that the Federal Circuit does not provide enough deference to district courts on claim construction and they should. According to Stephen Milbrath and David Magana of Orlando based Allen…