In a case designated by the Court as nonprecedential, the U.S. Court of Appeals for the Federal Circuit reversed a broad claim construction arrived at by the district court, noting that claim differentiation "cannot serve to give a patent scope beyond the invention it discloses." Black & Decker, Inc. v. Robert Bosch Tool Corp., Case Nos. 07-1243, -1244 (Fed. Cir., Jan.7, 2008) (Prost, J., non-precedential).
The patents-in-suit relate to a combination of a radio and a battery charger. Bosch appealed from a jury verdict, challenging the district court's broad construction of the term "power conversion circuit." Bosch contended that the proper construction should require a plurality of DC-to-DC converters that can convert an input DC voltage to a different output DC voltage, either higher or lower, in accordance with the multi-voltage battery charging function of the claim invention. Black & Decker (B&D) claimed that, by failing to object to the claim construction jury instructions and failing to argue claim construction in its motion for judgment as a matter of law (JMOL), Bosch had waived the ability to challenge those constructions.
Citing to the Seventh Circuit's "futility exception" the Court found Bosch had not waived its right to contest the claim issue, noting that since Bosch proposed and argued for its construction at the Markman hearing, "[o]bjection under Rule 51 was not required to preserve the right to appeal the Markman ruling."
On the substantive claim construction issue, the Federal Circuit found that the district court erred in applying the principle of claim differentiation. Rather, citing Phillips, the Court found that since the "power conversion circuit" must enable the battery to power the radio regardless of its voltage, "[a]ny presumption arising here from the dependent claims fails to override the proper construction of power conversion circuit provided by the claims, the specification, and the prosecution history."
Looking for the required linguistic "hook" to tie the claim language to the function described in the specification, the Court focused on the term "conversion," noting both the summary and preferred embodiment describe a circuit that adjusts voltage using a DC/DC converter to adjust (up or down) the power of the battery to allow it to power the radio. The Court also noted a remark (in the prosecution history) in which the applicant described the invention as including a power conversion circuit (PCC) that adjusts the voltage up and down.
As for obviousness, Bosch also argued that in view of KSR, the jury instructions regarding the standard for obviousness require a new trial or reversal of the jury's verdict finding the claims non-obvious. Although the Court agreed that the pre-KSR obviousness instruction was "inconsistent with KSR," the Court denied Bosch's request since it failed "to identify evidence in the record that could support a jury's verdict of obviousness even under the correct standard," further noting that the Federal Circuit's narrowed construction of the PCC claim term "does nothing to bolster Bosch's invalidity arguments."
The Federal Circuit also reversed the district court's pre-Seagate finding of willfulness, noting that should the district court consider that issue again on remand, B&D must prove the "infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent." The Federal Circuit broadly hinted that under this objective willfulness standard, both Bosch's legitimate defenses to infringement claims and its credible invalidity arguments "demonstrate the lack of an objectively high likelihood that a party took actions constituting infringement of a valid patent."
Practice Note: Apparently, the Federal Circuit will apply the "plain error" standard to those seeking a new trial based on a pre-KSR jury instruction or district court decision and will require a specific showing that post-KSR the original validity determination should be different.
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