United States: Recent Federal Circuit Patent Decisions

On appeal from a district court holding the patent indefinite and therefore invalid, the Federal Circuit held that "close questions of indefiniteness involving issued patents are properly resolved in favor of the patentee." Bancorp Servs., LLC v. Hartford Life Ins. Co. (March 1, 2004). The Court stressed that if the meaning of a claim term is difficult to ascertain, but nonetheless discernible, the claim should not be invalid for indefiniteness. The claim term at issue, while not defined in the patent, corresponded to a compound term whose components had well-recognized meanings allowing one of ordinary skill in the art to infer the claim term’s overall meaning. Moreover, the claim term was substantially similar to a second term used and defined throughout the patent. Because of this association, the claim term was held to be equivalent to the second term, thus avoiding a finding of indefiniteness. Practice Tip: To avoid costly litigation, patent prosecutors should be consistent in their terminology and precise when defining claim terms.

When a claim uses an open transition phrase, such as "comprising," in combination with the article "a" or "an" before a claim element or step, there is a presumption that the article will be interpreted to mean one or more elements or steps unless there is evidence in the specification of a clear intent to limit the claims. Scanner Techs. Corp. v. Icos Vision Sys. Corp., N.V. (April 23, 2004). The Federal Circuit overruled a district court’s finding of non-infringement, both literally and under the doctrine of equivalents, while explaining that the claim limitation "an illumination apparatus" was not limited to a single illuminating source. Neither the claim language nor the specification evidenced a clear intent to limit the claims and, therefore, the use of the term "an" was found to be consistent with multiple illumination sources. Practice Tip: Applicants who desire a broad claim interpretation should be careful in drafting the specification such that the patentee’s intent is clearly reflected and properly construed in litigation.

Applying the Supreme Court’s decision in Pfaff v. Wells Elecs., Inc., the Federal Circuit reversed a district court opinion holding an invention invalid as a result of the on-sale bar of 35 U.S.C. § 102(b). Elan Corp., PLC v. Andrx Pharm., Inc. (May 5, 2004). The onsale bar of Section 102(b) applies only to products that are ready for patenting and are "the subject of a commercial offer for sale" prior to the critical date of one year before the application filing. Because the patentee was not offering to sell his invention, but rather offering a license under the future patent for the licensee to become a partner in clinical testing and marketing of the invention at some unspecified future date, the Court found the patentee’s letters not to be commercial offers for sale. Beyond proposing a licensing fee schedule and a general comment pertaining to the potential product’s 500 mg weight, the letters did not contain critical terms of a proposed agreement of sale, such as quantities, time of delivery, place of delivery or product specifications. The Federal Circuit explained that "a communication that fails to constitute a definite offer to sell the product and to include material terms is not an ‘offer’ in the contract sense" and therefore does not evidence a commercial offer for sale. Practice Tip: Applicants must be precise in drafting license agreements and other related documents prior to the critical date to avoid the 35 U.S.C. § 102(b) on-sale bar.

In an opinion addressing whether statements made in the preamble of a claim are limitations, the Federal Circuit held that "a claim preamble is limiting if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim." Intirtool, Ltd. v. Texar Corp. (May 10, 2004). The patentee’s claim preamble called for "a hand-held punch pliers for simultaneously punching and connecting overlapping sheet metal . . . ." Moreover, the patentee added a figure during prosecution illustrating the overlapping connection as described by the preamble. However, the district court found by clear and convincing evidence that the pliers described in the specification and figures were capable of only punching and not simultaneously connecting overlapping sheet metal. The Federal Circuit found that the body of the claim was structurally complete, such that the preamble did not affect the structure of steps of the body, and that the preamble was not relied on in prosecution to distinguish the claimed invention from the prior art. As a result, the preamble was not a claim limitation, but rather a patentably insignificant statement of benefits or features of the claimed invention. Similarly, the Court found that the claims were not invalid for lack of an adequate written description. Practice Tip: To avoid unwanted preamble limitations, applicants must be clear in drafting claims such that the body of each claim is structurally independent from the language of the preamble. Furthermore, proper support for each limitation should always be described in the written description.

In In re Ngai (Nonprecedential, March 8, 2004; Precedential, May 13, 2004), the patent applicant appealed, among other things, the final rejection of an apparatus claim directed at a prior art kit comprising instructions for carrying out a new method. The examiner rejected the claim, noting that the only difference between the prior art and the apparatus claim was the content of the instructions. While the patent applicant argued that the addition of new printed matter to a known product makes the product patentable, the Board of Patent Appeals affirmed the examiner’s final rejection, holding that the claim merely taught a new use for an existing product. On appeal to the Federal Circuit, the Patent Office argued that because there was no new and unobvious functional relationship between the printed matter (the instructions) and the substrate (the kit), the claim was anticipated. The Federal Circuit agreed with the Patent Office, finding that the printed matter does not depend on the kit and the kit does not depend on the printed matter. "All that the printed matter does is teach a new use for an existing product." The Court noted, however, that while the patent applicant was entitled to a method claim, he may not patent a known product with a new set of instructions. Practice Tip: Applicants should be aware that patent protection may be limited to method claims for inventions involving a new use for an old device.

The patentee in Honeywell Int’l v. Hamilton Sundstrand Corp. (June 2, 2004) asserted independent claims that were originally filed as dependent claims. During prosecution and in response to a rejection, the patentee rewrote the dependent claim in independent form while canceling the originally filed independent claim. The Federal Circuit held that a presumption of prosecution history estoppel under Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki applied because the patentee effectively added a new claim limitation to the originally filed independent claim and, therefore, limited the overall claim scope. Therefore, the patentee was presumptively estopped from recapturing equivalents pertaining to claim elements present in the originally filed dependent claim and later rewritten in independent form. The Federal Circuit remanded to determine whether the patentee could overcome the presumption by demonstrating that the amendment was not related to patentability. Practice Tip: As evidenced by the Court’s opinion in Glaxo Wellcome, Inc. v. Impax Labs, Inc. (discussed in the last newsletter), applicants are urged to disclose potential and readily known equivalents of claim elements present in original dependent claims and later rewritten in independent form in order to avoid surrendering claim equivalents.

In Linear Tech. Corp. v. Impala Linear Corp. (June 17, 2004), the Federal Circuit held that there is a rebuttable presumption that a claim term without the word "means" will not be interpreted as a means-plusfunction limitation subject to 35 U.S.C. § 112, ¶ 6. A party can overcome the presumption by demonstrating that the claim lacks sufficient structure or describes a function without sufficient structure for executing that function. Therefore, a limitation directed at a "circuit" followed by the circuit’s operation, without more, should not be interpreted as a means-plus-function limitation. Moreover, the Federal Circuit turned to technical treatises that establish the understanding of people of ordinary skill in the art and found that the term "circuit" suggests sufficient structure. In addition to connoting structure, the Court found that the claim limitation lacked the word "means" and, therefore, should not be subject to Section 112, ¶ 6.

In addition, the Court addressed a separate claim limitation directed at a "means . . . to vary the duty cycle." The parties disputed whether a class of circuits known as pulse width modulation ("PWM") circuits could be considered structure corresponding to the functional language of the claim. The Court held that while PWM circuits are not limited to a single structure, the class of circuits is recognizable to one of ordinary skill in the art and is properly linked to the function recited in the claim via the specification and prosecution history. Practice Tip: Applicants should be aware of the rebuttable presumption against the application of Section 112, ¶ 6 when the term "means" is not utilized in a claim. Furthermore, applicants should also be aware that classes of structure identifiable by a person of ordinary skill in the art can qualify as structure corresponding to a means-plus-function’s recited function.

In Ron Nystrom v. Trex Company, Inc., et al. (June 28, 2004), the Federal Circuit held, among other things, that the trial court erroneously construed three claim limitations directed to a board shaped to shed water while still providing a comfortable surface to walk and stand. Construing the terms broadly, the Court looked to the dictionary for the ordinary and customary definitions so that the language of the claims themselves remained the focus of the analysis. Finding multiple definitions, for instance, with respect to the term "board," the majority overruled the trial court’s narrow interpretation requiring a "board" to be made from wood cut from a log. The majority further noted that Federal Circuit precedent established that "claim terms may be construed to encompass all dictionary definitions not inconsistent with the specification." Therefore, the patentee’s references in the specification to a superior product when cut from a log and patentee’s further statements in the prosecution history distinguishing prior art not made from wood, although pertinent to a preferred embodiment of the invention and to patentee’s argument against the examiner’s obviousness rejection, are not sufficient to narrow the claim scope.

In contrast, the dissent argued that the majority misinterpreted its own precedent, which requires a court to look to the intrinsic record when presented with claim terms with multiple plausible meanings. Because the intrinsic record used the disputed term only in the context of the narrower definition, the dissent concluded that the district court properly construed the term "board." The dissent’s theme indicates that the majority merely created a conflict between dictionary definitions and chose one to support its conclusion. Practice Tip: Applicants should be aware that Federal Circuit judges are prone to disagree with their own precedent regarding claim construction. As a result, the safest path requires applicants to clearly define and consistently use claim terms throughout the specification and during prosecution. Careless use of claim terms to explain a preferred embodiment or to argue against an examiner’s motivation to combine references in a rejection may lead to a narrowed claim scope.

In an order similar to Enzo Biochem, Inc. v. Gen-Probe Inc. (2002), the Federal Circuit denied a petition for an en banc rehearing of University of Rochester v. G.D. Searle & Co., Inc., and therefore chose 7-5 not to resolve the growing conflict between the written description and enablement requirements of the Patent Act. Two of the five opinions filed with the order stated that Section 112 of the Act has always required a written description requirement separate from the enablement requirement and, therefore, no en banc review was necessary. Judge Lourie wrote separately, stating that not only was precedent consistent, but that the failure to adequately describe one’s invention creates a presumption that the applicant did not invent the claimed subject matter. In a separate opinion, Judge Dyk avoided the issue and concurred with the majority to the extent that this was neither the time nor the place to consider difficult questions related to written description requirements applied to various technologies.

Three dissenting opinions strongly disagreed with the majority and expressed their desire to clarify and correct the confusing jurisprudence regarding the written description requirements of the Act. According to Judge Newman, the issue of whether Section 112 contains a separate written description requirement had "percolated enough" and was now "ripe for en banc resolution." Similarly, Judge Rader dissented, stating that the Court has not taken a uniform approach regarding the purpose and meaning of the written description requirement. Vehemently opposing recent opinions requiring a written description to support the claims, he recommended that the Court utilize the written description requirement only as a means to prevent applicants from adding new inventions to old disclosures. In a similar vein, Judge Linn wrote separately, offering his opinion that the statute required a written description of the invention only to enable one of ordinary skill in the art to make and use the invention and practice the best mode.Practice Tip: Although a significant minority of Federal Circuit judges feel that Section 112 does not require a written description requirement separate from the enablement requirement, applicants must be aware of the intra-circuit split and cautiously provide adequate support in the specification for the claimed subject matter.

As stated in our previous newsletter, we are awaiting a released decision regarding a closely watched case addressing whether the law of willfulness needs to be changed. Oral arguments were heard on February 5, 2004 as to whether the precedent regarding drawing adverse inferences with regard to willful patent infringement should be overruled. Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp. (oral argument February 5, 2004). We will report any released decision in our next newsletter.

In our previous article we were excited to report "A Victory Over Lemelson." In review, the U.S. District Court for the District Court of Nevada found 14 patents purportedly covering bar code and machine vision technology invalid, not infringed and unenforceable. Symbol Technologies, Inc., et al. v. Lemelson Medical, Educational and Research Foundation, Ltd. (January 23, 2004).

Since the Court’s judgment in late January 2004, Lemelson filed a series of post-trial motions for, among other things, additional findings of fact and altered or amended judgment with respect to inconsistencies and the application of the judgment to non-asserted claims. Addressing these motions, the District Court recently held that no additional findings of fact are required to sustain the original judgment’s conclusions of law regarding invalidity, non-infringement and unenforceability. Furthermore, while the Court amended an inconsistency in its original judgment regarding the written description of the Patent Act, the Court denied Lemelson’s motions regarding the non-asserted claims. The non-asserted claims of the 14 patents were held invalid because they were not properly enabled. In addition, the non-asserted claims were held non-infringed because of the Court’s previous claim construction. Lastly, the Court agreed not to consider the unenforceability of the non-asserted claims until the conclusion of an appeal, if necessary. Symbol Technologies, Inc., et al. v. Lemelson Medical, Educational and Research Foundation, Ltd. (Orders and Amended Judgment dated May 27, 2004).

Lemelson filed a notice of appeal to the Federal Circuit on June 22, 2004. We will report any pertinent order or released decision in our next newsletter.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.