Two recent Federal Circuit decisions highlight that, whether construing claims at the district court or PTAB, the key to a proper claim construction is the patent's specification and that claim construction may determine a case outcome.
A Construction Excluding a Preferred Embodiment is Erroneous and Disclaimers in An IPR Proceeding Only Bind Patent Owners in Subsequent Proceedings
Holding
In CUPP Computing AS v. Trend Micro Inc., 2020-2262, 2020-2263, 2020-2264 (Fed. Cir. Nov. 16, 2022), the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed the claim construction of the Patent Trial and Appeal Board (“the Board”) in three related inter partes review (“IPR”) proceedings,1 precedentially holding that the Board need not accept a Patent Owner's disclaimer within an IPR.
Background
The claim was directed to a mobile security system and the limitation at issue read: “the mobile device having a mobile device processor different than the mobile security system processor.” Patent Owner CUPP argued that the claim required the security system processor to be “remote” from the mobile device processor. Id. at *4. Since the asserted references taught a security processor bundled within a mobile device, the references did not render the claimed invention obvious. Id.
The Board disagreed, construed the limitation as not requiring “that the security system processor be remote from the mobile device processor,” and issued final written decisions of unpatentability for obviousness. Id.
Federal Circuit Decision
On appeal CUPP insisted that “different” meant “remote,” requiring the “security system processor” be “remote” (i.e., not contained within the same mobile device) from the “mobile processor.” The Federal Circuit found CUPP's arguments unpersuasive because such a reading would have excluded a preferred embodiment. Id. at *6. The “preferred embodiment[]” was described as having “the mobile security system . . . incorporated within the mobile device.” Id. Thus, the Federal Circuit affirmed the Board's construction that “‘different' simply means ‘dissimilar.'” Id.
The Federal Circuit also rejected CUPP's argument that “it disclaimed a non-remote security system processor” during examination because the alleged disclaimer was not unmistakable. Id. at *9. During prosecution, the examiner rejected claims over prior art that taught a “stand-alone chip attached to a PC motherboard.” Id. CUPP overcame this rejection by arguing that the prior-art chip would be “‘part of the motherboard of the mobile devices,' rather than being a separate processor.” Id. The Federal Circuit held that this was not an unmistakable disclaimer of a non-remote processor because CUPP's argument could plausibly be read to mean that the prior art “failed to teach different processors because [the chip] lacks a distinct processor.” Id. at *10.
Finally, the Federal Circuit rejected CUPP's argument that the Board should have accepted “CUPP's disclaimer in the IPRs themselves, disavowing a security system processor embedded in a mobile device.” Id. CUPP argued that the Board should have interpreted the claim language according to CUPP's disclaimer during the IPR proceeding. In making this argument, CUPP relied on Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353 (Fed. Cir. 2017) and interpreted the case to state that a patent owner's disclaimer during an IPR can narrow claim scope. Id. The Federal Circuit rejected this reading of Aylus, clarifying that Aylus only binds what a patent owner may argue in a subsequent proceeding. Id.
The Federal Circuit further stated that CUPP's argument would violate Congress' intent in establishing the IPR process. It noted that, while Congress created the IPR process to “giv[e] the Patent Office significant power to revisit and revise earlier patent grants,” CUPP's proposed rule (requiring the Board to countenance a disclaimer in the same proceeding in which it was made) “would frustrate the Patent Office's power to ‘revisit' the claims it granted, and require focus on claims the patentee now wishes it had secured.” Id. at *11. The Federal Circuit further recognized that CUPP's argument would render superfluous the “specialized process for patentees to amend their claims in an IPR.” Id. at *12.
Designating its opinion as precedential, the Federal Circuit ruled that, “disclaimers in an IPR proceeding are not binding in the proceeding in which they are made.” Id. at *13.
A Construction Importing Embodiments from the Specification into the Claims is Erroneous.
Holding
In Blazer v. Best Bee Brothers LLC, No. 2022-1033 (Fed. Cir. Nov. 16, 2022), the Federal Circuit vacated and remanded a district court's decision granting summary judgment of noninfringement due to its incorrect construction of “receptacle adapter.”
Background
Blazer and Best Bee Brothers (“BBB”) both sell carpenter bee traps. Id. at *6. Blazer owns U.S. Patent No. RE46,421 (“'421 Patent”), which is directed to improved traps to lure and capture carpenter bees through use of ambient light. Id. at *2–3. “The claimed bee traps include at least one attachable and disposable receptacle, a trap entrance unit, and a ‘receptacle adapter' for attaching the receptacle to the trap entrance unit.” Id. at *3 (citing '421 Patent, abstract; id. col. 2, ll. 42–45).
Blazer and BBB entered into a license agreement, pursuant to which they worked together to produce traps according to the patent. Id. In 2020 Blazer sued BBB for willful infringement of the '421 Patent because BBB continued to market carpenter bee traps after the license term expired. Id. at *6. BBB moved for summary judgment of non-infringement.
In October 2021, the district court issued an order construing “receptacle adapter” to mean an adapter that is (1) “substantially located at the bottom of the carpenter bee trap, at the exit opening of the trap entrance unit”; (2) “configured to receive a clear or translucent receptacle”; (3) “adapted so as to allow at least some ambient light to enter the interior of the trap entrance unit via the exit opening, thereby providing a secondary attractant for carpenter bees”; and (4) either (a) “a coupling,” (b) “a vertical bore sized to allow the insertion of a receptacle which is retained by friction,” or (c) “a vertical bore threaded or fitted with a threaded insert to positively retain the receptacle.” Id. at *1–6.
The district court granted BBB's motion based on this construction, concluding that a reasonable factfinder could not find that the accused traps contained a receptacle adapter or an equivalent feature. Id. at *6 (citing Blazer, 2021 WL 4552784, at *1–6). Blazer appealed.
Federal Circuit Decision
Though the Federal Circuit agreed with the district court that the parties' proposed constructions were incorrect, the Court also concluded that the district court's construction was legally unsound. Id.
According to the Federal Circuit, the district court's construction “erroneously import[ed] limitations into ‘receptacle adapter' based on particular embodiments described in the specification.” Id. at *9. As the Court pointed out, the district court's “error is confirmed by the patent's dependent claims,” which recited specific “receptacle adapter” embodiments that the district court's narrow construction of the term would exclude. Id. at *9–10.
The Federal Circuit also rejected BBB's proposed construction because it was “contrary to the specification.” Id. Specifically, BBB's construction would require the “receptacle adapter” to be a “separate” device to connect a receptacle to the bottom of a wood plenum, whereas the specification “clearly indicates that the phrase [also] covers . . . non-separate-device embodiments such as friction-fit and screw-fit holes.” Id. Blazer's construction was also incorrect because it did not include the device's “retention” function as indicated in the specification. Id. at *11.
Determining the correct construction, the Federal Circuit stated that the claims and specification “establish[ed] that a ‘receptacle adapter' may be a hole,” “that it functions to receive a receptacle,” and that it “perform[s] some retention function.” Id. at *11. Thus, the court construed “receptacle adapter” to mean “a structure configured to receive and help retain a receptacle.” Id. at *11.
Because the district court's judgment of non-infringement depended on its flawed construction of “receptacle adapter” that “improperly limited [the term] to three embodiments from the specification,” the Federal Circuit vacated that judgment and remanded the case for further proceedings. Id. at *12.
Takeaways
Practitioners should carefully consider the language used when drafting a patent application. In Blazer, the Federal Circuit explained that “[a]lthough courts must read a patent's claims in light of the specification, . . . that obligation does not authorize ‘reading a limitation from the written description into the claims,' which we have described as ‘one of the cardinal sins of patent law.'” Id. at *9 (quoting SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001).
Likewise, when construing claim terms, practitioners should ensure that a proposed construction does not exclude embodiments in the specification. In CUPP, the Patent Owner's proposed (and rejected) construction of “different” would have read one of the proposed embodiments out of the specification. But “[t]he best construction is one that accommodates the range of plainly stated embodiments and identifies a common property” among all embodiments sharing the claimed element. Blazer, at *10.
Additionally, the CUPP decision highlights that while the vagaries of litigation arguments cannot be entirely anticipated during prosecution, only clear and unmistakable disavowals will trigger prosecution history estoppel.
Finally, Patent Owners should take note that a disclaimer during an IPR proceeding will only take effect in future proceedings. Any desired changes to a claim during an IPR must be pursued through established procedures for amending claims during the IPR.
Footnote
1. IPR2019-00764, -00765, and -00767.
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