IN THIS ISSUE
- Patents / Claim Construction - Disputed Claim Terms? First Look Them Up in a Dictionary
- Patents / Claim Construction - Is Claim "Substantially" Definite? Ask Person of Skill in the Art
- Patents / Prosecution / Litigation - Statements Made during Prosecution May Be Used to Interpret Claim Language Not Found in Specification
- Patents - Preamble Using Conjunctive "and" Does Not Limit Meaning of "or" in the Body of Claim
- Patentability / Obviousness - Motivation to Combine References Found in Benefit Generally Known to Those of Ordinary Skill
- Patents / Interference - Federal Circuit Declines to Adopt Per Se Rules for Evidence of Conception and Reduction to Practice
- Patents / USPTO - USPTO Issues Examination Guidelines for Sec. 102(e)
Disputed Claim Terms? First Look Them Up in a Dictionary
By Shamita D. Etienne-Cummings
In rejecting most of the district court's claim construction rulings, the U.S. Court of Appeals for the Federal Circuit relied heavily on dictionary definitions to interpret disputed claim terms. Texas Digital Systems, Inc. v. Telegenix, Inc., Case No. 02-1032 (Fed. Cir. October 16, 2002).
The patents-at-issue described the methods and devices used to control the color of pixels in a light emitting diode (LED) display. Every asserted claim used the phrase, "repeatedly substantially simultaneously activating," to describe the manner in which the LEDs are displayed. The district court construed this term to mean that during a particular period of repetition, two separate LEDs were on at the same time. In other words, the district court interpreted the term "activating" to be synonymous with "on."
On appeal, Telegenix argued that the district court erred in its interpretation because the ordinary meaning of the term "activating" means that the LEDs are simultaneously in the process of being turned on, rather than actually being simultaneously on.
The Federal Circuit agreed, finding that the district court ignored the ordinary meaning of the term "activating." The Court explained that to properly construe a disputed claim term the analysis begins with a relevant technical dictionary to "ascertain the ordinary meaning to one skilled in the art." The Federal Circuit reasoned that "consulting the written description and prosecution history as a threshold step in the claim construction process, before any effort is made to discern the ordinary and customary meanings attributed to the words themselves, invites a violation of our precedent counseling against importing limitations into the claims." Applying the technical dictionary definition, the Federal Circuit construed the term "activating" to mean the start of an operation, a definition it found was consistent with the intrinsic evidence.
The Federal Circuit, using the same "dictionary first" methodology, proceeded to construe the remaining eight claim terms/phrases in dispute and remanded the case to district court.
Is Claim "Substantially" Definite? Ask Person of Skill in the Art
By Paul Devinsky
In reversing a summary judgment of invalidity, the U.S. Court of Appeals for the Federal Circuit found that the district court, by failing to look beyond the intrinsic claim construction evidence to consider what a person of skill in the art would understand in a "technologic context," erroneously concluded the term "substantially" made a claim fatally indefinite. Verve, LLC v. Crane Cams, Inc., Case No. 01-1417 (Fed. Cir. November 14, 2002).
The patent in suit related to an improved push rod for an internal combustion engine. The patent claims a hollow push rod whose overall diameter is larger at the middle than at the ends and has "substantially constant wall thickness" throughout the rod and rounded seats at the tips. The district court found that the expression "substantially constant wall thickness" was not supported in the specification and prosecution history by a sufficiently clear definition of "substantially" and was, therefore, indefinite. The district court recognized that the use of the term "substantially" may be definite in some cases but ruled that in this case it was indefinite because it was not further defined.
The Federal Circuit reversed, concluding that the district court erred in requiring that the meaning of the term "substantially" in a particular "technologic context" be found solely in intrinsic evidence: "While reference to intrinsic evidence is primary in interpreting claims, the criterion is the meaning of words as they would be understood by persons in the field of the invention." Thus, the Federal Circuit instructed that "resolution of any ambiguity arising from the claims and specification may be aided by extrinsic evidence of usage and meaning of a term in the context of the invention." The Federal Circuit remanded the case to the district court with instruction that "[t]he question is not whether the word 'substantially' has a fixed meaning as applied to 'constant wall thickness,' but how the phrase would be understood by persons experienced in this field of mechanics, upon reading the patent documents."
The Federal Circuit cited its recent decision in Ecolab Inc. v. Envirochem, Inc. for the proposition that "the term 'substantially' is a descriptive term commonly used in patent claims to 'avoid a strict numerical boundary to the specified parameter.'"
Statements Made during Prosecution May Be Used to Interpret Claim Language Not Found in Specification
By George L. Hampton
The U.S. Court of Appeals for the Federal Circuit has held that statements made during prosecution may be used to interpret an ambiguous term not defined in the specification. All Dental Prodx, LLC v. Advantage Dental Prods., Inc., Case No. 02-1107 (Fed. Cir. Oct. 25, 2002).
Advantage owns a patent directed to a method for making a custom dental impression tray. Advantage's patent has two independent claims containing limitations to "an original unidentified mass of thermosetting material." The term "original unidentified mass" is not defined in the specification.
All Dental sought a declaratory judgment that the Advantage patent was invalid and not infringed by its product. The district court granted summary judgment of non-infringement because All Dental's products have a specific pre-formed shape and size and are, thus, not an "unidentified mass." Additionally, the court held independent claims invalid for indefiniteness and lack of written description.
On appeal, the Federal Circuit reversed, holding "the failure of the specification to specifically mention a limitation that later appears in the claims is not a fatal one when one skilled in the art would recognize upon reading the specification that the new language reflects what the specification shows has been invented." With respect to indefiniteness, the Court held that statements made during prosecution concerning what the prior art "did not teach or disclose" and concerning what the claimed invention "teaches away from" could be used to clarify the meaning of the disputed term. Because these statements disclaimed the use of a specific shape and did not embrace any specific form, the Court held, "the meaning of the phrase 'original unidentified mass,' … is indeed definite and clear."
Preamble Using Conjunctive "and" Does Not Limit Meaning of "or" in the Body of Claim
By Paul Devinsky
In reversing an order granting partial summary judgment of non-infringement, the U.S. Court of Appeals for the Federal Circuit found "clear and convincing evidence" that the claims were improperly construed. Schumer v. Laboratory Computer Systems, Inc. (Fed. Cir. October 22, 2002). The patent in suit, the `492 patent, relates to digitizing tablets, or "digitizers," which are computer peripherals that translate a user's hand motions or instructions into digital coordinates suitable for use by a computer system. The `492 patent involves methods implemented through hardware or software that add additional capabilities to conventional digitizing tables.
The district court construed the claim preamble, which states that the device "has a point of origin and has an angle of rotation with respect to the digitizer and has a scale," as requiring that the device have all three of these attributes, i.e., a point of origin, angle of rotation and scale. As the drivers in the accused device did not have an angle of rotation, the district court granted summary judgment of non-infringement.
The district court did not address infringement under the doctrine of equivalents, concluding that "[b]ecause the Court found no literal infringement of the `492 patent, it need not address the non-infringement arguments under the doctrine of equivalents." Finally, the district court found certain claims invalid under §102(b) as anticipated by a driver that the defendants developed and licensed, determining that the driver was publicly "available more than one year prior to" the effective filing date of the application for the `492 patent.
As for the claim construction issue, the Federal Circuit reversed, finding that the preamble "simply describes features that necessarily exist in any coordinate system for a digitizer-a point of origin, an angle of rotation and a scale. The preamble does not specify how the device is to operate with respect to those features." Thus, the Federal Circuit found "the language of the preamble is superfluous" and "not a claim limitation."
With regard to the body of the claim, where the claim recited the coordinate system indicia in the alternative, i.e., using the word "or," the Federal Circuit found that the district court "effectively substituted the word 'and' from the preamble for the word 'or' used in the body of the claim." This construction "contradicts the plain meaning of the word 'or' in the claims. The proper approach is to construe the claim language using standard dictionary definitions, because here, the claims have no specialized meaning." Thus, the Court found that the claimed "method is performed if any of the three features of a coordinate system is translated, and thus, infringement occurs if any one of these translations is performed."
As for the doctrine of equivalents, the Court noted that "[t]he district court's failure to analyze infringement under the doctrine of equivalents is also reversible error. The district court's statement that '[b]ecause the Court has found no literal infringement … it need not address the non-infringement arguments under the doctrine of equivalents,' is simply wrong as a matter of law. Failure of literal infringement is precisely the realm in which the doctrine of equivalents operates."
Finally, the Federal Circuit reversed the district court's finding of anticipation, noting that "[e]vidence of invalidity must be clear as well as convincing. Typically, testimony concerning anticipation must be testimony from one skilled in the art and must identify each claim element, state the witnesses' interpretation of the claim element and explain in detail how each claim element is disclosed in the prior art reference. The testimony is insufficient if it is merely conclusory." The Federal Circuit cautioned against using "confusing or general testimony to determine whether a case of invalidity has been made out, particularly at the summary judgment stage."
Here, the Federal Circuit found the declarations relied on by the district court to "lack the requisite clarity," noting that they merely set forth the declarant's understanding of the operation and steps performed by prior art software driver and the declarant's understanding of what was known to one of ordinary skill prior to the invention. The Court found that the declarations did not clearly describe the operative steps of the claimed method or how those operative steps are performed by the prior art.
Motivation to Combine References Found in Benefit Generally Known to Those of Ordinary Skill
By Arlyn L. Alonzo
The U.S. Court of Appeals for the Federal Circuit recently affirmed a U.S. Board of Patent Appeals and Interferences (Board) rejection finding that a claimed invention of displaying position specific advertising to a golfer on a golf course to be obvious, based in part on the "known benefit" of global positioning satellite (GPS) technology. In re Huston et al., Case No. 02-1048 (Fed. Cir. Oct. 17, 2002).
Huston filed a continuation-in-part application claiming the use of a GPS to display advertising messages to a golfer on a golf course. In rejecting the application for obviousness under §103, the examiner cited prior art included two references having an earlier date than the filing date of the continuation-in-part application but later than the filing date of the parent applications. The applicant contended that the references were not prior art because of the parent application earlier effective filing date and because there was no motivation to combine a GPS reference with a prior art, location-specific, golf course information reference that relied on fixed position radio beacons to determine position.
In addressing the first question, the Federal Circuit agreed with the Board that the earlier application did not disclose "the location-specific transmission of advertising messages to a golfer using GPS." Hence, the applicant could not claim priority back to the earlier application. Thus, the references cited by the examiner were properly treated as prior art.
The Federal Circuit also agreed with and affirmed the Board's §103 obviousness decision. The Board found that it would have been obvious to use "GPS" or "differential GPS" for the purpose of sending location-specific advertising to a golfer on the golf course despite the applicant's challenge that there was no motivation to combine the prior art references. The Court agreed with the Board that motivation to combine was found, in part, in the knowledge generally available to one of ordinary skill in the art, i.e., the known improvement in location accuracy
of GPS over fixed position radio locationing. Additional motivation is found in the prior art's teaching of the benefit (e.g., greater accuracy) of "differential GPS" over "GPS."
Federal Circuit Declines to Adopt Per Se Rules for Evidence of Conception and Reduction to Practice
By Cameron K. Weiffenbach
The U.S. Court of Appeals for the Federal Circuit declined to adopt a rule that a research proposal is not evidence of conception or that evidence of diligence must be excluded if there is any possibility that the evidence could be construed to support an invention beyond the reach of an interference count. In re Jolley, Case No. 01-1646 (Fed. Cir., October 29, 2002).
Senior party Jolley appealed from a decision of the U.S. Board of Patent Appeals and Interferences (Board) awarding priority to junior party McGraw in a five-way interference. The interference count was directed to a liquid composition comprising a hydrofluorocarbon refrigerant (HFC) and a soluble organic lubricant comprising an effective amount of an ester. The Board determined that McGraw had an earlier conception date than Jolley based on an e-mail from McGraw's co-inventor, Ward. Even though Jolley was found to have reduced his invention to practice earlier than McGraw, the Board determined that McGraw was entitled to the priority award based on his prior conception coupled with diligence.
In the e-mail, Ward suggested the possibility of using blends of polyglycols with esters as lubricants for HFC, a suggestion consistent with research for air compressor lubricants, which were polyglycol/ester blends. Jolley argued that initial conception by McGraw was not directed to a two component system (HFC and ester) as in the interference count, but to a three component system (HFC, polyglycol and ester).
The Court held that although the evidence of conception was to overlapping inventions (i.e., evidence of an invention within the count and an invention outside the count), since the count uses the term "comprising," it is open to other ingredients, such as a polyglycol. The Court noted that "the question of whether an alleged conception discloses the subject matter of the interference count with sufficient particularity is a fact-intensive inquiry, based on whether the evidence of conception fairly suggests to one of ordinary skill in the subject matter of the count, without the need for extensive experimentation to ascertain whether the matter encompassed by the disclosure suggests the desirable features of compositions belonging to the count."
The Court dismissed Jolley's argument discounting the e-mail as a "research proposal," stating that "the conception inquiry is fact-intensive and no per se rule excludes 'research proposals' as evidence of conception." According to the Court "the determinative inquiry is not whether McGraw's disclosure was phrased certainly or tentatively, but whether the idea expressed therein was sufficiently developed to support conception of the subject matter of the interference count. While the e-mail generally referred to "ester" in general terms, it also referenced the polyglycol/ester blends found in certain air compressor lubricant patents. The Court found this reference to be of sufficient specificity to support the Board's finding of a conception.
The evidence also showed that McGraw reduced to practice a two component system (refrigerant and ester) meeting all of the limitations of the count and then reduced to practice a three component system (refrigerant, ester and polyglycol). Jolley argued that the Board cannot make a determination of diligence based on evidence that includes an invention inside the count, i.e., the two component system, and an invention outside the count, i.e., the three component system.
The Court declined to adopt a rule that evidence of diligence must be excluded if there is any possibility that it could be construed in support of an invention beyond the reach of the count: "Where two different, inconsistent conclusions may reasonably be drawn from the evidence in record, an agency's decision to favor one conclusion over the other is the epitome of an decision that must be sustained upon review for substantial evidence."
USPTO Issues Examination Guidelines for Sec. 102(e)
By Paul Devinsky
On November 7, 2002, the U.S. Patent and Trademark Office (USPTO) posted examination guidelines for making prior art determinations under §102(e), as amended by the American Inventors Protection Act (AIPA) of 1999 and newly enacted Public Law 107-273 (November 8, 2002).
Prior to the 1999 amendments, §102(e) gave prior art effect to patent disclosures having a filing date that preceded the applicant's invention date. In other words, even though the content of an application remained confidential while it was pending, the filing date was used as the date on which the issued patent became prior art. The prior statute accorded patents based on foreign filings prior arteffect as of their publication date, or as of the date the corresponding international application satisfied the national state requirements of §§371(c)(1), (2) and (4).
The AIPA provided for early publication of patent applications. To accommodate this change, §102(e) was amended to ensure that both issued patents and published patent applications were given the same prior art date-the filing date of the application.
The recent technical amendments to the patent statute (Pub. L. 107-273) further revised §102(e), deleting the clause concerning the prior art effect of patents issued on PCT applications. Now, a patent issuing on a PCT application published in English has, as its §102(e) date, the date of the international filing; while a patent issuing on a PCT application not published in English is given no §102(e) prior art status at all.
These amendments are applicable to all patents and all applications pending on or filed after November 29, 2000. Published PCT applications filed before November 29, 2000, "shall not be effective as prior art as of the filing date of the international application; however, such patents shall be effective as prior art in accordance with §102(e) in effect on November 28, 2000."
The November 7, 2002, USPTO notice distinguishes the current version of §102(e) from the pre-1999 version, noting "two significant differences," which the USPTO summarized as follows: "[I]n addition to U.S. patents, now certain publications of U.S. and international applications may be applied as prior art as of their filing dates; and certain international filing dates are now U.S. filing dates for prior art purposes under §102(e), and U.S. patents, as well as certain application publications may now be applied as prior art, as of these international filing dates. …" (Emphasis in original.)
According to the USPTO notice, as of November 29, 2000, §102(e) prior art includes U.S. patents, publications of U.S. patent applications and World Intellectual Property Organization (WIPO) publications of international applications, provided that such references do not directly or indirectly result from an international application filed before November 29, 2000. If a U.S. patent resulted from an international application filed before November 29, 2000, the §102(e) date of the U.S. patent will be set according to the old version of §102(e), i.e., the prior art date will be the earlier of the date of compliance with §371(c)(1), (2) and (4) (e.g., National Stage Entry) or the filing date of the later-filed U.S. application that claimed the benefit of the international application.
A U.S. or WIPO publication of an international application filed prior to November 29, 2000, will have no prior art effect under §102(e), although such publications would have prior art effect under §§102(a) or (b) as of their publication dates. In addition, §102(e) as amended applies to all pending U.S. patent applications being examined and all U.S. patents being reexamined, or otherwise being contested, whenever filed.