Download Uwe Szipl - Claim Construction

American Intellectual Property Law Association
Recent US Cases on Claim Construction
Joerg-Uwe Szipl
Griffin and Szipl, P.C.
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AIPLA IP Practice in Japan Committee
Meeting with JIPA
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Tokyo , Japan
April 9, 2014
AIPLA1
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Lighting Ballast Control LLC v. Phillips Electronics North
America Corp. et al., No. 2012-1014
(Fed Cir. February 21, 2014)
• Lighting Ballast v. Phillips, 498 Fed. Appx. 986 (Fed. Cir.
2013)
• In the District Court
– Claim 1 related to an energy conversion device employing an
oscillating resonant converter producing oscillations.
– The term in dispute was “voltage source means providing a
constant or variable magnitude DC voltage between the DC
input terminals”
– On motion for summary judgment, district court construed the
“voltage source means” as a means-plus-function limitation
under §112, ¶6.
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Lighting Ballast v. Phillips
• In the District Court:
– The claim was held to be invalid under §112, ¶2 because the
specification fails to disclose any structure capable of providing
DC voltage to the device.
– On reconsideration, the court reversed its own decision and held,
in view of expert testimony, that one of ordinary skill in the art
would understand that “voltage source means” would be a
rectifier or other similar device.
• Before the first Federal Circuit Panel:
– §112, ¶6 establishes a quid pro quo (necessary condition)
– a patentee may claim an element using a generic “means” for
performing a function, provided the patentee’s specification
discloses structure capable of performing that function.
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Lighting Ballast v. Phillips
• Before the first Federal Circuit Panel:
– The first step in analyzing a means-plus-function limitation is to
determine whether §112, ¶6 applies.
– Where the term “means” is used it is presumed that §112, ¶6
applies.
– The presumption may be rebutted if the claim itself recites
sufficient structure for performing the function.
– In this case the claim does not contain sufficient structural
language to remove “voltage source means” from §112, ¶6.
– Patentee’s expert testimony suggests that some structure is
implied, but this does not cure the absence of structure in the
claim itself.
– Testimony also does not establish that the term voltage source
was used with a defined class of structures.
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Lighting Ballast v. Phillips
• Before the first Federal Circuit Panel:
– Once the Court determines that a claim limitation involves §112,
¶6, construction of the limitation involves two steps:
• First step:
– Identify the function:
– In this case: “providing a constant or variable magnitude
DC voltage between the DC input terminals”
• Second step: identify the structure in the specification that
performs the claimed function.
– The sole issue on appeal is whether the specification identifies
sufficient structure to support the claimed function.
– The specification fails to disclose any structure to perform the
recited function.
– This is improper functional claiming and the claim is invalid
under §112, ¶2.
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Lighting Ballast v. Phillips
• Before the first Federal Circuit Panel:
– The first step in analyzing a means-plus-function limitation is to
determine whether §112, ¶6 applies.
– Where the term “means is used it is presumed that §112, ¶6
applies.
– The presumption may be rebutted if the claim itself recites
sufficient structure for performing the function.
– In this case the claim does not contain sufficient structural
language to remove “voltage source means” from §112, ¶6.
– Patentee’s expert testimony suggests that some structure is
implied, but does not cure the absence of structure in the claim
itself.
– Testimony also does not establish that the term “voltage source”
was used with a defined class of structures.
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Lighting Ballast v. Phillips
• On reconsideration en banc, the Federal Circuit
reconsidered the rule in Cybor Corp. v. FAS
Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998)
• The Cybor rule is that claim construction is a matter of
law reviewed de novo, on appeal, i.e., without deference
to the District Court.
• En banc, the court confirmed the Cybor rule, and
confirmed the first panel’s decision that the claim
required construction under §112 ¶6.
• What is the lesson simple message of Lighting Ballast?
– Do not use the word “means” in any claim unless
construction under §112, ¶6 is intended.
– If “means for” is used, structure must be clearly
identified in the Specification.
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Takeda Pharmaceutical Co. v. Zydus
Pharmaceuticals USA, Inc., No. 2013-1406 (Fed.
Cir. February 20, 2014)
• Takeda ‘994 patent related an orally disintegratable tablet
of the proton pump inhibitor drug Prevacid.
• District Court held the patent infringed and not invalid
• Federal Circuit reversed the finding of infringement, but
confirmed the finding that the claim was not invalid.
• Key limitation was “fine granules having an average
particle diameter of 400 m or less”.
• Zydus made tablet with 412.28 m granules
• Several issues arose in claim construction:
– How is the granule size measured?
– What does 400 m or less mean?
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Takeda v. Zydus
• What does 400 m or less mean?
– District Court held that the term meant 400 m
+/- 10% (Takeda’s view)
– This corresponded to the margin of error in
measurement
• How was the granule size measured?
– District Court held that the claim required
measurement of each core particle regardless of how
the particles agglomerated (Stuck together)(Takeda’s
view).
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Takeda v. Zydus
• What does 400 m or less mean?
– Federal Circuit held that the term meant exactly 400 m or less
– Claim did not use term of degree such as “about” in the claims
– There was no discussion of margins of error in the specification.
• How was the granule size measured?
– Zydus claimed that the claim was indefinite because there were
two different methods of granule measurement, laser diffraction
and microscopy, and the patent did not specify which was used.
– Federal Circuit agreed with Takeda and found that the different
techniques did not produce significantly different results.
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Takeda v. Zydus
• What are the lessons of Takeda?
– If the claims require an average, specify how the
average is measured, e.g., number average, mean or
median.
– If the claims require a range, then use of terms of
degree such as “about”, but be sure to state the
meaning of the degree. For example, “about” means
within the error of the measurement.
– If the claims require a measurement, e.g., “grain size”
then give an example of how the measurement is made:
i.e., by what method, using what equipment, etc.
• Taking the above factors into account in drafting the
application, may spare difficulties in litigation.
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Starhome GMBH v. AT&T Mobility LLC, No. 20121694 (Fed. Cir. February 24, 2014)
• Invention relates to a way of improving the functionality of
phone services for users in a roaming telephone network
• To allow users in a roaming network to make calls as if in
their home network, the ‘487 patent discloses the use of
an “intelligent gateway.”
• District Court construed intelligent gateway to mean “a
network element that transfers information to and from a
mobile network and another network external to the
mobile network.”
• Intelligent gateway is used to transform telephone codes
into something intelligible to the external network
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Starhome v. AT&T
• Defendant sells application allowing mobile network operators to
translate numbers dialed by roaming cell phone users using their
networks.
• Defendant’s platform does not connect with any external network.
• Federal Circuit adopted District Court’s claim construction
– Gateway has a well known technical meaning in the
telecommunications industry
– Gateway is a device that connects two networks
– Patentee used a common term and should be held to its common
meaning as described in numerous technical dictionaries.
– All embodiments in specification required two networks.
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Starhome v. AT&T
• What lessons do we learn from Starhome?
– If claims use a term that has a well known meaning in
the art, patentee may be stuck to that meaning.
– If Patentee uses an industry known term, a definition
in the specification will avoid indefiniteness.
– To get a broader meaning, patentee should choose a
broader term.
• Claim terms will generally be given their ordinary
meaning unless:
– Patentee sets out its own definition
– Patentee disavows the full scope of a claim term in the
specification or during prosecution.
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Thank you
Joerg-Uwe Szipl
Griffin and Szipl, P.C.
Arlington, VA, USA
[email protected]
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