Claim Language Defined in the Specification Is Reason for Overturning District Courts Ruling of Invalidity for Violating the Recapture Rule

By Kevin M. Repper

In AIA Engineering Ltd. v. Magotteaux Intern. S/A, 657 F.3d 1264 (Fed.Cir.2011), the Federal Circuit overturned a district court judgment of invalidity under the recapture rule of 35 U.S.C. § 251.  The court held that the patentee was acting as his own lexicographer, instead of attempting to broaden his own claims, when he repeatedly used the term “solid solution” during patent prosecution.

Magotteaux International was granted aU.S.patent directed to wear products used for crushing and grinding abrasive materials.  Consistently throughout the prosecution of the patent, the patentee used the claim language “ceramic pads consisting of a homogenous solid solution of 20-80 percent aluminum oxide and 80-20 percent zirconium oxide.”  Magotteaux later applied for reissue to change “consisting of” to “comprising” and “solid solution” to a “ceramic composition.”  The reissue patent was granted.

A year later, AIA Engineering sued Magotteaux in the U.S. District Court for Middle District of Tennessee.  AIA sought declaratory judgment of noninfringement, invalidity, and unenforceability of the reissue patent while Magotteaux countered for patent infringement.  The Judge for the District court ruled in favor of AIA for the motion for summary judgment of invalidity. The Judge found that the substitution of “ceramic composite” for “solid solution” broadened the scope of the claim and that Magotteaux relied on the “solid solution” to overcome the prior art.

The Federal Circuit Judge reversed this ruling, citing the three-step test for applying the recapture rule: “(1) first we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.” Medtronic Inc. v. Guidant Corp., 465 F.3d 1360, 1373, 80 USPQ2d 1558 (Fed. Cir. 2006).

The Federal Circuit concluded that the language “solid solution” and “ceramic composite” were synonymous in light of the specification, prosecution history, and extrinsic evidence.  Therefore, the court did not need to reach the third step in determining the recapture rule.

The two constituent materials of the patent, aluminum oxide and zirconium oxide, retain a distinct composition and/or crystal structure. Both parties agreed that the ordinary meaning of “solid solution” would require a “single, uniform crystalline structure.” Therefore, it would have been impossible to make an alumina-zirconia “solid solution” as disclosed in the original claims.  The court concluded, however, that because the applicant repeatedly disclosed “solid solution” in the specification, the applicant acted as his own lexicographer, providing a special definition for the term that was a synonym for “homogeneous ceramic composite.”

The court used both extrinsic and intrinsic evidence to determine the outcome of the case. First, it was determined that solid aluminum oxide and solid zirconium oxide do not share a common crystal structure at any temperature. Therefore, the impossibility of the solid solution of the original claim would have been apparent to one of ordinary skill. The court concluded that when the specification discloses a special meaning for a term that ultimately differs from the common meaning, the special meaning governs, “particularly when it also serves to avoid an inoperable claim construction.

Key Points

The Federal Circuit overturned the District Court by determining the meaning of “solid solution” as it pertains to the specific patent.  The court concluded by the extrinsic evidence that it would be impossible for a “solid solution” to be incorporated into the claims. The court examined the intrinsic evidence to determine how the “solid solution” was defined in the specification. The court concluded that although a “solid solution” and a “ceramic composite” may not mean the same thing to one of ordinary skill, the two terms were synonymous in light of the specification.

The District Court failed to observe the intrinsic evidence for the definition of “solid solution” within the specification and therefore failed to determine that “solid solution,” as defined by the specification, was synonymous with “ceramic composite.”

AIA Engineering Ltd. v. Magotteaux Intern highlights that a common definition of language in the claim is overshadowed by a special meaning of the language in the specification.  As demonstrated, this allows an invalid claim (due to common definitions of the language in the claim) to be valid, as long as a special meaning of the claim language in the specification is enabling.

Typhoon Touch v. Dell: Claims Saved From Aristocrat Invalidity But No Infringement Found

By Chris Reaves

A massive infringement suit against the major players in the touch-screen mobile market ended in the Federal Circuit, which confirmed that two patents required that a computer have specific software installed, not merely the capacity to run said software should it be installed.  In a small comfort to the patent holder, the Circuit also reversed a holding that certain patent claims were unsupported means-plus-function claims, finding that a textual description of the procedure involved qualified as an “algorithm” for Aristocrat purposes.


In 1988, prosecution began on a chain of patent applications that culminated in Patents No. 5,379,057 (‘057) and No. 5,675,362 (‘362), issued in 1995 and 1997 respectively.  Both patents disclosed a “portable, keyboardless computer” with components including “a touch-sensitive screen … configured for entry of responses” and an “application generator for generating [at least one] data collection application and for creating different functional libraries”.

Typhoon Touch Technologies, Inc., the present assignee of the patents, sued numerous producers of tablets and smart phones for infringement of the patents.  However, in examining the claims at issue, the district court found that some were invalid as indefinite, and regardless that none were infringed as construed.  It therefore dismissed the case, and Typhoon Touch appealed the dismissal to the Federal Circuit.

Ruling 1: Devices Must Be Configured to Perform Function In Order to Infringe

Typhoon first protested the district court’s decision that, in various means-plus-function terms, the allegedly infringing structure “must perform the recited function”.  Under the rule of Microprocessor Enhancement Corp. (520 F.3d 1367), Typhoon argued, it was sufficient that the structure could be configured or programmed to perform the function, and therefore devices without said programming could still infringe.  The Circuit panel was unmoved, stating that although Microprocessor did allow for infringement by a structure already capable of performing a required function, it did not reach one that first needed to be “specifically so programmed or configured.”

Additionally, the district court had interpreted “keyboardless” to have its ordinary meaning: “without a mechanically integrated keyboard.”  The specification stated that the device was “keyboardless in that it does not require a keyboard for use”, which according to Typhoon redefined “keyboardless” to mean it could take input without a physical keyboard even if it had one.  However, although the Circuit acknowledged that a patentee may change the ordinary meaning of a term in the specification, it found no evidence of that in the instant case.  To the contrary, the specification was full of criticism of the use of mechanical keyboards in general, and never once disclosed a device with an integrated keyboard.

The panel also found no importance in Typhoon’s argument that the district court “constru[ed] the claims in order to target the accused devices and demonstrate their non-infringement.”  Rather, it stated, “[I]t is not inappropriate for a court to consider the accused devices when construing claim terms, for the purpose of ‘claim construction’ is to resolve issues of infringement.”

The Circuit therefore upheld all constructions of the district court. As Typhoon conceded that its patents were not infringed under the district court’s construction, the panel also upheld the judgment of non-infringement.

Ruling 2: Software Means-Plus-Function Claims Require Only a Procedure

In a Pyrrhic victory for Typhoon, the Circuit reversed the decision of invalidity for three claims that included a “means for cross-referencing said responses…” The district court had held these to be indefinite under § 112 ¶ 2, finding no “algorithm” in the description to perform the function, as required for software means-plus-function claims by Aristocrat Technology (521 F.3d 1328).  However, the Circuit found the district court’s interpretation of “algorithm” too restrictive in the context of computing.  A step-by-step procedure was sufficient – computer code was certainly not required – and although the Typhoon patents did not disclose this procedure through a flow chart, a “prose” disclosure in the text of the description served the same purpose.

“[T]he amount of detail that must be included in the specification depends on the subject matter that is described and its role in the invention as a whole, in view of the existing knowledge in the field of the invention.”  Because the specification described the steps of the cross-referencing procedure in terms that “a programmer of ordinary skill” could implement, the Circuit found the claims were supported and reversed the district court’s holding of indefiniteness.  It was no “concession,” as the district court felt it was, that Typhoon admitted “the specific algorithm connoting the structure of the means for cross-referencing element is not explicitly disclosed in the specification.”

Post-Case Analysis

The Circuit’s requirement of specific configuration seems not only sound but necessary, at least in the context of hardware and software.  Modern computers are quite capable of being programmed to run any number of procedures.  Once one has a computer meeting the hardware elements of a claim, no matter how general those elements, one can always install the software elements later, but that should not make the computer alone an infringement.  Presumably, the software is part of what makes the patent patentable, or the prosecutor would have patented the hardware alone, so a valid construction should not effectively make the software elements moot.  (Of course, if the hardware itself is specially designed to run the software in question, contributory infringement principles apply even without a software installation.  But this assumes the hardware has no other uses, and here it did.)

The opinion did not even address an argument that Typhoon tried to emphasize during oral arguments: that the patent claimed priority back to 1988, when hardware capable of executing the software (now ubiquitous) was itself new and arguably inventive.  This issue was beside the point.  Typhoon did not patent the hardware itself; it patented the hardware combined with software (at minimum, the “application generator”).  Again, if it did so because the hardware by itself was not new and unobvious even in 1988, removing the software requirement would have been a gross misreading of what the Patent Office had granted.  If it did so because the prosecutors were too focused on the software and did not consider the potential of the hardware alone, this serves as a lesson to future prosecutors: always remember to claim pieces as well as the whole, if the pieces are also inventive.  One never knows for sure which pieces might be discarded and which might come to dominate the market.

In regards to the “keyboardless” definition, the lesson is simply to remember that CCS Fitness (288 F.3d 1359) asks you to “clearly” redefine terms if you plan to do so.  Do not count on a court to pick up on subtleties and make the inference you want; be explicit with language such as “we define the term X herein to mean…”  Alternatively, use more natural terminology in the first place, such as, in this case, “capable of keyboardless data entry.”

In an interesting aside, the Circuit endorses a court molding its construction around the defendant’s claims, or at least focusing on the most applicable elements.  This approach would mean that the construction of a claim may vary depending on its first alleged infringer.  Issue preclusion applies to Markman constructions, albeit inconsistently and not in all circumstances (see RF Delaware (326 F.3d 1255), which applies a regional circuit’s law of preclusion).  And invalidation of a claim is binding in all courts even if a different construction would have saved the same claim.  It may be wise, therefore, to consider where and how a patent’s boundaries will be tested before deciding which infringing device to sue over first.

As is often the case, even the patent owner’s victories show where it could have drafted a better patent.  As Typhoon stated in oral arguments, had the cross-referencing procedure disclosed in the description been converted to a figure or flow chart, “we wouldn’t be here.”  The attorney meant it as an argument in support of validity, but it’s also a warning to future prosecutors: next time, include the flow chart.  Sometimes, it is the difference between a procedure a skilled programmer can understand and one she can’t, and even if not, it helps the judge understand it.

The opinion is available at:

Oral arguments may be heard at:

Federal Circuit Overturns District Court’s Claim Construction in Markem-Imaje Corp. v. Zipher Ltd.

.By Zi Wang

In Markem-Imaje Corp. v. Zipher Ltd., 657 F.3d 1293 (Fed. Cir. 2011), the Federal Circuit per curiam majority overturned the district court’s claim construction and summary judgment of noninfringement.

Markem-Imaje Corp. sued Zipher Ltd. and Videojet Technologies, Inc. (together “Zipher”), requesting a declaratory judgment that Zipher’s ‘572 patent is not infringed by Markem.  The ‘572 patent is directed to a heat transfer printing apparatus that provides increased control over the acceleration, deceleration, speed, and positional accuracy of the printing operation.  In transfer printers in general, the ink ribbon is wound on two spools, one spool for supplying the ribbon for positioning on the substrate, and the other spool for taking up the ribbon after use.  Maintaining correct ribbon tension is essential for proper functioning of the printer.  The patent specification explains the problems with the mechanism that has been used to provide ribbon tension in prior art printers.  It then distinguishes the prior apparatus from what the ‘572 patent calls the “push-pull” mechanism of the ‘572 apparatus, and claims that this new mechanism solves various problems encountered with prior devices.  The “push-pull” mechanism is implemented using microcontroller-controlled stepper motors.

Claim 1, the broadest claim of the ‘572 patent, is directed to a tape drive that corrects tension divergences from the predetermined limit in this manner:

A tape drive comprising:

two motors, at least one of which is a stepper motor;

two tape spool supports on which spools of tape are mounted, each spool being driveable by a respective one of said motors;

a controller adapted to control energization of said two motors such that tape is transported in at least one direction between spools of tape mounted on the spool supports;

wherein the controller energizes both said motors to drive the spools in a tape transport direction, and

said controller calculates a length of tape to be added to or subtracted from tape extending between said spools in order to maintain tension in said tape between predetermined limit values and controls said motors to drive the spools to add or subtract the calculated length of tape to or from the tape extending between said spools.

The district court construed “driveable” and “drive” to mean “rotateable” and “rotate”, rejecting Zipher’s broader construction.  The district court reasoned that although the ordinary meaning of “drive” can be broad enough to encompass not only the rotation of the spools but also application of a holding torque that prevents the spool from rotating and that references to driving the spools in the specification could accommodate either construction, giving “drive” a meaning broader than “rotation” would be contradictory to the meaning of “drive” in the tape transport clause, which states that “the controller energizes both said motors to drive the spools in a tape transport direction.”  Moreover, according to the district court, because the claim clause “controls said motors to drive the spools” already used the word “control,” the patentee could not have intended “control” and “drive” to mean the same thing.  The district court also pointed to a few places in the specification that use the word “drive” narrowly.  The district court further construed the use of the plural word “spools” in the claim clause “to drive the spools to add or subtract the calculated length of tape” to mean that both spools must rotate to add or subtract a single calculated length of tape.

Because only a single spool is rotated to achieve each tension adjustment in Markem’s accused devices, the district court readily found noninfringement.  Zipher then appealed the district court’s claim construction and summary judgment to the Federal Circuit.

On appeal, Zipher argued that “drive”, similar to “control”, has the inclusive meaning of not only rotate but also “hold steady in a commanded position.”  Markem, on the other hand, relied on Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) for its position.  Phillips court stated that “claim terms are normally used consistently throughout the patent,” and that “a claim term should be construed consistently with its appearance in other places in the same claim or in other claims of the same patent.”  The Federal Circuit majority sided with Zipher, holding that “drive” need not be narrowly construed merely because a broader construction would make it similar to the word “control” that is also used in the claim.  The majority also stated that nothing in the specification or the overall invention as presented in the claim and as argued to the patent examiner requires the narrow construction.

In addition to the district court’s construction of “drive the spools”, Zipher also appealed its construction that the claims require “some method of deriving a tension measurement.”  The district court opined that “without having a reasonable estimate of the current tape tension, it is not possible to identify whether the tension is approaching or exceeding the limit values.”  Zipher argued that since the claim does not recite measuring tension, the district court’s construction would import a limitation into the claims from the specification and violate the mandate of Rambus Inc. v. Infineon Tech. AG, 318 F.3d 1081 (Fed. Cir. 2003) that “the claims need not recite every component necessary to enable operation of a working device.”  The majority again agreed with Zipher and drew an analogy with a car engine: “a claim to an engine providing motive power to a car should not be construed to incorporate a limitation for an exhaust pipe, though an engine may not function without one.”

Judge Newman dissented in part. She disagreed with the majority’s reliance on the “mandate” of Rambus.  According to Newman, the panel majority ignored “the paramount importance of the specification in claim construction.”  Citing a series of cases to support her position, Newman stated that she would hold that “while the invention is flexible as to how tension is measured, and permits measurement through indirect methods, some method of measurement is contemplated and required.”

This is the third time in 2011 that the Federal Circuit has been divided and reached contradictory decisions on the issue as to how to reconcile claim language with the description in the specification.  The other two cases are Arlington Industries Inc. v. Bridgeport Fittings Inc.,632 F.3d 1246 (Fed. Cir. 2011), and Retractable Technologies Inc. v. Becton, Dickinson & Co., 653 F.3d 1296 (Fed. Cir. 2011).  J. Lourie and CJ. Rader were on opposite sides of the issue in these two cases, each in turn penning the majority opinion in one and the dissenting opinion in the other.  The Federal Circuit rejected the opportunity to rehear Retractable en banc in Retractable Technologies Inc. v. Becton Dickinson & Co., 659 F.3d 1369 (Fed. Cir. 2011), before it was presented with the same problem in the present case.

Take-away points:  Patent prosecutors should use the same word in a consistent manner throughout the whole application to avoid ambiguity.  What’s more, contrary to good general practice in writing, it is probably preferable to stick with the same word when expressing the same idea in patent applications.

Vexatious Plaintiff Is Slapped With $4.5M In Fees

By Zi Wang

In MarcTec LLC v. Johnson & Johnson, 664 F.3d 907 (Fed. Cir. 2012), the Federal Circuit affirmed the district court’s holding that the case is exceptional and awarded a total amount of more than $4.5 million in attorney and expert fees to the defendant.

Plaintiff MarcTec filed suit against Cordis, a subsidiary of Johnson & Johnson, alleging the latter of infringing the ‘753 and ‘290 patents. The two patents-in-suit are directed at surgical devices and implants with a therapeutic-agent-containing coating bonded by heat.  According to the prosecution history, in order to overcome the PTO’s rejection over the ‘417 patent, the patentee highlighted the fact that the coating is to be bonded by heat.  The patentee also tried to distinguish his invention from stents during prosecution for similar reasons.  The allegedly infringing product in question is the Cypher stent manufactured by Cordis.  The product utilizes the technology disclosed by the ‘417 patent, the same patent plaintiff distinguished and disclaimed to obtain allowance for his own patents. The Cypher’s coating is sprayed onto the stent at room temperature and bonds to it at room temperature. Continue reading

Difference in Prior Art Requirements in Obviousness and Anticipation; Broad Genus Disclosures in Prior Art

By Charles Pierce


In ClearValue, Inc. v. Pearl River Polymers, Inc., the Federal Circuit ruled that Claim 1 of U.S. Patent No. 6,120,690 (the ‘690 patent) was invalid because it was anticipated by a broad genus disclosure in U.S. Patent No. 4,800,039 (Hassick).

ClearValue accused Pear River of indirectly infringing the ‘690 patent by selling high molecular weight DADMAC polymers to customers who would then use the DADMAC polymers and aluminum polymers to clarify water.  Claim 1 of the ‘690 patent reads:

A process for clarification of water of raw alkalinity less than or equal to 50 ppm by chemical treatment, said process comprising:

adding to the water and, prior to or after adding to the water, blending at least one aluminum polymer with a high molecular weight quaternized ammonium polymer in an amount sufficient to form a flocculated suspension in the water and to remove turbidity from the water, said high molecular weight quaternized ammonium polymer comprising at least an effective amount of

high molecular weight di-allyl di-methyl ammonium chloride (DADMAC) having a molecular weight of at least approximately 1,000,000 to 3,000,00 and

said aluminum polymer including at least an effective amount of poly-aluminum hydroxychloride [ACH] of a basicity equal to or greater than 50%.

(Emphasis added.)  ClearValue also alleged misappropriation of trade secrets, one of which covered a similar clarification process.  The jury found for ClearValue on both issues.  The district court denied Pearl River’s motions for JMOL of no infringement and invalidity, but granted Pearl River’s motion for JMOL of no misappropriation.

The Hassick patent discloses a “composition useful for reducing turbidity in aqueous systems which comprises (a) [ACH]; and (b) at least one water-soluble cationic polymer selected from [a group which includes di-allyl di-methyl ammonium chloride].”  Hassick further discloses that this composition can be used to “synergistically reduce turbidity in aqueous systems, particularly low-turbidity . . . low-alkalinity systems (i.e. 150 ppm or less).”  Hassick’s results, however, also showed that the DADMAC and ACH combination does not work well in reducing the turbidity of low-alkalinity water.

ClearValue argued that Hassick’s results teach away from the inventiveness of the ‘690 patent, and therefore, the use of ACH with high molecular DADMAC would not have been obvious to one of ordinary skill in the art.  The district court cited this as sufficient to uphold the jury’s finding of no anticipation or obviousness.  While agreeing that whether prior art teaches away from an invention is relevant to obvious analysis, the Federal Circuit ruled that this was of no consequence to anticipation analysis.  The only requirement is that the prior art describe “every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.”  35 U.S.C. § 192.

ClearValue also argued that Hassick’s disclosed method was too broad to anticipate Claim 1.  Specifically, that because Hassick described a method of clarifying water with an alkalinity of 150 ppm or less, it did not anticipate the claimed method of clarifying water with an alkalinity of 50 ppm or less.  ClearValue cited Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006).

In Atofina, the patent at issue claimed a method of synthesizing difluoromethane at a temperature between 330 and 450 degrees Celsius.  Atofina noted that the particular temperature range was critical to the process, and that a lower temperature of 300 degrees Celsius would not work.  The prior art disclosed a temperature range of 100 to 500 degrees Celsius.

The Federal Circuit distinguished Atofina on this basis, stating, “In Atofina, the evidence showed that one of ordinary skill would have expected the synthesis process to operate differently outside the claimed temperature range . . .”  While the prior art in both cases taught a broad genus, in ClearView there was no such indication that the 50 ppm disclosed is necessary to the process, nor was there any indication that the process would operate differently.  Moreover, one of Hassick’s examples took place at 60-70 ppm.  Because of the lack of a “considerable difference between the claimed range and the range in the prior art,” the Federal Circuit ruled that Claim 1 of the ‘690 patent was anticipated, and therefore unpatentable.

Finally, the Federal Circuit affirmed the district court’s grant of JMOL that Pearl River did not misappropriate ClearView’s trade secret because Hassick publicly disclosed the elements of the trade secret in question prior to the alleged misappropriation.


Key Points and Practice Tips:

  • While the fact that prior teaches away from an invention irrelevant in an obviousness analysis, it is not relevant to an anticipation analysis.
  • A genus disclosure does not necessarily disclose every species within the genus, there must be a “considerable difference between the claimed range and the range in the prior art.”  If a claim falls within a described genus, emphasize the differences between the ranges claimed and points outside that range.
  • If all the elements of a trade secret are publicly disclosed before an alleged misappropriation, then there is no misappropriation because there is no trade secret.  This is true even if the reference “teaches away from” the process claimed as a trade secret.
  • Be careful when writing a patent application.  If prior art discloses a wide range that encompasses a range claimed in the invention, then stress why the range claimed is different or necessary.  In Atofina, the “considerable difference between the claimed range and the range in the prior art” was what precluded a finding of anticipation.

Federal Circuit Finds Noninfringment of System Claim Since No Single Entity Owns Each Element of Claim

In McKesson Tech, Inc. v. Epic Systems Corp., 98 USPQ2d 1281 (Fed. Cir. 2011), McKesson is the owner of U.S. Patent No. 6,757,898 (the ‘898 patent).  The ‘898 patent is directed to a communication method between doctors and patients in which patients are able to access webpages with customized content specific to the doctor and patient, such as allowing appointments and providing prescription refill requests.  Continue reading

Federal Circuit Finds Specification Precludes Narrow Claim Interpretation

In Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246; 97 U.S.P.Q.2D 1811 (Fed. Cir. 2011), Arlington Industries is the owner of U.S. Patent No. 5,266,050 (hereinafter the ‘050 patent) and U.S. Patent No. 6,521,831 (hereinafter the ‘831 patent).  The ‘050 patent relates to an electrical connector that snaps into electrical junction boxes, whereas the prior art connector required a threaded nut which required two hands to install.  The claimed electrical connector only required one hand, and recites, among other features “a circular spring metal adaptor” in claim 8 of the ‘050 patent and “a tubular spring steel adapter” in claim 1 of the ‘831 patent.

Arlington Industries filed suit in the Middle District of Pennsylvania against Bridgeport Whipper-Snap alleging one set of products infringe claim 8 of the ’050 patent (herein after “Arlington I”).   Arlington Industries later filed a second suit against Bridgeport Whipper-Snap in the Middle District of Pennsylvania  alleging another set of products infringed claim 8 of the ’050 patent and claim 1 of the ‘831 patent (hereinafter “Arlington II”).  In its claim construction, the District Court in Arlington I found that the recited spring metal adaptor of claim 8 did not require the ring to be split but instead be made of a spring metal.  In contrast, the District Court in Arlington II found that the recited spring metal adaptor of claim 8 of the ‘050 patent as well as the spring steel adapter of claim 1 of the ‘831 patent both required that the adapter be split.  Based upon this claim construction, Bridgeport moved for summary judgment in Arlington II since the allegedly infringing products did not include a split.  The District Court in Arlington II granted the motion.

While neither Arlington I nor Arlington II were combined, the District Court in Arlington I agreed to stay the Arlington I proceedings while the Arlington II was on appeal.

On appeal, the Federal Circuit began by noting that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).  Moreover, the Federal Circuit held that the recited “spring metal adaptor” of claim 8 of the ‘050 patent has an ordinary and customary meaning which is consistent with the specification: the adaptor is made of spring metal.  The specification specifically refers to adapter as being formed of spring metal.  As such, the Federal Circuit found that the “spring metal adaptor” of claim 8 must be made of a spring metal.

In supporting the Arlington II District Court’s claim construction, Bridgeport indicated that the term “spring” required that the metal adapter perform a springing function, which would require a split.  Bridgeport pointed to the drawings of the ‘050 patent, all of which include the metal adapter having a split.  In declining to adopt this interpretation, the Federal Circuit again noted that the specification defined the metal adapted as being made of a spring metal, such that the term “spring metal adapter” would refer to the material of the adapter.  Moreover, the Federal Circuit noted that the drawings to a single embodiment do not represent a limitation which is imported into the claim.

Importantly, the Federal Circuit held that allowing such an interpretation would go against the ordinary meaning as well as the findings of the Arlington I court.  Specifically, the Federal Circuit quoted Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1329 (Fed. Cir. 2008) for the proposition that, “[i]n the interest of uniformity and correctness, this court consults the claim analysis of different district courts on the identical terms in the context of the same patent.” Thus, the Federal Circuit rejected the notion that the spring limitation meant a springing function as being contrary to both the ordinary meaning as understood from the specification as well as contrary to a predecessor court decision.

Alternately, Bridgeport indicated that the split was implicitly required even if the term “spring metal adapter” was limited to an adapter made of a spring metal.  However, the Federal Circuit declined to implicitly require the spring metal adapter having the split.  Specifically, the Federal Circuit noted that, while one embodiment shown in the drawings had a split, three other embodiments did not.  Also, the Federal Circuit noted that other claims expressly recite a split such that implicitly requiring the split would run contrary to the doctrine of claim differentiation.  Moreover, the Federal Circuit noted that in a rejection of a claim in the parent application for the ‘050 patent, the applicants specifically amended a claim by including a split feature which was evidence in the prosecution history that the recited spring metal adapter did not necessarily include a split.  While acknowledging that there is a fine line between reading a claim in light of the specification and importing a feature into a claim using the specification, the Federal Circuit determined that the overall facts indicated that there was no intent to implicitly require that the split metal adapter always require the split.  As such, the Federal Circuit found that neither claim 1 of the ‘831 patent nor claim 8 of the ‘050 patent required a split, and reversed the District Court.

Significance for Patent Applicants

Arlington Indus provides yet another reminder as to why it is important to ensure that multiple embodiments are disclosed for a claimed invention.  By including multiple examples within a genus of a claim feature, courts are more likely to give a broader reading by not insisting that the claim can only be commensurate in scope with a single embodiment.  Moreover, the use of claims of varying scope will further help ensure this broad interpretation.  As such, applicants need to ensure that, at the time of filing, applicants have provided as many examples as possible or risk having the claims narrowed to meet the single disclosed example.

Federal Circuit Defines When A System Is Being Used Where No Party Owns All of the System Elements

In Centillion Data Systems v. Qwest Communications International, 631 F.3d 1279; 97 U.S.P.Q.2D  1697 (Fed. Cir. 2011), Centillion is the owner of U.S. Patent No. 5,287,270 (the ‘270 patent”), which is drawn to a system for collecting and processing billing information from a service provider and electronically delivering the billing information from the service provider to a customer in a format usable on a personal computer.  As construed by the Federal Circuit, claim 1 recites a system for presenting information comprising “1) storage means for storing transaction records, 2) data processing means for generating summary reports as specified by a user from the transaction records, 3) transferring means for transferring the transaction records and summary reports to a user, and 4) personal computer data processing means adapted to perform additional processing on the transaction records.”  Centillion acknowledged that claim features 1) through 3) are performed at a backend at the service provider and claim feature 4) is maintained by a front end (i.e., the user). Continue reading

Federal Circuit Finds Prosecution History Narrowed Literal Scope of Claims

In Erbe Elektromedizin GmbH v. Canady Tech. LLC, 97 USPQ2d 1048 (Fed. Cir. 2010), ERBE Elektromedizin GmbH and ERBE USA, Inc. (collectively, “ERBE”) is the owner of U.S. Patent No. 5,720,745 (“’745 patent”), which is directed generally to argon gas-enhanced electrosurgical products for electrosurgery.  The ‘745 patent includes a “low flow” limitation in the independent claims as follows:

  1. Claim 1 recites that the “gas flows from the source, through the tube and exits through the opening at the distal end of the tube at a low flow rate of less than about 1 liter/minute”; and
  2. Claim 35 recites that “supplying the inert gas from the source of said gas through the tube to the distal end opening of said tube with such a low flow rate, that gas exiting through said distal end opening is a not directed, non laminar stream but forms an inert gas atmosphere” and has a depending claim 38 which defines that “the stream of gas exits through said distal end opening with a flow rate of less than about one liter per minute.”

The “low flow” feature was added during prosecution in response to the Examiner’s construction of the prior art as containing “argon flow rates ranging from 1 to 12 liters per minute, but did not disclose argon flow rates of “less than 1 liter per minute.”  In response, ERBE indicated that the low flow rate distinguished from the 1 to 12 liters per minute since a “flow rate of 1 litre per minute leads to a flow velocity of 19 m/h” and “12 litres per minute gives an outlet gas speed of 229 km/h”, which “would certainly be classified as laminar jets and would likely lead to” problems including being toxic to the patient.  In response to the amendment and argument, the Examiner allowed the application. Continue reading

Federal Circuit Finds Reference to “Present Invention” Limits Scope of Claims and No Willful Infringement Where Commercially Reasonable Time is taken to Change Infringing Product to Non-Infringing Product

In Trading Technologies Int’l, Inc. (TT) v. Ecco LLC, Eccoware Ltd., and eSpeed Int’l, Ltd. (eSpeed), 595 F.3d 1340;93 U.S.P.Q.2D 1805 (Fed. Cir. 2010), TT owns both U.S. Pat. No. 6,772,132 (‘132 patent) and U.S. Pat. No. 6,766,304 (‘304 patent).  The ‘132 and the ‘304 patents share a common provisional filing date of March 2, 2000.  The ‘132 patent was filed on June 9, 2000 and issued on August 3, 2004.  The ‘304 patent, which is a divisional patent of the ‘132 patent, was filed on June 27, 2001 and issued on July 20, 2004.  Both patents relate to software displaying an electronic commodity market.  The market consists of bids, or offers to purchase, and asks, or offers to sell.  The software has a graphical user interface (GUI) having a dynamic display for the bids and asks and a static display for prices corresponding to the bids and asks.  Prior art software displayed an “inside market” which was the best or highest bid price and the best or lowest ask price, which reflect the current price of the commodity.

However, the prior art displayed grids for the inside market that did not move. Thus, if a trader saw a price on the inside market on which they wanted to act, the trader could mistakenly click on the wrong price while a new price in the inside market appeared before they clicked on their intended price.  In contrast, TT’s software had a static price column, and thus, the best bid and best ask would move up and down along the price column to reflect the current state of the market.  As such, a trader could click on the intended price box and know that a transaction at the clicked price would occur, while not worrying that an accidental order at an incorrect price occurred because the inside market had changed before the order was processed.

TT filed suit in the U.S. District Court for the Northern District of Illinois alleging that eSpeed’s products, which are trading platforms and software for trading commodities on eSpeed’s electronic exchanges, infringed TT’s patents.

The accused eSpeed products include Futures View, Dual Dynamic, and eSpeedometer, with the accused products being the same in all relevant aspects, as the latter products are redesigns of the original product.  Also, eSpeed acknowledged that Futures View satisfied all claim limitations of the patents in suit.  eSpeed was sold before the ‘132 and ‘304 patents were issued.  However, TT and eSpeed disagreed on whether Dual Dynamic and eSpeedometer use a “static display of prices” or a “static price axis,” which are recited by the ‘132 and ‘304 patents, respectively.  Dual Dynamic re-centered price levels by either a manual operation by a user or by an automatic operation if the inside market shifted by a predetermined amount, however, the automatic operation could not be disabled by users.  eSpeedometer, on the other hand, only had an automatic re-centering operation, wherein the entire market display would adjust after each change in the inside market.

The products were variously sold during the suit, with Futures View being sold before the TT’s patents issued, and replaced with Dual Dynamic in December 2004 before a hearing for a preliminary injunction in the case.  eSpeedometer replaced Dual Dynamic after the District Court found that Dual Dynamic likely infringed TT’s patents.  After trial, the District Court held that Futures View still infringed asserted claims of the ‘132 patent and the ‘304 patent.  The District Court also held that other accused products were not literally infringing TT’s ‘132 and ‘304 patents, and that TT was barred from using doctrine of equivalents to assert infringement.  Furthermore, the District Court found there to be no on-sale bar under 35 U.S.C. §102(b) by giving the ‘132 patent and the ‘304 patent filing dates corresponding to a common provisional application.  Additionally, the District Court found that there was no indefiniteness with respect to the asserted claims of the ‘132 and ‘304 patents.

Specifically, the District Court found that neither Dual Dynamic nor eSpeedometer literally infringed on the ‘132 or ‘304 patents.  As per infringement under the doctrine of equivalents, the District Court held that Dual Dynamic did not infringe under the doctrine of equivalents because finding infringement would obviate the term “static” and that prosecution history estoppel prevented application of doctrine of equivalents to eSpeedometer.  As such, the District Court granted summary judgment of non-infringement with respect to Dual Dynamics and eSpeedometer.

With respect to eSpeed’s Future View, the District Court, during a jury trial, granted several of TT’s motions, including barring eSpeed from asserting an on-sale bar defense, and barring expert testimony asserting that the claim construction of “single action of a user input device” was indefinite.  The jury found that Futures View willfully infringe the ‘132 and ‘304 patents, however, the District Court vacated the jury’s finding of willful infringement and reduced the damages awarded to TT.  Additionally, the District Court found that TT did not engage in inequitable conduct and denied eSpeed’s motions on validity, indefiniteness, priority date, and patent misuse defense.  Both TT and eSpeed appealed the District Court’s holding.

On appeal Federal Circuit, while noting that numerous issues were raised by both parties on appeal, stated that TT’s appeal focuses on patent infringement, while eSpeed’s appeal focuses on patent validity.  TT appealed the District Court’s claim construction as per “common static price axis” and “a static display of price,” and argued that Dual Dynamic and eSpeedometer infringe under TT’s claim construction.  Additionally, TT asserted that Dual Dynamic infringes under the doctrine of equivalents without obviating the word “static,” and that prosecution history estoppel does not preclude eSpeedometer from infringing the TT patents under the doctrine of equivalents.  eSpeed, in the appeal, asserted:  (1) that the ‘132 and ‘304 patents should not be dated back to the provisional application dates; (2) that the patents are invalid under the on-sale bar; (3) that the term “single action of a user input device” is indefinite; and (4) that TT engaged in inequitable conduct.

Narrow Claim Construction in View of “Present Invention” And Only One Embodiment

The Federal Circuit reviewed the grant of summary judgment of non-infringement with respect to Dual Dynamic and eSpeedometer with out deference, and reviewed the District Court’s claim construction order under Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).  TT asserted that the District Court’s construction of “static” in the limitations of “static display of prices” and “common static price axis” in the ‘132 and ‘304 patents to be incorrect.  The District Court construed “static display of prices” to mean “a display of prices comprising price levels that do not change positions unless a manual re-centering command is received.”  Similarly, the District Court construed “common static price axis” to mean “a line comprising price levels that do not change unless a manual re-centering command is received and where the line of prices corresponds to at least one bid value and one ask value,” with the District Court noting that “a static condition – requires permanency” so that “the price axis never changes positions unless by manual re-centering or re-positioning.”

Thus, the Federal Circuit noted that under the District Court’s interpretation, the ‘132 and the ‘304 patent only cover manual re-centering without automatic re-centering.  However, the Dual Dynamic and eSpeedometer include automatic re-centering corresponding to changes in the inside market.  The specifications of both the ‘132 and ‘304 patents state that “The values in the price column are static; that is, the do not normally change positions unless a re-centering command is received.”  The Federal Circuit noted that although the District Court’s construction may seem narrower than the inventor’s definition of “static” because the District Court added that the re-centering command is to be manual, the claims, specification and prosecution history estoppel support the District Court’s definition.  Thus, the Federal Circuit agreed with the District Court’s claim construction.

While elaborating on the support for the claim construction found in the specification, the Federal Circuit stated that they recognize that relying on the specification heavily may lead to an improper risk of reading a preferred embodiment into the claim, unless the patentee evinces a clear intention that the preferred embodiment represents the claim.  (See Saunders Group, Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1332 (Fed. Cir. 2007)).  In reviewing the specification, the Federal Circuit found that the “reference to ‘the present invention’ strongly suggests that the claimed re-centering command requires a manual input, specifically, a mouse click. See Honeywell Int’l, Inc. v. ITT Indus., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (concluding that the invention was limited to a fuel filter because the specification referred to the fuel filter as ‘this invention’ and ‘the present invention’).”  The Federal Circuit further noted that the specification did not disclose alternate embodiments, such as automatic re-centering.  As such, the Federal Circuit stated that “[t]his court takes some comfort against this risk from the inventors’ use of the term “the present invention” rather than “a preferred embodiment” or just “an embodiment.”

The Federal Circuit went on to detect any contrary intentions as per the embodiment, and noted that all claims of the ‘132 patent include a “wherein” clause stating that “the static display of prices does not move in response to a change in the inside market.”  As such, the claims of the ‘132 patent excludes automatic re-centering upon a change in the inside market.

TT further argued that even if the “re-centering command” is interpreted as manual in the ‘132 patent, the District Court cannot limit the claims to only recited elements because the claims use a transitional phrase “comprising.”  Thus, TT asserts that the claims also cover features not recited, such as automatic re-centering.  The Federal Circuit responded by stating that “automatic re-centering is not an additional feature, but rather negates a claimed requirement that the price level remains static and does not move….Thus, this court construes the claims to require a manual re-centering command.”  The Federal Circuit also pointed to the prosecution history in noting that the Examiner initially rejected the claims because “static display” was indefinite.  The Federal Circuit stated that the Examiner allowed the claims, in part, based upon the applicant’s explanation that “the values in the price column…do not change (unless a re-centering command is received).”    Furthermore, the Federal Circuit also noted that a manual re-centering of the price column may avoid mistakes that may arise from an automatic re-centering of the price column, as found in the prior art.  Thus, the Federal Circuit stated that:

[t]he invention’s contribution to the prior art, its specification, and its prosecution history show that the static display of prices cannot move without a manual re-centering command from the trader.  Accordingly, the District Court correctly construed disputed word “static.”

Thus, the Federal Circuit found that eSpeed’s Dual Dynamic and eSpeedometer do not literally infringe on the ‘132 and ‘304 patents because eSpeed’s products have mandatory re-centering features.

No Doctrine of Equivalents Due to Claim Vitiation and Prosecution History Estoppel

With respect to the doctrine of equivalents, the Federal Circuit noted that, under the all-elements rule, it is required to consider “the totality of circumstances of each case and determine whether the alleged equivalent can be fairly characterized as an insubstantial change from the claimed subject matter without rendering the pertinent litigation meaningless.”  Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1359 (Fed. Cir. 2005).  As per the claim vitiation if doctrine of equivalents is found, the Federal Circuit stated that claim vitiation “applies when there is a ‘clear, substantial difference or a difference in kind’ between the claim limitation and the accused product. Id. at 1360.  It does not apply when there is a ‘subtle difference in degree.’  Id.

The Federal Circuit stated that occasional automatic re-centering, as may occur with Dual Dynamic, is not an insubstantial difference, and that they must surmise the difference between a price axis that moves only in response to a trader’s command and one that moves without prompting.  In noting that Dual Dynamic’s automatic re-centering allows for the problems of the prior art, wherein an inside market price may move while a trader was executing a deal, the automatic re-centering is substantially different than the invention of the ‘132 and ‘304 patents.  Therefore, the Federal Circuit affirmed the District Court’s holding that the doctrine of equivalents does not show that Dual Dynamic infringes.

The Federal Circuit also agreed with the District Court’s decision that prosecution history estoppel bars TT from asserting doctrine of equivalents to show that eSpeedometer infringes the patents in suit.  The Federal Circuit noted that TT submitted a prior art reference describing a static price display after the USPTO issued a notice of allowance, and requested that the application be withdrawn from issuance.  TT amended claims that issues as claim 1 of their respective patents, with similarly recited limitations stating that price displays do not move in response to the inside market changing.  TT argued that “do not move” being amended into the claims did narrow the claims because they already recite “static.”  However, the Federal Circuit noted that TT’s argument is circular because the District Court has construed “static” to mean not moving, and thus, the claims of the ‘142 and ‘304 patents would still be limited to manual re-centering.  Thus, the Federal Circuit found that the inventors surrendered any subject matter that moves automatically during prosecution, and affirmed the District Court’s holding that Dual Dynamic and eSpeedometer don not infringe the ‘132 and ‘304 patents under the doctrine of equivalents.

No Willful Infringement

As per TT’s appeal on the District Court finding no willful infringement, the Federal Circuit noted that they, in In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007), held that “proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness.”  The Federal Circuit went on to note that neither party disputes that eSpeed began redesigning Futures View immediately after TT commenced the infringement suit.  The Federal Circuit then stated that “[p]rompt redesign efforts and complete removal of infringing products in a span of a few months suggest that eSpeed was not objectively reckless.”  Furthermore, TT could not show that eSpeed sold Future View to new customers, or that they delayed in updating Future View with the non-infringing Dual Dynamic.  Thus, the Federal Circuit affirmed the District Court’s grant of JMOL motion on willful infringement that no reasonable jury could have found eSpeed to be willfully infringing the ‘132 and ‘304 patents.

“Single Action” Claim Term Definite and Supported by Provisional Application

As per the contention on whether the limitation of “single action of a user input device” is indefinite, the Federal Circuit upheld the District Court’s ruling that the term, as construed, is sufficiently definite.  The Federal Circuit stated that “[t]he district’s court’s construction correctly sets objective boundaries by distinguishing the invention from multiple-action systems found in the prior art.”  The District Court found that “an action” means one user action, even including sub-elements such as two separate clicks of a double-click, if the user views all sub-elements as one action.  Additionally, the Federal Circuit stated that one of ordinary skill in the art would find a non-ambiguous difference between singular and multiple user actions, even with the District Court’s construction that a single action be executed in a “short period of time.”

With respect to eSpeed’s contention of the patents in suit having a priority date of the provisional applications filed on March 2, 2000, the Federal Circuit looked to the provisional application as an adequate written description under 35 U.S.C. §112, par. 1.  At contention was the fact that all claims recite a “single action of a user input device,” whereas the provisional application only recites “a single click of a computer mouse.”  The Federal Circuit states that “[o]n summary judgment, the parties’ experts disagreed that the provisional application showed possession of forms of order entry other than “a single click of a computer mouse”,”…and thus, there was “a dispute of material fact about whether the disclosure of a species, i.e., “one click of a mouse,” was sufficient to show that the inventors possessed the genus, i.e., “single action of a user input device.”  Thus, the Federal Circuit held that the District Court did not abuse its discretion in determining there was a dispute of material fact and precluding a grant of summary judgment on the issue.

The Federal Circuit also found that the District Court’s jury instruction was not legally erroneous, and that the District Court did not abuse its discretion by allowing TT’s expert witness to testify generally about the written description requirement.   Lastly, the Federal Circuit looked at the merits and found that the jury’s verdict was supported by substantial evidence on record showing that the written description was adequate.  The Federal Circuit noted that “the parties’ experts did not dispute that one of ordinary skill in the art would have know about other forms of “single action” such as a double-click or pressing a key,” and thus, “disclosure of a species in this case provides sufficient written description support for a later filed claim directed to a very similar and understandable genus.”  Therefore, the Federal Circuit found that the ‘132 and ‘304 patents were entitled to claim priority to the provisional application.

No On Sale bar for Service Contract to Build Invention

The District Court granted a motion in limine precluding eSpeed from alleging the on-sale bar defense, and eSpeed appealed the decision.  eSpeed relied upon the fact that Harris Brumfield, one of the inventors, hired TT to build trading software according to his idea.  TT and Brumfield entered into a contract, Individual Consulting Agreement #2 (ICA2), in which TT would build trading software according to Brumfield’s specifications.  TT delivered the software to Brumfield in February 1999, and Brumfield paid TT for the custom software on March 2, 1999.  The Federal Circuit affirmed the District Court’s de facto decision that ICA2 was not a sales transaction for a product embodying the patented invention, as is required for an on-sale bar under 35 U.S.C. §102(b).

The Federal Circuit stated that the ICA2 was a contract for hourly programming services, and not a computer software license, as eSpeed contended, and that Brumfield did not sell or offer anything for sale that would embody the invention.   Additionally, no product was ever sold to Brumfield.  Thus, the Federal Circuit stated that “[i]nventors can request another entity’s services in developing products embodying the invention without triggering the on-sale bar,” and that Brumfield’s contract with TT did not constitute a sale under 35 U.S.C. §102(b).

With respect to TT’s alleged inequitable conduct, the Federal Circuit found that the District Court was correct in finding that TT did not engage in such by not disclosing Brumfield’s custom software to the USPTO because the software wasn’t material to the question of patentability.  Brumfield used the software after March 2, 1999, however, the Federal Circuit stated that the “District Court did not clearly err by finding that Brumsfield’s software was immaterial given that his use of the software after the priority date would not have changed the examiner’s analysis of the patent.”  eSpeed further alleges that TT should have disclosed the “sale” of the software from TT to Brumfield, and Brumfield’s testing of the software to the USPTO.  The Federal Circuit noted that the ICA2 contract was not a sale under 35 U.S.C. §102(b) and that Brumfield tested the software for his own personal purposes, confidentially, and that he kept the software secret until he and TT filed the provisional application.  Thus, the Federal Circuit found no inequitable conduct on the part of TT.


In summary, the Federal Circuit upheld the District Court on all matters decided by the District Court.  Particularly, the Federal Circuit noted that the use of “the present invention” rather than “a preferred embodiment” or just “an embodiment” in the specification can be used to support the Federal Circuit Court’s use of the specification’s embodiment as reflecting the claims.  Additionally, the Federal Circuit found that, in the present case, prosecution history estoppel can be used to bar the use of doctrine of equivalents.  The Federal Circuit also stated that “disclosure of a species in this case provides sufficient written description support for a later filed claim directed to a very similar and understandable genus,” in finding the provisional application an adequate written description for the ‘132 and ‘402 patents.  Also, the Federal Circuit held that “[i]nventors can request another entity’s services in developing products embodying the invention without triggering the on-sale bar.”  Therefore, the Federal Circuit found no reversible error and affirmed the District Court’s decision.

Significance for Patent Owners and Applicants

In Trading Technologies Int’l, the Federal Circuit again emphasizes the importance of the specification in defining claim terms using the specification.  The Federal Circuit scoured the specification looking for a more expansive definition given to a particular claim term, and were unable to find alternative embodiments which would have allowed such an expansive interpretation.  Indeed to the contrary, the Federal Circuit found that the applicants had not even indicated that the claim term was only an embodiment, and instead emphasized that the claim term was part of the present invention, as opposed to only an embodiment of the present invention.  Therefore, when drafting claims and specifications, it is important that the specification include multiple embodiments for each claim term and avoid characterizing any particular embodiment as being the invention as opposed to an example of that invention.