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,

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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

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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

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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

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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

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Federal Circuit Interprets Term “Providing a Communication Link” using the Objects of the Invention and Abstract

In Netcraft Corp. v. eBay et al., No. 2008-1263 (Fed. Cir. 2008), Netcraft obtained two patents related to Internet billing methods: U.S. Patent No.6,351,739 (the ‘739 patent) and U.S. Patent No. 6,976,008 (the ‘008 patent).  Both patents claimed priority to U.S. Patent No. 5,794,221 (the ‘221 patent), and thus both patents contained identical specifications.  Netcraft sued eBay and eBay’s subsidiary PayPal for infringement of these patents.  eBay raised a non-infringement defense, arguing that eBay did not provide Internet access and therefore did not “provid[e] a communication link” as recited in the asserted claims.  The District Court agreed, and granted eBay’s motion for summary judgment of non-infringement.  Netcraft appealed to the Federal Circuit, which upheld the District Court’s ruling. The Federal Circuit’s ruling revolved around the meaning of the disputed term “providing a communication link…through equipment of the third party”, which was recited in the representative claim 1 of the ‘739, but which was not used or defined in the specification. 

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Federal Circuit Defines Term In View of Consistent Single Usage in Specification and Finds Term “Comprising” Does Not Automatically Broaden the Term

In Board of Regents of the University of Texas System v. BENQ America Corp., 533 F.3d 1362, 87 USPQ2d 1437 (Fed. Cir. 2008), the Board of Regents of the University of Texas System (“Board of Regents”) appealed the District Court for the Western District of Texas’s final judgment that BENQ America, Corp., et al. (collectively “BENQ”) did not infringe Board of Regents’ U.S. Patent No. 4,674,112 (“the ‘112 patent”). The Federal Circuit affirmed the District Court’s decision. The ‘112 patent describes an apparatus and method designed to enable “non-verbal entry” and transmission of a word/words using a standard, touch-tone telephone. Because each key on a standard touch-tone telephone represents more than one letter, the user depresses a key one time for any of its corresponding letters, and the method compares this sequence against a vocabulary directory of possible words that the user may be intending to enter. The system minimizes memory requirements and enables an expanded word recognition capability by

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Federal Circuit Uses Background of the Invention to Disclaim Claim Scope

In SafeTCare Manufacturing Inc. v. Tele-Made Inc., 83 U.S.P.Q.2d 1618 (Fed. Cir. 2007), SafeTCare owns U.S. Patent No. 6,357,065 (the ‘065 patent), which is drawn to a variable width bariatric modular bed for use with obese hospital patients.  In order to move bed sections, a force is applied to a lift dog, which the court recognized as a term of art relating to a bracket attached to a movable deck assembly or lift assembly.  In the Background section of the specification, the ‘065 patent discusses how the prior art uses “electric motors [that] are known to apply a pulling force on structural members attached to the bed frame.”  By way of contrast, the ‘065 patent in the Summary of the Invention describes motors which “apply pushing forces against the lift dogs” and that the electric motors use “pushing (as opposed to pulling) forces applied by the electric motors to raise the frame and the mattress support deck.”  The specification also

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Federal Circuit Defines Card in Light of Specification to Exclude Coverage of PDA

In E-Pass Technologies, Inc. v. 3Com Corp. 81 USPQ2d 1385 (Fed. Cir. 2007), E-Pass is the assignee of U.S. Patent No. 5,276,311 (the “‘311 patent”), entitled “Method and Device of Simplifying the Use of a Plurality of Credit Cards, or the Like.”  The object of the invention is to provide a method and device for substituting a single electronic multifunction card for multiple credit cards …to address problems associated with carrying multiple cards, “the user needs, and is required to carry about, [only] a single card.”  On February 28, 2000, E-Pass filed a complaint of patent infringement against 3Com Corporation and Palm, Inc. (collectively, “3Com”).  In the complaint, E-pass accused 3Com of inducing consumers to practice the steps of the patented method on its Palm VII and Palm VIIx personal digital assistant (“PDA”) products. 

Federal Circuit Interprets Claim Terms Based Upon Specification Examples and Clarifies Claim Interpretation to Preserve Validity of Claims

In MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323 , 81 USPQ2d 1661 (Fed. Cir. January 24, 2007), the Court of Appeals for the Federal Circuit affirmed-in-part, and reversed-in-part claims construction, and vacated a summary judgment ruling by the U.S. District Court for the District of Massachusetts.  MBO appealed the holding of summary judgment of non-infringement for Becton, of MBO’s patent relating to a hypodermic safety syringe, U.S. Patent No. RE 36, 885 (‘RE ‘885 patent’).  The RE ‘885 patent covers a safety syringe with an attached guard device.  When the needle is extracted from a patient, a guard body mechanism attached to the syringe engages as the needle is retracted into the guard, and a flange portion covers and prevents the needle tip within the guard from exposure, preventing accidental puncture.  Prosecution history indicates a series of patents, based on continuations and continuations-in-part, ultimately resulting in issuance of U.S. Patent No. 5,755,699 (the ‘699 patent).  MBO

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