State Bar Advanced CLE Presentation August 2012 (selinger)

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California Texas New Jersey North Carolina WHAT EVERY TRIAL LAWYER SHOULD KNOW ABOUT CLAIM CONSTRUCTION Presented by: Jerry R. Selinger

Transcript of State Bar Advanced CLE Presentation August 2012 (selinger)

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WHAT EVERY TRIAL LAWYER SHOULD KNOW ABOUT CLAIM CONSTRUCTION

Presented by: Jerry R. Selinger

California Texas New Jersey North Carolina1Overview Of Claim ConstructionStarts with a goal not done in a vacuum Avoid infringement/create invalidity defense Avoid prior art but read on accused deviceThe Markman ruling often is outcome determinative (generally speaking)Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)

2Caveat on outcome determinativeSeveral studies on reversal rates at the Federal Circuit because of claim construction errorsJudge (then Professor) Kimberly MooreProfessor David SchwartzBut few cases get all the way through appealClaim construction remains a settlement driver3Value Added by Trial Counsel The Federal Circuit and the Supreme Court have given us general guidelinesBut the devil is often in the detailsTrial counsel who is not taking the laboring oar still adds value to the Markman processEnsuring the focus is on issues that matterEnsuring your position is communicated effectively to an often non-technical decision makerProviding a sanity check on constructions

4K-2 Corp., 191 F.3d 1356 (Fed. Cir. 1999)In claim construction, [c]ourts do not rewrite claims; instead, we give effect to the terms chosen by the patentee. 5Phillips , 415 F.3d 1303 (Fed. Cir. 2005) (en banc)In determining the meaning of a claim term, a court may look to:the language of the claims, the specification, prosecution history, andextrinsic evidence. 6

Phillips, 415 F.3d at 1312-1313Claim terms are generally given their ordinary and customary meaning. Ordinary meaning is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention and in the context of the entire patent. 7Phillips, 415 F.3d at 1315[T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. 8Phillips, 415 F.3d at 1316A patentee may define his own terms, give a claim term a different meaning than the term would otherwise possess, disclaim or disavow claim scope. Otherwise, terms in a patent will have the meaning those terms would have to one of ordinary skill in the art.9Thorner v. Sony (Fed. Cir. Feb. 1, 2012)To act as a lexicographer, the patentee must clearly do so by setting forth a definition of the term other than its plain and ordinary meaning.The claim term was attached to said pad.Sony argued specification used attached to refer to outside connection and embedded for internal connection.District court ruled that specification redefines attached by implication10Thorner, contdThe Federal Circuit disagreed disavowal and lexicography require a clear and explicit statement by the patenteeStated that merely disclosing an embodiment, or criticizing a prior structure is not disavowalSought to distinguish cases as being pre-Phillips 11Narrowing ClaimsBoth claim amendments and statements to distinguish a claim over prior art can narrow claim scope. Spectrum Intl, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378 (Fed. Cir. 1998) The prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution. Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) Clear and unambiguous disclaimer

1213Deference to the District Court?Claim construction is a question of law for the court. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc)The Federal Circuit gives district court claim constructions no deference.Even if the district court heard conflicting expert testimony

14Deference (contd.)The absence of deference may be one reason for the Federal Circuits reversal rate on claim constructionThe de novo standard of review for claim construction might change one daySo - continue to make your recordTHE ROLE OF THE SPECIFICATIONOngoing debate over line-drawing Within the Federal Circuit15The Role of the SpecificationIt is improper to import a limitation from the specification into the claims. See Phillips, 415 F.3d at 1323.But there is a fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims. Retractable Tech., Inc. v. Becton, Dickinson & Co., 653 F. 3d 1296, 1323-24 (Fed. Cir. 2011)(emphasis added)

16Retractable Tech., 653 F. 3d 1296The district court construed the term body as not limited to a one-piece structure. Id. at 1302. The patent contained an independent claim that recites a body, with one dependent claim that limited the body to a one-piece body. Id. at 1305. But none of the claims expressly recite a body that contains multiple pieces. Id.

17Retractable Tech., 653 F. 3d 1296The specifications indicate that the claimed body refers to a one-piece body. In distinguishing prior art syringes, [it] state[s] that the prior art had failed to recognize a retractable syringe that can be molded as a one piece outer body. [E]ach figure that depicts a syringe body shows a one-piece body. In contrast, the specifications do not disclose a body that consists of multiple pieces or indicate that the body is anything other than a one- piece body. Id. at 1305

18Retractable Tech., 653 F. 3d 1296In reviewing the intrinsic evidence to construe the claims, we strive to capture the scope of the actual invention, rather than strictly limit the scope of claims to disclosed embodiments or allow the claim language to become divorced from what the specification conveys is the invention. Id. at 1305 (emphasis added).

19Retractable Tech., 653 F. 3d 1296In this case, while the claims leave open the possibility that the recited body may encompass a syringe body of more than one piece, the specifications tells us otherwise. Id.Consequently, a construction of body that limits the term to a one-piece body is required to tether the claims to what the specifications indicate the inventor actually invented. Id.20Retractable Tech., 653 F. 3d 1296Chief Judge Rader dissented:The ordinary and customary meaning of body does not inherently contain a one-piecestructural limitation.The claims themselves, not the written description portion of the specification, define the patented invention.21Atlantic Research659 F.3d 1345 (Fed. Cir. 2011)Patentee sought to limit claim constructionArgued that certain claims should not be construed more broadly than the specification.The district court construed those claims as written and held them invalid for failure to meet the written description requirement of 112, 1.Federal Circuit affirmed It refused to ignore substantive differences between claims or to eviscerate the plain meaning of the claim language.22ZapMedia Services, Inc. v. Apple, IncNo. 2011-1546, 2012 U.S. App. LEXIS 8273 (Fed. Cir. Apr. 25, 2012) (non-precedential)

23ZapMedia ServicesSystem and method for distributing media assets to user devices and managing rights of the media assets In the preferred embodiment, a user obtains an account on a server, is issued a password and a virtual private media asset database is created.Slip Op. at 2.That account keeps track of the licensed media assets (e.g., songs and videos) and the various media player devices registered by the user.Id. at 3.

24ZapMedia ServicesDuring prosecution, ZapMedia distinguished over a patent in which it argued that media assets can be copied and used by ANY player device, not a subset of player devices that are associated with a user account. Slip. Op. at 4 (emphasis in original) Claim language was authorized media player devices with access to media assets. Id.25ZapMedia ServicesThe district court construed all asserted claims [to] require that access to the media assets be limited only to those media players specified in the user account. Slip. Op. at 4 (emphasis in original).In other words, if a system allowed access to media assets through the user account by an unauthorized device, it would not infringe. Id.This negative limitation was affirmed, in light of the claim language, written description, and the prosecution history. Id. at 8.

26THE EVOLUTION OF 112, 6Following In Re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994)27The Language of 112, 6An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material or acts described in the specification and equivalents thereof.35 U.S.C. 112, 6

28Application of 112, 6When a claim uses the term "means" in a limitation, the inventor is presumed to have used the term to invoke 35 U.S.C. 112, 6. A court must first identify the function of the limitation and then identify the corresponding structure for that function disclosed in the specification and linked to the function. B. Braun Med., Inc. v. Abbott Labs, 124 F.3d 1419, 1429 (Fed. Cir. 1997); In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011)

29In re Aoyama, 656 F.3d 1293 The dispute was about what structure was disclosed in the specification and linked to the function of generating transfer data.The Board of Appeals found the function was linked to the flowchart of Figure 8.However, because Figure 8 disclosed insufficient structure, the Board expanded its construction of transfer data to include shipping data.

30In re Aoyama, 656 F.3d 129331

In re Aoyama, 656 F.3d 1293The Board erred by identifying structure that was not clearly linked or associated by the specification or prosecution history with the function actually recited in the claim, i.e., generating transfer data. Where the disclosed structure is a computer programmed to implement an algorithm, the patent must disclose enough of an algorithm to provide the necessary structure under 112, 6.The patentee may express this algorithm in any understandable manner, including as a flowchart, so long as sufficient structure is disclosed.

32In re Aoyama, 656 F.3d 1293Figure 8 fails to describe, even at a high level, how a computer could be programmed to produce the structure that provides the results described . . . . Because there is insufficient disclosure of structure under 112, 6, these claims were held to be unpatentable as indefinite under 112, 2.

33In re Katz, 639 F.3d 1303 (Fed. Cir. 2011)Began by referring to Aristocrat, 521 F.3d at 1330-31, where disclosed structure of a standard micro-processor based gaming machine with appropriate programming was held to be indefinite.An algorithm needed to be disclosed to avoid pure functional claiming.Pure functional claiming means all structure that could perform the recited function.34In re Katz, 639 F.3d 1303One limitation in dispute was a processing means . . . for receiving customer number data entered by a caller and for storing the customer number data . . . and based on a condition coupling an incoming call to the operator terminal . . . .The patent did not disclose an algorithm corresponding to the highlighted language.One claiming a processor programmed to perform a specialized function must disclose the internal structure of that processor in the form of an algorithm or the claim is invalid under 112, 2.

35In re Katz, 639 F.3d 1303Other claims recited a system with an interface means for providing automated voice messages . . . to certain of said individual callers, wherein said certain of said individual callers digital enter data.IPXL, 430 F.3d 1377, held claims indefinite because they claimed both an apparatus and a method of use.The Court rejected Katzs argument that IPXL did not apply because the wherein language defines functional capability, not a method step. 36In re Katz, 639 F.3d 1303Other claims recited processing, receiving, and storing.Those functions can be achieved by any general purpose computer without special programming.So the only structure that needed to be disclosed was the general purpose processor that performs those functions.

37Ergo Licensing, LLCErgo Licensing, LLC v. Carefusion 303, Inc., 673 F.3d 1361 (Fed. Cir. March 26, 2012).programmable control means for controlling said adjusting meansMemory or general purpose computer?The specification discloses that the control device [itself generic] has memory, but memory is not structure capable of performing the function of controlling the adjusting means. Id. at 1364. 38Ergo Licensing, LLCThe function of controlling the adjusting means requires more than merely plugging in a general-purpose computer. Rather, some special programming would be required in order to control the adjusting means. Id. at 1365.It is only in the rare circumstances where any general purpose computer without any special programming can perform the function that an algorithm need not be disclosed. Id.39Ergo Licensing, LLCEven described in prose, an algorithm is still a step-by-step procedure for accomplishing a given result. Id. at 1365. The specification merely provides functional language and does not contain any step-by-step process for controlling the adjusting means. Id.The district court correctly determined that the control means terms are indefinite for failure to disclose corresponding structure. Id.

40Micro Chem., 194 F.3d 1250 (Fed. Cir. 1999)If the word means is not used, a claim element is presumed NOT to invoke 112, 6.But the presumption is overcome when a limitation relies on functional language without reciting sufficient structure to perform the function. 41MIT , 462 F.3d 1344 (Fed. Cir. 2006)Claim term was colorant selection mechanism for receiving said modified appearance signals and for selecting corresponding reproduction signals representing values of said reproducing colorants to produce in said medium a colorimetrically-matched reproduction.Federal Circuit agreed the term needed to be construed under 112, 6.42HTC Corp v. IPComHTC Corp v. IPCom GMBH & Co., KG, 667 F.3d 1270 (Fed. Cir. 2012)The limitation arrangement for reactivating was construed under 112, 6, even though it did not use the word means.The specification needed to disclose adequate hardware structure and software structure.But those are arguments the lawyers had to make to the district court to preserve the arguments for appeal.

43Defining the Bounds of 112, 6Microprocessor Enhancement Corp v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)Apparatus claims may use functional language to limit the claims without using the means-plus-function format.Where the claim uses functional language but recites insufficient structure, 112, 6 may apply despite the lack of means for language. 44Defining the Bounds of 112, 6Typhoon Touch Techs., Inc. v. Dell, Inc. 659 F. 3d 1376 (Fed. Cir. 2011)a memory for storing at least one data collection application configured to determine contents and formats of said inquiries displayed on said screen.The district court construed this to be a memory that must perform the recited function.Typhoon complained that the district court improperly included a use limitation in an apparatus claim.45Typhoon Touch, 659 F. 3d 1376Typhoon argued that it suffices if the memory is capable of being configured to store data collection applications, even if the memory is not so configured.The district court held that the memory is actually programmed or configured to store the data collection application. No error of law or fact has been shown in requiring that the device be structured to store at least one data collection application. 46THANK YOUQUESTIONS?47