In re Paul Lew.
Use of the phrase “the invention” in combination with a specific element is “strong evidence” that the inventor intended his invention to be limited to embodiments containing the element.
(Fed. Cir. 2007, 07-1196, nonprecedential)
Paul Lew and Jason Schiers (collectively “Lew”) appealed a decision of the BPAI sustaining a final rejection of claim 19 of patent application No. 10/658,143 (the ‘143 application”). The CAFC affirmed.
The technology at issue was a “wheel hub with clutch,” primarily intended for bicycles, which allows the wheel connected to the hub to “free wheel” when no torque is applied (e.g., the bicycler is not pedaling), but which nearly instantly engages when torque is applied (e.g., the bicycler is pedaling). According to Lew’s original specification, this torque transfer is facilitated “through a multitude of ball bearings.”
During prosecution, Lew submitted Claim 19 and a substitute specification to overcome a statutory double patenting rejection. The substitute specification was substantially the same as the original specification, except that the term “ball bearings” was replaced with “curved members,” and the term ”pockets” were replaced with “slots.” Notably, the term “curved members” was not previously used anywhere in the application. The Examiner concluded that the amendments introduced new matter into the application that was not supported by the initial disclosure. Lew argued that, because a “ball bearing” is inherently a curved object, Lew was entitled to claim the entire broader category of “curved objects.” Thus, the issue before the CAFC was “whether Lew’s disclosure of only “ball bearings” is sufficient, in light of the initial disclosure, for a person of ordinary skill in the art to have determined that Lew was in possession, as of the initial filing date, of using any “curved member” in place of the ball bearings?”
Under 35 U.S.C. § 132 (no new matter) and 35 U.S.C. § 112, first paragraph (written description requirement), a new claim or other amendment to a specification after the original filing date must find support in the original specification. The CAFC reiterated the long-held rule that an application is required to “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Although the claimed subject matter need not be described “in haec verba”, the issue rests on whether a person of ordinary skill in the art would recognize that the applicant possessed what is claimed in the later filed application as of the filing date of the earlier filed application.
The CAFC noted that there was no language in the original written description that would suggest that using “ball bearings” was only one specific embodiment of Lew’s invention. In fact, each time the phrase “the invention” was described, including in the summary of the invention and the abstract, the invention was stated to include “ball bearings.” The CAFC has consistently viewed such language as “strong evidence” that the inventor intended his invention to be limited to embodiments containing such an element.
Accordingly, the CAFC held that substantial evidence supported the Board’s determination that Lew’s amendments to replace the term “ball bearing” with the broader term “curved member” were not supported by the initial disclosure.
AFFIRMED.
CIAS, Inc. v. Alliance Gaming Corporation, et al.
The phrase “comprised of” does not of itself exclude the possible presence of additional elements or steps.
CIAS filed suit against Alliance, alleging infringement of U.S. Patent No. 5,283,422 (the ‘422 Patent). The 422 Patent relates to counterfeit detection systems. Alliance produces detection systems for tickets used in casino slot machines. At District Court, Alliance was granted a summary judgment of non-infringement on the basis of the court’s construction of the term “comprised of”. On appeal, although affirming the judgement of the District Court, the CAFC found that the District Court erred in it’s construction of the term “comprised of”.
Claim 1 of the ‘422 patent recites:
1. A counterfeit detection system for identifying a counterfeit object from a set of similar authentic objects, each object in said set having unique authorized information associated therewith comprised of machine-readable code elements coded according to a detectable series, the system comprising:
means at a first facility for storing said authorized information;
means at a plurality of facilities other than said first facility for machine-reading code elements from a similar object and providing information related to the machine-read code elements;
means coupled to receive said information related to code elements machine-read from said object for at least temporarily storing that information; and
means at said first facility for detecting counterfeits coupled to said storing means and to said means for temporarily storing, said detecting means including a computer programmed to detect a counterfeit from information in said storing means at said first facility and from information received by said means for temporarily storing when information related to code elements machine read from a similar object is different from said authorized information; and
means for detecting when information relating to said code elements read from a similar object is the same as information previously read from a similar object, whereby a counterfeit may be detected.(Emphasis added).
The district court found that the meaning of “comprised of” had not been clearly resolved in patent-specific precedent. Therefore, the court held that the “ordinary and customary meaning” should be used, and ruled that the term “comprised of” does not have the same open-ended meaning as the term “comprising”. Thus, the court construed ”comprised of” as a closed-end term, similar to the term “consisting of”, that excludes the presence of all elements beyond those presented in the “comprised of” clause.
The CAFC disagreed with the District Court’s construction. Although “comprised of” is not used as regularly as “comprising,” and “comprised of” is sometimes used other than as a “transition phrase,” it nonetheless is recognized as a long-standing open-ended term. The usual and generally consistent meaning of “comprised of,” when it is used as a transition phrase, is that the ensuing elements or steps are not limiting. The conventional usage of “comprising” generally also applies to “comprised of.” Court precedent reflects the general understanding and usage of “comprised of” in patent convention has the same meaning as “comprising.” Correctly construed, “comprised of” does not of itself exclude the possible presence of additional elements or steps.
U.S. Supreme Court to Hear Patent Exhaustion Case.
The U.S. Supreme Court has recently granted certiorari for a patent case, namely Quanta Computer v. LG Electronics (06-937). The question presented by petitioner Quanta is:
Whether the Federal Circuit erred by holding, in conflict with decisions of this Court and other courts of appeals, that respondent’s patent rights were not exhausted by its license agreement with Intel Corporation, and Intel’s subsequent sale of products under the license to petitioners.
The doctrine of patent exhaustion, also known as the first sale doctrine, typically states that an unrestricted sale of a patented item exhausts the patentee’s right to control the purchaser’s use of the item thereafter. The CAFC had found that the license agreement at issue ”expressly disclaim[ed] granting a license allowing computer system manufacturers to combine Intel’s licensed parts with other non-Intel components.” Thus, although Intel was free to sell its microprocessors and chipsets, those sales were conditional. Intel’s customers were expressly prohibited from infringing LGE’s combination patents. Accordingly, the CAFC held that LGE’s rights in asserting its system claims were not exhausted, because the exhaustion doctrine does not apply to expressly conditional sales or licenses.
Links related to the Quanta Computer v. LG Electronics case may be found here: the July 2006 Federal Circuit opinion, the Supreme Court docket, Quanta’s petition, LG’s brief in opposition, and Quanta’s reply (petition, brief, and reply via SCOTUS Blog).
In Re Petrus A.C.M. Nuijten.
A “signal” is not patentable subject matter because it is not a tangible article or commodity.
The issue before the CAFC was whether or not a signal is patentable subject matter? Nuijten appealed a decision of the BPAI that maintained a rejection of his claims reciting a “signal” encoded in a particular manner. The CAFC affirmed.
The technology at issue relates to a technique for reducing distortion induced by the introduction of “watermarks” into signals. The Nuijten technique improved upon existing watermark technology by modifying the watermarked signal in a way that partially compensated for distortion introduced by the watermark. Claim 14 at issue recites:
A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.
In first construing the term “signal,” the CAFC determined that a signal is more than just data. Some physical form for the signal is required - but the nature of the physical carrier is totally irrelevant to the issue of whether the signal constitutes statutory subject matter. Instead, the appropriate inquiry was whether a transitory propagating signal is within any of the four statutory categories: process, machine, manufacture, or composition of matter? The CAFC addressed these categories as follows.
1) Process
The Supreme Court and this court have consistently interpreted the statutory term “process” to require action. A process consists of doing something, and therefore has to be carried out or performed. Nuijten noted that the claimed signal must be “encoded in accordance with a given encoding process.” However, the presence of acts recited in the claim does not transform a claim covering a thing—the signal itself—into one covering the process by which that thing was made. The signal claims are not directed to a process.
2) Machine
The Supreme Court has defined the term “machine” as “a concrete thing, consisting of parts, or of certain devices and combination of devices.” A transitory signal made of electrical or electromagnetic variances is not made of “parts” or “devices” in any mechanical sense. While such a signal is physical and real, it does not possess concrete structure in the sense implied by these definitions. A signal is clearly not a machine.
3) Manufacture
The majority noted that this statutory category was the most difficult to analyze here. Articles of manufacture are man-made, in the sense of having been encoded, generated, and transmitted by artificial means. However, artificiality is insufficient by itself to render something a “manufacture.” Under the statutory use of the term “manufacture” and dictionary definitions, “articles” of “manufacture” are defined as tangible articles or commodities. A transient electric or electromagnetic transmission does not fit within that definition.
4) Composition of matter
The Supreme Court has defined “composition of matter” to mean “all compositions of two or more substances and all composite articles.” A signal comprising a fluctuation in electric potential or in electromagnetic fields is not a “composition[s] of matter.”
Accordingly, the CAFC held that a transitory, propagating signal cannot be patentable subject matter.
AFFIRMED.
Judge Linn dissented-in-part, arguing that the definition of a “manufacture” should not be limited to tangible, non-transitory things. Instead, under an expansive view of the term “manufacture,” the dissent would hold that a signal that is a non-naturally occurring product of human ingenuity is patentable subject matter if it is otherwise new, useful, and non-obvious.
In Re Stephen W. Comiskey.
When an unpatentable mental process is combined with a machine, the combination may produce patentable subject matter.
On appeal from the Board of Patent Appeals and Interferences (BPAI), the CAFC was asked to consider whether Comiskey’s “business method” claims constituted patentable subject matter under 35 U.S.C. § 101? Comiskey’s claims recited a method and system for mandatory arbitration involving legal documents (such as wills or contracts).
The current 35 U.S.C. § 101 states:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.
The PTO had argued that Comiskey’s independent claims were directed at an unpatentable abstract idea, and not a patentable process, because they were neither tied to a particular machine nor operated to change materials to a different state or thing.
The CAFC noted that “patentable subject matter under the 1952 Act is extremely broad,” but it is not without limits. When an abstract concept has no claimed practical application, it is not patentable. Mental processes—or processes of human thinking—standing alone are also not patentable even if they have a practical application. The courts have consistently refused to find processes patentable when they merely claimed a mental process standing alone and untied to another category of statutory subject matter, even when a practical application was claimed.
The CAFC held that patents are not to be issued on particular business systems—such as a particular type of arbitration—that depend entirely on the use of mental processes. Some of Comiskey’s claims did not require a machine, and were instead drawn to the use of human intelligence itself. These claims were not patentable.
On the other hand, the CAFC observed that some of Comiskey’s claims recited a “module,” and that a broad interpretation of the term includes a computer. The Supreme Court has held that a claim reciting the abstract concept can state statutory subject matter only if, as employed in the process, it is embodied in, operates on, transforms, or otherwise involves another class of statutory subject matter, i.e., a machine, manufacture, or composition of matter. A claim that involves both a mental process and one of the other categories of statutory subject matter may therefore be patentable under § 101. Accordingly, Comiskey’s claims that recited a “module” may be patentable.
AFFIRMED-IN-PART, VACATED-IN-PART and REMANDED to the PTO to determine whether the addition of general purpose computers or modern communication devices to Comiskey’s otherwise unpatentable mental process would have been non-obvious to a person of ordinary skill in the art.
In Re John B. Sullivan, et al.
When an applicant puts forth evidence to rebut a prima facie case of obviousness, the evidence must be considered.
On appeal from the BPAI, the CAFC vacated the BPAI’s decision that affirmed a final rejection of application Serial No. 08/404,454 (the ‘454 application) on obviousness grounds.
Sullivan had originally filed the ‘454 application with claims directed to an antivenom composition. During prosecution, Sullivan had provided three expert declarations related to the use of the claimed composition as an antivenom. The BPAI, in finding the claims unpatentable, stated in a footnote that:
The remainder of appellants [sic] arguments on this record, in addition to the Declarations of record, relate to the use of the claimed composition as an antivenom. Since we have placed not [sic] weight on the intended use of appellants’ composition we do not address these arguments or the Declarations.
Sullivan argued that even if the BPAI established that the claimed composition was prima facie obvious over the cited references, the BPAI erred by ignoring extensive rebuttal evidence (teaching away, unexpected properties, and other objective indicia of nonobviousness) in the expert declarations.
The CAFC agreed that the BPAI imroperly failed to consider the rebuttal evidence. When a prima facie case is made by the PTO, the burden shifts to the applicant to come foward with evidence and/or argument supporting patentability. Evidence rebutting a prima face case of obviousness can include: “evidence of unexpected results,” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1369 (Fed. Cir. 2007), evidence “that the prior art teaches away from the claimed invention in any material respect,” In re Peterson, 315 F.3d 1325, 1331 (Fed. Cir. 2003), and evidence of secondary considerations, such as commercial success and long-felt but unresolved needs, WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). When a patent applicant puts forth rebuttal evidence, the Board must consider that evidence.
The BPAI’s focus on the intended use of the composition missed the mark. The issue was not whether the claim recited a new use, but whether the subject matter of the claim possessed an unexpected use. An unexpected property is relevant, and thus the declarations that described it should have been considered by the BPAI.
VACATED AND REMANDED.
Egyptian Goddess, Inc., et al. v. Swisa, Inc., et al.
For a combination of individually known elements to constitute a point of novelty for design patent infringement purposes, the combination must be a non-trivial advance over the prior art.
Egyptian Goddess (EGI) argued that the district court’s (N.D. Tex) summary judgment of noninfringement of U.S. Design Pat. No. 467,389 (the D’389 patent) was improper. On appeal, the CAFC disagreed with EGI and affirmed the summary judgment.
The D’389 patent covered an ornamental nail buffer (see above). Swisa was sued by EGI, claiming that Swisa nail buffers infringed the D’389 patent. The district court granted summary judgment on the ground that the Swisa nail buffers did not contain the point of novelty of the patented design; namely, the addition of a fourth side without a pad.
There are two distinct requirements for establishing design patent infringement, namely:
1) The ordinary observer test - requires that “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, [the] two designs are substantially the same . . . the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.” Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528 (1871).
2) The point of novelty test - requires that “no matter how similar two items look, ‘the accused device must appropriate the novelty in the patented device which distinguishes it from the prior art.’” Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984) (citing Sears, Roebuck & Co. v. Talge, 140 F.2d 395, 396 (8th Cir. 1944)).
The CAFC recited that “[t]he point of novelty must include features of the claimed design that distinguish it from the prior art. Additionally, for a combination of individually known design elements to constitute a point of novelty, the combination must be a non-trivial advance over the prior art. EGI’s asserted point of novelty is a combination of four elements: 1) an open and hollow body, 2) a square cross-section, 3) raised rectangular pads, and 4) exposed corners.
Neither EGI nor Swisa disputed that the referenced prior art to the D’389 design contained all the elements of the D’389 design, except for the fact that the body was triangular rather than square in cross-section (see below) .
There was also no dispute that nail buffers with square cross-sections were widely known in the prior art. In light of this, the CAFC held that no reasonable juror could conclude that EGI’s asserted point of novelty constituted a non-trivial advance over the prior art. Furthermore, even if the point of novelty were to include a fourth side without a raised pad, as found by the district court, the Swisa buffers had pads on all four sides. The CAFC concluded that this is not a minor difference from the D’389 design. Accordingly, the summary judgment of noninfringement was properly granted.
AFFIRMED.
Circuit Judge Dyk dissents, stating:
. . . [B]y conflating the criteria for infringement and obviousness, the [new] test eviscerates the statutory presumption of validity by requiring the patentee to affirmatively prove nonobviousness. . . . Under the majority’s test . . . the patentee would have to prove nonobviousness in order to establish infringement.
Sinorgchem v. ITC & Flexsys America.
Range of “Controlled Amount” Narrowly Construed Based on Definition in the Specification; Majority Panel Ignores Contrary Disclosure and the Signal “For Example” in Relation to the Range.
(Fed. Cir. 2007, 06-1633)
On appeal to the CAFC, Sinorgchem argued that a limited exclusion order by the International Trade Commission (“ITC”) and decision that Sinorgchem infringed four method claims of Flexys America’s U.S. Pat. Nos. 5,117,063 (“the ’063 patent”) and 5,608,111 (“the ’111 patent”) was improper. A majority of a three-judge panel at the CAFC agreed with Sinorgchem and vacated the ITC decision.
The technology at issue relates to a compound known as 6PPD, a rubber antidegradant used primarily in tires. An intermediate compound, 4-aminodiphenylamine (4-ADPA) is used to make 6PPD. Sinorgchem produces 4-ADPA and 6PPD in China and imports 6PPD for sale into the United States.
The process for making 4-ADPA includes a condensation reaction of aniline and nitrobenzene in the presence of a base and a protic material (a proton donor, such as water). Flexsys’ claimed process for producing 6PPD includes the step of:
The central question was whether Sinorgchem’s method of producing 4-ADPA intermediates satisfied the above claim limitations and, in particular, whether the Sinorgchem’s methods used the controlled amount of protic material? Sinorgchem argued that ”controlled amount of protic material” should be construed to be “up to about 4% water”. Under this construction, Sinorgchem would not infringe because Sinorgchem’s method employs more than 4% water. Flexsys argued that “controlled amount” means “that the amount of protic material should be controlled between an upper limit and a lower limit,” where the upper limit was “that amount beyond which the reaction between nitrobenzene and aniline is inhibited,” and the lower limit was “that amount below which the desired selectivity for 4-ADPA intermediates is not maintained.” Under Flexsys’ claim construction, the Sinorgchem process would infringe.
The majority panel found that the ITC’s determination of infringement was based on an erroneous construction of the term “controlled amount”, and that Sinorgchem did not literally infringe under a correct construction. The majority relied on Flexsys’ specifications, which state:
The CAFC placed emphasis on the use of quotations marks around the term “controlled amount”, and use of the word “is”, as being indicative of the patentee acting as its own lexicographer in defining the term. The majority disagreed with the ITC’s finding that the ” “up to about 4% H2O” language was used in the specification as an example and not a definition of the amount of water permitted,” stating that ”a definition set forth in the specification governs the meaning of the claims.” The majority also disagreed with the ITC’s reliance on a Flexsys example where more than 10% water in a reaction was described. Specifically, the majority opined:
The majority panel of the CAFC also found it significant that the Flexsys example relied upon by the ITC does not expressly disclose the amount of water used in the reaction, and that the amount must instead be determined by a “complex calculation”.
Accordingly, the majority REVERSED AND REMANDED to the ITC to address doctrine of equivalents infringement in light of the holding that there was no literal infringement.
Circuit Judge Newman provided a strong DISSENT, stating that the majority:
Specifically, Judge Newman recognized that:
Nicely driving the absurdity of the majority decision home, Judge Newman further states:
JW Note: See also previous AT! discussions of Flexsys America v. Sinorgchem et al. here and here.