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Fresh from the Bench: Precedential Patent Cases from the Federal Circuit 

May 31, 2016

Overview

In re Aqua Products – The panel affirms a decision of the PTAB in an IPR, denying Aqua's motion to amend the claims. Under the IPR rules, a patentee has an opportunity to amend the claims or submit new claims, but only if they also demonstrate that the new claims would be patentable over the prior art of record. The panel upholds the Board's denial of Aqua's motion to substitute new claims because Aqua failed to meet its burden of demonstrating patentability of the new claims.

This case is another example of the Circuit giving broad discretion to the Board in affirming the denial of motions to amend claims. See also Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016);Prolitec, Inc. v. ScentAir Techs, Inc., 807 F.3d 1353 (Fed. Cir. 2015); and Microsoft Corp. v. Proxyconn, Inc., 789 F3d. 1292 (Fed. Cir. 2015).

Profectus v. Huawei – Profectus sued Apple, Dell, HP, Motorola and Samsung as well as dealers of their tablet computer devices for infringement of its utility patent directed to a mountable picture frame. The district court narrowly construed the term "mountable" and based on that, ruled on summary judgment that there was no infringement since the tablet data connection ports do not make them "mountable" devices as that term is construed. On appeal, the panel rules that the intrinsic record provides all that is needed to construe the claim, rejecting Profectus's dictionary definitions of terms using the common suffix "-able" as "capable of, fit or worthy of." Also rejected is the Profectus argument that its proposed construction comports with plain and ordinary meaning, citing the 2012 Federal Circuit Thorner v. Sony case, which held that terms like "mountable" should be given their plain and ordinary meaning.

As to summary judgment, a majority of the panel agrees that there exists no genuine dispute of material fact that the communication ports of the accused devices do not meet the "mountable" limitations. The communication ports are features for power, data, and communication, and not inherent features for mounting. That an external component can utilize a communication port to help prop an accused device does not convert the port into an inherent feature for mounting.

Judge Moore dissents, noting that she would vacate summary judgment of noninfringement as to Apple, Dell, Motorola, and Samsung. She argues that each accused tablet has a compatible dock on which the tablet can be mounted and stay upright. Each accused device also has a communication port on the bottom, which connects to the compatible dock's connector when the tablet is mounted. The record includes testimony that the docks are designed to mate with the ports in the accused devices and that the tension between the two connectors holds the tablet in place on the dock. Given this evidence, Judge Moore contends that a reasonable jury could have found that the communication ports, which fit to the dock's connectors, are features for mounting.

Netzer v. Shell – The panel affirms the grant of summary judgment of noninfringement as to a patent directed to a process for coproduction of ethylene and purified benzene in a process designed to be less expensive than conventional processes. The panel rules that the specification clearly shows that the inventor contemplated the claimed invention to be different from conventional extraction, such as that practiced by Shell, which produces highly pure, nitration-grade 99.9% benzene. Therefore, there can be no infringement, either literally or under the doctrine of equivalents.

The panel first affirms the district court's claim construction ruling, finding that the intrinsic record supports the narrower construction advocated by Shell in which the claim term "fractionating" was construed to mean separating compounds based on differences in boiling points, i.e., distillation, which excludes extraction, such as in the Sulfolane process. The specification repeatedly and consistently uses "fractionating" or "fractionation" to describe separating petrochemicals based on boiling point differentials. Moreover, the specification includes clear and unmistakable statements distinguishing the claimed invention from and disclaiming conventional extraction methods that produce 99.9% pure benzene. The panel rejects Netzer's argument of claim differentiation and the argument he makes that the specification supports his position quotes a sentence that is taken out of context.

The panel then applies the properly construed claim language to the accused process and rules that the district court did not err in granting summary judgment of noninfringement. Shell relies on conventional extraction—more specifically, its own Sulfolane process—to refine a mixture containing about 57% benzene to a benzene product of greater than 80% purity. The early steps of the Shell process produce only a 57% pure benzene mixture, which does not satisfy the claim limitation "to form a purified benzene product comprising at least about 80 wt % benzene."

In re Lakshmi Arunachalam – Dr. Arunachalam owns a patent that has been undergoing reexamination since November 2008. In September 2014, the Board affirmed the rejection of claims 9— 16, but designated a new ground of rejection for claim 16. Dr. Arunachalam elected to reopen prosecution of the claims, after which the examiner issued a final rejection in June 2015. Rather than appeal the examiner's final rejection to the Board, Dr. Arunachalam filed the instant appeal. Because the Circuit lacks jurisdiction to consider non-final appeals from the PTO, the action is dismissed for lack of jurisdiction.

  

In re Aqua Products, Inc., Fed. Cir. Case 2015-1177 (May 25, 2016)

The patent at issue concerns a propulsion mechanism for an automated swimming pool cleaner. Zodiac Pool Systems filed an IPR, citing two prior art references. Aqua moved to substitute new claims 22-24, which added additional limitations to distinguish the newly-cited art, and argued that the cited art did not render the substitute claims obvious because it did not teach the limitation added in claim 22. Although Aqua referenced the additional limitations added in claims 23 and 24, it did not argue that those additional limitations were non-obvious. Aqua also characterized its commercial embodiments as "successful" and it implied that Zodiac may have copied the design, but Aqua did not argue that these objective indicia were tied to the limitation added in claim 22, or that they otherwise demonstrated that the new limitation was non-obvious.

The Board denied Aqua's motion to amend, reasoning that claim 22 was obvious in view of the newly-cited art. The Board also concluded without analysis or evidence that the limitations of claims 23 and 24 were within the ordinary skill in the art, and noted in a footnote that Aqua's arguments regarding objective indicia of non-obviousness were unpersuasive.

Aqua appealed the Board's denial of its motion to amend, arguing that requiring the patentee to demonstrate non-obviousness impermissibly places the burden on the patentee, and that the Board abused its discretion by denying the motion to amend without considering all of the new limitations and the objective indicia of non-obviousness.

The panel noted that its precedent has upheld the Board's approach of allocating to the patentee the burden of showing that its proposed amendments would overcome the art of record. Given this precedent, the panel held that it could not revisit this question.

The only issue left open for consideration was whether the Board abused its discretion by failing to evaluate objective indicia of non-obviousness and the new limitations in claims 23 and 24, even though Aqua did not argue that those indicia and limitations rendered those claims non-obvious. The panel found no abuse of discretion, holding that the burden of demonstrating non-obviousness rested with Aqua. Thus, the Board's evaluation of Aqua's motion to amend was limited to considering only those arguments that Aqua actually raised. To hold otherwise would require the Board to fully reexamine the proposed claims in the first instance, effectively shifting the burden from the patentee to the Board. Denial of a motion to amend only requires that the Board show that it fully considered the particular arguments raised by the patentee and that it provided a reasoned explanation for why those arguments were unpersuasive. Those requirements were satisfied here.

   

Profectus Technology LLC v. Huawei Technologies, Inc., Fed. Cir. Case 2015-1016, -1018, -1019 (May 26, 2016)

Profectus's '308 patent claims "a mountable picture frame adapted to digitally display at least one still image thereon." Figure 1 of the patent shows a wall-mountable picture frame mounted to a wall, while Figure 4 shows a mountable frame resting on a flat surface.

 Picture Frame

In its claim construction ruling the district court construed "mountable" to mean "having a feature for mounting," observing that "mountable" appears in every independent claim, but noting that a mounting feature is not a preferred embodiment: "The picture frame or display must have some intrinsic mounting feature—not just a feature that could potentially render the frame or display capable of being mounted." The district court did not require that the mounting feature include all components needed to mount the frame or display, noting that even the "wall-mountable preferred embodiment" required use of an additional component (e.g., nails) to mount the frame to a wall.

The Construction of "Mountable " Is Affirmed

The district court properly construed "mountable" to mean "having a feature for mounting." The words of a claim are generally given their ordinary and customary meaning, which is the meaning that the term would have to a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Claim language must be viewed in light of the specification, which is the "single best guide to the meaning of a disputed term." Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996)). In accordance with Phillips, we first look to the actual words of the claims and then read them in view of the specification. Although courts are permitted to consider extrinsic evidence (e.g., expert testimony, dictionaries, treatises), such evidence is generally of less significance than the intrinsic record. Extrinsic evidence may not be used to contradict claim meaning that is unambiguous in light of the intrinsic evidence. The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction.

When read in view of the specification, the claims do not permit the expansive construction proposed by Profectus. The term "mountable" is a modifying word in the claims: "mountable picture display" (claims 1, 13, 22, 29, 31); "mountable picture frame" (claims 1, 22, 29); "wall mountable" (claims 6, 13, 22, 31); "desk top mountable" (claims 6, 22). Absent from the claims are words that embrace broader meaning, such as "capable of," "adapted to," or "configured to." The claim language is tailored to, characterizes, and delimits the claimed "picture frame" and "picture display."

The specification confirms the district court's understanding that being mountable requires having a feature for mounting. In every embodiment disclosed in the specification, the picture display or frame includes a feature for mounting the device to a wall or on a tabletop. The specification does not disclose a bare embodiment in which the picture display or picture frame lacks a feature for mounting. By noting that the picture display or frame must have some intrinsic mounting feature, the district court correctly recognized, consistent with the claim language and specification, that the picture display or frame must include something that may be used for mounting the device. We agree with the district court that Profectus's dictionary definition does not inform the analysis. We see no reason to depart from the intrinsic record.

Summary Judgment of Noninfringement Is Also Affirmed

Profectus appeals the grant of summary judgment on grounds that there exists a genuine dispute that the accused devices satisfy the "mountable" limitation. Profectus also contends that the court failed to draw factual inferences in its favor as the non-movant.

To show that the accused devices meet the "mountable" limitation, Profectus advances two arguments. First, Profectus contends that the district court erred by not permitting a jury to consider whether the size, shape, lightweight nature, and thinness of the accused devices are features for mounting. Profectus maintains that they are because they make the accused devices readily mountable with external accessories, in particular docking stations.

Second, Profectus argues that the jury should have been permitted to consider whether the communication/charging ("communication ports") of the accused devices are features for mounting. Profectus points to brochures and other marketing materials that advertise the accused devices alongside the docking stations as evidence that the communication ports, when used in combination with the docking stations, are features for mounting.

We agree with the district court that under the proper construction, there exists no genuine dispute of material fact that the communication ports and the cited physical characteristics of the accused devices do not meet the "mountable" limitations. The district court properly concluded that the communication ports are features for power, data, and communication, and not inherent features for mounting. That an external component can utilize a communication port to help prop an accused device does not convert the port into an inherent feature for mounting. Indeed, there is no evidence that, standing alone, the communication ports make the accused devices mountable for viewing, as, for example, set out in Figure 4 of the patent.

Conversely, there is no evidence that the communication ports are developed as inherent features for mounting the devices on a wall or tabletop. To conclude otherwise could render any digital display device susceptible to infringement to the extent an external object can be used to grasp onto any feature of the device that is not related to mounting. This approach to infringement is inapposite to the district court's construction of "having a feature for mounting," but is consistent with Profectus's proposed construction ("capable of being mounted"), which was rejected by the district court in the claim construction process. Under the court's construction, the feature must be a standalone inherent feature in the device. It is not enough that the feature is "just a feature that could potentially render the frame or display capable of being mounted." Here, no reasonable jury could find that because the communication port is incidentally capable of being used in conjunction with an external docking port to prop a device on a tabletop, the "mountable" limitation is met.

Although certain intrinsic physical features may combine to aid in mounting with external components, those features must be for mounting to meet the claim limitations. Hence, while the accused devices are capable of mounting by exploiting the communication ports and being easy to prop up due to their size and weight, we conclude that those characteristics do not make the accused devices mountable as claimed and fail to raise a genuine dispute of material fact as to whether features for mounting (or their equivalents) are present within the accused devices. There is no genuine dispute of fact that the accused devices were conceived apart from external accessories like docking stations: the docking stations were designed to work with the accused devices (not that the devices were designed to have features for mounting to the docking stations). Unrebutted testimony showed that the shape of the accused devices had little to do with the ability to mount the devices on docking stations. Rather, if the accused devices remained upright, it is because the docking stations created an environment to prevent featureless devices from toppling over.

Judge Moore's Dissent

Because I think Profectus has proffered sufficient evidence to create a genuine issue of whether the communication ports are a feature for mounting, I would vacate summary judgment of noninfringement as to Apple, Dell, Motorola, and Samsung.

The record evidence, when viewed in the light most favorable to Profectus, raises a genuine dispute over whether the Appellees' communication ports are a feature for mounting. Each accused device, commonly referred to as a tablet, has a compatible dock on which the tablet can be mounted and stay upright. Each accused device also has a communication port on the bottom, which connects to the compatible dock's connector when the tablet is mounted. To mount a Samsung tablet to its dock, Samsung's 2011 Series 7 Slate User Guide instructs a user to align the connector on the dock with the communication port on the bottom of the tablet, and connect them. Apple's iPad user guide discloses using an iPad as a picture frame "while charging it in an iPad Dock." The record includes testimony that the docks are designed to mate with the ports in the accused devices and that the tension between the two connectors holds the tablet in place on the dock. Given this evidence, a reasonable jury could have found that the communication ports, which fit to the dock's connectors, are features for mounting.

Accordingly, I respectfully dissent from the majority's affirmance of summary judgment as to Apple, Dell, Motorola, and Samsung.

David Netzer Consulting Engineer LLC v. Shell Oil Company, Fed. Cir. Case 2015-2086 (May 27, 2016)

Netzer's '496 patent describes a process for the coproduction of ethylene and purified benzene from refinery mixtures. Claim 1, the sole independent claim, concludes with the following phrase: "fractionating the pyrolysis gasoline to form a purified benzene product comprising at least about 80 wt % benzene."

After the filing of this action Shell moved for summary judgment of noninfringement, which was granted by the district court. The court did not formally construe the claims, but, rather, implicitly agreed with Shell that "fractionating" does not include Shell's extraction process. The district court also found no infringement under the doctrine of equivalents because Netzer is barred by "specific exclusion, prosecution-history estoppel, and prior art."

The District Court's Claim Construction Is Affirmed

The words of a claim "are generally given their ordinary and customary meaning" as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Because that meaning is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to the intrinsic record, including the words of the claims themselves, the remainder of the specification, and the prosecution history, as well as to extrinsic evidence when appropriate, to construe a disputed claim term. Id. While extrinsic evidence can shed useful light on the relevant art, we have explained that it is less significant than the intrinsic record in determining the legally operative meaning of claim language. Id.

We agree with Shell that the claim term "fractionating" in this patent means separating compounds based on differences in boiling points, i.e., distillation, which excludes extraction, such as in the Sulfolane process. The specification repeatedly and consistently uses "fractionating" or "fractionation" to describe separating petrochemicals based on boiling point differentials. Moreover, importantly, the patentee made clear and unmistakable statements in the intrinsic record, distinguishing the claimed invention from and disclaiming conventional extraction methods that produce 99.9% pure benzene.

The specification repeatedly and consistently uses the term "fractionation," whether modified by an adjective or not, in connection with temperature or boiling points. Although the specification uses the word "distillation" only in some instances, the repeated and consistent references to "fractionation" in the context of boiling-point-based separation indicate that the patentee uses "fractionation" to refer to distillation specifically, not to generic "separation."

Importantly, the patentee distinguished conventional extraction from fractionation in the specification, indicating that "fractionation" does not include conventional extraction. After identifying the azeotrope problem encountered by "conventional fractionation," the specification explains that "the conventional method of benzene purification and separation from the above azeotropes is by aromatic extraction or extractive distillation processes, such as the Sulfolane process," which produces >99.9% pure benzene. Thus, according to the patentee, conventional extraction and conventional fractionation are different methods. Unlike conventional fractionation, conventional extractionwhich includes the Sulfolane process—can successfully remove non-aromatic hydrocarbon azeotropes to produce highly pure benzene. The Sulfolane process is therefore conventional extraction, not "conventional fractionation." The Sulfolane process was developed by Shell in the 1960s; it is a conventional method of separation. If one were to adopt Netzer's proposed construction that "fractionation" means separation by any method, then "conventional fractionation" would mean separation by any conventional method, which would encompass the Sulfolane process. That interpretation would be contrary to the specification.

Furthermore, the patentee clearly disclaimed conventional extraction, characterizing it as expensive and not required due to a shift in market demand, and distinguishing it from the "present invention." The specification explains that there had been a strong market demand for "benzene of nitration grade, about 99.9 wt %," but that such high purity benzene was no longer required in some circumstances; rather, benzene products from the "present invention" containing non-aromatic impurities can be used in its place. Likewise, the patentee twice stated during prosecution that the claimed process is "particularly useful" "to produce a benzene product that need not have a purity over 99 wt%, much less over 99.9 wt%, as previously required." Those clear statements indicate that the inventor contemplated the claimed invention to be different from conventional extraction, which produces highly pure, nitration-grade 99.9% benzene.

Netzer also argues that construing "fractionating" as distillation would improperly exclude the preferred embodiment disclosed in Figure 1 of the '496 patent. We disagree. In that disclosed embodiment, the pyrolysis gasoline is passed through a hydrotreater, and the resulting "hydrotreated pyrolysis gasoline" is then passed through two distillation columns to produce a benzene product with 98% to 99% purity. Contrary to Netzer's argument, the hydrotreater embodiment does not compel a different meaning of "fractionating."

Netzer primarily relies on two pieces of intrinsic evidence, but neither supports its proposed construction. First, Netzer notes that dependent claim 11 recites "conventional fractionation in a distillation column." Netzer argues that if fractionation means distillation, then there would be no need to state "fractionation in a distillation column." We find that argument unavailing. The quoted phrase merely requires that the fractionation, or distillation, occur in a distillation column as opposed to in another device. Such specific, clarifying language does not change the meaning of fractionation.

Second, Netzer relies on a passage in the specification, which states that: "Fractionation and production of benzene with over 75 wt % purity from reformer reactor effluent by conventional distillation may become difficult." Netzer again argues that if fractionation means distillation, then it does not make sense to say "fractionation . . . by conventional distillation." We disagree. Netzer has not quoted the full sentence. The omitted portion of the quoted sentence reads: ". . . because of the azeotrope forming characteristics of compounds such as dimethylpentanes, cyclohexane and methyl-cyclopentane." Thus, that full sentence explains that the listed azeotropes make conventional fractionation, i.e., conventional distillation, difficult. Thus, the quoted sentence is entirely consistent with, and indeed supports, our construction of "fractionating."

Accordingly, the intrinsic evidence here points in only one direction, and requires that "fractionating" in this patent be construed as separating compounds based on differences in boiling points. The parties cite conflicting extrinsic evidence, but extrinsic evidence may not be used to contradict claim meaning that is unambiguous in light of the intrinsic record. We therefore conclude that "fractionating" in the present patent means separating compounds based on differences in boiling points, which excludes conventional extraction methods, such as the Sulfolane process.

There Are No Issues of Fact Precluding Summary Judgment of NonInfringement

We agree with Shell that the district court did not err in granting summary judgment of noninfringement. Shell relies on conventional extraction—more specifically, its own Sulfolane process—to refine a mixture containing about 57% benzene to a benzene product of greater than 80% purity. As we have explained, "fractionating" means distillation; it does not include conventional extraction. Moreover, the earlier steps of the Shell process only refine pyrolysis gasoline to produce a 57% pure benzene mixture, which does not satisfy the limitation "to form a purified benzene product comprising at least about 80 wt % benzene."

It is true that a method claim with the word "comprising" appearing at the beginning generally allows for additional, unclaimed steps in the accused process, but each claimed step must nevertheless be performed as written. Netzer's infringement theory requires rewriting the claimed step to read "fractionating the pyrolysis gasoline and forming a purified benzene product" rather than "fractionating the pyrolysis gasoline to form a purified benzene product," as the claim is written.

We are also unpersuaded by Netzer's argument analogizing the accused process to the preferred embodiment of the '496 patent, as both process the pyrolysis gasoline through multiple steps and generate >80% pure benzene in the end. As we have explained, hydrotreating is not part of the fractionating step. The hydrotreating step in the preferred embodiment merely produces a hydrotreated pyrolysis gasoline; it is not a step that separates the individual components of the pyrolysis gasoline. In the preferred embodiment, the hydrotreated pyrolysis gasoline is distilled twice to form >80% benzene. In contrast, nothing in the Shell process distills pyrolysis gasoline "to form" >80% benzene.

Moreover, as indicated supra, the patentee disclaimed conventional extraction, including the Sulfolane process. Netzer cannot now assert that the claimed fractionating step is literally infringed by the Sulfolane process. Likewise, Netzer cannot show infringement under the doctrine of equivalents. The disclaimer of the Sulfolane process for literal infringement applies equally to infringement under the doctrine of equivalents.

We agree with Shell, moreover, that no reasonable jury would find that the accused process performs substantially the same function in substantially the same way to obtain substantially the same result. Shell's Sulfolane process does not purify benzene to >80% purity in substantially the same way as the claimed process because almost all of the purification in the Sulfolane process is done through extraction, i.e., separating compounds based on solubility differences, which is substantially different from the claimed process of separating compounds based on differences in boiling points. Drawing all justifiable inferences in Netzer's favor, we agree with Shell that Netzer cannot establish infringement under the doctrine of equivalents in light of the substantial difference between the claimed process and the accused process.

In re Lakshmi Arunachalam, Fed. Cir. Case 2016-1560 (May 27, 2016)

Under 28 U.S.C. § 1295(a)(4)(A), we have exclusive jurisdiction over an appeal from a "decision" of the Board. We have held that § 1295(a)(4) should be read to incorporate a finality requirement. As indicated by the Supreme Court, requiring a party to await a final decision and to raise all claims of error in a single appeal emphasizes the deference that appellate courts owe to the trial judge, avoids the obstruction to just claims that would come from permitting the harassment and cost of a succession of separate appeals, and promotes efficient judicial administration." Firestone Tire & Rubber Co. v. Risjord, 449 U.S 368 (1981)). Thus, we lack jurisdiction to hear a non-final appeal from the Patent Office.

A patent owner dissatisfied with an examiner's rejection of a claim in reexamination may proceed with a two-step appeals process. First, pursuant to 35 U.S.C. § 134(b) (2002), "a patent owner in any reexamination proceeding may appeal from the final rejection of any claim by the primary examiner to the Board. Second, if the patent owner is dissatisfied with the Board's final decision, the patent owner may appeal the decision to this court. 35 U.S.C. § 141 (2002).

A new ground of rejection, however, is not a final decision for the purposes of judicial review. See 37 C.F.R. § 41.50. After a new ground of rejection, the patent owner can either (1) reopen prosecution and, if the rejection cannot be traversed, again appeal to the Board or (2) pursue rehearing at the Board, after which an appeal to this court may be filed. Here, Dr. Arunachalam elected to reopen prosecution and the examiner issued a final rejection. Pursuant to § 134(b), Dr. Arunachalam may appeal the examiner's decision to the Board. And only after the Board issues a final decision can we exercise jurisdiction to review the Board's decision.

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