11 AIPLA

Firm Logo

American Intellectual Property Law Association

Recent US Cases on Claim Construction

Joerg-Uwe SziplGriffin and Szipl, P.C.

_____

AIPLA IP Practice in Japan CommitteeMeeting with JIPA

Tokyo , JapanApril 9, 2014

Lighting Ballast Control LLC v. Phillips Electronics North America Corp. et al., No. 2012-1014

(Fed Cir. February 21, 2014)

• Lighting Ballast v. Phillips, 498 Fed. Appx. 986 (Fed. Cir. 2013)

• In the District Court– Claim 1 related to an energy conversion device employing an

oscillating resonant converter producing oscillations.– The term in dispute was “voltage source means providing a

constant or variable magnitude DC voltage between the DC input terminals”

– On motion for summary judgment, district court construed the “voltage source means” as a means-plus-function limitation under §112, ¶6.

2

Lighting Ballast v. Phillips

• In the District Court:– The claim was held to be invalid under §112, ¶2 because the

specification fails to disclose any structure capable of providing DC voltage to the device.

– On reconsideration, the court reversed its own decision and held, in view of expert testimony, that one of ordinary skill in the art would understand that “voltage source means” would be a rectifier or other similar device.

• Before the first Federal Circuit Panel:– §112, ¶6 establishes a quid pro quo (necessary condition)– a patentee may claim an element using a generic “means” for

performing a function, provided the patentee’s specification discloses structure capable of performing that function.

3

Lighting Ballast v. Phillips• Before the first Federal Circuit Panel:

– The first step in analyzing a means-plus-function limitation is to determine whether §112, ¶6 applies.

– Where the term “means” is used it is presumed that §112, ¶6 applies.

– The presumption may be rebutted if the claim itself recites sufficient structure for performing the function.

– In this case the claim does not contain sufficient structural language to remove “voltage source means” from §112, ¶6.

– Patentee’s expert testimony suggests that some structure is implied, but this does not cure the absence of structure in the claim itself.

– Testimony also does not establish that the term voltage source was used with a defined class of structures.

4

Lighting Ballast v. Phillips• Before the first Federal Circuit Panel:

– Once the Court determines that a claim limitation involves §112, ¶6, construction of the limitation involves two steps:

• First step: – Identify the function: – In this case: “providing a constant or variable magnitude

DC voltage between the DC input terminals” • Second step: identify the structure in the specification that

performs the claimed function.– The sole issue on appeal is whether the specification identifies

sufficient structure to support the claimed function.– The specification fails to disclose any structure to perform the

recited function.– This is improper functional claiming and the claim is invalid

under §112, ¶2.

5

Lighting Ballast v. Phillips• Before the first Federal Circuit Panel:

– The first step in analyzing a means-plus-function limitation is to determine whether §112, ¶6 applies.

– Where the term “means is used it is presumed that §112, ¶6 applies.

– The presumption may be rebutted if the claim itself recites sufficient structure for performing the function.

– In this case the claim does not contain sufficient structural language to remove “voltage source means” from §112, ¶6.

– Patentee’s expert testimony suggests that some structure is implied, but does not cure the absence of structure in the claim itself.

– Testimony also does not establish that the term “voltage source” was used with a defined class of structures.

6

Lighting Ballast v. Phillips

• On reconsideration en banc, the Federal Circuit reconsidered the rule in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998)

• The Cybor rule is that claim construction is a matter of law reviewed de novo, on appeal, i.e., without deference to the District Court.

• En banc, the court confirmed the Cybor rule, and confirmed the first panel’s decision that the claim required construction under §112 ¶6.

• What is the lesson simple message of Lighting Ballast?– Do not use the word “means” in any claim unless

construction under §112, ¶6 is intended.– If “means for” is used, structure must be clearly

identified in the Specification.

7

Takeda Pharmaceutical Co. v. Zydus Pharmaceuticals USA, Inc., No. 2013-1406 (Fed.

Cir. February 20, 2014)• Takeda ‘994 patent related an orally disintegratable tablet

of the proton pump inhibitor drug Prevacid.• District Court held the patent infringed and not invalid• Federal Circuit reversed the finding of infringement, but

confirmed the finding that the claim was not invalid.• Key limitation was “fine granules having an average

particle diameter of 400 m or less”.• Zydus made tablet with 412.28 m granules• Several issues arose in claim construction:

– How is the granule size measured?– What does 400 m or less mean?

8

Takeda v. Zydus

• What does 400 m or less mean?– District Court held that the term meant 400 m

+/- 10% (Takeda’s view)– This corresponded to the margin of error in

measurement• How was the granule size measured?

– District Court held that the claim required measurement of each core particle regardless of how the particles agglomerated (Stuck together)(Takeda’s view).

9

Takeda v. Zydus• What does 400 m or less mean?

– Federal Circuit held that the term meant exactly 400 m or less– Claim did not use term of degree such as “about” in the claims– There was no discussion of margins of error in the specification.

• How was the granule size measured?

– Zydus claimed that the claim was indefinite because there were

two different methods of granule measurement, laser diffraction

and microscopy, and the patent did not specify which was used.

– Federal Circuit agreed with Takeda and found that the different

techniques did not produce significantly different results.

10

Takeda v. Zydus• What are the lessons of Takeda?

– If the claims require an average, specify how the average is measured, e.g., number average, mean or median.

– If the claims require a range, then use of terms of degree such as “about”, but be sure to state the meaning of the degree. For example, “about” means within the error of the measurement.

– If the claims require a measurement, e.g., “grain size” then give an example of how the measurement is made: i.e., by what method, using what equipment, etc.

• Taking the above factors into account in drafting the application, may spare difficulties in litigation.

11

Starhome GMBH v. AT&T Mobility LLC, No. 2012-1694 (Fed. Cir. February 24, 2014)

• Invention relates to a way of improving the functionality of phone services for users in a roaming telephone network

• To allow users in a roaming network to make calls as if in

their home network, the ‘487 patent discloses the use of

an “intelligent gateway.”

• District Court construed intelligent gateway to mean “a

network element that transfers information to and from a

mobile network and another network external to the mobile

network.”

• Intelligent gateway is used to transform telephone codes

into something intelligible to the external network12

Starhome v. AT&T• Defendant sells application allowing mobile network operators to

translate numbers dialed by roaming cell phone users using their

networks.

• Defendant’s platform does not connect with any external network.

• Federal Circuit adopted District Court’s claim construction

– Gateway has a well known technical meaning in the

telecommunications industry

– Gateway is a device that connects two networks

– Patentee used a common term and should be held to its common

meaning as described in numerous technical dictionaries.

– All embodiments in specification required two networks.

13

Starhome v. AT&T

• What lessons do we learn from Starhome?– If claims use a term that has a well known meaning in

the art, patentee may be stuck to that meaning.– If Patentee uses an industry known term, a definition

in the specification will avoid indefiniteness.– To get a broader meaning, patentee should choose a

broader term.• Claim terms will generally be given their ordinary

meaning unless:– Patentee sets out its own definition– Patentee disavows the full scope of a claim term in the

specification or during prosecution.14

Thank you

Joerg-Uwe SziplGriffin and Szipl, P.C.

Arlington, VA, USA

Szipl@Szipl.com

15