In This Issue
· The
Supreme Court Declines to Review Alleged Federal Circuit Split on How to Use
a Specification to Determine the Meaning of Patent Claims
· Massachusetts
District Court Rules that Exergen Forehead Thermometer Patent may Have Claims
that are Separately Directed to Patentable and Unpatentable Subject Matter
Under 35 U.S.C. §101
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The Supreme
Court Declines to Review Alleged Federal Circuit Split on How to Use a
Specification to Determine the Meaning of Patent Claims
On December
7, 2015, the U.S. Supreme Court, in Fivetech
Technologies Inc. v. Southco, Inc., denied Fivetech’s petition to review
the issue of when a court should look to a patent specification to determine
the meaning of a patent claim, which is a question that Fivetech asserted has
divided members of the Federal Circuit bench. Fivetech's petition for writ of certiorari asserted that the Federal
Circuit’s 2005 en banc ruling in Phillips v. AWH resulted in
inconsistent rulings, such that a
litigant's chances of of success were dependent upon which Judges sat on the
particular appeal panel.
Fivetech
specifically asserted that there was a "Iong-standing, fundamental split" at the Federal Circuit regarding
how and when to use a patent's specification to clarify claim term meanings when
claim terms are ambiguous. That is,
one group of Federal Circuit Judges answers this question by starting with
the premise that the patent specification defines the invention, which then
informs the claim terms. Whereas, the other group of Judges start by giving
claim terms their plain and ordinary meaning, and
then looks for any express disclosure in the specification modifying this
meaning, i.e., only if the inventor provided a different meaning,
"acting as his or her own lexicographer," or explicitly disavowed
the plain and ordinary meaning.
Fivetech
asserted that the split is captured in quotes from the 2-1 Federal Circuit panel
decision in Retractable Technologies
Inc. v. Becton, Dickinson & Co., where both the majority and the dissent
claimed to be adhering to the claim construction standards set forth in Phillips v. AWH Corp. as follows:
1. In reviewing the intrinsic record 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 specifications conveys is the invention.
2. [T]his
court recognized as ‘a bedrock principle of patent law’ that the claims
themselves, not the written description portion of the specification, define
the patented invention.
By way of
background, Fivetech asserts that the Federal Circuit panel, in the Fivetech
appeal, employed the latter approach as its rationale in overturning the District
Court's interpretation of the claim term "rigidly secure" in
Southco Inc.'s patent claims. The District Court held that the term "is
not defined in the intrinsic record [i.e., the specification and prosecution
history] and nothing in the intrinsic record clearly and unmistakably
redefines the term."
The unanswered
questions presented in Fivetech's petition for writ of certiorari were:
1. Is it proper for the Federal Circuit
to limit the role of the intrinsic evidence in construing patent claims under
the exacting "lexicography and disavowal" standard?
2. Does
the Federal Circuit's exacting "lexicography and disavowal"
standard improperly circumscribe the objective standard of the person of
ordinary skill in the art in construing claim terms?
Given the
Supreme Court’s decision not to review the issue, litigants will have to
await further rulings clarifying the alleged split in claim construction
jurisprudence.
Massachusetts District Court Rules
that Exergen Forehead Thermometer Patent may Have Claims that are Separately
Directed to Patentable and Unpatentable Subject Matter Under 35 U.S.C. §101
In Exergen Corp. v. Kaz USA, Inc.,
the U.S. District Court for the District of Massachusetts recently held that
just because one Judge held, in a different litigation against another
defendant, that some of Exergen’s forehead scanning thermometer patent
claims, in U.S. Patent No. 7,787,938 (“the ‘938 patent”), were directed to
subject matter ineligible for patent protection does not mean that all of the
claims are directed to unpatentable subject matter under 35 U.S.C. §101.
The alleged infringer, Kaz argued that all claims in a patent should rise
or fall together with respect to patentable subject matter eligibility in
view of the USPTO’s regulation requiring each patent to be directed to only
one "independent and distinct" invention. In rejecting Kaz’ arguments, the Kaz Court
noted that this argument "amounts to an impermissible bypass of the
required claim-by-claim analysis." The Kaz Court further noted that its decision was based upon the
"well-understood, routine, conventional activity" applicable to
patent eligibility, versus procedures known in the technological field that
are considered when looking at invalidity by reason of being obvious.
By way of background, Exergen filed separate patent infringement suits in
the U.S. District Court for the District of Massachusetts against (i) Kaz,
(ii) Brooklands Inc., and (iii) Thermomedics Inc. and Sanomedics
International Holdings Inc., which cases were assigned to three different
Judges. Thereafter, two of the respective
Judges granted summary judgment of invalidity under Section 101 in favor of
Brooklands and Thermomedics, with the respective Judges finding four asserted
method claims of the ‘938 patent invalid as directed to unpatentable subject
matter under 35 U.S.C. § 101.
Kaz also sought summary judgment of invalidity under Section 101
requesting the Kaz Court to extend the same patent ineligibility judgment to 16
claims, i.e., 13 other claims of the '938 patent and three claims of U.S.
Patent No. 6,292,685, arguing that the rulings in the other cases with
respect to the four claims at-issue in those cases requires a finding of
invalidity as to the claims at-issue with Kaz. In doing so, Kaz cited 37 C.F.R. §1.141 (a
USPTO rule requiring examiners, when they identify multiple inventions in one
application, to issue a "restriction" forcing the patent applicant
to limit his/her claims to a single invention), and concluded that if the
previously adjudicated claims are drawn to an ineligible "inventive
concept," the claims at-issue with Kaz must likewise be invalid as
directed to unpatentable subject matter.
The Kaz Court looked at each of the 16 claims at-issue with Kaz that had
not been analyzed in the other two cases and applied the “law of nature” test
set forth by the Supreme Court in Mayo
Collaborative Services v. Prometheus Labs. Inc. In the words of the Kaz Court, the test
bars patenting a "law of nature"—here, a formula for converting the
surface forehead temperature into internal temperature, which bar is not
overcome when "any additional steps consist of well-understood, routine,
conventional activity already engaged in by the scientific community."
The Kaz Court thus granted summary judgment of invalidity as to claims that
were not "patentably distinct from claims 51 and 54 under the
Thermomedics analysis," e.g., claims 26, 27, 29, and 37 of the '938
patent only added "a generic piece of equipment [that] does not
materially alter the validity analysis." However, method claims 14, 17,
and 24, in the Kaz Court’s view, added a step of "making at least three
radiation readings per second while moving the radiation detector." The Kaz Court further noted that "It
is important to differentiate an analysis under § 101 (patentability) from
one under § 103 (obviousness)," and that "Although measuring
temperature or radiation is a fundamental technique in the field of
thermometry, innovations on basic practices merit patent protection."
In denying Kaz’ summary judgment motion, the Kaz Court also noted that
"Kaz cites no authority for the proposition that rules of prosecution
have any effect on a judicial determination of validity," and further
observed that the U.S. Supreme Court, in fact, "simultaneously
invalidated and upheld different claims of the same patent under § 101"
in one of its opinions in the last few years that have expanded patent
ineligibility, Ass'n for Molecular
Pathology v. Myriad Genetics, Inc.; i.e., in the Kaz Court’s view the
Myriad claims directed to "isolated" DNA were not eligible for
patenting, while claims directed to complementary DNA (cDNA) recited
patentable subject matter. |
