Mean What You Say and Say What You Mean

SkinMedica is one case that illustrates what can go wrong when patent attorneys fail to mean what they say and say what they mean.  Patent attorneys often make statements in the written description section of a patent or prosecution history that they never intended to serve as a basis to narrowly construe the claims of the patent.

In SkinMedica v. Histogen,727 F.3d 1187 (Fed. Cir. 2013), SkinMedica asserted US Patents 6,372,494 and its continuation-in-part 7,118,746 against Histogen for making skin products by the method disclosed in the patents. Specifically, the ‘494 and ‘746 patents disclosed and claimed growing cells in conditioned media so that useful cell metabolic products could be harvested from them. Claim 1 of the ‘494 patent recites:

A method of making a composition comprising:
(a) culturing fibroblast cells in three-dimensions in a cell culture medium sufficient to meet the nutritional needs required to grow the cells in vitro until the cell culture medium contains a desired level of extracellular products so that a conditioned medium is formed.

At issue in the case was whether Histogen’s use of beads to grow cells was an infringement of the claims of the patents that shared common limitations.  The Federal Circuit found no infringement based, at least in part, on four patent drafting and prosecuting mistakes.

First, the ‘494 specification discussed beads in its background section:

Cell lines grown as a monolayer or on beads, as opposed to cells grown in three-dimensions, lack the cell-cell and cell-matrix interactions characteristic of whole tissue in vivo.

The majority looked at this “disjunctive” use of “as opposed to” as clearly setting out two different and distinct things – monolayers and beads on the one hand, and three-dimensional mechanisms on the other. Thus, when a claim recited “three-dimensions,” it was likely talking about something other than monolayers or beads based on the inventors’ discussion of the term in the above passage.

Second, SkinMedica made statements as to the inferiority of cultures using beads in the specification, and reinforced the denigration in prosecution. It is important to note that the original claims were drawn to any method of growing cells. SkinMedica narrowed the claims to the “three-dimensions” language in response to a rejection over art with two-dimensional growth. When they amended the claim, SkinMedica emphasized in their response that “[c]ulturing cells in three dimensions results in the production of a conditioned medium having a different chemical composition than that of cells cultured by conventional means” and that the applied art lacked the amount of desired metabolites gleaned from three-dimensional growth. This highlighting of properties did not work well with the above excerpt about properties of bead-based media being different, or a further statement in the background as to the worthless characteristics of bead-grown cells:

Conventional conditioned cell culture medium, medium cultured by cell-lines grown as a monolayer or on beads, is usually discarded or occasionally used in culture manipulations such as reducing cell densities.

Third, the ‘494 patent specification states in the detailed description:

The present invention relates to novel compositions comprising any conditioned defined or undefined medium, cultured using any eukaryotic cell type or three-dimensional tissue construct and methods for using the compositions. The cells are cultured in monolayer, beads (i.e., two-dimensions) or, preferably, in three-dimensions.

Not only was this another disjunctive listing of beads as something other than three-dimensional, but the “i.e.” parenthetical was effectively a plain text redefinition of “beads” as being “two-dimensions.” After all, “in a specification, a patentee’s ‘use of i.e. signals an intent to define the word to which it refers’” under Edwards Lifesciences v. Cook and Abbott Labs. v. Novopharm.

The attorney drafting the ‘494 patent also made the mistake of mixing categories in the same sentence: “The cells are cultured in monolayer, beads (i.e., two-dimensions) or, preferably, in three-dimensions.”  Monolayer, two-dimensions, and three-dimensions refer to the shape of the grown cells, while the term “beads” refers the media on which the cells are grown.

Fourth, the ‘494 detailed description states:

(4) The cells may be cultured in any manner known in the art including in monolayer, beads or in three-dimensions and by any means . . . . Methods of cell and tissue culturing are well known in the art, and are described, for example, in [Doyle], [incorporated by reference] supra.

This was yet another disjunctive use of “beads” and “three-dimensions.” The majority repeatedly cited Thorner v. Sony – which itself was one of the Federal Circuit’s most recent exegeses on the exacting standards for disclaimer – for the enduring principle that the “use of two terms as alternatives functions as a redefinition of a term if that redefinition is so clear that it equates to an explicit one.” So all the alternative uses of a claim term here qualified as a redefinition of “three-dimensions” as excluding “beads.”

Ultimately, the prosecuting patent attorney unintentionally narrowed claims by: using the disjunctive conjunction “as opposed to”; making disparaging remarks about the prior art; unintentionally redefined the term “beads” using the abbreviation “i.e.”; and using the disjunctive conjunction “or” to redefine “three-dimensions” as excluding beads. All of which are careless mistakes which add up to disastrous results.

We are confident that the BrooksGroup can add value to your patent portfolio, provide valuable opinions and design around guidance, and provide you with outstanding litigation strategy.  We would be happy to talk with you about how the BrooksGroup can help you meet your intellectual property needs. Call us today at 586-596-9600 or visit our website at brooks.pro for more information regarding our services.

AFT is a case that illustrates what can go wrong when patent attorneys fail to mean what they say and say what they mean.  Patent attorneys often make statements in the written description section of a patent or prosecution history that they never intended to serve as a basis to narrowly construe the claims of the patent.

In Advanced Fiber Technologies (AFT) Trust v. J&L Fiber Services, Inc, (No. 2011‐1243, Fed. Cir. April 3, 2012) claim construction issues arose because of numerous mistakes made by the prosecuting attorney in responding to an examiner’s rejection of the claims. The numerous mistakes included (1) comparing and contrasting “the invention” and the prior art; (2) referring to the invention in general without reference to a specific claim and without reference to specific claim language; and (3) paraphrasing claim language.

The claim terms “slots” and “openings” were construed by the Federal Circuit to be limited to “openings and slots with widths less than 0.254 mm.” The prosecuting attorney made comments comparing and contrasting the relative size of the slots and openings in the prior art component and that of the invention. Comparing the prior art reference of Gillespie to the invention, the prosecuting attorney stated “In contrast, the Gillespie screen slots are 0.030 inches, that is, 0.762 mm. The slots of Gillespie are over three times the size of the slot width of the present invention.“ (emphasis added). Id. The Federal Circuit held that the comments were a disclaimer of claim scope and therefore construed the claim terms “slots” and “opening” to not cover sizes greater than 0.254 mm (one-third of 0.752 mm).  By comparing and contrasting the “invention” to the prior art the prosecuting attorney not only unintentionally narrowed the claim terms “slots” and “openings” to a specific dimensional range but also limited the scope of any claim of any patent issuing in the patent family to products having “slots” and “opening” not greater than 0.254 mm.

The prosecuting attorney also made the mistake of paraphrased claim language, which led to a claim construction issue that was decided in favor of the patentee.  We will cover the dangers of paraphrasing claim language in another communication.

We are confident that the BrooksGroup can add value to your patent portfolio, provide valuable opinions and design around guidance, and provide you with outstanding litigation strategy.  We would be happy to talk with you about how the BrooksGroup can help you meet your intellectual property needs. Call us today at 586-596-9600 or visit our website at brooks.pro for more information regarding our services.

Heuft is one case that illustrates what can go wrong when patent attorneys fail to mean what they say and say what they mean.  Patent attorneys often make statements in the written description section of a patent or prosecution history that they never intended to serve as a basis to narrowly construe the claims of the patent.

Heuft Systemtechnik GMBH v. Industrial Dynamics Co., Ltd., 282 Fed. Appx. 836 (Fed. Cir. 2008)(nonprecedential) involved an infringement suit over two patents for methods of using an apparatus to arrange and move bottles in a line for inspection. One of the patents, U.S. Patent Number 6,155,408, describes a “method and apparatus for rotating rotationally symmetrical containers such as bottles, while transporting them under backup pressure.” The other, U.S. Patent Number 6,298,974, is a divisional of the ‘408 patent, and contains a largely identical specification, and describes a “method and apparatus for inspecting rotating containers.”  Although the ‘408 patent was dropped from the suit, the defendant argued that the terms “arranging” and “stable arrangement” found in the claims could not include angles disclaimed during the earlier parent prosecution, and therefore there was no infringement.

In the parent ‘408 patent, the claims were rejected over a prior art reference Christian. In response to the rejection the prosecuting attorney argued limitations not in the claims.  At the time of the remarks the exit angle β for the bottles was not in the claims. The only embodiment disclosed in the patent for angle β was about 30-100 degrees. The attorney argued:

“The present invention, on the other hand, provides for an arrangement or positioning of two consecutive containers stable against one railing and the other railing in order. Thus, each rotating bottle is arranged stable against a railing, providing a well-defined and continuous rotation. In contrast, in Christian, bottle 103 is not arranged stable against any railing. Its rotation is caused by bottle 104 which is counteracted by various forces…Further, the present invention provides for the increase and sharp decrease at an angle β of the distance between the railings creating the stable arrangement. This stable arrangement stops the propagation of any disturbances downstream. As noted above, Christian does not disclose any means for such stable arrangement; The present invention, on the other hand, provides for an arrangement or positioning of two consecutive containers stable against one railing and the other railing in order. Thus, each rotating bottle is arranged stable against a railing, providing a well-defined and continuous rotation. In contrast, in Christian, bottle 103 is not arranged stable against any railing. Its rotation is caused by bottle 104 which is counteracted by various forces…”

The Federal Circuit held that there was no infringement because the prosecution arguments resulted in a disclaimer of an exit angle less than 30 degrees, which is outside of the 30-100 degrees for the only embodiment disclosed in the patent.

The prosecuting attorney made the mistake of attempting to contrast the prior art with the invention by using a general reference to the invention as a whole by the term “the present invention”, and using the conjunctive adverbs (adverbial conjunctions): “on the other hand” and “in contrast”. Contrasting the prior art with the invention led to the disclaimer of claim scope for devices having an angle β smaller than that which was expressly disclosed in the patent.

There are several types of conjunctive adverbs but those that contrast should rarely, if ever, be used in patent drafting and prosecution patent applications. Contrasting conjunctive adverbs are transitions that connect two clauses or sentences to introduce an opposite idea or show exception.  Contrasting conjunctive adverbs alert the reader that the next idea is the opposite of the previously written idea.  When a conjunctive adverb is used to transition between an idea about the invention in general and an idea about the prior art, the reader is alerted that the ideas are the opposite, and therefore the invention cannot include the ideas expressed about the prior art.  We will provide more insight regarding conjunctive adverbs in later communications.

We are confident that the BrooksGroup can add value to your patent portfolio, provide valuable opinions and design around guidance, and provide you with outstanding litigation strategy.  We would be happy to talk with you about how the BrooksGroup can help you meet your intellectual property needs. Call us today at 586-596-9600 or visit our website at brooks.pro for more information regarding our services.

Although the ProFoot case is a non-precedential opinion, it still illustrates the potential danger of using a pattern to describe a claim element.  There are a number of other Federal Circuit cases, which we will cover in another communication, wherein a pattern of disclosure resulted claims being narrowly construed.

ProFoot is the owner of the U.S. Patent No. 6,845,568 (“’568 patent”), entitled “High Performance Foot Bed for Sports equipment.” The invention is a method for providing custom footwear inserts for sports that involve symmetrical, side-to-side movement, such as skiing, skating, and cycling. The inserts “position the ankle joint or sub taylor [sic] joint in a relaxed position by correcting the pronation of the foot.” This reduces non-functional tension in the subtalar joint, which “increases the amount of relatedness between the foot and ankle joint” and allows the athlete to move side-to-side (e.g., shifting weight when making turns down a ski hill) with greater agility. To determine the insert that is best for a particular athlete, the patent teaches the use of a special device called a “neutralizer.” The athlete steps on the “neutralizer” one foot at a time, and a fitting specialist uses the “neutralizer” to determine what angle the foot should be in to place the ankle in a “neutral position.” The specification explains that “[t]o achieve a neutral position, the operator visually examines the tendons by the ankle until they are in a relaxed state or are working equally.” Claim 1 of the ‘586 patent recites, in part:

A method of fitting an individual with right and left foot inserts which place the ankles of the individual in a neutral position comprising the steps of:

for creating a right foot insert, having the individual place the right foot on a neutralizer while elevating the left foot off of the neutralizer; using the neutralizer to determine the angle necessary to place the right ankle in a neutral position;

providing an insert having an angle which represents the neutral state for the right ankle; …

Based on the district court’s constructions, the parties stipulated to a judgment of noninfringement of all of the asserted claims of the ’568 patent.

On appeal, ProFoot challenged the district court’s construction of two claim terms: (1) “neutralizer,” and (2) “neutral position.” With respect to “neutralizer,” ProFoot argued that the district court erred by naming specific components that comprise the neutralizer (e.g., a housing, a protractor, and an angularly adjustable plate capable of supporting the foot) in its construction. In ProFoot’s view, this construction is too narrow because the claims are silent as to what components comprise the neutralizer

The Federal Circuit found that the specification of the ‘568 patent discloses only two embodiments of the neutralizer. ’568 patent col. 3 ll. 1–15. Both name all the components listed in the district court’s construction:

The present invention includes a number of components such as a foot neutralizer 10 as shown in FIG. 1 . . . . Neutralizer 10 includes a housing 12, protractor 14, an angularly adjustable plate 16, crank 18 with threaded rod 19 having threads 23 that coact with threads 21 on support 22, and rod 24. Bearings 11A, 11B, 11C and 11D may also be provided for ease of operation.

FIG. 2 shows an alternate embodiment of a foot neutralizer 100. It includes a housing 102, angularly adjustable plate 104, foot rests 106 and 108, upright support bar 110, and a positionable horizontal bar 112 that adjustably slides along bar 114 of support 110. Also included is protractor 116. (emphasis added).

In addition, the abstract states that “[t]he neutralizer has a housing, protractor, and an angularly adjustable plate capable of supporting the foot.” (emphasis added).

The Federal Circuit held that because the specification consistently and repeatedly discloses that the neutralizer includes the housing, protractor, and angularly adjustable plate components, the district court did not err in including them in its construction.

The attorney made the mistake of drafting the ‘586 patent using a pattern of disclosure that used assertive statements that the neutralizer “includes” or “has” specific components.  The drafter failed to use permissive language to describe different variations of the neutralizer or the invention.  The drafter failed to describe other embodiments that did not include those specific components.  The pattern in the disclosure unintentionally led a narrow claim construction.

We are confident that the BrooksGroup can add value to your patent portfolio, provide valuable opinions and design around guidance, and provide you with outstanding litigation strategy.  We would be happy to talk with you about how the BrooksGroup can help you meet your intellectual property needs. Call us today at 586-596-9600 or visit our website at brooks.pro for more information regarding our services.

Pacing Technologies is one case that illustrates what can go wrong when patent attorneys fail to mean what they say and say what they mean.  Patent attorneys often make statements in the written description section of a patent or prosecution history that they never intended to serve as a basis to narrowly construe the claims of the patent.

Pacing Technologies, LLC is the owner of U.S. Patent No. 8,101,843 (the ‘843 patent), which is directed to methods and systems for pacing users during activities involving repetitive motions, such as running.   In Pacing Technologies, LLC v. Garmin International, Inc., No. 14-1396 (Fed. Cir. 2015), the Federal Circuit affirmed the district court’s grant of summary judgment of noninfringement.

The accused Garmin products are GPS fitness watches that allow the user to design workouts using the Garmin Connection website.  The Garmin products display the user’s actual pace, but do not play music or output a tempo corresponding to the user’s preference or actual pace.

The only independent claim of the ‘843 patent asserted by Pacing Technologies includes a preamble reciting “a repetitive motion pacing system for pacing a user.” The term “repetitive motion pacing system for pacing a user” is not in the body of the independent claim, but the Federal Circuit held that the preamble term was limiting because the term “user” was used in a dependent claim and the preamble of the independent claim was a necessary limitation to give antecedent basis to the dependent claim.

In construing the meaning of the phrase “a repetitive motion pacing system for pacing a user” as recited in the preamble, the Federal Circuit recognized that the plain and ordinary meaning of the phrase did not require the system to pace the user by playing back information in a tempo.  The Federal Circuit noted that the specification listed nineteen “objects of the present invention”, but these alone were not found to include a clear and unmistakable disavowal or disclaimer that required departure from the plain and ordinary meaning of the phrase.  However, immediately following the enumeration of the different objects of the present invention, the ‘843 patent sets forth the summation:

“[t]hose [listed 19 objects] and other objects and features of the present invention are accomplished, as embodied and fully described herein, by a repetitive motion pacing system that includes … a data storage and playback device adapted to producing the sensible tempo.” (emphasis added)

The Federal Court stated: “With these words, the patentee does not describe yet another object of the invention – he alerts the reader that the invention accomplishes all of its objects and features (the enumerated 19 and all others) with a repetitive motion pacing system that includes a data storage and playback device adapted to produce a sensible tempo.”

Pacing Technologies argued that the construction was improper because one embedment in the specification would not be covered by the construed claim.  However, Federal Circuit reasoned that because one of the embodiments in the specification does not expressly disclose a feature does not mean that the embodiment excludes the feature. The Federal Circuit concluded that even if Pacing Technology was correct regarding the embodiment, this is not a reason to ignore the specification’s clear and unmistakable disavowal.

The patent drafting attorney made the mistakes of including a list of objects of the invention in the specification.  The drafting attorney followed the list with a summation that include a “global statement” using the term “the present invention”.

We are confident that the BrooksGroup can add value to your patent portfolio, provide valuable opinions and design around guidance, and provide you with outstanding litigation strategy.  We would be happy to talk with you about how the BrooksGroup can help you meet your intellectual property needs. Call us today at 586-596-9600 or visit our website at brooks.pro for more information regarding our services.

Ormco is one case that illustrates what can go wrong when patent attorneys (or anyone involved in patent prosecution) fail to mean what they say and say what they mean.  Patent attorneys often make statements in the written description section of a patent or prosecution history that they never intended to serve as a basis to narrowly construe the claims of the patent.

In Ormco Corp. v. Align Tech. Inc., 498 F.3d 1307, 1315 (Fed. Cir. 2007), Ormco sued Align for infringement of four patents.  The four patents shared a common specification, which was also shared by the parent Patent No. 5,431,562 (“the ‘562 patent), which was not asserted.  The Ormco patents relate to a computer-aided design and manufacture of custom orthodontic appliances.

Align won summary judgment of non-infringement because Align’s system relied on “skilled operators” rather than computers to determine the final position of teeth in the design and manufacture of custom orthodontic appliances. However, the claims at issue did not literally recite the use of a computer.

On appeal, the Federal Circuit noted that the prosecuting attorney submitted a declaration on behalf of a technical expert that referred to the applicant’s “overall method,” including a computer for making decisions within the orthodontics equipment. The Ormco Court recognized that “although their claim language does not expressly recite automatic [computer] control of the finish tooth positioning, that is what they mean, and that is all that the specification describes,” further stating, “the prosecution of the ′562 patent, with the same specification, makes clear that the inventors understood their invention to encompass only automatic [computer] positioning because they so argue.” Here, “overall method” was interpreted literally rather than figuratively. Id at 1315.  Even though the ‘562 patent was not in the case, the Federal Circuit relied on a global statement referring to the invention as a whole to narrowly construe the scope of the claims of all four child patents.

We are confident that the BrooksGroup can add value to your patent portfolio, provide valuable opinions and design around guidance, and provide you with outstanding litigation strategy.  We would be happy to talk with you about how the BrooksGroup can help you meet your intellectual property needs. Call us today at 586-596-9600 or visit our website at brooks.pro for more information regarding our services.

iLight is one case that illustrates what can go wrong when patent attorneys fail to mean what they say and say what they mean.  Patent attorneys often make statements in the written description section of a patent or prosecution history that they never intended to serve as a basis to narrowly construe the claims of the patent.

In iLight Technologies, Inc. v. Fallon Luminous Products Corp., 2010 WL 2330396 (Fed. Cir. 2010)(nonpresidential), the patentee made several mistakes including trying to sell the invention by referring in general to the invention and describing how an intended function of the invention was achieved by structural elements.

In response to rejections under 35 USC 102 and 103, the prosecuting attorney argued: “[T]o achieve the desired light intensity and uniformity, the rod must preferentially direct light along its length while also urging light out of a lateral surface.  This requires an essentially solid rod with optical waveguide and light scattering characteristics.” The prosecuting attorney also ended his argument with the summation/conclusion: “Therefore, for the reasons stated above, Applicants respectfully submit that none of the claims of the present application, as amended, are anticipated or obvious…” In doing so, the prosecuting attorney tied his remarks to all claims including claims that did not recite a rod.

The Federal Circuit held that the patentee disclaimed hollow structures as light waveguides by referring in general to a rod as being needed to achieve a desired function.  Even though one of the claims did not include the term “rod,” the disclaimer was held to be directed to the invention as a whole.

We are confident that the BrooksGroup can add value to your patent portfolio, provide valuable opinions and design around guidance, and provide you with outstanding litigation strategy.  We would be happy to talk with you about how the BrooksGroup can help you meet your intellectual property needs. Call us today at 586-596-9600 or visit our website at brooks.pro for more information regarding our services.

Patent attorneys often make statements in the written description section of a patent or prosecution history that they never intended to serve as a basis to narrowly construe the claims of the patent.

The most common type of sentence used by writers is a declarative sentence. Declarative sentences typically state or declare facts.  While declarative sentences are acceptable for most types of writing, patent attorneys should understand the potential risks associated with using declarative sentences in drafting and prosecuting patent applications. Patent attorneys may use a declarative sentence to state that something is permitted/possible or required/mandatory. In some situations, a declarative sentence can be an admission of what the claims are limited to or what is excluded from the claims.  Declarative sentences can also be an admission as to meaning of specific limitations in a specific claim.

In Pacing Technologies, LLC v. Garmin International, Inc., No. 2014-1396, (Fed Cir. 2015), the Federal Circuit held that the patentee had disclaimed certain devices, including the defendant’s devices, based on statements regarding the objects and features of the invention set forth in the written description section of the patent. In reaching its decision, the court noted that “We have found disavowal or disclaimer based on clear and unmistakable statements by the patentee that limit the claims, such as “the present invention includes . . .” or “the present invention is . . . ” or “all embodiments of the present invention are . . . .” See, e.g., Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1316–19 (Fed. Cir. 2006); SciMed Life Sys., Inc., 242 F.3d at 1343–44. (emphasis in the original).  Each of the three sentence segments cited are part of a declarative sentence that declares that something is required/mandatory with respect to the subject of the sentence.

We are confident that the BrooksGroup can add value to your patent portfolio, provide valuable opinions and design around guidance, and provide you with outstanding litigation strategy.  We would be happy to talk with you about how the BrooksGroup can help you meet your intellectual property needs. Call us today at 586-596-9600 or visit our website at brooks.pro for more information regarding our services.