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December 22, 2007

Lexicography

Flexsys slammed Sinorgchem at the ITC, winning a limited exclusion order. Sinorgchem appealed. The CAFC instructed the ITC on claim construction.

Sinorgchem v. International Trade Commission (ITC) and Flexsys America (CAFC 2006-1633)

5,117,063 & 5,608,111, owned by Flexsys, claim methods for making particular antioxidants. Sinorgchem imports to the U.S. "a rubber antidegradant that counters the deteriorative effect of various environmental factors on tires."

The disputed term was "controlled amount." The ITC figured the term defined within the patent, but appeared confused with what it thought was inconsistency in the disclosure.

Our opinions have repeatedly encouraged claim drafters who choose to act as their own lexicographers to clearly define terms used in the claims in the specification. See, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) ("[A] claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in . . . the specification . . . ."); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("The specification acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.").

The approach of those cases was endorsed in Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). In Phillips, we described the specification as "the single best guide to the meaning of a disputed term." Id. at 1315 (citing Vitronics, 90 F.3d at 11582). We confirmed that "our cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Id. at 1316.

Here, the drafters have done just that... The term "controlled amount" is set off by quotation marks--often a strong indication that what follows is a definition... Moreover, the word "is," again a term used here in the specification, may "signify that a patentee is serving as its own lexicographer." Abbott Labs. v. Andrx Pharms., Inc., 473 F.3d 1196, 1210 (Fed. Cir. 2007). As such, the patentee must be bound by the express definition. See Durel Corp. v. Osram Sylvania Inc., 256 F.3d 1298, 1303-04 (Fed. Cir. 2001). Here the drafter clearly, deliberately, and precisely defined the term "controlled amount" of protic material as "an amount up to that which inhibits the reaction of aniline with nitrobenzene, e.g., up to about 4% H20 based on the volume of the reaction mixture when aniline is utilized as the solvent." Elsewhere in the same paragraph, the specification again refers to the 4% limit."

The ITC agreed that the patentee had expressly defined the term "controlled amount" in the specification but held that the language "e.g., up to about 4% H2O based on the volume of the reaction mixture when aniline is utilized as the solvent" should not be considered part of that definition for two reasons. Neither of these reasons is persuasive.

The ITC liked another, less precise passage, treating the 4% as merely exemplary, thus giving a broader construction to "controlled amount."

We disagree. This vague language cannot override the express definitional language. We have frequently found that a definition set forth in the specification governs the meaning of the claims. See, e.g., Cultor Corp., 224 F.3d at 1330. "When the specification explains and defines a term used in the claims, without ambiguity or incompleteness, there is no need to search further for the meaning of the term." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998).

The second ITC finding was that the 4% language was inconsistent with a disclosed example.

On appeal, both the ITC and Flexsys support the ITC's decision by relying on statements in our case law that we do "not normally interpret a claim term to exclude a preferred embodiment," Primos, Inc., v. Hunter's Specialties, Inc., 451 F.3d 841, 848 (Fed. Cir. 2006), as would be the case if the 4% limit were applied to the claims. This rule has particular force where the claims as construed do not encompass any disclosed embodiments. See Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1355 (Fed. Cir. 1998) ("A patent claim should be construed to encompass at least one disclosed embodiment in the written description portion of the patent specification.") (emphasis added). This is not the case here.

The example was just one of 21 examples, all described as "preferred embodiments." In that case, sticking with the clearest (narrowest?) definition was the ruling of the 2-1 majority of DYK and district judge Yeakel.

Where, as here, multiple embodiments are disclosed, we have previously interpreted claims to exclude embodiments where those embodiments are inconsistent with unambiguous language in the patent's specification or prosecution history. Telemac Cellular Corp. v. Topp Telecom, lnc., 247 F.3d 1316, 1326 (Fed. Cir. 2001); see also N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005).

The 4% definition applies, so there is no literal infringement, because Sinorgchem uses more than 4% water in its mixture.

In light of the correct claim construction of "controlled amount" it is clear that there is no literal infringement. Based on the specification's express definition of "controlled amount," each asserted claim can only encompass processes that utilize at most 4% water when aniline is the solvent. There is no dispute that Sinorgchem always uses more than 4% water when it reacts aniline with nitrobenzene, and thus there can be no literal infringement of any of the asserted claims. Because the ITC found that Sinorgchem literally infringed Flexsys's patents, it did not reach the question whether Sinorgchem's process would infringe under the doctrine of equivalents.

The ITC ruled was vacated, and remanded.

The 4% construction severely limits doctrine of equivalents. The CAFC declined to address Sinorgchem's assertions of invalidity from indefiniteness and obviousness, figuring that the ITC couldn't stick Sinorgchem with DOE infringement, and they could save themselves some work.

The ever-perceptive Judge Newman dissented.

No error of fact or law has been shown in the Commission's determination; indeed the Commission's findings are scarcely mentioned. Instead, my colleagues have made findings contrary to the detailed and unchallenged text of the patent specifications, and have construed the claims so that they exclude a major part of the invention described in the patents.

The basic principle of determining the scope of patent claims is that the claims provide the legal definition of the invention that is patented, based on the descriptive text and controlled by the prosecution history, with cognizance of the prior art. A patentee can reduce or disclaim claim scope to cover less than what is described in the specification.

Here, however, there was no disclaimer of the scope set forth in the patent specifications and claims; there is no prior art to limit the claims in the way selected by the panel majority; and there is no reason to insert an absolute numerical limit of "about 4%" protic material into the claims that do not contain a numerical limit, when the specifications of both patents demonstrate significantly higher percentages. There was no evidence contradicting the evidence of the experts concerning the range of protic material set forth in the specifications' text and illustrated in the specific examples.

Unfortunately for the patent holder, the "e.g., up to 4%..." immediately follows what clearly is intended as a definition. About the only thing that is clear is that the prosecutor did his client a disservice by not being more judicious in definition and language; leaving out the 4% example in the definitional sentence, and putting in meaningless boilerplate language:

Without further elaboration, it is believed that one skilled in the art can, using the preceding description, utilize the present invention to its fullest extent. The following preferred specific embodiments are, therefore, to be construed as merely illustrative, and not limitative of the remainder of the disclosure in any way whatsoever.

Further, the claims could have been improved by defining "controlled amount" to be greater than 4%, either in an independent claim, or in one or more dependent claims, as a basis for claim differentiation, and thus providing argument basis for a broader scope for claims lacking the 4% mark. More than anything, though unmentioned in the ruling, this affords the narrower construction of the CAFC.

Before the tightening of the screws on patents by the courts in the past couple of years, the patentee would have likely been granted the broader construction by a majority panel, as the ITC did.

Posted by Patent Hawk at December 22, 2007 1:38 AM | Claim Construction

Comments

Actually, I tend to see the CAFC construction as being bizarre. The CAFC took a broad term "controlled amount" and limited it to mean "up to about 4%" when the specification clearly stated that 4% was an example. Moreover, the specification included other examples having greater than 4% water. I find it disturbing that the court seemingly arbitrarily picked 4%. What is the use of calling out particular ranges with "for example" if the court is just going to pick one over another to limit the otherwise broad claim language!

Posted by: anon at December 22, 2007 10:21 AM

Anon's comment is well put, and, upon further analysis, I stand corrected.

Posted by: Patent Hawk at December 22, 2007 11:46 AM

Patent Hawk, in your post you didn't mention Judge Newman's dissent, which reflects a view closer to that expressed by anon: the panel majority ignored several statements in the spec, including many examples, that seem to define the disputed term more broadly than "up to 4%", in favor of another statement, which the majority said defined the disputed term; and most importantly the majority didn't point to error on the part of the ITC that rises to the level of error that the CAFC can overturn. I think the defendant got lucky on this one.

Posted by: DJF at December 24, 2007 12:07 AM

Thanks for the comments. I agree with DJF that the defendant got lucky on this one.

I also have a new resolution not to analyze court cases just before bed, so as not to read like the doddering geezer that I really am.

Posted by: Patent Hawk at December 24, 2007 11:11 AM

I'm with Newman on this one that the majority got it wrong on what a "controlled amount" means, but for a different reason. The majority focuses quite a bit on the phrase "e.g., up to about 4% H2O based on the volume of the reaction mixture when aniline is utilized as the solvent." The use of "e.g." signifies that this phrase is exemplary, not specific (where "i.e." would be used), and should not have been relied on the limit the independent claim. Also, if up to 4% appears in the dependent claims, the majority is giving insufficient deference to the the doctrine of claim differentiation. Overall, this case is not a good result in view of the law or the facts.

Posted by: EG at December 24, 2007 11:28 AM