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April 22, 2008

Antecedent Basis

They killed the bunny patent. It's enough to make you cling to your guns and religion. Energizer tried to zap Chinese battery makers using the ITC, but the ITC pulled the plug. Twice. On appeal, a non-precedential decision, owing to all-around discord in the panel. A badly drafted claim loses its juice on antecedent disconnect.

Energizer Holdings and EverReady Battery v. ITC and Chinese battery makers (CAFC 2007-1197)

Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (2000), prohibits "[t]he importation into the United States, the sale for importation, or the sale within the United States after importation of articles . . . that infringe a valid and enforceable United States patent," id. § 1337(a)(1)(B). On April 28, 2003, Energizer Holdings, Inc. and Eveready Battery Company, Inc. (collectively "Energizer") filed a complaint with the International Trade Commission ("Commission") alleging violations of section 337 as a result of the importation into the United States, the sale for importation, and the sale within the United States after importation, of certain zero-mercury-added alkaline batteries by fourteen Chinese battery manufacturers. According to Energizer, the actions of the battery manufacturers constituted infringement of claims 1-12 of U.S. Patent No. 5,464,709 (the "'709 patent").

The ITC pitched the investigation once it "determined that the asserted claims of the '709 patent were invalid for failure to meet the definiteness requirement of 35 U.S.C. § 112, ¶ 2 ("The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.")."

Energizer appealed the Commission's ruling in Energizer I to this court. Subsequently, in Energizer Holdings, Inc. v. International Trade Commission, 435 F.3d 1366 (Fed. Cir. 2006) ("Energizer II"), this court reversed the decision of the Commission that claims 1-7 of the '709 patent were indefinite and remanded the case to the Commission for further proceedings, id. at 1371. On remand, the Commission determined (i) that claims 1-7 of the '709 patent are invalid for failure to meet the written description requirement of 35 U.S.C. § 112, ¶ 1 ("The specification shall contain a written description of the invention, and the manner and process of making it . . . .") and (ii) that, if valid, the claims are not infringed by the accused imported products.

Battery buffs just can't get enough of this.

Commercial batteries consist of three primary components: a cathode, an anode, and an electrical conductor connecting the cathode to the anode. A battery cathode contains a reducing agent, an element or compound that releases electrons in a chemical reaction. A battery anode contains an oxidizing agent, an element or compound that receives electrons released by the cathode in a chemical reaction. When an electrical conductor connects the cathode to the anode, electrons flow through the conductor, creating an electrical current that can power electronic devices.

Commercial alkaline batteries traditionally have contained manganese dioxide as an active cathode component and zinc as an active anode component. The usage of zinc as an anode component tends to result in the corrosion of the zinc and the production of hydrogen gas, leading to battery leakage. Energizer II, 435 F.3d at 1368. To remedy this problem, battery manufacturers adopted the practice of amalgamating mercury with the zinc in the anode of the battery, which tends to inhibit corrosion and thereby limit hydrogen gas formation. Id. The disposal of mercury-containing batteries, however, presents an environmental hazard. As a result, research scientists have sought to limit the amount of mercury contained in commercial alkaline batteries. Id.

The '709 patent issued following the discovery of a test for screening zinc metal in order to find zinc substantially free of the impurities that cause corrosion. Id. Using such zinc in commercial batteries lessens the need for mercury as an additive. Claim 1, which the parties agree claims a commercial battery, states:

An electrochemical cell comprising an alkaline electrolyte, a cathode comprising manganese dioxide as an active cathode component, and an anode gel comprised of zinc as the active anode component, wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and said zinc anode has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.

Recapping the Energizer saga to date, the issue was the antecedent basis for "said zinc anode," which the ITC couldn't make sense of.

The Commission ruled that claim 1 was indefinite because the term "said zinc anode" did not have a definitive antecedent basis. Id. at 25-26. The Commission reasoned that, if "anode gel" is construed to be the antecedent basis of "said zinc anode," the claim becomes nonsensical because only the test cell wherein zinc is screened for use in a battery, not the anode gel of an actual completed battery, is subjected to the discharge process described in claim 1. Id. at 25. Alternatively, if "said zinc anode" is interpreted to refer to the zinc that is tested for integration into a battery, then the word "anode" in "said zinc anode" becomes superfluous. Id. at 25-26. Since, in the Commission's view, neither potential antecedent basis of "said zinc anode" resulted in a comprehensible claim, the Commission ruled claim 1, and claims 2-7 which depend from it, indefinite. Id. at 26. Consequently, the Commission terminated its investigation with a finding of no violation of section 337.

Energizer appealed.

As noted, the definiteness requirement is set forth in 35 U.S.C. § 112, ¶ 2. To comply with § 112, ¶ 2, a claim must "particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention." This court has stated that "[c]laims are considered indefinite when they are 'not amenable to construction or are insolubly ambiguous . . . . Thus, the definiteness of claim terms depends on whether those terms can be given any reasonable meaning.'" Young v. Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir. 2007) (quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)). In other words, an indefiniteness inquiry "requires a determination whether those skilled in the art would understand what is claimed." Id.

In Energizer II, this court held that claim 1 of the '709 patent was not invalid by reason of indefiniteness. 435 F.3d at 1371. After noting that "[a] claim that is amenable to construction is not invalid on the ground of indefinitness," the court stated:

Here, it is apparent that the claim can be construed. In that regard, we conclude that "anode gel" is by implication the antecedent basis for "said zinc anode." The Commission's holding of invalidity on the ground of indefiniteness is reversed.

Id. Having reversed the Commission's decision, the court remanded the case to the Commission for further proceedings. Id.

Failing to punt the patent over § 112, ¶ 2, the ITC came back with § 112, ¶ 1, the written description requirement. The CAFC-mandated "zinc anode" claim construction made no sense to the ITC, and it couldn't find support for the nonsense in the specification.

Applying what it viewed as "the claim construction mandated by the Federal Circuit," the Commission concluded that "claim 1 is invalid because the specification does not 'contain a written description of the invention . . .' as required by 35 U.S.C. § 112 ¶ 1." Energizer III at 13. The Commission came to this conclusion via a two-step process. First, it considered claim 1 itself. Starting from the premise that the "anode gel" of the claim was "the anode of the completed electrochemical cell destined for consumers," the Commission stated that "[t]he claim language 'after being discharged . . .' specifically calls for the discharge of that anode (and only that anode) in the specified manner. No other anode is recited in the claims." Id. The Commission emphasized that "[n]either the test cell [of the specification] nor its anode are [sic] recited in the claims" and that there is no language in the claims that "establishes any relationship between the anode of the electrochemical cell and the (different) anode of the test cell, the only cell which the specification describes as being discharged in accordance with the claim language." Id. at 14 (footnote omitted). The Commission recognized that "calling for the anode of the electrochemical cell to be discharged in accordance with the parameters set out in the claims may be illogical." Id. It stated, however: "[T]his is what is called for by the claims and we are not permitted to redraft those claims to supply different or missing language or to provide language to supply any missing connection between the claimed anode gel of the electrochemical cell and the unclaimed anode gel of the test cell." Id.

Turning next to the specification of the '709 patent, the Commission pointed out that "[i]n contrast to the claims, the specification does not describe the anode of the electrochemical cell as being discharged in accordance with the claim language. Rather, it only describes the anode gel (anode) of the test cell as being so discharged." Id.

The Commission also determined that, assuming claims 1-7 were not invalid, this court's claim construction precluded a finding of infringement because no commercially available battery possesses all of the limitations recited in claim 1 of the '709 patent. Id. at 17.

Case law on 35 U.S.C. § 112, ¶ 1 -

A validly issued patent must comply with the written description requirement. As noted above, 35 U.S.C. § 112, ¶ 1 provides that "[t]he specification shall contain a written description of the invention." In University of Rochester v. G.D. Searle & Co., 358 F.3d 916 (Fed. Cir. 2004), this court stated that the written description requirement involves "determining whether the subject matter defined in the claims is described in the specification," id. at 921; see also TurboCare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1119 (Fed. Cir. 2001) (holding that "[n]o reasonable juror could find that [the appellant's] original disclosure was sufficiently detailed to enable one of skill in the art to recognize that [the appellant] invented what is claimed"). In other words, the specification must describe the subject matter of the invention that is later claimed to be protected in the claims. Univ. of Rochester, 358 F.3d at 927.

The determination of whether a patent meets the written description requirement is a question of fact. Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006).

So the buzzed bunny brings on Energizer III. But, according to Judge Schall,...

...a fundamental disconnect exists between the claims and specification of the '709 patent. The specification speaks consistently of a test cell, describing its properties and usage, whereas the claims speak exclusively of the anode of a completed battery. I recognize that claims are to be read in light of the specification, of which they are a part. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc). At the same time, however, "[i]t is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). "The written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of the claims." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc), aff'd 517 U.S. 370 (1996). A court cannot remedy for Energizer the gulf that it has created between the claims and the specification by speaking solely of a test cell in the specification while claiming a completed battery in the claims.

Essentially, the ITC never got past indefiniteness in § 112, ¶ 2. Neither did Judge Linn.

A proper construction of the disputed claim is unattainable.

Because I believe the claim is insolubly ambiguous and, thus, indefinite, I concur that claim 1 of the '709 patent is invalid. See Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001) ("If a claim is insolubly ambiguous, and no narrowing construction can properly be adopted, we have held the claim indefinite."). In my opinion, claim 1 fails to comply with the second paragraph--not the first paragraph--of § 112.

Once again, Dissent Queen Newman draws a short straw. Newman was willing to cut the claim some slack.

My colleagues on this panel hold the Energizer patent invalid, although they do not agree on the grounds, and there is no majority opinion.

Although it is apparent that the '709 patent's claims are not perfect, it is equally apparent that the invention that is claimed is the invention that is unambiguously and clearly described in the specification. When there is absolute clarity in the specification, the court fails its responsibility as ministrator of justice, by wiping out a valuable patent on imperfections that confuse no one. The complexities of patent claim writing are notorious. There are few, if any, legal documents more difficult to craft, more fraught with pitfalls than patent applications; and patent claims are so universally challenging to the non-specialist, that this court has converted the judicial need to understand them into an unruly cottage industry called "claim construction." Yet the Energizer patent claims are readily and unambiguously understood when the rest of the specification is read.

Undoubtedly the claims could have been more perfectly drawn, but when read in the context of the specification there is no doubt as to what is described and claimed. See, e.g., Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1140 (Fed. Cir. 2003) ("Any ambiguity, as may be raised when dispute arises, requires the decisionmaker to focus objectively on the patent specification and claims, for the specification is the basic presentation by the applicant, and the claims represent the final product of a sometimes imperfect process."); Multiform Dessicants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998) ("It is the person of ordinary skill in the field of the invention through whose eyes the claims are construed."). All parties, including the Intervenors, agree that a person of ordinary skill in the field of the invention would understand what was invented, described, and claimed, despite less than perfect clarity if the claims are removed from their foundation in the specification.

One can criticize the claims for permitting the absurd reading that was accepted by the Commission and now by my colleagues. However, when the specification is consulted, there is no ambiguity as to what is covered by the claim. "The claims of a patent are always to be read or interpreted in light of its specifications . . . ." Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940); Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 432 (1902) ("The claim of a patent must always be explained by and read in connection with the specification . . . ."); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) ("claims must be read in view of the specification, of which they are a part").

When there is an apparent ambiguity in claim language, the court must seek a reasonable interpretation based on the specification, not one that defies the fundamental tenets of the invention. See Rexnord Corp. v. Laitrop Corp., 274 F.3d 1336, 1343 (Fed. Cir. 2001) ("[I]f the term or terms chosen by the patentee so deprive the claim of clarity that there is no means by which the scope of the claim may be ascertained by one of ordinary skill in the art from the language used, a court must look to the specification and file history to define the ambiguous term in the first instance."); K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999) (same). "[I]t is necessary to consider the specification as a whole, and to read all portions of the written description, if possible, in a manner that renders the claim internally consistent," Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1379-80 (Fed. Cir. 2001), as well as to reflect the purpose of the invention, Apple Computer, Inc. v. Articulate Systems, Inc., 234 F.3d 14, 25 (Fed. Cir. 2000). As the court recognized in Autogiro Co. v. United States, 384 F.2d 391 (Ct. Cl. 1967), the determination of whether a claim is ambiguous or clear cannot be ascertained without reference to the specification and prosecution documents:

Claims cannot be clear and unambiguous on their face. A comparison must exist. The lucidity of a claim is determined in light of what ideas it is trying to convey. Only by knowing the idea, can one decide how much shadow encumbers the reality. . . .

. . . Thus we find that a claim cannot be interpreted without going beyond the claim itself. No matter how clear a claim appears to be, lurking in the background are documents that may completely disrupt initial views on its meaning.

In deriving the meaning of a claim, we inspect all useful documents and reach what Justice Holmes called the "felt meaning" of the claim.

Id. at 396-97 (footnotes omitted). Precedent is extensive, and powerful, that any uncertainty flowing from the drafting of the claim seeks resolution by recourse to the specification, as understood by persons of ordinary skill in the field of the invention. See Carnegie Steel, 185 U.S. at 437 ("The specification of the patent is not addressed to lawyers, or even to the public generally, but to the manufacturers of steel . . . .").

Judge Newman beautifully piles on the case law. But she is trying to sow a silk purse from a sow's ear. Patents aren't supposed to be prosecuted by junior birdman, but by a highly paid, supposedly skilled specialist, aka a patent attorney. When Mr. Wordsmith turns into Birdman Jr., the patent holder pays for holding sparrow droppings.

This correspondent finds no excuse for bad language in a patent claim. A claimant has every opportunity for plain English, and has recourse to correct deficient claims. Failing that, fail the patent.

Fortunately, Platinum Patents now exists. When you need a quality patent, you know who to call.

Posted by Patent Hawk at April 22, 2008 1:17 AM | § 112


If Newman upsets you, Hawk, then for the sake of your blood pressure don't ever involve yourself in a polyglot EPO case, where the tribunal is more or less always faced with ambiguities (was there ever a patent that is devoid of departures from perfect clarity??), so looks for what the grounded skilled addressee/reader would take to be the subject matter protected by the patent claim. Newman is a chemist, right? Her two colleagues not, right. Presumably you are of the view that Chef America is also the right result and presumably you have no fear that, through the eyes of intelligent business people, decisions like Chef America render the law an a88.

Posted by: MaxDrei at April 22, 2008 3:30 AM

Yoweee, this patent was a 3rd generation continuation. The lawyers musta' sucked these inventors dry.

More to the point -- what in the dickens were Energizer's suits doing when they advised acquiring this piece of trash?

In addition to the inexcusable ambiguity of the "anode gel" language, I'm still trying to work out why they restricted Claim 1 with the "gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A" language.

The court seems to pitch the novelty, which was apparently not contested, on the near 0 Hg concentration. So what's with the specific discharge time?

Also, I would argue that basing the Hg concentration on parts per million of the entire electrochemical cell is indefinite. The point of novelty is the negligible amount of Hg in the zinc anode. But, as claimed, the anode could be 75% Hg and the cell packed with a large amount of insulating material, buckshot, and old Newman dissents to dilute the Hg on a whole cell basis.

Pee-u. Hope I never write one this bad.

Posted by: Babel Boy at April 22, 2008 8:27 AM

Here is the problem I have with this decision.

35 USC 112, para. 1 states:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

According to Newman, "All parties, including the Intervenors, agree that a person of ordinary skill in the field of the invention would understand what was invented, described, and claimed."

So, if a person of ordinary skill in the art would understand the claim and how to make the invention, as acknowledged by the defendants experts, how can the claim fail to meet the requirements of para. 1? It doesn't say it has to be clear to everyone who reads the patent, but to one of ordinary skill in the art to which it pertains.

Posted by: Jay at April 25, 2008 3:49 AM