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April 29, 2010

Dun In

Judson A. Bradford had some ideas for collapsible shipping containers. So he patented. 5,725,119 came first. Then 6,230,916, a divisional of '119. 6,540,096 was a CIP of '916. Enforcement went nowhere: noninfringement. But the CAFC revived Bradford's prospects owing to a too-narrow claim construction. Of particular interest in this case is that Bradford damned himself in the '096 CIP having benefit of the earlier '119 parent prior date.

Bradford Company v. Conteyor (CAFC 2009-1472) precedential

The containers include "dunnage," which is a collection of pouches that hold parts, and are designed such that both the container and the collapsible dunnage structure can be easily re-erected and reused for multiple shipments. The containers are easily returned to shippers in a collapsed condition.

'096 got rejected over the '119 parent.

Bradford responded by amending the "related applications" section to incorporate by reference the '119 patent, and claiming the benefit of the '119 patent's filing date. The examiner, however, rejected the claims once again, this time under the doctrine of obviousness-type double patenting. The examiner asserted that the '096 patent claims were obvious in light of Bradford's own '119 patent in combination with U.S. Patent 4,798,304 ("the Rader patent"). The examiner suggested that the rejection could be overcome by filing a terminal disclaimer for the '096 patent.

Bradford at first resisted the terminal disclaimer.

In 2002, after arguing the examiner's rejections multiple times, Bradford eventually filed a terminal disclaimer, giving up a portion of the '096 patent term.

'096 allowance was followed by Bradford suing Conteyor, both its Belgium parent and US subsidiary.

Claim Construction & Infringement

All of the asserted claims of the three Bradford patents require that the dunnage be "coupled to" the frame or the side structure of the container... Additionally, the '096 patent claims an opening on the side of the container to allow access to the dunnage.

In its claim construction, the court found the claim term "coupled to" to mean "linked together, connected or joined." Id. at *9. The court gave the term "coupled to," and related terms, the same meaning across all asserted claims of the three patents. For example, where the claims of the '096 patent used the phrase "operably coupled to the side structures," the court construed that term "operably coupled" as having the same meaning as the term "coupled to," which it had previously construed. Id. at *27.

Although in its claim construction order the district court had construed the term "coupled to" uniformly across the three patents to broadly mean "linked together, connected or joined," Claim Construction Opinion, 2006 WL 3500009, at *9, in its subsequent ruling on the ConTeyor defendants' invalidity motion, the court had held that the asserted claims were not anticipated by prior art containers in which the dunnage is coupled to support bars or support rails, Bradford Co. v. Afco Mfg., No. 05-449, 2007 U.S. Dist. LEXIS 31975 (S.D. Ohio May 1, 2007) ("Invalidity Opinion"). In granting ConTeyor summary judgment of noninfringement, the court relied upon that earlier decision on invalidity for the meaning of the term "coupled to." Noninfringement Opinion, 628 F. Supp. 2d at 764. In effect, the court ruled that the term "coupled to" was restricted to a direct coupling. Notably, neither party had previously proposed that construction to the court. Each of the asserted claims requires that the dunnage structure be "coupled to" either the "frame," the "open frame," or the "side structure" of the container. Id. at 762. Finding that the dunnage structure of the accused ConTeyor product was linked or connected to bars or rails and not directly to a "frame," "open frame," or "side structure," the court concluded that the accused product did not infringe claims 1, 4, and 5 of the '916 patent or claims 1, 4, 10, 11, and 19 of the '096 patent. Id. The dispute and the court's ruling were solely on the issue of literal infringement. Id. at 758 n.1.

On appeal, the CAFC reversed the narrow construction given to "coupled to" by the district court.

Bradford argues that the district court erred in its construction of the term "coupled to" and related terms by requiring that the dunnage structure of the claimed containers be attached directly to the frame or side structures of the containers. Bradford points out that both the '916 patent and '096 patent, by incorporation of the '119 patent, clearly disclose dunnage attached to a rail, which is attached to a side structure, and that nothing in the specification requires dunnage to be directly attached to the container frame. On the contrary, Bradford argues, given that dependent claim 10 of the '096 patent recites dunnage indirectly fixed to the frame through a rail, the doctrine of claim differentiation mandates a reading of the term "coupled to" as not limited to directly attached. ConTeyor NA and ConTeyor NV do not respond to Bradford's arguments on this issue.

We agree with Bradford that the district court erroneously construed the term "coupled to," and we hold that the term should be construed broadly so as to allow an indirect attachment. We review claim construction de novo on appeal. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). We begin a claim construction analysis by considering the language of the claims themselves. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). However, "claims must be read in view of the specification, of which they are a part." Id. at 1315 (quotation marks omitted). "[A] court should also consider the patent's prosecution history, if it is in evidence. . . . Like the specification, the prosecution history provides evidence of how the [Patent Office] and the inventor understood the patent." Id. at 1317 (citations and quotation marks omitted).

Although it properly gave the term "coupled to" a broad construction in its earlier order, the district court appears to have unnecessarily narrowed it in ruling on defendants' invalidity contentions.

It is blackletter patent law that claims are construed the same for infringement and invaldity.

The district court's narrowing restricted "coupling to" "to a direct attachment to the frame or side structure of the container."

We agree with Bradford that the doctrine of claim differentiation supports a reading that allows an indirect coupling of the dunnage to the frame of the container. Dependent claim 10 of the '096 patent recites a dunnage structure that is coupled to rails which in turn are coupled to the side structures. In light of a dependent claim that clearly states an indirect attachment of the dunnage structure, the scope of independent claim 1 is presumed to be broader to allow for other types of indirect attachments. See Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) ("The doctrine of claim differentiation create[s] a presumption that each claim in a patent has a different scope."). While the doctrine of claim differentiation, contrary to arguments regularly made in this court, is not a conclusive basis for construing claims, we find nothing in the '096 patent specification or the prosecution history that would allow us to overcome its effect here. On the contrary, the '096 patent specification clearly discloses dunnage coupled to the side structure through a rail. '096 patent fig.3; id. at col.9 ll.24-31; see also '119 patent figs.1 & 1A.

We therefore reverse the court's revised claim construction of the term "coupled to." Because the court based its noninfringement finding solely on its revised construction of that term, we remand the question of infringement to the district court for a determination using its original and correct claim construction.

Priority Date

Priority date was tackled after the noninfringement decision. The dispute was of course whether the parent '119 covered the claims of the CIP '096. The parent was found lacking, so '096 got the later filing date.

While the district court agreed that the container depicted in the '119 patent could be loaded from the side, it found this disclosure insufficient to teach a side-loading container so as to satisfy section 112, first paragraph. Id. at *8 (citing 35 U.S.C. § 112). Moreover, the court noted, in prosecuting the '096 patent, Bradford had specifically told the examiner that the '119 patent did not teach the side-loading container claimed in the '096 patent. Id. at *9. Relying mostly on Bradford's prosecution history comments, the court concluded that the '096 patent was not entitled to the filing date of the '119 patent.

On appeal, defendants were oddly mute on priority date. The CAFC still sussed it out.

Determination of a priority date is purely a question of law if the facts underlying that determination are undisputed. See E.I. du Pont de Nemours & Co. v. MacDermid Printing Solutions, L.L.C., 525 F.3d 1353, 1359 (Fed. Cir. 2008). However, determination whether a priority document contains sufficient disclosure to comply with the written description aspect of 35 U.S.C. § 112, first paragraph, is a question of fact. Waldemar Link v. Osteonics Corp., 32 F.3d 556, 558 (Fed. Cir. 1994).

Although we will affirm the district court's decision, we do agree with Bradford, at least to the extent that a genuine issue of fact exists as to whether the '119 patent contains a sufficient disclosure of a side-loading container.

How a summary judgment can be affirmed when there is genuine issue of fact lingers as a mystery.

In Lockwood, we made clear that in order to gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112. Lockwood, 107 F.3d at 1571. That, we explained, requires that the earlier application describe the later claimed invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor was "in possession" of the claimed invention as of the filing date sought. Id. at 1572 (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)); see also Ariad Pharms., Inc. v. Eli Lilly & Co., No. 2008-1248, 2010 WL 1007369, at *12 (Fed. Cir. Mar. 22, 2010) (en banc) (explaining that possession requires that the specification "describe an invention understandable to [a] skilled artisan and show that the inventor actually invented the invention claimed"). Here, the district court agreed that the two figures in the earlier '119 patent application show dunnage that can be accessed from the side, and we believe that that might have sufficed as a sufficient description of the claimed side-loading limitation had the applicant not indicated otherwise during prosecution. See Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1322 (Fed. Cir. 2002) (citing Vas-Cath, 935 F.2d at 1566) ("Drawings constitute an adequate description if they describe what is claimed and convey to those of skill in the art that the patentee actually invented what is claimed."); see also Eiselstein v. Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995) (explaining that "the prior application need not describe the claimed subject matter in exactly the same terms as used in the claims").

But Bradford did himself in during prosecution for the earlier effective filing date.

However, we also agree with the district court that Bradford is estopped from arguing for an earlier priority date for the '096 patent by the prosecution history of that patent. In one of his earlier rejections, the examiner rejected the claims as obvious in light of the '119 patent combined with the Rader patent. The examiner specifically stated that the Rader patent taught a "side wall having [an] opening." In response, Bradford told the patent examiner that the '119 patent did not teach the very feature that makes the invention of the '096 patent side loading. Specifically, Bradford argued that the '119 patent "clearly does not teach a dunnage structure having an open end which is in alignment with an open area of a side structure to allow access of the dunnage structure for transferring product into and out of the dunnage structure from a side of the container." Bradford further argued that when combined with the side opening taught by the Rader patent, the '119 patent would still not render the '096 patent claims obvious. Bradford's arguments were apparently successful. In the next office action, the examiner relied on a different prior art reference, Kupersmit, in rejecting the claims as obvious.

The applicants' statement to the examiner is a compelling disclaimer of scope such that the '096 patent is not entitled to an earlier priority date. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) ("We take the patentee at its word and will not construe the scope of . . . [a] patent's claims more broadly than the patentee itself clearly envisioned."). That is because arguments made to persuade an examiner to allow an application trump an ambiguous disclosure that otherwise might have sufficed to obtain an earlier priority date. See Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985) (holding that any argument made to convince the examiner of the patentability of the claimed invention "limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance"). We therefore affirm the court's decision limiting the priority date of the '096 patent to its own filing date.

There was also a jurisdiction issue over ConTeyer NV, the Belgium parent of the US subsidiary. Read that portion of the ruling to put yourself to sleep.

Affirmed in part, reversed in part, and remanded.

Posted by Patent Hawk at April 29, 2010 3:09 PM | Claim Construction


I see there was a parallel opposition between the parties at the EPO. I've not had time yet to read the EPO file wrapper and the prior art but it looks like an interesting read.

As I read, I will be looking for further echoes of the Red Queen. She it was who pointed out to Alice that words do not mean what you or anybody else always thought they meant but, rather, what I now choose as their meaning, period.

Thanks Hawk for running this fascinating Alice in Wonderland case on your blog.

Posted by: MaxDrei at May 5, 2010 1:19 AM