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June 2, 2010

Spun

Haemonetics sued Fenwal for infringing centrifuge patent 6,705,983. Litigation whirled away all but claim 16 as asserted. District court claim construction defined a "centrifugal unit" as a vessel, even, though the claim preamble read a "centrifugal unit comprising a centrifugal component and a plurality of tubes." '983 was found not invalid and infringed, resulting in $11.3 million in lost profits damages and $4.3 million in reasonable royalty damages. Appeal paid more attention to the preamble. Plus, a new spin to the old standard of §102 ¶2.

Haemonetics v. Baxter Healthcare and Fenwal (CAFC 2009-1557) precedential

On August 16, 2007, the district court issued a claim construction order and construed the term "centrifugal unit" as used in claim 16. The court held, and the parties agreed, that "centrifugal unit" as used in the claim's first line means "the combination of both the vessel and the tubing." Haemonetics Corp. v. Baxter Healthcare Corp., 517 F. Supp. 2d 514, 518 (D. Mass. 2007). Nevertheless, the court construed the claim's remaining two references to "centrifugal unit," including the final one in the context of the "height" and "radius" limitations, to mean only the vessel. Id. at 519-20. The court relied on claim 16's use of identical dimensions to the patent's other independent claims, which the parties agreed used "centrifugal unit" to refer exclusively to the vessel. Id. at 519. The court reasoned that, because the vessel and the tubing together are always larger than the vessel alone, giving "centrifugal unit" a construction that includes the tubing in the context of the dimensional limitations "would yield an absurdity." Id.

Fenwal argued that you'd have to be a rube not to include the tube. In this case, including the tube made the prosecutor a rube.

We agree with Fenwal. Patent claims function to delineate the precise scope of a claimed invention and to give notice to the public, including potential competitors, of the patentee's right to exclude. Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). This notice function would be undermined, however, if courts construed claims so as to render physical structures and characteristics specifically described in those claims superfluous. Id.; see also Elekta Instrument S.A. v. O.U.R. Scientific Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000) (holding that the claim language "extending between latitudes 30°-45°" did not include latitudes between 14° and 43° because that would "render[] the reference to 30° superfluous"). As such, we construe claims with an eye toward giving effect to all of their terms, Bicon, 441 F.3d at 950, even if it renders the claims inoperable or invalid, see Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) ("[W]here, as here, claims are susceptible to only one reasonable interpretation and that interpretation results in a nonsensical construction of the claim as a whole, the claim must be invalidated." (quoting Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999))); Elekta Instrument, 214 F.3d at 1309 (same).

In this case, claim 16's beginning and, in our view, controlling language could hardly be clearer. Claim 16 states: "A centrifugal unit comprising a centrifugal component and a plurality of tubes . . . ." It does not merely state the intended field of use in a preamble, as Haemonetics argues. Rather, it unambiguously defines "centrifugal unit" as "comprising" two structural components: a centrifugal component and a plurality of tubes. The claim then further recites, not the centrifugal component and not a centrifugal unit, but "the centrifugal unit" as "having a radius between 25 and 50 mm and a height between 75 and 125% of the radius." Reading "the centrifugal unit" in the context of the dimensional limitations to refer exclusively to the vessel, as the district court did, ignores the antecedent basis for "the centrifugal unit," see Process Control, 190 F.3d at 1356-57, and fails to give effect to the claim language "comprising a centrifugal component," see Bicon, 441 F.3d at 950.

The claim language was consistent with an embodiment in the specification. There were two spec embodiments, which could be respectively mapped to claims 16 and 1, the CAFC observed. This results in the same term having somewhat different constructions, the appeals panel reasoned.

The patentee's inconsistent use of identical height and radius limitations for two different embodiments thus indicates that "the centrifugal unit" in the context of the dimensional limitations must have different meanings in the context of different claims. Compare Process Control, 190 F.3d at 1356-57 (holding that "a discharge rate" and "the discharge rate" in the same claim maintained the same meaning because the written description did not clearly redefine the term in the different contexts so as to put one skilled in the art on notice), with Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1031 (Fed. Cir. 2002) (construing the term "substantially" differently in the same claim in the context of language of approximation--"substantially constant"--versus language of magnitude--"substantially below"). In other words, the description of two embodiments with each tracking the language of different independent claims most reasonably supports a construction in which "centrifugal unit" has one meaning in claim 1 and another in claim 16. See Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1327-29 (Fed. Cir. 2006) (holding that the claim term "gap" had different meanings in different claims based on those claims' different geometrical contexts).

Haemonetics argued that the proper construction yielded "an abusurdity" for the asserted claim. To which the CAFC agreed, adding: "so what."

Haemonetics argues, and the district court concluded, that because the vessel with the tubing is larger than the vessel alone, construing "centrifugal unit" in the context of the dimensional limitations to include the tubing "would yield an absurdity." Haemonetics, 517 F. Supp. 2d at 519. Maybe so, but we do not redraft claims to contradict their plain language in order to avoid a nonsensical result. See, e.g., Elekta Instrument, 214 F.3d at 1309. Cf. Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1348 (Fed. Cir. 2009) (holding that construing "soluble calcium sulfate anhydride" to mean "soluble anhydrous calcium sulfate" did not rewrite the claim but "merely restate[d] its plain meaning" in light of the specification and the knowledge in the art).

Claim construction isn't the place for giving a mulligan to a defective claim.

Claim 16 defines "centrifugal unit" to include a plurality of tubes and defines the dimensional limitations of that centrifugal unit. An "error" may have occurred in drafting claim 16, as Haemonetics's counsel indicated during the district court's claim construction hearing, J.A. 923, but it is what the patentee claimed and what the public is entitled to rely on. See Process Control, 190 F.3d at 1357 ("Where, as here, the claim is susceptible to only one reasonable construction, . . . we must construe the claims based on the patentee's version of the claim as he himself drafted it."); Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993) ("It would not be appropriate for us now to interpret the claim differently just to cure a drafting error . . . . That would unduly interfere with the function of claims in putting competitors on notice of the scope of the claimed invention.").

Claim term construction reversed.

The CAFC panel then dallied with Fewal's indefiniteness counterclaim, just enough to spin some shiny case law quotations.

The Patent Act requires that a patent's specification "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, ¶ 2. "Because the claims perform the fundamental function of delineating the scope of the invention, the purpose of the definiteness requirement is to ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee's right to exclude." Datamize, 417 F.3d at 1347 (internal citations omitted).

Yet, because claim construction frequently poses difficult questions over which reasonable minds may disagree, proof of indefiniteness must meet "an exacting standard." Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008). "Only claims 'not amenable to construction' or 'insolubly ambiguous' are indefinite." Id. at 1250 (quoting Datamize, 417 F.3d at 1347). A claim is not indefinite merely because parties disagree concerning its construction. An accused infringer must thus demonstrate by clear and convincing evidence that one of ordinary skill in the relevant art could not discern the boundaries of the claim based on the claim language, the specification, the prosecution history, and the knowledge in the relevant art. Id. at 1249-50.

This is significant: a practical metric for determining indefiniteness. Could this be a harbinger for Supreme Court reassertion of a meaningful §112 ¶2 standard in its forthcoming Bilski ruling? Contrast the language in this decision to the seeming "roll the boulder up the mountain" metric for indefiniteness in Datamize, which is in startling contrast to the Supreme Court's United Carbon definiteness standard that serves as the lead-in sentence in the CAFC Datamize decision.

 According to the Supreme Court, "[t]he statutory requirement of particularity and distinctness in claims is met only when [the claims] clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise." United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942). The definiteness requirement, however, does not compel absolute clarity. Only claims "not amenable to construction" or "insolubly ambiguous" are indefinite. See Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1353 (Fed. Cir. 2003); Honeywell Int'l, 341 F.3d at 1338; Exxon Research & Eng'g Co. v. United States, , 265 F.3d 1371, 1375 (Fed. Cir. 2001). Thus, the definiteness of claim terms depends on whether those terms can be given any reasonable meaning. Furthermore, a difficult issue of claim construction does not ipso facto result in a holding of indefiniteness. Exxon Research & Eng'g, , 265 F.3d at 1375. "If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds."

As the issue wasn't properly teed up for appeal given the reversed claim construction, the CAFC then indefiniteness aside.

Reversed in part, vacated in part, and remanded.

Posted by Patent Hawk at June 2, 2010 3:31 PM | Claim Construction

Comments

'983 was found not invalid and infringed, resulting in $11.3 in lost profits damages . . .


Man, just $11.30 in damages. The suits only got $3.00?? I'll bet that put somebody's knickers in a twist. Not even enough for a latte.

Posted by: Babel Boy at June 3, 2010 7:39 AM

"Plus, a new spin to the old standard of §102 ¶2."

Oh, man. Now §102 has gone to paragraphs without designations so we have to keep saying "paragraph x" where x is a digit between 1 and 6.

Note that the 2010 patent act proposes fixing that stupid §112 defect of having paragraphs with no designations. We'll be able to write §112(b), for instance. We'll also get to do the FTF boogie.

The 1954 Congress was full of maladroit idiots, which is one of the reasons US patent law is so FU. Hawk and his regular readers could have produced a better act given a long week-end and a couple cases of Sam Adams.

I'm just goofin' on your goofs, Hawk, to see if we can get a century commnent count out of this post.

Posted by: Babel Boy at June 3, 2010 7:50 AM

Babel, count me in if you are going to share the cases of Sam Adams...

(looks like Hawk got an early start)

Posted by: Pedantic Pete at June 3, 2010 8:27 AM

I think courts should find a way to read claims as being valid.

Posted by: patent prosecutor at June 5, 2010 11:01 AM