Mems Technology Berhad (MemsTech) v. International Trade Commission and Knowles Electronics (CAFC 2010-1018) nonprecedential; Judges Lourie (author); Mayer, and Gajarsa

The CAFC's purview for ITC determinations: legal review de novo; factual interpretation gets a sanity check.

We review the Commission's final determinations under the standards of the Administrative Procedure Act ("APA" or "Act"). See 19 U.S.C. § 1337(c) (stating that "[a]ny person adversely affected by a final determination of the Commission" may appeal to this court "for review in accordance with chapter 7 of Title 5"). Under the Act, rulings of law are reviewed de novo, and findings of fact are reviewed for substantial evidence. Ajinomoto, 597 F.3d at 1272; OSRAM GmbH v. Int'l Trade Comm'n, 505 F.3d 1351, 1355 (Fed. Cir. 2007). Substantial evidence is "'such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.'" Id. (quoting Consol. Edison Co. v. NLRB, 305 U.S. 197, 217 (1938)).

Claim Construction

Below, an evidence-based skew to claim construction, as a general dictionary factored in. What's missing is in the quote below is that claims terms take their plain meaning, absent a good reason otherwise. ("This court gives words of a claim their ordinary and customary meaning." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).) The concept of "plain and ordinary meaning" is however later mentioned in the instant decision.

Claim construction is a matter of law subject to de novo review. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454-55 (Fed. Cir. 1998) (en banc). To ascertain the scope and meaning of the claims, we consider the claim language, the specification, the prosecution history, and relevant extrinsic evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1314-17 (Fed. Cir. 2005) (en banc). "[A]bsent contravening evidence from the specification or prosecution history, plain and unambiguous claim language controls the construction analysis." DSW, Inc. v. Shoe Pavilion, Inc., 537 F.3d 1342, 1347 (Fed. Cir. 2008). Extrinsic evidence "may be used only to help the court come to the proper understanding of the claims; it may not be used to vary or contradict the claim language." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).

Claim differentiation is a nuanced doctrine going to the potentiality of reading limitations into claim elements. From this angle, claim differentiation is a mischief maker from the perspective of "plain meaning."

The doctrine of claim differentiation assists in determining whether a limitation in a dependent claim should be read into an independent claim. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) ("[W]here the limitation that is sought to be 'read into' an independent claim already appears in a dependent claim, the doctrine of claim differentiation is at its strongest."). Moreover, an applicant's statements during prosecution history may result in a disclaimer of claim scope; but any such remark must constitute "a sufficiently clear and deliberate statement to meet the high standard for finding a disclaimer of claim scope." Honeywell Int'l, Inc. v. Universal Avionics Sys. Corp., 493 F.3d 1358, 1365 (Fed. Cir. 2007).

Here's a bit more mischief, a threat to ignoring plain meaning claim language. After all, a claims' drafter had every opportunity to express exactly what was intended as claimed.

We have cautioned that "a construction that excludes a preferred embodiment 'is rarely, if ever, correct.'" C.R. Bard, 388 F.3d at 865 (quoting Vitronics, 90 F.3d at 1583).

But then the CAFC talks out of the other side of its mouth on claimed embodiments.

It is not dispositive that the specification may describe or depict one or more preferred embodiments; as we noted in Phillips, "although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments." Id. at 1323.

One of the most ridiculous facets of current case law claim construction is that claim preambles may or may not be limiting, depending upon factors that extend to the inscrutable. The correct simplicity that everything in a claim should have meaning eludes legal sanction. Though the "all of a claim is meaningful" concept has been mused by certain CAFC judges from time to time, the extant preamble doctrine typifies the muddle-headed approach too often embraced by the CAFC body. In other words, the quote below is legal scat, but the CAFC hasn't figured that out yet.

"[A] preamble is a claim limitation if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim." Poly-Am., L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1309 (Fed. Cir. 2004) (internal quotation marks omitted). There is "[n]o litmus test" for determining whether a preamble limits claim scope; however, "when reciting additional structure or steps underscored as important by the specification, the preamble may operate as a claim limitation." Catalina Marketing Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). "The effect preamble language should be given can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim." Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989).

"[W]hen the preamble is essential to understand limitations or terms in the claim body, the preamble limits claim scope." Catalina Marketing, 289 F.3d at 808.

The above quote misses the point. A preamble itself is a limitation, starting with whether a claim is of an apparatus, process, et cetera. Many preambles go on to provide a context, which itself should be considered limiting to scope. To turn it on its head, the proper legal framing is that unless a preamble is content-free, a preamble limits claim scope. That clear notion is not case law, but it should be.

Here's one sensible doctrine: no prosecution disclaimer without clear intent for a statement to act as such.

In sum, the disputed prosecution history does not contain a "clear and deliberate statement" that meets the high standard for a disclaimer of claim scope. Honeywell, 493 F.3d at 1365.

And here's to lame argument by litigators.

[T]he fact that neither party advanced the claim construction adopted by the Commission is not legal error,. As we stated in Exxon Chemical Patents, Inc. v. Lubrizol Corp., "the trial judge has an independent obligation to determine the meaning of the claims, notwithstanding the views asserted by the adversary parties." 64 F.3d 1553, 1555 (Fed. Cir. 1995).

According the CAFC bedrock Phillips claim construction decision, general dictionaries are something of a last resort to pinning definition of a claim term. But for ordinary words, an ordinary dictionary works.

Regarding claim 1, the Commission considered the limitation that the package comprises "a chamber being defined by the first member and the second member." Neither party argued that "chamber" carried any special meaning in the context of the '089 patent, and the Commission did not err by applying the term's ordinary meaning, "a room or a natural or artificial enclosed space or cavity." J.A. 113 (quoting Webster's New Collegiate Dictionary 183 (1979)); see also Phillips, 415 F.3d at 1314 ("In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words. In such circumstances, general purpose dictionaries may be helpful." (citation omitted)).

Validity

A recital of the "clear and convincing evidence" standard for validity, an issue instantly before the Supreme Court in i4i v. Microsoft.

A United States patent is presumed valid under 35 U.S.C. § 282, and a party asserting invalidity as a defense to infringement must present clear and convincing evidence that the patent is invalid. Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1365 (Fed. Cir. 2004). A claim is invalid under § 102 if a prior art document discloses every element of the claimed invention, either expressly or inherently. Adv. Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). Anticipation under 35 U.S.C. § 102 is a question of fact, which we review for substantial evidence. Vizio, Inc. v. Int'l Trade Comm'n, 605 F.3d 1330, 1342 (Fed. Cir. 2010).

[T]he accused infringer, bears the burden of producing evidence demonstrating obviousness. Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co., 308 F.3d 1167, 1187 (Fed. Cir. 2002) ("[A] party seeking a judgment that a patent is obvious bears the burden of demonstrating by clear and convincing evidence that the teachings of the prior art would have suggested the claimed subject matter to one of ordinary skill in the art.").

MemsTech couldn't meet the burden in this case.

"Inherent" disclosure allows a reading into the record suggestion of functionality well known in the prior art, but only suggested by a disclosure. It is the sort of vagueness in case law that is entirely appropriate.

A claim is invalid for obviousness if, to one of ordinary skill in the pertinent art, "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made." 35 U.S.C. § 103(a) (2006); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406-07 (2007). "Obviousness is a question of law based on underlying factual inquiries, and thus we review the Commission's ultimate determination de novo and factual determinations for substantial evidence." Vizio, 605 F.3d at 1342. Underlying factual inquiries in the obviousness analysis include: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the prior art and the claimed invention; and (4) the extent of any objective indicia of nonobviousness. Crocs, Inc. v. Int'l Trade Comm'n, 598 F.3d 1294, 1308 (Fed. Cir. 2010).

As indicia to spotty competence, the CAFC sometimes falls down on its obviousness determinations, by ignoring what might be dispositive evidence. In Odom v. Microsoft, a CAFC panel completely ignored undisputed strong "objective indicia" that indicated nonobviousness: commercial success owed to the invention, and that Microsoft, citing its own patent as prior art, seven years later tried to patent the exact same invention as Odom had in intervening years.

Another place where the CAFC tends to fall into a hole is reading an invention into the prior art. This exercise in hindsight happened in the Odom case.

We decline MemsTech's invitation to reconstruct the claimed invention with hindsight using these disparate prior art documents. See Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) ("Care must be taken to avoid hindsight reconstruction by using the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit." (internal quotation marks omitted)).

Lourie penned both this affirmation and the one in the Odom case. A foolish inconsistency is a hobgoblin of a randomly competent legal mind.

MemsTech argued "obviousness with reference to the way in which the inventor arrived at the inventions," which was rejected.

Under 35 U.S.C. § 103(a), "[p]atentability shall not be negatived by the manner in which the invention was made."

Affirmed.