CASRIP Newsletter - Spring/Summer 1997, Volume 4, Issue 2
A Direction on Procedural Improvements Suggested by the Supreme Court?: Federal Circuit Rejected District Court's Claim Construction and Granted Judgment of Non-infringement as a Matter of Law
Since Warner-Jenkinson,1 theSupreme Court vacated and remanded three Federal Circuit cases ((1) Litton Sys. v.Honeywell, Inc.,2 ; (2) Hughes Aircraft Co. v. United States,3and (3) Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.4) for further consideration in light of the Courts rulingon the doctrine of equivalents. Although the Supreme Court did not point out withparticularity on what account the Federal Circuit should reconsider its holding in thesecases, the Court was obviously not convinced that the broad scope of equivalency grantedin the first two cases met Pennwalt's restrictive element-by-element approach inapplying the doctrine; in Warner-Jenkinson, the Supreme Court emphasized thenecessity of this approach in order to reconcile the doctrine with the definitional andpublic notice functions of patent claims.
Regarding Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., the Court askedthe Federal Circuit to review its application of prosecution history estoppel under thenew rule of assumption pronounced in Warner-Jenkinson. In Festo, the FederalCircuit affirmed the district court's jury instruction, which did not apply prosecutionhistory estoppel even though the disputed claim term was added during prosecution and thepatentee failed to establish the reason for the addition.
Consequently, the Federal Circuit is currently overburdened with an additional caseload on top of its regular case load because of the cases remanded by the Supreme Court.As to the multiple tasks set by the Supreme Court in Warner-Jenkinson for theFederal Circuit, the Federal Circuit has not yet voiced its opinion on substantive aspectsof improving the application of the doctrine of equivalents and file wrapper estoppel.
Some Federal Circuit cases, however, appear to suggest a direction to accomplish thetask of procedural improvements in accordance with the Supreme Court's guidance, whichencourages district courts' use of partial or complete summary judgment and the FederalCircuit's development of practice to avoid unnecessary jury trials if district courts arereluctant to use summary judgment due to unfamiliarity with the subject matter.5
In CVI/Beta Ventures Inc. v. Tura LP,6 the FederalCircuit reversed the district court's judgment of infringement. The district courtsjudgment of infringement was based on an erroneous claim construction and granted judgmentof non-infringement as matter of law, instead of vacating the judgment and remanding for anew trial.
CVI's two patents ('112 and '955 patents), allegedly infringed by Tura, related toflexible eyeglass frames. The purpose of the invention was common to both patents anddescribed as providing frames "which (1) are highly resistant to permanentdeformation, or 'kinking' over the full range of ambient temperatures, or (2) aresufficiently resistant to deformation and readily restorable to the undeformed shape byheating." Inventors of the CVI patents accomplished the objective by fabricating theeyeglass frames from a nickel-titanium based shape-memory alloy. Although a prior artreference suggested the use of a shape-memory alloy in eyeglass frames, such use waspractically impossible because the shape-memory characteristics of the existing alloysonly exhibited over a narrow range, which was too narrow for frames used over a broadrange of cold winter and hot summer days between -20° to 40° C. The inventors removed the limitation by subjecting anickel-titanium based shape-memory alloy to a work-hardening step or a combination ofwork-hardening and heating steps to enable the exhibition of shape-memory characteristicsbetween the aforementioned broad range.
At trial, the parties disputes focused on the meaning of the term of CVI's '955 patent,requiring the portion fabricated from nickel-titanium based shape-memory alloy"having greater than 3% elasticity over a temperature range from -20° to 40° C." The claims of the'112 patent also referred to elasticity, but the cited percentage was 4% instead of 3%.
In an attempt to exclude the accused device from the scope of the claim, the accusedinfringer asked the magistrate to instruct the jury to construe the claim term"greater than 3% elasticity" to mean that when the frame was subjected to aforce to stretch it to a length at least 3% greater than its original length, the framewould return to its original length upon removal of the external force. The magistratedeclined the accused infringer's request and gave the jury only general instructions onclaim construction. The jury found for the patentees and awarded damages.
After the jury verdict, the accused infringer filed a JMOL motion, arguing that theaccused frames did not meet all the limitations under the proper construction of the term"3% elasticity," requiring full recovery to the original shape. Rejecting theaccused infringer's argument, the magistrate concluded that the term "3%elasticity" was properly construed to refer to the behavior of the shape-memory alloyportion subjected to a deforming force to a length more than 3% of its original length,which portion springs back by at least 3% of its original length, not necessarily to itsoriginal length, once the force was removed. Therefore, the magistrate rejected themotion.
On appeal, the accused infringer argument based its argument on claim construction; theFederal Circuit agreed with the accused infringer. In determining the meaning of thedisputed term, the court's analysis centered around the construction grounded on theintrinsic evidence of record, namely, the claims, the specification and the prosecutionhistory.
First, the court looked to the specification and found that the patent drawings and therespective relevant text indicated that the stretched alloy that was tested returned toits original length. Thus, the claim construction advanced by the accused infringer wassupported.
Next, the court looked to the prosecution history. To overcome prior art references,the applicants amended claims, noting in their remarks that claim 1 was "specific toApplicants' first embodiment of frame components with optimized elasticity." Theapplicants also pointed out one of the drawings indicated a full return to the originallength depicted by that embodiment.
As part of the intrinsic evidence of patent prosecution, the court then looked at therecord on the reexamination proceeding of the '955 patent, which also involved the accusedinfringer. In reexamination, the accused infringer adopted the claim construction adoptedby the district court and urged by the patentees. The accused infringer attempted toestablish that an alloy disclosed in a prior art reference was covered by such claimconstruction, and thus anticipated the patent.
To emphasize the difference in the elasticity of the alloy disclosed in the referenceand the elasticity exhibited by the alloy used in the patented eyeglass frame, thepatentees argued that the alloy in the reference did not return to its original length,and resulted in significant distortions to the original shape of the frame. The patenteesalso cited an article, defining the term "elastic behavior" as requiring therecovery of the original dimensions of a deformed body when the load was removed, asdistinguished from "permanent set or deformation" which did not require suchrecovery.
Accepting the patentees' argument, the examiner confirmed the patentability of allclaims in the '955 patent, noting that the reference showed an alloy exhibiting desiredproperties in a temperature range outside that limited by the claim. The examiner alsofound that the claims did not anticipate or make the patent obvious because " theresults of a change in materials are unpredictable," and the reference did not give asuggestion that such a change would produce desirable results.
After reviewing the patent specification and the prosecution history, the FederalCircuit concluded that the term "elasticity" was consistently used to refer theability of the shape-memory alloy portion of the eyeglass frame to completely return toits original shape after being subjected to a force and then removed. It rejected theplaintiffs' argument that the embodiments in the specification represented the idealcharacteristics of the alloy. Further, the Federal Circuit determined that thespecification limited the claims, explaining that although embodiments and examplesgenerally do not limit the claims, the statements during prosecution and reexamination inthis case limited the disputed claim term to the particular meaning adopted by theapplicants.
The plaintiffs also advanced an argument based on Claim 5 in both the '955 and '112patent which combined limitations of "a heat-recoverable shape-memory" and"3% elasticity." According to the plaintiffs, "if a component is stretchedand then does not recover through its 'elasticity' alone, unaided by 'heat-recoverableshape-memory, then necessarily 'elasticity' cannot mean full recovery."
The Federal Circuit rejected this argument because the patentees profferedmeaning of "elasticity" directly conflicted with the meaning consistently usedin the specification, prosecution history and reexamination proceeding. Additionally,contrary to the plaintiff's argument, the court found no inconsistency in requiring theterm "elasticity" in Claim 5 to mean full recovery if the heat-recoverableshape-memory limitation of Claim 5 was interpreted to refer to the situation in which analloy was stressed to the point that its inherent elasticity failed to enable it to returnto its original shape when the deforming force was removed and, thus, the heat-recoverableshape-memory properties were required to enable it to return to its original shape. Themeaning of "elasticity" requiring full recovery worked all claims in bothpatents.
Finally, the court confirmed the appropriateness of its claim construction by makingreference to the purpose of the invention, i.e., to secure the fit of the eyeglasses tothe wearer's particular facial configuration. A frame of eyeglasses with elasticity whichenables it to return to its original shape after a force is removed is most effective toaccomplish this purpose. This follows that the interpretation adopted by the court isproper because it best serves the purpose of the invention.
In applying the properly construed claim, none of the accused frames met the elasticitylimitation in the '995 and the '112 patents, because all the frames sold by the accusedinfringer did not show full recovery to its original shape after the release of stress.Thus, it is clear that there was no literal infringement.
Regarding infringement under the doctrine of equivalents, the Federal Circuitconsidered vacating the judgment and remanding the case for a new trial because theplaintiffs' evidence introduced at trial was limited to literal infringement based on theerroneous claim construction; moreover, no testimony or evidence particularly linked tothe equivalency according to the proper claim construction was on record.
Citing Exxon,7 the court found it unnecessary toremand the case because the patentees were on notice that the adoption of the accusedinfringer's claim construction was a distinct possibility, and the remanded case wouldresult in a finding of no literal infringement. Nevertheless, the plaintiffs failed toproduce proof to establish infringement under another possible claim construction. Onappeal, the plaintiffs had also failed to ask for a new trial. The court concluded thatunder the circumstances, a grant of a judgment of non-infringement as a matter of law wasmore appropriate than a vacatur and remand for new trial.
On a practical note, this case clearly indicates that the Federal Circuit is placingincreasing weight on patent specifications, particularly embodiments, in interpreting theclaim.8 The court even noted that the specification alone cansupport claim constructions. This follows that where the accused device or process is notexactly the same as any of embodiment in the specification, like the case in CVI,it is getting more difficult to persuade the court to find literal infringement. To findinfringement on the accused device or process modified by infringers, patentees must relymore on arguments based on the doctrine of equivalents. Failure to introduce proofspecifically linked to the equivalency between the disputed claim term and substitutedelement in the accused product or process may prove to be fatal, as indicated by CVI.
Responding to the Supreme Courts request, the Federal Circuit will develop andexpand this practice to minimize unnecessary trials and maximize the use of the FederalCircuit's expertise. This may result in limiting parties' opportunities to introduce proofand to dispute factual issues in a trial court setting. In order to avoid unfavorableresults, litigants must be even more careful to use effective and comprehensive strategiesin presenting cases at the trial court level after these recent Federal Circuit decisions.
-- Toshiko Takenaka
1Warner-Jenkinson Co. v.Hilton Davis Chem. Co., 117 S. Ct. 1040, 137 L. Ed. 2d 146, 41 U.S.P.Q.2d 1865, (U.S.1997)
287 F.3d 1559, 39 U.S.P.Q.2d 1321(Fed. Cir. 1996) reh'g, en banc, denied, (Fed. Cir. Sept. 11, 1996) and vacated,remanded, 117 S. Ct. 1240,137 L. Ed. 2d 323 (U.S. 1997).
386 F.3d 1566, 39 U.S.P.Q.2d 1065(Fed. Cir. 1996); reh'g, en banc, denied, (Fed. Cir. Oct. 17, 1996); and vacated,remanded, 117 S. Ct. 1466, 137 L. Ed. 2d 680 (U.S. 1997).
472 F.3d 857, 37 U.S.P.Q.2d 1161,(Fed. Cir. 1995); reh'g, en banc, denied, (Fed. Cir. Mar. 6, 1996); and vacated,remanded, 117 S. Ct. 1240, 137 L. Ed. 2d 323 (U.S. 1997).
5117 S. Ct. at 1053 n.8, 41 USPQ2dat 1875 n.8.
6-- F.3d --, 42 U.S.P.Q.2d 1577(Fed. Cir. 1997).
7Exxon Chem. Patents v.Lubrizol Corp., 64 F.3d 1553, 35 U.S.P.Q.2d 1801 (Fed. Cir. 1995).
8For a general discussion, seeTakenaka, Increased Significance of Specification for Claim Construction in CurrentDevelopments: United States, CASRIP Newsletter (CASRIP, U. Wash. Seattle WA) (Fall 1996).