Federal Circuit Patent Watch: A comparative statement in a patent specification can be “definitional” for purposes of claim construction | WilmerHale
Precedential and Key Federal Circuit Opinions
1. PARKERVISION, INC. v. VIDAL [OPINION] (2022-1548, 12/15/2023) (Prost, Wallach, and Chen)*
Chen, J. The Court affirmed the PTAB’s determination that the patent claim at issue was unpatentable as obvious. The Court held that the Board correctly construed the term “storage element.” In affirming the claim construction, the Court held that the patentee had “acted as its own lexicographer to define the term ‘storage element.’” ParkerVision argued that the patent’s description of the “storage element” term was “comparative, not definitional,” but the Court explained that even if a sentence is “comparative,” that “does not prevent it from being definitional.” The Court also rejected ParkerVision’s argument that “the specification, when read as a whole, restricts a ‘storage element’ to an element of an energy transfer system.” The Court explained that the examples in the patent specification “merely indicate that the term ‘storage element’ encompasses storage elements that are part of energy transfer systems, not that this term by itself necessarily invokes an entire energy transfer system.” Finally, the Court held that “substantial evidence support[ed] the challenged factual findings underpinning the obviousness determination.”
*WilmerHale represented Intel Corporation as the Petitioner before the PTAB and as Appellee before the Federal Circuit.
2. K-FEE SYSTEM GMBH v. NESPRESSO USA, INC. [OPINION] (2022-2042, 12/26/2023) (Taranto, Clevenger, and Stoll)
Taranto, J. The Court reversed the district court’s construction of “barcode” and the district court’s resulting grant of summary judgment of non-infringement and remanded for further proceedings. The district court’s construction of “barcode” excluded “bit codes”—codes made up of two binary symbols—based on the submission to the European Patent Office (“EPO”) by patentee. The Court reversed, holding that the district court erred in determining that “a relevant artisan would … conclude that no bit code could be a barcode.” The Court concluded that “all that is clear from [the patentee’s] submission to the EPO about a relevant artisan’s understanding of ‘barcode’ [was] that barcode messages use bars of varying widths—a matter of visual appearance.” The Court also concluded that Appellant “did not act with the clarity required either to prescribe a new meaning for ‘barcode’ or to disclaim any portion of the apparent meaning” during the EPO proceedings. The Court thus “reverse[d] the district court’s claim construction and construe[d] ‘barcode’ to refer to code messages consisting of a linearly arranged sequence of bars of visually non-uniform widths (or a coding system producing such messages).”
3. DEXCOM, INC. v. ABBOTT DIABETES CARE, INC. [OPINION] (2023-1795, 1/3/2024) (Dyk, Hughes, and Stoll)
Stoll, J. The Court affirmed the district court’s denial of a preliminary injunction to enjoin Appellee from proceeding with IPR proceedings. Appellant and Appellee entered into a settlement and license agreement, which included a forum selection clause identifying the U.S. District Court for the District of Delaware as the exclusive jurisdiction “over any dispute arising from or under or relating to” the settlement agreement.
After expiration of the Covenant Period, Appellant sued Appellee, alleging patent infringement. Appellee then filed petitions for IPR of Appellant’s asserted patents. Appellant responded with a breach-of-contract counter-counterclaim at the district court, alleging that Appellee breached the settlement agreement’s forum selection clause by filing IPR petitions, and moved for a preliminary injunction, requesting the district court prohibit Appellee from proceeding with the IPRs. The district court denied the preliminary injunction.
On appeal, the Court held that Appellant could not “succeed on its breach-of-contract counter-counterclaim.” The Court noted that the agreement permitted each party “to Challenge any patent … that is being asserted … against it or its products,” and “to Challenge any of the patents of the other Party if there is a statute, regulation, or rule that sets a deadline to make the Challenge,” and these sections of the agreement “indisputably allowed IPR filings during the Covenant Period under certain conditions.” And “because the forum selection clause governs both during and after the Covenant Period, the clause cannot operate to prohibit the filing of IPRs after the Covenant Period if it allowed them during the Covenant Period.” The Court held that because Appellant “cannot succeed on the merits in its breach-of-contract counter-counterclaim … , it is not entitled [to] a preliminary injunction.”
4. PACIFIC BIOSCIENCES OF CALIFORNIA, INC. v. PERSONAL GENOMICS TAIWAN, INC. [OPINION] (2022-1410, 2022-1554, 1/9/2024) (Prost, Taranto, and Hughes)
Taranto, J. The Court affirmed the PTAB’s decisions in two IPRs directed to a single patent, one in which the PTAB rejected Pacific Biosciences of California, Inc. (PacBio)’s arguments, and one in which the PTAB found the challenged claims unpatentable. The patent at issue is generally directed to an “apparatus for identifying a single biomolecule” as well as methods of using or making that apparatus. Both PacBio and Personal Genomics cross-appealed.
PacBio’s appeal challenged the PTAB’s construction of the “identifying a single biomolecule” claim limitation. The Court affirmed the PTAB’s construction of “identifying a single biomolecule” as “requiring an apparatus capable of ascertaining the identity of one single, individual biomolecule by examining only that biomolecule.” The Court held that “[t]he striking feature of the phrase is its inclusion of the word ‘single.’ There is no apparent reason for the inclusion of the word ‘single’ in the phrase except to indicate that the capability required is to identify a molecule with just that one molecule in view.” In addition, “the specification differentiate[d], on one hand, ‘identifying a single biomolecule’ by examining that individual biomolecule from, on the other, detecting a population-level signal from an ensemble or cluster of amplified or copied biomolecules.” Both parties challenged the PTAB’s factual findings regarding the prior art. The Court concluded that those findings were supported by substantial evidence and affirmed.
