Welcome to Winston & Strawn’s Federal Circuit Patent Decision Summaries. This bulletin provides a short summary of, and a link to, the precedential patent cases decided by the Federal Circuit last week. We hope that these Summaries are useful in keeping you updated on the Federal Circuit’s patent decisions.
The doctrine of equivalents is not available to broaden the scope of claim terms such as “about” and “approximately,” which already capture equivalents within the literal scope of the claim.
Cohesive Technologies, Inc. v. Waters Corp., No. 2008-1029
(Fed. Cir. Oct. 7, 2008).
The patent included a limitation that a claimed particle was “greater than about 30 microns.” The district court construed this limitation to exclude the accused particles with sizes of 29.01 microns. The district court also refused to submit the accused infringer’s anticipation defense to the jury because the district court believed that the anticipation defense was a subset of an obviousness defense.
The Federal Circuit reversed and held that the district court improperly read the term “about” out of the claim. “When ‘about’ is used as part of a numeric range, the use of the word ‘about,’ avoids a strict numerical boundary to the specified parameter. Its range must be interpreted in its technologic and stylistic context.” Thus, when a specified parameter is not clear by the claim terms, “it is the purpose of the limitation in the claimed invention - not the purpose of the invention itself - that is relevant.” (Emphasis in original).
In this case, the purpose of the term “about 30 microns” was a low-end limit on particle size, which was the size appropriate to achieve a desired level of turbulence in the invention. Without setting a specific numeric range, the Court used the specification to determine a reasonable variance for the term “about 30 microns” and found that 29.01 microns, the size of the accused particle, fell within that variance. Importantly, because the use of “about 30 microns” could encompass a range of particle sizes, the Court held that the patentee had already captured what would otherwise be equivalents within the literal scope of the claim. Thus, the doctrine of equivalents was unavailable to the patentee to broaden the scope of the claim.
The Court also overruled the district court’s refusal to submit the accused infringer’s anticipation defense to the jury. Anticipation is the epitome of obviousness, but the two are separate statutory defenses to infringement, with separate tests. It is error to refuse to submit the issue of anticipation to a jury simply because the accused infringer has also asserted an obviousness defense.
A copy of the opinion can be found here.
In deciding whether a claim has been broadened during reexamination, it is necessary to determine whether any conceivable process would infringe the amended claim, but not infringe the original claim.
Predicate Logic, Inc. v. Distributive Software, Inc., No. 2007-1539
(Fed. Cir. Oct. 9, 2008).
After the patentee sued for infringement, the alleged infringer requested that the PTO reexamine the patent. The patent was amended during reexamination. Returning to the district court, the alleged infringer argued that the reexamined patent expanded the scope of the original patent and that the amended claims were not substantially identical to the original claims. The district court agreed and held the reexamined patent invalid.
On appeal, the Federal Circuit reversed. Amended or new claims added during reexamination may not enlarge the scope of the original claims. “Claims that are impermissibly broadened during reexamination are invalid, and a violation of 35 U.S.C. § 305 is an invalidity defense in a patent infringement action.” A claim is impermissibly broadened if any conceivable product could infringe the amended claim but not the original claim. Because the Court could not conceive of any product infringing the amended claim but not the original claim, the amended claim was not impermissibly broadened.
Because the issue would be important on remand, the Federal Circuit considered whether the reexamined patent was enforceable back to the date of the original patent. Section 307 provides that a claim amended in reexamination “has the same effect as a claim that is amended in reissue proceedings under 35 U.S.C. § 252. Under 35 U.S.C. § 252, a reissued patent is enforceable against infringing activity that occurred after the issuance of the original patent, to the extent that its claims are substantially identical to the claims of the original patent.” Identity requires “at most without substantive change.” Generally, an amendment clarifying the claim language without changing the scope is considered identical. Here, the amended claim did not change the scope of the original claim. Hence, the claims were identical for purposes of section 307.
A copy of the opinion can be found here.
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