The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending June 7, 2013. Leah Feinman and Wes Achey prepared this edition.
Patentable Invention: Anticipation: Generally
Claim Interpretation: Aids to Interpretation
Claim Interpretation: Means-Plus-Function
Regents of the University of Minnesota v. AGA Medical Corp., No. 12-1167 (Fed. Cir. (D. Minn.) June 3, 2013). Opinion by Dyk, joined by Rader and Wallach.
The Federal Circuit upheld the district court’s construction of claims containing the words “joined,” “connected,” and “affixed” as requiring two separate objects. Further, the Federal Circuit held that a disclaimer made during prosecution of a parent application is carried forward to a subsequent patent only if the scope of the claim limitation is substantially the same in the subsequent application as it was in the earlier application.
In 1992, the University of Minnesota (“the University”) filed U.S. Patent Application No. 07/822,951 (“the ’951 application”) claiming a transcatheter septal occluder, which is a medical device used to block holes in the wall of muscle and tissue that divides two chambers of the heart. Four patents were eventually issued to the University from the ’951 application, including the patents-in-suit here, U.S. Patent No. 6,077,281 (“the ’281 patent”) and U.S. Patent No. 6,077,291 (“the ’291 patent”). In 2007, the University filed suit against AGA Medical Corporation, alleging infringement of the ’281 and ’291 patents.
The University appealed the district court’s claim construction, arguing that it incorrectly construed the ’291 patent to require two discrete disks by improperly importing limitations from outside the claims, and that the construction was unsupported by the specification and the prosecution history. The Federal Circuit disagreed, finding support for the construction in the claims, specification, prosecution history, and ordinary meaning of the claim terms. All independent claims of the ’291 patent relate to a device with “first and second disks,” and throughout the claims the disks are described as “joined,” “connected,” or “affixed.” The specification does not teach an embodiment as a single piece, but rather discloses various methods of affixing the two separate disks to one another. The prosecution history supported the district court’s construction, as the University had argued that the invention was distinct because the assembly was simplified by “attach[ing] the membranes of the two disks essentially directly to one another.” Finally, dictionary definitions supported the construction because when physical objects are described as “affixed,” “joined,” or “connected,” those objects are considered initially separate.
The University’s argument that the district court improperly imported process limitations into the construed claims similarly failed. The Federal Circuit held that words such as “affixed” and “conjoint,” when read in context, describe the product more by its structure than by the process used to obtain it, and are therefore product, not process, limitations.
The Federal Circuit also upheld the district court’s determination that the claims were anticipated by certain “umbrella-like frames” found in the prior art. The University argued that it disclaimed the use of umbrella-like frames as equivalents in the prosecution of the ’951 application, the predecessor to the patents-in-suit, by limiting its claim language to a frame that “extend[s] along the periphery of the membrane,” something that the prior art did not do. However, the Federal Circuit determined that the limitation of the ’951 application was not carried forward to the ’281 patent because “the scope of the claim limitation [was not] substantially the same in the subsequent application as it was in the earlier application.” The ’951 application claimed an “elastically deformable frame extending along and attached adjacent to the periphery of the membrane.” The ’281 patent, however, was in means-plus-function format, claiming a “self-expanding structure” and disclosing a corresponding structure in the specification that contains a peripheral frame structure. Because the ’281 patent contains a different limitation and subject matter, the Federal Circuit held that “it would be inappropriate to import the first application’s limitations into the different context of the second application.”
Litigation Practice and Procedure: Jurisdiction: § 337 Actions in the ITC
InterDigital Communications, LLC, et al. v. International Trade Commission, No. 12-1628 (Fed. Cir. (I.T.C.) June 7, 2013). Opinion by Prost, joined by Bryson. Dissenting opinion by Lourie.
In reversing the International Trade Commission’s (“ITC”) order, the Federal Circuit held that jurisdiction was proper under 28 U.S.C. § 1295(a)(6) because the ITC’s order was an appealable final determination under 19 U.S.C. § 1337(c). Further, the Federal Circuit held that the investigation was improperly terminated because a respondent’s arguments for arbitrability were “wholly groundless.”
In January 2006, InterDigital Communications, Inc., InterDigital Technology Corporation, and IPR Licensing (collectively “InterDigital”) and LG Electronics, Inc., LG Electronics USA, Inc., and LG Electronics Mobilecomm USA, Inc. (collectively “LG”) entered into a Patent Licensing Agreement (“the Agreement”) in which InterDigital granted to LG a license to certain InterDigital patents regarding devices designed to operate in accordance with second-generation wireless standards (“2G”) and third-generation wireless standards (“3G”). The Agreement terminated on December 31, 2010. However, the Agreement contained survival clauses, one of which provided that at the end of the term of the Agreement, LG would have a “fully paid-up” license for the life of the 2G patents. The Agreement also contained a clause that allowed either party to submit a dispute to arbitration.
In July 2011, InterDigital filed a complaint with the ITC, asserting that several companies were violating 19 U.S.C. § 1337 by importing wireless devices that infringed InterDigital’s patents related to 3G wireless technology. In October 2011, InterDigital successfully moved to add LG as a respondent.
LG moved to terminate the investigation, arguing that its accused products were still covered under the Agreement, and that the infringement claim was subject to arbitration because it arose under the Agreement. The Administrative Law Judge (“ALJ”) issued an initial determination granting LG’s motion to terminate, and the ITC declined to review the decision, thus making it the final determination of the ITC. InterDigital appealed.
The threshold question considered by the Federal Circuit was whether jurisdiction was proper under 28 U.S.C. § 1295, which, among other things, provides the Federal Circuit with exclusive jurisdiction over appeals of “any final determinations of the [ITC] . . . made under section 337 of the Tariff Act of 1930.” LG and the ITC argued that the order terminating the investigation was not a final determination because it was granted under 1337(c), which does not provide a right to appeal, and not under 1337(d), (e), (f), or (g), as required by the statute. The Federal Circuit disagreed, holding that the effect of the ITC’s order was the equivalent of a final determination. InterDigital argued, and the court agreed, that even if it succeeded in the arbitration, it would not be able to reopen the terminated investigation and would instead have to file a new complaint after awaiting the outcome of the proceedings. Thus, the Federal Circuit determined that the order had the “same operative effect” as a final determination, and therefore jurisdiction was proper under 28 U.S.C. § 1295.
The Federal Circuit next turned to the merits and held that the ALJ improperly failed to assess the text of the Agreement to the limited extent necessary to determine whether LG’s argument was “wholly groundless.” The Federal Circuit ruled that “a cursory review” of the Agreement confirmed that the survival clause in the Agreement only provided LG with a “fully paid-up” license for the life of the 2G patents, and did not mention the 3G patents. Therefore, the Federal Circuit determined that there was no plausible argument that the license for the 3G patents survived the Agreement, and LG’s argument was “wholly groundless.”
In a dissenting opinion, Judge Lourie disagreed that the Federal Circuit had jurisdiction to entertain the appeal, stating that section 337 “precisely defines” appealable ITC actions as terminations brought under 1337(d), (e), (f), or (g). Because the termination in this case was brought under 1337(c), Judge Lourie believed jurisdiction was improper.
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