Deleted Specification Portions Undermine Claim Construction
In FMC Corp. v. Sharda USA, LLC, Appeal No. 24-2335, the Federal Circuit held that the district court erred by construing a claim term based on disclosures made in a provisional application and an unasserted patent in the same patent family.
FMC Corp. (“FMC”) sued Sharda USA, LLC (“Sharda”) for infringement of two patents related to insecticide. FMC moved for a preliminary injunction against Sharda. The District Court construed the claim term “composition” as only extending to physically stable compositions, as opposed to unstable compositions. The District Court based its reasoning on disclosures on the stability found in a related provisional application and in an unasserted patent family member. The patents-in-suit, however, removed the references to “stable,” “stability,” or variations thereof. The District Court rejected Sharda’s invalidity defenses based on its construction of “composition” and ultimately granted a preliminary injunction. Sharda appealed, and argued that the District Court’s construction of “composition” was erroneous because it improperly limited the scope of the claim to just stable compositions.
The Federal Circuit agreed with Sharda and vacated the District Court’s injunction order. The Federal Circuit focused on the differences between the disclosure of the patents-at-issue and the respective disclosures of the provisional and unasserted family member. Regarding the provisional, the Federal Circuit reasoned that FMC chose to delete the disclosure pertaining to stability when drafting its asserted patent specifications. The Federal Circuit explained that a skilled artisan “would find that evolution meaningful.” Accordingly, the prosecution history demonstrated that a skilled artisan would not have understood the claimed composition to be limited to only stable formulations. Regarding the related patent, the Federal Circuit noted that it typically applies a consistent meaning to claim terms within a patent family. But, the Court explained, that presumption does not apply when, as here, the applicant materially alters the specification of some family members.
Because the Federal Circuit had found error with the District Court’s construction of “composition,” it also found error in the lower court’s validity analysis. Accordingly, the Court vacated the preliminary injunction and remanded for further proceedings applying the correct claim scope.
Examiner’s Allowance Not Enough: Lack of Written Description for Claim Amendment Upends Infringement Verdict
In Mondis Technology Ltd. v. LG Electronics Inc. Appeal No. 23-2117, the Federal Circuit reversed a jury verdict of infringement because a claim limitation amended during prosecution lacked written description support.
Mondis Technology Ltd. sued LG Electronics Inc. for infringement of claims 14 and 15 of Mondis’s ’180 patent directed to a system for controlling a specific display unit based on an identification number stored in the display unit’s memory. During prosecution, claim 14 was amended from reciting “an identification number for identifying said display unit” to reciting “an identification number for identifying at least a type of said display unit.” At trial, LG argued the claims were invalid because, while the specification supported the original claim language, it did not support the amended language of identifying a type of said display unit. Although Mondis did not present a rebuttal case on written description during trial, the jury found the claims not invalid and that LG infringed. The district court also denied LG’s motion for judgment as a matter of law on written description and LG appealed.
The Federal Circuit reversed, holding that no reasonable jury could find written description support for the “type of said display unit” limitation. Mondis argued because the examiner allowed the claim amendment without objection, it was entitled to an “especially weighty presumption of correctness.” But the Federal Circuit rejected that argument, explaining that an examiner’s allowance of claims by itself does not provide substantial evidence that the claims comply with the requirements of § 112. The Federal Circuit found that the claim limitation was unsupported by the application, which consistently described only identifiers tied to specific devices and never to a type of device. Moreover, Mondis’s expert testified that the specification “[did] not expressly recite an identification number for identifying a type of display unit” and Mondis never redirected its expert on this testimony. Thus, there was no evidence in the record that would allow a reasonable jury to determine that a person of ordinary skill in the art would have understood that the patent disclosed the “type” limitation.
In Powerblock Holding, Inc. v. Ifit, Inc., Appeal No. 24-1177, the Federal Circuit held that claims should be considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter under step one of the Alice test.
PowerBlock Holdings (PowerBlock) sued iFit for patent infringement and for violating Utah’s Unfair Competition Act. iFit filed a motion to dismiss for failure to state a claim, invoking 35 U.S.C. § 101. iFit argued that the claims were directed to the abstract idea of automated weight stacking by claiming a weight selection and adjustment system consisting of additional generic components without adding significantly more to the abstract idea. The District Court agreed and found all but one claim ineligible under § 101 and granted iFit’s motion to dismiss. PowerBlock appealed.
The Federal Circuit reversed, holding that the claims at issue are not directed to an abstract idea under step one of the Alice test. The Federal Circuit held that the claims include meaningful limitations on structure, rather than generic components, that provide a specific implementation for limiting how to accomplish automatic weight stacking without preempting any weight selection and adjustment system generally. Further, the Federal Circuit rejected iFit’s attempts to read out or ignore limitations merely because they could be found in the prior art because step one of Alice should involve consideration of the claims in their entirety to ascertain whether their character as a whole is directed to excluded subject matter. Failing to do so can improperly conflate the separate novelty and obviousness inquires under 35 U.S.C. §§ 102 and 103 with § 101. Accordingly, the Federal Circuit reversed and remanded.
Derivation ≠ Interference: First to File Keeps Rights if Conception Was Independent
In Global Health Solutions LLC v. Selner, Appeal No. 23-2009, the Federal Circuit affirmed the Board’s rejection of a derivation challenge, holding that the petitioner failed to demonstrate that the first filer derived the invention from others.
Marc Selner filed a patent application. Global Health Solutions LLC (GHS) later filed a patent application covering the same subject matter and listing its founder, Bradley Burnam, as the inventor. The America Invents Act (AIA) governs both applications. GHS filed a petition for an AIA derivation proceeding against Mr. Selner alleging Mr. Burnam is the true inventor. In that proceeding, GHS argued Mr. Burnam conceived of the invention first and communicated his invention to Mr. Selner. The Board disagreed, finding Mr. Selner independently conceived the idea about three hours before Mr. Burnam conceived and communicated it, and that evidence of Mr. Selner’s invention was sufficiently corroborated. The Board also rejected an argument by GHS that conception required actual reduction to practice. GHS appealed.
The Federal Circuit affirmed. It held that the Board erred in focusing on who was first to invent, but deemed the error harmless because Mr. Selner’s proof of independent conception and earlier filing defeated GHS’s claim under the proper AIA standard. The Court further rejected GHS’s arguments that evidence of Mr. Selner’s invention was not adequately corroborated, that the Board improperly shifted the burden to GHS to disprove Mr. Selner’s conception, and that full conception required actual reduction to practice. Finally, the Court held that GHS forfeited its alternative request to add Mr. Burnam as a co-inventor by failing to properly raise it before the Board, where the request was a single line in the derivation filing.
Subscribe for News and Updates
