Federal Circuit Rules on Claim Amendment in Inter Partes Review Proceedings

Authored by Mark Chapman, Caryn Harsche, and Kulsoom Hasan Digest of Nike, Inc. v. Adidas AG, No. 2014-1719 (Fed. Cir. Feb. 11, 2016)(precedential). On appeal from PTAB IPR No. 2013-00067. Before Chen, Mayer, Stoll. Procedural Posture: During the inter partes … Continue reading

The post Federal Circuit Rules on Claim Amendment in Inter Partes Review Proceedings appeared first on CAFCBlog.com.

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  • Burford Capital hires Justin Daniels to extend litigation finance offering to intellectual property

    Justin Daniels, previously an IP litigation partner at Proskauer Rose, has joined the Burford team as a Managing Director to develop and manage its IP offering. Burford’s expansion is a response to client demand. Burford is regularly asked to provide litigation finance in connection with IP matters, but has historically not done so because it lacked the necessary expert resources.

    The post Burford Capital hires Justin Daniels to extend litigation finance offering to intellectual property…

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    $$ It is found experimentally that by repeating an alert sound burst three times, with a slight delay between bursts, and then, after a further …

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  • 3M loses in Transweb appeal at CAFC

    In Transweb v. 3M, Seth Waxman argued for the appellant 3M, but the CAFC affirmed the judgment of Judge Faith
    S. Hochberg of DNJ.

    The beginning of the opinion shows the extent of 3M’s loss:

    3M sued TransWeb for infringement of several patents.
    TransWeb sued for declaratory judgment of invalidity
    and non-infringement of the patents. A jury found
    the patents to be invalid based on TransWeb’s prior public
    use of the patented method. In accordance with an advisory
    verdict from the jury, the district court found the
    patents unenforceable due to inequitable conduct. The
    jury also found 3M to be liable for a Walker Process antitrust
    violation and that attorney fees were an appropriate
    antitrust remedy. The district court awarded approximately
    $26 million to TransWeb, including trebled attorney
    fees as antitrust damages. The primary issues are
    whether sufficient corroborating evidence exists to support
    the finding of prior public use by TransWeb, and
    whether the attorney fees are an appropriate basis for
    damages under the antitrust laws in this context. We
    hold in the affirmative on both issues. For the latter
    issue, we find that TransWeb’s attorney fees appropriately
    flow from the unlawful aspect of 3M’s antitrust violation
    and thus are an antitrust injury that can properly
    serve as the basis for antitrust damages. For these reasons,
    we affirm the district court’s judgment.

    The decision outlines the technology:

    TransWeb and 3M independently developed a technique
    for imparting this electret characteristic by using
    plasma fluorination. Fluorination involves introducing
    fluorine atoms into the chemical structure of the filter
    web. Previously known techniques involved mixing
    fluorine compounds into the melted filter material, but
    this proved disadvantageous. Instead, TransWeb and 3M
    both discovered that it would be advantageous to first
    form the fibrous web and then introduce the fluorine
    atoms into the chemical structure. This technique involves
    exposing a gaseous fluorine compound to the
    surface of the filter web in the presence of plasma. The
    intense heat and electromagnetic energy introduced by
    the plasma cause some of the chemical bonds on the
    surface of the filter web to break, and the fluorine atoms
    fill in those bonds to form fluorine compounds on the
    surface of the filter web.
    Plasma-fluorinated filter media are particularly effective
    in oily environments, where other types of filter
    media might perform poorly or quickly degrade.

    As background, wikipedia discusses what a “plasma” is:

    A plasma can be created by heating a gas or subjecting it to a strong electromagnetic field applied with a laser or microwave generator. This decreases or increases the number of electrons, creating positive or negative charged particles called ions, and is accompanied by the dissociation of molecular bonds, if present.
    The presence of a significant number of charge carriers makes plasma electrically conductive so that it responds strongly to electromagnetic fields.

    A significant issue in this case:

    The present appeal focuses largely on the events surrounding
    a filtration industry exposition that occurred in
    late April and early May of 1997. It is uncontested that
    TransWeb’s founder, Kumar Ogale, attended the expo and
    handed out samples of filter material. The filter material
    included samples of TransWeb’s “T-Melt” products, an
    identifier for the general class of melt-blown, i.e., nonwoven
    fibrous web, media. The primary dispute is whether
    Mr. Ogale handed out, more specifically, samples of the
    “T-Melt P” products, which is the specific class of plasmafluorinated
    T-Melt products. Mr. Ogale testified at trial
    that he did in fact hand out T-Melt P samples at the expo,
    though no independent documents or testimony evidence
    this fact.
    The parties do not contest that if Mr. Ogale
    handed out T-Melt P samples at the expo, then they
    would serve as prior art to the plasma fluorination technique
    of the claimed methods. The expo occurred more
    than one year prior to the priority date of the patents
    asserted in this case, so any public disclosure of plasma
    fluorination at the expo would be a statutory bar to patentability,
    at least based on that feature

    The actions at DNJ:

    The district court in New Jersey ultimately presented
    the following issues to a jury: infringement of claims 31
    and 57 of the ’458 patent; invalidity for obviousness of
    claims 31 and 57; unenforceability of the ’458 and ’551
    patents due to inequitable conduct; Walker Process antitrust
    violation based on fraudulent procurement and
    subsequent assertion of the ’458 and ’551 patents; sham
    litigation antitrust violation based on assertion of the ’458
    and ’551 patents; entitlement to lost profits damages for
    antitrust violations; and entitlement to attorney fees as
    damages for antitrust violations. The jury delivered the
    following verdicts: claims 31 and 57 are not infringed;
    claims 31 and 57 are invalid; both patents are unenforceable;
    3M committed a Walker Process violation but not a
    sham litigation violation; and TransWeb is entitled to lost
    profits and attorney fees as antitrust damages.
    The district court entered judgment in accordance
    with the jury verdicts. 3M moved for judgment as a
    matter of law, which the district court denied.

    The CAFC laid out some of the pertinent law:

    Oral testimony by an interested party on its own will
    generally not suffice as “clear and convincing” evidence of
    invalidity. See Lazare Kaplan Int’l v. Photoscribe Techs.,
    628 F.3d 1359, 1374 (Fed. Cir. 2010); Price v. Symsek, 988
    F.2d 1187, 1194 (Fed. Cir. 1993). Rather, such oral testimony
    must be corroborated by some other evidence. See
    Woodland Tr. v. Flowertree Nursery, Inc., 148 F.3d 1368,
    1371 (Fed. Cir. 1998). The corroborating evidence can
    include documents and testimonial evidence. See Lazare
    Kaplan, 628 F.3d at 1374–75, Adenta GmbH v. OrthoArm,
    Inc., 501 F.3d 1364, 1371 (Fed. Cir. 2007), Sandt Tech. v.
    Resco Metal & Plastics Corp., 264 F.3d 1344, 1350–51
    (Fed. Cir. 2001). Circumstantial evidence can be sufficient.
    See Sandt, 264 F.3d at 1351; Knorr v. Pearson, 671
    F.2d 1368, 1373 (C.C.P.A. 1982). This corroboration
    requirement for testimony by an interested party is based
    on the sometimes unreliable nature of oral testimony, due
    to the “forgetfulness of witnesses, their liability to mistakes,
    their proneness to recollect things as the party
    calling them would have them recollect, aside from the
    temptation to actual perjury.” Lazare Kaplan, 628 F.3d at
    1374 (quoting Washburn & Moen Mfg. Co. v. Beat ‘Em All
    Barbed-Wire Co., 143 U.S. 275, 284 (1892)).


    A “rule of reason” analysis is used to determine the
    sufficiency of corroboration, under which “all pertinent
    evidence is examined in order to determine whether the
    inventor’s story is credible.” Sandt, 264 F.3d at 1350
    (quoting Price, 988 F.2d at 1195) (internal quotation
    marks omitted). Importantly, this analysis “does not
    require that every detail of the testimony be independently
    and conclusively supported” by the corroborating evidence.
    Ohio Willow Wood Co. v. Alps South, 735 F.3d
    1333, 1348 (Fed. Cir. 2013). Such a requirement would
    indeed be “the antithesis of the rule of reason.” Cooper v.
    Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998). We have
    generally been most skeptical of oral testimony that is
    supported only by testimonial evidence of other interested
    persons. Compare Allergan, Inc. v. Apotex Inc., 754 F.3d
    952, 968 (Fed. Cir. 2014), and Lacks Indus. v. McKechnie
    Vehicle Components USA, 322 F.3d 1335, 1350 (Fed. Cir.
    2003), with Adenta, 501 F.3d at 1371–73, and Sandt, 264
    F.3d at 1351–52. We have repeatedly noted that contemporaneous
    documentary evidence provides greater corroborative
    value. See Medichem, S.A. v. Rolabo, S.L., 437
    F.3d 1157, 1169–70 (Fed. Cir. 2006); Sandt, 264 F.3d at
    1350–51; Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d
    1354, 1366 (Fed. Cir. 1999); Woodland Tr., 148 F.3d at
    1373; Price, 988 F.2d at 1196. But there are no hard and
    fast rules as to what constitutes sufficient corroboration,
    and each case must be decided on its own facts. See
    Sandt, 264 F.3d at 1350

    The CAFC described 3M’s argument as follows:

    3M’s legal argument attempts to lead us to a legal
    conclusion that this court has repeatedly rejected. 3M
    asks us to focus on one particular detail of the oral testimony
    and determine whether that detail is independently
    evidenced. But we have repeatedly rejected an elementwise
    attack on corroboration of oral testimony. See Fleming,
    774 F.3d at 1377; Ohio Willow Wood, 735 F.3d at
    1348 (characterizing as “misplaced” an argument that a
    particular claim feature in oral testimony was not separately
    evidenced, and finding the argument incompatible
    with the rule of reason); Lazare Kaplan, 628 F.3d at
    1373–75; Adenta, 501 F.3d at 1371–73.

    Other evidence:

    TransWeb’s own patent application, filed at the
    same time as the expo, demonstrates that Mr. Ogale had
    invented and was seeking patent protection for the plasma-fluorinated
    material at least by the time of the expo.
    The correspondence with Filtration Group demonstrates
    that Mr. Ogale was sending out samples of the plasmafluorinated
    T-Melt product shortly after the expo. The
    numerous correspondences contemporaneous with the
    Filtration Group correspondence, each accompanying
    samples of filter material not specifically identified as TMelt,
    show that Mr. Ogale was sending out other samples
    of filter material that may have been plasma-fluorinated.
    The correspondence with Gerson demonstrates that
    TransWeb was offering for sale large quantities of the
    plasma-fluorinated product within two months of the
    expo. Considered in its totality, this body of evidence
    provides abundant support for the credibility of
    Mr. Ogale’s claim that he distributed the plasmafluorinated
    material at the expo. As such, we find no
    clear error in the district court’s determination that
    Mr. Ogale’s testimony was sufficiently corroborated.

    Of interest:

    3M further contends that unexpected results and
    commercial success demonstrate the non-obviousness of
    the claims. For commercial success, 3M relies on a single,
    confused exchange between its attorney and TransWeb’s
    expert witness at trial, wherein the witness says that he
    does not know about the commercial success of 3M’s
    products, though maybe he said he did in the past. J.A.
    2105–06. Similarly with unexpected results, 3M relies on
    a single, self-serving annotation in the ’458 patent inventor’s
    notebook and a corresponding statement at trial.
    The jury heard and rejected this evidence in concluding
    that the claims were obvious. None of these arguments
    as to objective indicia demonstrate that the jury was
    unreasonable in finding the claims obvious, so we will not
    disturb that verdict

    As to inequitable conduct under the “but – for” standard:

    The expo samples present a definitional case of but for
    materiality. During prosecution of the ’497 application,
    the examiner initially allowed all claims. When 3M
    notified the examiner of one of the TransWeb samples
    that it had on hand, the examiner rejected all claims as
    obvious over that disclosure and the Angadjivand patent.
    Only when 3M clarified its dubious assertion that the
    TransWeb samples were only received after signing of a
    confidentiality agreement and thus were not prior art did
    the examiner allow the claims. Because the examiner
    would not have allowed the claims had the TransWeb
    samples been properly disclosed as prior art, the
    TransWeb samples are but-for material.

    The CAFC went into detail on the inequitable conduct:

    The district court concluded based on a detailed review
    of the record that Marvin Jones, an inventor for the
    asserted patents, and Karl Hanson, an in-house attorney
    at 3M, both acted with specific intent to deceive the
    patent office as to the TransWeb materials. The jury
    unanimously reached the same conclusion. While it is not
    necessary for us to recount the entire treatment of the
    factual record performed so thoroughly by the district
    court, see TransWeb, LLC v. 3M Innovative Properties Co.,
    16 F. Supp. 3d 385, 398–407 (D.N.J. 2014), we note a few
    particular details that demonstrate that the district court
    did not clearly err in finding a specific intent to deceive on
    the part of Mr. Jones and Mr. Hanson.
    The record makes abundantly clear that 3M generally
    and Mr. Jones particularly were very much aware of the
    samples TransWeb was distributing at the expo. A week
    prior to the expo, a group of six 3M employees was party
    to a lengthy email coordinating 3M’s efforts to gather
    information from TransWeb at the expo. The email
    identified two employees as the “point people” in gathering
    information from TransWeb. J.A. 6860. The other
    parties to the email and their subordinates were to channel
    any questions through the point people. One of the
    point people had already met with TransWeb and received
    “quite a bit of information and non-production
    samples.” Id. The email also included an article from
    Nonwovens Industry briefly mentioning TransWeb’s TMelt
    products. One of the parties to the email was
    Mr. Jones’s supervisor, and she forwarded the email to
    Mr. Jones on the day that the expo began. Mr. Jones
    attended the expo. While he professed at trial to have no
    recollection of visiting the TransWeb booth, the district
    court found his testimony “simply not credible” and noted
    that “his demeanor was one of a witness trying to distance
    himself from any knowledge of TransWeb’s presence and
    activities at the Expo.” TransWeb, 16 F. Supp. 3d at 399.
    Mr. Jones’s supervisor again sent him an email within a
    month after the expo detailing the information and samples
    received from TransWeb by the point people. This
    email noted that TransWeb’s production operations were
    up and running, that it was sending samples to potential
    clients, that 3M already had a small sample, and that 3M
    was expecting a larger sample soon thereafter.


    The district court found that Mr. Hanson undertook
    an intentional scheme to paper over the potentially prior
    art nature of the Racal-received samples. The Racal
    employees received the plasma-fluorinated samples from
    TransWeb at latest one month after the expo. Therefore,
    these samples were highly relevant to what TransWeb
    distributed at the expo. The record casts great doubt on
    whether Racal had received the samples before or after
    execution of a confidentiality agreement, thereby potentially
    rendering them public disclosures and prior art to
    the ’497 application. At around the same time that 3M
    was requesting further samples from TransWeb and
    learning of the potential prior art nature of the Racal
    samples, Mr. Hanson sent a confusing letter to Mr. Ogale
    purporting to clarify some issues as to the confidentially
    agreements between TransWeb and 3M and between
    TransWeb and Racal. Mr. Hanson had never had any
    communication with TransWeb, and the district court
    concluded that the only possible purpose for the letter was
    to get an admission from Mr. Ogale that the Racalreceived
    samples were covered by a confidentiality
    agreement, even though this point was itself dubious.
    Mr. Hanson subsequently did submit this letter to the
    patent office as definitive proof that the TransWeb samples
    were not prior art to the ’497 application.
    The district court noted other circumstantial evidence
    suggesting a specific intent by 3M employees to hide the
    prior art nature of the TransWeb products. The district
    court noted that only after Mr. Hanson met with the
    Racal employee did that employee type meeting notes
    from his original meeting with Mr. Ogale after the expo.
    Those typed notes contained additional information
    regarding patents that had not been in the original handwritten
    notes. The district court noted that Mr. Hanson
    waited several years between learning of the potential
    TransWeb prior art and informing the patent office. In
    fact, Mr. Hanson did not disclose the TransWeb material
    to the patent office until after negotiations for 3M to
    purchase TransWeb had broken down. Further,
    Mr. Hanson waited until the last possible moment, when
    a notice of allowance had already been mailed, to submit
    the TransWeb material in a request for continued prosecution.
    The district court found Mr. Hanson’s testimony
    at trial attempting to explain this delay wholly incredible.
    Based on these factual findings, the district court concluded
    that the only reasonable inference that explains
    the actions of Mr. Hanson and Mr. Jones is that they
    strategically delayed in disclosing the TransWeb prior art
    and then intentionally made an inaccurate disclosure of
    that material. We can find no clear error in this conclusion,
    particularly as the district court’s findings are based
    in large degree on its determinations that Mr. Jones and
    Mr. Hanson were not credible during relevant parts of
    their testimony. See In re Rosuvastatin Calcium Patent
    Litig., 703 F.3d 511, 521 (Fed. Cir. 2012) (“‘This court may
    not reassess, and indeed is incapable of reassessing,
    witness credibility and motive issues on review.’” (quoting
    LNP Eng’g Plastics, Inc. v. Miller Waste Mills, Inc., 274
    F.3d 1347, 1361 (Fed. Cir. 2001)).

    The case also involved antitrust violations:

    The jury found that 3M committed a Walker Process
    antitrust violation, and awarded TransWeb damages of
    lost profits and attorney fees. The district court denied
    3M’s motion for JMOL. 3M contests this judgment based
    on several purported flaws in market definitions for the
    antitrust claim and based on the theory that TransWeb’s
    attorney fees are not appropriate antitrust damages for
    the Walker Process violation.

    Of the attorney fees matter:

    No assertion of a patent known to be fraudulentlyobtained
    can be a proper use of legal process. No successful
    outcome of that litigation, regardless of how much the
    patentee subjectively desires it, would save that suit from
    being improper due to its tainted origin. Therefore, we
    find the holdings of our sister circuits allowing attorney
    fees as antitrust damages in contexts such as sham litigation
    and lawsuits in furtherance of a broader anticompetitive
    scheme to be persuasive arguments in favor of
    allowing TransWeb to recover its attorney fees as § 4
    damages in this case.

    To conclude otherwise would be contrary to the purpose
    of the antitrust laws. The antitrust laws exist to
    protect competition. See Brown Shoe, 370 U.S. at 320
    (1962). If we were to hold that TransWeb can seek antitrust
    damages only under option one, forfeiture of competition,
    but not option two, defending the anticompetitive
    suit, then we would be incentivizing the former over the
    latter. This would amount to incentivizing TransWeb to
    forfeit competition rather than continue it. This is not in
    accord with the purpose of those very same antitrust laws.
    Furthermore, it furthers the purpose of the antitrust
    laws to encourage TransWeb to bring its antitrust suit
    under option two instead of waiting to be excluded from
    the market under option one. If TransWeb proceeds only
    after being excluded from the market under option one,
    then the injury-in-fact will no longer be borne by
    TransWeb alone, but rather would be shared by all consumers
    in the relevant markets.

    link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1646.Opinion.2-8-2016.1.PDF

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  • CAFC gives a mixed ruling in Convolve/MIT vs. Compaq

    In Convolve and MIT vs. Compaq, a case appealed to the CAFC from SDNY, the beginning of the opinion states:

    This case returns to us after a remand to the Southern
    District of New York. In the first appeal, we reversed
    the district court’s summary judgment ruling that no
    accused products met the patent’s “selected unwanted
    frequencies” limitation and remanded for further proceedings.
    On remand, the district court granted summary
    judgment on alternative grounds. Because we agree with
    the district court that Seagate’s disk drives do not possess
    a user interface, but conclude that the district court erred
    by importing limitations into the “command” steps and in
    granting summary judgment based on intervening rights,
    we again affirm-in-part, vacate-in-part, reverse-in-part,
    and remand for further proceedings.

    As to different courts finding different claim constructions,
    note footnote 1:

    A jury determination in a parallel proceeding in
    the Eastern District of Texas applying a different claim
    construction does not compel a different result. Cf. J.A.
    5051–52; J.A. 5063–65.

    Of error by SDNY:

    The district court erred by granting summary judgment
    that Compaq’s F10 BIOS interface does not meet
    the “commands” limitation of the asserted claim. In its
    summary judgment ruling, the district court treated all
    asserted claims as having the same scope, and concluded
    that the recited “commands” must be “shaped when
    issued from the processor in order to satisfy the claim
    limitation[s],” J.A. 42, and therefore Compaq’s F10 BIOS
    interface cannot infringe because it itself does not issue
    shaped commands. Implicit in this ruling is a claim
    interpretation that requires a singular processor associated
    with the user interface that issues commands, and
    excludes the existence of a second processor capable of
    issuing those commands, such as one integrated into the
    data storage device. This overlooks the differences among
    the asserted claims.

    Of the use of indefinite articles in claims:

    Claims 9 and 15 pose a greater challenge, however,
    because they recite an apparatus comprising “a processor”
    that executes certain process steps “to generate a user
    interface,” “to alter settings in the user interface,” and “to
    output commands to the data storage device.” See, e.g.,
    ’473C1 patent col 2 ll. 7–22 (reexamined claim 9). This
    court has “repeatedly emphasized that an indefinite
    article ‘a’ or ‘an’ in patent parlance carries the meaning of
    ‘one or more’ in open-ended claims containing the transitional
    phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts,
    Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). The
    exceptions to this rule are “extremely limited: a patentee
    must ‘evince [ ] a clear intent’ to limit ‘a’ or ‘an’ to ‘one.’”
    Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338,
    1342 (Fed. Cir. 2008). Thus, absent a clear intent in the
    claims themselves, the specification, or the prosecution
    history, we interpret “a processor” as “one or more processors.”


    To the extent the examiner suggested in a later office
    action that “the user interface runs on the processor of the
    host computer, but not on the processor of the disk drive,”
    the applicant objected and argued that the ’473 patent
    discloses that “the user interface can run (i) on the processor
    of the host computer, (ii) on the processor of the
    disk drive, (iii) or both.” J.A. 5046. The examiner subsequently
    allowed the claims. Although there is some
    evidence that the examiner also understood the claims to
    require that all functions occur on a user interface “running
    on the processor external to the data storage device,”
    J.A. 4218–19, it is not clear from the record that allowance
    was based on this understanding, or that the patentee
    disclaimed this claim scope. Thus, we conclude that
    the district court did not err in granting summary judgment
    that Compaq’s F10 BIOS does not meet the “commands”
    limitation in claims 1, 3, and 5. But, we find the
    district court erred by interpreting the remaining asserted
    claims as requiring the processor associated with the
    user interface to also generate the claimed commands.

    Of claim construction:

    The proper claim construction is “the meaning that
    the term would have to a person of ordinary skill in the
    art in question at the time of the invention, i.e., as of the
    effective filing date of the patent application.” Phillips,
    415 F.3d at 1313. The specification “is the single best
    guide to the meaning of a disputed term” and is usually
    “dispositive.” Id. at 1315 (citation omitted)
    . On their
    face, the original claims recite only “acoustic noise,” which
    could encompass any manner of acoustic noise, including
    that generated from the spindle. But when read in conjunction
    with the remaining claim limitations and in light
    of the specification and prosecution history, a person of
    ordinary skill in the art would understand the claims to
    be limited to seek acoustic noise.


    While the specification, in and of itself, may not require
    the “seek acoustic noise” construction
    , the prosecution
    history of the ’473 patent before the 2008
    reexamination demonstrates that acoustic noise is limited
    to “seek” acoustic noise. In an office action dated March
    26, 2001, the Patent Office rejected several of the claims
    as anticipated or obvious in light of two prior art references:
    Rowan and Koizumi. The Patent Office determined
    that Rowan teaches a mechanism for controlling seek
    time and both electrical noise and acoustic noise from the
    spindle motor, J.A. 1893, and that Koizumi teaches
    “reduc[ing] the spindle speed to achieve the quiet mode,”
    J.A. 1896. In response, on April 2, 2001, the patentee
    amended the claims “to state explicitly that the noise to
    be controlled is acoustic noise as opposed to electrical
    noise.” J.A. 1909. In explaining the reasoning for the
    amendment, the applicant went further and made clear
    that the acoustic noise problems addressed by the claims
    and the specification are limited to those generated by the
    seek function, not the spindle motor. See J.A. 1910 (explaining
    that “as now claimed, it is the acoustic noise level
    of the data storage device that is controlled by changing
    seek trajectory shape to reduce unwanted frequencies by
    shaping input signals to the data storage device”).


    To the extent the specification alone does not limit the
    claims to seek acoustic noise, these prosecution history
    statements show a clear intent to limit the scope of the
    claims to seek acoustic noise—i.e., acoustic noise generated
    by the movement of the drive’s arm and read/write
    head during the seek process. We note further that the
    appellees themselves submitted a proposed construction
    for the term “acoustic noise level of the data storage
    device” that expressly excluded “audible noise emanating
    from the spindle motor of the ‘data storage device.’” J.A.

    Of the intervening rights analysis

    In the intervening rights analysis, our task is to interpret
    the scope of the claims per the Phillips standard,
    see Laitram IV, 163 F.3d at 1346–47, and under the
    correct standard, the specification “is the single best guide
    to the meaning of the disputed term,” and is usually
    dispositive, Phillips, 415 F.3d at 1313. “In addition to
    consulting the specification, we have held that a court
    should also consider the patent’s prosecution history, if it
    is in evidence.” Id. at 1317 (citations and internal quotation
    marks omitted). Thus, the examiner’s finding under
    the broadest reasonable interpretation that the claims are
    not limited to “seek acoustic noise” cannot be dispositive.
    To the extent that the district court adopted this reasoning
    wholesale without accounting for the differences
    between the broadest reasonable interpretation standard
    and Phillips, the court erred.

    In sum, we conclude that the addition of the term
    “seek” before “acoustic noise” did not alter the scope of the
    claim. In so concluding, we decline to give significant
    weight to the patentee’s and the examiner’s use of the
    term “clarify” or “clarifying” in describing the amendment
    in prosecution. The inquiry must focus on a case-by-case
    analysis of the scope of the claims before and after claim
    amendment, which gives rise to the intervening rights
    challenge. See Laitram I, 952 F.2d at 1360–61 (rejecting
    a per se rule and emphasizing that each case is decided on
    its facts). Here, the language of the claims, read in light
    of the specification and prosecution history, especially the
    applicant’s 2001 remarks and amendment, compel a
    conclusion that the claims as originally drafted were
    limited to seek acoustic noise despite the lack of an express
    recitation in the claims.

    link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1732.Opinion.2-8-2016.1.PDF

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  • 3M Liable for $26 Million for Fraudulent Patent Enforcement

    By Dennis Crouch Transweb v. 3M (Fed. Cir. 2016) Although 3M was the initial litigation aggressor, TransWeb’s response is the more successful.  Here, the lower court sided with TransWeb – finding 3M’s asserted patent claims invalid based upon pre-filing public uses by TransWeb and unenforceable due to inequitable conduct during prosecution. In addition, the jury […]

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  • Petitioner Correctly Designated As Supplemental Information Exhibits Offered To Support Contention That References Are Prior Art IPR2015-01379

    Takeaway: The moving party seeking to submit supplemental information bears the burden of proof to establish that proposed exhibits are supplemental information, rather than supplemental evidence. In its Decision, the Board granted Petitioner’s Motion to Submit Supplemental Information. Petitioner filed … Continue reading

    The post Petitioner Correctly Designated As Supplemental Information Exhibits Offered To Support Contention That References Are Prior Art IPR2015-01379 appeared first on PTAB Trial Blog.

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  • Motion to Exclude Denied For Not Explaining Adequately Its Objections to the Admissibility IPR2014-01339

    Takeaway: A motion to exclude must state why the evidence is inadmissible, identify the corresponding objection in the record, and explain the objection. In its Final Written Decision, the Board determined that Petitioner has proven by a preponderance of the … Continue reading

    The post Motion to Exclude Denied For Not Explaining Adequately Its Objections to the Admissibility IPR2014-01339 appeared first on PTAB Trial Blog.

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  • Federal Circuit Upholds IPR Final Decisions That Address Fewer Than All of the Challenged Claims

    Authored by Mark Chapman, Caryn Harsche, and Kulsoom Hasan Digest of Synopsys, Inc. v. Mentor Graphics Corp., Nos. 2014-1516, 2014-1530 (Fed. Cir. Feb. 10, 2016) (precedential). On appeal from PTAB IPR No. 2012-00042. Before Newman, Dyk, Wallach. Procedural Posture: Petitioner … Continue reading

    The post Federal Circuit Upholds IPR Final Decisions That Address Fewer Than All of the Challenged Claims appeared first on CAFCBlog.com.

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