Patent Law Practice Center

CAFC Issues Non-Precedential Claim Construction with a Dissent

The Federal Circuit recently issued a non-precedential opinion in Vehicle IP, LLC v. AT&T Mobility, LLC. Perhaps the most interesting aspect of this decision was that it was a non-precedential opinion with a dissent, which to some extent seems a bit contradictory.

The tale begins back on December 31, 2009, when Vehicle IP filed a patent infringement action against the Appellees in the United States District Court for the District of Delaware. The patent infringement lawsuit asserted that Appellees infringed U.S. Patent No. 5,987,377 (“the ’377 patent”). On December 12, 2011, the district court issued an order construing the disputed claim terms of the ’377 patent, including “expected time of arrival” and “way point(s).” The district court construed “expected time of arrival” as “time of day at which the vehicle is expected to arrive somewhere (and not remaining travel time).” The district court construed “way point(s)” as “intermediate point(s) on the way to the final destination (and not the final destination itself).”

After the district court construed the claims, Appellees filed two motions for summary judgment. The district court granted both motions. On April 19, 2013, the district court entered judgment in favor of Appellees. Vehicle IP appealed the entry of judgment, challenging the district court’s claim constructions and summary judgment rulings.

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Failure to Argue Waives Infringement on Proper Claim Construction

Recently, the Federal Circuit issued a decision in CardSoft v. Verifone, in which the Court overturned the district court’s claim construction. Overturning a district court’s claim construction is hardly unusual, and perhaps more typical than it really should be. What was unique about this particular case was that the Federal Circuit also went on to rule that CardSoft had waived any argument that the defendants had infringed under the correct claim construction, as a matter of law.

CardSoft filed this patent infringement suit in March 2008 against VeriFone, Inc., VeriFone Systems Inc., and Hypercom Corp. (collectively, “Defendants”), asserting infringement of U.S. Patent Nos. 6,934,945 (“the ’945 patent”) and 7,302,683 (“the ’683 patent”). The district court held a Markman hearing in July 2011 and conducted a jury trial in June 2012. The jury determined that certain of the Defendants’ devices infringed claim 11 of the ’945 patent and claim 1 of the ’683 patent and that these claims were not invalid. The Defendants moved for a new trial and for judgment as a matter of law, but the district court denied both motions.

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Federal Circuit Reverses Summary Judgment in Golf Club Infringement Case

On September 16, 2010, Nassau Precision Casting Co., Inc., owner of U.S. Patent No. 5,486,000, entitled “Weighted Golf Iron Club Head,” brought a patent infringement lawsuit accusing Acushnet of infringing claims 1 and 2 of the ’000 patent by making, offering to sell, and selling its Cobra S9, Cobra S9 Second Generation, King Cobra UFi, and Cobra S2 clubs. The ’000 patent describes what it says is an improvement in the distribution of weight within the head of a golf club. The purpose of the invention is to achieve “sweet spot-enhancement, i.e. significant improvement in the ball-striking efficacy of the club head, while maintaining the same starting overall weight of the club head.”

The United States District Court for the Eastern District of New York granted summary judgment of non-infringement to Acushnet. On June 6, 2014, the Federal Circuit affirmed in part, vacated in part and remanded after determining that, based on the district court’s claim interpretation, the only element found lacking from the accused device relative to claim 2 was in fact present in the accused device. See Nassau Precision Casting v. Acushnet Company, Inc.

Claim 1 of the ‘000 patent reads:

1. In a golf iron club head of a type having a ball-striking body of weight-imparting construction material inclined at a selected angle for driving a struck golf ball a corresponding selected height during its trajectory, said body having spaced-apart top and bottom surfaces bounding a ball-striking surface therebetween, the method of improving weight distribution comprising removing construction material from said top surface, relocating said removed construction material from said top surface to clearance positions below said top surface located adjacent opposite ends of said bottom, surface whereby said removed construction material from a location not used during ball-striking service of said golf iron, is of no adverse consequence thereto and said removed construction material in said relocated positions contributes to increasing said height attained by a struck golf ball.

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Markman Orders and Federal Circuit Deference

TransData, Inc., a manufacturer of advanced solid-state power and energy metering products, recently announced that an Oklahoma federal judge issued a significant and favorable ruling in its ongoing patent infringement litigation against a group of the nation’s largest electric utilities over wireless smart electric meter technology developed by the company.

The exceptionally brief Order, issued October 1, 2013, by Judge Robin Cauthron of the U.S. District Court for the Western District of Oklahoma, construed the disputed claim terms of TransData’s U.S. Patent Nos. 6,181,294; 6,462,713; and 6,903,699 in a manner consistent with the constructions offered by TransData.  More specifically, the court rejected all of the defendants’ proposed constructions in an Order that was only a few lines longer than three double-spaced pages. The relevant claim constructions were as follows:

Resolving Differences: How the Federal Circuit Treats Divergent USPTO and District Court Rulings

The following article discussing what happens when the Federal Circuit is faced with conflicting USPTO and district court determinations comes courtesy of Lisa Dolak, Professor of Law at Syracuse University and Practice Center Contritor.

Concurrent litigation and reexamination proceedings, although related in that they concern the same patent(s) and (typically, presumably) at least some of the same claims, proceed independently. And, different standards govern validity and claim construction in the two venues. As the Federal Circuit explained in In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008):

In civil litigation, a challenger who attacks the validity of patent claims must overcome the presumption of validity with clear and convincing evidence that the patent is invalid. . . . In [USPTO] examinations and reexaminations, the standard of proof – a preponderance of evidence – is substantially lower than in a civil case; there is no presumption of validity.

Id. at 1376. Additionally, “unlike in district courts, in reexamination proceedings ‘[c]laims are given ‘their broadest reasonable interpretation, consistent with the specification. . .’’” Id. at 1377-78 (quoting In re Trans Texas Holdings Corp., 498 F.3d 1290, 1296-97 (Fed. Cir. 2007) (quoting In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984))). Accordingly, as the Federal Circuit has noted, “the two forums take different approaches in determining validity and on the same evidence could quite correctly come to different conclusions.” Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1428 (Fed. Cir. 1988). (more…)