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Your Words Are
Worth Millions
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The exact wording of the claims and
the specification of a patent is of critical importance
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Any ambiguity leaves patent coverage
and validity subject to chance
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Simple errors or poorly worded
language can result in millions of dollars in lost value
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District and Federal Circuit Court
records contain many examples of lost patent value as the
result of poor wording. For purposes of illustration, three
such examples are described below.
Chef
America v. Lamb-Weston
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Chef America accused Lamb-Weston of
infringing its U.S. Patent No. 4,761,290
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A
representative claim reads:
"A
process for producing a dough product …which comprises …
heating the … dough
to
a temperature
in the range of about 400 ºF to 850 ºF" (emphasis added)
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It was clear that, despite the
patentee’s inadvertent mis-statement, the dough should only
be heated
at
, not
to
, the specified
temperature; otherwise the dough would burn and the claim
would be inoperative
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Lamb-Weston does not heat its
dough products to the temperature range specified in Chef
America’s patent and, therefore, does not literally infringe
the claims as construed by the district court
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The district court granted a motion
for summary judgment of
non-infringement, and the Court
of Appeals for the Federal Circuit (CAFC) affirmed
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Both the district court and the
Federal Circuit Court refused to redraft the claim to
preserve its validity
“Thus, in accord with
our settled practice we construe the claim as written, not as
the patentees wish they had written it.”
– Court of Appeals for the Federal Circuit in
Chef America, Inc. v.
Lamb-Weston, Inc.,
358 F.3d 1371 (Fed. Cir. 2004).
Honeywell International v. International Trade Commission (ITC)
Honeywell
International, Inc. accused Hyosung Corporation of Seoul, Korea
and its American counterpart of importing polyethylene
terephthalate yarns that infringe Honeywell's U.S. Patent No.
5,630,976, in violation of the Tariff Act of 1930.
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The following is representative of the
disputed portion of Honeywell's claims: “A process for
production of a drawn polyethylene terephthalate yarn …,
comprising: … [steps] … to form a crystalline, partially
oriented yarn with … a melting point elevation of 2°
to 10° C, and …"
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The written description does not
describe any method by which to determine the melting point
elevation
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The accused product was analyzed by
four different methods, of which only one, the ball method,
gave a melting point elevation within the claimed range
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The CAFC determined that:
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The intrinsic record (i.e. the
claims, the written description and the prosecution
history) does not compel a narrowing of the claim
language to any one of the possible definitions
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The intrinsic record fails to give
any guidance as to what a person of ordinary skill would
understand the claim to require
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Therefore,
the claims are insolubly ambiguous
and invalid and Hyosung does not infringe.
-- Honeywell
International, Inc., v. International Trade Commission,
341 F.3d 1332 (Fed. Cir. 2003)
Sinorgchem v. ITC
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Sinorgchem Co., Shandong manufactures in China and
sells for importation to the U.S. a rubber
antidegradant known as 6PPD.
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Sinorgchem’s manufacturing process involves the
reaction of nitrobenzene with aniline. In this
process, aniline serves as the solvent.
Importantly, at least 10 to 15% water is present as
a “protic material”, i.e., a proton donor.
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Sinorgchem appealed the ITC’s finding that it had
literally infringed four method claims of U.S. Patents
5,117,063 and 5,608,111 owned by Flexsys America L.P.
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In
dispute was the meaning of the claim term
“controlled amount of protic material”, found in
each of the asserted claims.
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Although
“controlled amount” is not defined in the claims
themselves, the specification states that
“A ‘controlled amount’ of protic material is an
amount up to that which inhibits the reaction of
aniline and nitrobenzene, e.g., up to about 4% H2O
based on the volume of the reaction mixture when
aniline is utilized as the solvent.”
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Referring to the above sentence, the CAFC pointed
out that “controlled amount” is set off by quotation
marks and followed by the word “is.” The panel
majority therefore interpreted the entire remainder
of the sentence as an express definition of
“controlled amount” and stated that “we need look no
further for its meaning.”
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The
panel majority construed “controlled amount” to be
“up to about 4% H2O based on the volume
of the reaction mixture” when aniline is the
solvent. In doing so, they ignored the fact that
three specific examples detailed in the
specifications involved significantly more than 4%
water with aniline as solvent.
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Noting
Sinorgchem’s use of far more than 4% water, CAFC
found no literal infringement, vacated ITC’s limited
exclusion order against Sinorgchem, and remanded.
Judge Newman strongly dissented.
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The take-home lesson
for patentees is this:
Not only
the claims, but even the specification of a patent
must be written with great care,
especially if you act as your own lexicographer.
Any sentence of the following form (where CLAIM_TERM
is any term that appears in a claim) is likely to be
construed as an express definition of CLAIM_TERM,
over-riding any ordinary and customary meaning of
such term:
A “CLAIM_TERM” is ________.
In such a
sentence, any words
that follow the word “is” may be construed as claim
limitations.
Specifically,
avoid
including a numerical limitation
in such a sentence (or in the claim itself) unless
it is required for patentability.
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In the
present case, the 4% numerical limitation that was
written, which was unnecessary, did not even
encompass all of the preferred embodiments in the
specification!
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The
following update gives some idea of the value that
has so far eluded Flexsys in the above case. In
March 2009, Flexsys America L.P. dropped its patent
infringement case with the ITC and revived its civil
suit in the Cleveland federal district court against
Sinorgchem and three other Asian companies that use
Sinorgchem's chemicals to manufacture products for
the U.S. market. Flexsys seeks a multi-million
dollar judgement against the companies and a
permanent injunction against their antidegradants
and tires being distributed in the U.S. Having
failed to win before the ITC, Flexsys will seek to
present its patent infringement case to a jury in
Akron and let the jury decide the issue of
infringement.
--
Sinorgchem Co.
v. International Trade Commission, 511 F.3d 1132
(Fed. Cir. 2007)
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