Staying on Track With Your U.S. Patent

Holding

On October 12, 2021, the Federal Circuit affirmed in two separate circumstances involving Traxcell Applied sciences. In Traxcell Applied sciences, LLC v. Dash Communications Co. LP and Verizon Wi-fi, No. 20-1852, __ F.4th__ (Fed. Cir. Oct. 12, 2021), the Federal Circuit affirmed the district court docket’s grant of abstract judgment to Dash, agreeing with the district court docket relating to declare development, that a number of of Traxcell’s claims are invalid as indefinite, and that there have been no real points of fabric truth infringement. In one other opinion by the identical panel on the identical day, Traxcell Applied sciences, LLC v. Nokia Options and Networks OY, No. 20-1440, __ F.4th__ (Fed. Cir. Oct. 12, 2021), the Federal Circuit affirmed the district court docket’s grant of abstract judgment of no infringement, once more agreeing with the district court docket’s declare development. Choose Prost wrote each opinions, joined by Judges O’Malley and Stoll.

Background

Each lawsuits concerned U.S. Pat. Nos. 8,977,284 (“the ’284 patent”), 9,510,320 (“the ’320 patent”), and 9,642,024 (“the ’024 patent”). The lawsuit in opposition to Dash additionally included U.S. Pat. No. 9,549,388 (“the ’388 patent”). All share a specification and a 2001 precedence date. The patents relate to self-optimizing wi-fi community expertise. 

Technique declare 4 of the ’320 patent reads:

4. A way of managing a wi-fi radio-frequency (RF) community, the strategy comprising:
coupling in communication, no less than one radio-frequency transceiver and an related no less than one antenna … ;
at a first laptop…producing a sign of a location… ; … coupling a second laptop in communication with the first laptop; … ; and the first laptop denying entry to the indication of location to the second laptop if the no entry flag is about. 

(emphasis in opinion)

System declare 1 of the ’024 patent reads:

1. A system together with:
a number of radio-frequency transceivers and an related a number of antennas…; and
laptop coupled to the a number of radio-frequency transceivers programmed to find the a number of cell wi-fi communications gadgets and generate a sign of a location

(emphasis in opinion)

Means-plus-function declare 1 of the ’284 patent reads:

1. A wi-fi community comprising:
a) no less than two wi-fi gadgets, every stated wi-fi system speaking through radio frequency indicators;
b) a primary laptop programmed to carry out the steps of:

1) finding … ;
2) routinely storing efficiency information and a corresponding location for stated no less than one wi-fi system in a reminiscence;

c) a radio tower tailored to obtain radio frequency indicators from, and transmit radio frequency indicators to stated no less than one wi-fi system; whereby stated first laptop additional consists of means for receiving stated efficiency information and counsel corrective actions obtained from a listing of attainable causes for stated radio tower primarily based upon the efficiency information and the corresponding location related to stated no less than one wi-fi system;
d) whereby stated radio tower generates an error code primarily based upon operation of stated no less than one wi-fi system; and
e) whereby stated first laptop is additional programmed to,

1) obtain stated error code from stated radio tower, and,
2) selectively counsel a corrective motion … and, whereby stated first laptop suggests stated corrective motion with the intention to enhance communication with no less than one stated wi-fi system. 

(emphasis in opinion)

Traxcell v. Nokia

Within the district court docket case, a Justice of the Peace decide construed the related claims and concluded that the means-plus-function declare 1 of the ’284 patent was indefinite. Traxcell responded by requesting a Certificates of Correction from the USPTO to treatment the indefiniteness concern. Traxcell v. Nokia, at *4. 

Nokia moved for abstract judgment of non-infringement. The district court docket granted the movement, discovering that the Nokia product didn’t meet the “location” limitation or the “first computer”/ “computer” limitation. Id. at *5-6. The district court docket primarily based its discovering partially on its development of the phrase “location,” which it construed to imply a “location that is not merely a position in a grid pattern.” Id. at *6. 

The Federal Circuit affirmed, agreeing with the district court docket’s development of “location.” The Courtroom held that “clear and unmistakable” prosecution disclaimer knowledgeable the correct development of “location,” as a result of the patent applicant “distinguished the claims from prior art that used a position in a grid pattern as a location.” Id. at *7.  

Traxcell v. Dash and Verizon

On this case, equally to the Nokia case, the Justice of the Peace decide issued a declare development order within the district court docket case concluding that sure claims of the ’284 patent have been indefinite. Dash and Verizon moved for abstract judgment of no infringement. The district court docket granted Dash’s movement, discovering there was no real dispute that Dash’s accused system didn’t meet the “way” prong of the function-way-result check for the means-plus-function limitation. In different phrases, the district court docket discovered that Dash’s accused system didn’t carry out its operate in the identical means as that claimed by the patent. As well as, the district court docket discovered, the accused merchandise didn’t meet the “location” or “first computer”/ “computer” limitations, primarily based on its development of these limitations. And at last, the court docket discovered that the means-plus-function declare was indefinite for failure to reveal ample construction. Traxcell v. Dash, at *9. 

The Federal Circuit agreed with the district court docket’s development of the means-plus-function declare. Within the Courtroom’s view, the means was: “means for receiving said performance data and corresponding locations from said radio tower and correcting radio frequency signals of said radio tower.” The corresponding operate was: “receiving said performance data and corresponding locations from said radio tower and correcting radio frequency signals of said radio tower.” Traxcell recognized an algorithm within the specification because the corresponding construction. Id. at *10.

The Federal Circuit additionally agreed with the district court docket that Traxcell didn’t provide ample proof to indicate that the accused system contained construction equal to the patented construction. Id. The Courtroom faulted Traxcell’s infringement knowledgeable for “discuss[ing] the accused technology at only a generalized level,” noting that he “didn’t at all discuss at least nine entire steps of the algorithm—focusing on function and results but eliding the way those results are achieved.” Id. at *10–11. “Showing identical function is not enough for literal infringement of a means-plus-function claim—Traxcell must also provide evidence of identical or equivalent structure.” Id. at *11 (emphasis in unique).

Additional, the Federal Circuit additionally agreed with the district court docket that declare 1 of the ’284 patent was indefinite. The Courtroom held that the time period “wireless device” lacked cheap certainty and there was an absence of enough supporting construction within the specification for the means-plus-function declare. The Courtroom famous that declare 1 was held indefinite within the Nokia case, however that was for the unique declare—earlier than Traxcell filed a Certificates of Correction with the USPTO. The district court docket discovered, and the Federal Circuit agreed, that even when the Certificates corrected the primary indefiniteness floor, “it wouldn’t touch the second.” Id. at *19. Particularly, Traxcell’s identification of solely an algorithm within the specification was insufficient corresponding construction. The declare language requires that the correction relies upon location however, based on the Courtroom, Traxcell’s arguments have been “much too vague and speculative” and didn’t present “that any corrections are made using location.” Id. at *20. 

Lastly, the Courtroom turned to infringement. In distinction to the Nokia case, the development of the declare time period “location” within the Dash/Verizon case was not disputed. Id. Traxcell contended that it preserved the problem of development for enchantment as a result of it contested the time period within the Nokia case, however the Federal Circuit was clear: “having stipulated to it, Traxcell cannot pull an about-face.” Id. at *12. Beneath the correct development, “a location that is not merely a position in a grid pattern,” Traxcell didn’t present that the accused gadgets met the limitation; the accused gadgets used a grid. Id. at *13–14. The Courtroom additionally famous that a lot of Traxcell’s submission was simply lists of accused parts and information with out clarification. Id.

The time period “first computer”/ “computer” had the identical development as within the Nokia case: a single laptop. The Federal Circuit agreed with the district court docket that Traxcell had not met its burden to indicate how the accused gadgets met these limitations. As a substitute, the proof confirmed the accused gadgets used a number of computer systems. “Traxcell’s showing is simply too unexplained and too conclusory to meet the summary judgment standard.” Id. at *17. And Traxcell’s doctrine of equivalents arguments was dismissed as estopped as a result of “Traxcell surrendered multiple-computer equivalents during prosecution of these patents.” Id. at *18. 

The extra patent at concern in Traxcell v. Dash and Verizon, the ’388 patent, disclosed offering navigation data from a wi-fi community to a cell system. Id. at *21. Once more, the Courtroom held that Traxcell failed to indicate the accused expertise met the constraints of the asserted claims: “continually, Traxcell fails to adequately explain the link between the cited evidence and its infringement theory.” Id. at *22. 

Take-aways

Within the U.S., a patent’s prosecution historical past issues within the context of declare development and assessing infringement beneath the doctrine of equivalents. In declare development, prosecution historical past is used as a device to interpret the claims in a fashion according to the patentee’s representations and/or amendments throughout prosecution. This prevents claims from being construed as one approach to get hold of their allowance and a unique means in opposition to accused infringers. See Pall Corp. v. PTI Techs. Inc., 259 F.3d 1383, 1392 (Fed. Cir. 2001); see additionally Schriber-Schroth Co. v. Cleveland Belief Co., 311 U.S. 211, 220–21 (1940); Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1344 (Fed. Cir. 2005). Patentees ought to take into account ensuring that arguments and statements made in prosecution to acquire allowance might be broad sufficient to be according to foreseeable infringement theories in litigation.

Additional, patentees ought to pay attention to the potential for estoppel in statements or arguments that outline or characterize the claimed invention or the prior artwork, and take into account the impression these statements and arguments might have in asserting infringement throughout litigation.

Means-plus-function claims present a novel device for patent drafters to, in a managed means, actually cowl equivalents. These claims can present for literal infringement by disclosing construction within the specification that performs the identical operate and clearly linking that construction within the specification to the operate recited within the declare(s). Because the Federal Circuit has clarified, “the patent specification must disclose with sufficient particularity the corresponding structure for performing the claimed function and clearly link that structure to the function.” Triton Tech of Texas, LLC v. Nintendo of America, Inc., 753 F.3d 1375 (Fed. Cir. 2014); see additionally Synchronoss Techs., Inc. v. Dropbox, Inc., 987 F.3d 1358, 1367 (Fed. Cir. 2021) (“It is not enough that a means-plus-function claim term corresponds to every known way of achieving the claimed function; instead, the term must correspond to ‘adequate’ structure in the specification that a person of ordinary skill in the art would be able to recognize and associate with the corresponding function in the claim.”). If one in every of strange ability can be unable to acknowledge construction within the specification that’s clearly linked as equivalent to the means plus operate factor, the declare runs the chance of being invalid as indefinite beneath §112(b).

Lastly, the Traxcell v. Dash and Verizon opinion reminds practitioners that unsupported, conclusory statements won’t ever enable you. Take the time to draft concise, compelling, supported arguments to current earlier than the court docket, in addition to within the specification.

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