Federal Circuit Holds Standard for Claim Interpretation for Purpose of Interference Is Distinct For Claim Interpretation for Purposes of 35 U.S.C. §§102 & 112

In Agilent Tech., Inc. v. Affymetrix, Inc., Civ. Case No. 2008-1466 (Fed. Cir. June 4, 2009), Agilent owns Schembri patent 6,513,968 (“Schembri”) issued on February 4, 2003 and claimed priority to an application filed August 21, 1998.  Affymetrix believed it had earlier invented the claimed methods of the Schembri patent and copied the claims of the Schembri patent into its Besemer patent application 10/619,244 (“Besemer”) to provoke an interference.  The Besemer application claimed priority through a string of continuations to a patent application filed June 7, 1995, which made Affymetrix the senior party to the interference under 37 C.F.R 2.96.

The disputed claims in the Besemer application and the Schembri patent deal with “microarray hybridization,” which is a technique for performing multiple genetic analyses on a small fluid sample.  Specifically, claim 20 of the Schembri patent and claim 66 of the Besemer application relate to a method for mixing a fluid sample during hybridization, by providing and moving a bubble in a fluid in a closed chamber. (Schembri Patent col. 10 ll. 33-45, Besemer application at 39).

Agilent filed a motion before the Board challenging the validity of the copied claims in the Besemer application, asserting that the written description was inadequate under 35 U.S.C. §112, ¶ 1, to show actual possession of the bubble-mixing invention.  The Board found that the Besemer application showed support for the claimed invention, awarded priority to Affymetrix, and cancelled the contested claims of Agilent’s Schembri patent. 

Agilent appealed to the U.S. District Court for the Northern District of California under 35 U.S.C. § 146.  The parties submitted new expert reports and testimony from their respective expert witnesses, as well as cross motions for summary judgment on the written description issue.  The District Court affirmed the Board and granted Affymetrix’s motion for summary judgment that the Besemer application satisfied the written description requirement.  Agilent appealed the District Court’s judgment regarding claim construction and the written description requirement.

First, Agilent took issue with the District Court’s use of the Affymetrix application to construe the claim language.  To determine which specification to utilize to construe the claims, the Federal Circuit looked to its prior decisions in In re Spina, 975 F.2d 854 (Fed. Cir. 1992), and Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997).

In Spina, the applicant copied a claim from the “Barron” patent to provoke an interference, similar to Affymetrix’s actions.  The Board viewed the claim in light of the Barron disclosure, from which the claim had been copied.  The Court held that this interpretation was correct.  “When an interpretation is required of a claim that is copied for interference purposes, the copied claim is viewed in the context of the patent from which it was copied.” In re Spina, 975 F.2d 854, 856 (Fed. Cir. 1992).

In Rowe v. Dror, Rowe copied several claims from the Dror patent to provoke an interference.  Dror filed a motion seeking judgment against Rowe on the ground that a third party anticipated some of Rowe’s claims corresponding to the interference count.  On appeal, the Federal Circuit held that Rowe’s specification should be used to interpret Rowe’s claims because the question was one of novelty or non-obviousness.  The Court held that the PTO should interpret the claim in light of its host disclosure, just as it would during ex parte prosecution. Rowe v. Dror, 112 F.3d 473, 479 (Fed. Cir. 1987).  The Federal Circuit also explicitly distinguished Rowe from Spina due to the different question each case answered.  The Court held that the Spina rule was applicable when the question turned on whether the copying party’s specification provided an adequate written description for the copied claims.  The Rowe rule would apply when the question of the claim’s validity under 35 U.S.C. 102 or 35 U.S.C. 103 was at issue.

In reviewing these cases, the Federal Circuit held that the Spina rule applied, and reversed the decision of the District Court which used the Affymetrix application to construe the copied claims.  The Federal Circuit also rejected Affymetrix’s argument calling for the application of 37 C.F.R. 41.200(b), which calls for the broadest reasonable construction of claim language in light of the specification in which it appears.  For support, the Court pointed to it decision in Rowe, which asserted that judicial precedent is as binding on administrative agencies as are statutes.  Thus, the Federal Circuit held that Spina would be the applicable rule for this issue, and the Agilent specification would be utilized to construe the contested claims.

The Federal Circuit then concluded that the District Court erroneously interpreted the claim term “a closed chamber” to mean “a system of enclosures.”  The District Court based its interpretation on Figure 28 of the Besemer application, to include the cavity 310, containers 2810 and 2820, and associated tubes.  The Federal Circuit agreed with Agilent’s interpretation that the term was defined by the claim itself.   The claim recites a closed chamber defined by “a first substrate and a second substrate having inner surfaces.”   The Court interprets the claim to require that the chamber be bound by a first substrate and second substrate, and thus incapable of ambiguously spanning a “system of enclosures.”  Rather, the Court looks to the claim language to construe the closed chamber as being explicitly defined by two surfaces.  Further, the Federal Circuit asserts that the Schembri specification is replete with references and support for its interpretation of “closed chamber.”  Finally, the Federal Circuit rejected the District Court’s interpretation as frustrating or even completely ignoring claim language requiring that “at least one of said inner surfaces is functionalized…”  Under a system definition, the Federal Circuit asserted that the Schembri specification provided no guidance as to which surface would be functionalized.  Thus, the Court rejected the District Court’s expansive definition of “closed chamber” and relied instead on the language of the claim and the Schembri specification to define the term.

The Federal Circuit also agreed with Agilent’s contention that the District Court erred in construing a “closed chamber… adapted to retain a quantity of fluid” as a chamber that is “capable of being sealed or set apart from its surroundings to retain a quantity of fluid.”  Citing Merck, the Federal Circuit held that “closed” should be given further meaning because a claim construction that gives meanings to all the terms of the claim is preferred to one that does not do so.  Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005).  The Court also looked to Mangosoft to reject the District Court’s construction that gave no meaning to a term (“closed”) that was not already implicit in the rest of the claim.  Mangosoft, Inc. v. Oracle Corp., 525 F.3d 1327, 1330-31 (Fed. Cir. 2008).  According to the Federal Circuit, closed was not the same thing as closable because equating the two terms was contrary to the plain language of the claim.

The District Court explicitly recognized that the ordinary meaning of the term “closed” in the context of a fluid retention chamber is “not open” or “sealed,” meaning that the chamber does not allow the fluid to escape.  However, the District Court compromised this ordinary meaning to fit its erroneous assumptions that the claims should be construed in light of the Besemer application and that a “closed chamber” can mean a “system of enclosures.”  The Schembri disclosure enables the ordinary meaning of the term to be utilized, and provides unambiguous and repeated support for such an interpretation.  Specifically, the Schembri disclosure defines both a chamber and a closed chamber, explaining that the chamber becomes a closed chamber with a substrate placed on top of its seal to close it. 

Thus, the Federal Circuit reversed the District Court’s construction because it was not grounded in the proper disclosure, and did not honor the customary meaning of the claim language to one of skill in the art.  The Federal Circuit averred that the proper meaning of a “closed chamber… adapted to retain a quantity of fluid” is “an enclosed cavity defined by the inner surfaces of the first and second substrates, from which there is no egress of fluid.”

Next, the Federal Circuit examined whether the grant of summary judgment that the Besemer application had adequate possession of the claimed invention at the time of invention was proper.  First, the Court cited In re Wright to note that the written description doctrine prohibits new matter from entering into claim amendments, especially during the continuation process.  In re Wright, 866 F.2d 422, 424 (Fed. Cir. 1989).  The court further observed that the written description requirement is a question of fact that requires that the specification must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention.” Conservolite, Inc. v. Widmayer, 21 F.3d 1098, 110 (Fed. Cir. 1994); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).  Finally, the court declared that patent applications do not enjoy a statutory presumption of validity.  Rather, Agilent’s burden of proving a lack of written description in the Besemer application is merely a preponderance of the evidence.  Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1365 (Fed. Cir. 2004).

Before addressing the substantive merits of the grant of summary judgment, the Federal Circuit agreed with Agilent’s contention that the District Court erred by adopting an incorrect standard of review for new evidence that had not been before the Board.  Under 35 U.S.C. 146, a party dissatisfied with the Board’s decision may initiate a civil action in a U.S. District Court to bring forth “further testimony.”  Under this section, if the parties present new evidence to the District Court that is in conflict with the record before the Board, the District Court must make de novo factual findings regarding the new evidence. 

Agilent initiated an action under Section 146 in response to the Board’s finding that it had not advanced any “meaningful evidence” to show that one of ordinary skill in the art would not have understood Besemer’s application to inherently disclose using bubbles to mix fluid in a closed chamber, as required by the contested claims.  The Board specifically told Agilent that, for example, an expert declaration that one of ordinary skill in the art would not have had the requisite knowledge or skills to conclude from the Besemer application that the inventor was in possession of the invention would have been useful.  Agilent submitted deposition testimony from Affymetrix’s expert to remedy the evidentiary deficiency.  Specifically, Affymetrix’s expert explained that bubbles were not inherently present in the “vortexer” embodiment of Figure 29 of Besemer’s disclosure.  Further, in the embodiments of Figures 28 and 30, the chamber was not closed.  The parties had already agreed that Figures 28-30 of Besemer’s application were the only embodiments relating to the bubble mixing of the contested claims. 

The District court dismissed this evidence, concluding that Agilent had not presented any new evidence concerning the written description issue, and deferentially reviewed the Board’s decision for substantial evidence.  The Federal Circuit asserted that this deferential review was legal error because Agilent had submitted new evidence that specifically pertained to filling evidentiary gaps observed by the Board.  The Court emphasized that Section 146 allowed a litigant to shore up evidentiary gaps that may have been evident by the end of the inter partes interference procedure.  Here, the Court recognized that Agilent was notified of such evidentiary gaps and took measures to fill them.  The Federal Circuit asserted that evidence submitted by Agilent in the Section 146 action should have been considered by the District Court.  Thus, the Federal Circuit examined Agilent’s evidence without deference to the Board’s finding.

As mentioned above, the record showed, and the parties seemed to agree, that the only embodiments depicting bubble mixing in the Besemer application were those illustrated by Figures 28-30, i.e. the “circulator” and “vortexer” embodiments.  Agilent contended that these embodiments of the Besemer application failed to provide written description support for the claims at issue.  First, the “circulator” embodiments (as illustrated in Figures 28 and 30 of the Besemer application) failed to describe a method that takes place in a closed chamber.  Second, the “vortexer” embodiment (as illustrated in Figure 29 of the Besemer application) failed to describe bubble mixing at all. 

Given the Federal Circuit’s interpretation of a “closed chamber… adapted to retain a quantity of fluid,” the Court initially looked to the Besemer specification to disclose such an enclosed cavity from which there is no egress of fluid.  Upon close examination of the Besemer disclosure, the Court found that the “circulator” embodiments of Figures 28 and 30 did not disclose a closed chamber that would prevent the escape of fluid.  Rather, those embodiments required the circulation of fluid in and out of the cavity to facilitate mixing.  Affymetrix’s own expert affirmed that requirement in his deposition to the District Court.  Thus, the “circulator” embodiment of Figures 28 and 30 provided no written description support for the bubble mixing of the contested claims. 

The Federal Circuit then turned to the “vortexer” embodiment of Figure 29, in which it found a closed chamber.  The Court observed that the “vortexer” embodiment allowed the introduction of fluid into a closed reaction chamber from which the fluid did not egress.  To fully satisfy the written description requirement, this embodiment must then also describe “providing a bubble in the fluid” and “moving a bubble within the fluid to result in mixing,” as required by the contested claims.  However, both mentions of bubbles in the Besemer disclosure relied on by Affymetrix were tied to the “circulator” embodiments, where the bubbles are created by forcing fluid in and out of the chamber.  The Court found that this creation of bubbles was inconsistent with the requirement of a “closed chamber.” 

The Court further asserted that Affymetrix’s argument that the “vortexer” embodiment inherently produces bubbles was contradicted by Affymetrix’s own expert testimony that bubbles were not necessary generated in the fluid in the system as depicted by Figure 29 (the “vortexer” embodiment).  The Federal Circuit cited In re Oelrich to note that inherency requires that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question.  In re Oelrich, 666 F.2d 578, 581 (C.C.P.A 1981).  The mere fact that a certain thing may result from a given set of circumstances would not establish inherency. Hitzeman v. Rutter, 243 F.3d 1345, 1355 (Fed. Cir. 2001).  Given Affymetrix’s expert testimony, the Court declared that Affymetrix’s argument that the “vortexer” chamber might include an unmentioned void that might result in bubble creation was insufficient to establish inherency.

Thus, the Federal Circuit failed to find any embodiments in the Besemer application that disclosed bubble mixing in a closed chamber and concluded that the District Court erred in its grant of summary judgment in Affymetrix’s favor.  The Federal Circuit stated that Affymetrix copied Agilent’s claims into its continuation application despite having failed to disclose the claimed invention.  Therefore, the Court reversed the District Court and granted Agilent’s motion for summary judgment regarding the written description issue.

The Federal Circuit reversed the District Court’s claim construction because it was not grounded in the proper disclosure, and did not honor the customary meaning of the claim language to one of skill in the art.  The Federal Circuit stated that the originating disclosure should be controlling for claim construction when determining if the host application has adequately supported the subject matter claimed by both parties.  Further, the ordinary meaning of the claim language should be recognized, if supported by the originating disclosure.  The Federal Circuit also reversed the grant of summary judgment regarding Affymetrix’s possession of the claimed invention at the time of invention.  Here, the Federal Circuit reversed the District Court and considered new evidence submitted by Agilent to the District Court.  The Federal Circuit stressed that litigants are given the opportunity through 35 U.S.C. 146 to satisfy evidentiary gaps brought to light at the Board and stated that evidence submitted through a 146 action should be taken into account.  In light of that new evidence, and upon close examination of the Besemer disclosure, the Federal Circuit found no evidence that the disclosure supported the invention as claimed.

Federal Circuit Affirms that the Party Seeking the Benefit of Priority Bears the Burden of Proof That Claims Are Entitled to Priority

In PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299; 86 U.S.P.Q.2D 1385 (Fed. Cir. 2008) (non-precedential), PowerOasis possessed two patents with the purpose of providing a “vending machine” that enables a customer to connect a laptop to a communications channel.  Id. at 2.  PowerOasis brought suit in the District Court for the District of New Hampshire alleging that T-Mobile’s internet “Hot-Spot” system infringed its patent.

PowerOasis’ original application in 1997 described a “vending machine” which would allow a consumer to connect his laptop to a telecommunications network.  The figures and descriptions in the original application make it very clear that the “vending machine” was to be some component external to the consumer’s laptop.  The continuation-in-part (CIP) filed in 2000 removed this external restriction, introducing examples which included an interface on the consumer’s laptop, and led to the issuance of U.S. Patents Nos. 6,466,658 and 6,721,400.  PowerOasis alleged infringement of the ‘658 and ‘400 patents by T-Mobile.  T-Mobile introduced prior art which had been carried out for more than a year prior to the filing of the CIP in 2000.  PowerOasis claimed that the prior art was no bar, as the CIP should have the benefit of the date of the filing of the original application in 1997 and the prior art had not been carried out for a year prior to that date.

In deciding this case, the Federal Circuit addressed which party bears the burden of proof for establishing the effective filing date of claims in a continuation-in-part.  If the claims in the CIP are fully described in an earlier filing, they are eligible to benefit from the date of the earlier filing.  As such, the outcome of the case revolved around the effective filing date of the CIP filed by PowerOasis which matured into the two patents at issue.  T-Mobile identified prior art that would invalidate the patents (under 35 U.S.C. § 102(b)) if the CIP retained its own filing date (June 15, 2000).  However, PowerOasis argued that the CIP should be presumed to have the filing date of the original application (February 6, 1997) for purposes of priority in date, thereby requiring T-mobile to provide evidence of a lack of written description in the original application.  The District Court held that the CIP was not entitled to the benefit of the earlier filing date because the original application did not provide a written description of the invention claimed in the CIP as required by 35 U.S.C. § 112.  As such, the District Court held that the PowerOasis patents were invalidated by the prior art presented by T-Mobile.  The Federal Circuit affirmed this holding.

The Federal Circuit began its analysis by recognizing the well established fact that a patent is presumed valid and that a party wishing to assert otherwise bears the burden of persuasion.  See Ralston Purina Co. v. Far-Mar-Co, Inc. 772 F.2d 1570 (Fed. Cir. 1985).  Moreover, there is a heightened presumption where the attack on validity is an issue already resolved during prosecution as there is a presumption that the issue was correctly resolved during the examination process.  As such, in Ralston Purina, there was a presumption that the claims were entitled to a parent application priority date as the examiner and the Board of Patent Appeals and Interferences had addressed the issue specifically relative to considered prior art.

PowerOasis argued that this presumption of validity should extend to issues of priority in time in other circumstances, but the Federal Circuit rejected this argument.  Specifically, the Federal Circuit noted that the rationale behind the presumption of validity does not extend to issues of timing in the case of CIPs because patent examiners do not generally consider the timing issues of CIPs unless the issue is raised in regards to specific prior art references.  Timing issues related to CIPs only arise during litigation, and it is not part of the United States Patent and Trademark Office’s standard procedure to make unnecessary priority determinations.  Without a presumption of priority in time, the Federal Circuit held that the party relying upon validity bears the burden of showing that the CIP should date back to the earlier filing.

The party asserting invalidity still must show by clear and convincing evidence that the patent is invalid, but, once a prima facie case is made, the party relying on validity must present evidence to the contrary.  T-Mobile met its burden here by presenting 35 U.S.C. §102(b) prior art which would invalidate the patent if the CIP had an effective date of 2000.  Once T-Mobile satisfied its burden by establishing a prima facie case, the burden shifted to PowerOasis to show that the CIP benefitted from the date of the earlier filing.

After discussing the burden of proof, the court moved on to the standard for determining whether the CIP benefitted from the filing date of an earlier filed application.  “It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.”  (quoting In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995)).  To satisfy this requirement, the written description of the earlier filing must make it clear to those skilled in that art that the inventor possessed the invention claimed in the later filing at the time of the earlier filing.  This requirement is not fulfilled by inventions which may be obvious over what is disclosed; only by what is expressly disclosed.

The Federal Circuit agreed with the District Court that the CIP filed by PowerOasis failed to meet this standard.  The original application (filed in 1997) did not support the terms included in the CIP (filed in 2000).  The modifications in the CIP substantially changed the content of the original application, expanding it from a “unitary vending machine” to a number of different platforms, including a customer laptop.  As the CIP was not fully supported by the written description in the original filing, the CIP was not entitled to benefit from the filing date of the original application.  The District Court held, and the Federal Circuit affirmed, that the relevant claims in patents ‘658 and ‘400 were invalid due to the 35 U.S.C. §102(b) prior art presented by T-Mobile.

Federal Circuit Finds Priority Documents Are Not New Evidence For Purposes of Interference

In In re Harold Garner, Civ Case. No. 2007-1221 (Fed. Cir. December 5, 2007), Calvin F. Quate and David Stern (collectively Quate) are the inventors of U.S. Patent No. 6,480,324, and Harold R. Garner is the inventor of U.S. Application Serial No. 09/998,341.  Quate is the senior party in an interference proceeding between U.S. Patent No. 6,480,324 and U.S. Application Serial No. 09/998,341, and Garner is the junior party based on the effective filing date.  Garner’s patent application was initially rejected based on the filing date of Quate.  Garner attempted to establish a prior reduction to practice for his invention in his 2001 declaration that included:  photos of the device he built before the filing date of that prior art reference and a lab notebook that allegedly showed that the device worked.  John Fondon’s declaration executed on Oct. 20, 2005 was also submitted in a later filing. The evidence was submitted under Rule 131. Continue reading