Tuesday, September 10, 2019

CAFC addresses antitrust issues in Intellectual Ventures v. Capital One. Intellectual Ventures wins.

Intellectual Ventures prevailed on the ANTITRUST component of the case:

However, the court subsequently
granted summary judgment against Capital One on all the
antitrust claims. Intellectual Ventures I LLC v. Capital
One Fin. Corp., 280 F. Supp. 3d 691 (D. Md. 2017). We

Of some details:

To begin with, the premise of Capital One’s argument
is wrong. The two issues on which Judge Trenga based his
dismissal order are not independent and alternative
grounds of decision, but are integrally related. Specifically,
the presence of a relevant antitrust market is critical both
to whether a relevant market has been identified and to
whether the defendant possesses monopoly power in a
relevant market. As Judge Trenga explained, the first
element of the offense of monopolization under section 2 of
the Sherman Act is “the possession of monopoly power in
the relevant market.” Trenga Op. at *4 (citing United
States v. Grinnell Corp., 384 U.S. 563, 570–71 (1966)). It
is artificial to divide that element into (1) the possession of
monopoly power and (2) a relevant market, because the
possession of monopoly power is meaningless without
reference to the market in which that power is exercised.
What Judge Trenga ruled was that Capital One failed
to plausibly allege a proper relevant antitrust market and
failed to plausibly allege that IV wields monopoly power
within that antitrust market. The requirement of a
relevant antitrust market is a necessary component of both
determinations; therefore, Judge Trenga’s finding that a
relevant antitrust market was not plausibly pleaded is
fatal to Capital One’s position on both issues. Judge
Trenga’s finding on the relevant market issue therefore
satisfied the requirement, for collateral estoppel purposes,
that an issue of fact decided in the prior proceeding be
critical and necessary to the judgment in that proceeding.

This analysis is supported by comment i and
illustration 16 in section 27 of the Second Restatement of
Judgments. The Second Restatement generally provides
that if a judgment of a court “is based on determinations of
two issues, either of which standing independently would
be sufficient to support the result, the judgment is not
conclusive with respect to either issue standing alone.”
Restatement (Second) of Judgments § 27 cmt. i (1982).
However, that general rule is subject to an express caveat
that if “the first action, even though decided on alternative
grounds, necessarily adjudicated the issue” in dispute in
the second action, the determination in the first action
would be conclusive in the second. Id. at cmt. i & illus. 16.3

This case fits that exception. Although Judge Trenga
separately concluded that Capital One had not proposed an
appropriate relevant market and that it had not plausibly
alleged that that IV wields unlawful monopoly power
within that market, both grounds required a showing of a
relevant antitrust market, and therefore Judge Trenga’s
decision “necessarily adjudicated the issue” of the
appropriate relevant market. Judge Grimm was therefore
correct in holding that Judge Trenga’s determination on
the relevant market issue in the Virginia case was
conclusive on that issue in the Maryland action.

Monday, September 09, 2019

PTAB decision vacated in Valspar

From the case:

Vacatur is an equitable remedy. Bancorp,
513 U.S. at 25. The Board’s interpretation of our mandate
produced an inequitable result. The ordered vacatur was
designed to protect the challenger from being forced to acquiesce to an unreviewable adverse ruling by the Board.
But by effectively canceling all the challenged claims, the
Board’s approach unfairly converted the vacatur shield
into a sword for the challenger. That is an inequitable result—especially
here, where the Board previously determined that the challenged claims are not invalid.

Had we intended such an incongruous result, we would
have made that intent explicit in our opinion. The Board
should have interpreted the scope of the vacatur based on
the context provided by this court’s opinion. See Laitram,
115 F.3d at 952 (consulting opinion to ascertain intended
effect of mandate). Our opinion did not meaningfully distinguish between the Board’s decisions and the examiner’s
decisions. Neither party asked this court for the relief the
Board understood this court to have granted. Furthermore, the cases cited in this court’s opinion and by the parties stand for the proposition of vacating the whole case
below, not a piecemeal approach. See, e.g., Bancorp,
513 U.S. at 21. With this context, it was clear that this
court’s intent was to nullify the entire inter partes reexamination without any collateral effect on other litigation. See
Munsingwear, 340 U.S. at 41 (endorsing procedure that
prevents “a judgment, unreviewable because of mootness,
from spawning any legal consequences”).
PPG argues that had we intended to vacate the entire
Patent Office proceeding, we would have had to “vacate the
judgment below and remand with a direction to dismiss,”
as the Supreme Court stated in Munsingwear.
See id. at 39. We do not agree. See Bancorp, 513 U.S. at 22
(“[V]acatur ‘clears the path for future relitigation of the issues between the parties and eliminates a judgment.’” (emphasis added) (quoting Munsingwear, 340 U.S. at 40));
Laitram, 115 F.3d at 951 (“[W]hile this court could have remanded with explicit instructions . . . the failure to do so is
not dispositive.”). Other appellate courts have used similar
language to ours to dispose of the entire proceeding without

In re Greenstein: merely having a successful new product is not enough to overcome 101

from the decision:

Mr. Greenstein argues that the limitation “utiliz[ing] a
projected amount of income at a future date for at least one
person” provides the requisite inventive concept. He contends
this limitation was the basis for the successful commercial launch of a new product, demonstrating its
material advantages to persons in the relevant market.
Mr. Greenstein’s contentions are unavailing.
Even if Mr. Greenstein is correct that the claimed utilization of a projected future income was the basis for a
commercially successful product, this is insufficient to
transform the claims into a patent-eligible application. It
is well-settled that a claimed invention’s “use of the ineligible concept
to which it is directed cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.” BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151
(Fed. Cir. 2016) (“[A] claim for a new abstract idea is still
an abstract idea.”).

Burt/Northwestern stem cell/MS program no longer taking new patients

In a story titled Northwestern University Stem Cell Therapy Clinic Closes Abruptly , The Scientist reports that
Northwestern Medicine’s immunotherapy and autoimmune diseases program is no longer accepting new patients. The program was testing hematopoietic stem cell transplantations (HSCT) for treatment of multiple sclerosis (MS).

Included within the article is the text:

Some in the field question why the program can’t continue without him [Burt].
“If his program is so successful, [why] it should suddenly stop if he’s not there
is a little bizarre,” remarks Mark Freedman, a neurologist who directs a
research division focused on multiple sclerosis at Ottawa Hospital.
Burt and Northwestern did not say why the program could not continue without him.

Monday, September 02, 2019

September 2 is the anniversary of the fall of Atlanta during the Civil War

On September 2, 1864, the mayor of Atlanta surrendered the city to Union forces, with the Confederate troops under General Hood having withdrawn without a fight. Two years earlier, Confederate troops under General Heth had made a feint to Cincinnati, but withdrew without a fight, leaving Cincinnati intact.

There are probably a lot more people who remember the taking of Atlanta in 1864 than the demonstration in front of Cincinnati in 1862, probably informed in part by the current relative sizes of the cities.

However, the census of 1860 tells a different story of relative importance at the time. Cincinnati, of population 161,044 and the seventh largest US city, was only slightly smaller than New Orleans ( 168,675 ) , which was the most populated city in the Confederacy. Covington, KY, across the Ohio River from Cincinnati had a population of 16,471. In contrast, Atlanta of population 9,554 was only the 99th most populated city in the US, and smaller in size than, for example, New Brunswick or Hoboken, New Jersey.

Atlanta was a rail center, but Savannah ( 22,292 ) had more people, but only slightly larger than Salem, Massachusetts (22,252 ).

Sunday, September 01, 2019

September 1 is the anniversary of the Confederate Heartland demonstration at Cincinnati

Confederate Edmund Kirby Smith (later of the Confederate Trans-Mississippi) ordered Henry Heth (later to start the battle at Gettysburg, supposedly ordering men to look for shoes) to make a demonstration threatening Cincinnati. Union General Horatio Wright ordered Lew Wallace to protect Cincinnati. The Confederate campaign began on September 1, 1862, and was unsuccessful.

Horatio Wright (leading the VI Corps of the Army of the Potomac) and Lew Wallace (leading Union forces at the Monocacy) would later combine to defend Washington DC against the attack of Jubal Early in 1864.

Plans had been made to build a suspension bridge across the Ohio, with the work to be done by the Roeblings of Trenton, New Jersey. The military threat posed by Heth caused the construction of a pontoon bridge across the Ohio near the unfinished Roebling Bridge.

Prior to Roeblings' work on the Brooklyn Bridge, the Cincinnati Bridge (opened in 1867) was the longest suspension bridge in the world. Coincidentally, Horatio Wright was involved in work on the Brooklyn Bridge.

One of the early objections to the Cincinnati Bridge was that it would facilitate escape of enslaved African Americans from Kentucky.

As to the "shoes," troops under Ewell's Second Corps had likely cleaned out Gettysburg, and were preparing to attack Harrisburg, until recalled by Lee. There was a clash between Union and Confederate troops near Camp Hill, PA, which may be northern-most organized battle of the Civil War.

Friday, August 30, 2019

"Reasonable" rebels?

This post is a placeholder to discuss the article The reasonable rebels
authored by Eve Fairbanks , who wrote of her background:

My childhood home is just a half-hour drive from the Manassas battlefield in Virginia, and I grew up intensely fascinated by the Civil War.
I loved perusing soldiers’ diaries. During my senior year in college, I studied almost nothing but Abraham Lincoln’s speeches.
I wrote my thesis on a key Lincoln address, Civil War rhetoric was almost all I read: not just that of the 16th president but also that of his adversaries.

[Fairbanks is a 2001 high school graduate, who went on to Yale obtaining a degree in political philosophy]

Abraham Lincoln on "the invention of negroes"

Most patent attorneys are aware that Abraham Lincoln is the only U.S. President to obtain a
U.S. patent. Many know that the words "fire of genius" originated from a speech given by Lincoln, first in
1858 (April 6, 1858), and then in 1859. See "Fire of genius" speech and Google Books

Less well-appreciated are some other words that appear in the Fire of Genius speech:

Though not apposite to my present purpose, it is but justice to the fruitfulness of that period, to mention two other important events
-- the Lutheran Reformation in 1517, and, still earlier, the invention of negroes, or, of the present mode of using them, in 1434.

Prior to the "fire of genius" speech, Lincoln had done research for a speech to the Colonization Society in the year 1855, with notes therefrom including:

1434- A portaguse [sic] captain, on the coast of Guinea, seizes a few Affrican lads, and sells them in the South of Spain.

1501-2-3. Slaves are carried from Africa to the Spanish colonies in America.

1516-17 Charles 5th. of Spain gives encouragement to the African Slave trade.

1562- John Hawkins carries slaves to the British West Indies.

1620 A dut[c]h ship carries a cargo of African slaves to Virginia.

1626- Slaves introduced into New-York.

1630 to 41. Slaves introduced into Massachusetts.

link: Collected Works of Abraham Lincoln. Volume 2.

Lincoln was noting the 1434 "invention," on the basis that this was the first time humans had made slaves of others purely on racial grounds, unrelated to other factors,
such as conquests in war.

Separately, see also Fourth Debate: Charleston, Illinois, September 18, 1858

CAFC affirms DNJ in Combigan® case; Sandoz loses

The case is of interest because of the concurring opinion of CJ Prost:

Therefore, I would affirm the district court’s decision
for the reasons stated in the majority’s opinion, except that
I would start by explaining why the plain language of the
claim compels us to reject Sandoz’s position that the
“wherein” clauses here are mere statements of inherent or
intended results.

The issue in the case was whether or not two "wherein" clauses
expressed meaningful claim limitations. The majority opinion (by J. Wallach)

The District Court found the disputed “wherein”
clauses to constitute claim limitations. Allergan Sales,
2018 WL 3675235, at *7. Specifically, the District Court
“f[ound] that the ‘wherein’ clauses are limiting because
they are material to patentability and express the inventive
aspect of the claimed invention,” viz.,
“Combigan®’s ability to reduce daily administrations from
TID to BID without a loss of efficacy, and with reduced adverse events.”
Id. at *5–6. On appeal, Sandoz disputes the
District Court’s construction, arguing, inter alia, that:
(1) the “wherein” clauses “merely state the intended results
of administering Combigan[®] twice daily,” Appellant’s
Br. 36; see id. at 36–49; and (2) the recited results are not
“material to patentability,” id. at 50; see id. at 50–62. We
disagree with Sandoz.


Sandoz contends that these clauses
“merely state . . . intended results,” Appellant’s Br. 36, because they
reflect the results of administering the Example I formulation, viz., Combigan®,
as witnessed during
the Example II clinical study, see, e.g., id. at 36 (“The asserted method claims
have one and only one step: administration of the claimed composition. Everything else is
literally the results observed during clinical trials of
Combigan[®].”); see also Minton v. Nat’l Ass’n of Sec.
Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) (“A
whereby [or wherein] clause in a method claim is not given
weight when it simply expresses the intended result of a
process step positively recited.”); Bristol–Myers Squibb Co.
v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376 (Fed. Cir.
2001) (explaining that claim language that “is only a statement of purpose and intended result” and that “does not
result in a manipulative difference in the steps of [a] claim”
is generally not limiting). We disagree. While we recognize
some overlap between the language of the “wherein”
clauses and those results, we must read the claims in view
of the “entire specification.” Sinorgchem Co., Shandong v.
Int’l Trade Comm’n, 511 F.3d 1132, 1145 (Fed. Cir. 2007)
(emphasis added); see Trs. of Columbia Univ. v. Symantec
Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016) (“[T]he specification is always highly relevant to the claim construction
analysis and is, in fact, the single best guide to the meaning
of a disputed term.” (internal quotation marks and citation

The majority noted that the "wherein" clauses were material in
securing allowance, and cited Southwall:

Consistent with this understanding, Allergan relied on
the efficacy and safety of the claimed methods during prosecution of the Patents-in-Suit
in responding to the examiner’s rejections. See Southwall Techs., Inc. v. Cardinal IG
Co., 54 F.3d 1570, 1579 (Fed. Cir. 1995) (“[A]rguments
made during prosecution regarding the meaning of a claim
term are relevant to the interpretation of that term in
every claim of the patent absent a clear indication to the

The only mention of "inherent" in the majority opinion appears in discussion of
the prosecution history

[Allergan] disagreeing with the Examiner “that
the reduction in side effects is inherently present in the
prior art combination”

The end of the concurring opinion states:

I offer one final point about the importance of the plain
language of the claim here. Sandoz’s arguments raise general concerns about the role of claim language in claim construction.
Sandoz attempts to label over half the claim language
in claim 1 as a mere “intended result.” By doing so, Sandoz
invites us to start from a place of uncertainty about
whether most of the text in the body of the claim is limiting.
Accepting that invitation threatens the broader notice
function of the patent claim. “It is a ‘bedrock principle’ of
patent law that ‘the claims of a patent define the invention
to which the patentee is entitled the right to exclude.’”
Phillips, 415 F.3d at 1312 (quoting Innova/Pure Water,
Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
1115 (Fed. Cir. 2004)). Indeed, “[b]oth the Supreme Court
and this court have adhered to the fundamental principle
that claims define the scope of patent protection . . . . The
claims thus give notice of the scope of patent protection.”
Johnson & Johnston Assocs. v. R.E. Serv. Co., 285 F.3d
1046, 1052 (Fed. Cir. 2002) (en banc).
As it is, claim construction can be difficult. For instance, litigants often encounter uncertainty over whether
a claim’s preamble is limiting or not. I see no reason to
inject further uncertainty into the notice provided by the
body of a claim. Given the specificity, clarity, and material
limits the “wherein” clauses add to the scope of claim 1 on
their face, Sandoz’s position deserves rigorous scrutiny
from the start. We should not begin with the presumption
that text in the body of the claim may be meaningless and
can only be saved by clear statements in the specification
or prosecution history.
Therefore, I would affirm the district court’s decision
for the reasons stated in the majority’s opinion, except that
I would start by explaining why the plain language of the
claim compels us to reject Sandoz’s position that the
“wherein” clauses here are mere statements of inherent or
intended results.

One notes that "intended results" and "inherent results" are two different things.

Wednesday, August 28, 2019

MALLINCKRODT case raises significant 101 questions

Judge Newman's dissent which began as follows raised significant issues with the way the CAFC treated the 101 issue in this case:

I concur in correction of the technical error, where the
district court included in its decision some claims that were
not there at issue. However, I respectfully dissent from the
majority’s rulings that the claims at issue are ineligible for
patenting under Section 101. The claims are for a method
of medical treatment—a class of subject matter whose eligibility under section 101 is established by precedent.

Judge Newman discussed past 101 cases [102 and 103 were not implicated in this case]:

Heretofore, Federal Circuit precedent has been reasonably consistent in holding that
methods of medical treatment are eligible for patenting. See Athena Diagnostics,
Inc. v. Mayo Collaborative Servs., LLC, 927 F.3d 1333,
1367–68 (Fed. Cir. 2019) (Newman, J., dissenting from denial of rehearing en banc)
(collecting cases on eligible methods of treatment and ineligible methods of diagnosis).
The subject matter herein routinely complies with section 101;
the court mis-steps in holding that “[t]he natural phenomenon here is undisputed,” whereby the method of treatment
is also deemed to be a natural phenomenon. Maj. Op. at 9.


The majority’s argument that a method of treatment of
an affliction affecting human physiology is ineligible under
section 101 contravenes precedent. See, e.g., Rapid Litig.
Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1048–49
(Fed. Cir. 2016) (method of treating disease “to achieve ‘a
new and useful end,’ is precisely the type of claim that is
eligible for patenting” (quoting Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 573 U.S. 208, 217 (2014))). My colleagues
acknowledge that the claims include “[a] treatment step of
administering,” Maj. Op. at 11, but state that this step is
“not the focus of the claimed invention,” id., and that “[t]he
claimed invention is focused on screening for a natural
law,” id. at 14–15. However, patent eligibility is determined not for isolated steps, but for the claimed invention
as a whole. Eligibility does not depend on whether some of
the claim steps were known. The Court reiterated in Diamond v. Diehr, 450 U.S. 175 (1981):

ND Illinois reversed by CAFC

The outcome

Because we conclude that claims 1, 5, and 15 of CGI’s
U.S. Patent No. 7,224,275 (’275 patent) are directed to an
abstract idea and therefore patent-ineligible, we reverse
the district court’s JMOL decision with respect to the ’275
patent on 35 U.S.C. § 101 grounds. We affirm the jury’s
verdict with respect to its finding of no anticipation of
claims 14, 17, and 18 of CGI’s U.S. Patent No. 7,635,966
(’966 patent) by U.S. Patent No. 6,484,784 (Weik). Accordingly, we vacate the district court’s injunction and its
awards of enhanced damages and attorney fees, and remand to the district court for reconsideration of enhanced
damages and attorney fees with respect to only the ’966 patent.

Arthrex loses at CAFC

Of note:

Arthrex first contends that the Board impermissibly
relied on a new theory of motivation to combine in its final
written decision. As we have often explained, IPR proceedings are
formal administrative adjudications subject to the
procedural requirements of the APA. See, e.g., Dell Inc. v.
Acceleron, LLC, 818 F.3d 1293, 1298 (Fed. Cir.
2016); Belden, 805 F.3d at 1080. One of these requirements is that
“‘an agency may not change theories in midstream without giving respondents reasonable notice of the
change’ and ‘the opportunity to present argument under
the new theory.’” Belden, 805 F.3d at 1080 (quoting Rodale
Press, Inc. v. FTC, 407 F.2d 1252, 1256–57 (D.C. Cir.
1968)); see also 5 U.S.C. § 554(b)(3). Nor may the Board
craft new grounds of unpatentability not advanced by the
petitioner. See In re NuVasive, Inc., 841 F.3d 966, 971–72
(Fed. Cir. 2016); In re Magnum Oil Tools Int’l, Ltd.,
829 F.3d 1364, 1381 (Fed. Cir. 2016).


In any event, even if Arthrex’s patent had issued prior
to the passage of the AIA, our court recently rejected arguments similar to Arthrex’s in Celgene Corp. v. Peter.
No. 18-1167, 2019 WL 3418549, at *12–16 (Fed. Cir.
July 30, 2019). As we explained, pre-AIA patents issued
subject to both district court and Patent Office validity proceedings. Though IPR differs from these existing proceedings, we held that the differences between IPRs and the
district court and Patent Office proceedings that existed
prior to the AIA are not so significant as to “create a constitutional issue” when IPR is applied to pre-AIA patents.
Id. at *15; see also id. at *12 & n.13 (affirming that our
prior decisions ruling that retroactive application of reexamination does not violate the Fifth Amendment, the Seventh Amendment, or Article III “control the outcome” of
similar challenges to IPR).


The outcome:

Alison appeals the
Commission’s final determination that certain claims of
the ’359 patent are not indefinite based on their use of the
term “lofty . . . batting.” Alison also challenges the Commission’s
final determination that certain claims of the
’359 patent are not invalid on anticipation and obviousness
grounds. Because the written description of the ’359 patent
informs the meaning of “lofty . . . batting” with reasonable
certainty, we affirm the Commission on the indefiniteness
ground. And because we conclude that the Commission’s
factual findings are supported by substantial evidence, we
also affirm the Commission on the anticipation ground
without reaching the subsidiary obviousness ground.

Of interest:

We now turn to the Commission’s anticipation and obviousness determinations. The Commission affirmed the
ALJ’s initial determination that claims 1, 7, and 9 of the
’359 patent are not anticipated by Ramamurthi. The Commission also affirmed the ALJ’s separate determination
that claim 9 is not anticipated by and would not have been
obvious over Ramamurthi. We affirm the Commission on
the anticipation ground without reaching the subsidiary
obviousness ground.


We are not persuaded that the Commission’s determination is unsupported by substantial evidence.
Substantial evidence review must be guided by the applicable
substantive evidentiary standard. See Checkpoint Sys.,
54 F.3d at 761 n.5. Here, Alison bore the elevated burden
of clearly and convincingly proving that the “glass wool” or
another fiber of Ramamurthi necessarily presents the properties of a “lofty . . . batting.”
See Rosco, 304 F.3d at 1380;
see also Motorola Mobility, LLC v. Int’l Trade Comm’n,
737 F.3d 1345, 1350 (Fed. Cir. 2013) (holding that “substantial evidence supports the Commission’s conclusion
that Motorola did not present clear and convincing evidence that the operating system necessarily required any
additional capacity”). The ’359 patent itself expressly discusses and distinguishes Ramamurthi,
which was also considered by the patent examiner during prosecution and
later by the Board in denying Alison’s IPR petition. Arguments and references already considered by the Patent Office may carry less weight with the fact finder. Sciele
Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1260 (Fed. Cir.
Aspen’s expert, furthermore, rebutted Alison’s expert testimony with detailed testimony supported by industry references.5 Alison’s expert, for his part, merely
presented a photo of glass wool pulled from a Wikipedia
article, which he identified as lofty without any supporting
analysis or testing.


The Commission also affirmed the ALJ’s separate determination that claim 9 is not anticipated by and would
not have been obvious over Ramamurthi. Claim 9 depends
from claim 1 and additionally recites a specific range of dopant that the parties agree is not expressly disclosed in
Ramamurthi. On appeal, Alison asserts that the recited
range is inherently disclosed by or would have been obvious
over Ramamurthi’s disclosure. Because we affirm the
Commission’s determination that the “lofty . . . batting”
limitation of claim 1 is not expressly or inherently disclosed
by Ramamurthi, we need not reach this separate ground
for claim 9.

Tuesday, August 13, 2019

Iridescent Networks loses appeal at CAFC

The outcome was affirmance of an ED Texas claim construction; defendants win:

Iridescent Networks, Inc. sued AT&T Mobility, LLC
and Ericsson Inc. in the U.S. District Court for the Eastern
District of Texas for infringement of U.S. Patent
No. 8,036,119. Following claim construction, the parties
jointly stipulated to noninfringement, and the district
court entered judgment in favor of AT&T Mobility, LLC
and Ericsson Inc. Iridescent Networks, Inc. appeals on the
ground that the district court erred in its construction of
the term “high quality of service connection.” Because the
district court correctly construed this term, we affirm.

The claim construction went back to the opinion of a

Iridescent subsequently objected to the magistrate
judge’s construction, raising the same arguments it renews
on appeal. Iridescent Networks, Inc. v. AT&T Mobility,
LLC, No. 6:16-CV-01003, 2017 WL 10185852, at *1–3 (E.D.
Tex. Dec. 1, 2017) (“Order Adopting Constructions”). The
district judge overruled Iridescent’s objections,
determining that the magistrate judge’s construction was not clearly
erroneous or contrary to law. Id. at *3.

[Note the proper terminology is that of
overruling and objection.]

Of standards of review:

Whether a district court’s construction of a claim is correct presents
a legal question that we review de novo. InfoHold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262,
1265 (Fed. Cir. 2015). We review underlying factual findings related to extrinsic evidence for clear error. E.I. du
Pont De Nemours & Co. v. Unifrax I LLC, 921 F.3d 1060,
1067 (Fed. Cir. 2019). When claim construction is based
solely upon intrinsic evidence, as in this case, our review is
de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct.
831, 841 (2015).

Claim construction seeks to ascribe the meaning to a
claim term as understood by a person of ordinary skill in
the art at the time of invention. Phillips v. AWH Corp., 415
F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). The meaning of a term
“must be considered in the context of all the
intrinsic evidence, including the claims, specification, and
prosecution history.” Biogen Idec, Inc. v. GlaxoSmithKline
LLC, 713 F.3d 1090, 1094 (Fed. Cir. 2013) (citing Phillips,
415 F.3d at 1314).

The issue here:

This appeal turns on whether the term “high quality of
service connection” is a term of degree that is limited to the
minimum connection parameter requirements disclosed in
Figure 3 of the ’119 patent. We conclude that it is.


Iridescent argues that the term “high quality of service
connection” is a mere requirement that the connection assure
the level of quality that meets the service parameter
needs of a particular service or application.

Of disavowal:

We have
explained that “[a]ny explanation, elaboration, or qualification
presented by the inventor during patent examination is relevant,
for the role of claim construction is to
‘capture the scope of the actual invention’ that is disclosed,
described, and patented.” Fenner Invs., Ltd. v. Cellco
P’ship, 778 F.3d 1320, 1323 (Fed. Cir. 2015) (quoting Retractable Techs.,
Inc. v. Becton, Dickinson & Co., 653 F.3d
1296, 1305 (Fed. Cir. 2011)); see also Aptalis Pharmatech,
Inc. v. Apotex Inc., 718 F. App’x 965, 971 (Fed. Cir. 2018)
(relying on the prosecution history to inform a claim construction
analysis without finding a disavowal of claim
scope). Although the prosecution history may not in some
cases be as clear a guide as the specification, it nonetheless
“can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention
and whether the inventor limited the invention in the
course of prosecution, making the claim scope narrower
than it would otherwise be.” Phillips, 415 F.3d at 1317

The hazards of coined terms

The question here, however, is not whether Iridescent narrowed
the scope of the disputed term during prosecution
from its full ordinary and customary meaning. Rather,
because the disputed term is a coined term, meaning it has
no ordinary and customary meaning, the question is
whether the intrinsic evidence provides objective boundaries to the scope of the term. Interval Licensing LLC v.
AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). In these
circumstances, where there is no clear ordinary and customary meaning of a coined term of degree, we may look to
the prosecution history for guidance without having to first
find a clear and unmistakable disavowal.

Of enablement rejections

Iridescent argues that unlike an indefiniteness rejection,
an enablement rejection is not issued “to force the applicant to define the metes and bounds of the claim.”
Appellant’s Br. 27. This is not correct. It is long-settled
that “[e]nablement serves the dual function in the patent
system of ensuring adequate disclosure of the claimed invention
and of preventing claims broader than the disclosed invention.
This important doctrine prevents both
inadequate disclosure of an invention and overbroad claiming that
might otherwise attempt to cover more than was
actually invented.” MagSil Corp. v. Hitachi Glob. Storage
Techs., Inc., 687 F.3d 1377, 1380–81 (Fed. Cir. 2012) (internal citation omitted);
see also Nat’l Recovery Techs., Inc. v.
Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195–96
(Fed. Cir. 1999). Thus, Iridescent’s statements made to
overcome the examiner’s enablement rejection inform the
claim construction analysis by demonstrating how Iridescent understood the scope of the disputed term.

Of the word "high"

Iridescent also argues that this court’s precedent forecloses
limiting the term “high” to numerical values. We
disagree. In each case on which Iridescent relies, this court
concluded that importing numerical limits into the independent claim
at issue would have rendered a dependent
claim meaningless. See Honeywell Int’l Inc. v. Universal
Avionics Sys. Corp., 488 F.3d 982, 993–94 (Fed. Cir. 2007);
In re Cruciferous Sprout Litig., 301 F.3d 1343, 1348–49
(Fed. Cir. 2002); Am. Seating Co. v. USSC Grp., Inc., 91 F.
App’x 669, 676 (Fed. Cir. 2004). That is not a concern here.
Additionally, in American Seating, the claim language itself defined
the disputed term. 91 F. App’x at 675. By contrast, the claims here provide no clear meaning or
definition of “high quality of service connection.”