Wednesday, February 02, 2005

IEX v Blue Pumpkin: another district court claim construction shot down

In the non-precedential IEX v. Blue Pumpkin Sotware, the CAFC shot down another district court claim construction. [2005 U.S. App. LEXIS 1628; CAFC opinion by Judge Clevenger]

The CAFC emphasized that the claims define the invention, citing to the old Supreme Court case Altoona Publix, 294 US 477, 487 (1935) and emphasized that claim terms are generally given their accustomed meaning, citing to the more recent CAFC case Innova/Pure Water, 381 F3d 1111 (CAFC 2004)[which also has text showing that claims define the invention]. The idea that the claims, rather than the specification, define the invention is relevant to arguments in patent reform proposed by Quillen and Webster, which arguments rely on a specification-centric view of the invention in arguing that continuing applications reflect repeated attempts to obtain the same invention.

Note that the CAFC also got into the "patentee as lexicographer" issue [recall Merck v. Teva and Judge Rader), citing Day v. Reeves, 260 F3d 1343 (CAFC 2001). The CAFC also noted that patent scope is not limited to preferred embodiments, citing Cordis, 339 F3d 1352.

From Blue Pumpkin:

Because "it is the claims of the patent which define the invention,"
Altoona Publix Theatres v. Am. Tri-Ergon Corp., 294 U.S. 477, 487, 79 L. Ed. 1005, 55 S. Ct. 455, 1935 Dec. Comm'r Pat. 785 (1935), in construing the claims we look first and foremost to the claim language, see Rexnord, 274 F.3d at 1341. While the terms of the patent claims are generally accorded their ordinary and accustomed meaning to one of ordinary skill in the relevant art, see Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004), we must also examine the remaining intrinsic evidence-- the rest of the specification and the prosecution history--" to determine whether the patentee has set forth an explicit definition of a term contrary to its ordinary meaning, has disclaimed subject matter, or has otherwise limited the scope of the claims," Day Int'l, Inc. v. Reeves Bros., Inc., 260 F.3d 1343, 1348 (Fed. Cir. 2001). With these claim construction principles in mind, we begin with the district court's treatment of "skill group."

Additionally, this is another case wherein the district court did not fully articulate its reasons for holding a certain way.

The CAFC stated in conclusion:

In conclusion, the district court erred in relying on incorrect claim constructions in granting Blue Pumpkin's motion for summary judgment, though the extent to which it did so is not entirely clear from the Magistrate Judge's recommendation or the district court's memorandum adopting that recommendation. The district court also did not fully articulate its reasons for rejecting IEX's expert evidence, particularly that from Mr. McAlexander. Accordingly, we vacate the district court's grant of summary judgment in favor of Blue Pumpkin and remand for further consideration in light of the claim constructions set forth in this opinion. We also reinstate and remand Blue Pumpkin's invalidity, unenforceability and attorney's fees claims.

Recall the words of the Third Circuit in Caprio v. Bell Atlantic, 2004 U.S. App. LEXIS 14101,

In fact, notwithstanding the foregoing statement, the court did not indicate, following the appellees' renewal of their motion for summary judgment, exactly what standard of review it was using, though it had considered this point preliminarily in its May 31, 2002 opinion. Moreover, it never said at any time that CORE "did not abuse its discretion in denying Caprio's appeals . . . ." Indeed, as appellees acknowledge, the court did not render any opinion when it granted summary judgment. Rather, it simply entered orders granting appellees' motion, denying Caprio's motion, and granting a judgment in favor of the appellees, following which Caprio appealed.


The fact is that we are not certain whether the district court granted summary judgment for appellees through the application of Firestone with or without our refinement of that case in Pinto. Moreover, whatever standard the court followed, we do not know the reasoning that led it to grant the appellees' motion for summary judgment. Thus, we will vacate the orders of the district court entered on April 1, 2003, and remand the case to that court for further proceedings. In those proceedings the court may revisit its substantive decision granting appellees summary judgment if it concludes that it would be appropriate to do so.
We regret that the consequence of our disposition is to put the parties to additional expense which they fairly may attribute to the district court's failure to conform to our directions in Vadino. Accordingly, in order that the procedural oversight here not be replicated, we point out that in future cases in which district courts overlook the procedure we set forth in Vadino the parties should not hesitate to bring that case to the court's attention.
We make this suggestion even though we can understand why parties might be wary of advising a district court of its oversight, and we do not require that they do so. Yet we note that our suggestion is consistent with requirements in other situations that parties bring procedural requirements to a court's attention if it should overlook them. Thus, Federal Rule of Civil Procedure 24(c) provides that when the constitutionality of any act of Congress or statute of a State affecting the public interest is drawn in question in an action in which the United States or the State or any agency, officer, or employee thereof is not a party, the court shall notify the Attorney General of the United States or the State's attorney general, depending upon the statute implicated, as provided by 28 U.S.C. § 2403, so that he or she may intervene on the question of constitutionality. It further provides that the party challenging the constitutionality of the legislation "should call the attention of the court to its consequential duty." Similarly, under some case law when a party following trial moves for judgment as a matter of law and, in the alternative, moves for a new trial, it should notify the court of the need for it to make a contingent ruling on the motion for a new trial if it grants the judgment as a matter of law but does not rule on the motion for a new trial. See Lowenstein v. Pepsi-Cola Bottling Co. of Pennsauken, 536 F.2d 9, 12 n.8 (3d Cir. 1976); Arenson v. Southern Univ. Law Ctr., 43 F.3d 194, 196 (5th Cir. 1995). Indeed, if the party does not notify the court of this procedural requirement it may lose the possibility of obtaining a new trial if the judgment as a matter of law in its favor is reversed. See Lowenstein, 536 F.2d at 12 n.8.
In closing we point out that we have not overlooked our authority to retain jurisdiction as we did in Forbes after we remanded that case to the district court to specify the material facts in issue which precluded the court from granting the defendants' motion for summary judgment in a 42 U.S.C. § 1983 action on the basis of qualified immunity. Forbes, 313 F.3d at 151. If we retained jurisdiction, we then could determine the matter without a new appeal being filed following the remand, perhaps after additional briefing. We have determined, however, not to retain jurisdiction because we have authorized the court to revisit its decision on the merits and thus it is conceivable that the court's outcome on remand could be different from that which it reached previously. Moreover, it is possible that the disappointed party, after considering the court's explanation for its determination, may not wish to pursue the matter further. n2


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