Thursday, March 22, 2018

CAFC discusses claim construction, claim differentiation in Cave Consulting

The Cardinal Chemical case is cited in Cave Consulting :

We conclude that the district court erred in its construction
of “weighted episode of care statistics,” which
resulted in an erroneous finding of infringement based on
undisputed facts. As such, we need not evaluate Optum’s
challenge to the damages determination, which is now
moot. Moreover, because the issue of invalidity under
§ 102(b) and (g) were raised only as affirmative defenses
and because neither party is seeking an adjudication on
those issues in case of a finding of noninfringement, we do
not reach the invalidity issues under § 102(b) or (g). See
Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 99–
102 (1993). As the Supreme Court noted in Cardinal
Chemical, “[a]n unnecessary ruling on an affirmative
defense is not the same as the necessary resolution of a
counterclaim for a declaratory judgment.” Id. at 93–94.
Invalidity was not raised here as a counterclaim.

Furthermore, because our construction of the
“weighted episode of care statistics” limitation is dispositive
of the infringement issue based on undisputed facts,
we need not discuss the proper construction of the “determining
eligible physicians and episode of care assignments”
limitation, or whether Optum has waived its claim
construction argument for that limitation, as Cave has

Of the claim construction matter

Optum argues that the district court erred in its claim
construction because this limitation when read in light of
the specification excludes direct standardization. Optum
contends that the patentee distinguished his invention
from, and disparaged the prior art methods that use,
direct standardization, and repeatedly referred to his
invention as using indirect standardization. Optum notes
that at the time of filing, the specification, including the
original claims, did not purport to claim direct standardization
as part of the invention, and that only after five
years following the filing date, did the patentee add
dependent claims reciting “direct standardization.”
According to Optum, the district court erred in relying on
these later-added dependent claims in construing the
independent claims. Optum further argues that the
district court’s construction cannot stand because, if the
claim limitation is interpreted to include direct standardization,
it would lack adequate written description.

The CAFC noted:

In reaching the conclusion that the claim
limitation should include direct standardization, however,
the district court’s only support was from the dependent
claims, based on the reasoning that the court should
Claim language is not read in isolation. Phillips, 415
F.3d at 1315. Here, the claim limitation when read in
light of the specification elucidates the meaning of the
claim language as used by the patentee. As both parties
agree, the ’126 patent describes its method as one that
employs indirect standardization. Cave characterizes this
undisputed fact as the patent’s description of merely one
embodiment, presumably one out of many. However, this
contention is unpersuasive. The patent in its specification
affirmatively limits its method to one that uses one particular
technique, namely, indirect standardization, as
opposed to another used in prior art methods.
Cave does not identify, nor do we find, any indication
in the ’126 patent’s description that its invention employs
direct standardization, and, other than the dependent
claims, Cave’s support for including direct standardization
comes exclusively from the description of the prior art
methods in the background section. See Appellee’s Br.
31–32. Indeed, the ’126 patent repeatedly and consistently
describes that the calculation of “weighted episode
statistics” according to its method uses indirect standardization.
’126 patent col. 92 ll. 39–41, col. 93 ll. 12–14, 31–
35. Moreover, the patent’s distinguishing its method that
uses indirect standardization from the purportedly errorgenerating
prior art methods that use direct standardization
further demonstrates that the scope of this
“weighted” feature of the invention is affirmatively limited
to indirect standardization.

Of disavowal:

Cave’s argument that finding a disclaimer through a
“clear and unmistakable” disavowal is required for Optum’s
argument to prevail is also unpersuasive. Contrary
to Cave’s contention, although “[i]n general, statements
about the difficulties and failures in the prior art, without
more, do not act to disclaim claim scope,” Retractable
Techs., 653 F.3d at 1306 (emphasis added), “[o]ur case law
does not require explicit redefinition or disavowal” when
the description itself is affirmatively limiting, Trs. of
Columbia Univ. in City of N.Y. v. Symantec Corp., 811
F.3d 1359, 1363 (Fed. Cir. 2016). Here, the specification
does more than discuss certain disadvantages of the prior
art methods. It distinguishes its invention from them,
particularly pointing out what the invention does not use.
Thus, we conclude that a finding of a disclaimer is not
correct when, as here, the description of the invention
itself is affirmatively limiting, and is without any indication
that direct standardization is within the scope of the

Of canons:

Canons of claim construction, such as
the doctrine of claim differentiation and the canon of
interpreting claims to preserve their validity, are not
absolute. See, e.g., Howmedica Osteonics Corp. v. Zimmer,
Inc., 822 F.3d 1312, 1323 (Fed. Cir. 2016) (noting
that the doctrine of claim differentiation merely creates “a
rebuttable presumption that may be overcome by a contrary
construction dictated by the written description or
prosecution history”) (citation omitted). Although generally
not dispositive, the fact that the dependent claims
relied upon by Cave were added after the filing of the
original application is significant here. It is true that the
written description and the originally filed claims are part
of the specification. In re Koller, 613 F.2d 819, 823 (CCPA
1980). And, had the originally filed application, including
the original claims, in any way indicated that its invention
included direct standardization, the later-added
dependent claims specifically claiming “direct standardization”
could have lent support to Cave’s contention that
the independent claims cover direct standardization.
However, in view of the specification’s consistently limiting
description, we conclude that these interpretive
canons, despite the later-added dependent claims, cannot
overcome the claim scope that is unambiguously prescribed
by the specification.


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