Monday, January 24, 2022


The CAFC vacated an ITC decision:

Kyocera Senco Industrial Tools Inc. and Koki Holdings America Ltd. each appeal from an International Trade Commission decision. See Certain Gas Spring Nailer Prods. & Components Thereof, Inv. No. 337-TA-1082, 2020 WL 2093834 (Apr. 28, 2020) (Commission opinion). For the following reasons, we vacate and remand.

There was a claim construction issue.

We review claim construction de novo and review any subsidiary factual findings based on extrinsic evidence for substantial evidence. Cisco Sys., Inc. v. Int’l Trade Comm’n, 873 F.3d 1354, 1360 (Fed. Cir. 2017). Claim terms are generally given their plain and ordinary meaning, which is the meaning one of ordinary skill in the art would ascribe to a term when read in the context of the claim, specification, and prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1313–14 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “To act as its own lexicographer, a patentee must clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning” and must “clearly express an intent to redefine the term.” Id. (internal quotation marks omitted). B Acting as their own lexicographers, the patentees defined “driven position”: Referring now to FIG. 3, the piston is depicted at its bottom-most travel position, and in this configuration, the displacement volume 76 and the main storage chamber 74 are at their largest combined volumes, while the cylinder venting chamber 94 is at its minimum volume. This bottom position is also sometimes referred to herein as the “driven position.” ’296 patent at 12:56–61 (emphasis added). Nothing about this statement suggests the “bottom position” is merely an example of a driven position. It is the driven position. Nor does “this bottom position” refer back to “this configuration.” Most naturally, “this bottom position” refers back to the only prior mention of the word bottom—the “bottommost travel position.” As the bottom-most travel position, this location must be a single position. The surrounding written description language supports this interpretation.

Of a 112 6 issue

The “lifter member” limitation does not use the word means, so there is a presumption that § 112 ¶6 does not apply. But because that claim term does not recite sufficiently definite structure, that presumption has been overcome. A person of ordinary skill in the art would not understand the claimed “lifter member” to have “a sufficiently definite meaning as the name for a structure.” See Williamson, 792 F.3d at 1349. That phrase, alone, does not connote structure. It is a non-structural generic placeholder (member) modified by functional language (lifter). See, e.g., Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206, 1214–15 (Fed. Cir. 1998) (holding “movable link member” was subject to § 112 ¶ 6). Indeed, no party claims lifter member has a plain and ordinary meaning to those skilled in the art. See J.A. 247 (finding no such meaning exists).
(...) Nothing in the written description provides a clear and unambiguous definition of “lifter member.” See MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1342 (Fed. Cir. 2019) (explaining lexicography can avoid application of § 112 ¶ 6). At various points, the written description provides examples of a “lifter member.” For example, it explains that “the rotary-to-[linear ]lifter 100 is also sometimes referred to herein as a lifter member, or simply as a lifter.” ’718 patent at 8:50–52 (quotation marks omitted); see also id. at 21:26–28. But each of these passages provides an example of a lifter member, rather than a definition of the lifter member. There is no lexicography. And the parties have not identified other language in the written description that indicates § 112 ¶ 6 should not apply to the claimed “lifter member.” For these reasons, § 112 ¶ 6 applies to the “lifter member” limitation, and it must be construed to cover only “the structure, materials, or acts described in the specification as corresponding to the claimed function and equivalents thereof.” Williamson, 792 F.3d at 1347 (quoting § 112 ¶ 6). Because the parties have not thoroughly briefed what structures correspond to the claimed “lifter member,” we leave that question for the Commission on remand.


Though Koki frames this as a failure-of-proof argument, [see GB16,] we view it as an issue of claim construction. Koki focuses on the meaning of the claims, not the evidence presented below. Thus, we begin with the Commission’s argument that Koki did not preserve its claim construction arguments. Because Koki is “clarifying or defending the original scope of its claim construction,” we see no issue with considering the merits of its arguments on appeal. Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1346 (Fed. Cir. 2001) (declining to apply waiver). Below, the parties agreed to a plain-and-ordinary-meaning construction. And Koki forwarded its understanding of that meaning to the ALJ, Commission, and now to us on appeal.10 Thus, Koki has not failed to preserve its arguments on appeal.

On the rule of waiver, from Interactive Gift:

The legal doctrine of waiver applies to a number of situations. The doctrine of waiver that we are concerned with in this case relates to preserving an issue for appeal. The Supreme Court has stated that "[i]t is the general rule, of course, that a federal appellate court does not consider an issue not passed upon below." Singleton v. Wulff, 428 U.S. 106, 120, 96 S.Ct. 2868, 49 L.Ed.2d 826 (1976); see 19 James Wm. Moore et al., Moore's Federal Practice § 205.05, at 205-55 (3d ed. 1997) ("It is a long-standing rule that, in order to be reviewable on appeal, a claim or issue must have been `pressed or passed upon below.'"). This is because appellate courts are courts of review and "[n]o matter how independent an appellate court's review of an issue may be, it is still no more than that — a review." Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1426, 44 USPQ2d 1103, 1108 (Fed. Cir. 1997). Appellate courts are, however, given the discretion to decide when to deviate from this general rule of waiver. Singleton, 428 U.S. at 121, 96 S.Ct. 2868 ("The matter of what questions may be taken up and resolved for the first time on appeal is one left primarily to the discretion of the courts of appeals, to be exercised on the facts of individual cases. We announce no general rule. Certainly there are circumstances in which a federal appellate court is justified in resolving an issue not passed on below, as where the proper resolution is beyond any doubt, or where injustice might otherwise result." (citations and internal quotations omitted)); see 19 Moore et al., § 205.05, at 205-57 to -58 ("the rule [of waiver] is prudential and may be disregarded as justice requires"). This court has enumerated a variety of reasons that might justify such a deviation. L.E.A. Dynatech, Inc. v. Allina, 49 F.3d 1527, 1531, 33 USPQ2d 1839, 1843 (Fed. Cir. 1995) (stating the following five reasons that could justify an appellate court's consideration of an issue not presented below, but finding none of them applicable: "(i) the issue involves a pure question of law and refusal to consider it would result in a miscarriage of justice; (ii) the proper resolution is beyond any doubt; (iii) the appellant had no opportunity to raise the objection at the district court level; (iv) the issue presents significant questions of general impact or of great public concern; or (v) the interest of substantial justice is at stake" (internal quotations and brackets omitted)); see Cemex, S.A. v. United States, 133 F.3d 897, 902 (Fed. Cir. 1998) (interpreting L.E.A. as providing justifications that would allow, but not necessarily require, an appellate court's consideration of an argument not presented to the trial court); cf. 19 Moore et al., § 205.05, at 205-58 ("A circuit court will disregard the rule [of waiver] in compelling circumstances, such as . . . a serious issue of public policy, a change in the law, or for error that works manifest injustice. This is particularly so if the issue has been fully briefed, if the issue is a matter of law or the record is complete, if there will be no prejudice to any party, and if no purpose is served by remand to the district court."); accord Becton Dickinson Co. v. C.R. Bard, Inc., 922 F.2d 792, 800, 17 USPQ2d 1097, 1103 (Fed. Cir. 1990) (stating that waiver, in the context of arguments that are not raised in the opening appeal brief, is "not governed by a rigid rule but may as a matter of discretion not be adhered to where circumstances indicate that it would result in basically unfair procedure").


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