Federal Circuit holds that functional claim limitations can have a functional construction that does not specify the physical boundaries of such limitations.
The Federal Circuit, in Vascular Solutions LLC v. Medtronic, Inc., 2024-1398 (Fed. Cir. Sept. 2024), clarified that a claim term meant to achieve a certain function can be interpreted to have a functional meaning without defining the boundary of the term. Additionally, the Court reiterated that claim construction should be done on a claim-by-claim basis with recognition that each independent claim outlines a different arrangement of claim limitations. This case highlights the importance and complexity of construing claim terms in a manner that is cohesive with all claim combinations within large patent families.
Background: Vascular Solutions LLC, Teleflex LLC and others (“Teleflex”) sued Medtronic, Inc. and others (“Medtronic”) for infringement of 40 claims across seven patents that included, in part, U.S. Patent No. 8,048,032 (the ’032 patent) and U.S. Patent No. RE45,776 (the ’776 patent). The claims were directed to a “coaxial guide catheter that is deliverable through standard guide catheters by utilizing a guidewire rail segment.” Claim 11 of the ’032 Patent recited in part, “a substantially rigid portion proximal of and connected to, and more rigid along a longitudinal axis than, the flexible tip portion,” and claim 13 of the ’032 Patent recited in part “wherein the substantially rigid portion further includes a partially cylindrical portion defining an opening….” (Emphasis added.) In contrast, claim 25 of the ’776 Patent recited in part, “a substantially rigid segment; a tubular structure defining a lumen and positioned distal to the substantially rigid segment; and a segment defining a partially cylindrical opening positioned between a distal end of the substantially rigid segment and a proximal end of the tubular structure ….” (Emphasis added.) In finding that the all the asserted claims were indefinite, the DC held “that no viable construction [of the boundary] of [the] ‘substantially rigid portion’ is possible….” This was largely due to the DC’s conclusion that the asserted claims fit into two groups that were “mutually exclusive,” one group having a side opening within the substantially rigid portion of the device, and the other having a side opening outside of the substantially rigid portion.
Holding : On appeal, Teleflex argued that the DC erred by concluding that “the boundary of the ‘substantially rigid portion’ must be the same for all claims.” The CAFC agreed and reasoned that (1) claim construction should be conducted “on a claim-by-claim basis” and “the claims are not necessarily ‘mutually exclusive’ since each independent claim is a different ordered combination of limitations” and (2) while claim terms must be “construed the same way across the patents,” the “substantially rigid portion,” a functional limitation, can have an inconsistent boundary across the claims as long as “the portion/segment of the catheter [maintains] the substantial rigidity to achieve some function – in this case, the function of allowing the device to be advanced within the guide catheter.”
https://www.lernerdavid.com/news-successes/case-clips/-federal-circuit-holds-that-functional-claim-limitations-can-have-a-functional-construction-that-does-not-specify-the-physical-boundaries-of-such-limitations
Federal Circuit Reviewed the District Court’s Decision Invalidating Asserted Claims as Ineligible Subject Matter Under § 101
In Contour IP Holding LLC v. GoPro, Inc., 2022-1654, 2022-1691 (Fed. Cir. Sept. 9, 2024), the Federal Circuit reviewed the district court’s decision invalidating asserted claims as ineligible subject matter under §101. Under the first step in Alice the district court characterized representative claim 11 as directed to the abstract idea of “creating and transmitting video (at two different resolutions) and adjusting the video's settings remotely.” The Court reversed and remanded, finding the district court impermissibly characterized the claim at a high level of generality and that claim 11 was directed to a specific means of improving technology (parallel data stream recording with low-quality recording wirelessly transferred to a remote device) and not just directed to an end result. Thus, the inquiry should have ended at step one of Alice.
Background: Contour owns U.S. Patent Nos. 8,890,954 (“‘954”) and 8,896,694 (“‘694”) (a continuation) relating to hands-free, portable, point-of-view (“POV”) cameras that allows the user to send real-time information to a remote device, such as a cellphone. In 2015, Contour sued GoPro, alleging that several GoPro products infringed its patents, and in 2021, Contour filed a second suit against GoPro’s newer products. After the district court granted partial summary judgment that GoPro’s accused products infringed claim 11 of the ‘954 Patent, GoPro challenged claim 11 and claim 3 of the ‘694 Patent under §101.1 The district court eventually agreed with GoPro, characterizing representative claim 11 as directed to the abstract idea of “‘creating and transmitting video (at two different resolutions) and adjusting the video’s settings remotely’” in step one of Alice.
Holding: The Federal Circuit reversed and remanded. The Federal Circuit (CAFC) held that the district court erred in characterizing the claims in an impermissibly high level of generality when conducting the §101 analysis under Alice. More particularly, the District Court erred in disregarding the disclosed technological means for obtaining a technological result. The CAFC held the claims as reciting patent eligible subject matter at Alice step one because: 1) claims were directed to a technological solution to a technological problem; 2) the written description discloses improving POV camera technology through specific means; and 3) the claims reflected this improvement.
https://www.lernerdavid.com/news-successes/case-clips/-federal-circuit-reviewed-the-district-court-s-decision-invalidating-asserted-claims-as-ineligible-subject-matter-under-101
Federal Circuit Holds that a Claim Containing Both a Broad Limitation and a Narrower Limitation Within the Broad Limitation Is Not Indefinite, So Long as It Is Possible to Satisfy Both the Broad and Narrow Requirements
In Maxell, Ltd. v. Amperex Ltd., the Federal Circuit held that a claim initially reciting (i) “at least one” of a Markush group of several transition metals including cobalt, and later reciting (ii) a nonzero amount of cobalt, was not indefinite. Specifically, the Federal Circuit found that, while contradictory claim limitations may be indefinite, the two claim limitations at issue were not contradictory because it is possible to meet both requirements if cobalt is used. The Federal Circuit explained that “[c]laim limitations do not grant options. They state requirements – conditions that must be met for a product or process to come within the claim’s protected zone…If there are two requirements, and it is possible to meet both, there is no contradiction.”
Background: Maxell owns U.S. Patent No. 9,077,035 (the ‘035 patent) for a rechargeable lithium-ion battery including a positive electrode active material. Amperex sought declaratory judgment for non-infringement of several Maxwell patents, including the ‘035 patent. In response, Maxwell sued Amperex for infringement of the ‘035 patent. Claim 1 requires that, in the formula for the cathode active material, “M1 represents at least one transition metal element selected from Co, Ni and Mn” and, later on, that “the content of Co in the transition metal M1 of the formulae (1) and (2) is from 30% by mole to 100% by mole.” The later claim limitation was added during prosecution in response to a reference that disclosed a high nickel content in the positive electrode active material. This case is an appeal from the Western District of Texas. The District Court held that the Markush group and later claim limitation were contradictory because the Markush group does not require cobalt and the later claim limitation does require cobalt. Therefore, the District Court held that Claim 1 was indefinite.
Holding: The Federal Circuit reversed the District Court’s holding. While the Federal Circuit recognized that contradictory claim limitations can be indefinite, it held that the two claim limitations at issue were not contradictory. The District Court found contradiction between the limitations because it viewed the first limitation as “granting ‘options’” which the second limitation then took away. The Federal Circuit held that this view of claim limitations is incorrect, explaining that “[c]laim limitations do not grant options. They state requirements – conditions that must be met for a product or process to come within the claim’s protected zone…If there are two requirements, and it is possible to meet both, there is no contradiction.” Because it is possible to meet both requirements of the claim at issue (i.e. if cobalt is used as at 30-100 mol%) the Federal Circuit held that, under the correct analysis, there is no contradiction in the claim. The Federal Circuit emphasized that this analysis is consistent with the time-honored concept of using dependent claims to further narrow broader limitations present in an independent claim. While Amperex argued that the requirement of Co should have been incorporated into the initial definition of M1, the Federal Circuit found that “[i]t makes no difference . . . that the two requirements are placed in separate limitations—rather than both appearing in limitation” and “[t]hat there were other ways of drafting the claim does not render the claim language contradictory or indefinite.”
https://www.lernerdavid.com/news-successes/case-clips/federal-circuit-holds-that-a-claim-containing-both-a-broad-limitation-and-a-narrower-limitation-within-the-broad-limitation-is-not-indefinite-so-long-as-it-is-possible-to-satisfy-both-the-broad-and-narrow-requirements
USPTO Provides Updated Guidance on Obviousness Determinations
In May of 2024, the United States Patent and Trademark Office (USPTO) issued guidance (the “Guidance”) outlining what is required when making an obviousness determination under 35 U.S.C. § 103 in view of the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 US 398 (2007) (KSR). The Guidance does not introduce any shifts in the USPTO’s approach to determining obviousness, but instead reiterates the flexible approach required when making obviousness determinations in view of KSR.
In its KSR decision, the Supreme Court reaffirmed the use of the Graham factors and the secondary considerations but introduced more flexibility into the overall obviousness evaluation framework. The Guidance focuses on two aspects of KSR in light of the Federal Circuit’s continued refinement of obviousness determinations: (1) flexibility in understanding the scope of the prior art, and (2) flexibility regarding the motivation to combine the prior art.
Understanding the Scope of Prior Art
The Guidance emphasizes that KSR clarified that a person having ordinary skill in the art (PHOSITA) possesses common sense and may glean suggestions from the prior art outside of the art’s focus. That is, the scope of the prior art is not necessarily limited to its direct disclosures but extends to all that it reasonably suggests. The Guidance explains that even if a prior art reference lacks a specific teaching, a finding of obviousness based on the prior art can be supported when the deficiency of the prior art can be addressed with common sense, common knowledge of the art, or common knowledge generally. The Guidance also reiterates that when evaluating the scope of the prior art, a PHOSITA’s ordinary creativity should be taken into account.
Providing a Reason to Modify the Prior Art
The Guidance explains that KSR provides flexibility in how an obviousness determination can be supported. While a reasoned explanation that supports a determination of obviousness is still required, the rationale for supporting the obviousness determination need not be rigid or formalistic and can be based on implicit or explicit reasons. For instance, reasons for determining obviousness can include reasons such as (1) market forces, (2) design incentives, (3) any need or problem known in the field, and (4) the common sense and common knowledge of a PHOSITA.
Despite the flexibility provided by KSR, a clearly articulated line of reasoning based on evidentiary support is required to support an obviousness determination. The Guidance makes clear that conclusory statements arguing that an invention is obvious are insufficient to support an obviousness determination.
All Relevant Evidence before the Examiner must be Considered
Finally, the Guidance reiterates the requirement that all relevant evidence be considered when making an obviousness determination. Going even further, the Guidance explains that all evidence should be reviewed and reweighed at each stage of a USPTO proceeding.
Although the USPTO’s guidance does not have the force of law, by and large this guidance reiterates existing law. As such, it may prove useful for patent practitioners to point this out to Examiners during their next disagreement on whether an Applicant’s claimed invention is obvious or not.
https://www.lernerdavid.com/news-successes/deciphered/uspto-provides-updated-guidance-on-obviousness-determinations
USPTO Provides Guidance on Inventorship of AI-Assisted Inventions
In February of this year, the United States Patent and Trademark Office (USPTO) recently issued guidance on how the USPTO will determine inventorship for artificial intelligence (AI)-assisted inventions (the “Guidance”). The Guidance explains that inventions created solely by AI are not patentable, as AI cannot be named as an inventor. In contrast, inventions developed by a joint effort between AI and a human inventor can be patentable if the human inventor makes a significant contribution to the invention. In such a situation, the human inventor would be considered the sole inventor, regardless of the contribution made by the AI.
The Guidance is premised on the Federal Circuit’s holding in Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), that “only a natural person can be an inventor, so AI cannot be.” In Thaler v. Vidal, the Federal Circuit explained that 35 USC § 100(f) defines an inventor as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” The Federal Circuit, relying on Supreme Court precedent, held that the term “individuals” refers only to humans with respect to inventorship. Therefore, the Federal Circuit found that AI cannot be included as an inventor on a patent application because AI is not human.
The Guidance explains that just because AI assisted in the development of an invention does not mean the invention is unpatentable. Rather, as long as a human made “significant contributions” to the invention, the invention may be patentable, with that human listed as the inventor. The Guidance notes that the Pannu factors should be used to determine whether the human made a significant contribution to an AI-assisted invention, as required by the Federal Circuit’s test for inventorship articulated in Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998). Under the Pannu factors, to be considered an inventor, a human must have: (1) contributed in some significant manner to the conception of the invention; (2) made a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention; and (3) did more than merely explain well-known concepts and/or the current state of the art. Pannu v. Iolab Corp., 155 F.3d 1344 (Fed Cir. 1998). As the Guidance explains, inventorship of AI-assisted inventions is made on a case-by-case and claim-by-claim basis. As such, every claim in a patent application must have at least one human inventor who significantly contributed to that claim.
The Guidance acknowledges that determining whether a human’s contribution to an AI-assisted invention is significant “may be difficult to ascertain, and there is no bright-line test.” To assist in the determination, the Guidance sets forth a non-exhaustive list of guiding principles to “help inform the application of the Pannu factors”:
(1) As long as a human inventor meets the Pannu factors, using AI does not negate the contributions of that human for determining inventorship.
(2) A human broadly recognizing a problem or having a general goal that is presented to an AI likely does not qualify that human as an inventor without further conception contributions. However, a significant contribution could still be shown if the human constructs a prompt in view of a specific problem to elicit a particular solution from the AI.
(3) A human solely reducing an AI contribution to practice would likely not be considered a significant contribution to the invention. However, a human who makes a significant contribution to the output of the AI to create an invention may be an inventor.
(4) A human developing essential building blocks that allow an AI to generate an invention may be considered a significant contribution to the invention. Essential building blocks can include designing, building, and/or training the AI in view of a specific problem to elicit a particular solution.
(5) A human simply owning or otherwise managing an AI does not make that human an inventor.
The fact-specific nature of what constitutes a significant contribution in AI-assisted inventions is likely to be litigated, especially as AI increases in use. However, the Guidance provides a practical framework for determining inventorship in AI-assisted inventions.
https://www.lernerdavid.com/news-successes/deciphered/uspto-provides-guidance-on-inventorship-of-ai-assisted-inventions