Federal Circuit Review - Issue 45
Federal Circuit Construes “At Least One Component” to Mean the Whole has Multiple Parts
Enzo Biochem Inc. v. Applera Corp., No. 2014-1321, 2015 U.S. App. LEXIS 4064 (Fed. Cir. Mar. 16, 2015) (Prost, CJ.) (Newman, J., dissent). Click Here for a copy of the opinion.
Applera appealed from the district court’s claim construction that led to a jury verdict that Enzo’s U.S. patent No. 5,449,767 was infringed. The claims of the ‘767 patent are directed to an oligo- or polynucleotide probe where the nitrogenous base “B” is covalently attached to a chemical moiety “A.” Claim 1 specifies that moiety A “comprises at least three carbon atoms and represents at least one component of a signaling moiety capable of producing a detectable signal.” A is attached to B in a way that “does not substantially interfere with formation of the signaling moiety or detection of the detectable signal.”
The district court construed “at least one component of a signaling moiety” to mean that A can be directly or indirectly detected, i.e., A can be the whole signaling moiety and detectable by itself, or the signaling moiety can require a compound in addition to A in order to be detectable. On appeal, the Federal Circuit construed “at least one component of a signaling moiety” to mean “the signaling moiety is composed of multiple parts” because “component in and of itself indicates a multipart system.” In addition, the plain reading of the accompanying phrase “does not substantially interfere with formation of the signaling moiety” indicates that “A” is not the whole signaling moiety, “as the claimed compound does not include a formed signaling moiety.”
The court pointed out that throughout the specification, A was described as “being capable of forming a signaling moiety only in conjunction with other chemicals.” In addition, the background section of the specification described how A forms a signaling moiety upon interaction with proteins such as avidin and antibodies. Furthermore, the specification only discussed direct detection - radioactive labeling - to explain that indirect detection is a superior method. Based on the specification, the court concluded that the claims only encompass indirect detection.
The court also disagreed with the district court’s reliance on claim differentiation. Since Claim 1 is limited to indirect detection by its own plain meaning, the court concluded that “it would be inappropriate to use the doctrine of claim differentiation to broaden claim 1 to include a limitation imported from a dependent claim, such as direct detection.” Because the district court erred in its claim construction, the Federal Circuit vacated the finding of infringement and remanded.
Dissenting form the majority opinion, Judge Newman argued that “[t]he rules of grammar and linguistics … do not establish that ‘at least one’ means two or more.” In addition, Applera’s expert had conceded during cross examination that Example 9 in the specification “could involve direct detection.” Judge Newman argued that these findings of facts should be given appropriate deference. She believed that the district court neither committed error of facts nor law in its findings and conclusions, and therefore there were no grounds for reversal.
Federal Circuit Reverses Finding that Apple Infringed MobileMedia Mobile Phone Patents
MobileMedia Ideas, LLC v. Apple Inc., No. 2014-1060, -1091, 2015 U.S. App. LEXIS 4185 (Fed. Cir. Mar. 17, 2015) (Chen, J.). Click Here for a copy of the opinion.
MobileMedia filed suit against Apple in the District of Delaware asserting infringement of sixteen patents by various Apple products. Following summary judgment as to several patents, MobileMedia went to trial on claims from four patents (the ’078, ’075, ’068, and ’231 patents). Apple argued that its accused iPhone products did not infringe the asserted claims, and also argued that the claims are invalid as obvious under to 35 U.S.C. § 103. Following trial, the district court found claim 73 of the ’078 patent and claim 23 of the ’068 patent are valid and infringed. Three claims of the ’075 patent were held invalid and not infringed, and two claims of the ’231 patent were not infringed. Apple appealed the validity and infringement determinations, while MobileMedia cross-appealed the invalidity and non-infringement determinations. The Federal Circuit reversed the district court’s decision that Apple infringed claim 73 the ’078 patent, reversed the determination that claim 23 the ’068 patent was valid, affirmed that the claims of the ’075 patent are invalid, and vacated the determination that the claims of the ’231 patent were not infringed, based on an erroneous claim construction.
With respect to claim 73 of the ’078 patent, the Federal Circuit held that the district court construed the means-plus-function claim pertaining to mobile phone cameras too broadly. Specifically, the iPhone cameras do not have internal memory and therefore do not infringe the ’078 claim limitation requiring “means for processing and for storing” data. Accordingly, no reasonable jury would have found Apple’s technology infringing.
As to the ’075 patent, directed toward rejecting incoming calls, the Federal Circuit affirmed that the claims were obvious in light of protocols developed by the European Telecommunications Standards Institute that implement the Global System for Mobile communications (GSM) standard. As a result, the Federal Circuit did not reach MobileMedia’s appeal on non-infringement.
The Federal Circuit also found that several method claims from the ’068 patent are obvious and invalid. These claims are directed to sending and receiving calls based on a one button activation. This was found to be a common-sense evolution of preexisting technology that required use of at least two selections to initiate or receive a call.
The Federal Circuit found the district erred in its claim construction of terms in the ’231 patent, directed toward silencing alerts for incoming calls (“call alerts”). The district court construed “to change a volume of the generated alert sound” as meaning “to alter the degree of loudness of the alert sound that is being generated without cutting off the telephone circuit.” This alteration of volume did not include “stop[ing]” the sound. Apple’s products do not allow changing the volume of alerts and only allow a user to stop the sound. However, the Federal Circuit found support in the specification for a construction that includes both stopping and reducing the volume of alerts. Based on the new claim construction, the Federal Circuit vacated the non-infringement decision and remanded for further proceedings.
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