Prior Art Anticipates Claims because “A” means “One or More”

The Central District of California held that claims directed to “‘an induction actuated container which is capable of automatically opening when a user is approaching, and automatically closing when the user has left’” are invalid because they are anticipated by prior art. Nine Stars Group (U.S.A.), Inc. v. Factory Direct Wholesale, LLC, No. 18-6471 PSG (PJWx) (C.D.Cal. Apr. 6, 2020) (patents-in-suit are U.S. Patent Nos. 7,911,169 and 8,129,930).

A representative claim from the ‘169 patent is reproduced here:

1. An induction actuated container cover for a container body having a storage cavity and a container opening at an upper portion of said container body, wherein said induction actuated container cover comprises:

 a control housing, having a cover opening, adapted for mounting at said container body at said container opening thereof to communicate said cover opening with said receiving cavity of said container body;

a cover panel pivotally mounted to said control housing to pivotally move between a closed position that said cover panel covers at said cover opening to enclose said receiving cavity and an opened position that said cover panel exposes said cover opening for communicating with said receiving cavity;

an automatic driving arrangement, which comprises:

a sensor mounted at said control housing for detecting a target movement of a user; and

an actuation unit supported in said control housing to operatively link with said sensor, wherein said actuation unit is actuated to generate a decelerating and torque enhancing force to move said cover panel between said opened and closed position in a hydraulic manner.

(emphasis added).

The court noted that “[i]nvalidity on the basis of anticipation ‘requires that every element and limitation of the claim was previously described in a single prior art reference, either expressly or inherently, so as to place a person of ordinary skill in possession of the invention.’” Sanofi-Synthelabo v. Apotex, Inc. 550 F.3d 1075, 1082 (Fed. Cir. 2008). Defendant argued that the asserted claims of the ‘169 and ‘930 Patents are anticipated by Chinese Patent No. 2765882, which is directed to a “trash can cover[] that use[s] an electric motor and gearing to automatically open and close a lid in response to a sensor signal.”

Plaintiff argued that CN ‘882 is not anticipatory because CN ‘882 fails to disclose the “decelerating and torque enhancing” limitation. Plaintiff did not dispute that CN ‘882 discloses “a combination of decelerating and torque enhancing forces to close the cover panel.” However, Plaintiff argued that the term “a decelerating and torque enhancing force” should be “limited to a single force,” and CN ‘882 failed to disclose “one decelerating and torque enhancing force that moves the cover panel between the opened and closed positions” (emphasis added) because CN ‘882 discloses “three forces involved – an initial force to move the cover panel, a reversing force to stop the cover panel, then a final force is brought in to complete the closing.” (emphasis added).

However, the court was not persuaded by Plaintiff’s argument. The court noted that “‘an indefinite article “a” or “an” in patent parlance carries meaning of “one or more” in open-ended claims containing the transitional phrase “comprising.”’” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (quoting KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)). Additionally, “‘[a]n exception to the general rule that “a” or “an” means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule.’” Id. at 1342-43.

The court found that “the claims themselves do not warrant limiting the phrase ‘decelerating and torque enhancing force’ to require a single force” because “the claims on their face refer to ‘a’ force.” The court further found that neither the specification nor the prosecution history “requires that a ‘decelerating and torque enhancing force’ be limited to a single force.” Therefore, the court rejected Plaintiff’s proposed claim construction.

Since Plaintiff’s argument regarding validity was “premised on the rejected claim construction that the phrase ‘decelerating and torque enhancing force’ can only encapsulate a single force to move the cover panel,” the court held that the ‘169 and ‘930 Patents are invalid as anticipated by the CN ‘882 Patent.

Lessons for Practice

This case provides a reminder that when “comprising” is used as the transitional phrase in a claim, indefinite articles “a” and “an” are often going to be construed to mean “one or more.” If a term needs to be limited to mean “only one”, then make that limitation explicitly clear in the claims and the specification or consider using a transitional phrase other than “comprising”. Remember, it is much easier to get the desired definition of a term by providing the definition in the application than by relying on claim construction in prosecution or litigation.