Fed. Cir.: Statements in Specification Limit Patent Claims

A recent case from the Federal Circuit demonstrates the perils of pointing out problems in prior art in a patent specification. In Rembrandt Patent Innovations LLC v. Apple Inc., No. 2016-2324  (Nov. 22, 2017) (non-precedential) (opinion by Judge Chen, joined by Chief Judge Prost and Judge Hughes), the Federal Circuit affirmed a lower court’s claim construction and noninfringement rulings, agreeing with the defendant-appellee Apple that the claims of U.S. Patent No. 6,185,678 covered computer bootstrapping only if “performed automatically without human intervention.”

The District Court had granted Apple’s motion for summary judgment of noninfringement, agreeing that, even though the claims did not state that the recited recovery procedure was “automatic,” the specification characterized the invention as directed to “a secure bootstrap process and automated recovery procedure” (emphasis in original), and moreover the patent specification disparaged “prior art recovery processes that require human interaction.” Moreover, the specification repeatedly talked about the advantages of automatic recovery processes, and nowhere discussed recovery occurring with human intervention.

The Federal Circuit agreed that, if “read in isolation,” the claims would “not appear to require automated recovery.” But under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), claims are not read in isolation, but rather are “construed in conjunction with the specification.” The District Court correctly concluded that the claims were limited to automated recovery by intrinsic evidence, and moreover, the District Court properly disregarded expert testimony contradicting “the claims’ meaning established by the intrinsic evidence.”

The court identified numerous portions of the specification characterizing the inventive recovery procedure as “automated,” occurring “automatically,” or “without user intervention.” Moreover, the specification disparaged prior art processes that did require human intervention.

The patent owner argued that there was no express disclaimer of claim scope. However, “disclaimer does not require express statements by the patentee identifying the surrendered claim scope.” Implicit disclaimer is sufficient, “so long as it is sufficiently clear.” Here, there was a “clear, repetitive, and uniform nature” in the specification’s “description of the automated recovery process, in combination with its rejection of prior art methods” requiring user involvement.

The court also addressed the patent owner’s arguments that the specification did describe user intervention. The examples noted by the patent owner, however, did not relate to the claimed recovery process. Further, the fact that human intervention was not used to distinguish prior art at the USPTO was to no avail; at a minimum, the patent owner was wrong in its argument that the prior art reference at issue “used a non-automatic recovery procedure.”

The rest of the court’s opinion went on to explain why the district court’s judgment of infringement was correct.

Lessons for Practice

Identifying and stating a solution to a technical problem can be important for overcoming patent-eligibility rejections, and for overcoming obviousness rejections under 35 USC § 103, which has become more difficult in the years since KSR v. Teleflex. This case is a reminder that such concerns must be balanced with concerns about limiting claim scope.  Cases like this are why patent drafters are typically urged to have very short, general background sections, without specific characterizations of the prior art, and why drafters typically are encouraged not to discuss specific features as being distinguished from prior art.

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