Disavowal of Claim Scope: CDS v. Dell

Computer Docking Station v. Dell (Fed. Cir. 2008)

More than any other patent litigation issue, a winning claim construction argument needs to do more than simply convince the district court judge.  Rather, the best argument will both convince the district court judge and will also teach that judge how to write a claim construction opinion that holds up on appeal.

Limiting Preamble: CDS’s patent was filed in 1991 and includes the claim preamble: “portable computer.” In interpreting that preamble term, the CAFC found that it must be limiting because statements in the specification and prosecution history emphasize portability, but the portability limitation is not found in the claims.

“The written description and applicants’ statements during prosecution emphasize this feature of the invention, yet this limitation does not appear in the body of the claims. As a result, this court finds that the terms "portable computer" and "portable computer microprocessing system" limit the scope of the asserted claims.”

Disavowal of Claim Scope: The CAFC also found that CDS had, through its statements in the specification and during prosecution, disavowed coverage of a laptop computer device that included an attached keyboard and screen.  In claim scope disavowal, the court always looks for a linguistic hook in the claims. Here, it relied again on the “portable computer” preamble term — finding that the patentee had disavowed coverage of portable computers that included those features.

Attachable features: In several figures, the patentee showed how a keyboard and screen could be coupled with its device. However, the CAFC noted that those attachments were only temporary and did not become part of the portable computer. “Thus, a cable connects the physically separate keyboard to the main housing. The keyboard is neither built-in nor attached.”

Exceptional Case: The patentee is not liable for attorney fees because this is not an ‘exceptional case’ under 35 USC 285. In particular, the court noted that it was not “self-evident” at the beginning of the claim construction analysis that laptop coverage had been disavowed. (Of course, this finding cuts directly against the finding that the public was on notice of a clear disavowal of claim scope)

Comments

[Malcolm Mooney]

" the court noted that it was not “self-evident” at the beginning of the claim construction analysis that laptop coverage had been disavowed. (Of course, this finding cuts directly against the finding that the public was on notice of a clear disavowal of claim scope)"

Interesting. It seems fair to infer that, as a matter of law, any construction that relies on the doctrine of disavowel of claim-scope is not a "self-evident" claim construction. A defendent whose non-infringement could be ascertained from the plain language of the claims, on the other hand, might be permitted to collect attorneys fees under 35 USC 285.

[examiner#6k]

This should NOT be precedential, such willy nilly inclusion of preambles based on the spec is horrendous.

[Anon dude]

Not sure I follow the reasoning of the above comment. Isn't the question of whether a preamble should be limiting a claim construction issue? Isn't the spec. the best source to look to when construing claims? Sometimes preambles limit, sometimes they don't. What's your point?

[Malcolm Mooney]

Preamble case law is one of the CAFC's saddest jokes, along with "product by process" claiming. Preambles should always be read as claim limitations.

[Scott]

If you actually read the case, it is not the least bit surprising.

The court didn't simply limit the claim by the mere presence of a word in the premable, but instead, gave the word weight based upon the prosecution history. The decision was not based on the spec, that seemed dicta to me.

[examiner#6k]

Hmm, you could be right, it might have been based more on the prosecution history, but, even so, limitations must not be imported from the prosecution history either, limitations reside squarely in the claim. All this mess about "oh, well he told the examiner that he meant to exclude x when he said y" and then got the claim on y is preposterous, it's bad examining. Make them put the limitations in the claims. If it gets by the examiner and later the courts see the examiners mistake, bam, patent invalidated. Stop trying to pull one over on an examiner by disavowing sht in the prosecution.

I don't know MM, I agree in that it's a fiasco, but I'm not so well versed as to say it should always be considered a limitation or should never be considered a limitation with certainty, but it is my belief that they should not be afforded weight because you would have too many people trying to structurally distinguish method claims: "a method for making x, the method comprising:"

Product by process are yes, bs. But, admittedly, needed bs in some few cases.

[Malcolm Mooney]

" limitations reside squarely in the claim"

That's virtually meaningless. The issue is claim construction. After a proper claim construction, the limitations in this instance do reside "squarely" in the claim. In this instance, the claim construction issue is: what does "portable computer" mean, in light of all the intrinsic evidence?

"it is my belief that they should not be afforded weight because you would have too many people trying to structurally distinguish method claims"

I don't follow and I don't see how your example relates. If you give the preamble weight in EVERY instance, the rational prosecutor will shorten the preamble to nothing (i.e., a "method comprising" or a "composition comprising") unless he/she is trying to avoid the prior by reciting a limitation. What is the problem?

"Product by process are yes, bs. But, admittedly, needed bs in some few cases."

Please provide one specific example of such a case.

[anonymous]

Before you go complaining about the preamble, the question whether the preamble limited the scope of the claim wasn't disputed in this case. See p. 11

[Grimace]

Why would any prosecuting attorney put anything in the preamble? Malpractice at this point in the game. You must take control of all limitations, if you mean it, put it in the body, if you don't, nix it. Don't give a clever litigator the opportunity to read it in or out depending on his case.

[unbelievable]

E6K,

"If it gets by the examiner and later the courts see the examiners mistake, bam, patent invalidated. Stop trying to pull one over on an examiner by disavowing sht in the prosecution."

Prosecution is pretty much all about disavowing claim scope, so I don't know where patent agents/attorneys are pulling one over on the examiner. I assume of course that E6K is willing to allow claims that are found to be patentable, even if their scope isn't as broad as the applicant originally thought they could be.

Presumably all invalidated patents were mistakenly granted. This was covered in a prior posting. We only expect Examiners to do a reasonable job of searching, not an exhaustive one.

I also think that judicial conservatism comes into play here. Answer only the questions needed to decide the case. If the judge can say the alleged infringer wouldn't infringe the claims no matter how they're read, then s/he does not need to decide whether the patent is invalid.

[Tom]

Re: Grimace's post.

So, as a patent attorney, are you committing malpractice by cutting off your client's clever litigator in including a zero-preamble? Especially if your job is to give your client the broadest possible allowable coverage.

I believe in and use zero-preambles, but I also use more descriptive preambles too. It depends on what the situation lends itself to. I just don't think you can impose a black & white rule here, whether it's "don't put anything in the preamble" or "preambles should always be read as limitations," as MM wrote.

[CaveMan]

In crowded art, detailed preambles are a must IMHO.

[e#6k]

Sorry I didn't get back to you MM. By giving all preambles patentable weight what you're looking at is attorney's NOT EVEN HARDLY MAKING BODIES, and other retardo crp that already goes on today. "O, I put it in the preamble, it's a limitation amirite?" "O, I put structural limitations in the preamble of my METHOD claim, those get patentable weight right?" "O, I know what, I won't even make a claim, I'll just make a preamble!"

"Claim 1: A method for making an x comprising steps." < that would be your new claim structure from all these "rational" attorney's. It's a method amirite? It's not anticipated by a structure disclosed in the prior art because you never know, maybe those structures spontaneously generated the way they are, but it's not anticipated by this method having the same steps I disclosed in my spec for making something very similar because it's not the same device amirite?

That's exagerating for sure, but regardless there are many things wrong with giving all preambles patentable weight. Start doing that and you'll have "A method for making a product x that is made by z apparatus from y compound comprising: Applying compound y to a workpiece using apparatus z, wherein the compound y comprises abdef and apparatus z comprises parts lmnopqrst." EVERYDAY.

Of course, I'd probably reject it with art that simply says "apply compound y to a workpiece" and be done with it. But Ohhhh, their preamble gets patentable weight righto?

[e#6k]

Sorry for getting all leet, I just got back from places where it's commonplace, expected even. In any case, there are good reasons not to give all preambles weight, though I wish it weren't so.

[Erez Gur]

The issue in the case had little to do with claim preambles. From the specification and the prosecution history it is clear that CDS' invention was an alternative to a laptop and the claims were written to specifically exclude laptops.

That said, I think that preambles should be read as limitations.
First, it will prevent Examiner's from citing unrelated art against claims.
Second, it will improve the public notice function of the claims.
Third, it is silly to import limitations from comments made in prosecution history but then ignore clear limitations the Applicant intended to be read when the claims were drafted.

An Applicant who files a claim with a preamble "A device comprising..." chooses to have broad scope, but risks more "irrelevant art" being cited in prosecution and a more easily invalidated patent.

Applicants who wants to have a claim relating to their business will write more specific and limiting preambles.

Malcom, a specific example for product by process claim: A tile made of a mixture of sand and dirt heated to 1000C for 27.5 minutes.

[AgentG]

There should be a rule prohibiting limitations in a preamble -- they are not necessary. And as this ruling proves, certainly poor claim drafting practice in any situation. All you are doing by including a non-zero claim preamble is introducing legal uncertainty.

As for if preambles should be read as limitations, I can tell you that US examiners are instructed to treat them as such.

[curious]

Examiners only treat preambles as limitations if it suits their (the examiners') purpose. Often they will argue that a preamble is an "intended use" or something similar and therefore is to be accorded no patentable weight.

[e#6k]

"As for if preambles should be read as limitations, I can tell you that US examiners are instructed to treat them as such."

I don't know where in the heck you got that considering I've been told more many many times that the vast majority are to not be accorded any weight. 0

"First, it will prevent Examiner's from citing unrelated art against claims."

LOLOLOLOLOL If I limited my art used against things that are specifically product x everyone in the whole art that ever puts in for a patent would just get a rubber stamp. Methods are used for making MANY similar products. Very very very many.

[Erez Gur]

I disagree with the three March 28 contributors.

An example (from a different thread) for a three legged chair

BAD: "A chair, comprising three legs". In litigation it will be decided that sofas, stools and benches were expressly excluded.

BAD: "A device, comprising a surface for sitting and three legs". Some Examiner would give a 102 rejection with the family dog as prior art

BETTER: "A device suitable for seating a person, comprising three legs".
There are inherent limitations in the preamble that exclude irrelevant prior art, no one gets hurt, everyone understands the scope of the claims.

E6K, I did not understand your last comment, sorry.

[e#6k]

""First, it will prevent Examiner's from citing unrelated art against claims."

LOLOLOLOLOL If I limited my art used against things that are a method for making specifically product x everyone in the whole art that ever puts in for a method patent would just get a rubber stamp. Methods are used for making MANY similar products. Very very very many. And the steps used in making those very similar products are very often interchangable/substitutable."

Fixed