Haemonetics v. Baxter Healthcare (Fed. Cir. 2010)
This decision is important for its endorsement of the claim construction canon that the internal logic and grammar of an individual claim takes primacy over inter-claim consistency.
Haemonetics’ asserted claim was directed to: 16. A centrifugal unit comprising a centrifugal component and a plurality of tubes . . . with the centrifugal unit having a radius between 25 and 50 mm and a height between 75 and 125% of the radius.
The preamble of Claim 16 clearly indicates that the centrifugal unit includes both a centrifugal component a plurality of tubes. However, other claims and the specification indicate that the centrifugal unit did not include the tubes.
On appeal, the Federal Circuit held that the clarity of Claim 16 controlled the term’s construction for that claim. Regardless of its use elsewhere, in claim 16, the centrifugal unit includes the tubes.
[C]laim 16’s beginning and, in our view, controlling language could hardly be clearer. Claim 16 states: “A centrifugal unit comprising a centrifugal component and a plurality of tubes . . . .” It does not merely state the intended field of use in a preamble, as Haemonetics argues. Rather, it unambiguously defines “centrifugal unit” as “comprising” two structural components: a centrifugal component and a plurality of tubes. The claim then further recites, not the centrifugal component and not a centrifugal unit, but “the centrifugal unit” as “having a radius between 25 and 50 mm and a height between 75 and 125% of the radius.” Reading “the centrifugal unit” in the context of the dimensional limitations to refer exclusively to the vessel, as the district court did, ignores the antecedent basis for “the centrifugal unit,” and fails to give effect to the claim language “comprising a centrifugal component”.
. . .
The patentee’s inconsistent use of identical height and radius limitations for two different embodiments thus indicates that “the centrifugal unit” inthe context of the dimensional limitations must have different meanings in the context of different claims. (internal citations omitted)
The Massachusetts-based district court had reached the opposite conclusion. Based on the erroneous construction, the Federal Circuit vacated the jury verdict and remanded for a new application of the facts.
Ned, A COC that broadens the claims IS lawful if the original claim language includes typos that are ‘clearly evident’. See the case you cite, CENTRAL ADMIXTURE PHARMACY SERVICES, INC., wherein the court states:
“We have previously interpreted this statutory provision in Superior Fireplace Co. v. Majestic Products Co., 270 F.3d 1358 (Fed. Cir. 2001). Superior Fireplace held that if a certificate of correction broadens a claim, it is only valid if it corrects a “clerical or typographical” error that would have been clearly evident to one of skill in the art reading the intrinsic evidence.”
This is not a job for Perry winkle Mason to cypher. But it is a Job for Inspector Clouseau.
But Perry Winkle, what’s a poor DC judge supposed to do, after it has been brought forcefully home to him that patents duly issued are to be treated deferentially, with a solid presumption of validity?
I don’t see how that is relevant. The issue is construing what the claim limitations are, not whether the claim is valid.
Are you all trying to draw me a Map? If so OOPS!
It looks like an error is not correctable under 255.
If a correction broadens the claims, the error must be of a typographical nature. Clearly, here, the error would change what infringes. That is enough to be broadening under Fed. Cir. interpretation.
link to cafc.uscourts.gov
If the correction is broadening, it is also not correctable by reissue beyond two years.
I think we now understand why the error was not corrected.
On which of the 4 prongs of 35 USC 251 would you hang your reissue hat?
Caveat: Reissue statute and case law is a complete mess (Federal Circuit: clean it up, please).
That said:
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent
Within two years, you could have filed a broadening reissue to replace the “comprising a centrifugal component and a plurality of tubes” with “comprising a centrifugal component”.
IVP – good point – I agree with you that the “preamble” would ordinarily be just the “centrifugal unit”
Apologize for the duplicate posts, thought the spam filter was grabbing em. But it inadvertently emphasizes my point.
35 USC Section 255 reads:
“Whenever a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the Patent and Trademark Office, appears in a patent and a showing has been made that such mistake occurred in good faith, the Director may, upon payment of the required fee, issue a certificate of correction, if the correction does not involve such changes in the patent as would constitute new matter or would require reexamination. Such patent, together with the certificate, shall have the same effect and operation in law on the trial of actions for causes thereafter arising as if the same had been originally issued in such corrected form.”
Now it just seems to me that this statute is the way to go. Perhaps if the examiner believes that the correction would require a reexamination, he should suggest a reissue.
But now we come to a sore point: timeliness. I’ve had at least two requests for Section 255 certificates of corrections pending for three years awaiting action by the Office. This is beyond the pale in my opinion.
test
Max, you’re not making sense to anyone but yourself. But then, that may have always been the case.
Max, you’re not making sense to anyone but yourself. But then, that may have always been the case.
Now, go pour me a latte, pronto!
Max, you’re not making sense to anyone but yourself. But then, that may have always been the case.
Now, S T F U and go pour me a latte, pronto!
rjo, because of requirement of where to take the measurements is not defined when the tubing is included. The measurement will change depending on where it is taken. This means the claim is indefinite as construed, which will only be the holding on remand.
The result is not as bad as in Chef America, but it is bad.
Malcolm–
On which of the 4 prongs of 35 USC 251 would you hang your reissue hat?
I agree with Ping, this has not been demonstrated to be appropriate for reissue.
Waiting for Ned’s reply to rjo…
Malcolm,
The key word is your first: “Assuming”
I must be missing something but I’m just not seeing it – how does the fact that the vessel + tubing is always larger than the vessel alone lead to “absurdity” if you apply the dimensional limitations?
Dennis–
I think you mischaracterized the CLAIM LIMITATIONS of “centrifugal component” and “plurality of tubes” as preamble.
They appear to me to in fact be limitations, and it was only counsel for Haemonetics who unsuccessfully attempted to characterize them as part of a preamble.
It does make a difference, because limitations must be included in antecedent basis, while preamble is only included where it is necessary to breathe life and meaning into the claim.
Had it been actual preamble, it would have been interesting to see whether the court would still have included it as antecedent basis.
ping You are assuming that you can even correct the error in a reiisue – that’s not a given.
Assuming no WD/new matter issue, why couldn’t Chef America (or Haemonetics) have corrected the claim in a reissue proceeding?
Ned: Certificate of Correction was the solution. But, hey,that’s when we had a PTO that had sense and was respected by the judiciary. But now, the ever-officious English majors on the CAFC would need to rule on even that–no matter how clear the error may be.
You are assuming that you can even correct the error in a reiisue – that’s not a given.
When a claim has an obvious error such that the result is absurd, such as in the Chef America case and this one, can the error be corrected in other than a reissue?
I asked this question above, but received no answers.
Is there any case law on the topic?
“…the canon of claim differentiation can apply even when comparing independent claims.”
Thanks Dennis. I did not really appreciate that distinction until you pointed it out, but I can see how it is true.
If claim 1 claims A + B, and Claim 2 is dependent from claim 1 and recites that B has a C, that’s the same as having two independent claims, one which claims A + B, and other that recites A + B, wherein B has a C. So the presumtion is that B in claim 1 does not inherently have a C.
I’m not sure how the doctrine would come into play if one independent claim recites A + B, and the other recites A + D. I’m guessing it really doesn’t have much impact in that situation, unless a party is trying to argue that D and B can be read on the same element, but I’m not sure about that.
The “canons”? They in the Rules or are we talking about church edicts–or maybe beautiful music?
A once strong patent system is now dying, led by non-patent attorney DC judges taking time to write opinions about trivia.
what’s a poor DC judge supposed to do, after it has been brought forcefully home to him that patents duly issued are to be treated deferentially, with a solid presumption of validity?
Find what he thinks are the relevant underlying facts, flip a coin as to the law, get the case off his docket quickly, and give the Circuit its do-over.
But Perry Winkle, what’s a poor DC judge supposed to do, after it has been brought forcefully home to him that patents duly issued are to be treated deferentially, with a solid presumption of validity? Aren’t you being excessively hard on the court?
Look readers. More of the same “I don’t see” stuff from the Boss. I leave it to you to come to a view whether the Boss was or was not “disparaging” in his tone towards our esteemed blog-runner.
Now I’ll give it a go. Sorry Boss, but I don’t see how Max should move “on Max”.
Is that again too “obsequious” for your taste Boss?
Zaius,and Anon, we already know that claims to A+B and A+C can co-exist in the same app. The issue is whether their co-existence will sometimes unexpectedly and belatedly, in litigation, prune back the scope of one or both of them, to something less than what you thought you had all along, and otherwise would have got from the court, but for the presence of that other independent claim.
“The Massachusetts-based district court had reached the opposite conclusion.”
Is it any wonder why some patent litigators will take on any patent matter, even when the controlling language could hardly be clearer against the patent holder’s position?
Probably just about everyone posting on this board could have advised the Massachusetts-based district court within a few minutes of how patent law works. Yet, the patent holder spend probably millions to get to the federal circuit and caused the defendant to spend the same, only to reach a conclusion that is SOOO obvious from the start.
It seems that the problem is district court judges refusing to hire a patent attorney to receive advise as to how patent law works. Within an hour, I could have had that entire case resolved for that judge.
Kudos to the patent holder’s attorneys for getting so far in the system. They obviously earned every penny. As for the district court judge and his/her staff, thanks for nothing.
Interesting developments in the Odom v Microsoft case.
link to or.findacase.com
I can’t tell from this order, but it appears that that Odom might have dismissed all his claims and now there is nothing more than a DJ action against the validity of his patents and whether Microsoft is noninfringing. And of course it also appears he is now suffering reexam.
link to docs.justia.com
And let’s not forget that both of his attorneys bailed out on him.
link to oregonpatentlitigation.com
It appear this may be the end for this particular foray into patent trolling.
anonymous wins
I don’t see how seeking clarification of a gratuitous assertion is disparaging. You go ahead though and keep throwing the powder puffs of obsequiousness.
If anyone should be moving on Max it’s you…
MaxDrei wrote, From time to time the thought occurs to me that drafters might do better to write one independent claim, and get it clear, than to write a plurality of independent claims and hope that one of them will stick.
I agree to a certain extent. The problem is thoughtless inconsistency in language among the multiple independent claims (with the hope that it sticks).
The problem isn’t multiple independent claims. If you have A+B and A+C as patentable combinations, but A alone isn’t, you need multiple independent claims. (And in the US, you can sometimes get those allowed in the same application because they aren’t as strict as the EPO.)
Wry remark, just between us Lionel: As we are all supposed to be one and the same puppetmaster, well then you and I would agree, wouldn’t we.
But thanks all the same.
Max,
I agree with you.
Boss, your wit has deserted you. You are talking in riddles. Your thoughts are not interesting. As you yourself write “I don’t think” and I’m “Not sure”.
You disparage Dennis, then make some obscure remark about your underling Mooney. Are you sure you have time to spare, to fiddle around in this blog. Haven’t you got more important things to be getting on with?
“the canon of claim differentiation can apply even when comparing independent claims”
Not sure what this is supposed to mean, but claim differentiation can hardly trump literal claim language from separate independent claims…
I don’t think that’s dough burning, reports from the fire department confirm that the couch in Mooney’s mom’s basement is on fire again.
Does anybody else take the view that the Federal Circuit got it right here but wrong in Chef America. I think there is room for such a view.
Putting it another way, how many independent Chef American claims of the same category were engaging the attention of the Federal Circuit panel, when it construed the egregiously unfortunate at=to claim language at issue in that case?
What will Haemonetics do for claim-drafting mores? Push them in the direction of EPO-style, perhaps. Oops, I shouldn’t have said that, but couldn’t resist it.
Oh dear, oh dear. Now I’ve skimmed the Decision I’m even more nervous about running a plurality of independent claims in the same category (EPO terminology) out to issue. For then a wily disputer of validity will surely be able to concoct some sort of tenable argument that there is a “discrepancy of meaning” between a selected pair of such independent claims. And from there it is but a short step to having the lawyerly-thinking Feds announce that discrepancy to be “an absurdity”.
Compare that with the burden of getting a court to condemn a solitary independent claim as “indefinite”.
“Sniff sniff” is right. It is rare for the Fed Cir to cite Chef America. Haemonetics sought to have the Fed Cir rewrite the claims to prevent a nonsensical result. And it failed just as in Chef America. This should hopefully steer some practitioners away from the “see which unclear independent claims stick” approach alluded to by Max.
Have not yet read the Decision but am sceptical whether Luke’s “incredibly” is justified. This degree of skill, in drafting, prosecuting and examining a plurality of independent claims, strikes me as fairly normal.
To revert to my theme above, imagine three pools of different colours of light, red, blue, yellow (or is it red, green, blue, I forget), arranged at 120 degree intervals. Only in a central area, where all three colours overlap, is the colour white. Your three independent claims are your three colours. Take that single unitary inventive concept, which is the subject of the patent, your gift to the public. To the bench, is it the white thing, and so is the area susceptible of protection by the patent no more than the white pool in the middle?
Just that? Nothing more? If more than that, what then?
And I relished the contributions from MM, ping and Luke. Things are cooking nicely on this thread. Let’s hope the comments don’t get over-heated.
Ned, I can’t say I see the result as harsh. It’s an incredibly poor piece of claim writing, but unlike our famous baked pastry, the correction isn’t immediately obvious. So I don’t see why the patentee should be cut any slack here. They stuffed up, and provided no clues as to how the claim “should” be read.
As much as I dislike “me too” comments, I am nonetheless also going to say Malcolm’s quip was hilarious.
From time to time the thought occurs to me that drafters might do better to write one independent claim, and get it clear, than to write a plurality of independent claims and hope that one of them will stick. My worry is that, in Europe, those seeking to minimise the scope of protection given by the issued patent will have more rope to work with, the more independent claims Applicant kindly makes available to them.
But, up to now, my American instructing associates (at least those younger than me) have been convinced that the more independent claims they can pack in, and the more they jumble up the wording, the greater the scope of protection they have achieved. I, meanwhile, remain sceptical.
burnt dough – hilarious on more than one level.
I would say “Well done”, but that would be redundant, wouldn’t it?
*sniff sniff*
Do you smell that?
It smells like burnt dough.
Ned, that’s why (the big boy) professional claim drafters review their claims many times over throughout the course of prosecution and at issue.
Obviously, there is a claim drafting error here and the Feds are not willing to construe away the error.
How can the patentee correct the error? Must he file a reissue? There might be broadening. Can this be done by a certificate of correction under 35 USC 255 as a “minor character?”
Without correction, the claim will undoubtedly be held indefinite.
The result here is harsh and unforgiving.
If one independent claim recites “A, wherein A comprises X+Y”, and another independent claim recites “A, wherein A comprises X”, then one of the so-called “canons” of claim construction says that A does not inherently include Y, absent some express defintion in the spec.
TINLA IANLA – I agree with you that it an important distinction that the other claims are independent. However, the canon of claim differentiation can apply even when comparing independent claims.
After skimming the opinion, it appears that the “other claims” are other independent claims, and not claims dependent from claim 16. So this decision does not impact claim differentiation. Does anyone find otherwise?
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