Federal Circuit Addresses the Scope of Functional Claim Language: Are You Distorting the Obvious Design of the Prior Art or Accused Product?

On Monday, March 27, 2017, the Federal Circuit reversed anticipation findings of the Patent Trial and Appeal Board in a precedential decision that provides important guidance for analyzing the validity (and infringement) of patent claims reciting functional limitations.

The case, In re Chudik, No. 2016-1817, slip op. (Fed. Cir. Mar. 27, 2017), involved a patent application relating to “rotator cuff sparing procedures and associated devices for shoulder replacement surgery” and claims requiring that certain surfaces of an implant be “arranged to engage” with certain surfaces of a shoulder’s glenoid cavity.  Id. at 2-4.  On appeal from a final Office action, the Board conceded that the prior art over which the Examiner rejected the claims as anticipated did not show actual engagement between the claimed surfaces.  Id. at 7.  The Board, however, concluded that the fact was “not dispositive,” reasoning that the device disclosed in one of the relied-upon prior art references could “still be arranged to” perform the engaging function of the claims, and the applicant did not adequately address why the device disclosed in the other relied-upon prior art reference would have been “structurally incapable” of doing so.  Id.

Rejecting the Board’s conclusions, the Federal Circuit acknowledged the claim language could be read broadly enough that actual engagement is not required all the time but emphasized that “a prior art reference that must be distorted from its obvious design does not anticipate a patent claim.”  Id. at 8, 10-11 (quotations omitted).  “In other words,” the Federal Circuit said, “a prior art reference anticipates a claim only if it discloses all the elements in the same form and order as in the claim.”  Id. at 9 (quotations omitted).  Because the Board failed to explain how the relied-upon prior art could be used to perform the claimed function without modification, the Federal Circuit held that substantial evidence did not support the Board’s anticipation findings.  Id. at 10-13.

This case serves as an important reminder that while functional claiming may broaden the scope of a claim, it still has its limitations.

 Other Notable Decisions — Week of March 31, 2017

Huster v. J2 Cloud Servs., Inc., No. 2016-1639 (Fed. Cir. Mar. 29, 2017) (non-precedential): In Huster, the Federal Circuit affirmed a district court’s dismissal of a correction-of-inventorship claim for lack of standing (with a modification making the dismissal without prejudice).  Because the plaintiff had assigned her interests in the patents at issue and had been divested of any interest in the company to which she assigned them by a state-court charging order, the Federal Circuit concluded that she had not alleged “anything cognizable to be gained from being listed as an inventor.”  The Federal Circuit further rejected the plaintiff’s arguments that she had “a cognizable reputational interest in obtaining inventorship or co-inventorship status,” reasoning that she had not established “a connection between [her] reputation and her status as an inventor, much less the kind of injury that would satisfy the requirements for standing.”

Google Inc. v. SimpleAir, Inc., No. 2016-1901 (Fed. Cir. Mar. 28, 2017) (non-precedential): In Google, the Federal Circuit affirmed a Patent Trial and Appeal Board decision upholding patentability over an obviousness challenge raised in inter partes review proceedings.  The Federal Circuit found that the appellant’s claim construction arguments raised on appeal had been waived, noting that the appellant had made nothing more than “vague insinuations” and “off-the-cuff comments” on the issue below.  Having disregarded the appellant’s claim construction arguments, the Federal Circuit then further found that substantial evidence supported the Board’s conclusion that the prior art failed to disclose a key claim limitation.

TMC Fuel Injection Sys., LLC v. Ford Motor Co., No. 2016-2122 (Fed. Cir. Mar. 27, 2017) (non-precedential): In TMC, the Federal Circuit affirmed a district court’s summary judgment of non-infringement based on prosecution history disclaimer.  Relying on its recent decision in Technology Properties Ltd. v. Huawei Technologies Co., Nos. 2016-1306, 2016-1307, 2016-1309, 2016-1310, 2016-1311 (Fed. Cir. Mar. 3, 2017), the Federal Circuit rejected the appellant’s arguments attempting to narrow the scope of disclaimer, reiterating that “the scope of surrender is not limited to what is absolutely necessary to avoid a prior art reference; patentees may surrender more than necessary” and that “[w]hen this happens, [it will] hold patentees to the actual arguments made, not the arguments that could have been made.”

Intellectual Ventures II LLC v. Commerce Bancshares, Inc., No. 2016-1519 (Fed. Cir. Mar. 27, 2017) (non-precedential):  In Intellectual Ventures, the Federal Circuit upheld a Patent Trial and Appeal Board unpatentability determination.  On appeal, the appellant only challenged the Board’s claim constructions.  Because the Federal Circuit found the Board’s claim constructions to be reasonable, the Federal Circuit affirmed.

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