Littelfuse, Inc. v. Mersen USA EP Corp., Appeal No. 2021-2013 (Fed. Cir. April 4, 2022)
Our case of the week focuses on the issue of claim construction and, more specifically, the doctrine of claim differentiation.
The patent in suit was for a “fuse tip for providing an electrical connection between a fuse and an electrical conductor”. The patent describes three embodiments of ferrules: a “machined ferrule”, a “stamped ferrule” and an “assembled ferrule”. The first two can be made from a single piece of material that is machined or otherwise formed into the end cap. The last one is made from two separate pieces of material.
Claim 1 of the patent sets forth an end cap with a “mounting sleeve”, a “terminal” and a “fixing rod”. Claims 8 and 9 cited, respectively, “[t]A fuse end cap according to claim 1, wherein the mounting sleeve and the terminal are [machined/stamped] from a single contiguous piece of conductive material.
During prosecution, the examiner issued a restriction requirement, noting that the three types of tips were of three different species. Littelfuse responded by choosing to pursue the species corresponding to the “assembled mouthpiece” embodiment. The Examiner then withdrew dependent claims 8 and 9, both of which were for embodiments of machined or stamped end caps. But after further prosecution, the Examiner allowed these claims to be returned based on the procedures of the Patent Office. Indeed, claim 1, a generic claim, was permitted and the dependent claims were compatible with permitted claim 1.
During the litigation, the district court interpreted the term “fastening rod” to mean a “rod that attaches or joins other components”. Thus, the court’s interpretation inherently narrowed the scope of the claim to multi-component end fittings, such as the assembled end fitting embodiment. The district court’s construction excluded a “machined end cap” or a “stamped end cap” formed from a single piece of material. Following a summary stipulation, Littelfuse appealed.
The federal circuit has reversed. His criticism is succinct:
By definition, an independent claim is broader than a dependent claim, so if a dependent claim relates to a particular embodiment of the claimed invention, the corresponding independent claim must also cover that embodiment. . . . Otherwise, the dependent claims would be meaningless and therefore meaningless. A claim construction that leads to this result is generally disfavored. . . . Accordingly, the statement of a one-piece device in claims 8, 9, 19 and 20 is compelling evidence that claims 1 and 10 also cover a one-piece device.
The Court noted that “the presumption of claim differentiation is not an absolute rule” and that “any presumption created by the doctrine of claim differentiation” will be overcome by a contrary interpretation dictated by the written description or the pursuit story.'” However, the specification here supported a larger construct, and the pursuit story did not overcome the presumption.
The Court also noted that a “fixing rod” could still be present in a one-piece device, given its structure as disclosed and claimed in the patent. The Court then confirmed that a “fixing rod” must both include a “rod” and must “fix”.
The case was quashed and returned to the district court to adopt an interpretation of the claim consistent with the court’s directions, but not excluding a single-component mouthpiece.
The review can be found here.
By Nika Aldrich
ALSO THIS WEEK
Roche Diagnostics Corporation v. Meso Scale Diagnostics, LLC, Appeal No. 2021-1609, -1633 (Fed. Cir. April 8, 2022)
In an appeal of a district court ruling, the Court dealt with a licensing dispute in a lengthy opinion covering numerous legal and factual issues. Roche filed for a declaratory judgment for non-infringement of patents, rights which Meso claimed to hold via an exclusive license. Meso filed a counterclaim for infringement. The jury found that Meso had an exclusive license to the claimed patent claims and that Roche directly infringed one claim, induced infringement of three claims, and did so willfully. The district court granted Roche’s judgment as a question of law on will, denied Meso’s motions to increase damages, and granted Roche’s request for a finding of non-infringement on three additional patents , as they were mandatory counterclaims which Meso did not bring. in his counterclaim. Since there was insufficient reason to overturn the district court’s finding that the patents at issue fell within the scope of the rights granted exclusively to Meso, the Federal Circuit upheld direct infringement. On the induced offense, the Federal Circuit reversed the district court on the intent and inducing acts prongs. The Federal Circuit agreed with Roche that because the intent standard for induced infringement is similar to the intent standard for willpower and augmented damages, the same facts that led to JMOL on will and the denial of increased damages should have led to JMOL on induced infringement. The Federal Circuit also agreed that although the induced acts of infringement occurred during the six-year window preceding the suit, because the acts which induced the acts of infringement occurred before the six-year window , the induced acts component was not completed. Since the Federal Circuit reversed an induced infringement, it set aside for a new trial for damages. The Federal Circuit also overturned the finding of non-infringement on the three additional patents, agreeing with Meso that a mandatory but unprosecuted counterclaim is barred in subsequent actions, but not in a pending action. The Federal Circuit did not address whether Roche’s complaint was too generic to trigger the mandatory counterclaim rule, reserving that decision for any district court called to hear Meso’s subsequent patent infringement action. additional. In his dissent, Justice Newman argued that Roche cannot infringe the patents it holds and, detailing the complicated history of the patents at issue, that Roche had held the patents since 2007.
The review can be found here.
By Tyler Hall