Arguments Made During Prosecution Trump Ambiguous Disclosure That May Have Otherwise Established an Earlier Priority Date
April 29, 2010
Last Month at the Federal Circuit - May 2010
Judges: Lourie (author), Clevenger, Rader
[Appealed from: S.D. Ohio, Senior Judge Beckwith]
In Bradford Co. v. ConTeyor North America, Inc., No. 09-1472 (Fed. Cir. Apr. 29, 2010), the Federal Circuit affirmed a decision limiting the priority date of U.S. Patent No. 6,540,096 (“the ’096 patent”) to its own filing date, reversed the finding that ConTeyor North America, Inc. (“ConTeyor NA”) did not infringe U.S. Patent No. 6,230,916 (“the ’916 patent”) and the ’096 patent, vacated the district court’s ruling that it did not have personal jurisdiction over ConTeyor Multibag Systems N.V. (“ConTeyor NV”), and remanded for further proceedings regarding infringement and personal jurisdiction.
Bradford Company (“Bradford”) owns both the ’916 and ’096 patents, as well as U.S. Patent No. 5,725,119 (“the ’119 patent”). All three patents are directed toward reusable shipping containers used to ship automobile door panels and related parts. The claimed containers include “dunnage,” which is a collection of pouches used for holding parts. The dunnage is located inside of and attached to the container. Both the containers and dunnage have an assembled state, used for shipping, and a collapsed state, used for returning the container to the shipper. This design reduces both the size of the container and shipping costs for the return voyage. All three patents are related. The ’916 patent is a divisional of the ’119 patent, and the ’096 patent is a CIP of the ’916 patent.
During prosecution of the ’096 patent, the examiner rejected the claims as obvious in light of the ’119 patent combined with U.S. Patent No. 4,798,304 (“the Rader patent”). The examiner specifically stated that the Rader patent taught a “side wall having [an] opening.” Slip op. at 11-12 (alteration in original). In response, Bradford told the patent examiner that the ’119 patent did not teach the very feature that makes the invention of the ’096 patent side loading. Specifically, Bradford argued that the ’119 patent “clearly does not teach a dunnage structure having an open end which is in alignment with an open area of a side structure to allow access of the dunnage structure for transferring product into and out of the dunnage structure from a side of the container.” Id. at 12.
In 2005, Bradford asserted the ’916 and ’096 patents against ConTeyor NV of Belgium and its U.S. subsidiary, ConTeyor NA, due to their sale of shipping containers with collapsible dunnage. After construing the claims, the district court granted ConTeyor NA’s motion for SJ of noninfringement. The district court also concluded that the ’096 patent claims were not entitled to claim priority to the ’119 patent, which effectively restricted Bradford’s infringement claims to a later filing date. Finally, the district court dismissed the claims against ConTeyor NV, the Belgium parent, for lack of personal jurisdiction.
On appeal, the Federal Circuit first considered whether the ’096 patent was entitled to the priority date of the ’119 patent. Bradford argued that the district court placed too much emphasis on a remark by Bradford’s counsel during prosecution, who argued that the ’119 patent did not disclose a side-loading container, a key feature claimed in the ’096 patent. Bradford further argued that the prosecuting attorney’s statement was incorrect as Figures 4 and 5 of the ’119 patent depicted a side-loading container.
The Court concluded that Bradford is estopped from arguing for an earlier priority date for the ’096 patent by the prosecution history. In so holding, the Court relied on Lockwood v. American Airlines, 107 F.3d 1565 (Fed. Cir. 1997), for the principle that in order to claim priority to an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112. The earlier application must show that the inventor was “in possession” of the claimed invention as of the filing date sought. Slip op. at 11. The Court stated that Figures 4 and 5, which depicted a side-loading container, might have sufficed as a sufficient written description but for the attorney arguments to the contrary. The Court noted that “[a]rguments made to persuade an examiner to allow an application trump an ambiguous disclosure that otherwise might have sufficed to obtain an earlier priority date.” Id. at 12 (citing Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985)).
The Federal Circuit next considered the district court’s noninfringement ruling. Bradford argued that the district court’s decision was based on an improper construction of the term “coupled to” that required the dunnage structure to attach directly to the frame or side structures of the container. Bradford argued for a broader construction, pointing to the specifications of the ’096 and ’119 patents, both of which disclose the dunnage attached to an internal rail that was in turn attached to the side structure of the container. Moreover, Bradford highlighted a dependent claim of the ’096 patent reciting that the dunnage was indirectly fixed to the side structure through an internal rail.
The Federal Circuit agreed with Bradford and concluded that, in light of the dependent claim describing an indirect attachment of the dunnage structure, the independent claim should be presumed broader and allow for other types of attachments. The Court cautioned that claim differentiation is not a conclusive basis for construing claims but nonetheless found other reasons to support its decision. Specifically, the ’096 specification disclosed dunnage coupled to the side structure through an internal rail. Moreover, the claims themselves suggested an indirect connection with their inclusion of modifiers such as “operably coupled to” and “movably coupled to.” Because the district court’s noninfringement ruling was based on an erroneous claim construction, the Federal Circuit remanded the question of infringement and instructed the district court to use a broader construction for the term “coupled to.”
Finally, the Federal Circuit addressed the district court’s ruling that it did not have personal jurisdiction over ConTeyor NV. Bradford argued that, under Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403 (Fed. Cir. 2009), the district court could exercise jurisdiction over a foreign defendant who has sufficient contacts with the United States and who refuses to identify a state where it is subject to jurisdiction. Bradford reasoned that because ConTeyor NV never conceded personal jurisdiction in any state and because an exercise of jurisdiction in Ohio would comport with due process, ConTeyor NV was subject to personal jurisdiction in Ohio under Rule 4(k)(2). Conversely, ConTeyor NV argued that because the Federal Circuit had not decided Touchcom at the time of the district court’s ruling, it was not obligated to identify a forum in which it was subject to personal jurisdiction. Regardless, ConTeyor NV, in its brief, conceded jurisdiction in Michigan and argued that jurisdiction anywhere other than Michigan would fail to comport with due process.
In addressing the parties’ arguments, the Federal Circuit explained that, for a court to exercise jurisdiction over a foreign defendant under Rule 4(k)(2), the claim must arise under federal law, the defendant must not be subject to jurisdiction in any state’s courts of general jurisdiction, and the exercise of jurisdiction must comport with due process. Under Touchcom, a district court can use Rule 4(k)(2) whenever a foreign defendant contends that he cannot be sued in the forum state and refuses to concede jurisdiction in another state. The Federal Circuit concluded that the district court erred in its application of Rule 4(k)(2) because it considered whether ConTeyor NV’s contacts with Ohio and Michigan imposed an improper burden on the defendant. Instead, the district court should have considered ConTeyor NV’s contacts with the United States as a whole. Accordingly, the Federal Circuit vacated that portion of the district court’s decision and remanded for consideration whether the district court could use Rule 4(k)(2) to assert jurisdiction over ConTeyor NV, whether ConTeyor NV has sufficient contacts with the United States as a whole, and, if so, whether the case against ConTeyor NV should proceed in Ohio or Michigan.
Summary authored by Matthew T. Nesbitt, Esq.