February 2010

Claim Terms Should Be Construed in View of the Originating Disclosure When Challenged for Written Description Support in Interference Proceeding
David Albagli

In Koninklijke Philips Electronics N.V. v. Cardiac Science Operating Co., No. 09-1241 (Fed. Cir. Jan. 5, 2010), the Federal Circuit reversed the district court’s sua sponte dismissal of Koninklijke Philips Electronics N.V.’s (“Philips”) suit seeking to overturn the Board’s cancellation of all patent claims in an interference proceeding.  The Federal Circuit remanded with instructions to construe the claims pursuant to Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009), and to address Philips’s written description challenge and challenges under 35 U.S.C. §§ 102 and 103.

Philips is the assignee of U.S. Patent No. 6,241,751 (“the ’751 patent”), which is directed to a cardiac defibrillator that delivers electrical shocks to a patient’s heart using two parameters—patient transthoracic impedance and desired energy level.  Cardiac Science Operating Co. (“Cardiac Science”) filed a continuation application, No. 10/159,806 (“the Owen application”), covering a multiple-capacitor cardiac defibrillator, which claimed priority to a parent application filed before the priority date of Philips’s ’751 patent.  To provoke an interference, Cardiac Science copied the claims of the ’751 patent into the Owen application and claimed an earlier priority date.  The PTO declared an interference and formulated one count.

In the interference, the Board denied five motions filed by Philips challenging the patentability of the Owen application, awarded priority to the Owen application, and canceled all claims in Philips’s ’751 patent.  In so doing, the Board disregarded the ’751 patent in construing a disputed claim term in the Owen application, citing 37 C.F.R. § 41.200(b), which states, “A claim shall be given its broadest reasonable construction in light of the application or patent in which it appears.”  Slip op. at 4.
Philips sought review of the Board’s ruling in district court, moving for a claim construction hearing.  In its last brief before the district court, Philips asserted that, if the district court denied Philips’s motion for a claim construction hearing, Philips would introduce evidence to the district court at trial.  The district court denied Philips’s motion for a claim construction hearing and sua sponte dismissed Philips’s complaint with prejudice.  In the order dismissing the complaint, the district court affirmed the Board, finding that its reasons for ruling against each motion were “grounded in the application of the Board’s own procedures and regulations.”  Id. at 6.

Philips appealed on three grounds.  First, Philips argued that the sua sponte dismissal of its complaint was an improper de facto SJ.  Second, Philips argued that the district court erred by affirming the Board’s erroneous application of 37 C.F.R. § 41.200(b).  Third, Philips argued that the district court improperly dismissed its claim that the Board erred in denying Philips’s contingent motion to find certain claims anticipated by or obvious over the prior art.

With regard to the first issue, the Federal Circuit concluded that the district court did not satisfy either of the two standards that must be met for proper entry of SJ.  Because the question of whether the de facto SJ was proper raises a procedural issue and not one unique to patent law, the Federal Circuit applied regional circuit law.  In the Ninth Circuit, a court may enter SJ (1) if the losing party had a full and fair opportunity to present its case, and (2) the parties have no genuine dispute over a material fact.

Philips brought its district court action under 35 U.S.C. § 146, which permits a party to seek review of an interference proceeding and to present new evidence.  Thus, in a § 146 action, a party is not limited to the evidentiary record before the Board.  The Federal Circuit concluded that the district court denied Philips a full and fair opportunity to present its case when the district court ignored Philips’s request to present new testimony and never heard Philips’s argument for priority of the ’751 patent over the Owen application.

The Court also found that the district court ignored the parties’ genuine dispute as to issues of material fact relating to written description and anticipation.  The parties disagreed as to whether the Owen application has adequate written description support for the term “impedance-compensated defibrillation pulse,” and as to whether the claim was anticipated.  Philips asserted that the Owen application did not disclose both patient impedance and desired energy level as parameters for the defibrillator, whereas the ’751 patent defines the term “impedance-compensated defibrillation pulse” by these parameters.  Cardiac Science denied these assertions of fact in its answer.  Similarly, Philips alleged in its complaint that claim 38 of the Owen application was anticipated by at least two prior art references, but Cardiac Science denied Philips’s assertions of fact as to anticipation in its answer.  Because it found that neither standard for SJ under Ninth Circuit law was met, the Court concluded that the district court erred in dismissing the complaint. 

The Federal Circuit next concluded that the district court erred in affirming the Board’s application of § 41.200(b) to Philips’s written description challenge.  Philips argued that the Owen application claims (except claim 38) were unpatentable for lack of written description.  Those claims, copied from the ’751 patent, include the term “impedance-compensated defibrillation pulse,” which the ’751 patent defines as including both patient impedance and desired energy level.  The Owen application, however, does not disclose desired energy level as a parameter.  The Court concluded that the district court erred in concluding that, under § 41.200(b), the ’751 patent written description was irrelevant.  The Federal Circuit held that applying § 41.200(b) and disregarding the original disclosure when assessing a challenge to written description support in an interference is contrary to the holding in Agilent and In re Spina, 975 F.2d 854 (Fed. Cir. 1992).  The Court acknowledged “that the Board may believe that there is a conflict between this court’s holdings and § 41.200(b).  However, any conflict between the two must be resolved as directed in Agilent.”  Slip op. at 13. 

The Federal Circuit noted that Agilent reiterated how the analysis differs between a written description challenge and a validity challenge for an interference.  “[W]hen a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language,” but “[w]hen a party challenges a claim’s validity under 35 U.S.C. § 102 or § 103, however, this court and the Board must interpret the claim in light of the specification in which it appears.”  Id. at 14 (alterations in original).  Thus, “Agilent made clear that 37 C.F.R. § 41.200(b) does not apply in an interference proceeding when one party challenges another’s written description.”  Id. at 15.

The Federal Circuit vacated the SJ ruling because the dismissal of Philips’s written description challenge on procedural grounds was based on an erroneous conclusion of law and thus constituted an abuse of discretion.  The Federal Circuit remanded with instructions to construe the term “impedance-compensated defibrillation pulse” in light of the ’751 patent written description and then determine whether the Owen application’s written description supports that construction. 

The Federal Circuit further commented that the legal errors by the Board and the district court “stem from a failure to appreciate the consequences of the PTO’s rulemaking authority.”  Id. at 16.  The Federal Circuit “remind[ed] the district court and the Board that they must follow judicial precedent instead of 37 C.F.R. § 41.200(b) when a party challenges another’s written description during an interference proceeding because the PTO lacks the substantive rulemaking authority to administratively set aside judicial precedent.”  Id. at 17.

As to the third issue on appeal, the Federal Circuit held that the district court erred in dismissing Philips’s claim that the Board erroneously denied Philips’s contingent motion to consider the patentability of certain claims in the Owen application under §§ 102 and 103.  The district court concluded that the Board properly dismissed Philips’s motion because “the contingency on which it was premised never arose.”  Id. at 18.  The Federal Circuit found, however, that the contingency never materialized because the Board failed to resolve the written description challenge as a properly raised issue of patentability.  Moreover, the Court directed that, under Agilent, the district court should have addressed the motion challenging the claims under §§ 102 and 103 regardless of whether it construed claim terms in light of the ’751 patent written description.  This is so because “when a party challenges a claim’s patentability under § 102 or § 103—in contrast to a written description challenge—a court ‘must interpret the claim in light of the specification in which it appears.’”  Id. at 19 (quoting Agilent, 567 F.3d at 1375).  Accordingly, the Court directed the district court to address Philips’s arguments under §§ 102 and 103 if the district court concludes that the Owen application provides an adequate written description on remand.