Effects of Proximity, Plurals, and Passive Voice for Claim Construction
In Apple Inc. v. Mph Technologies Oy, Appeal No. 21-1532, the Federal Circuit held that the proximity of concepts in a claim may link the concepts together and affect the plain meaning of the claim.
Apple petitioned for inter partes review of three patents directed to improving secure messaging across networks. The Patent Trial and Appeal Board (the Board) rejected Apple’s claim construction and found that Apple failed to show that the challenged claims would have been obvious. Apple appealed.
The Federal Circuit affirmed the Board’s decisions. The Federal Circuit rejected Apple’s claim construction and emphasized that claim terms should generally be given their plain and ordinary meaning. The Federal Circuit also detailed several rules for interpreting claim language. First, the Federal Circuit explained that the proximity of concepts in a claim can link the concepts together. Based on this principle, the Federal Circuit rejected Apple’s interpretation of “intermediate computer configured to receive from a mobile computer a secure message sent to the first network address.” Apple argued that the phrase did not require the mobile computer to send the message directly to the first address as long as the message was eventually sent to the first address. However, the Federal Circuit held that the proximity of the receiving/sending language linked the concepts together and required the mobile computer to send the message directly to the first address. The Federal Circuit also held that the passive voice did not affect the plain meaning of the challenged claims.
Additionally, the Federal Circuit held that a plural term refers to two or more items, even when “there is nothing in the written description providing any significance to using a plurality.” The Federal Circuit held that the term “information fields” referred to two or more fields. Thus, the Federal Circuit affirmed the Board’s rejection of Apple’s arguments and held found that the challenged claims would not have been obvious.
Identical Elements Are Not Required for the Presumption of Obviousness Based on Overlapping Ranges
In Almirall, LLC v. Amneal Pharmaceuticals LLC, Appeal No. 20-2331, the Federal Circuit held that the presumption of obviousness based on overlapping ranges applied where a prior-art reference disclosed an element in the claimed range that was similar but not identical to the claimed element.
Amneal petitioned for inter partes review of Almirall’s patent. The challenged claims recited methods of skin treatment using topical formulations of compounds in certain concentrations. These compounds included a copolymer called A/SA, which acts as a thickening agent. Amneal argued that the challenged claims were obvious over a patent publication called Garrett in view of either of two secondary references. With one exception, Garrett disclosed each claimed compound in concentrations that encompassed or overlapped with the concentrations claimed. The exception was that Garrett did not teach using A/SA as its thickening agent; instead, the preferred thickening agent in Garrett was a polymer in a class called carbomer. Each secondary reference disclosed using A/SA as a thickening agent in concentrations that overlapped with the claimed concentrations. The Board applied a presumption of obviousness based on overlapping ranges and found that Almirall did not overcome that presumption. It therefore held the challenged claims unpatentable. Almirall appealed.
On appeal, Almirall argued that the Board erred in presuming obviousness based on overlapping ranges. Specifically, it argued that Garrett did not disclose ranges for A/SA thickeners and therefore no single reference disclosed all of the claimed ranges. The court disagreed. It cited the Board’s factual findings of similarity between Garrett’s carbomer thickeners and the claimed A/SA thickeners, noting expert testimony that supported those findings. Separately, the court noted that the case did not depend on overlapping ranges but was simply a case of substituting one known thickening agent for another. It held there was substantial evidence that a person of ordinary skill in the art would have been motivated to combine Garrett with either of the secondary references to arrive at the claims with a reasonable expectation of success. Accordingly, the Federal Circuit affirmed the Board’s obviousness determination.