Bradford Co. v. ConTeyor North America, Inc., 603 F.3d 1262, CPLRG 0060 (Fed. Cir. 2010) (LOURIE, Clevenger & Rader)Bradford04292010
MAJOR ISSUES: estoppel against claim to priority of earlier-filed application; opposition to PTO double patenting rejection; argument distinguishing later application from earlier application; personal jurisdiction; Belgian corporation’s contact with the United States as a whole; Rule 4(k)(2); claim interpretation; claim differentiation
COMMENT. This case addresses three issues.
First, on one of three patents, the court ruled that the patent’s application was not entitled to the benefit to an earlier application. The denial was based not on the more usual substantive standard of disclosure support under the written description requirement but rather on prosecution estoppel.
Second, in the district court infringement suit, the court held that personal jurisdiction over an accused Belgian corporation could be based on the corporation’s contacts with the United States as a whole.
Third, on claim interpretation, all the asserted claims required that one structure be “coupled to” another structure. The Federal Circuit held the district court erred in construing “coupled to” to mean directly coupled. Many are the case precedents on construing joinder phrases similar to “coupled to,” such as “connected”, “integral,” and “mounted on.” See Chisum Patent Law Digest 5229.46.
1. SHIPPING CONTAINERS; AUTOMOBILE DOOR PANELS. Three patents concerned a collapsible shipping container for automobile door panels. The container included a “dunnage,” which is a collection of pouches for the panels. U.S. Pat. No. 6,230,916 USPatNo6230916; U.S. Pat. No. 6,540,096 USPatNo6540096; U.S. Pat. No. 5,725,119 USPatNo5725119.
2. PRIORITY BENEFIT; ESTOPPEL. Prosecution history estoppel usually operates to narrow claim scope. In this case, the Federal Circuit used a patent owner’s prosecution argument in an unsuccessful opposition to a double patenting rejection to preclude the patent owner from obtaining the priority benefit of an earlier filed application for the patent’s later filed application. It held that estoppel precluded priority even though the earlier application arguably provided disclosure support sufficient to satisfy the written description requirement. The court noted: “arguments made to persuade an examiner to allow an application trump an ambiguous disclosure that otherwise might have sufficed to obtain an earlier priority date.”
a. The patent owner filed a series of three applications.
i. In 1996, it filed an application, which issued in 1998 as the ‘119 patent.
ii. In 1998, it filed a divisional application, which issued in 2000 as the ‘916 patent.
iii. In 2000, it filed a continuation-in-part application of the ‘916 patent.
A. An examiner rejected the claims for obviousness-type double patenting over the patent owner’s prior ‘119 patent and another reference (the Rader patent).
B. In response, the patent owner argued that the ‘119 patent did not disclose a feature required by the claims, a side-opening in the container for accessing the dunnage.
C. The examiner again rejected the claims as obvious in view of the ‘119 patent together with a different additional reference, Kupersmit.
D. The patent owner “eventually filed a terminal disclaimer, giving up a portion of the ‘096 patent term.”
b. DISTRICT COURT; TWO GROUNDS. In an infringement suit, a district court granted summary judgment that the ‘096 patent claims, which required “at least one side structure defining an open area … for accessing the dunnage structure,” were not entitled to the ‘119 patent’s 1996 filing date. The district court relied on two bases.
i. FIRST: ‘119 PATENT DEPICTED CONTAINER THAT COULD BE LOADED FROM THE SIDE BUT DID NOT TEACH SIDE-LOADING. The district court agreed with the patent owner that the container “depicted in the ‘119 patent could be loaded from the side.” However, “it found this disclosure insufficient to teach a side-loading container so as to satisfy section 112, first paragraph.”
ii. SECOND: PROSECUTION COMMENTS; EXAMINER TOLD THAT THE ‘119 PATENT DID NOT DISCLOSE SIDE-LOADING. Also, the district court noted that the patent owner, during prosecution of the ‘096 patent, specifically told the examiner that the ‘119 patent did not disclose side-loading.
c. GENUINE FACT ISSUE ON WHETHER ‘119 PATENT SUFFICIENTLY DISCLOSED A SIDE-LOADING CONTAINER; DRAWING AS DESCRIPTION. Contrary to the district court’s first basis, there was at least a genuine fact issue on whether the ‘119 patent sufficiently disclosed a side-loading container.
i. DRAWINGS. Two figures in the earlier ‘119 patent did show that dunnage could be accessed from the side. A drawing may provide a written description. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1566 (Fed. Cir. 1991).
ii. EXACTLY THE SAME TERMS NEED NOT BE USED. A prior application need not describe claimed subject matter in exactly the same terms as later claims use. Eiselstein v. Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995). See § 2112.
d. ESTOPPEL FROM ARGUING EARLIER PRIORITY. Nevertheless, the district court’s second basis was sound: the patent owner was estopped from arguing for an earlier priority date.
i. EXAMINER’S EARLY REJECTION: CLAIMS OBVIOUS IN VIEW OF ‘119 PATENT COMBINED WITH RADER (WHICH SHOWS A SIDE OPENING). In an earlier rejection on the claims of the patent in suit (‘096), the examiner indicated that the claims were obvious in light of the ‘119 patent combined with a prior art reference (Rader). The examiner stated that Rader showed a side opening.
ii. RESPONSE: ‘119 PATENT DID NOT DISCLOSE A SIDE OPENING; NO OBVIOUSNESS EVEN IN VIEW OF RADER. In response the patent owner argued that the ‘119 patent did not teach a dunnage structure with a side structure allowing dunnage access. Further, it argued that the claims were not obvious even when combined with the side opening of Rader.
iii. ARGUMENT: “APPARENTLY SUCCESSFUL”; EXAMINER SWITCHES REFERENCES. The patent owner’s argument was “apparently successful” because, in the next office action, the examiner relied on a different reference (Kupersmit).
3. PERSONAL JURISDICTION OVER BELGIAN CORPORATION. The patent owner brought the infringement suit in the Southern Ohio district court, naming a Belgian corporation and its United States subsidiary. The district court granted the Belgian corporation’s motion to dismiss for lack of jurisdiction. The Federal Circuit reversed.
a. In failing to analyze the Belgian’s company’s contacts with the United States as a whole and in improperly imposing a burden on the patent owner to prove that the company was not subject to jurisdiction in any state, the district court committed the same error as was corrected in the subsequent decision, Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403 (Fed. Cir. 2009). Rule 4(k)(2) allows a federal district court to exercise jurisdiction jurisdiction if (1) the plaintiff’s claim arises under federal law, which is true of a patent claim, (2) the defendant is not subject to jurisdiction in any state’s courts of general jurisdiction, and (3) the exercise of jurisdiction comports with due process, which will be true if the defendant has sufficient contacts with the United States as a whole. As held in Touchcom, Rule 4(k)(2) can be used “whenever a foreign defendant contends that he cannot be sued in the forum state and refuses to identify any other state where suit is possible.”
b. The Federal Circuit remanded so that the district court could determine whether it is entitled to use Rule 4(k)(2) and whether the case should proceed in Ohio or Michigan, the Belgian company having conceded that an alternative forum existed in Michigan.
4. CLAIM CONSTRUCTION: “COUPLED TO” ERRONEOUSLY LIMITED TO DIRECT CONNECTION. The Federal Circuit held that the district court erred in construing the asserted claims, all of which recited that a dunnage structure be “movably coupled” to a frame, as requiring a direct correction.
a. CLAIM DIFFERENTIATION. Claim differentiation supported a construction that extends “coupled” to indirect as well as direct connections.
i. DEPENDENT CLAIM RECITING FORM OF INDIRECT CONNECTION. A dependent claim recited that the dunnage be coupled to rails, which were coupled to a frame.
ii. INDEPENDENT CLAIM: PRESUMED TO BE BROADER; OTHER TYPES OF INDIRECT CONNECTIONS. Because the dependent recites a form of indirect connection, an independent claim is presumed to be broader in scope, covering other forms of indirect connection. “See Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) (`The doctrine of claim differentiation create[s] a presumption that each claim in a patent has a different scope.’).”
iii. PRESUMPTION NOT CONCLUSIVE; HERE, NOT REBUTTED; THE SPECIFICATION DISCLOSES A FORM OF INDIRECT CONNECTION. The presumption from claim differentiation is “not a conclusive basis for construing claims,” but, here, the presumption was not rebutted because the patent’s specification disclosed a form of indirect connection. There was nothing in the prosecution history to the contrary.
b. “OPERABLY” AND “MOVABLY” CONNECTED; NO FUSION OF DUNNAGE STRUCTURE TO FRAME. The claims’ use of qualifiers such as “operably” and “movably” suggested that the dunnage structure was not to be fused to a frame.
1. On estoppel in regard to legal positions arising from prosecution actions, see Chisum on Patents 11.03[e]
2. On personal jurisdiction over foreign persons and entities, see Chisum Patent Law Digest 8231; Chisum on Patents 21.02[b].
3. On claim construction with claim differentiation, see Chisum Patent Law Digest 5240; Chisum on Patents 18.03. For examples of cases construing joinder terms, see Chisum Patent Law Digest 5229.46.