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Automed Technologies
Using a particularly awkward approach to claim construction, a federal circuit panel today holds that where an applicant offers a claim amendment that is rejected by the examiner, and the applicant abandons that amendment, the scope of the pre-amended claims is diminished. See Automed Technologies, Inc. v. Knapp Logistics & Automation, Inc., et al., No. 06-1587, (May 31, 2007) (affirming summary judgment of noninfringement).
The claims at issue in Automed Technologies are directed to a system for automatically filling prescription drug orders and generally involve receiving a prescription order, moving a vial, filling a vial, and labeling a vial. Slip op. at 2. The issue of infringement, according to the opinion, turns on whether the steps have to proceed in any particular order.
At the outset, the court concedes that the “claims alone” do not require any specific order, slip op. at 3. According to accepted tools of claim interpretation, the court then examines the written description portion of the patent document and the prosecution history to determine whether these sources might impose an order on the steps recited in the claims—which is where the opinion starts to get confusing.
The court begins its analysis with the written description portion of the patent document, which according to the opinion discloses embodiments in which labeling happens either during or after filling, but not before. This, according to the court, argues strongly for imposing a particular order on the steps.
Given the complexity of the device at issue, the state of computer and other relevant technology in 1990 (when the original application was filed), and the disclosure in the specification, we cannot simply presume that these tasks, which were explicitly described as occurring in a specific sequential order, could have readily been carried out in alternative orders. Moreover, Automed cites nothing in the record demonstrating that one having ordinary skill in the art would have recognized the filling and labeling steps as freely interchangeable.
Slip op. at 4. This part of the analysis is awkward and misleading to the bar for two reasons. First, the accompanying text does not explain the principle upon which the court relies to import the limitation on the order in which the steps must occur—it reads merely as if the court were describing embodiments from the written description. Thus, while the court acknowledges that the steps are claimed as performable in any order, the opinion appears to argue that importing a limitation from the written description is appropriate here merely because the embodiments provided did not describe a particular iteration.
Second, in the ensuing paragraph, the court appears to abandon its emphasis on the written description altogether, focusing instead on the prosecution history. This suggests that, ultimately, the apparent emphasis on unclaimed features of embodiments in the written description—which take up all but one page of the analysis—is not necessary to the court’s claim interpretation.
Taking up the prosecution history, the court observes that the applicant amended an unasserted claim, expressly providing in the claim language that labeling could occur “before or after” filling a vial. Slip op. at 4. The examiner rejected the amendment as new matter, and the applicant withdrew the amendment. From this, the court concluded that the applicant:
[C]onceded that its invention did not embody filling lines in which the labeler was placed before the filler. Even if this action does not constitute a clear and unmistakable statement of disavowal giving rise to prosecution history estoppel as to the asserted claims, it would, nevertheless, be inconsistent in light of the concession to construe them in a manner that encompassed labeling before filling.
Slip. op. at 5. This seems like a correct application of prosecution disclaimer (or disavowal). If the subject matter is not disclosed in the patent application, it is not disclosed for any of the claims. This justification appears good enough to reach the result in the case, which makes the emphasis on limits gleaned from the written description all the more troubling.
Another troubling aspect of this opinion is the willingness of the federal circuit to rewrite claims in issued patents. Here the applicant was aware that the patent office was of the view that it had not described an invention in which labeling a vial occurred before filling it. Instead of addressing that issue with the office, the applicant apparently promulgated and eventually got issued claims which literally covered labeling before filling. Until this case, competitors and the public had to account for the probability that if they use a system for filling prescription drug orders that labels vials before filling them they may infringe. If the court agrees with the patent office, as it apparently does, that the patent does not disclose an invention in which a labeling apparatus operates before filling, see slip. op at 4 (“In sum, there is no explicit disclosure in the patent of an invention in which labeling occurs before filling.”), why bother bending over backwards and writing a confusing claim construction opinion—which because of the ambiguity it creates will likely encourage even more litigation—when it could have just invalidated the claims under 35 U.S.C. § 112?
Finally, potentially troubling is the reach of this opinion when other sorts of rejections are involved. What if the applicant makes an amendment and the examiner rejects the added language as making an unobvious claim obvious? How far would the applicant’s acquiescence—its agreement to withdraw the particular added language that the examiner contended made the claim obvious-extend? Surely different claims will have different limitations, and so depending on the structure of the correspondence the applicant’s acquiescence need not presumably add a limitation to every other claim in the application. Nonetheless, following from the decision here, closely related claims and dependent claims might end up with additional limitations to their literal scope by the application of the doctrine of prosecution disclaimer.
Posted by at June 1, 2007 8:25 PM in Claim Construction, Doctrine of Equivalents, News & Commentary | Permalink
