Claim construction, the process by which a court interprets the scope and meaning of a patent's claims, can make or break a patentee's case for infringement or validity. Courts traditionally construe claims by analyzing the language of the claims, the specification, the prosecution history before the U.S. Patent and Trademark Office, and, in appropriate cases, extrinsic evidence.1 Given the importance of the process, some parties leverage all sources of evidence to support their case, including statements from foreign patent office proceedings. The availability of such evidence only continues to grow.

Since the Patent Cooperation Treaty (PCT) came into force in 1978, nearly four million PCT applications have been filed to enable patentees to obtain international protection for their inventions — and more than half of these PCT applications were filed in the last ten years.2 As patent families expand to cover new jurisdictions, so too do the number of statements made by patent applicants seeking to distinguish art cited by new examiners. Competitors and others across the globe also continue to file opposition proceedings to challenge the patent- ability of issued foreign patents. These and other post- grant proceedings may proliferate as parties increasingly use the Unified Patent Court (UPC) for patent dispute resolution.

This article will briefly explore cases where litigators have sought to construe U.S. patent claims using statements made during foreign proceedings.

Courts May Rely on Statements from Foreign Prosecution to Inform Claim Scope

The Federal Circuit has explained the standard for deter- mining whether statements made in foreign patent prosecution may be considered during claim construction:

  • The statement must have been "made in an official proceeding in which the patentee had every incentive to exercise care in characterizing the scope of its invention," and
  • the two patents must be "related and share a familial "3

An example occurred in Apple Inc. v. Motorola.4 Motorola's patent claimed "updating a transmit overflow sequence number [or TOSN].5 Before the Japanese patent office, Motorola argued several times that "the overflow sequence number is never transmitted," and because the TOSN is never transmitted, "there is no chance to intercept the overflow sequence number; thus, [the invention] provides a higher level of security."6 Based on this and other evidence, the district court construed Motorola's claim to require that the TOSN is never transmitted.

On appeal, the Federal Circuit affirmed the construction and the district court's reliance on evidence from foreign prosecution.7 The court noted that Motorola's admissions "could not be clearer" and were "consistent with the claims and the invention described in the specification."8 Motorola had made the statements in an official proceeding, and both the U.S. and Japanese applications claimed priority to the same PCT application.9 Finally, the court highlighted that the specifications were the same, and, "at the time Motorola made its statements to the Japanese patent office, the Japanese application contained a claim identical to [the claim at issue] claim 17."10 By contrast, in SIPCO, LLC v. Emerson Electric Co., the Federal Circuit noted that similarly worded claims in unrelated patents can be construed differently, and that a prior decision against one patent with a similar claim had no effect against another when the two did not share the same family:

While we recently resolved a claim construction dispute involving the same parties where we agreed with the Board that 'low power RF signal,' in the context of the claims at issue in that case, did not require a limited transmission range, that decision has no impact on our earlier decision or on our decision here. Importantly, that case involved different patents, in entirely different patent families, with different specifications. We find it unsurprising that similarly worded claims may be construed differently when presented in such different contexts and different records.11

Even in cases where the patents share a familial relationship, courts may decline to consider foreign prosecution statements based on differences in the applicable law. In Pfizer, Inv. v. Ranbaxy Lab'ys Ltd., the Federal Circuit refused to hold a patentee's statements in a Denmark prosecution against it, finding such statements "irrelevant to claim construction because they were made in response to patentability requirements unique to Danish and European law."12 The Federal Circuit has not laid out a specific guide to showing "uniqueness," but it noted that "the theories and laws of patentability vary from country to country, as do examination practices."13

Statements from Foreign Post-Grant Proceedings May Also Impact Claim Scope: Gillette Co. v. Energizer Holdings, Inc.

Gillette Co. v. Energizer Holdings, Inc. shows the potential impact of admissions made in foreign post-grant proceedings on U.S. claim construction. There, Gillette sought a preliminary injunction against Energizer on a U.S. patent relating to a multi-blade razor.14 The dispute turned on whether Gillette's claim covered a four-bladed razor that Energizer produced.15 Energizer had previously filed an opposition proceeding in the European Patent Office (EPO) against a counterpart to the asserted U.S. Patent.16 In that proceeding, Energizer argued for a broader interpretation of Gillette's claims and their "comprising" language.17

The Federal Circuit noted the statements that Energizer made during the foreign opposition proceeding and used them when construing the claims:

The defendant itself endorsed an open interpretation of 'comprising' when it argued to the European Patent Office (EPO) that a virtually identical claim in Gillette's European counterpart to the '777 patent would not exclude an arrangement with four or more blades. This blatant admission by this same defendant before the EPO clearly supports this court's holding that those skilled in the art would construe the claims of the '777 patent to encompass razors with more than three blades.18

District Courts have followed suit in the years since Gillette. For example, in Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc., the District of Delaware considered whether the following phrase was indefinite:

"[T]he target region is within annealing site H53A(+23+47) and annealing site H53A(+39+69)."19 In construing the term, the court noted that counter-defendant NS—who had argued the term was indefinite in the Delaware proceeding—had, during an opposition to prosecution of a related patent in Europe, interpreted a nearly identical term as simply referring to "the area from nucleotide +23 until +69." Combining this with the intrinsic evidence relating to the term, the court concluded that the term was definite and covered "nucleotides +23 to +69 of exon 53 of the human dystrophin pre-mRNA."20

Conclusion

There is a balancing act between patent office proceedings on the international stage and patent activities in the United States. Statements made before the Patent Offices of other countries can, in some circumstances, inform claim construction of a U.S. patent. Litigants may wish to consider this material when planning or undertaking patent litigations using well-traveled patent disclosures.

Footnotes

1. Phillips AWH Corp., 415 F.3d 1303, 1312-19 (Fed. Cir. 2005).

2. See Paul Browning et, Considerations for Inventors When Navigating Patent Eligibility on the International Stage, Finnegan (Nov. 24, 2021) https://www.finnegan.com/en/insights/articles/considerations-for-innovators-when-navigating-patent-eligibility-on-the-international-stage.html

3. Apple v. Motorola, Inc., 757 F.3d 1286, 1312 (Fed. Cir. 2014), overruled in part by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015); see also, e.g., Microsoft Corp. v. Multi-Tech Systems Inc., 357 F.3d 1340, 1350 indiscriminate("Any statement of the patentee in the prosecution of a related application as to the scope of the invention would be relevant to claim construction, and the relevance of the statement made in this instance is enhanced by the fact that it was made in an official proceeding in which the patentee had every incentive to exercise care in characterizing the scope of its invention."); Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1290 (Fed. Cir. 2009) ("While statements made during prosecution of a foreign counterpart to a U.S. patent application have a narrow application to U.S. claim construction ... in this case the JP ′199 application is part of the prosecution history of the ′507 patent itself.") (inter- nal citations omitted); Tanabe Seiyaku Co., v. U.S. Int'l Trade Comm'n, 109 F.3d 726, 733 (Fed. Cir. 1997); Caterpillar Tractor Co. v. Berco, S.p.A., 714 F.2d 1110, 1116 (Fed. Cir. 1983); AIA Eng'g Ltd. v. Magotteaux Int'l S/A, 657 F.3d 1264, 1279 (Fed. Cir. 2011) ("[O]ur precedent cautions against indiscriminate reliance on the prosecution of corresponding foreign applications in the claim construction analysis."); Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1290 (Fed. Cir. 2006) ("[S]tatements made during prosecution of foreign counterparts to the ′893 patent are irrelevant to claim construction because they were made in response to patentability requirements unique to Danish and European law.").

4. 757 3d at 1310–11.

5. Id. at 1310–11.

6. Id. at 1312.

7. Id. at 1312–13.

8. Id. at 1312.

9. Id.

10. Id.

11. SIPCO, LLC v. Emerson Elec. Co., 980 F.3d 865, 866 (Fed. Cir. 2020) (in a CBM proceeding, affirming PTO's finding that claims directed to "a two-step communication path in which a remote device first communicates through a low-power wireless connection to an intermediate node, which in turn connects to a central location" were unpatentable for being obvious in view of the prior art).

12. Pfizer, , 457 F.3d at 1290.

13. AIA Eng'g , 657 F.3d at 1279 (citing Heidelberger Druckmaschinen AG v. Hantscho Commercial Prods., Inc., 21 F.3d 1068, 1072 n.2 (Fed. Cir. 1994)); see also Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1458 n.2 (Fed. Cir. 1984) ("[T]he language and laws of other countries differ substantially from those in the United States.").

14. Gillette v. Energizer Holdings, Inc., 405 F.3d 1367, 1368–69 (Fed. Cir. 2005).

15. Id.

16. Brief for Plaintiff at 10-12, Gillette v. Energizer Holdings, Inc., 405 F.3d 1357 (Fed. Cir. 2005) (No. 04-1220) (2004 WL 5003184) ("In its opposition to the European counterpart of the '777 Patent, Schick acknowledged that the practically identical claims of that application -- by virtue of the diction- ary definition of the word 'comprising' -- do not exclude 'an arrangement in which there are four or more blades.'").

17. Id.

18. Gillette , 405 F.3d at 1374.

19. No. CV 21-1015-GBW, 2023 WL 4314485, at *10 (D. Del. July 3, 2023).

20. Id. at *10-11.

Originally Published by IP Litigator

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