On October 14, 2016, in Poly-America, L.P. v. API Industries (Appeal No. 16-1200, Fed. Cir. October 14, 2016), the Court of Appeals for the Federal Circuit (“the CAFC”) analyzed and applied one of two exceptions to the general claim construction rule that claim terms are generally given their ordinary and customary meaning. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). This one exception states that the plain and ordinary meaning standard [of claim construction] is departed from when the patentee disavows the full scope of the claim term in the specification or during prosecution. Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). The question before the CAFC in Poly-America was whether any of the terminology in the asserted patent, or any of patentee’s actions during its prosecution, could be interpreted as a disavowal of claim scope. In answering this question, the CAFC examined a number of cases that outline the disavowal exception to the general claim construction rule and underscored the ramifications of arguments made during patent prosecution.
Poly-America, L.P. (“Poly-America”) was granted U.S. Patent No. 8,702,308 (“’308 patent”) to an invention directed toward an improved construction of an elastic drawstring trash bag. Poly-America at 2. The claimed apparatus is made from two panels of polymeric material joined at the sides and the bottom to form an enclosed bag. Id. at 3. At the bottom, the panels are joined by a “bottom fold.” At the top, a piece of each panel is folded over and sealed to from a “hem” which includes a drawstring. The patent identifies two different seals located along the sides of the bag: seals along the length of the panels are referred to as “side seals”, while seals in the upper corners of the bag are referred to as “short seals” that bind together each panel’s hem and the ends of the drawstrings located therein. Id.
A principal feature of the claimed invention is Poly-America’s use of inwardly extended short seals that reduce the width of the trash bag’s upper opening. Id. (emphasis added). The narrowed opening of the trash bag allows the edge of the trash bag opening to be wrapped around the rim of a trash receptacle more securely than prior art trash bags that do not have narrowed openings. This feature was emphasized in the title, abstract, and the detailed description of the ‘308 patent. Id. at 3-4. Additionally, claim language directed to the narrowed upper opening feature was also recited in independent claims 1 and 16 of the ‘308 patent. However, independent claim 10 did not explicitly recite claim language directed to the narrowed upper opening feature:
10. An elastic drawstring trash bag comprising:
a polymeric bag comprised of a first panel and a second panel, the first panel and the second panel joined at a first side, a second side, and a bottom,
a first hem formed in the first panel, the first hem having a first elastic drawstring disposed therein,
a second hem formed in the second panel, the second hem having a second elastic drawstring disposed therein,
the first panel, the first elastic drawstring, the second panel, and the second elastic drawstring inseparably joined together at a first short seal and at a second short seal, and
a first access cutout along the upper edge of the first panel and a second access cutout along the upper edge of the second panel, the first and second elastic drawstrings being accessible through the respective first and second access cutouts. (emphasis added). Id. at 4-5.
During prosecution, the examiner twice rejected all of Poly-America’s claims as being obvious over the combination of two prior art patents—Schneider (U.S. Patent No.7,137,737 B2) and Bonke (U.S. Patent No. 5,133,607 A)—which teach a pull-strip bag with short seals at the upper hem, and a plastic liner bag with elastic top, respectively. Id. at 6. In Poly-America’s response to the second rejection, it distinguished Schneider from all of the independent claims of the ’308 patent on the basis that Schneider’s short seals were not extended to reduce the bag’s “relaxed upper opening width” in relation to the “bag proper width”. This argument persuaded the examiner to withdraw his rejections and allow each of the claims of the ’308 patent. The examiner reasoned that the cited references failed to teach elastic draw strings welded into the bag hem at short seals that form an upper opening that is smaller than the width of the bag. Id.
Subsequently, Poly-America sued API Industries, Inc. (“API”) for infringement of claim 10 of the ‘308 patent in district court. Id. at 7. Among the claim terms the district court construed during the preceding was the meaning of “short seal”. Poly-America proposed that “short seal” be construed as “a seal that inseparably welds or joins the first and second elastic draw strings and the first and the second panels of the bag. Id. API’s proposed construction, which was adopted by the district court based on the prosecution history of the ‘308 patent, interpreted “short seal” to mean “A seal for securing the elastic drawstring, which seal is located adjacent to a side seal, and that is not substantially aligned with the side seal, but extends inwardly from the interior edge of the side seal.” Id.
Under this construction, the district court held that API’s accused device would not infringe claim 10 of the ’308 patent because API’s accused bags were conventional drawstring trash bags with short seals that were substantially aligned with the side seal and therefore did not extend inwardly such that the width of the relaxed upper opening in API’s bags was the same as the bag’s proper width. Id.
On appeal to the CAFC, Poly America argued, inter alia, that the district court’s construction of the term “short seal”, which included an inward extension imported limitations from embodiments described in the specification and misread the prosecution history. Id. at 8.
The CAFC began its analysis by setting forth the general rule of claim construction along with the rule’s two exceptions:
“Claim terms are generally given their ordinary and customary meaning, which is the meaning they would have to a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). We depart from the plain and ordinary meaning in only two instances. Hill- Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). The first is when a patentee acts as his own lexicographer. Id. The second is when the patentee disavows the full scope of the claim term in the specification or during prosecution. Id.”
Id. at 8.
Finding that there was no indication or assertion of lexicography in the suit, the CAFC established that the suit would turn on whether Poly-America had disavowed trash bags with short seals that do not extend inwardly to narrow the upper opening width in relation to the proper width within the specification or during prosecution of the ‘308 patent. Id. at 8. The CAFC then examined a number of cases that provided a framework for determining when an inventor disavowed claim scope: Disavowal can be effectuated by language in the specification or the prosecution history. See Phillips, 415 F.3d at 1316-17. In either case, the standard for disavowal is exacting, requiring clear and unequivocal evidence that the claimed invention includes or does not include a particular feature. See Openwave Sys., Inc. v. Apple Inc., 808 F.3d 509, 513-14 (Fed. Cir. 2015); Omega Eng’g., Inc. v. Raytek Corp., 334 F.3d 1314, 1323-26 (Fed. Cir. 2003). For example, an inventor may disavow claims lacking a particular feature when the specification describes “the present invention” as having that feature. See e.g., Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016). Similarly, an inventor may disavow claims lacking a particular feature when the specification distinguishes or disparages prior art based on the absence of that feature. See Openwave, 808 F.3d at 513-14; SightSound Techs., LLC v. Apple Inc. 809 F.3d 1307, 1317 (Fed. Cir. 2015).]
Applying the ‘308 patent specification language to the established case law, the CAFC affirmed the decision of the district court, finding that Poly-America had in fact disavowed claim scope and therefore API was not liable for infringing claim 10 of the patent. First, the CAFC held that the specification directed the reader to figures that demonstrated the extended short seal feature and noted that one of the characteristics of the present invention resulting from extended short seals was a reduction in upper width. Poly-America at 9 (emphasis added). Second, the CAFC found that the specification effectively disparaged the prior art based on the absence of a claimed feature by stating that prior art bags are difficult to secure over trash receptacles and the use of extended short seals reduces the claimed bag’s upper opening, making it easier to fit around a trash can. Id.
The CAFC also found the positions Poly-America took during prosecution of the ‘308 patent resulted in a disavowal of claim scope. The CAFC specifically cited Poly-America’s reply to the examiner’s second rejection of the claims in which Poly-America argued the relaxed upper opening width of Schneider was the exact same as the bag proper width, not less than the bag proper width “as required by Applicant’s independent claims” as a clear and unmistakable disavowal of short seals that do not extend inwardly. Id.
Finally, the CAFC found Poly-America’s argument that the terms “bag proper width” and “relaxed upper opening width” are not present in claim 10 to be irrelevant, reasoning that when considered in light of the specification, every embodiment described in the specification has inwardly extended short seals, ultimately holding that the only meaning that matters in claim construction is the meaning in the context of the patent. See Trs. Of Columbia Univ. v. Symantec Corp., 811 F.3d at 1365; Id. at 9-10.
An analysis of this decision leads one to take away a variety of prosecution tips. For one, this decision reiterates the need for patent drafters and prosecutors to be careful with their choices of language used in the specification and during prosecution. Advantages of the invention, if described in the specification, should be limited to specific “embodiments” and not generalized to “the invention” being described. Arguments refuting an examiner’s rejection should be limited in a similar manner to specific “embodiments,” rather than generalized to all of the independent claims. Besides these tips, this decision is valuable for a litigation lesson: Know the invention protected by your patent, and if your patent protects a particular improved feature (e.g., trash bags with narrowed openings), a patent infringement suit in unlikely to succeed against a competitor that makes a non-improved version of that product (e.g., trash bags with conventional openings).