A series of recent cases teach an important lesson about claim language: simple terms may be construed based on the context in which they appear – even if different from their ordinary meaning.
The conjunctive claim term “and” can sometimes mean the disjunctive “or”
Decision: Simo Holdings Inc. v. Hong Kong uCloudlink Network Tech Ltd., 18-CV-5427 (JSR), (S.D.N.Y. April 25, 2019)
Holding: The Court granted SIMO’s motion for summary judgment as to infringement of claims 8 and 11 of its 9,736,689 patent and denied uCloudlink’s motion for summary judgment of non-infringement.
Background: SIMO, the patent owner, sued uCloudlink for patent infringement based on uCloudlink’s sales of mobile devices with WiFi hotspot capabilities that enable users to access data services abroad without accumulating roaming fees. The parties disputed the scope of several claims. The language at issue is in the preamble of claim 8, which reads:
A wireless communication client or extension unit comprising a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database, at least one of the plurality of programs stored in the memory comprises instructions executable by at least one of the plurality of processors for: . . . .
The parties disagreed on whether every listed component of the preamble is required for infringement. Judge Rakoff found it necessary to construe the term “and” when considering whether the list should be construed as disjunctive or conjunctive.
Judge Rakoff ruled that because the specification describes the non-local calls database as optional, the “and” preceding that term should be read as “and/or.” The Judge acknowledged that his decision, which avoided contradicting the specification, was “bolstered by the fact that the preamble is a bit of a mess grammatically, no matter what reading is assigned to it.” Thus, uCloudlink’s devices were within the scope of the preamble as construed, and the Court granted summary judgment of infringement.
The disjunctive term “or” argued as conjunctive
Decision: Cipla Ltd. v. Amgen Inc., 1:19-cv-00044 (D. Del. May 2, 2019); Cipla Ltd. v. Amgen Inc., 2019 WL 2053055 (D. Del. May 9, 2019)
Holding: The Court denied Amgen’s motion for a preliminary injunction to halt an at-risk launch of generic cinacalcet by Cipla Ltd., finding a lack of likelihood of success on the merits, among other factors. Amgen responded with a motion for an injunction pending appeal, which the Court again denied.
Background: Cipla and Amgen entered into a settlement agreement as a result of ANDA litigation after Cipla sought to market generic bioequivalents to Amgen’s SENISPAR®. The agreement stipulated that Cipla’s product infringed Amgen’s patent 9,375,405, that the claims were valid and enforceable, and that Cipla would not begin to market its product until 97 days before the expiration of the patent, except under limited circumstances, after which Cipla’s product would be licensed.
Teva, in separate ANDA litigation, successfully challenged Amgen’s patent and subsequently entered the market. Although it was only a few days later that Teva entered into a settlement agreement with Amgen and agreed to stop selling its product, Cipla filed this suit seeking declaratory judgment that, under the “limited circumstances” terms of its settlement agreement with Amgen, Cipla now had the right to launch its product. After Cipla began to sell and market its product, Amgen filed a motion for preliminary injunction.
The relevant portion of the agreement at issue states:
Notwithstanding anything to the contrary in this Settlement Agreement, if [i] any Third Party that has made an At Risk Launch of a Generic Cinacalcet Product (where such At Risk Launch is before or after an at risk launch by Defendants) is not found to have infringed one or more valid and enforceable claims of the ’405 patent or [ii] has not ceased or agreed to cease selling such Generic Cinacalcet Product following an At Risk Launch, then Amgen shall not be entitled to seek or recover any relief from Defendants for Defendants’ at risk sales, offers for sale, distribution, or importation of Defendants’ Product.
Cipla claimed that Teva’s successful at-risk launch satisfied the first condition of this section, thereby barring Amgen from seeking relief against Cipla for an at-risk launch. In response, Amgen argued that both conditions must be met in order to bar Amgen from obtaining relief against Cipla, and that, by virtue of the Teva-Amgen settlement agreement and Teva’s halt of sales, at least the second condition had not been met.
Judge Stark ruled that the word “or” between the two conditions of the agreement was disjunctive, meaning that either was sufficient to bar Amgen from obtaining relief. He also added that both conditions were nevertheless satisfied: the first by Teva’s at-risk launch, and the second because Teva may still be engaged in “indirect sales” due to previously-sold product that is still in the pipeline. This conclusion led Judge Stark to decline to halt Cipla’s at-risk launch, finding that Amgen had a low likelihood of success on the merits. On May 9th, he also denied Amgen’s motion for an injunction pending its appeal to the Third Circuit.
Does “180 degrees” mean “about 180 degrees” or “exactly 180 degrees”?
Case: Cobalt Boats, LLC, v. Brunswick Corp., decision pending, 2018-1376 (Dyk, Reyna, and Wallach)
Background: At trial, a jury found that the defendant boat maker infringed one of two claims at issue in the plaintiff’s 8,375,880 patent, which claims a retractable swim step “capable of being rotated 180 degrees.” Brunswick appealed the 2017 jury verdict, which found that it had literally infringed the patent and awarded $2.7M to Cobalt.
Brunswick appealed to the Federal Circuit on the grounds that its swim step cannot rotate 180 degrees and therefore does not infringe Cobalt’s patent. The district court during claim construction gave the “180 degrees” term its “[p]lain and ordinary meaning,” noting “[n]o further construction is needed.” There was no evidence at trial that any Brunswick step rotates 180 degrees or farther, and in its briefs to the Federal Circuit, Brunswick repeatedly emphasized that no Brunswick step is capable of rotating 180 degrees. In response, Cobalt argued that a person having ordinary skill in the art would understand that 180 degrees is an “expression of flipping” rather than requirement of a rotation of exactly 180 degrees.
During oral argument on May 3, 2019, Brunswick argued that “capable of being rotated 180 degrees” does not mean “about 180 degrees,” and that rotating less than 180 degrees “doesn’t meet the claim limitation.” The Court seemed to be sympathetic to Brunswick’s position, asking Cobalt why it wasn’t more specific in the claim construction. “If you wanted 180 degrees to mean about 180 degrees, why didn’t you say that?” Judge Dyk queried. In response, Cobalt conceded that it could have worded the claim construction better. We await a final decision from the Federal Circuit.
The shared lesson from these cases is not a new one: word choice is important. But these cases offer concrete examples of how courts respond in the face of ambiguous terms that may, in different circumstances, be easily defined by their “ordinary meaning.”
In SIMO, the Court noted the grammatical “mess” of the disputed preamble and relied instead on the principle that courts “normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification.” Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008). The construction of “and” to mean “and/or” seems a stretch, but in cases where the specification directly contradicts the dictionary definition of claim language, “the inconsistent dictionary definition must be rejected.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). When drafting claims, the specification provides the foundation on which to avoid contradictions and ambiguity. And, when possible, aim for a “model of grammatical correctness.” Simo, at *6.
In Cipla, the court was construing settlement language rather than claim language. Notwithstanding Amgen’s arguments about alternative meanings of the word “or,” the Court ruled that, in this case, “or” was disjunctive. In general, courts are not permitted to rewrite parties’ clear and unambiguous contractual language. See Pac. Employers Ins. Co. v. Glob. Reinsurance Corp. of Am., 693 F.3d 417 (3d Cir. 2012). When drafting settlement language, clear and unambiguous language should be used, and a term will be interpreted according to its ordinary meaning unless otherwise defined.
In Cobalt, the Federal Circuit will decide if “180 degrees” means “about 180 degrees” or “exactly 180 degrees.” Cobalt’s arguments attempting to broaden the term did not seem to persuade the Court during oral argument, and references were made to both the specification and prosecution history that seemed to support Brunswick’s position. No matter the outcome, it seems a sure bet that Cobalt wishes it had drafted its claim language differently.