Disclosure of a Feature in the Background of a Parent Application Was Enabling and Established Priority Despite Criticism of Feature

Case: Callicrate v. Wadsworth Manufacturing, Inc., No. 04-1597, 04-1598 (Fed. Cir. 10/31/05)

The One Sentence Summary: The panel reversed judgment for defendant in a dispute about large animal castration tools, finding that the patents were valid and infringed - the patents were valid because they were entitled to priority from a parent application even though the application disclosed the disputed feature only in the background section and criticized the limitations of the feature.


What They Were Fighting About: Callicrate owned patents 5,997,553 and 5,681,329 on large animal castration tools, and alleged that Wadsworth infringed those patents. Callicrate's '553 and '329 patents claimed priority to an earlier application by Callicrate, the '434 patent. The district court held that Callicrate's '553 and '329 patents were not entitled to priority based upon the '434 patent application because the disputed feature (a caulking gun ligature tightening mechanism) was only in the background of the '434 application, and its limitations were criticized. A jury found for defendant, holding that the patents were invalid based upon a patent filed by Wadsworth after the '434 application.

Federal Circuit Holdings:

• The district court improperly construed the claim term "lever for deforming a grommet" - the claim language had a common meaning, and the district court erred by importing a limitation from the specification: "The straightforward mechanical technology and understandable claim language give that meaning to this term. See Phillips, 415 F.3d at 1314 ("In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words.") (citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001))."
• In interpreting the claim term "cutting means", the district court properly found that this was a means-plus-function claim under 35 U.S.C. § 112, ¶6. The term "means" invoked a presumption of the application of means-plus-function, and the claim lacked recited structure for performing the function. However, the district court improperly limited the term to a single embodiment when the specification showed several cutting means.
• In construing the term "pre-formed endless loop", the district court erred in adopting a claim interpretation that did not require preforming of the loop.
• Claim language should be interpreted consistently throughout various claims of the same patent. However, this did not require limiting the term "endless loop" to incorporate the limitation of a grommet that appeared in some claims and not others.
• The district court erred in not granting judgment as a matter of law (JMOL) of infringement against defendant where defendant admitted that the accused device included every element of the claims.
• There was no need for a new trial on infringement despite the changes in claim construction by the Federal Circuit panel. The new claim constructions were narrower and did not invalidate defendant's admissions that led to the conclusion that JMOL of infringement should be granted.
• The jury's verdicts of invalidity due to anticipation and obviousness were based on an incorrect determination of priority by the district court. The panel held that Plaintiff's patents were entitled to a priority date of the filing of a parent application for the '434 patent. The '434 patent had sufficiently enabled a caulking gun mechanism even though it criticized the limitations of such a mechanism in the background section. The panel explained: "'[A] patent may only claim priority to an earlier application if the earlier application fulfills the requirements of § 112, first paragraph. In turn, that paragraph requires, in part, that the application ‘shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.’ Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1253 (Fed. Cir. 2004) (quoting 35 U.S.C. § 112, ¶ 1). . . . First, a patent specification may sufficiently enable a feature under § 112, ¶ 1, even if only the background section provides the enabling disclosure. See Micro Chem., 194 F.3d at 1259-60. . . . Moreover, contrary to the district court’s opinion, the background section’s discussion of problems with the caulking gun-type tightening mechanism does not mean that one of ordinary skill in the art would not, after reading this discussion, know how to make and use this feature. Indeed this court has stated that disparaging remarks in a background section or remarks characterizing the prior art as less effective do not remove those disclosures as enabling references. See Micro Chem., 194 F.3d at 1260."