Issue 240 | September 16, 2004
Power Mosfet v. Siemens
In re Bigio

Power Mosfet v. Siemens

In Power Mosfet Technologies, L.L.C., et al. v. Siemens AG, et al., Nos. 03-1083, -1469, -1470, -1471 (Fed. Cir. August 17, 2004), the federal circuit affirmed the judgments of noninfringement of Power Mosfet’s (“PMT’s”) ‘275 patent, the denial of PMT’s motion for a new trial, and the denial of defendant Infineon’s motion for attorneys’ fees and defendant International Rectifier’s (“IR’s) motion for costs.

PMT’s ‘275 patent is directed to a semiconductor power device. Prior to trial, a special master construed the terms “contact layer,” “voltage sustaining layer” and “contacting” in isolation, but not as a whole. The court adopted the special master’s report, and following a bench trial, found no infringement by any of the defendants based on a reconciliation of certain claim terms as issued by the special master.

On appeal, PMT challenged the district court’s conclusion that the “second interface” was not formed in Infineon’s device because the alternating semiconductor regions in the voltage sustaining layer did not physically touch the second contact layer. First, PMT disputed the district court’s physical contact requirement. Second, PMT argued that the district court changed its claim construction of the term “contacting” from permitting either electrical or physical contact as adopted by the district court prior to trial, to requiring physical contact in the district court’s final decision. PMT relied heavily on statements made in the Special Master's Report explaining that “the term is used throughout the claims to mean the common boundary between the ‘contact layer’ and the ‘voltage sustaining layer.’” According to PMT, no interface was required between the CB-layer and the contact layer. The federal circuit disagreed, stating that the Special Master had no opportunity to reconcile the functional definition he adopted for “contacting” with his structural interpretation of “interface.” The district court undertook the necessary reconciliation, and properly concluded that while the “contacting” requirement may be satisfied with either physical or electrical contact, electrical contact alone could form the “necessarily physical” junction required for the interface.

Affirming the district court’s claim construction, the federal circuit also affirmed the district court’s noninfringement ruling.

The federal circuit refused to overturn the district court’s denial of PMT’s motion for a new trial. PMT argued that the district court improperly altered its earlier claim construction, prejudicing PMT’s failure to present evidence on equivalents. The federal circuit disagreed, noting that the claim construction adopted by the district court was merely a list of claim term definitions, not a final construction of the claims as a whole:

while a construction of the claims as a whole would have been beneficial to the litigants, the district court’s failure to provide one rendered impossible the changed claim construction of which PMT complains. To the contrary, there was never a full claim construction provided by the district court prior to its decision, and none was required.

Citing Exxon Chemical Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553 (Fed. Cir. 1995), the federal circuit stated that the parties should have put in any evidence they deemed necessary at trial, since claim construction issues were not settled at trial.

To view the full decision visit http://www.aplf.org/mailer/Issue240Mosfet.doc

In re Bigio

In In re Bigio, No. 03-1358 (Fed. Cir., August 24, 2004), the federal circuit affirmed the Board’s final rejection of applicants’ claims to a hair brush as obvious under §103.

Bigio’s appealed claims are all directed to a hair brush. So too, are the disclosure and the drawings. The Board affirmed the rejection of the appealed claims based on three prior art references directed to toothbrushes. Rejecting Bigio’s argument that a “hair brush” was limited to brushes for scalp hair, the Board first construed “hair brush” to encompass “not only brushes that may be used for human hair on [a] scalp, but also brushes that may be used for hairs [o]n other parts of animal bodies (e.g. human facial hair, human eyebrow hair, or pet hair).” Under this interpretation of “hair brush,” the Board determined that toothbrushes fell within Bigio’s field of endeavor and thus constituted analogous art.

On appeal, the federal circuit first rejected Bigio’s claim interpretation argument based on the ‘broadest reasonable interpretation’ rule, which requires claims to be read as broadly as possible during prosecution in order that the applicant “remove any ambiguity in claim term meaning by amending the application.” Applying this rule, the term “hair brush” encompassed not only scalp hair brushes but also facial hair brushes. According to the majority, Bigio improperly sought to narrow hair to scalp hair by importing limitations from the specification into the claims. Interestingly, Bigio’s ‘Objects of the Invention,’ section disclosed an ‘anatomically correct hairbrush’ for brushing scalp hair. Nevertheless, the court counseled against the temptation to limit broad claim terms solely on the basis of specification passages. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).

Second, the court concluded that the toothbrush prior art cited by the PTO was in the same field of endeavor as the hair brush of the invention endeavor because “the structural similarities between toothbrushes and small brushes for hair would have led one of ordinary skill in the art working in the specific field of hairbrushes to consider all similar brushes including toothbrushes.” The court affirmed the Board’s reasoning that the toothbrush art could function as well for brushing facial hair, and reiterated the objective nature of the “field of endeavor” test, stating that it is necessary to use “common sense – in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” (emphasis in original). Common sense.

Dissenting, Judge Newman stated that the toothbrush art is not analogous to the hair brush art and that a hair brush has no more relation to a tooth brush “than does hair resemble teeth.” Pointing to the repeated disclosures of hair brushes in the specification and prosecution history, Judge Newman stated that the applicant was not importing limitations from the specification into the claims; rather, the scope of the claims was fully commensurate with the specification.

The case is illustrative of the panel members’ diverging views on rules and modes of claim interpretation, and foretells of the eventual difficulties in resolving some of those issues as the court wrestles with the pending en banc Phillips case.

To view the full decision visit http://www.aplf.org/mailer/Issue240Bigio.doc

To discuss these topics further, please feel free to contact the author Michael R. Dzwonczyk, (mdzwonczyk@sughrue.com), at Sughrue Mion, PLLC in Washington DC, USA.

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