Wednesday, July 17, 2019

Claims May Be Construed with Reference to the Entire Specification

Tetra Tech EBA Inc v Georgetown Rail Equipment Co 2019 FCA 203 Dawson JA: Pelletier, Webb JJA rev’g Georgetown Rail Equipment Co v Rail Radar Inc 2018 FC 70 Fothergill J
             2,572,082 / 2,766,249

In Georgetown Rail v Rail Radar (blogged here), Fothergill J held that Georgetown’s 082 and 249 patents were valid and infringed by Tetra Tech EBA Inc, dismissing the main validity attack, that was based on obviousness. The FCA has now reversed.

The appeal relating to the 249 patent turned on claim construction. The FCA reversed Forthergill J on claim construction, presumably applying a correctness standard,given that claim construction is a matter of law [89]. In NOVA v Dow 2016 FCA 216 [15] the FCA suggested that in some circumstances, particularly where claim constructions turns on the trial judge’s assessment of expert evidence concerning the meaning of terms used in the claims, trial judges might be given “some leeway” in claim construction. Dawson JA made no reference to this quasi-deferential standard, but her decision is not inconsistent with it. In this case, the disputed construction did not turn on an appreciation of expert evidence, but rather on the interplay between the disclosure and claims; that is, a quintessentially judicial function of interpreting a written document. The obviousness of the claims alleged to have been infringed followed straightforwardly from the new claim construction [125]-[130].

A controversial point related to claim construction is whether having recourse to the disclosure as an aid to construing the claims is always permissible, or is permissible only if the claims are ambiguous when read on their own: see here and here. Dawson JA did not directly address the controversy, but she began her analysis by remarking (my emphasis):

[104] I begin the construction exercise with the Patent’s disclosure, mindful that while claims may be construed with reference to the entire specification, the disclosure may not be used to enlarge or contract the scope of a claim as written.

This passing remark strikes me as a succinct statement of the correct approach. It is always permissible to construe claims with reference to the disclosure, but it is never permissible to use the disclosure to change the scope of the claims, once the claims have been construed in light of the disclosure. (That is, absent any invocation of essential elements or Actavis-style expanded protection.) The line between construing the claim in light of the disclosure and importing limitations from the disclosure into the claims may sometimes be a bit blurry, but the law is full of lines that are sometimes blurry. This particular distinction strikes me as conceptually sound and easy enough to apply in most cases.

The appeal relating to the 082 patent turned on obviousness, with the key point being that the common general knowledge must be taken into account in assessing obviousness [13]. This, of course, does not represent new law.

The patents related to an automated system and method for inspecting railroad track using a laser and camera to collect information about the railroad track, plus a processor to analyze the information according to a specified algorithm: FC [16], [31]. The individual components were known and there was no suggestion of inventive ingenuity in adapting those components to implement the algorithm: FC [146]. One of the problems addressed by the 082 patent was identifying “plate cut” which occurs when a tie plate, which fastens the rail to the wooden crosstie, cuts into the crosstie as a result of the vibration of the passing trains. Fothergill J noted that all of the components and technology used by the claimed invention were known in the prior art, but “none of the prior art identifies plate cut or rail seat abrasion as problems to be solved, or suggests solutions similar to those disclosed by the 082 and 249 Patents”: FC [146]. However, as Dawson JA emphasized, this statement was based on the six items of prior art that were submitted in Tetra’s expert report, and did not consider whether those elements were found in the common general knowledge as accepted by Fothergill J: FCA [60], [62]. So, plate cut itself was well known in the prior art, and indeed was required to understand the undefined term “sunken plate” (a plate that has sunk into the tie through plate cut) used in the patent itself [18], so it must have been obvious to identify plate cut as a problem [66]. There was also a problem in how to identify plate cut, because plate cut is hidden when viewed from above since it occurs under the tie plate. The 082 patent solved this problem by comparing the height of the crosstie with the height of the tie plate [67]. But, as Dawson JA noted, “This was the very measurement human inspectors took when trying to identify plate cut” [68]; Georgetown’s own expert testified to that effect [70]. Thus the method of identifying plate cut was known in the prior art, and Forthergill J had found that there was nothing inventive in the way that that known solution was implemented by the automated system.

The strength of these points is illustrated by Georgetown’s strained response, that “although defects such as plate cut and rail seat abrasion were defects known to ‘railway people’, these defects were not held by the Court to be within the common general knowledge of the person skilled in the art” [22]. That is, the problem and solution adopted by the patent would not have been obvious to a person such as myself, wholly ignorant of railways. But Dawson JA had no difficulty in dismissing this argument, both in light of Fothergill J’s express findings regarding the common general knowledge, and in light of the general principle that “[t]he identification of the ordinary person skilled in the art should be consistent with the specification of the patent” [26].

Forthergill J’s failure to address obviousness in light of the common general knowledge was an error of law [63]. The principle applied by the FCA is well established and the decision does not reflect any change in the law.

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