Argument Recap

The Federal Circuit heard oral argument earlier this month in FS.COM Inc. v. International Trade Commission, a patent case that attracted an amicus brief. In this case, the Federal Circuit is reviewing a determination by the ITC that Panduit Corp. and The Siemon Company infringed certain patents and The Siemon Company and Inc. infringed one patent. The panel hearing the oral argument included Chief Judge Moore and Judges Prost and Hughes. This is our argument recap.

Darlene Ghavimi argued for FS. She began by arguing that it is a legal question whether the Commission properly applied the correct meaning of “inherent” in finding the claim covered the existence of an “inherent” upper limit. One judge then asked whether it is only a legal question of what the definition of “inherent” is. Ghavimi responded that it is a claim construction dispute and, in the context of enablement, this matters because the scope of what needs to be enabled must first be determined. Another judge than asked why the limit is inherent if it is possible that, in the future, later discoveries could expand that limit. Ghavimi responded that there is an upper limit known at the time of the invention, but she argued that the limit is not inherent. Something inherent, she argued, would be something like the speed of light, which never changes.

One judge then questioned how there would be enablement for anything above 144 (the known limit) if the only way the claims can be deemed enabled is if there is an inherent upper limit and it is found to be 144. Ghavimi agreed and argued it is unclear what the ITC found to be the upper limit. Further, she asserted, when the ITC applied its enablement test, it found that the specification enabled up to that limit. Lastly, a judge asked what the problem is if the claims are enabled up to 144, if the goods being excluded are at 144. Ghavimi responded that the problem is the claim scope is not limited to 144 because it says “at least.”

Cathey Chen argued for the ITC. She began by asserting that no remand is necessary because there is an inherent upper limit and that one of ordinary skill in the art would recognize that limit. One judge asked what the inherent upper limit is. Chen responded that it is around 144 according to the engineers, and she said it is approximated. A judge then questioned whether the ITC accepted that the number could be larger. Chen responded that what FS is trying to say is the upper limit is up to infinity, but if you read the ALJ’s initial determination, he determined the upper is about 144, which is not disputed by the experts.

Another judge inquired about the exclusion order in regard to whether it covers anything above 144. Chen responded by clarifying that the exclusion order recites that the claim limitation means at least 98 fiber optic connections. The same judge then asked whether FS can exclude any products higher than 144. In response, Chen asserted that question was not at issue before the Commission and the Commission’s remedy is not challenged on appeal. Chen, however, also indicated that she did not believe the exclusion order will be read broadly because the inherent upper limit is 144. Lastly, another judge asked what the harm would be in sending the case back to the ITC saying the ITC needs to modify the exclusion order to specifically call out 144. Chen then responded that FS has not shown undue experimentation, and she asserted the burden is on FS to show undue experimentation.

In rebuttal, Ghavimi argued the court’s discussion of the exclusion order proved the point that the exclusion order needs clarification and the additional point that the ITC’s decision was unclear. She concluded her rebuttal by highlighting that other patents that are no longer in front of the court do not recite open-ended claims.

We will report on the Federal Circuit’s disposition of this case.