Opinions / Panel Activity

Late last month, the Federal Circuit issued its opinion in FS.COM Inc. v. International Trade Commission, a patent case we have been following because it attracted an amicus brief. In the opinion, the Federal Circuit reviewed a determination by the International Trade Commission that FS violated 19 U.S.C. § 1337. In an opinion authored by Chief Judge Moore and joined by Judges Prost and Hughes, the Federal Circuit affirmed the ITC’s decision. This is our opinion summary.

Chief Judge Moore presented the facts of the case:

Corning Optical Communications LLC (Corning) filed a complaint with the Commission alleging FS was violating § 337 by importing high-density fiber optic equipment that infringed U.S. Patent Nos. 9,020,320; 10,444,456; 10,120,153; and 8,712,206. Those patents generally relate to fiber optic technology commonly used in data centers. . . . After investigating Corning’s complaint, the ALJ issued an initial determination finding FS’ importation of high-density fiber optic equipment violated § 337. The ALJ found FS induced infringement of claims 1 and 3 of the ’320 patent; claims 11, 12, 14–16, 19, and 21 of the ’456 patent; and claims 9, 16, 23, and 26 of the ’153 patent. The ALJ further found FS’ accused modules directly infringed claims 22 and 23, which depend from claim 14, of the ’206 patent. In reaching this finding, the ALJ adopted the Office of Unfair Import Investigations’ construction of “a front opening” as recited in the claims. Finally, the ALJ rejected FS’ various invalidity challenges, including its argument that certain claims of the ’320 and ’456 patents were not enabled.

FS petitioned for Commission review. The Commission decided to review the initial determination in part, including the ALJ’s construction of “a front opening” in the ’206 patent. It adopted Corning’s proposed construction and affirmed the ALJ’s resulting infringement finding. It declined to review the ALJ’s enablement determination and adopted the ALJ’s analysis. The Commission ultimately affirmed the ALJ’s determination that FS violated § 337 and issued a general exclusion order prohibiting the importation of infringing high-density fiber optic equipment and components thereof and a cease-and-desist order directed to FS.

FS appeals the Commission’s determination that the claims of the ’320 and ’456 patents are enabled and its claim construction of “a front opening” in the ’206 patent.

After presenting the facts of the case, Chief Judge Moore first addressed this issue of enablement. She explained that, to “enable, ‘the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.’” She further explained that “the Commission determined the challenged claims were enabled because skilled artisans would understand the claims have an inherent upper limit and that the specification enables skilled artisans to approach that limit.” She expounded on the Commission’s findings and stated that, in light of the evidence, the Commission’s holding of “the open-ended claims” having an “inherent upper limit” was proper. Thus, the court affirmed “the Commission’s enablement determination.”

Next, Chief Judge Moore reviewed the Commission construction of “a front opening” as a phrase that “encompasses one or more openings.” She explained that, in general, “the terms ‘a’ or ‘an’ in a patent claim mean ‘one or more,’ unless the patentee evinces a clear intent to limit” these terms to mean “one.” Chief Judge Moore went on to say that, in this case, the “claim language and written description do not demonstrate a clear intent to depart” from the general rule. Therefore, the court saw “no reason to depart from the general rule that ‘a front opening’ encompasses one or more openings.”

Finally, with regard to “the parties’ remaining arguments,” Chief Judge Moore reported the court found “them unpersuasive.” The court affirmed the Commission’s decision.