Product-By-Process Construction Dooms Claims

• Published date: 23 November 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Caitlin E. O'Connell, Shannon Patrick, Amanda Murphy, Stacy Lewis and Thomas Irving

Holding

In Kamstrup A/S v. Axioma Metering UAB, No. 2021-1923 (Fed. Cir. Aug. 12, 2022) ('Kamstrup'), the Court of Appeals for the Federal Circuit affirmed the holding of the Patent Trial and Appeal Board that the challenged claims of U.S. Patent No. 8,806,957 were unpatentable. See Axioma Metering UAB v. Kamstrup A/S, IPR2019-01640, Paper 32 (P.T.A.B. April 1, 2021). This post focuses on the product-by-process claim element.

Background

Axioma challenged claims 1- 15 of the '957 patent on anticipation and obviousness grounds. Independent claim 1 recited:

An ultrasonic flow meter housing comprising:

a monolithic polymer structure being cast in one piece, the monolithic structure includes a flow tube and a cavity separated from the flow tube, wherein the flow tube defines a through-going straight flow section arranged for passage of a fluid between an inlet and an outlet, wherein a part of a wall of the flow section is part of an inside surface of the cavity, so that the flow section and the cavity has a shared wall area; and

wherein the cavity is arranged for housing

at least one ultrasonic transducer, at the shared wall area; and

a measurement circuit operationally connected to the at least one ultrasonic transducer so as to allow measurement of a flow rate of the fluid.

Kamstrup at *3 (emphasis in original).

The Board construed the claim phrase 'being cast in one piece,' as a product-by-process element. Id. at *4. As such, the phrase was not given patentable weight and, thus, not considered in either the anticipation or the obviousness calculus. Id. Ultimately, the Board found the claims anticipated. Id. at *5.

Federal Circuit

The Federal Circuit agreed with the Board that the phrase 'cast in one piece' is a product-by-process claim element because 'it describes the structure 'being' cast in a particular way.' Id. at *10-11. Kamstrup argued that the 'mere mention of a process in a claim limitation does not automatically convert that limitation into a process limitation.' Id. at *11. The Federal Circuit noted, however, that Kamstrup did not explain why the claim should not be considered as a product-by-process claim or show where the specification described structure for the term. Id.

The Federal Circuit also agreed with the Board that the 'cast in one piece' limitation did not impart patentable weight. Kamstrup argued that the Board erred in finding that there are no functional or structural differences between polymer structures cast in a single...