CHAPTER 2

THE CRITICAL ROLES OF THE SPECIFICATION, CLAIMS AND PROSECUTION IN CLAIM CONSTRUCTION LOCKING IN LITERAL INFRINGEMENT
Dale S. Lazar
DLA Piper LLP (US)

1999-2009 Dale S. Lazar

CRAFTING & DRAFTING WINNING PATENTS CHAPTER 2 The Critical Roles of the Specification, Claims And Prosecution in Claim Construction Locking in Literal Infringement TABLE OF CONTENTS I. Use of Specification, Abstract of the Disclosure, and Claims in Claim Construction Pre-Phillips..........................................................................2 A. Multiform Desiccants Degradable Limited to Dissoluble Based on Specification.................................................................................2 B. Even the Abstract May Be Employed to Construe Claims....................6 C. SciMed v. ACS Protection Limited to Arrangement in Specification Based on Statement in Specification...............................................8 D. Kimberly-Clark v. Tyco Protection Limited by Statements in Specification Despite Broadening Amendment............................11 E. Teleflex v. Ficosa North America Ordinary Meaning of Claim Terminology Prevails......................................................................14 F. CCS Fitness v. Brunswick Exceptions to Use of Ordinary Meaning Crystallized.......................................................................................17 II. Phillips v. AWH Corp.........................................................................................21 A. District Court Finds No Infringement..................................................23 B. Original Federal Circuit Three Judge Panel Affirms.........................23 C. Federal Circuit En Banc Decision Rules of Claim Construction...24 D. The Role of Extrinsic Evidence, Including Dictionaries....................27 E. Claims Should Not Be Limited to Details of the Embodiment Disclosed..........................................................................................28 F. Application of Claim Construction Principles to the Facts in Phillips ...........................................................................................................29 G. The Principle of Attempting to Preserve Claim Validity Has Limited Application to Claim Construction................................................31 H. The Court Declines to Address the Deference to Be Accorded to a District Court's Interpretation.......................................................31 I. Judge Mayer's Dissent.............................................................................31 J. Judge Lourie's Dissent............................................................................33 2-i

III. Post-Phillips Claim Construction....................................................................34 A. Post-Phillips Cases in Which Claim Terminology Was Given a Narrow Interpretation Based on the Specification, Prosecution or Incorporation by Reference. .....................................................35 B. Post-Phillips Cases in Which Claim Terminology Was Given a Broad Interpretation Based on the Ordinary Meaning or Claim Differentiation.................................................................................54 IV. Use of Prosecution History to Interpret Claims..............................................68 A. Tol-O-Matic v. Proma Produkt-Und Prosecution History Limits Claim Scope.....................................................................................68 B. Hockerson-Halberstadt Patentee Held to Clear Error in Prosecution History to Narrow Claim Interpretation..................71 C. Wang Laboratories v. AOL Correct Factual Statement About Prior Art in Prosecution History Construed as Distinguishing Invention From Prior Art to Limit Protection..............................74 D. Microsoft v. Multi-Tech Comments in Child Application After Parent Issues Limits Protection Provided by Parent...................77 E. Liebel-Flarsheim v. Medrad - Ordinary Meaning Prevails, Claims Broadened During Prosecution After Patentee Discovers Defendants Product.......................................................................80 F. Hakim v. Cannon Avent Group PLC Narrow Construction Based on Disclaimed Scope in Parent Application Despite Continuation Amendment......................................................................................83 G. Computer Docking Station Corp. v. Dell Inc. - Narrow Construction as a Result of Prosecution History................................................85 V. Use of Extrinsic Evidence to Interpret Claims.................................................87 A. Vitronics v. Conceptronic If Intrinsic Evidence Is Sufficient to Construe Claims, Extrinsic Evidence Is Entitled to No Weight. 88 B. Fromson v. Anitec Printing Plates Extrinsic Evidence Used to Narrow Scope of Protection to Less Than Ordinary Meaning...92 C. Pitney Bowes v. Hewlett Packard Extrinsic Evidence Can Always Be Considered But Can Never Override Intrinsic Evidence.......95 D. Global Maintech v. I/O Concepts Reaffirming the Proper Use of Extrinsic Evidence in Claim Construction in the Post-Phillips Era....................................................................................................99 E. Helmsderfer v. Bobrick Washroom Equipment, Inc. Extrinsic Evidence Can Exclude Disclosed Embodiments........................100 VI. LP-CD Techniques to Avert Unduly Narrow Claim Construction.............103

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A. Describe Multiple Embodiments, Multiple Alternatives for Each Element, and Multiple Features (e.g., Shapes and Locations) for Each Element in the Specification..............................................103 B. Conduct the Most Exhaustive Pre-Filing Prior Art Investigation That Your Clients Resources Permit...................................................105 C. File Numerous Claims of Widely Varying Scope..............................105 D. Make No Reference in the Specification to "The Invention" (as Distinguished from An Embodiment of the Invention) or Its Advantages.....................................................................................106

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CHAPTER 2 TABLE OF AUTHORITIES Cases Acumed LLC v. Stryker Corp., 483 F.3d 800, 82 U.S.P.Q.2d 1481 (Fed. Cir. 2007)............................................59, 60, 61 Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 54 U.S.P.Q.2d 1673 (Fed. Cir. 2000).......................................................44 Anderson v. Bessemer City, 470 U.S. 564 (1985)...........................................................................................................33 Autogiro Co. of Am. v. United States, 384 F.2d 391, 155 U.S.P.Q. 697 (Ct. Cl. 1967)..................................................................1 Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001)...................................................................................25, 56 Brown v. Piper, 91 U.S. 37 (1875)...............................................................................................................88 C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858 (Fed. Cir. 2004)...........................................................................................26 Cannon Rubber Limited v. The First Years, Inc., No. 05-1063, 2005 WL 3542910 (Fed. Cir. 2005) (non-precedential).............................54 CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 62 U.S.P.Q.2d 1658 (Fed. Cir. 2002)..........................................18, 20, 26 Computer Docking Station Corp. v. Dell Inc., 519 F.3d 1366, 86 U.S.P.Q.2d 1129 (Fed. Cir. 2008).................................................86, 87 Cook Biotech Inc. v. ACell Inc., 460 F.3d 1365, 79 U.S.P.Q.2d 1865 (Fed. Cir. 2006).................................................43, 44 D.M.I., Inc v. Deere & Co., 755 F.2d 1570, 225 U.S.P.Q. 236 (Fed. Cir. 1985).........................................................107 Decisioning.com Inc. v. Federated Dep't Stores, Inc., 527 F.3d 1300 (Fed. Cir. 2008).............................................................................48, 49, 51 Dow Chemical Co. v. United States, 226 F.3d 1334, 56 U.S.P.Q.2d 1014 (Fed. Cir. 2000).........................................................7

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Felix v. American Honda Motor Company, Inc., 562 F.3d 1167 (Fed. Cir. 2009).........................................................................................53 Fin Control Sys. Pty., Ltd. v. OAM, Inc., 265 F.3d 1311 (Fed. Cir. 2001).........................................................................................47 Fonar Corp. v. Johnson & Johnson, 821 F.2d 627, 3 U.S.P.Q.2d 1109 (Fed. Cir. 1987).......................................................1, 88 Fromson v. Anitec Printing Plates Inc., 132 F.3d 1437, 45 U.S.P.Q.2d 1269 (Fed. Cir. 1997).................................................93, 96 Global Maintech Corp. v. I/O Concepts, Inc., No. 05-1340, 2006 WL 1153574 (Fed. Cir. May 2, 2006) (non-precedential)............................................................................................................101 Hakim v. Cannon Avent Group PLC, 479 F.3d 1313, 81 U.S.P.Q.2d 1900 (Fed. Cir. 2007)....................................83, 84, 85, 86 Helmsderfer v. Bobrick Washroom Equipment, Inc., 527 F.3d 1379, 87 U.S.P.Q.2d 1216 (Fed. Cir. 2008)....................................102, 103, 104 Heuft Systemtchnik GMBH v. Industrial Dynamics Co., LTD 282 Fed. Appx. 836, 2008 U.S. App. LEXIS 13486 (Fed. Cir. 2009).......................51, 53 Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 54 U.S.P.Q.2d 1437 (Fed. Cir. 2000).........................................................6 Hockerson-Halberstadt Inc. v TC . Avia Group International, Inc., 222 F.3d 951, 55 U.S.P.Q.2d 1487 (Fed. Cir. 2000)...................................................71, 72 Honeywell v. ITT and TG Fluid Systems, 452 F.3d 1312, 79 U.S.P.Q.2d 1294 (Fed. Cir. 2006).........................................39, 42, 59 Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111 (Fed. Cir. 2004).............................................................................24, 25, 29 Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373 (Fed. Cir. 2002).........................................................................................26 Izumi Products Co. v. Koninklijke Philips Electronics N.V., Nos. 04-1418, 04-1423, 140 Fed. Appx. 236, 2005 U.S. App. LEXIS 13553 (Fed. Cir. 2005) (non-precedential)....................................................................................................38 Jonsson v. Stanley Works, 903 F.2d 812, 14 U.S.P.Q.2d 1863 (Fed. Cir. 1990)...................................................88, 89

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Kimberly-Clark Corp. v. Tyco International, Inc., No. 00-1080, 4 Fed. Appx. 946, 2001 WL 170461, 2001 U.S. App. LEXIS 2734 (Fed. Cir. Feb. 20, 2001) (non-precedential)..............................................................................11 Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 69 U.S.P.Q.2d 1801 (Fed. Cir. 2004)......................................25, 31, 81, 83 Markman v. Westview Instruments, Inc., 52 F.3d 967, 34 U.S.P.Q.2d 1321 (Fed. Cir. 1995), unanimously affd, 517 U.S. 370, 116 S. Ct. 1384, 38 U.S.P.Q.2d 1461 (1996)......................1, 25, 29, 68, 88 Medegen MMS, Inc. v. ICU Medical, Inc., 90 U.S.P.Q.2d 1088, 2008 U.S. App. LEXIS 24088 (Fed. Cir. 2008).......................64, 65 Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 69 U.S.P.Q.2d 1815 (Fed. Cir. 2004)........................77, 78, 79, 80, 81, 83 Multiform Desiccants, Inc. v TC . Medzam, Ltd., 133 F.3d 1473, 45 U.S.P.Q.2d 1429 (Fed. Cir. 1998)............................2, 5, 6, 25, 26, 105 NCube Corp. v. Seachange International Inc., 436 F.3d 1317, 77 U.S.P.Q.2d 1481 (Fed. Cir. 2006).......................................................57 Nystrom v. Trex Co., 424 F. 3d 1136, 76 U.S.P.Q.2d 1481 (Fed. Cir. 2005)...................................35, 36, 37, 38 Oatey Co. v. IPS Corp., 514 F.3d 1271, 85 U.S.P.Q.2d 1791 (Fed. Cir. 2008)..........................................34, 61, 64 Ormco Corp. v. Align Technology, Inc., 498 F.3d 1307, 84 U.S.P.Q.2d 1146 (Fed. Cir. 2007)....................................34, 66, 67, 68 Pause Technology v. TiVo, Inc., 419 F.3d 1326, 76 U.S.P.Q.2d 1110 (Fed. Cir. 2005).......................................................38 Phillips v. AWH Corp., 363 F.3d 1207, 70 U.S.P.Q.2d 1417 (Fed. Cir.), vacated, 376 F.3d 1382, 71 U.S.P.Q.2d 1765 (Fed. Cir. 2004)........................................21, 24, 101 Phillips v. AWH Corp., 415 F.3d 1303, 75 U.S.P.Q.2d 1321 (Fed. Cir. 2005) (en banc)...2, 21, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 44, 47, 48, 54, 56, 59, 61, 64, 66, 67, 101 Phillips v. AWH Corp., No. 97-MK-212 (D. Colo. Mar. 22, 1999)........................................................................21 Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 51 U.S.P.Q.2d 1161 (Fed. Cir. 1999)..........................27, 96, 97, 100, 101

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PODS Inc. v. Porta Stor Inc., 82 U.S.P.Q.2d 1553 (Fed. Cir. 2007)........................................................44, 45, 46, 47, 48 Resonate, Inc. v. Alteon Websystems, Inc., 338 F.3d 1360 (Fed. Cir. 2003).........................................................................................31 Rexnord Corp. v. Laitram Corp., 274 F.3d 1336 (Fed. Cir. 2001).........................................................................................25 SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 58 U.S.P.Q.2d 1059 (Fed. Cir. 2001)8, 9, 10, 11, 26, 28, 29, 82, 107, 108 Southwall Technologies, Inc. v. Cardinal IG Company, 54 F.3d 1570, 34 U.S.P.Q. 2d 1673 (Fed. Cir. 1995)..................................................68, 88 Tandon Corp. v. U.S. Intl Trade Commn, 831 F.2d 1017, 4 U.S.P.Q.2d 1283 (Fed. Cir. 1987).........................................................37 Teleflex Inc., v TC . Ficosa North America Corp., 299 F.3d 1313, 63 U.S.P.Q.2d 1374 (Fed. Cir. 2002)....................................14, 17, 18, 26 Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002)...................................................................................27, 28 Tol-O-Matic, Inc. v. Proma Produkt-Und Mktg. Gesellschaft m.b.H., 945 F.2d 1546, 20 U.S.P.Q.2d 1332 (Fed. Cir. 1991).................................................68, 71 Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 19 U.S.P.Q.2d 1500 (Fed. Cir. 1991).........................................................1 Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 39 U.S.P.Q.2d 1573 (Fed. Cir. 1996)......24, 25, 26, 29, 89, 92, 93, 96, 100 Wang Laboratories, Inc. v. America Online, Inc., 197 F.3d 1377, 53 U.S.P.Q.2d 1161 (Fed. Cir. 1999)..................14, 17, 74, 75, 76, 77, 82 White v. Dunbar, 119 U.S. 47 (1886).............................................................................................................24 Rules 37 C.F.R. 1.72(b)....................................................................................................................7

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CHAPTER 2 THE CRITICAL ROLES OF THE SPECIFICATION, CLAIMS AND PROSECUTION IN CLAIM CONSTRUCTION LOCKING IN LITERAL INFRINGEMENT In analyzing a patent for infringement the claims must initially be construed--i.e., terms must be given meaning and the scope of the claims must be defined. As stated in Markman v. Westview Instruments, Inc. (Markman)1 "To ascertain the meaning of claims, we consider three sources: The claims, the specification and the prosecution history.2 Expert testimony including evidence of how those skilled in the art would interpret the claims may also be used.3 Thus, according to Markman there are three intrinsic claim construction tools, namely: 1) 2) 3) the claims; the specification; and the prosecution history

and a fourth extrinsic claim construction tool which consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises, and which may be grouped together as: 4) extrinsic evidence. The decisions discussed throughout this chapter demonstrate that the Federal Circuit has used the specification, prosecution history and even extrinsic evidence to override the plain meaning of claim terminology with regularity. On other occasions the Federal Circuit has reprimanded defendants for suggesting that limitations from the specification should be read into the claims. The net result has been chaos, with the patent owner often receiving protection of a scope narrower that those skilled in the art would imagine from the literal, ordinary meaning of the claim.

52 F.3d 967, 34 U.S.P.Q.2d 1321 (Fed. Cir. 1995), unanimously affd, 517 U.S. 370, 116 S. Ct. 1384, 38 U.S.P.Q.2d 1461 (1996).
2

Id. at 979, 34 U.S.P.Q.2d at 1329 (citing Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1561, 19 U.S.P.Q.2d 1500 (Fed. Cir. 1991)); accord Autogiro Co. of Am. v. United States, 384 F.2d 391, 396-98, 155 U.S.P.Q. 697, 70103 (Ct. Cl. 1967).
3

Id. (citing Fonar Corp. v. Johnson & Johnson, 821 F.2d 627, 3 U.S.P.Q.2d 1109 (Fed. Cir. 1987)).

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Perhaps recognizing the chaos that it has created, the Federal Circuit reconsidered Phillips v. AWH Corp. on an en banc basis.4 The en banc effort was to force the Federal Circuit judges onto the same claim interpretation page. But has the chaos been resolved? Post-Phillips cases demonstrate that chaos continues to reign often on the back of the patentee. This chapter will demonstrate the chaos that existed before Phillips. The attempt to end the chaos in Phillips will be discussed. Then an analysis of post-Phillips cases will demonstrate that the level of chaos today is as great as it was before Phillips. I. Use of Specification, Abstract of the Disclosure, and Claims in Claim Construction Pre-Phillips As suggested above, the Federal Circuit has woven an unsteady path between giving claim terminology its ordinary meaning and restricting the scope of protection to embodiments described in the specification. A. Multiform Desiccants Degradable Limited to Dissoluble Based on Specification

Multiform Desiccants, Inc. v. Medzam, Ltd. (Multiform)5 was a patent infringement lawsuit involving a patent directed to a packet for use in controlling spilled liquids. Such a packet might be employed between inner and outer shipping containers so that if a liquid within the inner shipping container began to leak, the packet would absorb, immobilize and treat the spilled liquid. The patent specification described that the packet was made of a soluble material which dissolves upon becoming wet so that absorptive material within the packet is released. As illustrated in the patent, particularly Figures 5 and 6 reproduced below, the specifically described embodiment of the Multiform envelope 11 essentially disappeared in the presence of liquids, thereby releasing its contents.

4 5

415 F.3d 1303, 75 U.S.P.Q.2d 1321 (Fed. Cir. 2005) (en banc). 133 F.3d 1473, 45 U.S.P.Q.2d 1429 (Fed. Cir. 1998).

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According to the patent specification, at col. 2, line 62 to col. 3, line 17: In the present instance the degradable outer layer 15 of envelope 11 is a starch paper which is degradable in water and other liquids. A starch paper which has been used successfully is known under the trademark DISSOLVO and is a product of Gilbreth International Corporation, and it is obtainable in grades No. 2845 and No. 2800. It is a composition which includes between about 80-82% sodium carboxymethyl cellulose and about 18% wood pulp fiber and other trace materials such as calcium carbonate and titanium dioxide. However, the envelope may be of any other liquid-degradable material. The dot matrix pattern, or any other suitable discontinuous pattern, permits liquid, which may not otherwise be able to dissolve the material of coating 17, to completely degrade envelope 11 because there are uncoated spaces 18 between the dots of the coating 17 through which the liquid can pass. However, the special advantage of the dot matrix pattern is that the dots are extremely small so that even if they do not dissolve, the degraded envelope will be practically entirely disintegrated, whereas if the discontinuous pattern consisted of large areas of coating, complete disintegration might not be obtained even though the envelope itself was degraded. Figures 4 and 4a below illustrate the referenced dot matrix patterns 17 that leave the degradable material 15 broadly exposed to the penetrating liquid at sites 18.

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Claim 1 from the patent is as set forth below. 1. A packet for absorbing and immobilizing a liquid comprising an envelope which is degradable in said liquid, a first material in said envelope for absorbing and immobilizing said liquid, and a second material confined in said envelope for additionally treating said liquid which is absorbed and immobilized to nullify a specific undesirable quality thereof. Defendant Medzam made a packet which also could be used to control spills that included an envelope filled with absorbing and immobilizing material. Medzam's envelope, however, was made of porous material that did not dissolve in liquid, such as that used for tea bags. When spilled liquid penetrated the porous envelope, the absorptive material inside expanded. As a result, the envelope split open, releasing its contents for further absorption. The issue for the district court is whether Medzam's envelope was covered by the claim language "an envelope which is degradable." The district court held that, as used by the patentee, the term "degradable" means that the envelope at least partially dissolves and disintegrates in the liquid. Therefore, the district court determined that Medzam's packet did not infringe. The Federal Circuit affirmed. In doing so, the Federal Circuit reviewed the role of the specification and prosecution history in determining claim construction: It is the person of ordinary skill in the field of the invention through whose eyes the claims are construed. Such person is deemed to read the words used in the patent documents with an understanding of their meaning in the field, and to have knowledge of any special meaning and usage in the field. The inventor's words that are used to describe the invention - the inventor's lexicography - must be understood and interpreted by the court as they would be understood and interpreted by a person in that field of technology. Thus the 2-4

court starts the decision making process by reviewing the same sources as would that person, viz., the patent specification and the prosecution history. These documents have legal as well as technical content, for they show not only the framework of the invention as viewed by the inventor, but also the issues of patentability as viewed by the patent examiner.6 Thus, the Federal Circuit restricted the seemingly generic claim term degradable to cover only the species dissoluble described in the specification, effectively limiting the scope of protection provided to the patentee to the disclosed embodiments. Interestingly, during patent prosecution, Multiform submitted a dictionary definition of "degradable" and argued: The word "degrade" includes the definitions of "to deprive of standing or true function" and "to impair in respect of some physical property." Thus when the envelope is dry and not degraded, its true function is to contain its contents. However, once it is exposed to liquid, it is deprived of its standing or true function and it has its physical property of containing its contents impaired.7 Multiform argued that this definition should be employed for "degradable" and clearly covers the defendant's envelope. Medzam argued that the definition was offered only after Multiform became aware of Medzam's packet. Furthermore, Medzam argued that the dictionary definition is contrary to the plain meaning provided in the specification. According to the Federal Circuit: When the meaning of a term is sufficiently clear in the patent specification, that meaning shall apply.This rule of construction recognizes that the inventor may have imparted a special meaning to a term in order to convey a character or property or nuance relevant to the particular invention. Such special meaning, however, must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.8 Therefore, the Federal Circuit first analyzed the specification, noting that the specification explained that degradation of the envelope results in dissolution of the soluble envelope material. Based on the description in the specification, the Federal Circuit determined that "degradable"
6 7 8

Id. at 1477, 45 U.S.P.Q.2d at 1432. Id. Id.

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meant dissolution/degradation of the envelope as defined in the specification. According to the Federal Circuit: Courts must exercise caution lest dictionary definitions, usually the least controversial source of extrinsic evidence, be converted into technical terms of art having legal, not linguistic, significance. The best source for understanding a technical term is the specification from which it arose, informed, as needed, by the prosecution history.9 B. Even the Abstract May Be Employed to Construe Claims

The Federal Circuit has even employed the Abstract of the Disclosure in order to construe claims so as to reach a conclusion of non-infringement. In Hill-Rom Co. v. Kinetic Concepts, Inc.,10 the controversy turned on the meaning of the claim term cushion. The claim is directed to a patient support surface and claims several cushions as elements. The district court interpreted this term to mean an inflatable enclosure or bag, which, when inflated, should provide basic support and comfort.... The defendant sold a patient support surface with inflatable members. However, the purpose of the inflatable members was to turn the patient on his/her side. According to the district court, the defendants inflatable members were not to provide support and comfort. In fact, the defendants inflatable members were not inflated except when the patient was to be turned. Since a cushion must provide support and comfort, the district court ruled after a trial that the defendants patient support surface did not literally infringe. Furthermore, the district court held that there was no infringement under the doctrine of equivalents since the defendants inflatable members performed a substantially different function in a substantially different way. The Federal Circuit affirmed. In construing cushion the Federal Circuit first determined that its ordinary meaning denotes an object providing support or comfort. The Federal Circuit then turned to the intrinsic evidence, noting that the specification describes the cushions as providing support and comfort. The Federal Circuit also quoted from the Abstract of the Disclosure which states that the inflatable structure corresponding to the claimed cushion provides basic support and comfort for the patient. The Federal Circuit acknowledged that its use of the Abstract of the Disclosure to construe claims is expressly contrary to 37 C.F.R. 1.72(b). However, the Federal Circuit noted that the PTO Rules govern the conduct of patent examiners when examining patent
9

Id. at 1478, 45 U.S.P.Q.2d at 1433. 209 F.3d 1337, 54 U.S.P.Q.2d 1437 (Fed. Cir. 2000).

10

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applications, and do not address the process by which courts construe claims in infringement actions. It should be noted that the cushions as claimed in the mechanical predictable technology distinguished patentably from the prior art without any need to rely on a function of support and comfort which was clearly absent from the broad claim as filed and allowed. The Federal Circuit also adopted the district courts reasoning with regard to the doctrine of equivalents. Since the defendants inflatable members do not provide comfort or support, then their structures perform a different function in a different way than the claimed cushions. The Federal Circuit also employed the Abstract of the Disclosure in order to construe claims to reach a conclusion of non-infringement in Dow Chemical Co. v. United States.11 The suit involved a patent for filling abandoned mines to prevent the subsidence of land overlying the mines. The method requires providing a closed system between the injection equipment and the subterranean void to be filled. A suspension of a liquid carrier and solids is then injected into the void. Claim 1 states that the injection occurs: at an injection rate which is sufficiently low such that initially upon entrance into said void from said conduit the velocity of the suspension is below its minimum linear velocity and at least a portion of said solid particles are deposited to form a mound which decreases the cross-sectional area of said void, and sufficiently high to propel the suspension over said mound at a velocity at least equal to said minimum linear velocity to carry particles over said mound whereby they are deposited to increase the length an height thereof, to form a layer of solid particles in said void. Dow and the Court of Federal Claims took the position that once you provide the suspension to a closed system, the required mound would form. The recited injection rate in the portion of the claim quoted above simply describes the desired result of mound formation that occurs when you provide a suspension in the closed system. The Federal Circuit disagreed with the Court of Federal Claims interpretation, deciding that the language quoted above concerning injection rate was critical. In reaching this conclusion, the Federal Circuit looked at the claim itself, the written description of the invention in the patent specification and the prosecution history. To support its position, the Federal Circuit relied in part on the abstract which provided [a]n aqueous suspension of solid particles ... is injected through a conduit which connects the void with a suitable work surface ... and into the void a certain critical minimum rate. The Federal
11

226 F. 3d 1334, 56 U.S.P.Q.2d 1014 (Fed. Cir. 2000).

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Circuit determined that this description in the abstract and similar descriptions in the specification and prosecution history clarified that the injection rate was critical. Therefore, based on a claim construction determined in part by an analysis of the abstract, the Federal Circuit reversed the Court of Federal Claims. C. SciMed v. ACS Protection Limited to Arrangement in Specification Based on Statement in Specification

SciMed Life Systems, Inc. filed suit against Advanced Cardiovascular Systems, Inc. (ACS) in the United States District Court for the Northern District of California charging ACS with infringement of several patents related to balloon dilatation catheters.12

Figure 1 is a side elevational view of a balloon dilatation catheter of the present invention having a distal guide wire lumen and showing a guide wire.

Figure 3 is an enlarged sectional view. Balloon dilatation catheters are used in coronary angioplasty procedures to remove restrictions in coronary arteries.13 The catheters claimed in the SciMed patents contain two passageways, or lumens. The first lumen, the guide-wire lumen, is used to guide the catheter through a patient's arteries to the site of the arterial restriction. A guide wire is first inserted into
12

SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 58 U.S.P.Q.2d 1059 (Fed. Cir. 2001) (SciMed).
13

Id.

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one of the patient's arteries. The guide-wire lumen is then threaded over the guide wire to guide the catheter through the patient's arteries until the catheter reaches the coronary restriction.14 The second lumen is the inflation lumen. It extends through all sections of the catheter and terminates in a connection with the balloon. The balloon is inflated by forcing fluid into the inflation lumen. The balloon then compresses the material restricting the artery, thereby relieving the restriction.15 The following claim is representative of the asserted claims in suit: In an elongate dilatation catheter of the type that can be slidably moved along a guide wire that can extend past a distal end of the catheter, wherein the guide wire is received in a guide wire lumen of the catheter, the guide wire extending from a distal guide wire lumen opening to a proximal guide wire lumen opening disposed in a portion of the catheter that is spaced distally from a proximal end of the catheter, the dilatation catheter including an inflatable balloon and an inflation lumen extending through the catheter separate from the guide wire lumen, an improvement comprising: a first proximal shaft section of the catheter defined by a relatively rigid metallic tube; a second shaft section disposed distally of the first shaft section, the second shaft section being relatively more flexible than the first shaft section; and a transition section disposed between the first shaft section and the second shaft section, the transition section including a transition member comprising a metallic element of gradually diminished dimension, the transition member extending adjacent to the proximal guide wire lumen opening, and the transition member having gradually decreasing rigidity in the distal direction to provide a relatively smooth transition between the first shaft section and the second shaft section. The parties agree that only two arrangements of the two lumens are known and practiced in the art. In the adjacent lumen configuration, the two lumens are positioned side-by-side within the catheter. In the contained lumen configuration, the guide wire lumen runs inside the inflation lumen. Note that the claim is silent concerning the arrangement of the lumens. The parties agreed that the accused ACS devices employed only the adjacent lumen configuration and that the preferred embodiment described in the SciMed patent employs the contained lumen configuration.16 Based on the patent specification, the district court construed the asserted claims to be limited to catheters with the contained lumen arrangement, and not to read on catheters with an adjacent lumen configuration. The court noted that "the language contained in
14 15 16

Id. Id. Id. at 1339, 58 U.S.P.Q.2d at 1061.

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SciMed's specifications expressly limits all embodiments of the claimed invention to a coaxial [sic, contained] structure."17 The court focused in particular on language from the specification describing the contained lumen structure as the "basic sleeve structure for all embodiments of the present invention contemplated and disclosed herein."18 That language, the court concluded, "leaves no doubt that a person skilled in the art would conclude that the inventor envisioned only one design for the catheters taught in SciMed's patents--an intermediate sleeve section containing two . . . lumens arranged coaxially [sic, one within the other]." 19 The court also noted that the specification mentions that the adjacent lumen arrangement is not as desirable as the contained lumen arrangement because of increased size and stiffness. infringe any of the asserted claims. The principal question in SciMed is a narrow one: whether the specification limits the scope of the asserted claims to catheters with the contained lumen arrangement. There is nothing pertinent to this issue in the prosecution history. The case turns entirely on an interpretation of the asserted claims in light of the specification.20 Like the district court, the Federal Circuit interpreted the specification to disclaim the adjacent lumen configuration and to limit the scope of the asserted claims to catheters with the contained lumen structure. Therefore, the Federal Circuit construed the asserted claims to read only on catheters with the contained lumen structure and not on catheters with adjacent lumens. SciMed argued that in construing the claims based on the written description, the district court has committed one of the cardinal sins of patent law--reading a limitation from the written description into the claims.21 But, according to the Federal Circuit, that is not an accurate characterization of what the district court did. Instead, the district court properly followed the invocation that "[c]laims must be read in view of the specification, of which they are a part."22 Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of
17 18 19 20 21 22

In light of the district court's

construction of the asserted claims, SciMed conceded that ACS's accused catheters did not literally

Id. Id. Id. at 1339-40, 58 U.S.P.Q.2d at 1062. Id. at 1340, 58 U.S.P.Q.2d at 1062. Id. Id.

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the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.23 The specification indicates that the claimed invention uses contained, rather than adjacent lumens. Read together, these portions of the specification led the Federal Circuit to the conclusion that the references in the asserted claims to an inflation lumen separate from the guide wire lumen must be understood as referring to contained lumens, and thus that the asserted claims read only on catheters having contained lumens.24 D. Kimberly-Clark v. Tyco Protection Limited by Statements in Specification Despite Broadening Amendment

The specification in conjunction with the prosecution history caused the Federal Circuit to limit the interpretation of claim language to the disclosed embodiment, despite the plain meaning of the claim, in Kimberly-Clark Corp. v. Tyco International, Inc.25 The case involved a series of patents relating to disposable diapers. A figure from the patents is provided below:

Specification: Backsheet 12 liquid impervious Bodyside liner 14 liquid pervious

23 24 25

Id. at 1341, 58 U.S.P.Q.2d at 1062-63. Id. at 1343, 58 U.S.P.Q.2d at 1064.

No. 00-1080, 4 Fed. Appx. 946, 2001 WL 170461, 2001 U.S. App. LEXIS 2734 (Fed. Cir. Feb. 20, 2001) (nonprecedential).

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Flaps 30,32 attached to bodyside liner liquid pervious Claims: Silent concerning nature of flaps As summarized above, the diaper described in the patents includes a bodyside liner that is liquid pervious in order to draw liquid away from the body. Behind the bodyside liner is a backsheet which is liquid impervious in order to hold waste in. Extending from the bodyside liner are flaps to collect solid waste and strain fluid waste. The issue in the case concerned the material of the flaps. The claims in suit were silent concerning the material. However, the district court decided that the flaps must be liquid pervious. With this claim construction, the parties agreed that there was no infringement, and appeal was taken to the Federal Circuit, and the Federal Circuit affirm the district court. To understand the reasoning of the district and the Federal Circuit, it is necessary to understand the history of applications that led to the patent-in-suit. A grandparent application, the first in a series leading to the patent-in-suit, recited that the flat material is preferably fluid permeable. This suggested to the district court and the Federal Circuit that the inventor contemplated flaps made of either pervious or impervious material. In the original grandparent application, claim 1 was silent concerning the material of the flaps. Claim 2 required fluid permeable flaps. Both claims were rejected over prior art. To overcome the rejection, a continuation-in-part application was filed in which language was added to distinguish from the prior art. Specifically, the specification was amended to recite that the prior art taught flaps made of fluid impervious material. The specification opined that flaps made of fluid impervious material can cause urine or moisture to collect next to the skin and cause skin irritation. The specification explained that the invention teaches an improved diaper that provides fluid pervious flaps to enhance the containment and absorption of liquid waste. The claims of the continuation-in-part application all recited that the flaps were made of pervious material and the claims were allowed by the Examiner who indicated that the necessity of fluid permeable flaps overcame the prior art. Prior to allowance of the continuation-in-part application, a continuation application was filed having a specification identical to the continuation-in-part application. Originally, all claims of the continuation application required fluid pervious flaps. However, the fluid pervious

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limitation was deleted by an Amendment during prosecution in order to provoke an interference. Ultimately, Kimberly-Clark won the interference and the claims issued. As noted above, the Federal Circuit affirmed the claim construction of the district court in which the flaps were interpreted as being limited to fluid pervious flaps, despite the fact that the claims were silent concerning the material of the flaps. The Federal Circuit agreed with the district court that the specification of the patent disclaimed fluid impervious flaps by explaining that the prior art employed fluid impervious flaps and the application teaches an improved diaper that provides fluid pervious flaps. The Federal Circuit noted that the specification states the present application teaches an improved disposable garment which provides fluid pervious flaps. Interestingly, the Federal Circuit considers the prosecution history to support this claim construction. According to the Federal Circuit, after narrowing the claims of the continuation-inpart application to fluid pervious flaps and including language distinguishing the prior art on that ground in the specification, the applicant retained the language distinguishing prior art in the continuation application. Although the claims were amended to delete the fluid pervious limitation for the purpose of the interference, the Federal Circuit strangely states, There is no suggestion in the prosecution history that the deletion of the language had the effect of recapturing fluid impervious flaps. How strange! Canceling the same limitation from each pending claim of a patent application doesnt provide a suggestion that the applicant intended to broaden the claim to cover more than the deleted limitation? The cancellation of the limitation by the applicant, itself, doesnt suggest that the applicant intended to broaden the scope of protection provided by the claim? According to the Federal Circuit, in this particular situation, cancellation of the limitation did not overcome the disclaimer in the specification that the application was limited to garments with fluid pervious flaps. While the Federal Circuit has repeatedly used specification to limit the scope of the claim language, there are some cases in which the Federal Circuit has reached conclusions that seemed to be inconsistent with the decisions discussed above. In those cases, the Federal Circuit has properly refused to import limitations from the specification to the claims.

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E.

Teleflex v. Ficosa North America Ordinary Meaning of Claim Terminology Prevails

In Teleflex, Inc. v. Ficosa North America Corp. (Teleflex),26 the Federal Circuit reasserts the importance of the ordinary meaning of claim terminology and, in the process, discusses Wang Laboratories, Inc. v. America Online, Inc. (Wang),27 discussed below in the following section. The patent-in-suit relates to a two-piece cable to interconnect the shift knob and transmission of a vehicle. A clip is employed to hold the sections together. Figures 1 and 2 from the patent are shown below. The idea is to join core element 12 within cable 16 to core element 14 within cable 20. A female member 24 is attached to the end of core element 12 and a male member is attached to the end of core element 14. The female member 24 has a slot 32 extending tangentially through it and male member 26 has a male groove 30. Clip 28 is positioned about the female member 24 and extends through its slot 32 and into male groove 30 to hold core elements 12 and 14 together.

26 27

299 F.3d 1313, 63 U.S.P.Q.2d 1374 (Fed. Cir. 2002). 197 F.3d 1377, 53 U.S.P.Q.2d 1161 (Fed. Cir. 1999).

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Claim 1 of the patent recites: 1. A motion transmitting remote control assembly (10) comprising: a first core element section (12) for transmitting motion; a first guide length for movably supporting said first core element section (12); a second core element section (14) for transmitting motion: a second guide length for movably supporting said second core element section (14) connection means for locking said first (12) and second (14) core element sections together in a locked position mechanically prevented from moving relative to one another axially in either direction; and characterized by said connection means including a clip (28) manually insertable into and manually removable from said locked position mechanically interlocking said core element sections together while moving axially within said guide lengths, said connection means including a female member (24) attached to an end of said first core element section (12) and a male member (26) defining an end of said second core element section (14), said male member (26) representing a male groove (30), said female member (24) having at least one slot (32) extending tangentially there through, said clip (28) being disposed about said female member (24) and extending through said slot (32) and into said male groove (30) for mechanically interlocking said core element sections together in said locked position. The controversy involved the meaning of the word clip. instructed the jury that the term clip means: A structure that has a single pair of legs which provide the dual functions of disposing the clip around and holding the female member through the slots in the female member and extending through the slots into the groove in the male member to lock the members together. Even with this narrow definition of clip, importing limitations from the specification, the jury found that Ficosas two-piece cable infringed the claim. The district court judge

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The Federal Circuit determined that the district court had interpreted clip too narrowly and that neither the ordinary meaning of the word nor the intrinsic evidence requires clip to be limited to a single pair of legs. In doing so, the Federal Circuit admonishes the district court for having not given sufficient weight to the ordinary and customary meaning of the term clip. Indeed, the Federal Circuit explains that there is a heavy presumption that claim terminology carries its ordinary and customary meaning: [W]e conclude that claim terms take on their ordinary and accustomed meanings unless the patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term by redefining the term or by characterizing the invention in the intrinsic record using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope. . . . In the absence of an express intent to impart a novel meaning to claim terms, an inventors claim terms take on their ordinary meaning . . . We indulge a heavy presumption that a claim term carries its ordinary and customary meaning . . . The ordinary meaning of a claim term shall be determined by reviewing a variety of sources, including the claims themselves, . . . other intrinsic evidence including the written description and the prosecution history, . . . and dictionaries and treatises. . .28 Thus, the Federal Circuit emphasizes that claim terminology should be construed in accordance with its ordinary and customary meaning. However, the court does note that such interpretation must be tempered by consideration of the specification. specification play in construing claims? The specification may limit the scope of the claims via other routes. The specification may assist in resolving ambiguity where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words along . . . The patentee may demonstrate an intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope . . . Likewise, the prosecution history may demonstrate that the patentee intended to deviate from the terms ordinary and accustomed
28

What role does the

Teleflex, 299 F.3d at 1324-25, 63 U.S.P.Q.2d at 1380.

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meaning, i.e., if it shows the applicant characterized the invention using words or expressions of manifest exclusion or restriction during the administrative proceedings before the Patent and Trademark Office.29 Judge Linn characterized Wang, discussed in the section below, as a situation where the alternative approach employed by the accused infringer was not described as being included in the invention, and a person skilled in the art would not have understood that alternative approach to be included. But isnt this true with regard to a claim sufficiently broad to cover embodiments that are not disclosed? Judge Linn also notes the prosecution history in Wang where the applicant correctly characterized one item of prior art as employing the alternative arrangement. In this case, the Federal Circuit notes that nothing in the intrinsic evidence indicates that clip should be limited to a single pair of legs. The court cautions against limiting the claimed invention to specific examples in the specification: The district court thus erred in importing the single pair of legs limitation from the specification into the claim. Instead of using the specification as context, the district court apparently limited the clip (28) recited in claim 1 to the embodiment described in the specification. We have cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.... The specification describes only one embodiment of the claimed clip (28), but in the circumstances of this case the record is devoid of clear statements of scope limiting the term appearing in claim 1 to having a single pair of legs. Absent such clear statements of scope, we are constrained to follow the language of the claims, rather than that of the written description.30 F. CCS Fitness v. Brunswick Exceptions to Use of Ordinary Meaning Crystallized

In CCS Fitness, Inc. v. Brunswick Corp.31 (CCS Fitness), the Federal Circuit set forth guidelines for rebutting the presumption that a claim term carries its ordinary meaning. The patent-in-suit relates to an elliptical trainer stationary exercise device as shown by the preferred embodiment illustrated in Fig. 5 of the patent and reproduced below.

29 30 31

Id. at 1326, 63 U.S.P.Q.2d at 1381. Id. at 1328, 63 U.S.P.Q.2d 1382-83. 288 F.3d 1359, 62 U.S.P.Q.2d 1658 (Fed. Cir. 2002).

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The elliptical trainer comprises a vertical frame attached to and at a right angle with a base structure. Two footpads lie at the end of respective foot members, structures that extend and attach to the vertical frame. The foot members intersect with reciprocating members (illustrated by numeral 432 in Fig. 5). When a user pushes down on the footpads, the front ends of the reciprocating members rotate around a crankshaft, causing the front end of the reciprocating members to rotate in a circular motion which is transformed along the length of the reciprocating members into a linear motion at the rear ends. CCS Fitness owns three combination patents that claim this stationary exercise device: U.S. Patent Nos. 5,924,962 (962 patent); 5,938,567 (567 patent); and 5,683,333 (333 patent). Claim 9 of the 962 patent is characteristic: 9. An apparatus for exercising comprising: a frame having a base portion adapted to be supported by a floor; first and second reciprocating members, each reciprocating member having a first and a second end, a portion of said first and second reciprocating members being adapted for substantially linear motion One issue involved was whether the claim term reciprocating member, as used in the patent-in-suit, encompassed a multi-component, curved structure as used by the accused device. In the preferred embodiment, as illustrated in Fig. 5, the reciprocating member is shown as a single2 - 18

component, straight-bar structure.

However, nothing in the claims, the specification, or the

abstract describes the shape or makeup of this structure. In addition, the prosecution history never discussed the shape or the makeup of the structure at issue. Both parties agreed that the claim term reciprocating means back and forth movement. The dispute focuses on the meaning of member. The accused device used pedal levers that curve upward as they approach the frame end of the device. In addition, the pedal levers used multiple components to attached to and rotate around a crankshaft, not a single component. CCS Fitness argued that the reciprocating members as recited in the claims at issue include not just single-component straight-bar but also encompass curved multiple-component structures as used in the accused device. The district court disagreed. As to the makeup of the member, the court noted that the claim language does not allude to structures having multiple components and that the illustration in the three patents-in-suit show a reciprocal member made of one contiguous piece of hard material, with no connection or joints. As to the shape of the member, the district court reasoned that the figures . illustrate a straight bar, indicating that if CCS Fitness wanted to claim a device whose reciprocating member included a curved, multi-component structure, it should have included an illustration that showed these embodiments. Based on such reasoning, the district court interpreted the meaning of reciprocating members as single straight bars that move back and forth and granted summary judgment for the accused infringer. CCS Fitness appealed the decision and argued that, according to both ordinary and technical dictionaries, the term reciprocating member covers a curved multi-component structure. The accused infringer countered that the specification and the drawings can limit the scope of the claimed term reciprocating member because member is a vague term and to ascertain the meaning of a vague term, the specification may be used to clarify. On appeal, the Federal Circuit summarized four circumstances under which the ordinary meaning of a claim term may be constricted: First, the claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history. Second, a claim term will not carry its ordinary meaning if the intrinsic evidence shows that the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a 2 - 19

particular embodiment as important to the invention. Third, , a claim terms also will not have its ordinary meaning if the term chosen by the patentee so deprive[s] the claim of clarity as to require resort to the other intrinsic evidence for a definite meaning. Last, as a matter of statutory authority, a claim term will cover nothing more than the corresponding structure or step disclosed in the specification, as well as equivalents thereto, if the patentee phrased the claim in step- or means-plus-function format.32 Applying these principles in construing the meaning of claim term reciprocating member, the court first looked at both common and technical dictionaries to ascertain the ordinary meaning. According to the dictionary, claim term member refers to a structural unit such as a beam or tie, or a combination of these, McGraw-Hill Dictionary of Scientific and Technical Terms 1237 (5th ed. 1994), or to a distinct part of a whole, American Heritage Dictionary 849 (3rd ed. 1996). Based on these definitions, the court construed the claim term member as a single unit in a larger whole. The court further indicated that the accused infringer failed to show any evidence in the specification or prosecution history that overcomes the heavy presumption that the claim term member carries its ordinary and customary meaning. Although the drawing shows a single straight bar, the specification never requires the reciprocal member to be of a single component and having a straight shape. In addition, nothing in the prosecution history contains any clear statement that would narrow the ordinary meaning of the reciprocal member. Absent any of the four exceptional situations mentioned above, the court refused to allow the accused infringer to rebut the presumption of ordinary meaning and held that the claim term reciprocating member as used in the claims at issue encompasses the multi-component curved structure used by the accused exercise devices. In this case, the Federal Circuit re-emphasized the heavy presumption of a claim terms ordinary and customary meaning. The court pointed out that an accused infringer cannot narrow a claim term simply by pointing to the preferred embodiment or other structure or steps disclosed in the specification or prosecution history and that a patentee need not describe in the specification every conceivable and possible future embodiment of his invention.

32

Id. at 1366-67.

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II.

Phillips v. AWH Corp.33 On July 12, 2005, the Federal Circuit issued an en banc decision reversing the district

court's summary judgment of non-infringement in Phillips v. AWH Corp.34 That reversal was based on the en banc court's disagreement with the unduly restrictive interpretation of the claim term "baffle" imposed by the district court and the Federal Circuit panel that originally ruled on the patentee's appeal.35 The patent involved in the litigation related to a modular wall panel with baffles. As can be seen from Figures 4 and 6 of the patent below, baffles 26, 27, and 31 extend inwardly from a shell at oblique or acute angles.

33 34 35

415 F.3d 1303, 75 U.S.P.Q.2d 1321 (Fed. Cir. 2005) (en banc). No. 97-MK-212 (D. Colo. Mar. 22, 1999).

Phillips v. AWH Corp., 363 F.3d 1207, 70 U.S.P.Q.2d 1417 (Fed. Cir.), vacated, 376 F.3d 1382, 71 U.S.P.Q.2d 1765 (Fed. Cir. 2004).

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Claim 1 of the patent is set forth below: Building modules adapted to fit together for construction of fire, sound and impact resistant security barriers and rooms for use in securing records and persons, comprising in combination, an outer shell of substantially parallelepiped shape with two outer steel plate panel sections of greater surface area serving as inner and outer walls for a structure when a plurality of the modules are fitted together, sealant means spacing the two panel sections from steel to steel contact with each other by a thermal-acoustical barrier material, and further means disposed inside the shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel shell walls.

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Note that the claim refers to internal steel baffles as means for increasing the load bearing capacity of the modules. The claims provide no further limitation concerning the nature of the baffles. A. District Court Finds No Infringement

At trial, the parties stipulated that a baffle is a means for obstructing, impeding, or checking the flow of something. sixth paragraph. However, the district court construed the phrase means disposed inside the shell for increasing its load bearing capacity under 35 U.S.C. Section 112, According to the district court, the structures disclosed in the patent for performing this function are the baffles extending inwardly from a shell at an oblique or acute angle. Although the defendant sold modular wall panels with baffles, the district court granted summary judgment of non-infringement because the defendants baffles were perpendicular to the shell. In construing the claim language, the district court reasoned that the term baffle should be limited to an angled baffle because every reference in the specification shows baffles at angles other than perpendicular to the shell. Thus, the district court concluded that the defendants perpendicular baffles were not equivalent to the patents angled baffles. B. Original Federal Circuit Three Judge Panel Affirms

Although the original three judge panel of the Federal Circuit affirmed the district court it based its decision on different reasons. The panel determined that the claimed baffle was sufficient structure for performing the claimed function of increasing the load bearing capacity. Therefore, the claim language was not construed under Section 112, sixth paragraph, but as the simple structure baffle. The problem was determining the meaning of baffle. Although the panel acknowledged the heavy presumption that claim terminology should get its ordinary meaning, the panel noted that the ordinary meaning must be determined in view of the intrinsic evidence. Thus, the panel examined the specification to determine how the claim term was used by the inventor in the context of the entirety of his invention. According to the panel, the patent specification includes repeated references to impact resistance of the wall panels, particularly against bullets and bombs. The panel noted that the abstract of the patent teaches that the baffles are to deflect bullets. A section of the patent entitled Disclosure of the Invention states that the invention provides modular panels with baffles disposed at angles so that bullets penetrating the shell are deflected. In describing the prior art, the patent notes that prior wall panels were not

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effective in deflecting bullets. The panel gave weight to the notion that the only disclosed embodiment has baffles at angles other than perpendicular: The dissent-in-part argues that we have interpreted the claims erroneously by focusing only on the preferred embodiment. We disagree. Inspection of the patent shows that baffles angled at other than 90 is the only embodiment disclosed in the patent; it is the invention. It is impossible to derive anything else from the specification.36 It is true that claims with the non-restrictive term "baffles" were allowed. However, the patent specification is intended to support and inform the claims, and here it makes it unmistakably clear that the invention involves baffles angled at other than 90 degrees. It is in the interests of a sound patent system and inventors, as well as the public, to hold inventors to their disclosures.37 C. Federal Circuit En Banc Decision Rules of Claim Construction

The en banc court reversed the panel's interpretation of "baffles" as requiring an acute or obtuse angle disposition (i.e., excluding a right angle disposition). In reaching its decision, the en banc court affirmed the following principles of claim construction: 1. "It is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to which the patentee is entitled the right to exclude.'"38 2. "Because the patentee is required to 'define precisely what his invention is,' the Court explained, it is 'unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.'"39 3. "We have frequently stated that the words of a claim 'are generally given their ordinary and customary meaning.' We have made clear, moreover, that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time the invention, i.e., as of the effective filing date of the patent application."40
36 37 38

Id. at 1214. Id.

Phillips, 415 F.3d at 1312, 75 U.S.P.Q.2d at 1325 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). 39 Id., 75 U.S.P.Q.2d at 1325-1326 (quoting White v. Dunbar, 119 U.S. 47, 52 (1886)).
40

Id. at 1312-13, 75 U.S.P.Q.2d at 1326 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).

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4. "Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification."41 5. "In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words."42 6. "In many cases that give rise to litigation, however, determining the ordinary and customary meaning of the claim requires examination of terms that have a particular meaning in a field of art. Because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to 'those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean.'"43 7. "Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term. Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims. Differences among claims can also be a useful guide in understanding the meaning of particular claim terms. For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim."44 8. "The claims, of course, do not stand alone. Rather, they are part of 'a fully integrated written instrument,' consisting principally of a specification that concludes with the claims. For that reason, claims 'must be read in view of the specification, of which they are a part.'"45 "On numerous occasions since then, we have reaffirmed that point, stating that '[t]he best source for understanding a technical term is the specification

41

Id. at 1313, 75 U.S.P.Q.2d at 1326 (citing Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998)).
42 43 44

Id. at 1314, 75 U.S.P.Q.2d at 1327 (citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001)). Id. (citing Innova, 381 F.3d at 1116).

Id. at 1314-15, 75 U.S.P.Q.2d at 1327 (citing Vitronics, 90 F.3d at 1582, Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) and Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)).
45

Id. at 1315, 75 U.S.P.Q.2d at 1327 (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 978-79 (Fed. Cir. 1995)).

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from which it arose, informed, as needed, by the prosecution history.'" 46 "The importance of the specification in claim construction derives from its statutory role. The close kinship between the written description and the claims is enforced by the statutory requirement that the specification describe the claimed invention in 'full, clear, concise, and exact terms.'"47 9. "Consistent with that general principle, our cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs. In other cases, the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor's intention, as expressed in the specification, is regarded as dispositive."48 10. "Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent. Furthermore, like the specification, the prosecution history was created by the patentee in attempting to explain and obtain the patent. Yet because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes. Nonetheless, the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be."49 11. "[W]hile extrinsic evidence 'can shed useful light on the relevant art,' we have explained that it is 'less significant than the intrinsic record in determining the legally operative meaning of claim language.' Within the class of extrinsic evidence, the court has observed that dictionaries and treatises can be useful in claim construction. Because dictionaries, and especially technical dictionaries, endeavor to collect the accepted meanings of terms used in various fields of science and technology, those resources have been properly recognized as among the many tools that can assist the court in determining the meaning of particular terminology to those of skill in the art of the invention."50

46 47 48

Id., 75 U.S.P.Q.2d at 1328 (citing Multiform Desiccants, 133 F.3d at 1478). Id. at 1316, 75 U.S.P.Q.2d at 1328.

Id., 75 U.S.P.Q.2d at 1329 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) and SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001)).
49

Id. at 1317, 75 U.S.P.Q.2d at 1329 (citing Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373, 1380-82 (Fed. Cir. 2002) and Vitronics, 90 F.3d at 1582-83). 50 Id. at 1317-18, 75 U.S.P.Q.2d at 1330 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) and citing Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)).

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12. "We have also held that extrinsic evidence in the form of expert testimony can be useful to a court for a variety of purposes, such as to provide background on the technology at issue, to explain how an invention works, to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field. We have viewed extrinsic evidence in general as less reliable than the patent and its prosecution history in determining how to read claim terms."51 "[E]xtrinsic evidence may be useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence. Nonetheless, because extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean, it is permissible for the district court in its sound discretion to admit and use such evidence."52 D. The Role of Extrinsic Evidence, Including Dictionaries

After reviewing the general principles of claim construction outlined above, the Federal Circuit addressed the Federal Circuit decisions giving greater emphasis to dictionary definitions of claim terms, calling Texas Digital Systems, Inc. v. Telegenix, Inc.53 the leading case in this line. The court concluded that Texas Digital placed too much reliance on extrinsic sources such as dictionaries and too little reliance on intrinsic sources.54 The court reflected the following concern that dictionaries provide abstract meanings of words rather than the meaning of particular claim terminology within the context of the patent: The main problem with elevating the dictionary to such prominence is that it focuses the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent. Properly viewed, the "ordinary meaning" of a claim term is its meaning to the ordinary artisan after reading the entire patent. Yet heavy reliance on the dictionary divorced from the intrinsic evidence risks transforming the meaning of the claim term to the artisan into the meaning of the term in the abstract, out of its particular context, which is the specification.55 The risk of systematic overbreath is greatly reduced if the court instead focuses at the outset on how the patentee used the claim term
51

Id. at 1318, 75 U.S.P.Q.2d at 1330 (citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308-09 (Fed. Cir. 1999)).
52 53 54

Id. at 1319, 75 U.S.P.Q.2d at 1331.

308 F.3d 1193 (Fed. Cir. 2002). It should be noted that Judge Linn, the author of Texas Digital, joins the majority in Phillips. 55 Phillips, 415 F.3d at 1321, 75 U.S.P.Q.2d at 1332.

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in the claims, specification, and prosecution history, rather than starting with a broad definition and whittling it down.56 However, the court noted that dictionaries do have a role in claim construction as providing a definition unbiased by the ongoing litigation. The court acknowledged that the primary concern prompting the primary use of dictionaries in the Texas Digital case was to avoid the danger of reading limitations from the specification into the claim. While this concern is legitimate, it may be overcome by focusing on how those skilled in the art would understand the claim terms. However, the line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court's focus remains on understanding how a person of ordinary skill in the art would understand the claim terms.57 "Reasonable certainty and predictability?" Whatever may be said about the Federal

Circuit's claim construction jurisprudence, it cannot be fairly characterized as either "reasonably certain" or "predictable." On the contrary, as former Chief Judge Mayer points out in his blistering dissent, discussed infra, the Federal Circuit's claim construction case law has "caus[ed] confusion among the district courts and bar,"58 resulting in "mayhem [that] has seriously undermined the legitimacy of the process, if not the integrity of the institution."59 E. Claims Should Not Be Limited to Details of the Embodiment Disclosed

The court rejected the notion that the claims of "single embodiment" patents should be limited to that embodiment. Section 112 requires that the patent teach a person skilled in the art how to make and use the invention, and the best way to meet this obligation is to provide an example of how to practice the invention. Citing SciMed Life Systems, the court states, "it will become clear whether the patentee is setting out specific examples of the invention to accomplish those goals, or whether the patentee instead intends for the claims and the embodiments in this specification to be strictly coextensive."60
56 57 58 59

Id., 75 U.S.P.Q.2d at 1333. Id. at 1323, 75 U.S.P.Q.2d at 1334.

Id. at 1333, 75 U.S.P.Q.2d at 1341. Id. at 1330, 75 U.S.P.Q.2d at 1339. 60 Id. at 1323, 75 U.S.P.Q.2d at 1334. Note that SciMed, discussed elsewhere in this chapter, is considered by almost everyone other than judges on the Federal Circuit to be a prime example of wrongly importing a limitation from the specification into the claims.

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While that task may present difficulties in some cases, nonetheless believe that attempting to resolve that problem in context of the particular patent is likely to capture the scope of actual invention more accurately than either strictly limiting scope of the claims to the embodiments disclosed in specification or divorcing the claim language from specification.61

we the the the the the

It doesn't matter whether a judge looks at a dictionary first or the patent specification first as long as the judge performs the correct analysis. The sequence of steps used by the judge in consulting various sources is not important; what matters is for the court to attach the appropriate weight to be assigned to those sources in light of the statutes and policies that inform patent law. Vitronics, 90 F.3d at 1582. In Vitronics, we did not attempt to provide a rigid algorithm for claim construction, but simply attempted to explain why, in general, certain types of evidence are more valuable than others. Today, we adhere to that approach and reaffirm the approach to claim construction outlined in that case, in Markman, and in Innova.62 F. Application of Claim Construction Principles to the Facts in Phillips

In applying these principles to the case at hand, the Federal Circuit first considered the claim language itself. The court found that the representative claim includes three limitations with respect to the term "baffles." First, the baffles must be made of steel. Second, they must be part of the loadbearing structure for the wall. Third, they must be pointed inward from the walls. The Federal Circuit noted that both parties stipulated to a dictionary definition of "baffles" as "objects that check, impede or obstruct the flow of something."63 The court relied heavily on the doctrine of claim differentiation, explaining as follows: For example, dependent claim 2 states that the baffles may be "oriented with the panel sections disposed at angles for deflecting projectiles such as bullets able to penetrate the steel plates." The inclusion of such a specific limitation on the term "baffles" in claim 2 makes it likely that the patentee did not contemplate that the term "baffles" already contained that limitation. Independent claim 17 further supports that proposition. It states that the baffles are placed
61 62 63

Id. at 1323-24, 75 U.S.P.Q.2d at 1334. Id. at 1324, 75 U.S.P.Q.2d at 1335. Id.

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"projecting inwardly from the outer shell at angles tending to deflect projectiles that penetrate the outer shell." That limitation would be unnecessary if persons of skill in the art understood that the baffles inherently served such a function. Dependent claim 6 provides an additional requirement for the baffles, stating that "the internal baffles of both outer panel sections overlap and interlock at angles providing deflector panels extending from one end of the module to the other." If the baffles recited in claim 1 were inherently placed at specific angles, or interlocked to form an immediate barrier, claim 6 would be redundant.64 The Federal Circuit also analyzed the specification, noting numerous instances where baffles are described as load-bearing objects that serve to check, impede, or obstruct flow. The specification does discuss the positioning of baffles to deflect projectiles. with powerful impact weapons with an inexpensive housing. Furthermore, the specification describes one advantage of the invention as providing an effective way for dealing However, nowhere in the specification is there any suggestion that in order to qualify as a baffle, the internal support structures must be able to deflect projectiles. The Federal Circuit recognizes that the specification must teach and enable all claims, and the sections of the patent discussing the use of baffles to deflect projectiles support claims 2, 6 and 17, which specifically claim baffles that deflect projectiles. It is important to the Federal Circuit that the specification discusses several other purposes served by the baffles, such as increasing the load-bearing capacity, and providing an intermediate barrier wall between the opposite outer surfaces. The intermediate barrier walls create internal compartments that can be filled with either sound or thermal insulation, or even rock and gravel to stop projectiles. According to the Federal Circuit: We have held that "[t]he fact that a patent asserts that an invention achieves several objectives does not require that each of the claims be construed as limited to structures that are capable of achieving all of the objectives." Although deflecting projectiles is one of the advantages of the baffles of the '798 patent, the patent does not require the inward extending structures always be capable of performing that function. Accordingly, we conclude that a person of skill in the art would not interpret the disclosure and claims of the '798 patent to mean that a structure extending inward from one of the wall faces is a "baffle" if it is at an acute or obtuse angle, but is not a "baffle" if it is disposed at a right angle.65
64

Id. at 1324-25, 75 U.S.P.Q.2d at 1335 (emphasis added).

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G.

The Principle of Attempting to Preserve Claim Validity Has Limited Application to Claim Construction

The defendant also argued that the term "baffles" should be given a restrictive meaning to preserve the validity of those claims. The Federal Circuit acknowledged that this is a principle to be considered; but it is not applied broadly. This would incorporate a validity analysis in claim construction. Instead, the court suggests that this principal should be applied only when, after all other claim construction tools have been employed, the claim is still considered ambiguous. While we have acknowledged the maxim that claims should be construed to preserve their validity, we have not applied that principle broadly, and we have certainly not endorsed a regime in which validity analysis is a regular component of claim construction. Instead, we have limited the maxim to cases in which "the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous." In such cases, we have looked to whether it is reasonable to infer that the PTO would not have issued an invalid patent, and that the ambiguity in the claim language should therefore be resolved in a manner that would preserve the patent's validity.66 In this case, the Federal Circuit considered the intrinsic evidence to be sufficient to construe the meaning of baffles and therefore did not rely on this principle. Therefore, the Federal Circuit reversed the summary judgment of non-infringement and remanded the case to the district court. H. The Court Declines to Address the Deference to Be Accorded to a District Court's Interpretation

One of the issues on which the Federal Circuit requested briefing was whether the Federal Circuit should accord any deference to trial court claim construction rulings. Implicit in this question is review of the notion that claim construction is a matter of law, subject to de novo review. In the end, the Federal Circuit decided not to address this issue. This prompted a heated dissent from Judge Mayer, with whom Judge Newman joined. I. Judge Mayer's Dissent

"Now more than ever," Judge Mayer's dissent begins,

65

Id. at 1327, 75 U.S.P.Q.2d at 1336 (citing Liebel-Flarsheim, 358 F.3d at 908 and Resonate, Inc. v. Alteon Websystems, Inc., 338 F.3d 1360, 1367 (Fed. Cir. 2003)).
66

Id., 75 U.S.P.Q.2d at 1336-37 (quoting Liebel-Flarsheim, 358 F.3d at 911).

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I am convinced of the futility, indeed the absurdity, of this court's persistence in adhering to the falsehood that claim construction is a matter of law devoid of any factual component. In our quest to elevate our importance, we have, however, disregarded our role as an appellate court; the resulting mayhem has seriously undermined the legitimacy of the process, if not the integrity of the institution.67 Judge Mayer points out that claims are to be interpreted from the perspective of one of ordinary skill in the art and in view of the state of the art at the time of the invention, which involve hotly contested, inherently factual determinations based on testimony and documentary evidence. So long as the Federal Circuit persists in treating claim construction as a purely legal issue to be reviewed de novo, the appellate process will continue to be distorted, "causing confusion among the district courts and bar."68 Appellate courts are simply not in a position to assess the credibility of evidence. Moreover, Judge Mayer notes, treatment of claim interpretation as a matter of law subject to purely de novo review is inconsistent with the law concerning obviousness. While the issue of obviousness is an ultimate issue of law, resolution of that issue depends on several underlying factual inquiries. These factual inquiries, such as determining the scope and content of the prior art and determining differences between the prior art and the claims, are steps that should be taken in claim construction to understand the context of the claims. Why then, Judge Mayer asks, should such considerations be treated as issues of fact when determining obviousness, but as issues of law when construing claims? They should not, and the Federal Circuit's "purely de novo review of claim interpretation . . . cannot be reconciled with the Supreme Court's instructions regarding obviousness."69 What is the solution? While the court flails about in an attempt to solve the claim construction "conundrum," the solution to our plight is straightforward. We simply must follow the example of every other appellate court, which, regarding the vast majority of factual questions, reviews the trial court for clear error.70

67 68 69 70

Id. at 1330, 75 U.S.P.Q.2d at 1339. Id. at 1333, 75 U.S.P.Q.2d at 1341. Id. Id. at 1334, 75 U.S.P.Q.2d at 1341.

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Unless and until district court claim construction is reviewed for clear error, rather than de novo, proceedings before the district court are merely wasteful "tryout[s] on the road" which should be eliminated.71 Instead, all patent cases could be filed in this court; we would determine whether claim construction is necessary, and, if so, the meaning of the claims. Those few cases in which claim construction is not dispositive can be remanded to the district court for trial. In this way, we would at least eliminate the time and expense of the charade currently played out before the district court. Eloquent words can mask much mischief. The court's opinion today is akin to rearranging the deck chairs on the Titanic the orchestra is playing as if nothing is amiss, but the ship is still heading for Davey Jones' locker.72 J. Judge Lourie's Dissent

Judge Lourie, author of the panel's vacated decision affirming the district court's summary judgment of non-infringement, filed a separate opinion concurring in part and dissenting in part, with whom Judge Newman joined. In that decision, Judge Lourie dissented from the majority's decision to reverse and remand to the district court, while "fully join[ing] the portion of the court's opinion resolving the relative weights of specification and dictionaries in interpreting patent claims, in favor of the specification."73 Why the dissent? Because, Judge Lourie explained, [t]he original panel decision of this court, which implicitly decided the case based on the priorities that the en banc court has now reaffirmed, interpreted the claims in light of the specification and found that the defendant did not infringe the claims. Thus, while the claim construction issue had to be decided by the en banc court, I see no reason for the court, having reaffirmed the principle on which the district judge and the panel originally decided the case, to send it back for further review. The court premises its reverse-and-remand decision on the concept of claim differentiation and the reasoning that the contested term "baffle" need not fulfill all of the functions set out for it in the specification. Reasonable people can differ on those points.74

71 72 73 74

Id., 75 U.S.P.Q.2d at 1342 (quoting from Anderson v. Bessemer City, 470 U.S. 564, 575 (1985)). Id. at 1334-35, 75 U.S.P.Q.2d at 1342. Id. at 1328, 75 U.S.P.Q.2d at 1338. Id. at 1329, 75 U.S.P.Q.2d at 1338 (emphasis added).

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Differ indeed! Chaos reigns! The Federal Circuit has confirmed the importance of LP-CD for avoiding chaos, bearing especially in mind that the en banc court reversed the district court principally based upon the LP-CD directive of building claim differentiation into crafting and drafting claims. III. Post-Phillips Claim Construction Post-Phillips cases instruct that Phillips permits Federal Circuit panels to continue on as they did before Phillips, thus continuing the chaos. Amidst the chaos, however, a pattern emerges from the sampling of cases that follow. Specifically, when the court relies on the specification, prosecution history, or patents incorporated by reference, a narrow construction results. On the other hand, reliance on claim differentiation or ordinary meaning tends to promote a broad interpretation of claim terms. An oddball case like Oatey suggests that broadening may also occur from the specification. Finally, Ormco shows that a court may broaden only certain claims when the specification both broadens and narrows a term. While these patterns may suggest the outcome based on the courts reliance, you still may as well flip a coin in attempting to predict what the courts reliance will be.

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A.

Post-Phillips Cases in Which Claim Terminology Was Given a Narrow Interpretation Based on the Specification, Prosecution or Incorporation by Reference. 1. Nystrom v. Trex Board Means Wooden Board Based on Specification and Despite Claim Differentiation

Nystrom v. Trex Co.75 involved a patent directed to boards for use in constructing an exterior floor, such as a deck. The Summary of the Invention in the patent describes the invention as a decking board which is shaped to shed water from its upper surface, and which also yields a superior product when cut from a log, reducing the amount of scrap in the outermost boards cut from a log." Figure 2 of the patent, reproduced below illustrates the disclosed embodiment:

Claim 1 of the patent recited: 1. A board for use in constructing a flooring surface for exterior use, said board having a top surface, a bottom surface and opposite side edges, said top surface being manufactured to have a slightly rounded or curved configuration from a longitudinal center line thereof downwardly toward each side edge, thereby defining a convex top surface which sheds water and at the same time is comfortable to walk on, and said bottom surface having a concave configuration for nesting engagement with the top surface of another board so that a plurality of the boards may be stacked one on top the other with the stability of conventional boards having flat top and bottom surfaces. (emphasis added).

75

424 F.3d 1136, 76 U.S.P.Q.2d 1481 (Fed. Cir. 2005).

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As noted by the highlighting, one of the key controversies in the case was the definition of board. The district court construed board as being cut or obtained from a log, relying upon the specification and the prosecution history. With this construction, the patent owner conceded that it could not prove infringement, the defendant moved for summary judgment of non-infringement and the district court granted the motion. The Federal Circuit affirmed.76 The Federal Circuit noted that a section entitled Summary of Invention describes the invention as a decking board which is shaped to shed water from its upper surface, and which also yields a superior product when cut from a log, reducing the amount of scrap in the outer most boards cut from a log. The Federal Circuit identified many locations in the specification and prosecution history where the term board is used to refer to wood cut from a log. In the prosecution history, a preliminary amendment was filed in which the patent owner stated the particular configuration and dimensions of the board result in a uniformly superior product and a reduction in waste or rejects due to bark or other flaws along the edges of the board when it is cut from near the outer circumference of a log. Further, in response to a rejection, the patent owner stated the present invention represents a unique and significant advance in the art of exterior wood flooring. Wood floors have been in use for hundred of years, and except in the development of different installation techniques, i.e., the use of nails, screws, various fastening clips, and/or adhesives, very little has been done to the basic shape of the board itself. In deciding that the term board should be construed as a wood board, the Federal Circuit considered the teachings of the Phillips case: What Phillips now counsels is that in the absence of something in the written description and/or prosecution history to provide explicit or implicit notice to the public i.e., those of ordinary skill in the art that the inventor intended a disputed term to cover more than the ordinary and customary meaning revealed in the context of the intrinsic record, it is improper to read the term to encompass a broader definition simply because it may be found in a dictionary, treatise or other extrinsic source.77 The Federal Circuit found dictionaries to be inconclusive. Some dictionary definitions of board were independent of its composition while other definitions limited board to sawed lumber. Since the claim was construed as being limited to cover only wood boards, and since the defendant did not employ wood boards, the Federal Circuit affirmed the district courts decision of
76 77

Judge Linn wrote the opinion, joined by Judges Mayer and Gajarsa. Id. at 1145.

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non-infringement. During prosecution, the examiner had rejected claims in the application based on the combination of a first reference in which boards were made of wood with a second reference, called Yoshida, where boards were not made of wood. The patent owner stated Yosida [sic] is clearly not concerned with materials made from wood, and especially an elongate board for exterior use in having a convex top surface when installed that will shed water and at the same time provide a surface that is suitable for supporting furniture and comfortable to walk on. Before the Federal Circuit, the patent owner argued that the statement in the prosecution history was made to demonstrate that it would not have been obvious to combine the references. The Federal Circuit disagreed, viewing the statement as distinguishing the invention from Yoshida. It is interesting to note that the issue of claim differentiation, which proved so crucial in Phillips, was also present here. Specifically, whereas claim 1 simply referred to board, claim 16, which is similar to claim 1, recited [a] wood decking board for use in constructing a flooring surface for exterior use, said decking board having a convex top surface, a bottom surface, opposite side edges, and curved growth rings claim differentiation. According to the Federal Circuit: This principle of claim construction would suggest that the difference in the use of terms has significance in that board should not be limited to wood that is cut from a log. However, simply noting the difference in the use of claim language does not end the matter. Different terms or phrases in separate claims may be construed to cover the same subject matter where the written description and prosecution history indicate that such a reading of the terms or phrases is proper.78 The Federal Circuit determined that the circumstances in Nystrom warranted limiting the scope of the claims based on the specification and prosecution history despite claim differentiation. 2. Izumi Products v. Koninklijke Philips Electronics Claim Differentiation Fails to Save Broad Claim Construction Claim differentiation also was not sufficient to save a broad claim construction in Izumi Products Co. v. Koninklijke Philips Electronics N.V.79 Although this case was decided several
78

The patent owner argued that claim 16

demonstrates that claim 1 was intended to cover more than wood boards through the doctrine of

Id. at 1143 (citing Tandon Corp. v. U.S. Intl Trade Commn, 831 F.2d 1017, 1023-24, 4 U.S.P.Q.2d 1283 (Fed. Cir. 1987)).
79

Nos. 04-1418, 04-1423, 140 Fed. Appx. 236, 2005 U.S. App. LEXIS 13553 (Fed. Cir. 2005) (non-precedential).

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days before Phillips, the panel consisting of Judges Newman, Lourie and Linn were well aware of how Phillips would be decided. In Izumi, claim 3 broadly recited recess formed below. Narrower claim 1 recited recess formed immediately beneath. Claim 3 was construed as being limited to cover a recess formed immediately beneath in order for the invention to achieve its purpose as set forth in the specification. Thus, in Izumi, as in Nystrom, claims were construed as being limited by the specification despite claim differentiation. 3. Pause Technology v. TiVo Intrinsic Record Trumps Encyclopedia to Narrow Claim Interpretation Pause Technology v. TiVo, Inc.80 is another post-Phillips case where claim terminology was construed based on the intrinsic record more narrowly than those skilled in the art would have construed the claim terminology independent of the intrinsic record. The case involved a patent which claimed a circular storage buffer. The parties agreed that circular buffers were known in the art for storing data. Once data fills a circular buffer, new data coming into the buffer replaces the oldest data previously stored in the circular buffer. Pause argued that the circular storage buffer could encompass a buffer implemented through logical addressing in which only the oldest logical addresses were written over and the newly input data need not physically write over signal values previously stored at the oldest physical address. TiVo responded that the claim term circular storage buffer covers only systems implemented through physical addressing in which the buffer stores the newest input signal values by writing over the signal values stored at the oldest physical addresses. Not surprisingly, TiVos circular storage buffer employed logical addressing but not physical addressing. The district court granted summary judgment of non-infringement and the Federal Circuit affirmed. Pauses strongest argument was based upon a definition of circular buffering However, both the district court and the Federal Circuit contained in a computer encyclopedia. The definition was sufficiently broad to cover either logical addressing or physical addressing. determined that the intrinsic record, including the claims themselves, the specification and the prosecution history trumped the encyclopedia definition. The claim itself recited that the circular storage buffer comprises memory access means for continuously writing said sequence of digital input signal values into said addressable digital memory at a sequence of continually advancing writing addresses established by said processor to
80

419 F.3d 1326, 76 U.S.P.Q.2d 1110 (Fed. Cir. 2005).

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write over the oldest of said input signal values recorded in said digital memory as said sequence of writing addresses are advanced The Federal Circuit construed the italicized language to require that new data be physically written over the oldest data, consistent with physical addressing and inconsistent with logical addressing. The court also noted that the written description also describes that incoming data is written over the oldest stored data. During prosecution, Pause argued that the circular storage buffer as claimed is unique in that it must write over the oldest signal values recorded in the digital memory as the writing addresses advance, in distinction over the prior art. According to Pause, nothing in any of the cited references suggests or discloses this unique mode of operation in which the oldest material is continually overwritten. In a circular buffer which is physically addressed, old data is physically overwritten. In a circular buffer which is logically addressed, the oldest material need not be physically overwritten. Therefore, the Federal Circuit concluded that the claim language itself, the specification and the prosecution history require circular storage buffer to be limited to a physical addressing scheme which distinguished from TiVos circular storage buffer. 4. Honeywell v. ITT and TG Fluid Limitations from Specification Read Into Claims Systems

In Honeywell v. ITT and TG Fluid Systems,81 the Federal Circuit interpreted broad claim limitations narrowly in affirming summary judgment of non-infringement by a product clearly encompassed literally within the well-established, ordinary meaning of the claim terminology. While the case joins an all-too-long list of recent Federal Circuit opinions importing limitations from preferred embodiments into claims albeit under the rhetoric of interpreting the claims "in light of the specification" the rationale expressed by the court warrants careful study, for it emphasizes the dangers attendant to single embodiment disclosures and discussing advantages of an invention over the prior art in patent specifications. The patent in Honeywell, U.S. Patent No. 5,164,879, (879 patent) entitled "Electrostatically Dissipative Fuel System Component," is directed to a polymeric fuel system component designed to prevent leakage in a fuel filter housing made of polymeric (as opposed to
81

452 F.3d 1312, 79 U.S.P.Q.2d 1294 (Fed. Cir. 2006). The author thanks Paul Gardner for this discussion of Honeywell.

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metallic) material. As explained in the patent, such leakage occurs in prior art electronic fuel injection (EFI) system filter housings due to the formation and growth of microscopic holes in the polymeric housing, holes created by the buildup of electrostatic charge and subsequent discharge or "arcing" through the housing to the grounded vehicle body. The buildup of

electrostatic charge is the consequence of electrons being stripped from the outermost shells of hydrocarbon paraffin as the fuel moves rapidly through the EFI system. The leakage problem is solved by the invention of the '879 patent by interlacing the polymeric housing material with electrically conductive fibers. As a result, the fibers in the housing complete an electrical discharge path between the fuel and the grounded vehicle body, resulting in continuous drainage of the electrostatic charge to ground, thereby preventing the buildup of charge that would lead to arcing and creation of leakage holes. The single embodiment disclosed in the Honeywell patent, depicted below, is a fuel filter 10 whose polymeric housing material 12 contains stainless steel fibers. However, the claims in issue broadly recite "[a] fuel injection system component" (not limited to a fuel filter), containing "electrically conductive fibers" (not limited to stainless steel).

Defendants' accused products, called "quick connects," are nut-like structures that join various components of a fuel injection system together, such as a fuel line to a fuel filter. Accordingly, as the district court and Federal Circuit acknowledged, those products come within the ordinary meaning of "a fuel injection system component," which the district court defined as 2 - 40

"any constituent part of the fuel injection system of a motor vehicle including, for example, fuel filters, fuel lines, and connectors"(emphasis added). However, the district court refused to accord the terminology its ordinary meaning. Instead, the court interpreted the term restrictively to mean "a fuel filter," id. at 880, and the Federal Circuit agreed. Why? The Federal Circuit explained its reasoning as follows, in pertinent part:

[T]he written description uses language that leads us to the conclusion that a fuel filter is the only "fuel injection system component" that the claims cover, and that a fuel filter was not merely discussed as a preferred embodiment. On at least four occasions, the written description refers to the fuel filter as "this invention" or "the present invention" . The public is entitled to take the patentee at his word and the word was that the invention is a fuel filter. Moreover, the written description does not indicate that a fuel filter is merely a preferred embodiment of the claimed invention. The fuel filter was the only component of an EFI system that the written description disclosed as having a polymer housing with electrically conductive fibers interlaced therein. The written description's detailed discussion of the prior art problem addressed by the patented invention, viz., leakage of non-metal fuel filters in EFI systems, further supports the conclusion that the fuel filter is not a preferred embodiment, but an only embodiment. Given the written description's disclosure, we conclude that the patentee has limited the scope of the '879 patent claims to a fuel filter. After all, the only fuel component disclosed and claimed in the patent was a fuel filter . . . No other fuel injection system component with the claimed limitations is disclosed or suggested.82 The court was unmoved by Honeywell's argument that the patentee's statement during prosecution that it intended the scope of the claims to include "all fuel components manufactured of the moldable material disclosed and claimed in the specification" reflected an intention to have the term "component" encompass more than just fuel filters. Not only was the comment "ambiguous and possibly inconsistent with the written description," said the court, emphasizing that "the only fuel component disclosed and claimed in the patent was a fuel filter," but the
82

Id. at 1318-19 (emphasis added).

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prosecution history "cannot contradict the clear statements in the specification describing the invention more narrowly." And yet again, the court emphasized that "the written description provides only a fuel filter that is made with polymer housing and electrically conductive fibers interlaced therein. No other fuel injection system component with the claimed limitations is disclosed or suggested.83 Clearly, single embodiment disclosures and use of the term "invention" in referring to disclosed embodiments increase the risk of having the court import limitations into broad claims under the rhetoric of interpreting the claims in light of the specification. The second claim limitation in issue in Honeywell was "electrically conductive fibers." The district court refused to narrowly interpret that limitation to exclude carbon fibers, which the defendants' products employed, but the Federal Circuit disagreed. Citing passages in the

specification enumerating advantages of stainless steel fibers over carbon fibers, the court "conclude[d] that the patentee thereby disavowed carbon fibers from the scope of the '879 patent's claims."84

If the written description could talk, it would say, "Do not use carbon fibers." There is no other way to interpret the written description's listing of all the reasons that metal fibers fare better than carbon fibers for use in the claimed invention, even though both materials are electrically conductive. Its repeated derogatory statements concerning one type of material are the equivalent of disavowal of that subject matter from the scope of the patent's claims. It is precisely because the written description has identified carbon fibers as electrically conductive, and yet it denigrated carbon fibers' applicability to the claimed invention, that we find a disavowal of that subject matter. Moreover, it is irrelevant whether stainless steel fibers are a preferred embodiment of the claimed invention. We are not here modifying the district court's claim construction to limit its scope to stainless steel fibers. We only modify it to exclude carbon fibers from the scope of the '879 patent claims.85
83 84 85

Id. Id. at 1319. Id. at 1320.

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Honeywell, together with such cases as Gentry v. Berkline, Tronzo v. Biomet, Toro v. Ariens, LizardTech v. Earth Resource Mapping, Toro v. White, Kimberly-Clark v. Tyco, SciMed v. Advanced Cardiovascular, and Watts v. XL Systems, discussed in Chapters 1 and 3, illustrate the dangers of discussing the advantages of the invention and disadvantages of the prior art in the specification. Such discussions may lead to either judgment of invalidity of broad claims for want of 112, 1 written description support (as the court held in Gentry v. Berkline, Tronzo v. Biomet, Toro v. Ariens, and LizardTech v. Earth Resource Mapping), or unduly narrow interpretation of broad claim limitations (as in Toro v. White, Kimberly-Clark v. Tyco, SciMed v. Advanced Cardiovascular, Watts v. XL Systems, and Honeywell). 5. Cook Biotech Inc. v. ACell Inc. Incorporation of Second Patent by Reference Causes Narrow Claim Construction In Cook Biotech Inc. v. ACell Inc. (Cook Biotech)86, the Federal Circuit chose to narrow claim construction based upon the meaning of a term in a secondary patent incorporated by reference in the specification. The patent-in-suit, U.S. Patent No. 5,554,389 (389 patent), describes a tissue graft derived from an animals urinary bladder submucosa, a connective tissue that is a component of the urinary bladder wall. The patent teaches that the tissue graft composition can be applied to a host to promote growth and repair in defective or damaged tissue. Claim 1 of the 389 patent is representative of the claims at issue during trial: 1. A composition comprising urinary bladder submucosa delaminated from both the abluminal muscle layers and at least the luminal portion of the tunica mucosa of a segment of a urinary bladder of a warm blooded vertebrate (emphasis added). The district court, using a medical dictionary, stated that the tunica mucosa comprises the epithelium, basement membrane, lamina propia mucosae, and lamina muscularis mucosae. 87 At trial, the parties disputed which of these components made up the luminal portion of the tunica mucosa. The defendant argued that the luminal portion should be defined to include the epithelial cells as well as other layers of tissue. Unconvinced, the district court ruled in favor of
86 87

460 F.3d 1365, 79 U.S.P.Q.2d 1865 (Fed. Cir. 2006). Id. at 1377, 79 U.S.P.Q.2d at 1873.

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the plaintiff when it defined the term to mean the epithelial cells only.88 construction, a jury found literal infringement.89

Based upon this

On appeal before the Federal Circuit, the defendant argued that since the 389 patent incorporated by reference a technique for preparing submucosa as described in U.S. Patent No. 4,902,508 (508 patent), the term luminal portion of the tunica mucosa should be given the same meaning as defined in the 508 patent: the epithelium layer and the lamina propia layer (as well as the basement membrane which is between those layers).90 The plaintiff contended that the court should not import a meaning for the term from the 508 patent because the 508 patent deals with small intestinal submucosa whereas the 389 patent deals with urinary bladder submucosa.91 Therefore, the plaintiff insisted that the Federal Circuit affirm the district courts construction of the term to mean the epithelial cells. The Federal Circuit disagreed and ruled for the defendant, emphasizing the 389 patents incorporation of the 508 patent by reference. The court explained, Incorporation by reference provides a method for integrating material from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.92 Cook Biotech illustrates how incorporating a patent by reference in the specification gives courts an opportunity to narrowly construe claim terminology. 6. PODS Inc. v. Porta Stor Inc. Panel Gives Claim Differentiation No Significance In PODS Inc. v. Porta Stor Inc. (PODS),93 the Federal Circuit neglected the doctrine of claim differentiation, which it appeared to rely on so heavily in Phillips. The plaintiff and defendant operate storage and moving businesses. Both companies deliver storage containers to a client, allow the client to fill up the container, then pick up the container for storage or delivery. The patent-in-suit covers an invention and method for lifting and storing containers.
88 89 90 91 92

Id. at 1375, 79 U.S.P.Q.2d at 1871. Id. at 1371, 79 U.S.P.Q.2d at 1868. Id. at 1375, 79 U.S.P.Q.2d at 1871. Id.

Id. at 1376, 79 U.S.P.Q.2d at 1872 (quoting Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 54 U.S.P.Q.2d 1673 (Fed. Cir. 2000)).
93

82 U.S.P.Q.2d 1553 (Fed. Cir. 2007).

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The invention includes a carrier frame used to lift the storage containers, as seen in the embodiment drawn in Figure 5 below. In this embodiment of the invention, the carrier frame 24

is used to lift the container 34. The carrier frame has right and left longitudinal elements, 26 and 28, that border the right and left sides of the container, 30 and 32. The right longitudinal element extends between its first and second ends, 36 and 38. The left longitudinal element extends between its first and second ends, 40 and 42. Additionally, the carrier frame has front and rear transverse elements, 44 and 46, that border the front and rear sides of the container, 31 and 33. The front transverse element extends between its right and left ends, 48 and 50. rear elements are connected to create a rectangular carrier frame. Claim 1 and claim 32 are identical in all relevant parts, and describe the rectangular carrier frame in detail.94 Below is a representative excerpt from claim 1: 1. An apparatus for lifting, handling and transporting a container having right and left sides and front and rear ends, the apparatus comprising: The rear transverse element extends between its right and left ends, 52 and 54. The right, left, front, and

94

Id. at 1554-55.

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a carrier frame including right and left longitudinal elements juxtaposed with the right and left sides, respectively, of the container to be handled and transported, each longitudinal element extending between opposite first and second ends, the carrier frame having front and rear transverse elements juxtaposed with the front and rear ends, respectively, of the container to be handled and transported, each transverse element extending between opposite right and left ends, the left ends of the front and rear elements being adjacent to the first and second ends, respectively, of the left longitudinal element, and the right ends of the front and rear elements being adjacent to the first and second ends, respectively, of the right longitudinal element. . . . wherein the carrier frame is capable of being elevated to be moved over the container and is capable of being lowered around the container for attaching the carrier frame to the container for subsequent lifting, handling and transporting of the container (emphases added). Both parties agreed at trial that claims 1 and 32 describe a rectangular carrier frame that is lowered around the storage containers, where around means on all four sides.95 Claim 29 is similar to claims 1 and 32; however, it omits the lengthy description of the rectangular shape of the carrier frame: 29. A method of lifting, handling and transporting a container on to and off from a transport vehicle having a cargo carrying platform, the method comprising the steps of: positioning a carrier frame around the container on the transport vehicle platform; releasably attaching the carrier frame to the container; . . . moving and positioning the carrier frame around the container; lowering the carrier frame adjacent to the ground; releasably attaching the carrier frame to the container; elevating the carrier frame and container to an elevation higher than that of the transport vehicle platform; moving and positioning the carrier frame and container over the transport vehicle platform . . . (emphases added). Unlike claims 1 and 32, claim 29 does not have any description of the shape of the carrier frame. Claim 29 also contains two relevant limitations: positioning a carrier frame around the container on the transport vehicle platform and moving and positioning the carrier frame around the container.96
95 96

Id. at 1555. Id. (emphases added).

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The defendant uses a carrier frame that is U-shaped a shape similar to a rectangle, but with one side missing. At trial, the parties disputed whether the defendant's U-shaped frame infringed the plaintiff's patent. The plaintiff argued that the carrier frame in claim 29 is broader in scope than the rectangular carrier frame defined in claims 1 and 32 because claim 29 omitted the rectangular description of the carrier frame, thereby resulting in literal infringement. Furthermore, the plaintiff argued that the term around in claim 29 meant on all four sides or less than all four sides.97 The defendant argued that the court should give the terms carrier frame and around the same meaning in claim 29 as was given in claims 1 and 32, thereby limiting them to apply to rectangular shapes, not U-shapes.98 The district court sided with the plaintiffs construction and found literal infringement. On appeal, the Federal Circuit reversed, construing the carrier frame in claim 29 the same as defined in claims 1 and 32, despite the fact that claim 29 omitted the description of the carrier frame as rectangular. The Federal Circuit explained that they apply a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claim.99 The court said that the fact that every embodiment in the specification is four-sided is evidence that the carrier frame in claim 29 should be construed as such.100 Furthermore, the court looked to the prosecution history to bar plaintiffs argument that there is infringement under the doctrine of equivalents by pointing to the fact that the plaintiff distinguished the invention from the prior art by reference to its rectangular-shaped frame.101 Based upon these arguments, the court found that the proper construction of carrier frame was the more limited rectangular shape and the term around meant all four sides thereby finding no infringement.102 The Federal Circuits presumption that the term carrier frame be given the same meaning across all claims flies in the face of the doctrine of claim differentiation and the Phillips decision. In Phillips the court appeared to rely heavily on claim differentiation to define baffles. In PODS, the plaintiff explicitly omitted the description of the rectangular shape of the frame in claim 29,
97 98

Id. at 1556. Id. 99 Id. at 1558 (quoting Fin Control Sys. Pty., Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001)). 100 Id. at 1558. 101 Id. at 1559. 102 Id.

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which is evidence that carrier frame carried a more general meaning in that claim. However, the court refused to acknowledge any significance to this omission. The PODS opinion essentially makes the description of the carrier frame as rectangular in claims 1 and 32 redundant, because the court construes carrier frame to mean rectangular carrier frame. PODS shows how inconsistent the court is in its application of the doctrine of claim differentiation in the aftermath of Phillips. 7. Decisioning.com Inc. v. Federated Dept Stores, Inc. A Preferred Embodiment Narrows the Claims In Decisioning.com Inc. v. Federated Dept Stores, Inc. (Decisioning),103 the Federal Circuit read the narrow limitations of a preferred embodiment onto the broad language of a patents claims. Inconsistencies in the use of a single term in the specification made this possible. The Decisioning invention was an automated financial account processing system allowing an applicant to remotely apply for a loan without human assistance and receive approval within minutes. One of the disputed terms, remote interface, is used in claim 1 as follows: An automatic account processing system for establishing a financial account without human intervention for applicants located at a remote interface, said system comprising: a. a remote interface adapted to: i. allow an applicant to remotely request an account; and ii. receive data from an applicant;104 Decisioning argued that the plain meaning of the remote interface language encompassed personal computers, as they can be used as remote interfaces which can be adapted to perform the claimed tasks. The Federal Circuit admitted that the plain meaning is broad enough to cover such an embodiment, but said that in light of the specification, however, we conclude that one of ordinary skill in the art would not understand the term remote interface in the 007 patent to encompass a consumer-owned personal computer.105
103 104

Decisioning, 527 F.3d 1300 (Fed. Cir. 2008). Id. at 1304. 105 Id. at 1308.

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The claims originally included the limitation of a kiosk in which the remote interface was housed. During prosecution, the claims were amended. The kiosk limitation was deleted, and language calling for a computer controller was replaced with the remote interface term which remained in the claims as issued.106 The remarks filed with the amendment explained that the kiosk element was deleted because it was not required for the invention.107 Decisioning argued that this change broadened the scope of the interface enough to encompass more than the preferred kiosk embodiment found in the specification and illustrated in FIG. 2 of the patent below. Furthermore, Decisioning said the claims did not apply any specific housing restrictions and encompassed home personal computers.

106 107

Id. at 1309. Id. at 1309.

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In disagreeing, the Federal Circuit acknowledged that this change removed the specific requirement that the interface be housed in a kiosk, but also considered the language of the specification. The term remote interface did not appear in the specification, but kiosk did, and it was used in two different ways. In one, kiosk referred only to the housing for the remote computer equipment. In keeping with their analysis of the amendment, the court decided that this was merely a preferred embodiment and did not constitute the only housing available for the invention.108 In the second use, kiosk represented the entire remote structure, including the computer equipment needed for the remote interface. Since remote interface is a component of the invention as claimed, the use in the specification of kiosk as including the remote interface is a description of the invention. Several times in the specification, the present invention is described as including the kiosk. The court said that a kiosk must be publicly accessible under the ordinary meaning of the term. Therefore, the claim was interpreted to encompass only a publicly accessible installment, either literally installed in a kiosk or otherwise, but not a personal computer located within a private residence.109 8. Heuft Systemtchnik GMBH v. Industrial Dynamics Co., LTD Term Narrowed by Specification in Prosecution of Related Application In Heuft Systemtchnik GMBH v. Industrial Dynamics Co., LTD, the Federal Circuit determined the meaning of claim terms in a divisional application based on the prosecution history of a parent patent.110 Abandoning the district courts reliance of plain meaning construction, the Heuft court found claim scope surrendered during prosecution of the parent patent to apply to the claims at issue in the divisional application. The parent patent, Heuft patent 6,155,408 (the 408 patent), is directed to a method and apparatus for rotating rotationally symmetrical containers such as bottles, while transporting them

108 109 110

Id. at 1309. Id. at 1312. 282 Fed. Appx. 836, 2008 U.S. App. LEXIS 13486 (Fed. Cir. 2009).

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under backup pressure.111 As shown in Fig. 1 below, empty bottles 10 are transported on a transporter 12 and held by a fixed railing 14 arranged to minimize rotational disturbances so that the bottles sidewalls may be inspected using radiation source 18 and detection device 20.

During prosecution, Applicants responded to rejections over a reference (the Christian reference) by countering that the present invention provides for the increase and sharp decrease at an angle [beta] of the distance between the railings creating the stable arrangement. This stable arrangement stops the propagation of any disturbances downstream. As noted above, Christian does not disclose any means for such stable arrangement. 112 Although no independent claim at
111 112

Col. 1, 7-9. of U.S. Patent No. 6,155,408. Id. at 839-40.

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that time contained a limitation relating to the exit angle of the railings, Applicants subsequently amended the independent claims to expressly recite an exit angle of 30 [degrees] to 100 [degrees]. This amendment, which was allowed, followed language in the specification relating to the only embodiment directed to angled guiderails. Heuft filed a divisional application that eventually issued as patent 6,298,974 (the 974 patent) to address a method and apparatus for inspecting rotating containers. 113 Claim 1 of the 974 patent recited rotating the containers continuously alternately in opposite directions by arranging one of two consecutive containers stable against one of the at least two railings and the other stable against the other of the at least two railings. Claim 6 recited stabilizing means for the stable arrangement of one of two consecutive containers. Although the claims in the 974 patent made no mention whatsoever of exit angles, the Federal Circuit used the prosecution history of the parent patent to construe the meaning of arranging and stabilizing means to be limited to the angles elucidated during the 408 prosecution. To reach this conclusion, the Federal Circuit noted the similarity of the claim language of the original claims of the application resulting in the 408 patent as compared to the claim language of the 974 patent. In view of the similarity, statements made during prosecution of the 408 patent were applied to the corresponding language in the 974 patent. Thus, we see the important implications of prosecution history that can be had on a family of patents, the Federal Circuit trumping the District Courts reliance on the ordinary meaning. 9. Felix v. American Honda Motor Company, Inc. Term Narrowed by Specification

In Felix v. American Honda Company, Inc., the court analyzed a patent related to built-in storage compartment for a pickup truck bed.114 In particular, the issue regarded a weathertight gasket 18 mounted on said flange 16 and engaging said lid 22 in its closed position. as depicted in Figure A, below. The accused product also included a lid, a gasket, and a flange, however, the position of the gasket differed, being affixed to the lid rather than to any flange as shown in Figure B, below.
113 114

U.S. Patent No. 6,298,974. 562 F.3d 1167 (Fed. Cir. 2009).

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The Federal Circuit agreed with the district courts construction of the claim term mounted to mean securely affixed or fastened to. The Court explained that the claim term mounted does not have the broader meaning of simply positioned, in that to be merely positioned on the underside of the lid, it would fall off. Because the specification repeatedly used the term to describe structures that must be securely affixed or fastened together, the court dismissed broader dictionary definitions because they did not fit within the context of the specification. B. Post-Phillips Cases in Which Claim Terminology Was Given a Broad Interpretation Based on the Ordinary Meaning or Claim Differentiation 1. Cannon Rubber v. The First Years Start With the Ordinary Meaning and Then See if the Specification Requires Anything Else Cannon Rubber Ltd. v. The First Years, Inc.115 clearly demonstrates that even in the postPhillips world, Federal Circuit panels are free to assess claim construction from whatever perspective the panel sees best. This case involved a breast pump, a first embodiment of which is illustrated below.
115

No. 05-1063, 2005 WL 3542910 (Fed. Cir. 2005) (non-precedential).

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The first embodiment of the breast pump includes diaphragm 20 that is entirely contained within body 2 of the breast pump. In a second embodiment of the invention, not illustrated here, the diaphragm is partially within the body and partially extends beyond the body of the breast pump. The claim involved in the controversy recites a diaphragm disposed in the body. The district court construed this language to mean disposed of or mounted entirely within the body of the pump. Although the defendant had a breast pump with a diaphragm, the diaphragm extended in part beyond the body of the breast pump. Therefore, the district court granted a motion for summary judgment of non-infringement. The district court considered the patents specification, noting that it described two embodiments. In the first, where the diaphragm is entirely within the body, the patent uses the phrase in the body to describe the diaphragm. When referring to the second embodiment in which the diaphragm extends outside of the body, the patent specification does not use the in the body language, but instead employs the phrase mounted thereon. Based on this distinction, the district court determined that in the body means that the diaphragm must be disposed entirely within the body. The Federal Circuit reversed. Judge Lourie, writing for a panel also including Judges Newman and Rader, started the analysis by considering the ordinary meaning of the phrase in the body, consistent with Phillips teachings when the ordinary meaning can be easily understood. 2 - 55

See Point 5 in Section II.C., above. The justification for starting with an ordinary meaning analysis is that the term in is a simple, non-technical term, and thus does not require elaborate interpretation.116 The Federal Circuit notes that the term in could be used to describe diaphragms that are contained entirely or partially in the body. The Federal Circuit draws an analogy to a trash bag being in a trash can even though a portion of the bag is hanging outside of the trash can. After analyzing the ordinary meaning, the Federal Circuit addresses whether the intrinsic record includes any justification for deviating from the ordinary meaning. The panel cites Phillips for the proposition that we may depart from the plain meaning of a claim term when the patentee has acted as a lexicographer or when the patentee has clearly limited the scope of the invention through a disclaimer in the specification or prosecution history.117 In looking at usages of the phrase in the body as opposed to usages of the phrase mounted thereon in the specification, this panel did not see a clear definitional distinction between a diaphragm entirely within the body and a diaphragm partially within the body. Furthermore, the applicant unambiguously used the phrase in the body in the Summary of the Invention section to refer to diaphragms that were either entirely or partially in the body of the pump. Indeed, the mere fact that the patent contains figures of embodiments that are both entirely and partially in the body was considered to be a strong indication that the claims were intended to encompass both. The Federal Circuit also considered the prosecution history. The claims originally filed recited mounting a diaphragm. In response to a rejection under Section 112, second paragraph, this language is amended to diaphragm disposed in the body. This panel did not find any significance in the amendment. The actual rejection that was made was that the original claim was narrative in form and replete with indefinite and functional or operational language. The Federal Circuit concluded that the replacement of operational language with structural language did not work as a surrender of a disclosed embodiment of the invention in which the diaphragm was only partially within the body. Thus, based primarily on an ordinary meaning analysis, and only secondarily on an intrinsic record analysis, this panel of the Federal Circuit vacated the district courts granting of summary judgment of non-infringement and remanded for further proceedings.

116 117

Slip op. at 4 (citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001)). Id.

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2. NCube Corp. v. Seachange International, Inc. Panel Rejects Defendants Request to Limit Claims to Specification Based Primarily on Claim Differentiation In NCube Corp. v. Seachange International Inc.,118 a panel consisting of Judges Rader, Friedman and Dyk, Judge Dyk dissenting, refused the request of the defendant to limit scope of protection based on limitations found only in the specification. The patent involved in the controversy related to providing multi-media data in a network system to a client by allowing a client to have flexible access to various multimedia sources over a network. The claim involved in the controversy recited: an upstream manager receiving messages from said client and routing said messages to an appropriate service on said server, said upstream manager being coupled to a first network; The trial court construed the term upstream manager to mean: Upstream manager: A computer system component that (a) accepts messages from a client bound for services on a server; (b) routes messages from a client to services on a server; (c) is distinct from the downstream manager.119 The district court rejected the defendants argument that the upstream manager must perform the functions set forth above using only logical, and not physical, addresses. A jury determined that the defendant infringed the claim. In its analysis, it was necessary for the Federal Circuit to assess the manner in which the upstream manager employed addresses to route messages. Since the invention allows a client to receive requested material from different types of networks, the invention must accommodate addressing schemes of each separate network which may be different from one another. To solve this issue, the embodiment in the patent employs its own independent addresses on top of those used by the separate networks. Thus, the embodiment assigns a logical address to the physical address employed by each separate network. The embodiment stores the relationship between the logical and corresponding physical addresses. The majority noted that the embodiment described in the specification employs logical addresses and not physical addresses. However, the majority noted that this was a description of only one embodiment of the invention. The majority also considered dependant claim 2 which
118 119

436 F.3d 1317, 77 U.S.P.Q.2d 1481 (Fed. Cir. 2006). Id. at 1322, 77 U.S.P.Q.2d at 1484.

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depended from the claim in question. Dependant claim 2 requires the creation of a virtual connection thus requiring logical addressing. The majority employed claim differentiation to prevent the requirement of logical addresses to be read into claim 1 from the virtual connection limitation of claim 2. Similarly, unasserted claims 5 and 11 specifically require logical addressing. Based on these factors, the majority refused to limit the claim to logical addressing and affirmed the finding of infringement, with Judge Dyk dissenting. Judge Dyk argued in dissent that the protection provided by the patent should be limited to systems employing logical addressing. Judge Dyk argued that the use of logical addressing is a critical part of the invention. Judge Dyk referenced a section of the patent entitled The Network Protocol of the Present Invention which describes logical addressing and why it is important. Furthermore, Judge Dyk noted that nowhere in the patent disclosure is there any suggestion that messages could be routed using physical, as opposed to logical, addresses. In response to the theories advanced by the majority as to why the claims should not be limited to logical addressing, Judge Dyk agreed that simply because a patent describes only a single embodiment does not mean that the claims of the patent must be construed as limited to that embodiment. However, Judge Dyk held against the patentee the fact that the patent specification characterizes the present invention as including logical addressing. Judge Dyk also took on the claim differentiation arguments. Judge Dyk noted that claim 2 recites not only the virtual connection limitation but also that a connection service must create the virtual connection. Thus, even if claim 1 is determined to be limited to logical addressing, claim 2 is different in scope from claim 1. With regard to claims 5 and 11, Judge Dyk took the position that these claims are limited to a specific means of using logical addresses in a manner narrower than the requirement that the upstream manager employ logical addressing as set forth in claim 1 when interpreted properly, according to Judge Dyk. If the judges who decided Phillips can not agree on how Phillips should be applied, how are we supposed to advise our clients? 3. Acumed LLC v. Stryker Corp. Limitations From Specification Not Read Into Claims; Further Disputes Regarding Dictionary Definitions

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In contrast to Honeywell, the Federal Circuit refused to import limitations from preferred embodiments into claims in Acumed LLC v. Stryker Corp. (Acumed).120 Unrest amongst the majority and dissent illustrates the lingering inconsistency in interpreting the ordinary meaning of claim terminology and the appropriate use of dictionary definitions following Phillips. The plaintiff in Acumed designed the patent-in-suit to treat fractures of the humerus, the upper arm bone that runs from the elbow to the shoulder.121 Figures 3 and 4 depict one embodiment of the invention.

The humeral shaft 50 is the long and narrow portion of the bone and ends at the humeral cortex 70, the ball-like shoulder joint. In a common injury, the humeral cortex breaks from the humeral shaft, sometimes in multiple pieces. The plaintiffs patent covers a humeral nail 10 that has an elongated body comprised of a butt portion 14 and a tapered curved shank 12. The humeral nail passes through the humeral cortex and humeral shaft and secures the fractured pieces in place using screws 84 that pass through holes 46.
120 121

483 F.3d 800, 82 U.S.P.Q.2d 1481 (Fed. Cir. 2007). Id. at 802, 82 U.S.P.Q.2d at 1482-83.

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Claim 1 is representative of the claims at issue during trial: 1. An elongated tapered nail for securing fractures of the proximal humerus comprising: an elongated body having a curved shank configured to occupy an upper portion of the proximal humeral shaft, and a contiguous butt portion extending proximally from the shank and configured to occupy the humeral cortex; the butt portion being shorter than the shank and defining a plurality of at least three transverse holes, each defining a hole axis, with the three hole axes angularly offset from each other, such that the holes may receive fasteners attached to fragments of the humeral cortex (emphasis added). At trial the parties disputed the appropriate construction of the term transverse. The defendant argued that the court should limit the term transverse to mean perpendicular to the nail shaft, thereby excluding from the scope of the claim those holes that are not at right angles. The defendant maintained that this construction is appropriate because every description and figure in the specification represented the holes as perpendicular to the nail shaft.122 The plaintiff contended that such a limitation is inconsistent with the ordinary meaning of transverse and that the descriptions and figures in the specification merely indicate a preferred embodiment. The district court agreed with the plaintiffs broader construction, using a dictionary definition of transverse as a reference point.123 The Federal Circuit affirmed the district court with Judge Gajarsa writing for the majority The plain meaning of Claim 1 covers more than the particular embodiment shown in the figures. While the disclosed embodiment possesses perpendicular holes, the claim language covers all transverse holes a word that does not necessarily imply right angles.124 The majoritys broad construction of transverse resulted in a finding of literal infringement on the part of the defendant. 125 Judge Moore dissented, pointing out that the specification is the appropriate starting point for claim construction, not a dictionary definition.126 Judge Moore stressed that every mention of a transverse hole in the specification specifically describes it as perpendicular; therefore, a narrow
122 123 124 125 126

Id. at 807, 82 U.S.P.Q.2d at 1486. Id. at 810, 82 U.S.P.Q.2d at 1488. Id. at 807, 82 U.S.P.Q.2d at 1486. Id. Id. at 812, 82 U.S.P.Q.2d at 1490.

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meaning that incorporates this limitation was appropriate. Judge Moore argued that the district court erred in using a dictionary definition as a starting point for defining the term transverse in light of Phillips.127 Judge Gajarsa, in the majority opinion, countered Judge Moores criticism of the district court, Although in Phillips we rejected an approach in which a broad dictionary definition is adopted and then whittled down only if contradicted by the specification we did not prohibit the use of dictionaries in claim construction, nor did we define at what point in the claim construction analysis they may be consulted.128 Judge Moore responded that the scope of the patent should be in line with the invention as described in the specification and asked What, if not the specification, is the majority using to determine the plain meaning of this term?129 The back and forth bickering between the majority and dissent illustrates that the Federal Circuit, despite Phillips, is still inconsistent in its treatment of the specification and dictionary definitions in determining the meaning of a term during claim construction. 4. Oatey Co. v. IPS Corp. An Attempt Should Be Made to Construe Claims to Cover at Least Disclosed Embodiments In Oatey Co. v. IPS Corp. (Oatey)130, the district court, in a valiant attempt to follow Phillips, interpreted a claim narrowly, only to have the Federal Circuit broaden the claim to match the specification on appeal. The patented invention was an outlet box for containing input and output water ports leading to a washing machine. Some outlet boxes, including the subject of the patent-in-suit, were configured to accept the output waste water from a second nearby appliance. Because some building codes require separate output ports for each appliance, the outlet box accommodates two output ports. The drawings below illustrate two embodiments for the drain ports. The first, depicted in Figures 1 and 2, features two juxtaposed openings 54 and 56 in the bottom wall of the box. The second, depicted in Figure 3, features one large opening 50 in the bottom wall which is divided into two drain ports by a dividing wall 72 in a tailpiece 24.
127 128 129 130

Id. Id. at 809, 82 U.S.P.Q.2d at 1488 n.2 Id. at 816-17, 82 U.S.P.Q.2d at 1493. Oatey, 514 F.3d 1271, 85 U.S.P.Q.2d 1791 (Fed. Cir. 2008).

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Claim 1, which was representative of the disputed claims, read as follows: A washing machine outlet box comprising a housing including a bottom wall, first and second juxtaposed drain ports in said bottom wall, and a common tailpiece for both of said drain ports extending from said bottom wall, said tailpiece extending completely around both of said drain ports in said bottom wall, said tailpiece having an outlet for connection to a drainpipe.131 The district court followed the ruling that the claims of a patent define the invention to which the patentee is entitled the right to exclude132 from the then-recently decided Phillips case. The court construed first and second juxtaposed drain ports in said bottom wall to mean two

131 132

Id. at 1275, 85 U.S.P.Q.2d at 1793. Phillips, 415 F.3d at 1312, 75 U.S.P.Q.2d at 1325.

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distinct, separate physical openings in the bottom wall. Further, the court noted that Phillips confirmed the importance of the specification in claim construction[.]133 The result was that the dual-opening embodiment in Figure 2 was encompassed by the claims while the single opening depicted in Figure 3 was not.134 In reversing the district courts decision, the Federal Circuit expressed its reluctance to interpret claims to exclude embodiments from the specification unless they are clearly disclaimed by the language.135 As such, they interpreted the first and second juxtaposed drain ports in said bottom wall language more broadly than the district court did, ruling that the claim of two drain ports in the bottom wall did not exclude a single opening in the bottom wall which was formed into two drain ports by a structure below the bottom wall.136 5. Medegen MMS, Inc. v. ICU Medical, Inc. Term Broadened by Reliance on Ordinary Meaning over Limitation in Specification Medegen MMS, Inc. v. ICU Medical, Inc. involved U.S. Patent No. 5,730,418 (the 418 patent), directed toward the reduction of unwanted reverse flow of fluid out of a patients body and back into a catheter tubing caused by the negative pressure suction that occurs as a syringe is withdrawn from a connector in the catheter tubing.137 Reduction in what is called retrograde flow is accomplished by a positive pressure introduced by a plug that slides into a valve internal chamber of the connector as the syringe is removed from the connector, thereby reducing the volume of the valve internal chamber and eliminating the pressure suction of fluid flow out of the patients body.138 A cross-sectional view of an embodiment with rubber valve plug 14 fitted inside minimum fluid displacement connector 10 is shown in Fig. 1.

133 134 135 136 137 138

Id. at 1275, 85 U.S.P.Q.2d at 1793 (citing Phillips, 415 F.3d at 1315, 75 U.S.P.Q.2d at 1327-8). 514 F.3d at 1275-6, 85 U.S.P.Q.2d at 1794. Id. at 1276, 85 U.S.P.Q.2d at 1794-5. Id. at 1277, 85 U.S.P.Q.2d at 1795. Medegen MMS, Inc. v. ICU Medical, Inc, 90 U.S.P.Q.2d 1088, 2008 U.S. App. LEXIS 24088 (Fed. Cir. 2008). Id. at 1089, 2008 U.S. App. LEXIS at 24090-91.

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Relying on the preferred embodiments, all of which consistently discussed a plug with elastomeric features, the district court construed the claim term plug to mean an elastomeric part that either pivots about a reduced diameter portion or buckles, to establish a fluid flow path.139 On appeal, both parties agreed that the term plug does not have a well-accepted meaning in the art of medical connectors for intravenous fluid flow. The Federal Circuit, finding no elastomeric limitation in the claim itself, further found the elastomeric features described in the prosecution history and within the specification to be mere examples of how to create a fluid flow connection between the inlet valve and the internal fluid chamber. Accepting the ordinary meaning of the term plug to be a moveable member between an open and closed position, the court found the patent to encompass the accused device which employed a rigid plug. Chief District Judge Walker, sitting by designation, dissented, noting that while it is improper to read a limitation from the specification into the claims, the majority had not properly read the claims in view of the specification, of which they are a part. The district court determined that the present invention at issue would not work without the limitations to the term plug as provided by the district court. Therefore, Judge Walker concluded that the claim limitations were essential to the invention in this case. From a patent drafters perspective, the lesson gleaned is that the terms in the specification must remain broad, less they be seen as essential to the invention. Furthermore, it would be wise to remember the district courts counsel that the patent specification could have acknowledged
139

Id. at 1091, 2008 U.S. App. LEXIS at 24094.

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alternative plugs and describe how such plugs would perform the functions of controlling fluid flow and achieving minimum fluid displacement in the context of its invention. 6. Ormco Corp. v. Align Technology, Inc. Inconsistent Use of Phillips Within a Single Opinion Ormco Corp. v. Align Technology, Inc. (Ormco)140 proves that the Federal Circuit can be inconsistent in its application of Phillips within a single opinion. The case involved the alleged infringement of four of Ormcos patents directed to computer-aided design and production of custom orthodontic devices. The patents share a common specification. The trial court granted the defendants motion for summary judgment of noninfringement. To reach this conclusion, the trial court used the shared specification as well as evidence from the prosecution histories of the patents to limit claim language such as producing desired tooth position signals containing digitized data of desired positions of a plurality of the patients teeth to a process in which final treatment positions for teeth are automatically determined.141 Because the defendants system used human operators rather than computers to determine final treatment positions, the court found no infringement.142 Ormco appealed. The Federal Circuit began by reading Phillips to require claim interpretation that stays true to the claim language and most naturally aligns with the patents description of the invention.143 The Federal Circuit noted that the claim language does not expressly recite

automatic control of the finish tooth positioning[.]144 However, it used the specification and prosecution history to interpret many, but not all, of the claims to only encompass automatic control. The court read the single preferred embodiment disclosed in the specification as a method
140 141 142 143 144

Ormco, 498 F.3d 1307, 84 U.S.P.Q.2d 1146 (Fed. Cir. 2007). Id. at 1311, 84 U.S.P.Q.2d at 1149. Id., 84 U.S.P.Q.2d at 1149. Id. at 1313, 84 U.S.P.Q.2d at 1150, (citing Phillips, 415 F.3d at 1316, 75 U.S.P.Q.2d at 1328-9). Id. at 1316, 84 U.S.P.Q.2d at 1152-3.

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utilizing automatic final position control, and it read the background section of the specification as establishing that prior art was unable to perform this task automatically.145 They also used the prosecution history, pointing to an office action response wherein the inventors sought to distinguish their invention from a prior patent involving computer aided orthodontics design. The court interpreted the response as distinguishing by emphasizing the human decision making found throughout the prior art.146 In sum, the Federal Circuit narrowed the bulk of Ormcos claims based on its reading of the specification and prosecution history rather than the claim language itself. However, the Federal Circuit did not read these limitations into six of the disputed claims. Align argued that these claims, like the others, related to automatic calculation of finished tooth positions. In disagreeing, the Federal Circuit apparently did not go beyond the plain language of these six claims to hold that they did not deal with automatic calculation of finished positions. Claim 37 of the 444 patent is representative: A method of processing digital data for use in facilitating the orthodontic treatment of a patient comprising: scanning three-dimensional surfaces that have the shapes of a plurality of the teeth of a patient and generating data thereof; from the generated data, producing separate digital representations of the shapes of each of a plurality of individual teeth of the patient.147 Because these claims related to data collection and not to the automatic determination of finished tooth positions, the Federal Circuit allowed these six claims to remain broad, as written, and reversed the district courts summary judgment of non-infringement.

145 146 147

Id. at 1313, 84 U.S.P.Q.2d at 1150. Id. at 1315, 84 U.S.P.Q.2d at 1151-2. Id.

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IV.

Use of Prosecution History to Interpret Claims In construing claims, review of the prosecution history is necessary.148 Claims cannot be

construed in one fashion during prosecution and then in a contrary fashion against alleged infringers. Even if a claim term has a meaning to one skilled in the art different from the definition in the specification and file history, the definition in the patent documents controls.149 These principals have been employed by the Federal Circuit to restrict the scope of protection to the described embodiments. A. Tol-O-Matic v. Proma Produkt-Und Prosecution History Limits Claim Scope

In Tol-O-Matic, Inc. v. Proma Produkt-Und Mktg. Gesellschaft m.b.H. (Tol-O-Matic),150 the patent-in-suit claimed a rodless piston and cylinder combination. Rodless piston-cylinders transfer motion when the cylinder is pressurized at the facing piston surface, causing the piston to move along the cylinder length in response. A cross section of the basic apparatus disclosed in the patent is illustrated in Figure 2 below:

148 149

Markman, 52 F.3d at 980, 34 U.S.P.Q.2d at 1330.

Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1578, 34 U.S.P.Q. 2d 1673, 1678 (Fed. Cir. 1995) [hereinafter Southwall].
150

945 F.2d 1546, 20 U.S.P.Q.2d 1332 (Fed. Cir. 1991).

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Connected to the piston is a rib 10 that extends through a slit 3 in the cylinder wall. Pressure must be maintained within the cylinder; however, pressure integrity may be compromised in two ways. First, internal pressure may cause the slit to widen and allow venting. Second, external loads on the rib may also cause slit widening. The structure illustrated in Figure 2 maintains the alignment of the projecting rib 10 with the slit 3, and through the combination of the guide grooves 16, the guide strips 14, and the yoke legs 13, provides a compressive force across the top of the cylinder tube 1 to prevent the widening of the cylinder slit from internal pressure. During patent prosecution, this ability to provide a compressive force across the slit was used to distinguish the claims from certain prior art references. The functioning of these elements and other related elements was described in the specification at col. 6, lines 31-48: Force due to movement of the piston 5 is transferred directly to the force transfer element 9; any transversely directed forces or torques can readily be accepted by the guide grooves 16 and the guide strips 14, so that movement of the piston 5 in the cylinder is not impaired, 2 - 69

and no expansion of the longitudinal slit of the cylinder tube 1 will result. The guide strips 14 are preferably located between the upper surface 1b of the cylinder tube 1 and a plane of symmetry 1a thereof, and positioned, preferably, at approximately the level of the termination of the longitudinal slit 3. Thus, the guide strips 14 in the yoke 11 tend to compress the cylinder structure 1 in the region of the slit 3 and prevent expansion of the slit 3. Thus, the force transfer element 9, with its guide yoke 11 and the guide elements 14 thereon engaging the grooves 16 and the cylinder, additionally contribute to maintenance of dimension of the cylinder structure, and prevent expansion. To address both problems, the claims recited a yoke to provide lateral support across the cylinder slit. The structural features that permit the application of this compressive force were encompassed in the italicized portion of representative claim 25 below: 25. Piston-cylinder structure having an elongated tubular cylinder (1) closed at its end; an elongated piston (5) slidable in the cylinder; a slit (3) extending through the wall (102) of the cylinder longitudinally with respect to its axis; a motion transfer element (9, 12) secured to the piston (5) and having a rib-like portion (10) extending through said slit and to the outside of the cylinder wall (102), movable longitudinally of the cylinder to transfer relative motion between the piston and the cylinder to an external device; and means for flexibly sealing and closing off the slit in the cylinder in the regions between the closed ends thereof and the rib-like portion (10) of the motion transfer element to seal the piston in portions of the cylinder and define closed cylinder chambers (19, 20) therein, wherein the motion transfer element includes a yoke (11) extending laterally over the cylinder (1) at the outside thereof; interengaging guide trackguide element means are provided on the cylinder and the yoke of the motion transfer element, respectively, positioned at the outer surfaces of the cylinder between an end surface (1b) of the cylinder spanned by said yoke, and a transverse axis of symmetry (2a) of the cylinder to provide for 2 - 70

lateral support of the portions of the cylinder separated by the slit and spanned by said yoke; and wherein the interengaging guide trackguide element means comprises guide grooves (16) and guide strips (14) matching, in cross section, the shape of the guide tracks (16). The defendants yoke only resisted slit widening due to external loading; it would have to be clamped unworkably tight to resist slit widening due to internal pressure. 151 The issue at trial was whether the plaintiffs claims could read on a yoke that resists widening only due to external loading (such as the defendants). The plaintiff argued the specification teaches that the yoke resists widening due to either internal pressure or external loading. Of course, the plaintiff sought a claim construction that gave the broadest possible scope and facilitated a finding of infringement. In fact, the court agreed with the plaintiffs interpretation of the specification.152 However, the defendant introduced prosecution history evidence. In order to distinguish over the prior art, the plaintiff told the patent examiner that, unlike the prior art mechanisms, the claimed structure of the yoke also resisted widening due to internal pressure.153 In light of the prosecution history, the court declined to set aside the jury verdict of no infringement. Tol-O-Matic establishes that the prosecution history must be reviewed when interpreting claims and that any interpretation derived from the prosecution history supersedes specification language. B. Hockerson-Halberstadt Patentee Held to Clear Error in Prosecution History to Narrow Claim Interpretation

The Federal Circuit also employed the prosecution history to arrive at a claim construction detrimental to the patent owner in Hockerson-Halberstadt Inc. v. Avia Group International, Inc. (Hockerson-Halberstadt).154 The suit involved a patent directed to outer footwear. Figures from the patent-in-suit are set forth below.

151 152 153 154

Id. at 1551-52, 20 U.S.P.Q.2d at 1338. Id. at 1551, 20 U.S.P.Q.2d at 1336. Id., 20 U.S.P.Q.2d at 1336-37. 222 F.3d 951, 55 U.S.P.Q.2d 1487 (Fed. Cir. 2000).

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The language in controversy involved a central longitudinal groove extending along the length of the shoe to define fins in the sole on opposite sides of the groove as follows: a central longitudinal groove in the underside of the heel part extending forwardly through the heel part into the underside of the sole part to divide the lower surface of the heel part into a pair of fins which are capable of bending outwardly and upwardly when the underside of the heel part strikes the ground.155 During prosecution, a claim which did not recite the central longitudinal groove limitation was rejected over a patent which taught a shoe having a groove extending along the underside of the heel. The prior art taught that the width of the groove should be greater than the combined width of the fins on opposite sides of the groove. In response to the rejection, the patent owner added the central longitudinal groove limitation and made arguments to distinguish the claims from the prior art. In one of the arguments the inventor submitted drawings comparing the claimed invention with the prior art. The inventors drawing of the invention showed a narrow groove. The inventor argued that [a]pplicant is providing a much narrower groove for a totally different purpose, mainly to provide fins which can be compressed outwardly and upwardly. Such fins are

155

Id. at 953, 55 U.S.P.Q.2d at 1489.

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not provided on the shoe of the prior art. Note that the claim is silent concerning the width of the groove or the relation of the width of the groove to the width of the fins. As a result of the prosecution history, the district court construed the term central longitudinal groove to mean a relatively long and narrow structure that extends longitudinally or lengthwise completely through the center so as to divide the heel part into a pair of fins. The width of the central longitudinal groove must be less than the combined width of the two fins. With this claim construction, the patent owner conceded infringement and appealed the district courts claim construction. On appeal, the patent owner argued that a reasonable competitor would understand that the inventors much narrower groove statement and accompanying drawing of the invention were erroneous. The patent owner argued that the specification contains figures showing that the groove can be wider than the fins. Thus, the claim language itself does not provide any limitation with regard to the width of the groove. Furthermore, the patent drawings illustrate a groove that is wider than the fins. However, during prosecution, the inventor redrew his invention to show narrow fins and argued that the invention provided a much narrower groove than the prior art, where the prior art taught that the groove should be greater than the combined width of the fins. The Federal Circuit affirmed the narrow claim interpretation of the district court. In response to the patent owners assertion that a reasonable competitor would understand that the much narrower groove argument was an error rather than a surrender of claim scope concerning a particular width relationship, the Federal Circuit noted that it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue. The Federal Circuit characterized the patent owner as requesting the Federal Circuit to erase from the prosecution history the inventors surrender of a particular aspect of a claim terms meaning. The Federal Circuit declined noting that the public notice function provided by the file history precludes such results.

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C.

Wang Laboratories v. AOL Correct Factual Statement About Prior Art in Prosecution History Construed as Distinguishing Invention From Prior Art to Limit Protection

In Wang, the patent-in-suit, U.S. Patent No. 4,751,669 (669 patent), entitled Video Frame Processing, is directed to an online information system developed by Wang engineers in 1983 and 1984 for use with the known videotex system. The claimed invention provides users with textual and graphical information from computer-controlled databases via interactive two-way communication over a telephone network.156 Using the videotex system it is possible to review, retrieve, and store pages or "frames" of data from many information suppliers.157 The overall system is illustrated in Figure 1 of the 669 patent, which shows the subscriber's equipment 12 connected through a two-way channel 16 to a switched telephone network 18, which in turn is connected to the equipment of suppliers 20 and 24 via two- way channels 22 and 23:

Claim 20 is directed to a keyword feature that allows the user to assign a name to a particular page or frame for ease in retrieval, and was said by Wang to read on AOL's "favorite places" and Netscape's "bookmark" features: 20. Apparatus for retrieving selected frames of information from a central videotex supplier of the information frames, each information frame having an associated unique identifier assigned by the supplier for retrieving the frame, the apparatus comprising a display device connected to display the information frames, storage means connected to store the identifier and a unique keyword selected by an operator and associated with the identifier, menu means connected to display on the display device a menu
156 157

Wang, 197 F.3d at 1379, 53 U.S.P.Q.2d at 1162. Id.

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frame containing the keyword, data entry means connected to enter into the apparatus a request for retrieval of a selected information frame by moving a cursor to the keyword associated with the selected information frame, and a processor connected to be responsive to the data entry means for retrieving the information frame in response to the entry of the request by transmitting the associated identifier to the supplier. The defendants filed a motion for summary judgment based on non-infringement which turned on the interpretation of the asserted claims, specifically, whether the claims are limited to the specific technology by which the frames of information are processed and displayed. 158 At the time the '669 invention was made, several protocols existed for processing and displaying computer-generated data.159 They were of two general types: character-based protocols and bitmapped protocols. In a character-based system the screen display is divided into a grid wherein a character, such as a letter or a number, is placed in each cell of the grid. A typical character-based system sends frames of digital information to a subscriber as a stream of encoded bytes identifying the characters to be displayed and containing instructions about the attributes of the displayed frame such as the size of the characters or their background color. 160 The system also has a limited capability to display graphics by way of mosaic characters. As opposed to the grid-based characters-only display of character-based protocols, a bit-mapped protocol encodes an image with reference to the individual pixels of the display monitor.161 It is not disputed that the accused AOL and Netscape systems utilize bit-mapped protocols, which are today used for most Internet interactions.162 Following a hearing at which both sides presented expert testimony, the district court construed all of the claims in suit as limited to character-based systems. 163 This construction followed from the court's definition of the term "frame," which appears throughout the claims, as a "page of information assembled prior to display which term is encoded in a character-based protocol . . . to then be displayed on the screen representing a fixed full screen arrangement, such

158 159 160 161 162 163

Id. at 1380, 53 U.S.P.Q.2d at 1163. Id. Id. Id. Id. Id.

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as rows and columns, of alphanumeric and graphic characters."164 The court also held that the suppliers of data accessed by the claimed system must provide information frames encoded in a character-based protocol. This claim construction was appropriate, reasoned the court, because the specification of the 669 patent is limited to character-based protocols, and because the prosecution history prompts this interpretation.165 Based on the claims as construed, the district court granted summary judgment of non-infringement as to literal infringement and also under the doctrine of equivalents.166 The Federal Circuit narrowly construed the claims in light of the written description. The parties agreed that in general usage the claim term frame could be applied both to bit-mapped display systems and to character-based systems.167 The disagreement was as to whether the term frame in the claims embraced this general usage, or whether the terms would be understood by persons of skill in this field as limited to the character-based systems described in the 669 patent.168 The court construed the claims as limited to character-based systems. The court noted that the only system that is described and enabled in the patent specification uses a characterbased protocol, and that references to bit-mapped protocols did not describe them as included in the applicants invention, and that the specification would not be so understood by a person skilled in the field of the invention.169 The prosecution history also served to support the limitation to the character-base frames. During the prosecution of the parent application, Wang filed an Information Disclosure Statement. In this Information Disclosure Statement, Wang distinguished a reference (Fleming) describing the NAPLPS system.170 Wang stated that the reference encodes pictorial information . . . on the pel [picture element] level, rather than on the character level. Wang argued that the statement was in the parent application and therefore does not apply to the continuation-in-part (that is the 669 patent).171 However, that subject matter was common to the continuation-in-part application, and
164 165 166 167 168 169 170 171

Id. Id. Id. Id. at 1381, 53 U.S.P.Q. at 1164. Id., 53 U.S.P.Q. at 1163. Id. at 1382, 53 U.S.P.Q. at 1164. Id. at 1384, 53 U.S.P.Q. at 1165. Id.

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thus the argument concerning the Fleming reference was correctly viewed as applying to the common subject matter.172 Therefore, this history reinforces the conclusions that the inventors focused their invention, and the description and claims directed to that invention, on a characterbased system, and that a person of skill in this field reading this history would so understand the explanation of the Fleming reference.173 Thus, the Federal Circuit concluded that the terms frame and information frame are directed to and limited to a character-based protocol. D. Microsoft v. Multi-Tech Comments in Child Application After Parent Issues Limits Protection Provided by Parent

Not only can statements made in one application be used to construe the meaning of common terminology in a related application, statements made in the later-filed application after issuance of the earlier-filed application can be used to construe the meaning of common terminology in the issued patent.174 The earlier filed 649 patent and the later filed 627 patent both originated from a common parent and share a common specification. Claim 1 of the 649 patent reads as follows: 1. A method for communication of voice and data information, comprising the steps of: placing headers on each of the compressed output digital voice packets; placing headers on each of the computer digital data packets; multiplexing the compressed outgoing digital voice data packets with outgoing computer digital data packets to produce an outgoing packet stream; transmitting the outgoing packet stream; receiving multiplexed incoming data which contains incoming computer digital data packets multiplexed with the compressed incoming digital voice data packets; and demultiplexing the incoming computer digital data packets and the compressed incoming digital voice data packets. Thus, outgoing computer data is packetized. Outgoing analog voice data is digitized and placed in packets. The data packets and the voice packets are multiplexed together and transmitted. Note

172 173 174

Id. Id., 53 U.S.P.Q. at 1165-66.

Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 69 U.S.P.Q.2d 1815 (Fed. Cir. 2004) (Opinion by Circuit Judge Lourie, joined by Circuit Judge Bryson, with Circuit Judge Rader dissenting with separate opinion).

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that the claim merely requires transmitting the outgoing packet stream. The claim is not limited to any particular medium on which the transmitting is performed. The district court interpreted transmitting to mean transmitting over a circuit switched network and not over a packet switched network. An example of a circuit switched network is the telephone network. An example of the packet switched network is the Internet. With this claim interpretation, the patent owner, Multi-Tech Systems, conceded no infringement. The Federal Circuit affirmed, despite the fact that the majority agreed that claim 1 does not recite that the transmitting must occur over a circuit switched network. However, the majority noted that the specification discloses only a telephone network to perform the transmitting. According to the majority, the specification repeatedly and consistently describes the local and remote systems of the claimed inventions as communicating directly over a telephone line. 175 The section of the specification entitled Summary of the Invention describes a communications system to enable communications through a standard telephone line.176 The majority also considered the prosecution of the related 627 patent. response to an obviousness rejection. characterized the invention as being: a communication system which operates over a standard telephone line. Such a telephone line is commonly referred to in the art as a plain old telephone service (POTS) line and establishes a point-topoint connection between the telephone equipment on each end of the line. Applicants invention transmits the packets across a POTS line to a remote site 177 The prior art in the rejection disclosed a local area network to perform data transmission. MultiTech argued that the data packets proceed directly from the communications system through the [telephone] line to a receiving communication system at the other end of the line.178 The Federal Circuit majority had no problem employing statements made during prosecution of the 627 patent to interpret claim 1 of the 649 patent. During prosecution of the 627 patent, after the 649 patent had issued, Multi-Tech filed an Amendment in Before addressing the obvious rejection, Multi-Tech

175 176 177 178

Id. at 1348. Id. Id. at 1349. Id. at 1344.

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In the past, we have held that the prosecution history of one patent is relevant to an understanding of the scope of a common term in a second patent stemming from the same parent application. We likewise believe that Multi-Techs statement made during prosecution of the 627 patent is relevant to an understanding of the common disclosure in the sibling 649 [patent].179 In fact, the Federal Circuit had no problem applying statements made in the later application after the 649 patent had issued. Furthermore, even though the 649 patent had already issued, we think that it is not unsound to apply the same interpretation to that patent. We take the patentee at its word and will not construe the scope of the 649 patents claims more broadly than the patentee itself clearly envisioned. Any statement of the patentee in the prosecution of a related application as to the scope of the invention would be relevant to claim construction, and the relevance of the statement made in this instance is enhanced by the fact that it was made in an official proceeding in which the patentee had every incentive to exercise care in characterizing the scope of its invention.180 Thus, the Federal Circuit majority employed comments made during prosecution of a related application after an earlier patent had issued to interpret common language in the issued patent. Judge Rader dissented, noting that the ordinary meaning of claim terminology should control unless there is a clear and unambiguous disclaimer in the intrinsic record. Judge Rader failed to find such a disclaimer. Judge Rader noted that when he connects to the Internet, a packetswitched network, at home using his modem, he does so over a telephone line. When Judge Rader sends an email to colleagues from home, he does so through a telephone line as well as across the Internet. Judge Rader objected to the notion that the intrinsic record limits transmitting to only a circuit switched network such as the telephone network, thus precluding coverage of a network having a circuit switched portion and a packet switched portion. This court today asserts that the language in the specification regarding over and through a telephone line somehow requires the claims to cover only those communication networks where nothing but a telephone line lies between the two end sites. To my eyes, that leap in logic is akin to Evel Knievel jumping the Snake River Gorge on a motorcycle. Like Mr. Knievel, this courts conclusion falls short. In the first place, this limitation does not
179 180

Id. at 1349. Id. at 1350.

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appear anywhere in the claims. In addition, nothing in this record indicates that a person of skill in this art would find that limitation in the specification. If I travel over the river and through the woods to Grandmothers house, this court would apparently conclude that I have traveled through nothing but rivers and woods. The terms over and through do not denote the sole medium of transmission or travel. If a person asks me to send them a file over the Internet, that request certainly would not preclude the use of a telephone line connected to a modem connected to the Internet. In sending the file, I would be sending data over my telephone line as well as over the Internet. The record contains no evidence to support the leap that over a telephone line must mean exclusively over a telephone line.181 Judge Rader would interpret the prosecution history as disclaiming only communications over a LAN-based system, such as in the prior art. Judge Rader also objected to the use of statements in the prosecution of a related application to interpret language in a patent where those statements were made after the patent had issued. To illustrate, Judge Rader asked readers to imagine patents A, B and C, which share a common specification, directed to a method of hanging a picture. Patent A claims an attaching step and a leveling step. Patent B claims an attaching step and a centering step. Patent C claims only the attaching step. The prior art contains a reference to attaching pictures using nails. Because patents A and B contain limitations beyond attaching, these patents issue without rejection. Patent C, however, is rejected in light of prior art. In response, the applicant limits the attaching step to using Velcro, not nails. Judge Rader finds it nonsensical that the attaching step in patents A and B should be construed as being limited to Velcro based on the later prosecution history in patent C. E. Liebel-Flarsheim v. Medrad - Ordinary Meaning Prevails, Claims Broadened During Prosecution After Patentee Discovers Defendants Product

In contrast to Microsoft, the Federal Circuit refused to read limitations from the intrinsic record into the claims in Liebel-Flarsheim Co. v. Medrad, Inc.182 The patents involved in the litigation were directed to powered fluid injectors which could be used to inject fluids into patients
181 182

Id. at 1355. 358 F.3d 898, 69 U.S.P.Q.2d 1801 (Fed. Cir. 2004).

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during medical procedures. Prior to the patents, the injectors required loading from the rear. Such injectors had disadvantages with regard to inefficiency and the risk of spillage and contamination. The patents involved in the litigation were directed to front loading powered injectors. A typical one of the claims involved in the litigation recited: A method of loading a tubular replacement syringe into a high pressure power injector for injecting fluids into an animal, the method comprising the steps of: providing a power injector having: a syringe receiving opening with a generally circular periphery therein adapted to receive a rearward end of a syringe having a generally tubular rim, a ram and a motor linked to the ram and operable to reciprocate the ram along a segment of a line projecting through the opening; and providing a hollow tubular syringe that includes: a cylindrical body having an access, a generally circular rim, a rearward end and a closed forward end with a fluid discharge orifice therein, and a plunger axially aligned in the body, the syringe body being structurally capable of withstanding, at least from the rim to the orifice, fluid at an operating pressure of at least 100 psi within the interior thereof Each of several embodiments in the patent disclose the inclusion of a pressure jacket around the injector. However, as can be seen above, the claims of the patents were absolutely silent with regard to a pressure jacket. Nevertheless, the district court limited syringe receiving opening to require inclusion of a pressure jacket. Since the defendant did not employ a pressure jacket, the district court granted a motion by the defendant for a summary judgment of non-infringement. The district court reasoned that since every embodiment of the patent shows the use of a pressure jacket, the invention necessarily requires a pressure jacket. The Federal Circuit reversed. The Court started its analysis with the claims, noting that the broadest claims were not limited to an injector having a pressure jacket. Also, the Court noted that opening has an ordinary meaning of aperture. The Court then analyzed the specification. Although all embodiments disclosed in the patent employed a pressure jacket around the opening, 2 - 81

nowhere in the patent specification was the pressure jacket described as being part of the invention. According to the Federal Circuit, description of a common feature in all embodiments disclosed in a patent does not require claims to be limited to that common feature. Medrad attempted to rely on the SciMed and Wang cases. Recall from discussions above that in the SciMed case, the claimed dual lumen were construed as requiring the lumen to be concentric. In Wang, the term frame was interpreted as being limited to a character based frame. The Court explained that in SciMed, the patent specification included an explicit disclaimer of anything other than concentric lumen. The Court distinguished Wang noting that the interpretation of frame is what would have been understood of ordinary skill in the art. The Federal Circuit distinguished the situation in the present case by noting there is no expressed disavowal of injectors without pressure jackets in the specification. The Federal Circuit also looked at the prosecution history, noting that the broadest claims of the patents were amended to eliminate reference to pressure jackets after the plaintiff learned of the defendants injectors. The Federal Circuit indicated that in view of the express elimination of the pressure jacket limitation in the claims, such limitation could not be read back into the claims. Furthermore, the Federal Circuit employed claim differentiation, noting that some of the dependent claims were limited to injectors with pressure jackets. As noted above, all claims as originally filed were limited to injectors with pressure jackets. It was only during prosecution that the broadest claims were broadened to eliminate the pressure jacket limitation. The defendant, Medrad, argued that the broadened claims were of questionable validity based on a lack of written description and enablement under Section 112 first paragraph, citing cases that will be discussed in great detail in Chapter 3. The Federal Circuit allowed that the claims may very well be invalid, but indicated that explicit claim language cannot be ignored. Thus, the Federal Circuit reversed the summary judgment of non-infringement, saving the issue of invalidity for a later day. The Microsoft and Liebel-Flarsheim cases were decided eight days apart. It is interesting to note that Judge Bryce was on the panel in Liebel-Flarsheim and was a member of the majority in Microsoft. In Liebel-Flarsheim, Judge Bryce refused to read limitations from the specification into the claims, but in Microsoft, Judge Bryce agreed that limitations from the intrinsic record should be read into the claims, despite strong, cogent arguments by Judge Rader as to why this was improper. 2 - 82

F.

Hakim v. Cannon Avent Group PLC Narrow Construction Based on Disclaimed Scope in Parent Application Despite Continuation Amendment

In Hakim v. Cannon Avent Group PLC (Hakim)183 the Federal Circuit narrowly construed terms, despite a patentees attempts to broaden claim scope by filing a continuation application. The patent-in-suit describes a spill-proof drinking cup. The invention includes a valve assembly that only allows fluids to pass through when a person applies negative pressure to the drinking spout, such as by suction. Figure 3 of the patent illustrates the valve assembly. Valve holder 31 houses two valves, 42 and 45. The valves each have an opening 70 in their elastomeric material that allows fluid and air to pass through. The valves are placed next to blocking elements, 52 and 56, to seal the flow of liquid when at rest.

At trial, the parties disputed whether the claims covered valve assemblies that contain an opening or those that contain a slit. The district court ruled for the defendant when it chose to

183

479 F.3d 1313, 81 U.S.P.Q.2d 1900 (Fed. Cir. 2007).

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limit the meaning of the claimed opening to cover only a slit, thereby finding no infringement.184 The Federal Circuit affirmed the district courts findings. How did this happen? In a parent application, the plaintiff presented claims wherein the valve was limited to having a slit. During prosecution of the parent application, the plaintiff distinguished his invention from the prior art in a response to an Office Action: By providing both the elastomeric member with a slit and a blocking element, a sealing mechanism is provided which reduces spillage beyond that of either mechanism alone. None of the references cited in the Office Action teach or suggest such a nospill mechanism having a slit sitting against a blocking element such as is recited in all of the pending claims.185 Upon receiving a Notice of Allowance, the plaintiff filed a continuation application with claims broadened to refer to an opening instead of a slit. The application was accompanied by an attorney letter stating that the plaintiff wanted to broaden his claims and change slit to opening.186 The examiner allowed the plaintiffs continuation claims without providing any comments. Claim 1 in the resulting patent reads as follows: 1. An apparatus for use in a no-spill drinking cup, said apparatus comprising: a valve holder, such valve holder comprising at least one valve and a blocking element, said valve comprising flexible material, said blocking element comprising an area of material which is impenetrable to the flow of liquid, said valve further comprising an opening through said flexible material, said valve having a resting position wherein said flexible material sits with said opening against said blocking element such that said valve is closed to the passage of liquid through said valve, said valve moving into an open position for the passage of liquid through said valve upon the application of negative air pressure to the top of said valve, said open position being a position wherein said flexible member comprising said opening lifts off of said blocking element (emphasis added). The Federal Circuit affirmed the district courts decision to hold the plaintiff to the more restrictive claim construction of the parent application which used the term slit despite the plaintiffs attempts to broaden the scope of those claims in the continuation application to use the
184 185 186

Id. at 1316, 81 U.S.P.Q.2d at 1902. Id. at 1315-16, 81 U.S.P.Q.2d at 1902 (quoting 931 Application Response, Oct. 2, 2000 (emphases added)). Id. at 1316, 81 U.S.P.Q.2d at 1903.

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term opening.187 The plaintiff argued that narrow construction was not appropriate since the examiner allowed the continuation application after the plaintiff alerted him that the new claims were broader than those that were previously allowed. The Federal Circuit remained unconvinced and explained that since the examiner allowed the continuation claims without additional prosecution, the continuation patent is limited to the prosecution arguments of the parent application.188 Judge Newman elaborated, Although a disclaimer made during prosecution can be rescinded, permitting recapture of the disclaimed scope, the prosecution history must be sufficiently clear to inform the examiner that the previous disclaimer, and the prior art that it was made to avoid, may need to be re-visited.189 Based on this argument, the Federal Circuit affirmed the district court in narrowly construing the term opening to mean slit instead of using its ordinary meaning, thereby finding non-infringement. Hakim demonstrates how prosecution history and a parent application can be leveraged to narrow claim construction, despite a patentees good-faith efforts to explicitly broaden the scope of a claim in a continuation application and notify the examiner. G. Computer Docking Station Corp. v. Dell Inc. - Narrow Construction as a Result of Prosecution History

Both the district court and the Federal Circuit in Computer Docking Station Corp. v. Dell Inc. (Computer Docking) relied on the prosecution history to find that the patentee disavowed an interpretation of portable computer that includes a computer with a built-in display or keyboard; the court effectively narrowing the claims to eliminate coverage of conventional laptop computers with displays and keyboards built in.190 The patent in Computer Docking, U.S. Patent No. 5,187,645 (the 645 patent), entitled Portable Computer with Docking Connector for Peripheral Devices is directed to a portable microprocessor system with sufficient processing power, memory, and network compatibility for personal and business applications while still being small enough and light enough to carry in an attach case, as shown in Figure 2, below. This is accomplished through the use of a docking connector or individual connectors which enable communications between the microprocessor and peripheral devices.
187 188 189 190

Id. at 1318, 81 U.S.P.Q.2d at 1904. Id. at 1317, 81 U.S.P.Q.2d at 1903-04. Id. at 1318, 81 U.S.P.Q.2d at 1904. 519 F.3d 1366, 86 U.S.P.Q.2d 1129 (Fed. Cir. 2008).

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During prosecution, the examiner rejected several claims as obvious in view of U.S. Patent No. 5,030,128 to Herron et al. (the 128 patent), which disclosed a laptop computer and a docking module that facilitates operation on a desktop and which connects each peripheral to the docking module. Applicants replied: Rather than requiring a portable display and keyboard, the present invention concentrates on portability of an exceptionally large memory capacity in hard disk drive Thus, lap-top machines make concessions in memory, display and other areas in favor of portability. The Applicants system, on the other hand, is a portable full service microprocessing system which concedes portability of peripherals.191 Despite the description and drawings that pointed out an embodiment with a display and keyboard portably coupled to the system, the court weighed the prosecution history more heavily, further reasoning that the interface connectors used to couple the system
191

Id. at 1376, 86 U.S.P.Q.2d at 1129.

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would not be necessary for a display and keyboard built-in to the system. Thus, the court weighed the prosecution history more heavily than the specification to find a narrowed construction of the term portable computer that does not cover conventional laptop computers with built in display and keyboard.

V.

Use of Extrinsic Evidence to Interpret Claims Fonar states that claims should be construed as one skilled in the art would interpret them.

In Markman, the court explained that extrinsic evidence such as expert and inventor testimony, dictionaries and learned treatises may be helpful to explain scientific principles, the meaning of technical terms, and terms of art that appear in the patent and prosecution history. Extrinsic evidence may demonstrate the state of the prior art at the time of the invention. It is useful to show what was then old, to distinguish what was new, and to aid the court in the construction of the patent.192 However, the court also warned that extrinsic evidence is to be used for the courts understanding of the patent, not for the purpose of varying or contradicting the terms of the claims.193 Likewise as stated in Southwall: evidence extrinsic to the patent and prosecution history, such as expert testimony, cannot be relied upon to change the meaning of the claims when that meaning is made clear by these documents.194 With technical complexities, it may be necessary to employ expert testimony to give meaning to claim language. The patent inventor could serve as such an expert; however, statements by an inventor more often work as admissions against his favored interpretation. Jonsson v. Stanley Works195 is illustrative. The patentee claimed an automatic door opener which utilized a plurality of elements, each for emitting a diverging beam of diffuse radiation in response to supplied electrical signals, and a plurality of radiation detecting elements for receiving radiation reflected from an object.196 In contrast, the defendants opener emitted only a
192 193 194 195 196

Markman, 52 F.3d at 980, 34 U.S.P.Q.2d at 1330 (citing Brown v. Piper, 91 U.S. 37, 41 (1875)). Id. at 981, 34 U.S.P.Q.2d at 1331. Southwall, 54 F.3d at 1578, 34 U.S.P.Q.2d at 1678. 903 F.2d 812, 14 U.S.P.Q.2d 1863 (Fed. Cir. 1990). Id. at 815, 14 U.S.P.Q. at 1866.

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single beam of radiation.197 A finding of infringement turned on the meaning of diffuse. If a diffuse beam could not result from a single beam, then the defendants opener did not infringe. Unfortunately for the plaintiff, in deposition testimony, the inventor defined diffuse light as light rays propagating in different directions, ... so the light is not emanating from one single point.198 Consequently, the court found no infringement. A. Vitronics v. Conceptronic If Intrinsic Evidence Is Sufficient to Construe Claims, Extrinsic Evidence Is Entitled to No Weight

Vitronics Corp. v. Conceptronic Inc. (Vitronics)199 is instructive in the role of extrinsic evidence in claim interpretation. The patent-in-suit involved a method of soldering electronic components on a printed circuit board. The basic apparatus disclosed in the patent for practicing the invention was illustrated in Figure 2, reproduced below:

In the process, a solder paste is applied to the circuit board and the electronic devices to be soldered are placed on the paste. The board is then moved through an oven which has a series of zones at different temperatures. The last zone is the hottest. In that zone, the solder must reach a temperature high enough to cause the solder to melt and reflow while the electronic devices do not become so hot as to be damaged.

197 198 199

Id. Id. at 816, 14 U.S.P.Q.2d at 1867. 90 F.3d 1576, 39 U.S.P.Q.2d 1573 (Fed. Cir. 1996).

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According to the claim in question, in the last zone, the solder is heated to a solder reflow temperature for a period of time sufficient to cause said solder to reflow and solder said devices to said board while maintaining the temperature of said devices below said solder reflow temperature. The issue in the suit was the meaning of solder reflow temperature. The claim could be referring to the peak reflow temperature at which the solder is completely melted and moves freely. With the solder in question, this temperature was approximately 210C. Alternatively, solder reflow temperature could mean the liquidus temperature at which the solder just begins to melt. The liquidus temperature of the solder was 183C. The district court did not construe the disputed claim language until the close of testimony. At that time, the district court ruled that solder reflow temperature referred to the liquidus temperature. Under this interpretation, the patent owner conceded that there was no infringement and appealed. For construing the meaning of solder reflow temperature, the patent owner relied on the patent specification. As detailed in the patent specification, the target temperature for both the solder and the printed circuit boards was well above the liquidus temperature of the solder: A preferred embodiment of the invention for reflow soldering of surface mounted devices to printed circuit boards will now be described. The printed circuit boards are typically made of epoxyglass, such as fire retardant 4(FR-4), or polyimide-glass. These boards typically degrade above temperatures of 225 C. The solder may be, for example, 60/40 (Sn/Pb), 63/37 (Sn/Pb), or 62/36/2 (Sn/Pb/Ag), all of which have a liquidus temperature (i.e., begin to melt) of about 190 C. and a peak reflow temperature of about 210218 C. Thus, to effect reflow soldering without damaging the board, the solder must be allowed to reach a temperature of at least 210 C., but the board cannot reach a temperature of 225 C. (col. 6, line 59 - col. 7, line 4) (emphasis added). * * * The board is then sent into a fifth zone 5 to bring the temperature of the board up to a temperature of approximately 210 C., the devices up to approximately 195 C., and the solder up to approximately 210 C. for a period of time of from about 10 to about 20 seconds to cause the solder to flow. Because the devices are cooler than the board, the solder flows up the devices. The emitting surfaces of top and bottom panel emitters 18 and 19 are at approximately 290 C. which corresponds to a peak infrared wavelength of approximately 3.9 in the fifth zone. The board spends approximately 60 seconds 2 - 89

in the fifth zone, but only about 10 to 20 seconds at 210 C. Thus, the board is at the solder reflow temperature for only a short period of time and the devices never reach the solder reflow temperature. (col. 8, lines 1-15) (emphasis added). These teachings regarding the temperatures encompassed by the term solder reflow temperature are further reinforced by the chart provided as Figure 6 in the patent-in-suit which shows that the peak temperatures utilized in achieving optimum solder flow profiles for two solder compositions are well above the liquidus temperature.

The preferred embodiment described in the patent thus indicated that the solder must be allowed to reach a temperature of at least 210C. When this occurs, the patent specification indicated that the electronic devices on the circuit board achieve a temperature of 195C. Thus, if solder reflow temperature means the liquidus temperature (183C), then the claim does not read on the preferred embodiment since the electronic components are clearly heated to a temperature above the liquidus temperature. The defendant relied on its expert who testified that solder reflow temperature refers to the liquidus temperature. Similarly, the defendant relied on the testimony of the patent owners chief engineer who testified that the reflow temperature of solder was 183C. However, he also testified that he had used solder reflow temperature in the testimony mentioned above to refer to the liquidus temperature, and he indicated that he was not testifying regarding the meaning of the term in the patent. temperature. 2 - 90 He also testified that the patent uses the term to refer to peak reflow

The defendant also found a paper written by former employees of the patent owner which uses the phrase solder reflow temperature to mean the temperature at which the solder enters a molten state, commonly 180C. However, the paper later describes the solder reflow process as taking the temperature of the solder above liquidus by approximately 15 to 25C. Finally, in a brief opposing a motion for summary judgment, the patent owner indicated that solders have a liquidus or reflow temperature on the order of 183C. However, this statement is in a background section of the memorandum. Later in the same memorandum, the patent owner discussed the issue of infringement, stating that the electronic devices must be maintained below the temperatures of the leads at which the solder is reflowing." Taking all of this evidence collectively, the district court determined that the phrase solder reflow temperature should mean 183C. The Federal Circuit reversed. In its analysis, the court reaffirmed that intrinsic evidence should first be considered. First, the words of the claims themselves should be considered. Second, the specification should be reviewed to determine whether any terms are defined therein. Third, the prosecution history of the patent should be consulted. According to the court: In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term. In such circumstances, it is improper to rely on extrinsic evidence...In those cases where the public record unambiguously describes the scope of the patented invention, reliance on any extrinsic evidence is improper. The claims, specification, and file history, rather than extrinsic evidence, constitute the public record of the patentees claim, a record on which the public is entitled to rely. In other words, competitors are entitled to review the public record, apply the established rules of claim construction, ascertain the scope of the patentees claimed invention, and, thus, design around the claimed invention.200 Although the court acknowledges that extrinsic evidence has a role in infringement litigation, the court severely limits that role: No doubt there will be instances in which intrinsic evidence is insufficient to enable the court to determine the meaning of the asserted claims, and in those instances, extrinsic evidence, such as that relied on by the district court, may also properly be relied on to understand the technology and to construe the claims.... However, as
200

Id. at 1583, 39 U.S.P.Q.2d at 1577.

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we have recently re-emphasized, extrinsic evidence in general, and expert testimony in particular, may be used only to help the court come to the proper understanding of the claims; it may not be used to vary or contradict the claim language.... Indeed, where the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight.201 Had the district court relied upon the expert testimony and other extrinsic evidence solely to help it understand the underlying technology, we could not say the district court was in error. But testimony on the technology is far different from other expert testimony, whether it be of an attorney, a technical expert, or the inventor, on the proper construction of a disputed claim term, relied on by the district court in this case. The latter kind of testimony may only be relied upon if the patent documents, taken as a whole, are insufficient to enable the court to construe disputed claim terms. Such instances will rarely, if ever, occur.202 When extrinsic evidence is to be considered, the Federal Circuit expressed a preference for prior art documents and dictionaries rather than expert testimony because such prior art is accessible to the public in advance of litigation. In this case, the Federal Circuit concluded that the district court must have relied at least in part on the extrinsic evidence to reach its interpretation of the claim. Therefore, the decision of the district court was reversed and the case was remanded. B. Fromson v. Anitec Printing Plates Extrinsic Evidence Used to Narrow Scope of Protection to Less Than Ordinary Meaning

Although the Vitronics court could not imagine a situation in which extrinsic evidence might have to be relied upon to construe a claim, one panel of the Federal Circuit found such a situation in Fromson v. Anitec Printing Plates Inc.,203 where extrinsic evidence was employed to restrict the scope of protection to the described embodiment. The patent-in-suit related to a process for continuously electrolytically anodizing aluminum. In the preferred embodiment in the patent-in-suit, a continuous length of aluminum passed through an anodizing cell before passing through a contact cell and subsequent cells. The patent provided two embodiments of the invention as illustrated in Figure 1 (basic) and Figure 2 (preferred) reproduced below:
201 202 203

Id. at 1584, 39 U.S.P.Q.2d at 1578. Id. at 1585, 39 U.S.P.Q.2d at 1579. 132 F.3d 1437, 45 U.S.P.Q.2d 1269 (Fed. Cir. 1997).

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The system accused of infringement passed a continuous length of aluminum through a phosphoric anodizing cell and a rinse cell before passing through a contact cell and a sulfuric anodizing cell. The accused system is illustrated below:

Where A is the Phosphoric Anodizing Cell, B is a Rinse Cell, C is the Contact Cell, and D is the Sulfur Anodizing Cell. The claims in question required that the aluminum have an anodized oxide coating before entering the contact cell. The broadest claim of the patent, claim 2, read as follows (with the disputed limitation in italics):

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2. In a process for continuously electrolytically anodizing aluminum, the improvement which comprises introducing anodizing direct current from two or more sources in a cathodic contact cell having therein anodes connected to said sources of direct current, the aluminum having an anodized oxide coating formed thereon before entering said cell through the action of the direct current introduced in the contact cell itself. The district court construed the claim language in such a way that the oxide-forming action in the defendants phosphoric anodizing tank was not included in the meaning of an anodized oxide coating as used in the claims. The defendant argued that a phosphoric anodizing tank etched and cleaned the aluminum. Although a thin layer of barrier-form aluminum oxide formed, such a process was not anodization within the meaning of the patent. The district court held that the anodizing before the aluminum entered the contact cell required not only a porous oxide coating that is electrolytically produced on the aluminum, but a thicker layer of porous oxide as distinguished from the thin (< 5nm), non-porous oxide layer formed by the defendants process. In reaching this conclusion, the district court relied primarily on the patent specification which describes the first anodization step as producing porous oxide, a prior art reference discussing formation of barrier oxide in a manner similar to that used in the defendants system, and on other extrinsic evidence derived from expert testimony, demonstrative evidence and scientific tests. In affirming the district courts claim construction, the Federal Circuit acknowledged that the patent specification is the first resource to consider. The court noted that the patent specification does not define the thickness of the oxide that is necessary before the aluminum enters the contact cell. However, the specification teaches that the purpose of the preliminary oxide coating is to protect the aluminum from burning and current surging in the contact cell. The specification shows this coating to be porous oxide. The district court interpreted the specification, with the help of extrinsic evidence, to indicate that the preliminary anodization must create an oxide layer thicker than naturally occurring oxide. This meant that the claim could not read on the defendants oxide formed in its phosphoric cell since the oxide layer was no thicker than naturally occurring oxide. The district court relied on expert testimony to understand that not all electrolytically formed oxide coatings will protect the aluminum as it moves into the contact cell. The term anodized in the claim must refer to an oxide coating which provides sufficient protection. The 2 - 94

Federal Circuit approved of the use of extrinsic evidence to construe the term anodized in the claim. According to the Federal Circuit: Extrinsic evidence may be particularly helpful to the court when a specific technical aspect that is potentially of dispositive weight was not discussed in the specification or explored during the patent prosecution. This case illustrates the use of extrinsic evidence in order to determine the meaning and scope of a technical term as the term is used in the claims .... The district courts findings of scientific/technological fact were material to the issue of construction of the term anodizing.204 Thus, without citing Vitronics, the Federal Circuit approved of the use of extrinsic evidence in order to construe claim terminology to be limited to the disclosed embodiment so as to avoid infringement. C. Pitney Bowes v. Hewlett Packard Extrinsic Evidence Can Always Be Considered But Can Never Override Intrinsic Evidence

Pitney Bowes, Inc. v. Hewlett-Packard Co. (Pitney Bowes)205 has clarified the rules concerning the appropriate use of extrinsic evidence. The patent-in-suit involved a laser printer. Laser printers operate by directing a laser light onto a photoreceptor. The major components of an optical scanning device are illustrated in Figure 1 of the patent, reproduced below. The light beam (12) from laser (10) is directed through a filter (14) and a modulator (16), subjected to some additional conditioning and then reflected from the faces (26) of mirror (28) to scan the light across the face of the photoreceptor (32). Scanning the varying intensity laser light across the face of the charged photoreceptor produces discharged spots of varying sizes thereby forming a latent image on the photoreceptor corresponding to where the laser light has been directed. By selectively turning the laser light on and off, the latent image corresponds to the document to be printed. The latent image is dusted with toner and the toner is then transferred to a sheet of copy paper and fused thereto to form the printed page. Thus, as the laser light is turned on and off, a series of spots of light strike the photoreceptor. Corresponding spots are formed on the photoreceptor where the charge has been dissipated. The problem with this approach is that the corners and
204 205

Id. at 1444, 45 U.S.P.Q.2d at 1274. 182 F.3d 1298, 51 U.S.P.Q.2d 1161 (Fed. Cir. 1999).

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edges of certain characters formed by this process can have an uneven appearance, a problem known in the printing industry as "jaggies."

The patent solves this problem by varying the size of the spots formed on the photoreceptor. In the most pertinent embodiment described in the patent specification, this is achieved by varying the intensity of the beam of light from one spot to the next. This causes the size of the spots of dissipated charge to vary in a manner corresponding to the variations in the intensity of the incident light. Claim 1 from the patent-in-suit is set forth below and is typical of the claims in the patent: 1. A method of producing on a photoreceptor an image of generated shapes made up of spots, comprising: directing a plurality of beams of light towards a photoreceptor, each beam of light generating a spot on the photoreceptor and controlling a parameter of the light beams to produce spots of different sizes whereby the appearance of smoothed edges are given to the generated shapes.206 Defendant, Hewlett-Packard, filed a motion for summary judgment of non-infringement arguing that "spot" in the claim referred to the spot of laser light striking the photoreceptor. Hewlett-Packard then argued that the spots produced by the laser in its laser printer were all of the same size. Instead of varying the intensity of the light beam, Hewlett-Packard's laser printers
206

Id. at 1302, 51 U.S.P.Q.2d at 1163 (emphasis added).

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varied the length of time that the beam of light remains in contact with the surface of the photoreceptor. In opposing the motion, Pitney Bowes argued that the term "spot" referred to the area on the photoreceptor where charges are dissipated in response to the laser beam. In both Pitney Bowes' and Hewlett-Packard's laser printers, the size of the area of dissipated charges could vary to avoid the appearance of roughened edges. The district court granted Hewlett-Packard's motion for summary judgment of noninfringement. In doing so, the district court first looked to the intrinsic evidence. First, the district court considered the plain language of the claims ambiguous with regard to which definition of "spot" should be used. Second, the court noted that Pitney Bowes conceded that of the forty-four occurrences of the term "spot" in the specification, the first forty-two occurrences referred to the spot of the light beam, consistent with Hewlett-Packard's argument. Only the final two occurrences might have been consistent with Pitney Bowes' interpretation of the claim, but the court concluded that even those last two uses of the term "spot" were of questionable meaning. The district court then turned to the prosecution history. During prosecution, the examiner required Pitney Bowes to amend the title of the patent application from "Apparatus and Method for Generating Images by Producing Light of Different Sizes" to "Apparatus and Method for Generating Images by Producing Light Spots of Different Sizes." Perhaps more than anything else, the district court relied upon this change as strong evidence that the examiner considered "spot" to mean the spot of laser light and not the spot on the photoreceptor having dissipated charges. The district court also considered extrinsic evidence. Both Pitney Bowes and HewlettPackard filed affidavits of expert witnesses. Hewlett-Packard's expert explained that "spot" was typically used in the art to refer to the light spot, whereas Pitney Bowes expert explained that the term "spot" typically referred in the art to the spot on the photoreceptor with dissipated charges. The district court granted Hewlett-Packard's motion for summary judgment. As noted above, the district court considered the overwhelming number of references to the light spot in the specification and the change of title as being significant indicators that "spot" in the claims referred to the light spot. In its decision, the district court judge tracked some of the language from the affidavit of Hewlett-Packard's expert. The Federal Circuit reversed the grant of summary judgment of non-infringement and remanded the case for further proceedings. The Federal Circuit based its determination on intrinsic evidence. The court started with the patent claim itself. The preamble indicates that an image of 2 - 97

generated shapes is made up of the "spots." The court noted that the light spots do not form a generated shape. The only generated shape is formed by the collection of areas on the photoreceptor where charges have been dissipated. Furthermore, the body of the claim recites "each beam of light generating a spot." If the "spot" were the light beam, it would be strange to say that each beam of light generates a light spot. The language employed is more consistent with "spot" referring to the spot on the photoreceptor. Finally, the claim recites that spots are produced "of different sizes whereby the appearance of smooth edges are given to the generated shapes." Again, the Federal Circuit noted that the generated shapes, and therefore the "spots," must be referring to discharged areas on the photoreceptor. Next the Federal Circuit considered the patent specification. The Federal Circuit acknowledged that forty-two of the forty-four instances of the use of the term "spot" did relate to the light spot and not the spot on the photoreceptor. However, the Federal Circuit looked for the portion of the specification that related to the claimed invention. Pitney Bowes had used the identical disclosure for this patent and two other patents. The first forty-two instances of the term spot corresponded to portions of the specification relating to the subject matter claimed in the two other patents. The Federal Circuit determined that the last two instances of the term "spot" that related to the spot on the photoreceptor were from the portion of the specification that corresponded to the claimed invention of the patent-in-suit. Finally, the Federal Circuit turned to the prosecution history. The Federal Circuit dismissed the amendment to the patent title as being irrelevant with regard to the scope of the claims. The Federal Circuit noted that the purpose of the title is not to demarcate the precise boundaries of the claimed invention, but instead was a useful tool for classification purposes. In its appeal brief, Pitney Bowes argued that reliance by the district court upon extrinsic evidence in the form of the affidavit of Hewlett-Packard's expert was improper. However, since the district court based its decision primarily on intrinsic evidence, the Federal Circuit disagreed with Pitney Bowes. In doing so, the Federal Circuit interpreted Vitronics: Despite the district court's statements to the contrary, Vitronics does not prohibit courts from examining extrinsic evidence, even when the patent document is itself clear Moreover, Vitronics does not set forth any rules regarding the admissibility of expert testimony into evidence. Certainly, there are no prohibitions in Vitronics on courts hearing evidence from experts. Rather, Vitronics merely warned courts not to rely on extrinsic evidence in claim construction 2 - 98

to contradict the meaning of claims discernible from thoughtful examination of the claims, the written description, and the prosecution history - the intrinsic evidence.207 The Federal Circuit explained that although intrinsic evidence must be relied upon to interpret claims, the consideration of extrinsic evidence may be helpful in understanding the technology: Thus, under Vitronics, it is entirely appropriate, perhaps even preferable, for a court to consult trustworthy extrinsic evidence to ensure that the claim construction it is tending to from the patent file is not inconsistent with clearly expressed, plainly apposite, and widely held understandings in the pertinent technical field. This is especially the case with respect to technical terms, as opposed to non-technical terms in general usage or terms of art in the claimdrafting art, such as "comprising." Indeed, a patent is both a technical and a legal document. While a judge is well-equipped to interpret the legal aspects of the document, he or she must also interpret the technical aspects of the document, and indeed its overall meaning, from the vantage point of one skilled in the art Although the patent file may often be sufficient to permit the judge to interpret the technical aspects of the patent properly, consultation of extrinsic evidence is particularly appropriate to ensure that his or her understanding of the technical aspects of the patent is not entirely at variance with the understanding of one skilled in the art.208 Thus, the Federal Circuit in Pitney Bowes not only permitted but indeed recommended consideration of extrinsic evidence, not to interpret claims, but instead to understand the pertinent technical field. D. Global Maintech v. I/O Concepts Reaffirming the Proper Use of Extrinsic Evidence in Claim Construction in the PostPhillips Era

The Federal Circuit reaffirmed this principle in Global Maintech Corp. v. I/O Concepts, Inc., upholding the district courts consideration of expert testimony within the context of intrinsic evidence to support its conclusions.209 Global owned several patents that described a process of monitoring and controlling heterogeneous computer systems and accused I/O Concepts of
207 208 209

Id. at 1308, 51 U.S.P.Q.2d at 1167-68. Id. at 1309, 51 U.S.P.Q.2d at 1168.

Global Maintech Corp. v. I/O Concepts, Inc., No. 05-1340, 2006 WL 1153574, at *11 (Fed. Cir. May 2, 2006) (non-precedential).

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infringing on those patents. The district court granted summary judgment of non-infringement based on its claim construction of heterogeneous computer systems. Global had argued for a broader construction of the terms to mean computer systems having dissimilar processors and/or operating systems,210 whereas the district court interpreted the claim more narrowly as systems in which at least two host computers use a different operating system.211 On appeal, Global contended that the district court erred in relying on expert testimony, a form of extrinsic evidence, to construe the term heterogeneous computer systems. The Federal Circuit ruled that the district court did not solely rely on expert testimony to construe the claim, but examined it within the context of the intrinsic evidence, which is a permitted practice. The court ruled: In Phillips, we reaffirmed that extrinsic evidence may be useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless it is considered in the context of the intrinsic evidence. 415 F.3d at 1319. Here, the district court considered the context of the intrinsic evidence and properly relied on the extrinsic evidence merely to support the conclusion reached on claim construction from the claims, the written description, and the prosecution history. We discern no error in the district courts analysis.212 Thus, Global Maintech demonstrates the Federal Circuits commitment to its decision in Pitney Bowes in the post-Phillips era. More specifically, it affirms the principle that while courts cannot rely upon extrinsic evidence to contradict intrinsic evidence in claim construction, extrinsic evidence may be used to support the courts claim constructions drawn from the intrinsic evidence. E. Helmsderfer v. Bobrick Washroom Equipment, Inc. Extrinsic Evidence Can Exclude Disclosed Embodiments The Federal Circuit used dictionary definitions to interpret a claim term left undefined in the patent in Helmsderfer v. Bobrick Washroom Equipment, Inc. (Helmsderfer).213 Helmsderfers patent dealt with vandalism-resistant baby diaper changing stations for use in public restrooms. The disputed claim language read in part as follows:
210 211 212 213

Id. at *6. Id. at *8. Id. at *11. Helmsderfer, 527 F.3d 1379, 87 U.S.P.Q.2d 1216 (Fed. Cir. 2008).

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the support platform being movable between a closed position up against a wall wherein the platform top surface is partially hidden from view and the bottom surface is exposed for view and an open position hinged away from a wall wherein the support platform is disposed generally perpendicular to a wall and the top surface is exposed for receiving a baby;214 The word partially was not defined in the specification, and the phrase partially hidden from view did not appear anywhere in the text of the patent except within the claim.215 The district court construed the phrase to exclude embodiments wherein the platform top surface was totally hidden from view. Helmsderfer appealed, and the Federal Circuit affirmed the district courts decision.216 Helmsderfers first argument on appeal was that the plain meaning of partially included totally. They claimed that their use of generally hidden from view in the specification supported their proposed claim construction of at least partially hidden from view.217 However, Helmsderfer used generally and at least elsewhere in the claims. Because different claim terms are presumed to have different meanings, and because Helmsderfer did not supply evidence to rebut this presumption, the district court refused to adopt this claim construction, and the Federal Circuit agreed.218 The Federal Circuit decided that the lack of definition and the presumption of different meanings made the intrinsic evidence insufficient to provide the meaning of partially. Thus, they found that there was no error in the district courts reliance on dictionary definitions for guidance, reasoning that [w]hen the intrinsic evidence is silent as to the plain meaning of a term, it is entirely appropriate for the district court to look to dictionaries or other extrinsic sources for

214 215 216 217 218

Id. at 1381. Id. Id. at 1384. Id. at 1381. Id.

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context to aid in arriving at the plain meaning of a claim term.219 The dictionary definitions cited by the district court defined partially as to some extent, [t]o a degree; not totally, and [i]n partial way or degree, as opposed to totally; to some extent; in part; incompletely, restrictedly; partly.220 meaning. By construing partially as it did, the district court excluded every embodiment of the invention illustrated in the patent, including the preferred embodiment. Helmsderfer argued that the claim construction must therefore be erroneous. The Federal Circuit acknowledged this These definitions directly contradicted Helmsderfers suggested plain

discrepancy, noting that claim terms should not ordinarily be interpreted to exclude preferred or disclosed embodiments.221 However, they disagreed with Helmsderfers argument that the

exclusion necessarily invalidated the district courts interpretation. The Federal Circuit affirmed the decision of the district court, but attempted to soften the blow by pointing out that other claims in the patent did not claim a platform top surface that was partially hidden from view, so these other claims not at suit read on the preferred embodiments.222 The court in Helmsderfer introduced extrinsic evidence to interpret a claim even though the interpretation was inconsistent with disclosed embodiments of the invention. In doing so, the court seemed to retreat from the long standing principle of claim construction that extrinsic evidence cannot contradict intrinsic evidence, at least in this case. Therefore, Helmsderfer emphasizes the importance of clearly defining ambiguous terms to minimize the possibility of extrinsic evidence having an unexpected impact on a claim.

219 220 221 222

Id. at 1382. Id. at 1382-3. Id. at 1383. Id.

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VI.

LP-CD Techniques to Avert Unduly Narrow Claim Construction The importance of intrinsic evidence and the unimportance of extrinsic evidence in claim

construction provide powerful tools for controlling the literal meaning of your claims. Once your patents issue, the likelihood of an accused infringer succeeding to assert a claim construction favorable to his or her cause based upon an expert witness or prior art is remote. Instead, claim construction will be controlled by what you have, and have not, written in the patent specification, abstract of the disclosure, and prosecution history. Indeed, in view of the numerous examples provided in the Federal Circuit cases discussed above, your claims might be construed to be limited to the embodiment(s) disclosed in your specification drawings, and abstract. To avert the disastrous consequences of such an unduly restrictive claim interpretation i.e., no infringement the following LP-CD techniques are strongly recommended. A. Describe Multiple Embodiments, Multiple Alternatives for Each Element, and Multiple Features (e.g., Shapes and Locations) for Each Element in the Specification

The recent Federal Circuit case law discussed above makes it clear that disclosure of only one embodiment in a specification invites unduly narrow claim construction and judgment of noninfringement. Instead, it is necessary to contemplate the full scope of the invention, draft claims that embrace the full scope of the invention, and support those claims with a specification describing multiple embodiments and multiple alternatives to demonstrate that the inventor was in possession of the full scope of the claimed invention. Frequently, inventors are presented with a technical problem and asked to find a solution. All too often, the "invention" becomes the embodiment that is developed as the solution. After identifying one solution, the inventor typically considers his or her work completed, and moves on to the next problem. A significant component of patent practitioners responsibilities is to provide education to their clients and inventors. To do a thorough job, the inventors should be encouraged to develop alternative solutions to the problem, other applications for the solutions, and alternative components with which to implement the solutions. The key is to be able to demonstrate in the specification that the inventor contemplated the full scope of the invention encompassed by the claims. Otherwise, your client might find itself with coverage only of the embodiment described in the specification. The recent Federal Circuit decisions teach us that the breadth of the

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specification plays an extremely important role in determining the scope of protection that a patent provides. Consider how the result in the Multiform case might have changed if Multiform had provided at least one embodiment of its invention in which the dissolvable material was used to form seams in an envelope that was otherwise constructed from a non-degrading material. Such an alternative construction would have more closely resembled the "bursting" operation of the Medzam packet. Some "brain-storming" of alternative embodiments with the inventors while the specification is being prepared can be time and money well spent toward securing the broadest, most valuable protection possible for your clients. In order to contemplate the full scope of the invention as you prepare the specification, one school of thought suggests that you should begin preparation of a patent application by writing the claims. After the claims have been written, the patent specification can be written in a manner that provides definitions for the terms used in the claims. The definitions can be crafted to be as broad as the patent draftsman's imagination allows, while distinguishing if necessary from the prior art. After a draft of a patent application has been completed, the specification should be reviewed to see whether the key terminology in the claims has been provided with the meaning intended. Alternative embodiments can be added to support the full scope of broad claims. According to another school of thought, it is often difficult to master a complicated invention and understand its full scope without writing the specification first. Those of this school should start a patent application by writing the specification with a full and rich panoply of embodiments, and variety of elements and limitations. Then the claims may be addressed that can properly comprehend all. Those ascribing to each school of thought need to adopt an iterative approach in which the claims are repeatedly checked to be certain they capture the full scope of the invention, and the specification is repeatedly checked to be certain it describes multiple embodiments or alternatives to demonstrate that the inventor contemplated the full scope of the invention, and to properly and broadly define claim terminology. From personal experience, it is far easier to keep in mind the definitional consequences when preparing patent specifications as compared to responding to Official Actions from the PTO. It is easy to become caught up in the challenge of overcoming rejections and to overlook the consequences of our zeal once the patent issues. Responses to the PTO should be carefully crafted 2 - 104

so that unintended words that may later be viewed as definitions do not slip into the Response. In reviewing a draft response, it is well worth the time to reread the Response solely for the purpose of determining how the Response could be employed by an opponent to construe terminology in the claims. Thus, as you draft and prosecute patent applications, you are then in control of the meanings that will be attributed to terms in your claims. If your claims are later construed in a manner unfavorable to your clients, your earlier control was probably not sufficiently masterful. B. Conduct the Most Exhaustive Pre-Filing Prior Art Investigation That Your Clients Resources Permit

If the practitioner is aware of prior art that is likely to be as close as the examiner will find, the broadest claims can be drafted free of that prior art in subcombination and generic combination form, thereby maximizing the likelihood of literal infringement. Moreover, an exhaustive search may provide a rich range of equivalent, interchangeable, invention-expanding elements and features of all types which may be disclosed in the specification to support broad generic and subcombination claims. C. File Numerous Claims of Widely Varying Scope

Filing the broadest possible generic and subcombination claims free of the prior art known during prosecution maximizes the likelihood of being able to establish literal infringement. But it is also important to file claims of narrow and intermediate scope, for two reasons. First, if one or more of the broad claims are properly rejected over prior art that the prefiling search failed to discover, or which are held invalid in litigation, it is important to have narrower valid claims that will be literally infringed. If not, then resort would have to be made to the sick, weak, atrophied doctrine of equivalents. Drafting many claims wherein each varies in scope by only a small amount from the next adjacent claim increases significantly the probability of infringement that is literal rather than by equivalence. Second, narrow claims may give rise to application of the doctrine of claim differentiation, to thereby deter the court from reading limitations from the preferred embodiments into the claims. The doctrine of claim differentiation, described by the first Chief Judge of the Federal Circuit as being a "fixed ... long and well established" rule "enjoy[ing] an immutable and universally applicable status comparatively rare among rules of law," D.M.I., Inc. v. Deere & Co., 755 F.2d

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1570, 1574, 225 U.S.P.Q. 236 (Fed. Cir. 1985), prohibits reading a limitation into a broad claim when that limitation is recited in a narrower claim. Accordingly, the presence in a patent of a claim reciting a particular limitation not found in a broader claim should (and usually does) preclude the court from reading that particular limitation into the broader claim. If, for example, the patent in the SciMed case had included a dependent claim reciting that the "separate" lumens recited in the independent claim were coaxial, the doctrine of claim differentiation would have precluded the court from reading the coaxial limitation into the broader independent claim. As a result, there would have been a finding of literal infringement instead of no infringement. D. Make No Reference in the Specification to "The Invention" (as Distinguished from An Embodiment of the Invention) or Its Advantages

References to "the invention" or its advantages may result in the reading of limitations into the claims and judgment of non-infringement. Once again, consider SciMed. In holding that the claims in suit "read only on catheters with coaxial lumens, and not on catheters with dual or sideby-side lumens," 58 U.S.P.Q.2d at 1062, the court said that "the characterization of the coaxial configuration as part of the present invention is strong evidence that the claims should not be read to encompass the opposite structure." 58 U.S.P.Q.2d at 1064. Any background, "summary of the invention," advantage of the invention, disadvantage of the prior art, or discussion of "the invention" in the specification risks having broad claims narrowly interpreted and judgment of non-infringement. Accordingly, LP-CD practice eschews and expunges "Background" and "Summary" sections, discussions of advantages of the invention and disadvantages of the prior art, and references to "the invention" in the specification.

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