Trends and Countertrends in Federal Circuit Claim

InterpretationPatent Law 3.8.04

Prof Merges

Traditional Rules

• “Claim interpretation sources hierarchy”

• Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996).

• Intrinsic before extrinsic sources– Patent claims, spec., prosecution history– THEN testimony, dictionaries, treatises

“Patentee may be his/her own lexicographer”

Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998):

“[W]here a patent applicant has elected to be his own lexicographer by providing an explicit definition in the specification for a claim term, . . . the definition selected by the patent applicant controls.”

Own lexicographer: (1) only explicit definition; (2) no ambiguity . . .

Multiform Dessicants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998)

“When the specification explains and defines a term used in the claims, without ambiguity or incompleteness, there is no need to search further for the meaning of the term.”

Trend: “Plain Meaning”

The extrinsic or intrinsic status of dictionaries is immaterial; procedurally claim construction should begin with reference to dictionaries rather than other previously preferred forms of evidence, and instructed that claim terms should be construed to include all dictionary definitions that are consistent with the intrinsic record.

“Consulting the written description and prosecution history as a threshold step in the claim construction process, before any effort is made to discern the ordinary and customary meanings attributed to the words themselves, invites a violation of our precedent counseling against importing limitations into the claims.”

Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1203, 1204-05 [64 USPQ2d 1812] (Fed. Cir. 2002)

Plain meaning as the default . . .

Union Carbide Chemicals & Plastics Tech. Corp. v. Shell Oil Co., 308 F.3d 1167, 1177 (Fed. Cir. 2002):

Emphasizing the “special” nature of dictionaries, the court ruled that the dictionary definition controlled “unless the intrinsic evidence clearly redefines the claim term so as to put one reasonably skilled in the relevant art on notice that [the patentee] intended to assign the term a different meaning.”

Liebel-Flarsheim Co. v. Medrad Inc., 69 USPQ2d 1801, 1806-07 (CA FC 2004)

1. A method of loading an empty syringe into a power injector for injecting fluid into an animal and for filling the syringe with the fluid to be so injected, wherein the injector has a syringe receiving opening therein and a power driven ram extendable through the opening . . .

What role for the spec/examples?

“Opening”, on front of pressure jacket

At the outset, we reject the district court’s conclusion that the term “opening” should be defined as limited to an opening in a pressure jacket. The specification does not define “opening” restrictively, nor is there anything in the specification that supports the district court’s conclusion that the term is ambiguous. . . . Claim 10 of the '669 patent, for example, requires “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.” . . . Thus, the “opening” must be located so that the ram reciprocates along a segment of a line projecting through the opening and so that the rear end of the syringe can be inserted into the opening and affixed to the injector at that point. But the claim language does not suggest that the “opening” must also be located at the front end of a pressure jacket.

Medrad argues that because all the embodiments described in the common specification of the '669 and '261 patents feature pressure jackets, the claims of those patents must be construed as limited to devices that use pressure jackets.

[T]his court has expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.

See also ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1091 [68 USPQ2d 1516] (Fed. Cir. 2003); Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1377 [66 USPQ2d 1444] (Fed. Cir. 2003); Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1373 [65 USPQ2d 1865] (Fed. Cir. 2003); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 [63 USPQ2d 1374] (Fed. Cir. 2002);

Countertrend

• SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337 [58 USPQ2d 1059] (Fed. Cir. 2001)

When 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 the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” 242 F.3d at 1341.

Countertrend . . .

• Bell Atlantic Network Servs., Inc. v. Covad Commun. Group, Inc., 262 F.3d 1258, 1273, 59 U.S.P.Q.2d 1865 (Fed. Cir. 2001)

United States Patent 5,812,786 Seazholtz ,   et al. September 22, 1998

Variable rate and variable mode transmission system

A public switched telephone network (PSTN) provides communication of digital data from a data provider or LAN to one or more of a plurality of subscriber premises. Asymmetrical digital subscriber line interface units operating at variable rates and in variable modes (ADSL/AVRs) over a local loop offer one-way video-on-demand and other services and carry the necessary signalling between the subscribers and information providers. In an asymmetric mode, the interface units frequency multiplex digital information with voice information to the subscriber and support transmission of a reverse control channel from the subscriber to the central office for transmission back to the information provider. Other modes are supported which permit selective bi-directional and reversible communications as well.

Inventors: Seazholtz; John W. (Great Falls, VA); : June 21, 1995

Claim 1

1. A transmission system for variably transmitting information data in a plurality of different modes over a network, said transmission system comprising:

[1] a first transceiver, connected to a first end of a subscriber loop, for selectively operating in one of said plurality of different modes . . . [2] a second transceiver, connected to said first transceiver via said subscriber loop, for selectively operating in one of said plurality of different modes and . . . [3] a controller . . .

Infringer’s claim construction

• “Mode” in ‘786 patent claim 1 means “bandwidth mode” – claim requires that asymmetric DSL system be capable of selecting different bandwidths

• Infringer’s product used fixed bandwidths, only varied data transmission rates within given bandwidth

[A] claim term may be clearly redefined without an explicit statement of redefinition. In other words, the specification may define claim terms "by implication" such that the meaning may be "found in or ascertained by a reading of the patent documents." Vitronics, 90 F.3d at 1582, 1584 n. 6, 39 USPQ2d at 1577, 1578 n. 6.

Word "mode" should not be given its ordinary meaning because "mode" was only used in one specific way in the written description. Although the Federal Circuit paid homage to the "heavy presumption" in favor of ordinary meaning, it found that the patentee's consistent use of the word "mode" rose to a definition by implication.

The specification (in the Summary of the Invention) refers to the terms "rate" and "mode" as two separate and distinct concepts. The term "rate" describes the data rate within a given channel, while the term "mode" differentiates between asymmetrical and bi-directional communications.