Trends and Countertrends in Federal Circuit Claim Interpretation

1
Trends and Countertrends in Federal Circuit Claim
Interpretation

• Patent Law 3.8.04
• Prof Merges

2
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

3
Patentee may be his/her own lexicographer

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

4
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.

5
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.

6

• 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.

7

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

8
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.

9
What role for the spec/examples?

• 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 . . .

10
Opening, on front of pressure jacket
11

• At the outset, we reject the district courts
  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
  courts 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.

12

• 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.
• This 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.

13

• 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)

14
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.

15
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)

16

• 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

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18
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 . . .

19
Infringers claim construction

• Mode in 786 patent claim 1 means bandwidth
  mode claim requires that asymmetric DSL system
  be capable of selecting different bandwidths
• Infringers product used fixed bandwidths, only
  varied data transmission rates within given
  bandwidth

20

• 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.

21

• 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.

22

• 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.