Four Forms Of Construction: Claim constructions may take any of the following forms: (traditional) MUST be/include/have; NEED NOT be/include/have; MUST NOT be/include/have; MAY be/include/have.
MUST Construction: “the claimed ‘lipophilic component’ must contain, at a minimum, a pharmaceutically acceptable lipophilic substance capable of dissolving ciclosporin, and that is a non-surfactant excipient” Novartis Pharm. (Fed. Cir. 07/08/04). Uber Techs. (Fed. Cir. 03/03/20) (non-precedential) (construing BRI of “responsive to” launching of an application as requiring that a method be invoked minutes or hours after launch of an application); Smith & Nephew (Fed. Cir. 06/20/11) (non-precedential) (“Thus, the graft connection element includes at least a sling member.”); Indacon (Fed. Cir. 06/06/16) (construing “custom link” to mean that “each instance of the term in the plurality of files [is] identified and displayed as a link to a file chosen by the user”). OK to import a required numerical range into a claim that does not expressly contain such limitation where “the specification contains no varied usage or ambiguity” of the claim language other than in a context requiring the specified numerical range. Amazin’ Raisins (Fed. Cir. 10/31/08) (non-precedential).
NEED NOT Construction: Hoist Fitness (Fed. Cir. 10/02/20) (non-precedential) (aff’g construction: “mount[ed]/[ing] such that the overall movement relative to the main frame is generally concentric [“concentric” is “more synonymous with circular” rather than meaning “having a common center”]; provided, however, that movement need not be perfectly circular”); Amgen (Fed. Cir. 12/16/19) (aff’g construction including “claim 27 does not require the individual isoforms of Claim 1 to be separately prepared prior to making the mixture”); Hill-Rom (Fed. Cir. 12/15/17) (non-precedential) (“periodically”: “claims are not limited to verification checks performed at equally spaced time intervals”); Ignite (Fed. Cir. 10/12/17) (non-precedential) (aff’g PTAB construction: “‘connected’ does not require a permanent connection and does not require that the connection ‘prevent the component from being misplaced or disassociated from the lid assembly in both the operable and cleaning positions,’ as [Ignite] argues. . . . Rather, ‘connected’ includes non-permanent connections.’”); Chaffen (Fed. Cir. 06/23/17) (non-precedential) (“‘continuously [draw; drawn; drawing]’ means ‘[dispense; dispensed; dispensing] in an ongoing fashion, as long as sewage effluent flows through the venturi chamber.’ But the flow of chlorine need not be uniform or uninterrupted.”); Tech. Prop. (Fed. Cir. 03/03/17) (“an ‘entire oscillator’ is one ‘that does not require a command input to change the clock frequency’”); Fenf (Fed. Cir. 02/06/15) (non-precedential) (“Based on the intrinsic evidence, we understand the plain and ordinary meaning of “separators” in claim 35 in the context of the ’675 patent to be “structural features that can be placed between toes.” For the sake of clarity, we note that separators may be, but are not necessarily, formed of an elastic or elastomeric material.”); Rambus (Fed. Cir. 09/24/13) (aff’g Board: “‘external clock signal’ only requires the clock to be periodic during the data input phases, as opposed to being periodic for all system operations”); Edwards Life Sci. (Fed. Cir. 11/13/12) (approving instruction that “the term ‘cylindrical’ as used in the patent in this case does not require the presence of a perfect geometric cylinder”); IGT v. Bally Gaming (Fed. Cir. 10/06/11) (aff’g construction: “A ‘pay command,’ an instruction related to payment, need not cause payment to be effected ‘automatically.’”); Retractable Tech. (Fed. Cir. 07/08/11) (aff’g construction that “the claimed ‘retainer member’ and ‘needle holder’ limitations need not be two separate parts”) “…the method does not require any determination of a starting point for application of the blood sample to the matrix.” Home Diagnostics (Fed. Cir. 08/31/04); “In sum, the claims do not expressly require pressure jackets, and Medrad points to no clear disavowal of claim scope in either the written description or the prosecution history. In fact, the prosecution history indicates that the asserted claims were added to cover devices that lacked pressure jackets. For those reasons, we conclude that the district court erred in construing the claims at issue to require pressure jackets.” Liebel-Flarsheim (Fed. Cir. 02/11/04); “Accordingly, we conclude that the scope of the asserted claims should not be limited to the expression of exogenous DNA.” Amgen (Fed. Cir. 01/06/03); “…does not limit the disputed phrases to any particular type of technology or specify a particular type of signal format, such as analog or digital.” SuperGuide (Fed. Cir. 02/12/04).
MUST NOT Construction: Eko Brands (Fed. Cir. 01/13/20) (2-1) (aff’g award of attorney fees based on ill-founded infringement allegation ivo aff’d construction: “‘passageway’ does not ‘encompass a receptacle that [has] no bottom or utilized a broad-thin, mesh’”); 20/20 Vision Center (Fed. Cir. 03/04/20) (non-precedential) (“automatically” adjusted equipment must not be adjusted by eye care practitioner or onsite technician); Hill-Rom (Fed. Cir. 12/15/17) (non-precedential) (“periodically” claims “do not cover random or ad hoc verification checks, or checks that occur only when the modules are prompted to transmit status messages”); Intellectual Ventures (Motorola) (Fed. Cir. 09/13/17) (“‘send[ing]’ and ‘receiv[ing]’ limitations of claim 41 should be construed to exclude long-term or permanent storage”); Cronos (Fed. Cir. 08/17/17) (non-precedential) (“the district court correctly construed the terms ‘item code’ and ‘identifying code,’ … to be distinct from ‘user-discernable information’ such that item codes and identifying codes do not contain any user-discernable information”); Duke Univ. (Fed. Cir. 04/25/17) (non-precedential) (rev’g PTAB construction and anticipation finding; claim language “‘the [hGAA] is a precursor” means it is “exclusively a precursor” not a mixture of precursor and non-precursor, partly in view of the Spec.); TMC Fuel Injection (Fed. Cir. 03/27/17) (non-precedential) (“the asserted claims exclude the use of any pressure regulator from the fuel system”); D’Agostino (Fed. Cir. 12/22/16) (“The single-merchant limitation thus requires, simply, that, when the transaction code is requested, the request limits the number of authorized merchants to one but does not then identify the merchant, such identification occurring only later.”); Roxane Labs. (Fed. Cir. 11/17/16) (non-precedential) (“‘size 00’ in the … patent means standard, nonelongated size 00, and … the limitation ‘size 00 or less’ thus excludes the larger elongated size 00 capsules from the scope of the claims”); Liberty Ammunition (Fed. Cir. 08/16/16) (“construe the term ‘intermediate opposite ends’ to mean ‘the interface is positioned between the front end and the rear end of the projectile body such that the interface does not extend all of the way to the front end or to the rear end of the projectile’”); WI-LAN (Fed. Cir. 08/01/16) (“‘specified connection’ excludes embodiments where an intermediary node can maintain only one specified connection”); Openwave (Fed. Cir. 12/15/15) (aff’g construction: “a ‘mobile device’ is ‘a portable wireless two-way communication device that does not contain a computer module’ and that ‘this construction does not read out embodiments including microcontrollers’”); Belden (Fed. Cir. 11/05/15) (aff’g PTAB IPR anticipation decision; patent owner did not seek construction of “cable” to exclude cable component (quad) which is subject of prior art reference); Augme Tech. (Fed. Cir. 06/20/14) (aff’g construction of “embedded” to mean “‘written into the HTML code of the web page,’” and trial court explanation that this construction “expressly excluded ‘a code module that is retrieved via external linking,’ i.e., code not actually in the web page HTML, but separately retrieved after the web page download”); Apple (Fed. Cir. 04/25/14) (aff’g construction that claim’s “transmit overflow sequence number” is “never transmitted,” in part because such transmission would defeat invention’s purpose and in part based on foreign prosecution disclaimer after U.S. pat. issued); Chicago Bd. II (Fed. Cir. 04/07/14) (approving construction: “An automated exchange is a system for executing trades of financial instruments that is fully computerized, such that it does not include matching or allocating through the use of open outcry. Conversely, a system for executing trades of financial instruments that includes matching or allocating through the use of open outcry is not an automated exchange.”); Bose (Fed. Cir. 03/14/14) (non-precedential) (“interface unit,” “interface device,” and “interface module” construed as “singularly physical, not defined on paper as different pieces of separate devices”); Skinmedica (Fed. Cir. 08/23/13) (2-1) (aff’g construction of “culturing . . . cells in three-dimensions” as “growing . . . cells in three dimensions (excluding growing in monolayers or on microcarrier beads).”); BASF Argo (Fed. Cir. 03/20/13) (non-precedential) (“correctly construed the claims … to exclude treatments which require application of insecticide ‘without loopholes around a building, under a building, and both around a building and under a building’”); Joy MM Delaware (Fed. Cir. 11/08/12) (non-precedential) (“the term ‘indentations’ as used in claim 2 expressly excludes ‘holes.’” Aff’g construction limiting term to structures “‘into which something can be inserted, but through which it cannot pass.’”) In re Abbott Diabetes (Fed. Cir. 09/28/12) (reexamination; “under the broadest reasonable construction, ‘electrochemical sensor’ is properly interpreted to mean a discrete electrochemical sensor devoid of external connection cables or wires to connect to a sensor control unit”); Kinetic (Fed. Cir. 08/13/12) (“‘tissue damage to the surface of the body, including the epithelial and subcutaneous layers, and excluding fistulae and pus pockets’”); Star Sci. (Fed. Cir. 08/26/11) (claim not indefinite; construed as “controlling one or more of humidity, temperature and airflow in the curing barn, in a manner different from conventional curing, in order to substantially prevent the formation of TSNAs”); Privacash (Fed. Cir. 08/11/11) (non-precedential) (“‘bearer cards’ are those that cannot be canceled or deactivated”); ImageCube (Fed. Cir. 06/20/11) (non-precedential) (trial court “correctly construed the term ‘components’ to exclude metallurgical phases of a single alloy’”); iLight Techs. (Fed. Cir. 04/20/10) (non-precedential) (based on prosecution history disclaimer, “the jury should have been instructed that the claimed invention did not include ‘hollow’ structure for the waveguide and that, in order to infringe, structure in the accused Fallon products corresponding to the waveguide could not be ‘hollow’”); Trading Techs. (Fed. Cir. 02/25/10) (“static” means “a display of prices comprising price levels that do not change positions unless a manual recentering command is received”). SeeTrading Techs. (Fed. Cir. 04/04/16) (non-precedential) (aff’g Summ. J. of non-infringement under earlier case’s construction, because products that automatically recenter after pre-set delay); Vita-Mix (Fed. Cir. 09/16/09) (aff’g construction of limitation “but not including a method of stirring to disperse, dislodge, or break-up an air pocket after it has begun to form”); RFID Tracker (Fed. Cir. 08/18/09) (non-precedential) (aff’g construction that “‘an interrogator/reader includes a field generator and a receiver, but not a transmitter’”); Realsource (Fed. Cir. 06/23/08) (non-precedential) (aff’g construction of “ID information” as “encrypted data, excluding the card number, stored on the debit card in the form of merchant ID, store ID, or terminal ID”); Allvoice Computing (Fed. Cir. 10/12/07) (“this court construes ‘form[ing] link data’ as the formation of the data structure in volatile memory, excluding operations to update or maintain link accuracy”); Abraxis (Fed. Cir. 11/15/06) (“the proper construction of ‘edetate’ is EDTA and derivatives of EDTA, such as salts, but not including structural analogs”); “the limitation in claims 2 and 11 requiring that the bottom side merge with the bottom edge of the central portion of the front wall excludes the possibility that the bottom side also merges with the top edge.”; “fentanyl that is in a form that can pass through the skin … excluding solutions of fentanyl citrate.” Alza (Fed. Cir. 12/10/04); Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1380 (Fed. Cir. 1998); “…the return electrode ‘is not to contact the body at all during the performance of the claimed method.’” Arthrocare Corp. v. Smith & Nephew, Inc., 406 F.3d 1365, 1376 (Fed. Cir. 2005); “the claimed ‘lipophilic component’ must contain, at a minimum, a pharmaceutically acceptable lipophilic substance capable of dissolving ciclosporin, and that is a non-surfactant excipient” Novartis Pharm. (Fed. Cir. 07/08/04). But seeCohesive Tech. (Fed. Cir. 10/07/08) (“Although ‘it is appropriate for a court to consider the accused device when determining what aspect of the claim should be construed,’ it is not appropriate for the court to construe a claim solely to exclude the accused device.”). E.g., a “must not” type of construction supports a “specific exclusion” bar to DOE. Augme Tech. (Fed. Cir. 06/20/14) (linked code in Web page cannot be substantially same as “embedded code” because construction of “embedded code” specifically excludes linked code; aff’g Summ. J. of no DOE); Innovad (Fed. Cir. 08/06/01) (“the dialer unit (i.e., elements [a]-[f]) of claim 22 cannot include a keypad”).
MAY Construction: Paice (Ford) (Fed. Cir. 02/01/18) (aff’g PTAB construction: “‘abnormal and transient conditions’ include starting and stopping the engine”); Hitachi Metals (Fed. Cir. 07/06/17) (non-precedential) (aff’g PTAB anticipation finding and “construction of ‘rapid cooling method’ as not excluding ‘super rapid cooling’”); Bamberg (Fed. Cir. 03/07/16) (aff’g PTAB decision of no written description support for count; the BRI “includes within its scope a white layer that melts at temperatures both above and below 220°C”); Openwave (Fed. Cir. 12/15/15) (aff’g construction: “a ‘mobile device’ is ‘a portable wireless two-way communication device that does not contain a computer module’ and that ‘this construction does not read out embodiments including microcontrollers’”). “The district court’s claim construction of ‘full surface contact’ is affirmed with the clarification that the definition includes the cohesive failure depicted in Figure 23.” 3M Innovative (Fed. Cir. 08/06/13); “Software on a locator server computer that: (1) receives …; (2) determines …; (3) creates …; and (4) creates …. The locator server computer may comprise one or more computers, and the location facility may be distributed among one or more location server computers.” 01 Communique Lab (Fed. Cir. 07/31/12); “The district court construed ‘rigid’ so that it did not ‘exclude polymeric particles (as opposed to the monomeric particles referred to in the preferred embodiment of the ’874 patent).’” Cohesive Tech. (Fed. Cir. 10/07/08); “the proper construction of ‘edetate’ is EDTA and derivatives of EDTA, such as salts, but not including structural analogs.” Abraxis (Fed. Cir. 11/15/06); “The claim scope thus does not preclude preparatory steps in advance of step (a), including growth of E. coli at a temperature outside the step (a) range.” Invitrogen (Fed. Cir. 05/07/03); “Thus, this court finds that the term ‘intermediary’ can embrace magnetic substances, albeit only if the additional term requirement of ‘alternating polarity’ allows for it.” Intamin (Fed. Cir. 04/18/07); “…claims 1 and 5 must also encompass aluminum with up to about 10% silicon” AK Steel (Fed. Cir. 09/23/03). But seeBracco (Fed. Cir. 12/17/20) (non-precedential) (criticizing trial court for including embodiments from Spec. in claim construction rather than just construing functional term functionally: “Listing numerous compounds that meet the language of a functional term in a claim confuses construing what the function is with what compounds perform that function. The latter is not the task of claim construction, which is to provide definitional meaning to claim language.”).
Construing Claims As A Whole: The purpose of claim construction is not to create a mini dictionary. It is to explain to the jury precisely and clearly the dividing line between what technology or action is literally covered by a patent claim versus what is not. Sometimes, this requires construing the claim as a whole. E.g., Power Mosfet Techs., LLC v. Siemens AG, 378 F.3d 1396, 1404 (Fed. Cir. 2004) (“The terms in the Special Master Report were construed in isolation, and at no other time did the district court or the Special Master construe the claims as a whole.”); id. at 1410 (This “limited construction left substantial ambiguity as to the meaning of the claims as a whole.”); id. at 1412 (“A construction of the claims as a whole would have been beneficial to the litigants.”). Cf. Avid Tech. (Fed. Cir. 01/29/16) (questioning trial court failure to construe a claim term ivo of “the aim of claim construction—to give the finder of fact an understandable interpretation of claim scope to apply to the accused systems”); Alice Corp. (U.S. 06/19/2014) (“Viewed as a whole, petitioner’s method claims simply recite the concept of intermediated settlement as performed by a generic computer.”); Cf. King (U.S. 06/25/2015) (“Our duty, after all, is ‘to construe statutes, not isolated provisions.’”).
Construing Relationship Between Claim Elements: Error for trial court not to instruct jury on disputed issue of whether three elements in an apparatus claim processed the same message. Creative Internet (Fed. Cir. 04/22/11) (non-precedential). SeeHTC (Fed. Cir. 07/17/17) (non-precedential) (ruling that separate steps in a method must be performed by separate components is a “conclusion about the scope” of the claim and thus a claim-construction ruling); Becton Dickinson (Fed. Cir. 07/29/10) (2-1) (error for district court construe claim as not requiring the recited spring means to be a distinct structural element from the recited hinged arm).
Establishing Scope Of Claim Constitutes A Claim Construction: “Despite no express construction of ‘message’” [by Board, its] findings establishing the scope of the patented subject matter may fall within the ambit of claim construction.” HTC (Fed. Cir. 12/18/17) (aff’g implicit construction of claim term).
Construction Of Structural Element May Specify Function Performed Or Result Achieved, But Not Use To Which It Is Put: Organik Kimya (Fed. Cir. 10/11/17) (aff’g PTAB BRI construction of “swelling agent” as: “expressing a structural element, i.e., ‘an aqueous or gaseous, volatile or fixed base, or combinations thereof,’ in functional terms, i.e., ‘capable of permeating the shell and swelling the core, in the presence of the multistage polymer and monomer, under the conditions of the specific process for which the agent is to be used,” based primarily on Spec.); Praxair (Fed. Cir. 09/29/08) (“the term ‘flow restrictor’ should be construed as ‘a structure that serves to restrict the rate of flow sufficiently to prevent a hazardous situation’”); Liqwd (Fed. Cir. 01/16/18) (non-precedential) (construing “hair coloring agent” as a customary hair-coloring composition that must be present in an amount that results in hair coloring); Paragon Solutions (Fed. Cir. 05/22/09) (“Construing a non-functional term in an apparatus claim in a way that makes direct infringement turn on the use to which an accused apparatus is later put confuses rather than clarifies, frustrates the ability of both the patentee and potential infringers to ascertain the propriety of particular activities, and is inconsistent with the notice function central to the patent system.”); Edgewell (Fed. Cir. 05/26/21) (rev’g claim construction, “erred in construing the term ‘clearance’ … in a manner dependent on the way the claimed cassette is put to use in an unclaimed structure”); Hewlett-Packard (Fed. Cir. 07/30/90) (“apparatus claims cover what a device is, not what a device does”). But seeBio-Rad (Fed. Cir. 05/28/21) (despite “general proposition of law that ‘apparatus claims cover what a device is, not what a device does,’” these claims did not “differentiate the wells and channels from each other based on physical characteristics (e.g., shape, size, depth, location, etc.). Instead, the inventors chose to characterize the wells and channels based on the material contained within them.”).
Claim Language May Limit Claimed Environment Not Claimed Subject Matter: Claim language may limit claim’s environment only and not the claimed method, apparatus, etc. CompareAdvanced Software (Fed. Cir. 06/02/11) (steps recited in preamble of method claim and system claim (reciting how a financial instrument was formed) are limitations of the claim, but “limit only the claimed environment, not the claimed method or system,” and thus did not need to be performed or used by the accused infringer); HTC IPCom I (Fed. Cir. 01/30/12) (rev’g hybrid-claim indefiniteness judgment, finding alleged method steps in apparatus claim “merely describe the network environment in which the mobile station must be used”); Eko Brands (Fed. Cir. 01/13/20) (aff’g infringement despite defendant not selling beverage brewer: beverage brewer mentioned in preamble, even if limiting, “is [recited] only as a ‘reference point’ to define the purpose and structure of the brewing device”); and Univ. of Pitt. (Fed. Cir. 04/10/14) (non-precedential) (rev’g damage award based on larger system’s sales where claim recited that larger system only as an intended use, not part of the claimed apparatus) withIntellectual Ventures (Motorola) (Fed. Cir. 09/13/17) (2-1) (rev’g denial of JMOL of no direct infringement; no substantial evidence that phone users (as opposed to the MMS centers operated by wireless carriers) benefitted from (received or even knew how to request) the claimed authentication delivery reports: “wherein the authenticating device is configured to: generate a delivery report that indicates a delivery event and a time of the delivery event.” Patent owner did not argue that “wherein” clause described environment only.); Koninklijke Philips (Fed. Cir. 07/28/16) (non-precedential) (device maker does not directly infringe apparatus claims because claims recite that that device is “in electrical communication with the exterior of a patient” not “configured to be placed in ….”); Nazomi (Fed. Cir. 01/10/14) (claim requires specific, non-generic functions requiring combination of software and hardware to perform, not just hardware whose intended use environment includes software). SeeHelferich (Fed. Cir. 02/10/15) (“where a defendant’s practice of a claimed invention presupposes that other persons engage in additional conduct, we have said that the additional conduct is part of ‘the environment’ in which the claim is practiced, and not something the defendant need engage in for infringement to be found”).
Claim Language May Restrict Characteristic Of An Element Rather Than Be Method Step: LifeNet (Fed. Cir. 09/16/16) (no divided infringement defense for method or apparatus claim: “non-removal limitation [“said one or more plasticizers are not removed from said internal matrix of said plasticized soft tissue graft prior to transplantation into a human”] clarifies that the recited plasticizer has not been removed and … it need not ever be removed. This limitation is met without action by a third party. It is satisfied by the graft from the moment it is manufactured unless and until the plasticizer is removed from the internal matrix before transplantation.”); Summit 6 (Fed. Cir. 09/21/15) (“being provided to” is not a step of the method but rather a characteristic of the parameters: “pre-processing said digital content at said client device in accordance with one or more preprocessing parameters, said one or more preprocessing parameters being provided to said client device from a device separate from said client device”).
Court Must Ensure Jury Understands And Applies The Court’s Construction: The district court “must ‘ensure that the jury fully understands the court’s claim construction rulings and what the patentee covered by the claims.’” Power-One (Fed. Cir. 03/30/10). The court “must at minimum take steps to assure that the jury understands that it is not free to consider its own meanings for disputed claim terms and that the district court’s claim construction, determined as a matter of law, is adopted and applied by the jury in its deliberation of the facts.” Sulzer Textil (Fed. Cir. 02/17/04).
Court May Enforce Construction By Precluding Evidence Or Argument Suggesting A Different Construction: Because it “‘avoided possible jury confusion’ stemming from the parties’ introduction of terms outside the District Court’s claim construction,” not an abuse of discretion to bar expert from “arguing that ‘mere association between the content and the usage rights is enough to meet the requirement that the usage rights be ‘attached’ to the content.” ContentGuard (Apple) (Fed. Cir. 07/12/17) (non-precedential).
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