How Construed?

BASICS: How Construed?

  • “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 of the invention, i.e., as of the effective filing date of the patent application.” Phillips (Fed. Cir. 07/12/05) (en banc). See Teva Pharm. II (U.S. 01/20/2015) (7-2) (“if a district court resolves a dispute between experts and makes a factual finding that, in general, a certain term of art had a particular meaning to a person of ordinary skill in the art at the time of the invention, the district court must then conduct a legal analysis: whether a skilled artisan would ascribe that same meaning to that term in the context of the specific patent claim under review.”); on remand Teva Pharm. III (Fed. Cir. 06/18/15) (2-1) (“The meaning one of skill in the art would attribute to the term molecular weight in light of its use in the claims, the disclosure in the specification, and the discussion of this term in the prosecution history is a question of law;” accepting but discounting trial court finding that statement in prosecution history was scientifically incorrect.) While the patent’s prosecution history and dictionaries may be helpful, the Spec. is “the single best guide to the meaning of a disputed [claim] term.” Phillips (Fed. Cir. 07/12/05) (en banc). Court may not rely on dictionary or treatise to “‘contradict any definition found in or ascertained by a reading of the patent documents.’” Id. Wasica Finance (Fed. Cir. 04/04/17) (aff’g PTAB’s broad Phillips construction of expired claims: “If the intrinsic record supports several definitions of a term, the term may be construed to encompass all such consistent meanings.”); Virginia Innovation (Fed. Cir. 06/09/15) (non-precedential) (vacating and remanding Summ. J. for more record evidence of how skilled artisans would have understood “what appears to be a term with an established technical meaning in the art.”).
  • Generally, Claim Terms Given Their Ordinary Meaning To Skilled Artisan At Effective Filing Date After Reading Intrinsic Evidence: “Properly viewed, the ‘ordinary meaning’ of a claim term is its meaning to the ordinary artisan after reading the entire patent.” Phillips (Fed. Cir. 07/12/05) (en banc); United Video (Fed. Cir. 04/08/14) (non-precedential) (“The words of a claim are generally given their ordinary and customary meaning, which is the meaning that a term would have to a person of ordinary skill in the art after reviewing the intrinsic record at the time of the invention.”); Lexion Med. (Fed. Cir. 04/22/11) (“The customary meaning of a claim term is not determined in a vacuum and should be harmonized, to the extent possible, with the intrinsic record, as understood within the technological field of the invention.”); Kaneka (Fed. Cir. 06/10/15) (rejecting dictionary-definition construction of claim term “sealed,” even though term not defined or used in Spec., because inconsistent with all disclosed embodiments in Spec. and thus contrary to meaning ascertainable from Spec.); Wisconsin Alumni (Fed. Cir. 09/28/18) (aff’g Summ. J. of no anticipation; “‘the ‘ordinary meaning’ of a claim term is its meaning to the ordinary artisan after reading the entire patent.’ Reading the patent as a whole, it is clear that the claimed prediction must be capable of receiving updates.”)
  • Unclear How Phillips Differs From “Broadest Reasonable Interpretation”: Fed. Cir. panels insist that BRI standard in PTO and PTAB differs from Phillips construction, but have not clearly defined how. Even under BRI, interpretation must be reasonable ivo the Spec., must consider the prosecution history, “‘must be consistent with the one that those skilled in the art would reach’” and may not be “unreasonable under general claim construction principles.” Microsoft (Proxyconn) (Fed. Cir. 06/16/15) (vacating PTAB’s BRI as too broad ivo Spec.); Intertainer (Fed. Cir. 09/26/16) (non-precedential) (aff’g PTAB broad construction, relying heavily on the prosecution history.) But BRI may be broader then the “correct construction.” PPC Broadband I (2015-1361) (Fed. Cir. 02/22/16) (aff’g PTAB obviousness decision and broader BRI interpretation of “continuity member” (as needing only to make contact with two members to establish an electrical connection between them, “rather than requiring consistent or continuous contact”) based on “some language” in Spec. and some ordinary meanings of the term, despite that “correct construction” under Phillips would have been narrower (requiring that members be always connected) based on another dictionary definition and multiple statements in the Spec. and “fundamental purpose” of the invention). See Cuozzo (U.S. 06/20/2016) (aff’g PTO has authority to apply its “broadest reasonable construction” standard in IPRs, noting that it is different from Phillips, without addressing how it is different); Veritas (Fed. Cir. 08/30/16) (aff’g PTAB construction, concluding “it would not be unreasonable for a relevant skilled artisan to read the claims” to have that scope); Google (Network-1) (Fed. Cir. 03/26/18) (non-precedential) (reversing PTAB’s BRI of “non-exhaustive search;” under BRI “where two claim constructions are reasonable, the broader construction governs.”)
  • TIP Re Preserving Position On “Plain Meaning” Claim Construction Principles For En Banc Or Cert. Review:

a) general canons of construction

  • Construe Claim Terms In Context Of Entire Claim: Phillips (Fed. Cir. 07/12/05) (en banc) (“Quite apart from the written description and the prosecution history, the claims themselves provide substantial guidance as to the meaning of particular claim terms…. [T]he context in which a term is used in the asserted claim can be highly instructive.”); Kyocera (Fed. Cir. 10/14/08) (in context of entire claim and Spec., “different” first and second wireless communications refers to two different methods of communication: “this court does not interpret claim terms in a vacuum, devoid of the context of the claim as a whole.”); ACTV (Fed. Cir. 10/08/03) (“the construction of URL is principally informed by the plain language and surrounding context of the claims themselves.” “While certain terms may be at the center of the claim construction debate, the context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms.”)
  • Seek Not To Render Any Claim Language Superfluous Or Redundant: Akzo Nobel (Fed. Cir. 01/29/16) (aff’g trial court rejection of proposed construction of “pressurized collection vessel” that would render word “collection” “entirely superfluous …; such a result is disfavored”); TMI Products (Fed. Cir. 04/02/15) (non-precedential) (aff’g trial court rejection of proposed construction that would render other claim language redundant); but see Simpleair (Fed. Cir. 04/01/16) (rev’g trial court’s construction: “The preference for giving meaning to all terms, however, is not an inflexible rule that supersedes all other principles of claim construction.”)
  • Generally, Different Terms Have Different Meanings: “Linguistic differentiation” “canon of construction: ‘the general assumption is that different terms have different meanings,’” but it is less applicable (or does not apply) to terms used in a preamble because the “purpose of a preamble is to set forth the general nature of the invention being claimed. It is generally not used as or intended to be a limiting factor in delineating boundaries of the scope of the invention as claimed.” PPC Broadband (2015-1364) (Fed. Cir. 02/22/16) (vacating PTAB BRI as too broad); CAE Screenplates (Fed. Cir. 08/24/00) (“In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”) But see Pavo (Fed. Cir. 11/06/17) (non-precedential) (rev’g PTAB construction; in context of Spec. claim terms “on” and “formed on” have same BRI meaning.).
  • Generally, Same Term Has Same Meaning In Different Claims: “The principle that the same phrase in different claims of the same patent should have the same meaning is a strong one, overcome only if ‘it is clear” that the same phrase has different meanings in different claims.’” In re Varma (Fed. Cir. 03/10/16) (rev’g PTAB interpretation).
  • Separately Listed Claim Elements Generally Are Distinct Parts Of Claimed Invention: HTC (Fed. Cir. 07/17/17) (non-precedential) (aff’g PTAB BRI that two separate steps in method claim must be performed by two separate components; in part looking to apparatus claim (and partly due to waiver): “the separate naming of two structures in the claim strongly implies that the named entities are not one and the same structure.”); Becton Dickinson (Fed. Cir. 07/29/10) (2-1) (rev’g infringement judgment; “Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.”); Gaus (Fed. Cir. 04/01/04) (same).
  • Generally, Cover All Embodiments: absent disclaimer, if claims reasonably can be construed to cover all embodiments, they should be. Oatey (Fed. Cir. 01/30/08) (Newman, J.); similar point made in EchoStar (Fed. Cir. 01/31/08); Nobel Biocare (Fed. Cir. 09/13/18) (aff’g PTAB anticipation decision and construction; “there is a strong presumption against a claim construction that excludes a disclosed embodiment.”); Accent Packaging (Fed. Cir. 02/04/13) (narrower construction rev’d primarily because would exclude a preferred embodiment); Intellectual Ventures (Ericsson) (Fed. Cir. 05/08/17) (non-precedential) (aff’g PTAB’s broader construction (and obviousness decision), in part because narrower one would exclude preferred embodiment, which is “rarely” correct); but see Transperfect (Fed. Cir. 07/12/17) (non-precedential) (aff’g PTAB CBM finding of no written description support for claims; Spec. disclosed that hyperlink is translated and replaced by hyperlink pointing to translated page but claim recites translated page includes “said hyperlink,” which when activated obtains translated page, so not supported by Spec.); Bayer Cropscience (Fed. Cir. 09/03/13) (claim does not include sole embodiment; “it is hardly unknown for a patentee with an invention that could be protected to fail in securing such protection by bad choices in claim drafting.”) (Dictum). But, an unasserted or cancelled claim may defeat argument that asserted claim must cover (or be limited to) a specific embodiment: “courts must recognize that disclosed embodiments may be within the scope of other allowed but unasserted claims. Likewise, during prosecution, an applicant may have cancelled pending claims but not amended the specification to delete disclosure relevant only to the cancelled claims. In such cases, unasserted or cancelled claims may provide ‘probative evidence’ that an embodiment is not within the scope of an asserted claim.” PSN Illinois (Fed. Cir. 05/06/08) (dictum); Bose (Fed. Cir. 03/14/14) (non-precedential) (aff’g narrow construction, original claim covered both embodiments but amended claim did not). But see Roche Diagnostics (Fed. Cir. 09/22/16) (non-precedential) (aff’g narrow construction based on definition in Spec., finding embodiments outside that definition to be unclaimed embodiments).
  • Construe To Preserve Validity [Disfavored]: Rejecting patent owner attempt to construe term more broadly than its well-accepted scientific meaning, in part because the broader construction would raise “grave doubts” of invalidity under Sec. 112(a). Bayer Cropscience (Fed. Cir. 09/03/13); Intellectual Ventures (Motorola) (Fed. Cir. 09/13/17) (aff’g denial of written description invalidity JMOL; in view of Spec. distinctions over prior art, “the proper result is not that claim 41 fails for lack of written description but that it should be construed ‘in view of the specification’ to be limited.”); Power Integrations (Fed. Cir. 09/20/18) (“construction of ‘fixed switching frequency’ as ‘non-varying’ does not exclude the possibility of natural variation because doing so would impermissibly render the claims inoperable.”); Ruckus Wireless (Fed. Cir. 05/31/16) (2-1) (“If, after applying all other available tools of claim construction, a claim is ambiguous, it should be construed to preserve its validity. Because the specification makes no mention of wireless communications, construing the instant claims to encompass that subject matter would likely render the claims invalid for lack of written description.”); Takeda (Fed. Cir. 02/20/14) (dictum: will adopt narrower meaning “‘[w]here there is an equal choice between a broader and a narrower meaning of a claim, and there is an enabling disclosure that indicates that the applicant is at least entitled to a claim having the narrower meaning.”); Howmedica (Fed. Cir. 05/12/16) (citing possible indefiniteness concern if did not limit claim-recited outcome to particular technique described in written description). Contra Hill-Rom (Fed. Cir. 06/27/14) (2-1) (“Courts should be cautious not to allow claim construction to morph into a mini-trial on validity. Claim terms should be given their plain and ordinary meaning to one of skill in the art at the relevant time and cannot be rewritten by the courts to save their validity.”); Tempo (Fed. Cir. 02/10/14) (“the Board properly avoided the circularity inherent in any attempt to construe claims with an eye to preserving their validity, a doctrine of ‘limited utility,’” but also noting unlikely claim invalid as construed for lack of written description); see Atlas v. St. Jude (Fed. Cir. 10/29/15) (broader claim construction not shown to render claimed invention inoperable).
  • Construction Reflecting Structure And Punctuation Of Claim: Each step in claim is “offset by semicolons. This punctuation choice strongly indicates that each step is separate and distinct. It would, therefore, be reasonable to conclude the fourth and fifth steps—the sending steps—are not … performed ‘in response to’ the same request found in the [third] ‘making . . . available’ step.” In re Affinity Labs. (Fed. Cir. 05/05/17) (and “comprising” transition “signals that the breadth of [the claim] allows for additional steps interleaved between the recited steps.”)
  • Relevant Time Period Is Effective Filing Date (Or Invention Date): “The scientific meaning of ‘IFN-α’ evolved with new discoveries. Specifically, the scientific community learned that leukocytes produce more than a single interferon polypeptide. The term as used in the ‘901 patent, however, did not and could not enlarge the scope of the patent to embrace technology arising after its filing. Rather the term ‘IFN-α’ in the patent has a specialized meaning limited to the particular leukocyte interferon that Dr. Weissmann supported in his original application. In sum, this court must determine what the term meant at the time the patentee filed the ‘901 application.” Schering (Fed. Cir. 08/01/00). “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 of the invention, i.e., as of the effective filing date of the patent application.” Phillips (Fed. Cir. 07/12/05) (en banc); Advanced Media (Fed. Cir. 09/17/18) (non-precedential) (affirming construction limting “‘ethernet packet switching protocol’ to mean ‘a packet switching protocol defined by the IEEE 802.3 and draft IEEE 802.11 standards as of the filing date of the Patent.’”).
  • May Consider Accused Technology But Not Construe Claim In Light Thereof: “A claim is construed in the light of the claim language, the other claims, the prior art, the prosecution history, and the specification, not in light of the accused device. [C]laims are not construed ‘to cover’ or ‘not to cover’ the accused device. That procedure would make infringement a matter of judicial whim. It is only after the claims have been construed without reference to the accused device that the claims, as so construed, are applied to the accused device to determine infringement.” SRI Int’l (Fed. Cir. 10/16/85) (en banc). Cohesive 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.”)
  • Some Parallels To Statutory Interpretation And Contract Interpretation Construction, Including Importance Of Context: “There is a canon of construction: ‘the general assumption is that different terms have different meanings.’ This canon is certainly employed in both statutory interpretation and claim construction. In fact, many of the canons of statutory construction apply equally when interpreting patent claims.”) PPC Broadband I  (2015-1361) (Fed. Cir. 02/22/16). The construction of a patent claim is more akin to the construction of deeds and contracts than to the construction of a statute. Teva Pharm. II (U.S. 01/20/2015) (7-2). Cf. Artis (U.S. 01/22/2018) (5-4) (“District offers no reason why, in interpreting ‘tolled’ as used in § 1367(d), we should home in only on the word itself, ignoring the information about the verb’s ordinary meaning gained from its grammatical object. Just as when the object of ‘tolled’ is ‘bell’ or ‘highway traveler,’ the object ‘period of limitations’ sheds light on what it means to ‘be tolled.’”); King (U.S. 06/25/2015) (declining to give the statutory phrase “the State that established the Exchange” “its most natural meaning”: “‘But often­times the ‘meaning—or ambiguity—of certain words or phrases may only become evident when placed in context.’. So when deciding whether the language is plain, we must read the words ‘in their context and with a view to their place in the overall statutory scheme.’”); Liqwd (Fed. Cir. 01/16/18) (non-precedential) (“Context is central in claim construction”); Towne (U.S. 1918) (statutory interpretation: “A word is not a crystal, transparent and unchanged, it is the skin of a living thought and may vary greatly in color and content according to the circumstances and the time in which it is used.”)

b) role of other claims

  • Claim Differentiation: “[T]he 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.” Phillips (Fed. Cir. 07/12/05) (en banc). Under claim differentiation, there is an “especially strong” presumption that an independent claim does not require a limitation that is “the only meaningful difference” between that claim and its dependent claim; otherwise the dependent claim would be superfluous. Interdigital (Fed. Cir. 08/01/12) (2-1) (rev’g narrow construction); VirnetX (Fed. Cir. 09/16/14) (aff’g broad construction); SRI Int’l (Fed. Cir. 10/16/85) (en banc) (“It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”); see Cioffi (Fed. Cir. 11/17/15) (non-precedential) (rev’g construction as rendering language in a dependent claim superfluous, and claim differentiation not overcome by clear disavowal in prosecution). Hayward Indus. (Fed. Cir. 02/26/18) (non-precedential) (rev’g PTAB claim construction; construing drive to mean “variable speed drive” would render superfluous part of dependent claim reciting “wherein the drive is a variable speed drive”). But, “claim differentiation is not a rigid rule and it cannot overcome a construction required by the prosecution history.” TecSec (Fed. Cir. 10/02/13) (aff’g narrow construction based on remarks in prosecution); Cardsoft (Fed. Cir. 12/02/15) (cannot override clear meaning based on Spec. and prosecution); Howmedica (Fed. Cir. 05/12/16) (same); Indacon (Fed. Cir. 06/06/16) (declining to apply claim differentiation between independent claims “not otherwise identical in scope”); Atlas (Medtronic) (Fed. Cir. 10/29/15) (rejecting claim differentiation argument based on other independent claims); Interdigital (Fed. Cir. 02/18/15) (non-precedential) (“principles of claim differentiation are often of limited use where … one is comparing two independent claims.”). The doctrine of claim differentiation “is not as strong across related patents.” Clare (Fed. Cir. 03/31/16) (one patent reciting “substantially external appearance” (as conventional pickup truck) does not mean other patent’s recitation of “external appearance” means identical appearance).
  • Construing Independent Claim To Encompass What Is Claimed In Its Dependent Claim: Assuming compliance with Sec. 112(4/d), an independent claim ought to be construed broadly enough to encompass (permit) what is recited in its dependent claim. Spineology (Fed. Cir. 07/06/18) (non-precedential) (rejecting construction that would cause term “body” to have different meaning in dependent claims). But see Enzo II (Fed. Cir. 03/16/15) (2-1) (first reading independent claim narrowly to require “indirect” detection and not encompassing direct detection (where some dependent claims recited direct detection), and then: “as claim 1 is limited to indirect detection by its own plain meaning, it would be inappropriate to use the doctrine of claim differentiation to broaden claim 1 to include a limitation imported from a dependent claim, such as direct detection.”); Cave Consulting (Fed. Cir. 03/21/18) (Lourie, J.) (non-precedential) (rev’g infringement verdict and $12.3 million verdict, for overly broad claim construction encompassing both indirect and direct standardization; a finding of disclaimer is not required where “the description of the invention itself is affirmatively limiting, and is without any indication that direct standardization is within the scope of the invention,” despite nine dependent claims having been added during prosecution to recite the “direct standardization” feature the independent claims, correctly construed, exclude.)

c) role of specification

  • Which Governs? The Claim Or The Invention Or Both?
    • Rader, J.: The Name Of The Game Is The Claim: “The concurrence-in-part and dissent-in-part characterizes the specification as the ‘heart of the patent’ and, using ‘colloquial terms,’ states that ‘you should get what you disclose.’ This devalues the importance of claim language in delimiting the scope of legal protection. ‘Claims define and circumscribe, the written description discloses and teaches.’ To use a colloquial term coined by Judge Rich, ‘the name of the game is the claim.’ Indeed, unclaimed disclosures are dedicated to the public.” Arlington Indus. (Fed. Cir. 01/20/11) (Rader, J.) (citations omitted) (Lourie, J. dissenting in part); accord Retractable Tech. (Fed. Cir. 10/31/11) (Moore, J. (joined by Rader, J.) dissent from denial of rehearing en banc) (“If the metes and bounds of what the inventor claims extend beyond what he has invented or disclosed in the specification, that is a problem of validity, not claim construction. It is not for the court to tailor the claim language to the invention disclosed.”); Ancora (Fed. Cir. 03/03/14) (rejecting indefiniteness defense: “the terms at issue have so clear an ordinary meaning that a skilled artisan would not be looking for clarification in the specification.”); accord Cioffi (Fed. Cir. 11/17/15) (non-precedential) (“if there is a well-understood meaning for a term in the art, we do not allow a few inconsistent references in the specification to change this meaning. This is because, if the terms at issue have ‘so clear an ordinary meaning[,] a skilled artisan would not be looking for clarification in the specification.’”); AIP Acquisition (Fed. Cir. 11/30/17) (non-precedential) (refusing to limit “internet protocol” and “Internet protocol” to “IP” part of Internet’s TCP/IP protocol, in part because applicant did not capitalize the “i” and the “p” in the claim, despite having referenced TCP/IP in Spec.: “A patent’s claims are ‘of primary importance[] in the effort to ascertain precisely what it is that is patented.’”).
    • Moore, J.: Only Two Exceptions to Plain Meaning: There is “a ‘heavy presumption’ that claim terms carry their accustomed meaning in the relevant community at the relevant time.” Home Diagnostics (Fed. Cir. 08/31/04); accord Azure (Fed. Cir. 11/06/14) (2-1) (rev’g narrower construction); Advanced Media (Fed. Cir. 09/17/18) (non-precedential) (per heavy presumption, affirming construction limting “‘ethernet packet switching protocol’ to mean ‘a packet switching protocol defined by the IEEE 802.3 and draft IEEE 802.11 standards as of the filing date of the Patent.’”) “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal. The standards for finding lexicography and disavowal are exacting.” Hill-Rom (Fed. Cir. 06/27/14) (Moore, J., 2-1) (rev’g narrow construction; summarizing past disclaimer cases); accord Intellectual Ventures (T Mobile) (Fed. Cir. 09/04/18) (Moore, J.) (rev’g finding of disavowal in prosecution history under “exacting standard”); Poly-America (Fed. Cir. 10/14/16) (aff’g narrow construction based on patent’s title, abstract, statements re “invention,” disparaging prior art lacking feature; every embodiment has feature; prosecution statements, etc.; “the standard for disavowal is exacting, requiring clear and unequivocal evidence that the claimed invention includes or does not include a particular feature”); Sumitomo (Fed. Cir. 04/16/18) (aff’g infringement judgment; Spec. “neither defines claim[cor’s] structure as Compound No. 101 nor disclaims scope in a way that confines claim 14 to a racemic mixture.”); Skedco (Fed. Cir. 04/24/17) (non-precedential) (vacating non-infringement Summ. J.; “‘[I]t is the claims, not the written description, which define the scope of the patent right.’ Patents do not need to include drawings of particular embodiments in order to claim them.”); Unwired Planet (Fed. Cir. 07/22/16) (Moore, J.) (rev’g narrow construction of “voice input” and instead adopting its “plain meaning;” reference to “present invention” in first sentence of summary of invention does not constitute clear, unmistakable disavowal for everything in that paragraph); Info-Hold (Fed. Cir. 04/24/15) (Reyna, J.) (rev’g narrow construction: “Nothing in the word ‘transmit’ suggests a limitation on initiation: there is no linguistic ambiguity to resolve.”); Pacing Tech. (Fed. Cir. 02/18/15) (Moore, J.) (Spec. statement: “‘[t]hose [19 objects of the invention] and other objects and features of the present invention are accomplished, as embodied and fully described herein, by a repetitive motion pacing system that includes . . . a data storage and playback device adapted to producing the sensible tempo,’” constitutes a clear disclaimer of an invention lacking that feature); GE Lighting (Fed. Cir. 05/01/14); Vehicle IP (Fed. Cir. 11/18/14) (non-precedential) (rev’g narrow construction: “In order to disavow claim scope, the specification must make clear that the invention does not include a particular feature otherwise within the scope of the claim term.”); Thorner (Fed. Cir. 02/01/12) (Moore, J.) (“To constitute disclaimer, there must be a clear and unmistakable disclaimer.”); Aventis Pharma (Fed. Cir. 04/09/12) (Prost, J.) (“stringent standard for narrowing a claim term beyond its plain and ordinary meaning”); Toshiba (Fed. Cir. 06/11/12) (Moore, J.) (“Absent disclaimer or lexicography, the plain meaning of the claim controls.”); Cephalon (Fed. Cir. 06/17/15) (Wallach, J.) (non-precedential) (aff’g construction based on well-accepted meaning of the term in the art; “the lexicography exception requires the patent drafter to ‘clearly set forth a definition of the disputed claim term.’”); Akamai Tech. V (Fed. Cir. 11/16/15) (“a claim term is only given a special definition different from the term’s plain and ordinary meaning if the ‘patentee . . . clearly set[s] forth a definition of the disputed claim term other than its plain and ordinary meaning.’ A patentee can also disavow claim scope, but the standard ‘is similarly exacting.’”) (Citation omitted); Straight Path (Fed. Cir. 11/25/15) (2-1) (rev’g PTAB’s broader BRI in IPR; “redefinition or disavowal is required where claim language is plain, lacking a range of possible ordinary meanings in context”); see HBAC Matchmaker (Fed. Cir. 05/31/16) (non-precedential) (rev’g narrow construction of “head end system” (not used in Spec.) as limited to television systems (as in all embodiments), relying in large part on extrinsic evidence trial court had not cited, and noting that Spec. does not disclaim head end system used with Internet; while also noting that the “overall scope of the invention” may be limited to television systems raising a written description or enablement issue); Vederi (Fed. Cir. 03/14/14) (Rader, J.) (statement in Spec. did not “give rise to a clear and unmistakable disavowal.”), CVSG (U.S. 01/12/2015). But see Clare (Fed. Cir. 03/31/16) (Moore, J.) (“there is no way to read” “does not alter the external appearance of the truck” as requiring an identical appearance because Spec. disclosed only non-identical embodiments); Trustees of Columbia (Fed. Cir. 02/02/16) (Dyk, J.) (aff’g narrow construction based on essentially definitions in Spec., despite acontextual plain meaning, despite one contrary sentence in Spec., and despite rendering two claims non-sensical; rejecting “heavy presumption” in favor of acontextual “plain” meaning, citing Phillips: “The only meaning that matters in claim construction is the meaning in the context of the patent.” But, “the specification plays a more limited role where claim language has so ‘plain a meaning on an issue’ that it ‘leav[es] no genuine uncertainties on interpretive questions relevant to the case.’”); GPNE (Fed. Cir. 08/01/16) (Prost, C.J.) (aff’g narrow construction of “device” as being a pager in view of consistent disclosure in the Spec.; quoting “only meaning that matters” phrasing); Bose (Fed. Cir. 03/14/14) (non-precedential) (Clevenger, J.) (aff’g narrow construction based on usage in Spec., and claim amendments). Note: some in this line of cases arguably disregards that “plain meaning” determined only after reading patent.
    • S. Ct.; Plager, J.: Both Invention And Claim Language Limit Claim Scope: “An inventor is entitled to claim in a patent what he has invented, but no more. He can, however, claim less, to avoid prior art or for any other reason. Therefore, in construing a claim there are two limiting factors—what was invented, and what exactly was claimed.” MySpace (Fed. Cir. 03/02/12); U.S. v. Adams, 383 U.S. 39, 48-49 (1966) (“While the claims of a patent limit the invention, and specifications cannot be utilized to expand the patent monopoly, it is fundamental that claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention.”) (Citations omitted); McClain (U.S. 11/02/1891) (“The claim is the measure of his right to relief, and while the specification may be referred to to limit the claim, it can never be made available to expand it.”) But see U.S. Ethernet (Acer) (Fed. Cir. 04/25/16) (non-precedential) (aff’g broad construction and Summ. J. of anticipation; statements in Spec. “purporting to define the invention are inapposite without language in the claims indicating a desire to claim the teachings disclosed,” where claim language indicates that capability touted in Spec. is not required, even if 9 of 10 experts construed the claim narrowly.)
    • Lourie, J.; Dyk, J., CJ Prost: Capture The Scope Of The Actual Invention: “In reviewing the intrinsic record to construe the claims, we strive to capture the scope of the actual invention, rather than strictly limit the scope of claims to disclosed embodiments or allow the claim language to become divorced from what the specification conveys is the invention.” Retractable Tech. (Fed. Cir. 07/08/11) (Lourie, J.); accord TF3 Ltd. (Fed. Cir. 07/13/18) (rev’g PTAB anticipation finding as based on construing “the claims more broadly than the description in [the] specification, thereby enlarging the claims beyond their correct scope,” in part because Spec. used “i.e.” to define claim language);  In re Smith (Fed. Cir. 09/26/17) (Lourie, J.) (“The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is ‘consistent with the specification.’”); Wi-Fi One (Fed. Cir. 04/18/18) (2-1) (aff’g PTAB anticipation; “Even though the language of claim 15, standing alone, provides some support for Wi-Fi’s interpretation, we hold that in the end the claim must be read as the Board construed it in order to be faithful to the invention disclosed in the specification.”); Cave Consulting (Fed. Cir. 03/21/18) (Lourie, J.) (non-precedential) (rev’g infringement verdict and $12.3 million verdict, for overly broad claim construction encompassing both indirect and direct standardization; a finding of disclaimer is not required where “the description of the invention itself is affirmatively limiting, and is without any indication that direct standardization is within the scope of the invention,” despite nine dependent claims having been added during prosecution to recite the “direct standardization” feature the independent claims, correctly construed, exclude); In re Power Integrations (Fed. Cir. 03/19/18) (Mayer, J.) (rev’g PTAB BRI construction, based on dictionary definition, as too broad; plain claim language and all embodiments and purpose of alleged invention require counter to itself directly cause the recited function without an intervening memory, even though Spec. does not expressly preclude PTAB’s BRI); Core Wireless (Fed. Cir. 04/14/17) (Bryson, J.) (aff’g non-infringement verdict: “The problem with [the patent owner’s claim-construction] theory is that the entire point of the invention is to enable the mobile station to make the channel selection decision in order to minimize traffic between the mobile station and the network;” citing to Abstract, summary of the invention, all embodiments, prosecution history, and extrinsic invention disclosure and inventor presentation); The Medicines Co. III (Mylan) (Fed. Cir. 04/06/17) (Dyk, J.) (rev’g trial court’s broader construction; restricting claim to specific process (and specific disclosed example thereof) for achieving claimed result, in part because Spec. “teaches efficient mixing as a necessary and sufficient condition for achieving batch consistency.” “Divorcing efficient mixing from the batches limitation would also have the impermissible result of ‘extend[ing] [Medicines’] monopoly beyond the invention’ disclosed, and potentially to the prior art.” “The patentee’s construction of ‘efficient mixing’ thus attempts to claim all solutions to the identified ‘impurities’ problem, without describing the entire range of solutions to that problem. Medicines’ construction is therefore not permissible.”); Micrografx (Fed. Cir. 11/29/16) (Dyk, J.) (non-precedential) (rev’g PTAB broad construction, based in part on Spec. description of “‘several technical advantages’ of the ‘invention.’”); Ruckus Wireless (Fed. Cir. 05/31/16) (2-1) (construing “communications path” to be limited to wired path, because (1) title so limited, (2) Spec. reference to “invention” so limited, (3) Spec. statement of alternate embodiments so limited, (4) no evidence that ordinary meaning broader, (5) no showing that purpose of invention would evoke wireless in mind of skilled artisan, and (6) broader construction likely render claim invalid for lack of written description support); UltimatePointer (Fed. Cir. 03/01/16) (Lourie, J.) (“argument that a court may only deviate from the ordinary meaning when there is an explicit definition or disclaimer does not apply because the ordinary meaning of ‘handheld device,’ when read in the specific context of the specification of the ’729 patent, is limited to a direct-pointing device.”); Eon (Fed. Cir. 02/29/16) (C.Prost, J.) (2-1) (construing terms “portable” and “mobile” narrowly to be consistent with Spec.’s description of the invention); Sealant (Fed. Cir. 06/11/15) (Wallach, J.) (non-precedential) (hose “cooperating with” tire construed to require direct connection to tire because Spec. does not indicate any other way for hose to cooperate with the tire; with trial court’s broader construction “the patent would claim more than the patentee actually invented.”); World Class (Fed. Cir. 10/20/14) (claim ambiguous on face but only one interpretation consistent with disclosed invention); Gemalto (Fed. Cir. 06/19/14) (Dyk, J.) (aff’g narrow construction based on purpose of invention and distinctions over prior art: “Of course, ‘the claims cannot be of broader scope than the invention that is set forth in the specification.’”); Parallel Networks I (Fed. Cir. 01/16/13) (“Notwithstanding the potential breadth of the phrase ‘associated with,’ it is clear that the patent teaches an applet containing both the data and the functionality when the applet is generated.”); MarcTec (Fed. Cir. 01/03/12) (“Because the specification and prosecution history clearly refute MarcTec’s proposed claim construction, the district court did not err in finding that MarcTec’s infringement claims were objectively baseless” even though court’s construction “might render some language in [a dependent claim] superfluous.”; aff’g fees and expenses award against patent owner, of $4,683,653.03); Eon-Net (Fed. Cir. 07/29/11) (aff’g award of attorney fees and R. 11 sanctions based in large part on NPE plaintiff’s claim construction being contrary to description of the “invention” in the written description.); Lexington (Fed. Cir. 02/09/15) (non-precedential) (rev’g construction based on general dictionaries). But, this principle can be used to broaden claims as well. Papst Licensing (Fed. Cir. 02/02/15) (rev’g Summ. J. of non-infringement, and rev’g five constructions, based in part on alleged restriction not being described as necessary to patent’s stated advance over the prior art: “We apply, in particular, the principle that ‘[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.’”); cf. Vasudevan Software (Fed. Cir. 04/03/15) (“plain and ordinary meaning” of term “disparate databases” leaves indeterminate how incompatible they must be; so need to look to prosecution history).
    • Plager, J.: Necessary To Limit Claim To Technique Described In Written Description To Resolve Uncertainty Over How Claimed Result Is Achieved: Claim to a socket assembly used in prosthetic hip implants recited recess and taper of a shell be “juxtaposed” and “placed at relative locations such that the effectiveness” of each is “maintained while in the presence of the other,” but “do not describe how to achieve this outcome.” CIP added this claim language along with description of (only) one way to achieve the claimed outcome. Necessary to limit claim language to that particular technique to resolve parties’ dispute as to meaning of otherwise unclear claim terms, despite some dependent claims reciting that technique. Howmedica (Fed. Cir. 05/12/16).
  • Does Court Always Need To Consider Spec. For Context?:
    • Yes: Phillips (Fed. Cir. 07/12/05) (en banc) seemed to answer this with an unmistakable Yes (“the ‘ordinary meaning’ of a claim term is its meaning to the ordinary artisan after reading the entire patent”); accord Markman (U.S. 04/23/1996) (“the standard construction rule that a term can be defined only in a way that comports with the instrument as a whole”); Secure Axcess (Fed. Cir. 02/21/17) (patent does not claim a “covered business method”: “A claim in a patent does not live in isolation from the rest of the patent, as if it can be cut out of the document and read with Webster’s Dictionary at hand. Established patent doctrine requires that claims must be properly construed—that is, understood in light of the patent’s written description; that is a fundamental thesis in claim construction.”), vacated as moot (U.S. 05/14/2018); Cloud Farm (Fed. Cir. 01/09/17) (Clevenger, J.) (non-precedential) (aff’g narrow construction of “seal” based on ordinary meaning in context of patent); Profectus (Fed. Cir. 05/26/16) (aff’g narrower construction of “mountable” as “having a feature for mounting” rather than “capable of mounting;” “the feature must be a standalone inherent feature in the device. It is not enough that the feature is ‘just a feature that could potentially render the frame or display capable of being mounted.’”: “we first look to the actual words of the claims and then read them in view of the specification”); Tristrata (Fed. Cir. 12/04/14) (non-precedential) (aff’g narrow construction; important to consider written description before considering dictionaries); Straight Path (Fed. Cir. 11/25/15) (Dyk, J., dissenting) (even when claim appears clear on its face, the court must consult the specification); Eon (Fed. Cir. 02/29/16) (2-1) (reversing denial of JMOL of non-inf’t and giving narrow construction: “question is not whether there is a settled ordinary meaning of the terms in some abstract sense of the words”; “only meaning that matters in claim construction is the meaning in the context of the patent”; criticizing dissent’s acontextual reliance on dictionaries); cf. Nat’l Ass’n Home Builders (U.S. 06/25/2007) (“‘[t]he meaning—or ambiguity—of certain words or phrases may only become evident when placed in context…. It is a ‘fundamental canon of statutory construction that the words of a statute must be read in their context and with a view to their place in the overall statutory scheme.’”). See 35 U.S.C. § 154(a) (patent shall include grant of right to exclude certain actions related to the “invention,” “referring to the specification for the particulars thereof.”)
    • No?: But, many panels still say or imply No, sometimes citing pre-Phillips authority: “In construing a claim term, we look to the words of the claim itself. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). If the claim term has a plain and ordinary meaning, our inquiry ends. Id. If, however, the claim term does not have an ordinary meaning, and its meaning is not clear from a plain reading of the claim, ‘we turn to the remaining intrinsic evidence, including the written description, to aid in our construction of that term.’” Power Integrations (Fed. Cir. 03/26/13) (second citation omitted); accord ContentGuard (Apple) (Fed. Cir. 07/12/17) (non-precedential) (“Because the claim language is not dispositive as to the meaning of the usage right limitation, we turn to the specification.”); Cioffi (Fed. Cir. 11/17/15) (non-precedential) (“if the terms at issue have ‘so clear an ordinary meaning[,] a skilled artisan would not be looking for clarification in the specification.’”); Atlas (Medtronic) (Fed. Cir. 10/29/15) (trial court wrong that claim had “decisive plain meaning,” and “contextual considerations point compellingly” against trial court’s construction; imprecision in claim language creates “need for context-based interpretation”); Creative Integrated (Fed. Cir. 06/03/13) (“The district court could have ended its analysis with the plain language”) (non-precedential); VirnetX (Fed. Cir. 09/16/14) (“there is no dispute that the word ‘secure’ does not have a plain and ordinary meaning in this context, and so must be defined by reference to the specification.”); see 3M Innovative (Fed. Cir. 08/06/13) (first deciding “ordinary meaning,” “read to give full effect to the claim language,” and only then analyzing written description, for some claim terms); Belden (Fed. Cir. 04/17/15) (non-precedential) (aff’g Board construction: “the specification does not recite, much less define, ‘channels.’ The dictionaries thus provide an adequate starting point.”) Cf. Lighting Ballast II (Fed. Cir. 02/21/14) (en banc) (6-4) (“the meaning a person of ordinary skill in the art would give a term at the time of the filing of the patent application . . . is not a question of fact; it is the very inquiry which determines the claim construction in nearly all cases. Claim terms are given their ordinary meaning to one of skill in the art, unless the patent documents show that the patentee departed from that meaning.”), vacated ivo Teva (U.S. 01/26/2015), on remand Lighting Ballast III (Fed. Cir. 06/23/15) (aff’g trial court’s claim construction that claim term did not trigger Sec. 112(6/f) and claim is not indefinite).
  • Generally, Do Not Limit Claim To Preferred Embodiment: Laryngeal (Fed. Cir. 09/21/10) (“we do not generally limit claims to the preferred embodiment.”); Kara Tech. (Fed. Cir. 09/24/09) (reversing narrow construction and vacating non-infringement decision: “the claims, not specification embodiments, define the scope of patent protection. The patentee is entitled to the full scope of his claims, and we will not limit him to his preferred embodiment or import a limitation from the specification into the claims.”); WesternGeco (Fed. Cir. 05/07/18) (aff’g PTAB construction; rejecting proposed narrower construction specifying a particular way of performing the function, as based on preferred embodiment).
  • Governing Spec. Is The Issued Spec. Not Predecessor Application: Even though ordinary meaning is measured as of effective filing date, “the relevant specification for claim construction purposes is that of the issued patent, not an early version of the specification that may have been substantially altered throughout prosecution.” Sun Pharm. (Fed. Cir. 07/28/10) (CIP patent claims’ entitlement to earlier application’s filing date was undisputed); WI-LAN (Fed. Cir. 08/01/16) (dismissing patent owner (seeking broader claim construction) reliance on embodiment supposedly disclosed in provisional but not disclosed in issued Spec.); MPHJ (Fed. Cir. 02/13/17) (2-1) (aff’g PTAB’s broad construction that certain actions need not occur in single step; skilled artisan would deem significant the removal of limiting (single step) language in provisional from the non-provisional issued Spec. (dissent notes that provisional was incorporated by reference into issued Spec.)).
  • Spec. Description Of “Invention” May Limit Claim: “When a patent ‘describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.’” Rembrandt Patent (Fed. Cir. 11/22/17) (non-precedential) (aff’g construction that claims require recovery be automatic, even though claims read in isolation do not indicate that, primarily based on Spec. (including Abstract, Field of the Invention, and Summary of the Invention) describing this as feature of the “invention” and disparaging prior art requiring manual recovery.); Bondyopadhyay (Fed. Cir. 09/07/18) (non-precedential) (aff’g non-infringement based on “present invention” description of claim term “sphere” as being at least a hemisphere); GLG Farms (Fed. Cir. 08/02/18) (non-precedential) (aff’g Summ. J. non-infringement; describing “present invention” as placing drive assemblies between end walls disclaims any other location); Leseman (Fed. Cir. 04/18/18) (non-precedential) (aff’g no infringement; “Spec.’s use of ‘present invention’ language to distinguish its extrusion die from those that require retooling or replacement … is strong evidence that the claims should not be read to cover such retooling or replacement.”); TecSec (Fed. Cir. 08/18/16) (non-precedential) (aff’g narrow construction based on Spec.: “’A file ‘label’ for purposes of this invention means ….’”); GPNE (Fed. Cir. 08/01/16) (aff’g narrow construction based primarily on single sentence in Detailed Description stating: “Thus, the invention provides a two-way paging system which operates independently from a telephone system ….”); Simpleair (Fed. Cir. 04/01/16) (rev’g trial court’s construction: construing claim to conform to Spec.’s description of the “invention”); UltimatePointer (Fed. Cir. 03/01/16) (aff’g “handheld device” limited to direct pointing device because Spec. repeatedly extols direct pointing and repeatedly disparages indirect pointing devices, and title of the Spec. referred to “direct pointing”); Indacon (Fed. Cir. 06/06/16) (aff’g narrow construction of “custom link” that every instance of a word must include a link because claim term had “no plain or established meaning to one of ordinary skill in the art” and, as such, “ordinarily cannot be construed broader than the disclosure in the specification”); Tristrata (Fed. Cir. 12/04/14) (non-precedential) (aff’g narrow construction; statement “in accordance with this invention” in “summary of the invention” is strong indication that limitation applies to invention not just embodiment); VirnetX (Fed. Cir. 09/16/14) (“The fact that the Summary of the Invention gives primacy to these attributes strongly indicates that the invention requires more than just data security.”); AstraZeneca (Fed. Cir. 12/19/13) (non-precedential) (clear disclaimer where Abstract and Detailed Description (referring to “present invention”) limited salts to six particular salts; and claim differentiation cannot override that disclaimer); “While nothing on the face of the asserted claims stated that the term ‘composite composition’ is limited to a mixture that is in pellet or linear extrudate form, the specifications [statements about the invention] make clear that the term . . . must be construed to be limited in that manner.” Andersen Corp. (Fed. Cir. 01/26/07); Verizon (Fed. Cir. 09/26/07) (“Thus, in one aspect, the present invention relates to a localized wireless gateway system. The gateway compresses and decompresses voice frequency communication signals and sends and receives the compressed signals in packet form via the network” — “limited scope of claim reciting a localized wireless gateway system.”); accord Lydall (Fed. Cir. 09/08/09) (“[the application’s] consistent description of ‘the present invention’ as including a three-layered batt makes clear that the claimed ‘fibrous batt of fibers’ must have three layers, an insulating layer sandwiched between two binding layers.”); Catch Curve (Fed. Cir. 01/22/10) (non-precedential) (aff’g Summ. J. of no infringement: “merely omitting [in a claim] a step in a described process does not perforce expand the scope of the claim to encompass the use of devices that are nothing like those described in the specification as integral to the invention.”); Trading Techs. (Fed. Cir. 02/25/10) (“This reference to ‘the present invention’ [in the Spec.] strongly suggests that the claimed re-centering command requires a manual input, specifically, a mouse click.”); Akamai Tech. I (Fed. Cir. 12/20/10) (narrow claim construction requiring a feature was compelled by patent’s description of the “invention” as including that feature, even if prosecution history suggested (which it did not) a broader construction) (vacated by en banc order 04/21/11); Am. Calcar (Fed. Cir. 06/27/11) (based on statements in Spec., “the messages claimed … have to be in a format of <vehicle-id>@<domain>.”); Retractable Tech. (Fed. Cir. 07/08/11) (although claims leave open possibility that “body” need not be one piece, “the specifications tell us otherwise” by reciting that “the invention” has single structure, distinguishing prior art on this basis, and disclosing only single-piece body) (2-1, Rader, J. dissenting); Eon-Net (Fed. Cir. 07/29/11) (aff’g narrow construction and award of fees against plaintiff, in part due to unreasonable claim construction position: “The written description repeatedly and consistently defines the invention as a system that processes information derived from hard copy documents.” And “because the written description clearly refutes Eon-Net’s claim construction, the district court did not clearly err in finding that Eon-Net pursued objectively baseless infringement claims.”); Marine Polymer (Fed. Cir. 03/15/12) (en banc, opinion of court, equally divided 5-5) (aff’g narrower construction based on description of “invention,” despite conflict with claim differentiation); Rembrandt Tech. (Fed. Cir. 09/13/12) (aff’g narrow construction based on “present invention” language) (non-precedential); Accentra (Fed. Cir. 01/04/13) (based on “present invention” language, “specification makes it clear that the automatic opening feature is central to the invention of that patent”) (non-precedential); Regents Univ. of Minn. (Fed. Cir. 06/03/13) (aff’g construction requiring a feature found in all embodiments and linked in Spec. to “present invention”); Luminara (Fed. Cir. 02/29/16) (Moore, J.) (rev’g preliminary injunction; by Spec. “teaching that the ‘present description’ solves the problems associated with the prior art candle devices because it is driven by ‘real but chaotic movements,’” patentee disclaimed devices that lack chaotic pivoting). But see Blackbird (Fed. Cir. 07/16/18) (Moore, J.) (2-1) (rev’g narrow construction reading in second fastener despite it being mentioned in Summary of the Invention: “In cases where we have held limitations ought to be read in, it was not simply because those limitations appeared in the Summary of the Invention…. Without any evidence that the fastener is important, essential, or critical to the invention, it should not be read in as a claim limitation.”); Fenf (Fed. Cir. 02/06/15) (non-precedential) (term “present invention” used here to refer to individual embodiments not to limit scope of invention); AstraZeneca (Fed. Cir. 10/30/13) (non-precedential) (refusing to limit non-process claims to description of process “invention” in Spec.: “statements with respect to ‘the invention’ are ambiguous at best, given the three distinct types of inventions (processes, products, and methods of use) described in the specification”); Absolute Software (Fed. Cir. 10/11/11) (describing circumstances where Spec. tying feature to the “present invention” will not read the feature into the claim, e.g., where patent elsewhere refers to the feature as being optional); Creative Integrated (Fed. Cir. 06/03/13) (non-precedential) (“invention” language did not narrow claims where patent disclosed multiple different improvements, referring to each as the “invention”).
  • Spec. May Show Applicant Acting As Own Lexicographer: Rejecting ordinary meaning of claim term where that ordinary meaning would render self-contradictory the written description’s only statement using that claim term, and where “ordinary meaning” construction would render claim invalid for inoperability. AIA Eng’g (Fed. Cir. 08/31/11); Skinmedica (Fed. Cir. 08/23/13) (2-1) (Spec. redefined claim term and disclaimed its ordinary meaning; “In a specification, a patentee’s use of ‘i.e.’ signals an intent to define the word to which it refers.”) (Citation omitted); see also Rembrandt Wireless (Fed. Cir. 04/17/17) (“A patentee’s use of ‘i.e.,’ in the intrinsic record … is often definitional.”); but see The Medicines Co. III (Mylan) (Fed. Cir. 04/06/17) (rejecting patent owner’s reliance on statement in Spec. as being definitional because it deviated from Spec.’s form defining other terms, namely “the defined term in quotation marks, followed by the terms ‘refers to’ or ‘as defined herein,’” and therefore lacked “clear expression of intent”); Los Angeles Biomedical (Fed. Cir. 02/28/17) (rejecting narrower construction: “If an applicant intends to ascribe a meaning to a claim term different from its ordinary meaning, he must ‘set out the different meaning in the specification in a manner sufficient to give one of ordinary skill in the art notice of the change from ordinary meaning.’”); Thorner (Fed. Cir. 02/01/12) (an “‘implied’ redefinition must be so clear that it equates to an explicit one”); Butamax II (Fed. Cir. 02/18/14) (Spec.’s express definition of claim term did not clearly disclaim the term’s (broader) ordinary meaning), vacated and remanded ivo Teva (U.S. 01/26/2015); Nestle (Fed. Cir. 05/09/17) (non-precedential) (vacating PTAB claim construction (“aseptic” means “aseptic to any applicable United States FDA standard, and in the absence of any such standard, aseptic assumes its ordinary meaning of free or freed from pathogenic microorganisms”) and non-obviousness decision, where Spec. defined term to mean “FDA level of aseptic”; one error was applying both lexicography and plain meaning at same time: “a claim term cannot mean different things simultaneously. A patentee cannot partially serve as a lexicographer for a claim term: either the specification includes a binding definition of that term by way of lexicography, or it is to be read consistent with the plain and ordinary meaning.).
  • Spec. May Limit Claim Term By Using It As One Of Several Alternatives Or One Species Of A Broader Genus: Spec. using claim term as one example among several alternatives, or as a species of a genus, can limit that claim term to that species. Perfect Surgical (Fed. Cir. 11/15/16) (vacating PTAB invalidity finding; Spec. says that device “may be perforated or otherwise provided with passages”: this “separation of the terms perforated and passages with the disjunctive phrase ‘or otherwise’ makes clear that the patentee intended that the term ‘perforated’ is not the same as ‘passages.’ The patentee claimed only jaws that are ‘perforated’; this claim does not extend to passages.”); In re Nuvasive (Fed. Cir. 05/31/17) (non-precedential) (vacating PTAB construction of “lateral” as too broad, in part because Spec. distinguished “lateral” from “postero-lateral” and “antero-lateral”: Spec. “also distinguishes the ‘lateral’ approach depicted in Figure 1 from ‘postero-lateral’ and ‘antero-lateral’ approaches. (‘Moreover, although described and shown herein with reference to a generally lateral approach to a spinal surgical target site . . . , it will be appreciated that the retractor assembly 10 of the present invention may find use in any number of different surgical approaches, including generally posterior, generally postero-lateral, generally anterior and generally antero-lateral.’”).)
  • Spec. May Limit Claim By Having Single Embodiment Or Common Feature In All Embodiments: Claim scope sometimes properly limited to single disclosed embodiment. The Medicines Co. III (Mylan) (Fed. Cir. 04/06/17) (limiting claim element to single example disclosed, even though labeled “non-limiting”: “As the only embodiment of efficient mixing, Example 5 is ‘highly indicative of the scope of the claims’” and “it is the only description of efficient mixing in the patents in suit that casts light on what efficient mixing is.”) Analyzing proper construction where only one embodiment disclosed but claims broadened in later application to apparently claim more broadly than that embodiment: Saunders Grp. (Fed. Cir. 06/27/07); In re Abbott Diabetes (Fed. Cir. 09/28/12) (reexamination; broadest reasonable construction excludes use of external cables or wires, based on claims suggesting same, Spec. disparaging prior art use thereof, and all embodiments omitting external cables and wires.); Barkan Wireless (Fed. Cir. 08/29/18) (non-precedential) (aff’g no infringement; while Spec. did not define term “access point” as limited to Wi-Fi, its disclosure was limited to Wi-Fi (not cellular) and thus that is proper construction); Profoot (Fed. Cir. 10/26/16) (non-precedential) (aff’g narrow claim construction of coined term: “because the specification consistently and repeatedly discloses that the neutralizer includes the housing, protractor, and angularly adjustable plate components, the district court did not err in including them in its construction,” despite those elements having been expressly recited in parent claims); Interdigital (Fed. Cir. 02/18/15) (non-precedential) (narrow construction based on description of limitation of preferred embodiment where that was only embodiment and description expressly tied to purpose of the invention, despite limitation not repeated in summary of the invention); Amdocs I (Fed. Cir. 08/01/14) (limiting where claim step (“enhancing”) is performed based on Spec. touting advantages of performing step at that location, and therefore “the embodiments define the outer limits of the claim term”); Secure Web (Fed. Cir. 02/17/16) (Stoll, J.) (non-precedential) (limiting “security device” to stand-alone device separate from and external to microprocessor based on all embodiments showing that configuration and Spec. “touts the separate and stand-alone nature of the security device as an advantage”; two figures “depict the essence of the claimed invention rather than a preferred embodiment”).
  • Spec. Caveats That Embodiments Are Not Limiting, May Avoid Narrow Construction: E2Interactive (Fed. Cir. 05/11/17) (non-precedential) (aff’g PTAB broad construction and obviousness decision; “because the patent teaches that the ‘invention could be embodied in various ways,’ we conclude that the disclosed embodiments are exemplary only and are nonlimiting to the scope of” the claim element).
  • Spec. Using Claim Term Exclusively With Only One Of Spec.’s Multiple Embodiments, May Limit Claim Term: Where Spec. describes multiple embodiments (here, single-piece and two-piece container) and uses claim term (here “upper housing portion”) used exclusively with one of those embodiments, that implicitly defines term to be limited to that (two-piece) embodiment. CSP Tech. (Fed. Cir. 03/22/16) (non-precedential).
  • Spec. Disparaging Prior Art May Limit Claim: Intellectual Ventures (Motorola) (Fed. Cir. 09/13/17) (aff’g denial of written description invalidity JMOL; Spec. distinctions over prior art narrow the claim scope so no written description invalidity: Spec. excerpts “demonstrate that storing files ‘indefinitely’ on an intervening computer is not part of the claimed invention. …. The proper result is not that claim 41 fails for lack of written description but that it should be construed ‘in view of the specification’ to be limited.”). Spec. description of disadvantages of records, tapes, and CDs “amount to implied disclaimer of those three media.” Sightsound (Fed. Cir. 12/15/15) (but not extending this disclaimer to other removable media). “There is no doubt a high bar to finding disavowal of claim scope through disparagement of the prior art in the specification.” Openwave (Fed. Cir. 12/15/15) (aff’g disclaimer and narrow construction; Spec. “rife with remarks that disparage and, therefore, disclaim mobile devices that incorporate computer modules.”); Tech. Patents (Fed. Cir. 10/17/12) (aff’g construction of “initiates paging operations in another country in a predetermined order” as requiring that order be created by receiving user, in view of Spec. criticizing prior art for not allowing user to specify the order and “one of the primary purposes of the invention” was to allow user to do that.)
  • Spec. Describing An Element As Necessary To Claimed Function May Limit Claim: Respironics (Fed. Cir. 07/29/16) (non-precedential) (vacating PTAB narrow construction and no-anticipation decision) (“that an unclaimed element may be necessary for a device to function as claimed does not, standing alone, allow courts to treat the unclaimed element as a claim limitation.”); The Medicines Co. III (Mylan) (Fed. Cir. 04/06/17) (Dyk, J.) (rev’g trial court’s broader construction; restricting claim to specific process (and specific disclosed example thereof) for achieving claimed result, in part because Spec. “teaches efficient mixing as a necessary and sufficient condition for achieving batch consistency.”)
  • Spec. Using Different Language To Describe Different Elements Suggests Separate Concepts: Spec. describing different areas “using different terms” “suggest[s] that they are two separate concepts.” Impulse Tech. (Fed. Cir. 12/07/16) (non-precedential) (aff’g construction of “defined physical space” as “‘indoor or outdoor space having known size and/or boundaries,’ wherein the physical space is ‘known prior to adaptation of the testing and training system’ and is defined independently of the sensor viewing area.”); In re Smith (Fed. Cir. 09/26/17) (rev’g PTAB rejection of claims and broad BRI construction of “body” as generic term encompassing other specific drilling tool components described in Spec. but not recited in claim because Spec. consistently used body as referring to something different than those other specific elements). But, merely using different words in Spec. and claims to describe same element does not necessarily connote a different meaning. Nichia (Fed. Cir. 04/28/17) (“planar” means “in substantially the same plane” (lang. in Spec.)).
  • Disclaimer In Application Incorporated By Reference May Limit Claim: clear disclaimer in incorporated patent may or may not act as a clear disclaimer in the host patent. X2Y (Fed. Cir. 07/07/14) (aff’g ITC judgment of no infringement); cf. Belden (Fed. Cir. 04/17/15) (claim construction supported by statement in parent application incorporated by reference into patent, which is part of the Spec. and the prosecution history).

d) role of prosecution history

  • Historic S. Ct. View Of Role Of Prosecution History; Strict Construction Against Added Limitations: “‘Limitations imposed by the inventor, especially such as were introduced into an application after it had been persistently rejected, must be strictly construed against the inventor and in favor of the public, and looked upon as in the nature of disclaimers.’” Hubbell (U.S. 10/22/1900) (aff’g narrow construction and non-infringement). “By the amendment, he recognized and emphasized the difference between the two phrases and proclaimed his abandonment of all that is embraced in that difference. The difference which he thus disclaimed must be regarded as material, and since the amendment operates as a disclaimer of that difference it must be strictly construed against him. As the question is one of construction of the claim, it is immaterial whether the examiner was right or wrong in rejecting the claim as filed. It follows that what the patentee, by a strict construction of the claim, has disclaimed — conductors which are carried by the table but not embedded in it — cannot now be regained by recourse to the doctrine of equivalents ….” Exhibit Supply (U.S. 02/02/1942) (citations omitted) “It is, of course, well settled that an invention is construed not only in the light of the claims, but also with reference to the file wrapper or prosecution history in the Patent Office. Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent.” Graham (U.S. 02/21/1966); Vasudevan Software (Fed. Cir. 04/03/15) (prosecution history defined term when applicant said term “refers to …,” and then relied on that definition to distinguish prior art). Prosecution history statements may inform claim construction even if do not constitute unmistakable disavowal. Northpeak (Fed. Cir. 12/28/16) (Clevenger, J.) (non-precedential) (aff’g narrow construction: even without prosecution disclaimer, prosecution may “‘inform the meaning of the claim language by demonstrating how the inventor understood the invention.’”); Shire Dev. II (Fed. Cir. 06/03/15) (Hughes, J.) (remand decision: Shire Dev. I (Fed. Cir. 03/28/14) (rev’g overly broad construction), vacated and remanded ivo Teva (U.S. 01/26/2015)).
  • Fed. Cir.: Prosecution Must Be Unambiguous To Constitute Disclaimer: “Beyond the notice function and reliance based aspects of a patent’s prosecution history, it ‘provides evidence of how the [PTO] and the inventor understood the patent.’” Biogen IDEC (Fed. Cir. 04/16/13) (2-1) (arguments in response to Examiner’s full scope enablement rejection adopted the Examiner’s characterization of scope of enablement and constituted clear disclaimer of claim scope, and overcame “heavy presumption” that term has its full ordinary and customary meaning.). A prosecution disclaimer requires “‘clear and unambiguous disavowal of claim scope.’” Saffran (Fed. Cir. 04/04/13) (2-1) (reasons for allowance and applicant arguments (“the device used is a sheet”) referred to the claimed invention using a “sheet” where claim referred to “device.”); MIT (Fed. Cir. 10/13/16) (aff’g no prosecution disclaimer excluding skin from “organ”; not “clear and unmistakable” where statements made regarding earlier, different claims); Technology Prop. (Fed. Cir. 03/03/17) (aff’g narrow construction: “The patentee’s disclaimer may not have been necessary, but its statements made to overcome Magar were clear and unmistakable”; but limiting the scope of a second disclaimer); Vederi (Fed. Cir. 03/14/14) (“no clear and unambiguous disavowal of spherical or curved images.”), CVSG (U.S. 01/12/2015); Shire Dev. II (Fed. Cir. 06/03/15) (no unambiguous disavowal in prosecution history (because “Shire carefully characterized the prior art as not having separate matrices but never actually stated that the claimed invention does have separate matrices”) but still sheds light on correct construction.); Avid Tech. (Fed. Cir. 01/29/16) (vacating non-infringement; “the standard for justifying the conclusion [of prosecution disclaimer] is a high one”; “where the alleged disavowal is ambiguous, or even ‘amenable to multiple reasonable interpretations,’ we have declined to find prosecution disclaimer”; pros’n distinction over prior art susceptible of narrow reading); Baker (Fed. Cir. 04/09/18) (non-precedential) (aff’g non-infringement Summ. J.; “remote” cannot be in same location in view of “clear and unmistakable disavowal” to distinguish prior art).
  • Prosecution Disclaimers Generally Affect Entire Patent Family Where Same Claim Element Is Present: “‘[w]hen multiple patents derive from the same initial application, the prosecution history regarding a claim limitation in any patent that has issued applies with equal force to subsequently issued patents that contain the same claim limitation.’” Gemalto (Fed. Cir. 06/19/14) (citation omitted); “prosecution history regarding a particular limitation in one patent is presumed to inform the later use of that same limitation in related patents, ‘unless otherwise compelled.’” Trading Techs. II (Fed. Cir. 08/30/13) (CIP new matter contradicted prosecution disclaimer in parent filing history). But see Sanofi (Fed. Cir. 11/09/17) (disclaimer by adding negative limitation to parent patent’s claims did not apply to continuation patent because continuation’s claims omitted that negative limitation).
  • Foreign Prosecution Statement May Be Relevant To Claim Scope: Clear statement (that certain information is not transmitted) in later prosecution of Japanese counterpart patent application with claim identical to issued U.S. pat. claim in question, supports the claim construction. Apple (Fed. Cir. 04/25/14).
  • Patent Applicant May “Surrender” Claim Scope: In addition to “disclaimer,” argue “surrender” of claim scope. Schriber-Schroth (U.S. 12/09/1940) (“a claim in a patent as allowed must be read and interpreted with reference to claims that have been cancelled or rejected, and the claims allowed cannot by construction be read to cover what was thus eliminated from the patent.”); Graham (U.S. 1966) (“claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent”); Omega Eng’g (Fed. Cir. 07/07/03) (“[W]here the patentee has unequivocally disavowed a certain meaning to obtain his patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the claim congruent with the scope of the surrender.”); Hakim (Fed. Cir. 02/23/07) (“an applicant cannot recapture claim scope that was surrendered or disclaimed.”); Gen. Elec. (Fed. Cir. 02/29/12) (“a possibly broader disclosure accompanied by an explicit narrow claim shows the inventor’s selection of the narrow claim scope. See 35 U.S.C. § 112 ¶ 2.”)
  • Disclaimers Need Claim Hook, Unless Apply to Invention as a Whole: Disclaimers need hook in claim language to limit scope of the claim: Specs. and prosecution history disclaimers (emphasizing step was done automatically) limit scope of claims reciting that step in claim, but do not limit claims directed to stage earlier than that step. Ormco (Fed. Cir. 08/24/07); but see Thorner (Fed. Cir. 02/01/12) (“The patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope.”); Regents Univ. of Minn. (Fed. Cir. 06/03/13) (refusing patent owner attempt to apply prosecution history disclaimer to avoid prior art: a prosecution disclaimer applies to subsequent patent only if that patent contains “the same or closely related claim limitation;” “sole exception is when the disclaimer is directed to the scope of the invention as a whole, not a particular claim.”)
  • Disclaimers: Consider Prosecution as a Whole: What would be a clear disclaimer when viewed in isolation, is not treated as a disclaimer when prosecution as a whole suggests that the applicant realized his error and didn’t repeat it after being corrected by Examiner. Ecolab (Fed. Cir. 06/09/09); Advanced Fiber (Fed. Cir. 04/03/12) (district court properly took patent owner “at its word” when its distinguished “present invention” from prior art reference, in reissue); Chicago Bd. (Fed. Cir. 05/07/12) (patent’s “repeated derogatory statements about” the traditional approach “reasonably may be viewed as a disavowal of that subject matter from the scope of the Patent’s claims.”) Patent owner’s narrow construction on appeal to Board does not constitute prosecution disclaimer Board must accept. In re Lockwood (Fed. Cir. 02/13/17) (non-precedential).
  • Prosecution History Falling Short Of Disclaimer Still May Be Relevant To Claim Construction: Microsoft (Mastermine) (Fed. Cir. 10/30/17) (aff’g claim construction based, in part, on prosecution history statement in related patent, even though it did not amount to disclaimer); Aptalis Pharmatech (Fed. Cir. 01/04/18) (non-precedential) (rev’g claim construction based, in part, on prosecution history statement even though it was not clear and unmistakable disavowal: “‘[a]ny explanation, elaboration, or qualification presented by the inventor during patent examination is relevant, for the role of claim construction is to ‘capture the scope of the actual invention’ that is disclosed, described, and patented.’”).
  • Prosecution History Narrowing Trumps Claim Differentiation: Claim term “bonded” construed as “bonded by the application of heat,” despite dependent claim expressly adding that “heat” limitation, because applicant distinguished prior art for not using application of heat. MarcTec (Fed. Cir. 08/04/10) (non-precedential); MarcTec (Fed. Cir. 01/03/12) later appeal aff’g award of attorney fees and expert fees: “we agree with the district court that MarcTec’s proposed claim construction, which ignored the entirety of the specification and the prosecution history, and thus was unsupported by the intrinsic record, was frivolous and supports a finding of bad faith,” even though court’s construction “might render some language in [a dependent claim] superfluous.”)
  • Definition Post-Allowance May Define Claim Term: Claim term construed to have narrow definition applicant gave it (using “i.e.”) in remarks accompanying adding term to claims post allowance, supposedly to “more precisely claim the subject matter.” Rembrandt Wireless (Fed. Cir. 04/17/17) (aff’g jury verdict of no invalidity).
  • Differences Between Ancestor And Issued Specification May Affect Construction: Removal of language found in ancestor application may affect construction. Los Angeles Biomedical (Fed. Cir. 02/28/17) (removal of limitation recited in provisional claim reinforces that it is not required by issued claims); MPHJ (Fed. Cir. 02/13/17) (2-1) (aff’g PTAB’s broad construction that certain actions need not occur in single step; skilled artisan would deem significant the removal of limiting (single step) language in provisional from the non-provisional issued Spec. (dissent notes that provisional was incorporated by reference into issued Spec.)).
  • Removal Of Limitation From Claims During Prosecution Argues Against Reading It Into Issued Claim: Blackbird (Fed. Cir. 07/16/18) (Moore, J.) (2-1) (“no skilled artisan would understand this claim to require a fastening mechanism connecting the ballast cover to the attachment surface when that very limitation was expressly removed from the claim to secure patentability with the examiner’s blessing and agreement.”); Laryngeal (Fed. Cir. 09/21/10) (refusing to read limitation into claim in part because it was removed from claim shortly before allowance, regardless of why eliminated).
  • Examiner’s Understanding Of Claim Meaning Is Relevant: Roxane Labs. (Fed. Cir. 11/17/16) (non-precedential) (aff’g narrow construction based primarily on the Examiner’s apparent narrow understanding of the claim term). Arendi S.A.R.L. (Fed. Cir. 02/20/18) (aff’g obviousness; PTAB erred in not finding disclaimer; “examiner’s ‘Reasons for Allowance’ made clear that the examiner and the applicant understood what the applicant had changed”).
  • Construction In Reexamination Is Relevant: “Because an examiner in reexamination can be considered one of ordinary skill in the art, his construction of the asserted claims carries significant weight.” St. Clair (Fed. Cir. 01/10/11) (non-precedential); Cooper Notification (Fed. Cir. 08/30/13) (non-precedential) (“the examiner’s reasons for differentiating [rejected and allowed claims], while not dispositive, can be helpful in determining the meaning of the claim terms”); but see 3M Innovative (Fed. Cir. 08/06/13) (refusing to adopt Reexamination Examiner’s construction: “we rest on the statements made by the patentee over conflicting statements of an examiner because it is the patentee’s words that define the claim.”)
  • Pending Or Completed Post-Issuance Reexamination Or Review Is Relevant: “Statements made by a patent owner during an IPR proceeding can be relied on to support a finding of prosecution disclaimer during claim construction…. Extending the prosecution disclaimer doctrine to IPR proceedings will ensure that claims are not argued one way in order to maintain their patentability and in a different way against accused infringers.” Aylus (Fed. Cir. 05/11/17) (aff’g non-infringement based on “clear and unmistakable disavowal of claim scope”; patent owner statements in preliminary response to IPR petition may be used in claim construction and to show disclaimer, even if made before institution). A trial court should monitor ongoing PTO reexamination proceedings to ascertain whether they impact construction of the claims. Procter & Gamble (Fed. Cir. 12/05/08); see Transperfect (Fed. Cir. 07/12/17) (non-precedential) (“TransPerfect’s argument before the PTO in a separate reexamination proceeding for the ’022 patent on the meaning of its claimed ‘said hyperlink’ limitation is particularly damaging to TransPerfect’s current position.”); Northpeak (Fed. Cir. 12/28/16) (non-precedential) (aff’g narrow construction based on arguments in reexamination: “Statements made during reexamination procedures before the PTO are part of the prosecution history.”); Flexiteek (Fed. Cir. 03/19/15) (non-precedential) (aff’g narrow construction based in part on patent owner’s expert’s declaration in completed reexamination); Krippelz (Fed. Cir. 01/27/12) (due to the completed reexamination prosecution history “the [claim] term ‘beam of light’ incorporates requirements concerning the shape and focal point of the reflector;” statements made by applicant and his expert declarant in reexamination proceeding “disclaimed lamps lacking these limitations” and “the limitations therefore became part of the properly-construed claims,” even though not mentioned in the Spec. or original prosecution) (rev’g (for anticipation) $56 million judgment); St. Clair (Fed. Cir. 01/10/11) (non-precedential) (“Because an examiner in reexamination can be considered one of ordinary skill in the art, his construction of the asserted claims carries significant weight.”); Realtime Data (Fed. Cir. 01/27/14) (non-precedential) (statements by patent owner’s expert in reexamination of different patent but with same Spec., supported narrower claim construction than suggested by patent’s Spec.)
  • Post-Judgment Developments In Reexamination May Be Considered On Appeal: Fed. Cir. found absolute intervening rights based on PTO reexamination certificate issued after court judgment, citing its discretion to take such judicial notice. Marine Polymer (Fed. Cir. 09/26/11) (vacated and rehearing en banc granted (Fed. Cir. 01/20/12)).

e) role of prior art, experts, and extrinsic evidence

  • Cited Prior Art Is Part Of Prosecution History And Thus Intrinsic Evidence: “The prosecution history, which we have designated as part of the ‘intrinsic evidence,’ consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent.” Phillips (Fed. Cir. 07/12/05) (en banc). “The file wrapper also has a broader and more general use. This is its utilization, like the specification and drawings, to determine the scope of claims. For example, the prior art cited in the file wrapper is used in this manner. … In its broader use as source material, the prior art cited in the file wrapper gives clues as to what the claims do not cover.” Autogiro (C.C.P.A. 10/13/67).
  • Resort To Extrinsic Evidence Improper When Meaning Clear From Intrinsic Evidence: Roxane Labs. (Fed. Cir. 11/17/16) (non-precedential) (“Because the intrinsic record unambiguously and fully resolves the proper construction … resort to extrinsic evidence is unnecessary and improper.”)
  • Use Of Term In Prior Art Is Relevant: Am. Radio (Fed. Cir. 08/22/14) (non-precedential) (primarily relying on usage of term in cited and uncited prior art to affirm narrow construction).
  • Expert Testimony Has Limited, Secondary Role: See Markman (Fed. Cir. 04/05/95) (en banc) (“Extrinsic evidence … including 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.’ Brown v. Piper, 91 U.S. 37, 41, 23 L.Ed. 200 (1875).”) Some of this evidence may trigger “clear error” standard of review on appeal, under Teva Pharm. II (U.S. 01/20/2015) (7-2). But see U.S. Ethernet (Acer) (Fed. Cir. 04/25/16) (non-precedential) (“experts ‘cannot be used to prove the proper or legal construction of any instrument of writing’”); Speedtrack (Fed. Cir. 04/16/13) (non-precedential) (need not consider extrinsic evidence where “intrinsic evidence provides sufficient guidance.”); Indus. Tech. (Fed. Cir. 06/23/14) (non-precedential) (“If, and only if, the intrinsic evidence does not establish the meaning of a claim, we can turn to the extrinsic evidence, e.g., inventor testimony, expert testimony, and learned treatises.”)
  • Expert May Testify That Spec. Defines Term: Power Integrations (Fed. Cir. 03/26/13) (relying on unrebutted expert testimony that Spec. defines claim term in certain way).
  • Expert May Testify That Term Lacks Ordinary Meaning: Power Integrations (Fed. Cir. 03/26/13) (expert: term not a term of art and would not have had a plain and ordinary meaning to one of skill in the art).
  • Inventor’s Subjective Intent Irrelevant: “‘[I]nventor testimony as to the inventor’s subjective intent is irrelevant to the issue of claim construction.’” Unwired Planet (Fed. Cir. 11/21/16) (non-precedential).
  • TIPS Re Use Of Expert Declaration:

f) claim preamble

  • Determining Whether Preamble Is A Limitation: “‘Generally, the preamble does not limit the claims.’ …. “However, a preamble may be limiting if: ‘it recites essential structure or steps’; claims ‘depend[] on a particular disputed preamble phrase for antecedent basis’; the preamble ‘is essential to understand limitations or terms in the claim body’; the preamble ‘recit[es] additional structure or steps underscored as important by the specification’; or there was ‘clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art.’ …. The reverse is also true. A preamble is not a claim limitation if the claim body ‘defines a structurally complete invention . . . and uses the preamble only to state a purpose or intended use for the invention.’ ‘[P]reamble language merely extolling benefits or features of the claimed invention does not limit the claim scope without clear reliance on those benefits or features as patentably significant.’” Georgetown Rail (Fed. Cir. 08/01/17) (aff’g infringement and damages; preamble not limiting). E.g., Unwired Planet (Fed. Cir. 11/21/16) (non-precedential) (parties agreed claim indefinite if preamble (“an image having dimensions much larger than the dimension of the screen”) has patentable weight; it does: “‘an image’ provides antecedent basis for ‘the image later in the claims, it also ‘recites particular structure or steps that are highlighted as important by the specification.’”); Pacing Tech. (Fed. Cir. 02/18/15) (preamble provides antecedent basis for a term in body of claim and a phrase in body of a dependent claim). “A preamble may limit the claimed invention if it recites additional structure or steps that the specification underscores as important, or if it is clearly relied on during prosecution to distinguish the claimed invention from the prior art.” Rotatable Tech. (Fed. Cir. 06/27/14) (non-precedential) (“the ’978 patent’s title, abstract, background of the invention, summary of the invention, description of the drawings, detailed description, and all independent claims recite ‘selectively rotating.’”); TomTom (Fed. Cir. 06/19/15) (part of the preamble is limitation because it provides antecedent basis and part is not because merely an intended use); Novatek (Fed. Cir. 03/26/14) (non-precedential) (structural elements in preamble are limitations where provide antecedent basis for body of claim, referenced in Spec. as part of the “invention,” and cited in pros’n to distinguish prior art.); Proveris (Fed. Cir. 01/13/14) (preamble limitation; provides antecedent for claim body and recites features Spec. identifies in summary of the invention); Piggy Pushers (Fed. Cir. 11/08/13) (non-precedential) (preamble (reciting sock) a limitation because Spec. described invention as a sock, and distinguished it from a shoe). Factor arguing against treating a preamble element as a limitation is where body of the claim appears self-contained and preamble recites intended use. “Where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.” Rowe (Fed. Cir. 04/21/97); see Howmedica (Fed. Cir. 02/06/16) (non-precedential) (aff’g PTAB that preamble not limiting); Aspex Eyewear (Fed. Cir. 03/14/12) (preamble not limiting). See generally Catalina (Fed. Cir. 05/08/02) (discussing guideposts in case law).

g) claim transition

  • Meaning Of “Comprising”: When used as transition from preamble to body of claim, term “comprising” is presumed to be open-ended, allowing additional elements to be added to claim-recited elements, but this presumption does not extend within individual elements or apply when word “comprising” is used elsewhere in claim. Liberty Ammunition (Fed. Cir. 08/26/16) (despite term “including” introducing it, the claim element “intermediate opposite ends” excludes extending all of the way to the front end or to the rear end); Promega I (Fed. Cir. 12/15/14) (“comprising” element here construed without dispute as open-ended and thus full scope of claim not enabled), reconfirmed Promega II (Fed. Cir. 11/13/17) (on remand from S. Ct.); In re Varma (Fed. Cir. 03/10/16) (rev’g PTAB interpretation; “comprising” transition “does not render each limitation or phrase within the claim open-ended”); Dippin’ Dots (Fed. Cir. 02/09/07) (“presumption raised by the term ‘comprising’ does not reach into each of the six steps to render every word and phrase therein open-ended.”); “comprising” is “not a weasel word with which to abrogate claim limitations.”); Moleculon (Fed. Cir. 05/16/86) (“comprising” in body of a claim has no special legal effect and must be construed per normal claim-construction rules).; Raytheon (Fed. Cir. 04/02/18) (non-precedential) (rev’g PTAB’s construction of expired claims; in view of intrinsic evidence, method step “attaching . . . a second substrate” step requires permanent attachment, such that a process that removes substrate cannot infringe, notwithstanding “comprising” transition.)
  • Meaning Of “Consisting Of”: “term of art” (defining Markush group) that “creates a very strong presumption” that element is “closed” and “exclude[s] any elements, steps, or ingredients not specified in the claim,” overcome only if intrinsic evidence “unmistakably manifest[s] an alternative meaning.” MultiLayer Stretch (Fed. Cir. 08/04/16) (2-1) (aff’g construction that “each layer being selected from the group consisting of” [list of resins] restricted layer to recited resins despite dependent claim limiting element to an unrecited resin. Also creates presumption excluding blends of the recited elements. Id. (but here this presumption overcome). But, “rare exception” exists for “aspects unrelated to the invention.” Shire Dev. III (Fed. Cir. 02/10/17) (reversing infringement finding; rare exception not triggered by element outside claim’s Markush group).
  • Meaning Of “Consisting Essentially Of”: “scope of the claims can include those additional elements which do not materially affect the basic and novel characteristics of the claimed invention as specified in” the Spec., such as impurities. In re Hitachi (Fed. Cir. 03/17/15) (non-precedential) (based double patenting rejection on reading in impurities into the claims of the first patent); In re Herz (CCPA 07/22/76).

h) method claims

  • Method Step Requires Action (An Active Step): “A process is defined as ‘an act, or a series of acts.’ Here, because the claims affirmatively recite the step of “oxidizing,” “oxidizing” cannot be interpreted as doing nothing, or to simply allow oxidation to occur on its own.” Kaneka (Fed. Cir. 06/10/15); see Zhejiang (Fed. Cir. 01/23/17) (non-precedential) (subsequent action on same patent, requiring trial judge to abide by same claim-construction.); In re Wang (Fed. Cir. 06/20/18) (non-precedential) (aff’g rejection of claims under section 101: “none of the application claims on appeal requires an act or step or anything that must be performed. The only activity recited in the independent claims … are things “being defined,” things “not affect[ing]” other things, and things “represent[ing]” other things.”)
  • Generally, Steps Not Required To Be Performed In Listed Order: As a general rule, the steps of a method are not ordinarily construed to require a particular order, unless “‘as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires’ an order of steps.” Mformation Tech. (Fed. Cir. 08/22/14) (aff’g an order-of-steps requirement, and on that basis, aff’g a JMOL of no infringement, overturning a $147 MM verdict) (citations omitted); Kaneka (Fed. Cir. 06/10/15) (claims require steps occur in order listed but later step may begin before earlier step completes). Cf. Wi-LAN (Fed. Cir. 01/08/16) (aff’g no infringement based on ordering of two functional elements: “requires randomizing the modulated data symbols before combining them.”)

i) non-method claims

  • Generally, Construction Of Non-Method Claim Not Include Process Limitations: AstraZeneca (Fed. Cir. 10/30/13) (non-precedential) (refusing to construe composition claim as limited to process of making that composition); but see The Medicines Co. III (Mylan) (Fed. Cir. 04/06/17) (rev’g trial court’s broader construction; based in part on Spec.’s definition of “batches” as compounds made by same process, construing composition claim (“Pharmaceutical batches of a drug product comprising bivalirudin . . . wherein the batches have a pH adjusted by a base, said pH is about 5-6 when reconstituted in an aqueous solution for injection, and wherein the batches have a maximum impurity level of Asp9-bivalirudin that does not exceed about 0.6% as measured by HPLC”) as requiring “use of a process that achieves batch consistency,” and, specifically, “to require using the efficient mixing conditions of Example 5.”); see The Medicines Co. IV (Fed. Cir. 02/06/18) (aff’g Hospira does not infringe under “efficient mixing” construction).
  • Structural Limitation Vs. Product-By-Process Limitation: Aff’g as a proper structural limitation, not a process limitation, construction of “disks” as “‘disks that, before being affixed, joined, or connected, exist separately as individual, physically distinct disks.” Regents Univ. of Minn. (Fed. Cir. 06/03/13). Limitation is structural not product-by-process and thus still infringement even though condition met by accused product only during manufacturing outside U.S.: “including a relatively resilient end edge portion which temporarily deflects and subsequently rebounds to snap-secure one of said glass piece front and rear edges in the glass piece edge-receiving channel.” Gemtron (Fed. Cir. 07/20/09); see Belden (Fed. Cir. 04/17/15) (non-precedential) (“a product claim does not automatically become a product-by-process claim simply because a limitation recites a process characteristic, like ‘twisted together.’”)
  • Structure Of Programmed Processor Or Computer Includes The Algorithm: Alappat (Fed. Cir. 07/29/94) (en banc): “Alappat admits that claim 15 would read on a general purpose computer programmed to carry out the claimed invention, but argues that this alone also does not justify holding claim 15 unpatentable as directed to nonstatutory subject matter. We agree. We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” (Citations omitted); cite to WMS Gaming (Fed. Cir. 07/20/99): “The instructions of the software program that carry out the algorithm electrically change the general purpose computer by creating electrical paths within the device. These electrical paths create a special purpose machine for carrying out the particular algorithm.” “Accordingly, the structure disclosed for the ‘means for assigning’ limitation of claim 1 of the Telnaes patent is a microprocessor programmed to perform the algorithm illustrated in Figure 6. In other words, the disclosed structure is a microprocessor programmed to assign a plurality of single numbers to stop positions such that: 1) the number of single numbers exceeds the number of stop positions; 2) each single number is assigned to only one stop position; 3) each stop position is assigned at least one single number; and 4) at least one stop position is assigned more than one single number.”
  • TIPS:

j) particular claim language

  • Meaning Of “a”: in “comprising” claims, “a” = “one or more”: “‘[t]his court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” KJC Corp. (Fed. Cir. 08/18/00). That ‘a’ or ‘an’ can mean ‘one or more’ is best described as a rule, rather than merely as a presumption or even a convention. The exceptions to this rule are extremely limited: a patentee must ‘evince[ ] a clear intent’ to limit ‘a’ or ‘an’ to ‘one.’ Id. The subsequent use of definite articles ‘the’ or ‘said’ in a claim to refer back to the same claim term does not change the general plural rule, but simply reinvokes that non-singular meaning. An exception to the general rule that ‘a’ or ‘an’ means more than one only arises where the language of the claims themselves, the Spec., or the prosecution history necessitate a departure from the rule. See, e.g., Abtox (Fed. Cir. 08/01/97); Insituform Techs. (Fed. Cir. 11/05/96).” Baldwin Graphic (Fed. Cir. 01/15/08); 01 Communique Lab (Fed. Cir. 07/31/12) (“comprising . . . a locator server computer” refers to one or more); SanDisk (Fed. Cir. 10/09/12) (“comprising . . . operating memory cells within individual sectors with at least a user data portion and an overhead portion”: “a” means one or more). But found “a” meant singular, in Enfish (Fed. Cir. 05/12/16) (rev’g Summ. J. of anticipation); TiVo (Fed. Cir. 01/31/08) (“The pertinent claim language refers to ‘assembl[ing] said video and audio components into an MPEG stream,’ which in context clearly indicates that two separate components are assembled into a single stream, not that the video components are assembled into one stream and the audio components into a second stream.”); Harari (Fed. Cir. 09/01/11) (“comprising … accessing a number of control gates and accessing a bit digit line, thereby activating a said number of memory cells”: “a” means only one, based on claim language and written description); In re Varma (Fed. Cir. 03/10/16) (rev’g PTAB interpretation; “For a dog owner to have ‘a dog that rolls over and fetches sticks,’ it does not suffice that he have two dogs, each able to perform just one of the tasks.”); Wonderland (Fed. Cir. 04/19/18) (non-precedential) (rev’g PTAB interpretation; in view of intrinsic evidence “a fabric member” and “an enclosure member” refers to single, unitary fabric or members).
  • Meaning Of “about”: No error construing “about” as “approximately” and not giving it a numerical limitation where patent did not expressly or implicitly give it a different meaning. Ferring (Fed. Cir. 08/22/14). See Monsanto (Fed. Cir. 01/05/18) (aff’g PTAB BRI construction of “about 3%” as including 4% based on specification).
  • Meaning Of “adapted to”: Phrase “adapted to” often means (and here means) “made to,” “designed to,” or “configured to,” but sometimes is used “in a broader sense to mean ‘capable of’ or ‘suitable for.’” Aspex Eyewear (Fed. Cir. 03/14/10); In re Giannelli (Fed. Cir. 01/13/14) (same; rev’g PTAB obviousness rejection; claim required exercise-machine handles “adapted to” be pulled; Spec. described structural features adapting handles to be pulled; prior art handles capable of being pulled but designed to be pushed.); In re Man Machine (Fed. Cir. 06/19/16) (rev’g PTAB broader construction of mere capability; “construe ‘adapted to be held by the human hand’ to mean “designed or made to be held by the human hand.”) Cf. Intertainer (Fed. Cir. 09/26/16) (non-precedential) (aff’g PTAB broad construction: “the claims only require that the “link program” be “adapted to” perform these functions, so it could also be programmed such that it only helps initiate these functions, as opposed to performing these functions itself.”); Profectus (Fed. Cir. 05/26/16) (aff’g narrower construction of “mountable” as “having a feature for mounting” rather than “capable of mounting,” and aff’g Summ. J. of no infringement because “no evidence that the communication ports are developed as inherent features for mounting the devices on a wall or tabletop.”)
  • Meaning Of “and”: “And” means “and” unless Spec. compels disjunctive “or.” Medgraph (Fed. Cir. 12/13/16) (aff’g Summ. J. of no infringement; discussing cases).
  • Meaning Of “at least one” Coupled With “and”: claim element “means for storing at least one of a desired program start time, a desired program end time, a desired program service, and a desired program type,” construed “as meaning ‘at least one of each desired criterion; that is, at least one of a desired program start time, a desired program end time, a desired program service and a desired program type. The phrase does not mean one or more of the desired criteria but at a minimum one category thereof.’” SuperGuide (Fed. Cir. 02/12/04).
  • Meaning Of “at least one component of”: “the phrase ‘at least one component of a signalling moiety’ indicates that the signalling moiety is composed of multiple parts as the term ‘component’ in and of itself indicates a multipart system. Thus, construing the phrase to allow for a single-component system, as the district court did here, would read out the phrase ‘component of a signalling moiety’ and would thus impermissibly broaden the claim.” Enzo II (Fed. Cir. 03/16/15) (2-1).
  • Meaning Of “having”: “We interpret ‘having’ in light of the claim language context and the specification to determine whether it is open or closed.” Nobel Biocare (Fed. Cir. 09/13/18) (aff’g PTAB anticipation decision and construction of “the coronal region having a frustoconical shape” as “the coronal region has partly or entirely, a frustoconical shape.”)
  • Meaning Of “plurality” Or “at least one” Coupled With “each”: Claim recites “a plurality of heuristic modules configured to …, wherein: each heuristic module corresponds to … and employs….” Here, “each” does not modify “plurality.” Therefore, claim requires two or more such modules, and if more than two such modules exist, then all (not just two) such modules must have the recited features. Apple II (Fed. Cir. 10/11/12) (citing ResQNet (Fed. Cir. 10/16/03) (“each field” means all fields; “each of a plurality of fields” means “at least two, but not all.”))
  • Meaning Of “said”: “Said” is an “‘anaphoric phrase[], referring to the initial antecedent phrase.’” Transperfect (Fed. Cir. 07/12/17) (non-precedential) (aff’g PTAB CBM finding of no written description support for claims; “said” may refer to the antecedent even if claims also recited that the antecedent has been changed, but that is not required in these claims).
  • Meaning Of “substantially”: Where claims, spec and prosecution history did not define “substantially pure,” court used common dictionary meaning of “largely but not wholly”: “largely but not wholly the para regioisomer of the intermediate of the structure shown, as compared to the meta isomer.” Aventis Pharm. (Fed. Cir. 05/20/13) (2-1); Vederi (Fed. Cir. 03/14/14) (rev’g construction of “substantially elevations” (in “the views being substantially elevations of the objects in the geographic area”) as “vertical flat (as opposed to curved or spherical) depictions of front or side views” as failing to give meaning to “substantially” as improperly excluding one of the embodiments; and rev’g Summ. J. of no infringement), CVSG (U.S. 01/12/2015).

U.S. v. Adams: One patent claim recited “1. A battery comprising a liquid container, a magnesium electropositive electrode inside the container and having an exterior terminal, a fused cuprous chloride electronegative electrode, and a terminal connected with said electronegative electrode.” The Court construed this claim as being limited to a water-activated battery—even though this claim did not mention water and other claims did mention water—in part because “a stated object of the invention was to provide a battery rendered serviceable by the mere addition of water.”