Claim Interpretation Should Include Disclosed Embodiments

Oatey v. IPS (Fed. Cir. 2008)

Oatey’s asserted claim is directed to a washing machine drain with “first and second juxtaposed drain ports.”  The patentee originally lost on summary judgment of noninfringement because the district court construed that element to require “two separate identifiable physical elements” and not simply a single divided drain port. Thus, the lower court agreed that the claim would cover the design showed in Figure 2 of the patent, but excluded the design shown in Figure 3.

On appeal, the CAFC reversed. Writing for a unanimous panel, Judge Newman held that absent disclaimer or estoppel, claims should normally be interpreted to include disclosed embodiments.

We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification. . . . At leas[t] where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence on the contrary.

Because there was no evidence of disclaimer or prosecution history estoppel, Judge Newman found that the claim must be given a broader construction.

Notes:

• U.S. Patent No. 6,148,850.
• Lower Court Judge was Kathleen O’Malley (who has tremendous patent experience).

Gillespie v. DWIDAG: Prosecution Arguments Limit Claim Scope

Gillespie v. DWIDAG Systems (Fed. Cir. 2007)

During prosecution, Gillespie argued around a cited prior art mine roof bolt reference — arguing that the collar of the bolt ‘appears to be cylindrical on the outside, thus impractical…’ Reviewing claim construction de novo, the appellate panel led by Judge Newman limited the claim scope to only cover non-cylindrical collars. (Following the maxim that a “patentee is held to what he declares during the prosecution of his patent.”).

Gillespie argued that the claims should not be limited by his statements because the non-cylindrical collar shape did not turn out to be material to allowance. (The Examiner provided alternative reasons for allowance). The CAFC rejected that potential loophole – finding that Gillespie’s argument was sufficient regardless of its importance in the prosecution process.

DWIDAG’s bolts were thus found to not infringe this new construction.

Notes:

• The court appears to have been careful not to use the term disclaimer. 

 

Prosecution Disclaimer Narrows SOME of the claims

Ormco v. Align Technology (CAFC 2007, 06–1240)

Here, prosecution disclaimer narrowed Ormco’s patent claim scope, but only for some of the claims.

Ormco’s invention relates to computer-aided design of orthodontics.  During prosecution Ormco distinguished its invention based on its automated calculation of final tooth position even though the claims do not explicitly require fully automated calculations.  Although finding the disclaimer clear, the CAFC required some relation between the disclaimer and any affected claim before narrowing claim scope. As a consequence, the scope disclaimer only applies to claims directed at finish tooth positions and not to other claims — such as those directed to preliminary organization of tooth data.

Dissent: Dissenting from the majority opinion, Judge Kathleen O’Malley (N.D.Ohio, sitting by designation) criticized both the majority and the lower court for their procedural sloppiness.  Judge O’Malley would have remanded to wait for a more developed opinion from the district court.

Notes:

• In passing, the court reminds us that the existence of prosecution disclaimer is determined within the claim construction phase – and thus reviewed de novo.
• The patents at issue are quite hefty for this type of technology – 97 pdf pages.

CAFC: Meaning of "About"

Ortho-McNeil Pharm. v. Caraco Pharm. (Fed. Cir. 2006).

Ortho’s patent covers a pain-relief combo of tramadol and acetaminophen with a ratio of “about 1:5.” Caraco’s drug has a ratio of 1:8.67.  The lower court construed the claims and found no infringement.

Claim Construction: On appeal, the Federal Circuit construed the term “about 1:5” by first looking at the intrinsic evidence.  In the patent and claims, Ortho had used the term “about” repeatedly: disclosed ratios included about 1:1, about 1:5, about 1:19 to about 1:5, and about 1:1600. 

The court reasoned that the term must have a narrow meaning in this patent because a broad meaning would leave other claimed ratios meaningless. The court also noted that the literal meaning of the term should be narrowly construed because Ortho “could have easily claimed a [broader] range of ratios”

An expert testified that the statistical range should be 1:3.6 to 1:7.1 based on a confidence interval constructed from the data in the patent, and the Federal Circuit agreed. (The patent discussed the importance of 95% CI).

Literal Infringement: The Federal Circuit found that there could be no literal infringement because the upper claimed bound for the ratio was 1:7.1 while Caraco’s ratio was 1:8.67.

Doctrine of Equivalents: No DOE because Ortho cancelled claims with broader range during reissue. Interestingly, the Court made this ruling based on vitiation rather than prosecution history estoppel:

[I]t cancelled the broader "comprising" claims, except for claim 6. In sum, having so distinctly claimed the "about 1:5" ratio, Ortho cannot now argue that the parameter is broad enough to encompass, through the doctrine of equivalents, ratios outside of the confidence intervals expressly identified in the patent. We agree with the district court that to do so would eviscerate the limitation.

Summary judgment of noninfringement affirmed

IPO Supports Attorney Fee-Shifting, Opposes PTO Authority

The Intellectual Property Owner’s Association (IPO) has taken a new stand on patent reform through its passage of three specific resolutions in reaction to the pending Senate bill S.3818 that had been supported by Senators Hatch and Leahy. Resolutions:

(1) supporting a requirement that a court award attorney fees to the winning party in most patent cases; [fees “shall” be awarded unless the losing position was “substantially justified”or if the award would be unjust because of special circumstances].

(2) opposing any change to give substantive rule-making authority to the USPTO; and

(3) opposing any right for an interlocutory appeal from claim construction decisions in patent litigation.