Sunday, October 04, 2009

Edwards case: interchangeable use amounts to equating

The CAFC noted:

Although the construction of a claimed term is usually controlled by its ordinary meaning, we will adopt an alternative meaning “if the intrinsic evidence shows that the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366–67 (Fed. Cir. 2002). Similarly, we will adopt a definition that is different from the ordinary meaning when “the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.” Id. at 1366.

If the patent applicant uses terms interchangeably, they become the same:

In this case, the specification consistently uses the words “graft” and “intraluminal graft” interchangeably. (...) The interchangeable use of the two terms is akin to a definition equating the two.

Additionally,if the patent applicant only discloses examples with a given feature, and not with another feature, claim scope can be lost:

Further, the only devices described in the specification are intraluminal, supporting an interpretation that is consistent with that description. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001) (“Where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.”).

The CAFC elaborated, and, in so doing, gave an important application drafting insight about use of the words "the present invention":

Moreover, “when the preferred embodiment is described in the specification as the invention itself, the claims are not necessarily entitled to a scope broader than that embodiment.” Chimie v. PPG Indus. Inc., 402 F.3d 1371, 1379 (Fed. Cir. 2005) (quotation marks omitted); see Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (construing claim term to include fuel filter because “[o]n at least four occasions, the written description refers to the fuel filter as ‘this invention’ or ‘the present invention’”); SciMed, 242 F.3d at 1343 (construing term to include feature characterized as “the present invention”). Here, the specification frequently describes an “intraluminal graft” as “the present invention” or “this invention,” indicating an intent to limit the invention to intraluminal devices. See, e.g., ’458 patent col.1 ll.11–12, 40–41, 45–46, col.3 ll.33, 39–40, 45, col.4 ll.5–6, 20, 56.

The counterpoint, of course, being not to read limitations of the specification into the claims.

On claim differentiation: “When different words or phrases are used in separate claims, a difference in meaning is presumed.” Nystrom v. TREX Co., 424 F.3d 1136, 1143 (Fed. Cir. 2005). “However, simply noting the difference in the use of claim language does not end the matter. Different terms or phrases in separate claims may be construed to cover the same subject matter where the written description and prosecution history indicate that such a reading of the terms or phrases is proper.” Id.

On disavowal: “Where the general summary or description of the invention describes a feature of the invention . . . and criticizes other products . . . that lack that same feature, this operates as a clear disavowal of these other products . . . .” Astrazeneca AB v. Mut. Pharm. Co., 384 F.3d 1333, 1340 (Fed. Cir. 2004). )...)
the inventors disclaimed resilient wires and cannot use the doctrine of equivalents to recapture the disclaimed scope. See Honeywell, 452 F.3d at 1321 (rejecting patentee’s reliance on equivalency to allow claims to encompass carbon fibers when “such fibers were disavowed”).

The location of a definition within the specification is irrelevant: See Boss Control, Inc. v. Bombardier Inc., 410 F.3d 1372, 1378 (Fed. Cir. 2005) (following inventors’ definition, even though it appeared in connection with the description of a preferred embodiment).


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