Thursday, June 03, 2010

Meaning of term in claim preamble must be consistent with rest of claim

In Haemonetics v. Baxter Health Care, the term in question was "centrifugal unit,"
and the CAFC was emphatic about the need for the term to mean
the same thing throughout the claim:

In this case, claim 16’s beginning and, in our view,
controlling language could hardly be clearer. Claim 16
states: “A centrifugal unit comprising a centrifugal
component and a plurality of tubes . . . .” It does not
merely state the intended field of use in a preamble, as
Haemonetics argues. Rather, it unambiguously defines
“centrifugal unit” as “comprising” two structural compo-
nents: a centrifugal component and a plurality of tubes.
The claim then further recites, not the centrifugal compo-
nent and not a centrifugal unit, but “the centrifugal unit”
as “having a radius between 25 and 50 mm and a height
between 75 and 125% of the radius.” Reading “the cen-
trifugal unit” in the context of the dimensional limitations
to refer exclusively to the vessel, as the district court did,
ignores the antecedent basis for “the centrifugal unit,” see
Process Control, 190 F.3d at 1356-57, and fails to give
effect to the claim language “comprising a centrifugal
component,” see Bicon, 441 F.3d at 950.

The term "centrifugal unit" was defined differently in
different claims:

Furthermore, the specification defines “centrifugal
unit” in the context of the height and radius limitations in
two different embodiments, one that tracks the language
of claim 1, in which the parties agree that “centrifugal
unit” refers to the vessel alone, and one that tracks the
language of claim 16.
Specifically, the specification
describes a “first embodiment” in which a centrifugal
device “includes a centrifugal unit with a center and a
rotation axis.” ’983 patent col.2 ll.50-53. In this embodi-
ment, which tracks the language of claim 1, a plurality of
tubes connects to the centrifugal unit, and the “centrifu-
gal unit has a radius between 25 and 50 mm and a height
between 75 and 125% of the radius.” Id. col.2 ll.53-65.
The specification also describes “another embodiment” in
which a centrifugal unit “includes a centrifugal compo-
nent and a plurality of tubes,” tracking the language of
claim 16. Id. col.3 ll.20-22 (emphasis added). Again, the
“centrifugal unit has a radius between 25 and 50 mm and
a height between 75 and 125% of the radius.” Id. col.3

The patentee’s inconsistent use of identical height and
radius limitations for two different embodiments thus
indicates that “the centrifugal unit” in the context of the
dimensional limitations must have different meanings in
the context of different claims. Compare Process Control,
190 F.3d at 1356-57 (holding that “a discharge rate” and
“the discharge rate” in the same claim maintained the
same meaning because the written description did not
clearly redefine the term in the different contexts so as to
put one skilled in the art on notice), with Epcon Gas Sys.,
Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1031 (Fed.
Cir. 2002) (construing the term “substantially” differently
in the same claim in the context of language of approxi-
mation—“substantially constant”—versus language of
magnitude—“substantially below”). In other words, the
description of two embodiments with each tracking the
language of different independent claims most reasonably
supports a construction in which “centrifugal unit” has
one meaning in claim 1 and another in claim 16. See
Wilson Sporting Goods Co. v. Hillerich & Bradsby Co.,
442 F.3d 1322, 1327-29 (Fed. Cir. 2006) (holding that the
claim term “gap” had different meanings in different
claims based on those claims’ different geometrical con-

The bottom line is that the CAFC will NOT re-draft
poorly written patent claims:

Haemonetics argues, and the district court concluded,
that because the vessel with the tubing is larger than the
vessel alone, construing “centrifugal unit” in the context
of the dimensional limitations to include the tubing
“would yield an absurdity.” Haemonetics, 517 F. Supp. 2d
at 519. Maybe so, but we do not redraft claims to contra-
dict their plain language in order to avoid a nonsensical
result. See, e.g., Elekta Instrument, 214 F.3d at 1309. Cf.
Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp.,
587 F.3d 1339, 1348 (Fed. Cir. 2009)
(holding that con-
struing “soluble calcium sulfate anhydride” to mean
“soluble anhydrous calcium sulfate” did not rewrite the
claim but “merely restate[d] its plain meaning” in light of
the specification and the knowledge in the art).

There is no escape from careless drafting such as this:

An “error” may have occurred in
drafting claim 16, as Haemonetics’s counsel indicated
during the district court’s claim construction hearing, J.A.
923, but it is what the patentee claimed and what the
public is entitled to rely on. See Process Control, 190 F.3d
at 1357 (“Where, as here, the claim is susceptible to only
one reasonable construction, . . . we must construe the
claims based on the patentee’s version of the claim as he
himself drafted it.”); Hoganas AB v. Dresser Indus., Inc., 9
F.3d 948, 951 (Fed. Cir. 1993) (“It would not be appropri-
ate for us now to interpret the claim differently just to
cure a drafting error . . . . That would unduly interfere
with the function of claims in putting competitors on
notice of the scope of the claimed invention.”).

The CAFC separately gave a remand on indefiniteness:

Given the change in the unit’s shape in claim 16 under this court’s
construction of “centrifugal unit” and the absence of any
basis on which to decide the issue in the first instance, we
vacate the district court’s grant of JMOL and remand for
a determination of the meaning of “radius” and “height”
under the correct claim construction of “centrifand of
whether claim 16 is definite.

The verdict came undone:

Again, because the jury’s verdict on invalidity and in-
fringement relied on the district court’s incorrect claim
construction, we vacate the verdict and the award of
prospective remedies and remand for proceedings consis-
tent with this opinion.

GREGORY A. CASTANIAS of Jones Day won the remand for the

IPBiz notes the CAFC could have cited the wheelbarrow case,
Radio Steel v. MTD, 221 USPQ 657 (CAFC 1984) or the "baking
bread" case [ Chef America v. Lamb-Weston: "a nonsensical result does
not require the court to redraft the claims of the patent." ]

See prior IPBiz post

IN RE ROBERT SKVORECZ: confusion over comprising?


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