Monday, March 21, 2011

ED Va claim construction accepted by CAFC in American Piledriving

Within the CAFC decision:

It is well settled that the role of a district court in
construing claims is not to redefine claim recitations or to
read limitations into the claims to obviate factual ques-
tions of infringement and validity but rather to give
meaning to the limitations actually contained in the
claims, informed by the written description, the prosecu-
tion history if in evidence, and any relevant extrinsic
evidence. See Phillips v. AWH Corp., 415 F.3d 1303, 1314
(Fed. Cir. 2005) (en banc). In the course of construing the
claims in this case, the Virginia district court carefully
avoided redefining the claims and reading limitations into
the claims from the written description. The California
district court, however, inappropriately added several
limitations not contained in the inventor’s claimed defini-
tion of the scope of his invention. This disparate treat-
ment of the same issues before two competent and capable
district courts is thus instructive.

No cogency from the parties?

To determine the
ordinary and customary meaning of a claim term, courts
turn to “those sources available to the public that show
what a person of skill in the art would have understood
disputed claim language to mean.” Id. at 1314 (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). Those sources
include “the words of the claims themselves, the remain-
der of the specification, the prosecution history, and
extrinsic evidence concerning relevant scientific princi-
ples, the meaning of technical terms, and the state of the
art.” Id. (quoting Innova, 381 F.3d at 1116). Because
neither party provided cogent extrinsic evidence, this
court looks only to the intrinsic evidence—
the claims, specification, and prosecution history.

On the doctrine of claim differentiation:

Comark Comm’ns, Inc. v. Harris Corp., 156 F.3d 1182,
1187 (Fed. Cir. 1998) (“There is presumed to be a differ-
ence in meaning and scope when different words or
phrases are used in separate claims. To the extent that
the absence of such difference in meaning and scope
would make a claim superfluous, the doctrine of claim
differentiation states the presumption that the difference
between claims is significant.”).

Disavowal of claim scope:

“[W]e have made clear . . . [that] an applicant’s argu-
ment that a prior art reference is distinguishable on a
particular ground can serve as a disclaimer of claim scope
even if the applicant distinguishes the reference on other
grounds as well.” Andersen Corp. v. Fiber Composites,
LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007). Moreover,
regardless of whether the examiner agreed with American
Piledriving’s arguments concerning “integral,” its state-
ments still inform the proper construction of the term.
See Seachange Int’l, Inc. v. C-Cor Inc., 413 F.3d 1361,
1374 (Fed. Cir. 2005) (“An applicant’s argument made
during prosecution may lead to a disavowal of claim scope
even if the Examiner did not rely on the argument.”);
Microsoft Corp. v. Multi-Tech Sys., 357 F.3d 1340, 1350
(Fed. Cir. 2004) (“We have stated on numerous occasions
that a patentee’s statements during prosecution, whether
relied on by the examiner or not, are relevant to claim
interpretation.”). American Piledriving unambiguously
argued that “integral” meant “one-piece” during reexami-
nation and cannot attempt to distance itself from the disavowal of broader claim scope.


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