Sunday, July 10, 2011

Disagreement at CAFC on claim construction

The bottom line of the case RETRACTABLE TECHNOLOGIES, INC. ["RTI"] v. BECTON, DICKINSON ["BD"]:

Because the district court erred in its construction of the claim term “body” but did not otherwise err, we affirm in part and reverse in part.

This was a 2-1 decision.

Of "body" -->

BD argues that the district court erred when it concluded that the claimed “body” is not limited to a one- piece structure. BD argues that the specifications de- scribe “the invention” as including a one-piece body while criticizing prior art syringes that contain a two-piece body. BD also argues that claim differentiation does not apply in light of the written description’s limiting state- ments.
RTI responds that the ordinary meaning of the term “body” is not limited to a one-piece body. RTI points to the different usage of the term “body” in the claims, where some claims recite a “body” and other claims recite a “one piece body.” RTI also argues that while the preferred embodiments disclose a syringe with a one-piece body, that disclosure is directed to manufacturing benefits, not the other patentable aspects of the invention.

We agree with BD that the claimed “body” is limited to a one-piece structure in light of the specifications. While the patents contain an independent claim that recites a “body,” ’224 Patent, claim 25, with a dependent claim that limits the “body” to a “one-piece body,” ’224 Patent, claim 31, none of the claims expressly recite a body that contains multiple pieces. Thus, while the
claims can be read to imply that a “body” is not limited to a one-piece structure, that implication is not a strong one.
It is axiomatic that the claim construction process en- tails more than viewing the claim language in isolation. Claim language must always be read in view of the writ- ten description, Phillips, 415 F.3d at 1315, and any pre- sumption created by the doctrine of claim differentiation “will be overcome by a contrary construction dictated by the written description or prosecution history,” Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005). Thus, it is necessary to review the specifications to determine if the proper construction of the term “body” is limited to a one-piece body.
The specifications indicate that the claimed “body” re- fers to a one-piece body. In distinguishing prior art syringes comprised of multiple pieces, the specifications state that the prior art had failed to recognize a retract- able syringe that “can be molded as one piece outer body.” ’733 patent, col.2 ll.26–31. Consistent with this charac- terization of the prior art, the Summary of the Invention states that “[t]he invention is a retractable tamperproof syringe,” and that this syringe “features a one piece hollow body.” Id. col.2 ll.45–47. (...)

There is a fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims. See Phillips, 415 F.3d at 1323. 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 specifi- cation conveys is the invention. Id. at 1323–24.
In this case, while the claims leave open the possibil- ity that the recited “body” may encompass a syringe body composed of more than one piece, the specifications tell us otherwise. They expressly recite that “the invention” has a body constructed as a single structure, expressly distin- guish the invention from the prior art based on this feature, and only disclose embodiments that are expressly limited to having a body that is a single piece. Thus, a construction of “body” that limits the term to a one-piece body is required to tether the claims to what the specifica- tions indicate the inventor actually invented. Accord- ingly, the district court erred when it construed “body” as encompassing bodies composed of multiple pieces.

***Concurring opinion:

Judge Lourie articulated that idea more fully in his excellent concurring/dissenting opinion in Arlington Industries, Inc. v. Bridgeport Fittings, Inc, where he said: “[T]he basic mandate is for claims to be interpreted in light of the specification of which they are a part because the specification describes what the inventors invented. The specification is the heart of the patent. In colloquial terms, ‘you should get what you disclose.’” 632 F.3d 1246, 1252 (Fed. Cir. 2011) (citations omitted).

However much desired by the claim drafters, who want claims that serve as business weapons and litigation threats (see Arlington Industries at 1248; Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1342 (Fed. Cir. 2010)), the claims cannot go beyond the actual invention that entitles the inventor to a patent. For that we look to the written description.1 See 35 U.S.C. § 112. I have written elsewhere about the curse of indefinite and am- biguous claims, divorced from the written description, that we regularly are asked to construe, and the need for more stringent rules to control the curse. See Enzo Bio- chem, Inc. v. Applera Corp., 605 F.3d 1347, 1348-1349 (Fed. Cir. 2010) reh’g denied (Plager, dissenting).
I understand how a perfectly competent trial judge can be persuaded by the siren song of litigation counsel to give the jury wide scope regarding what is claimed. But it is a song to which courts should turn a deaf ear if patents are to serve the purposes for which they exist, including the obligation to make full disclosure of what is actually invented, and to claim that and nothing more.

**Judge Rader dissented:

While portions of the specifications reference a “one piece hollow outer body,” see, e.g., ’224 patent col.3 ll.16- 17, these references do not rise to the level of an expres- sion of manifest exclusion or an express disclaimer of claim scope. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (“words or expres- sions of manifest exclusion or explicit disclaimers in the specification are necessary to disavow claim scope”). In fact, the inventor’s consistent use of the modifier “one piece” (or “one-piece”) both in the claims and in the writ- ten description when he intended to describe a syringe with a one-piece body strongly implies that “body,” stand- ing alone, does not inherently contain a one-piece struc- tural limitation. See Phillips, 415 F.3d at 1314 (use of the term “steel baffles” “strongly implies that the term ‘baf- fles’ does not inherently mean objects made of steel”). When the inventor intended to impose a one-piece struc- tural limitation, he did so explicitly, as shown by depend- ent claims 14 and 57 in the ’224 patent.


Post a Comment

<< Home