Recent Federal Circuit Cases on Claim Construction

Newsletters and Bulletins / June 2006: Recent Federal Circuit Cases on Claim Construction

The Court of Appeals for the Federal Circuit has for some time been placing increased emphasis on the actual language used to determine the protection provided by patent claims. Examples of some of the earlier cases where insufficient care as to the choice of the right words have caused problems include:

Warner-Lambert Co v. Teva Pharmaceuticals USA Inc.1 - where it was held that to infringe a claim to a pharmaceutical composition requiring a "suitable amount of a ... carbonate to inhibit cyclization and discoloration" it must be possible to show not only that no cyclization or discoloration occurred but also that this was the result of the presence of the carbonate and not some other component. Had the draftsman simply included a % range for the carbonate it is unlikely that such problems would have arisen.

Chef America Inc. v. Lamb-Weston Inc.2 - where it was found that a claim requiring that dough be brought to a temperature of about 400°F to 850°F required that the dough itself rather than the oven in which it was being heated had to achieve the stated temperatures so that there was no infringement when dough was heated in an oven and the oven was at a temperature in the range. The court was not persuaded that the oven temperature was what was meant even when it was pointed out that if dough were heated to the top end of the stated range it would be turned into charcoal. Properly drafted, the claim would have specified that the temperature range in question was that of the oven.

Standard Oil Co v. American Cyanamid Co.3 - where the use of the term “partially soluble” was held to be too vague to meet the requirements of the statute. The District Court had held that since the inventor had used the words “slightly soluble” in other cases, by using the phrase “partially soluble” in the present case she must have meant something different but had failed to define it and this finding was affirmed by the Court of Appeals for the Federal Circuit.

Multiform Desiccants Inc. v. Medzam Ltd.4 where the primary issue was the meaning of the term "degradable" in the context of an envelope for releasing a material into a liquid into which the envelope was placed. The alleged infringement fulfilled this function by bursting. The court noted, however, that the only means of degradation contemplated by the specification was dissolution. Hence there was no infringement. The problem could have been avoided by simply stating that "although dissolution was the preferred method of degradation other methods known to those skilled in the art could also be used."

In 2005, in Phillips v. AWH Corp.5 the Court undertook an en banc review of the way in which patent claims were to be construed In its opinion the court emphasized that two primary considerations were the language of the claims themselves (and in particular the impact that the language of one claim can have on the interpretation of another) and on the language used in the specification.

Since then the number of cases where the patent owner may have been disappointed by the interpretation given by the court seems to have increased.

In Nystrom v. TREX Co.6 following its decision in Phillips v. AWH Corp., the Federal Circuit on reconsideration withdrew a prior opinion, issued before the Phillips decision in which it had held that the term "board" as used in a claim had a broad meaning independent of the material from which it was made (this having been based on a dictionary definition) and replaced this with a narrow meaning that the item in question had to have been made of wood because this was what was disclosed in the specification. The specification had discussed flooring in the context of wooden boards used for a deck, but contained nothing explicit saying that the boards had to be made of wood. The essential feature of the invention seems to have been the shape of the top surface of the board which was designed to aid water run-off and to have had little to do with the material from which it was made, except for a comment that by improving water run off one could avoid standing water on the deck and so avoid problems of deterioration caused by such standing water. The court concluded from this that the applicant must have intended that the board was made from wood. The court also looked at some statements in the prosecution history that had a "wooden" connotation, but which do not seem ever to have stated explicitly that the items in question had to be made of wood.

In Bicon Inc. v. Straumann Co.7 a claim that on its face claimed an emergence cuff member for use in preserving interdental papilla during a dental procedure of placing an abutment on a root member implanted in the alveolar bone of a patient was held to be infringed only when the cuff was in combination with the abutment. The claim set out some details of the abutment and the court reasoned:

“because [the claim] includes a detailed description of the abutment's physical characteristics and defines the emergence cuff in a way that depends on those physical characteristics, the invention that is recited [in the claim] and described in the supporting specification can only be understood as being limited by the abutment recited in the claim.”

Better drafting could have avoided this conclusion.

In Schoenhaus v. Genesco Inc.,8 the question was whether a claim directed to an orthoic device for use in footwear was infringed where a shoe itself possessed the features set out in the claim as being required by the device. The specification indicated that the device could be either removable or built into the shoe. Unfortunately for the patent owner, claim 2 read "A footwear product having as an element an orthoic device as claimed in claim 1.” The Federal Circuit concluded that for claim 2 to have any meaning, claim 1 had to be limited to a removable device because otherwise the language of claim 2 could lead to the nonsensical situation in which a shoe was being specified as being an element of itself. Writing claim 2 as an independent claim to a shoe having the requisite features could have avoided this problem.

In On Demand Machine Corp. v. Ingram Industries Inc.9 the invention was a method of printing single copies of books to order. In addition to reciting a number of technical featured required for this, the claims in suit specified that the method included the steps of “providing means for a customer to scan ... sales information” and “enabling the customer to select which book [he or she wished to have printed]”. A key issue in the case was the meaning of the term “sales information”. Although the specification contained no explicit definition of the term, based on the specification the court concluded that such information had to go beyond mere identification of the book that the customer wished to have copied and must include promotional information about the book. This conclusion was based at least in part on the fact that the specification stated:

“It is therefore an object of the invention to provide a book manufacturing system which is capable of storing data corresponding to the text and color graphical cover of tens of thousands of different books, as well as promotional sales text and color graphics for aiding the consumer in choosing a book for purchase, and facilitate the high speed manufacture of a single copy of a selected book on the immediate premises while the customer waits for a very short time.”

Consequently it was held that a method in which the only information provided to the viewer on which to make a selection was a book’s title or ISBN number did not meet these requirements of the claim. Again a more careful choice of language in the specification could have avoided this conclusion.

1 75 USPQ2d 1865 (Fed. Cir. 2005)

2 69 USPQ2d 1857 (Fed. Cir. 2004)

3 774 F.2d 448, 227 USPQ 293 (Fed. Cir. 1985)

4 45 USPQ2d 1429 (Fed. Cir. 1998)

5 75 USPQ2d 1369 (Fed. Cir. 2005).

6 76 USPQ2d 1481 (Fed. Cir. 2005)

7 78 USPQ2d1267 (Fed. Cir. 2006)

8 78 USPQ2d 1252 (Fed. Cir. 2006)

9 78 USPQ2d1428 (Fed. Cir. 2006).

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