3.Prima Tek II, LLC v. Polypap, S.A.R.L.

In conducting its review, the Federal Circuit outlined the basic claim construction framework—highlighting that a court must first ascertain the ordinary meaning of a term and then examine the intrinsic evidence to see if the “heavy presumption” in favor of the ordinary meaning has been rebutted.Id. at 1148-49.In consulting the intrinsic evidence, the Court also acknowledged its past recognition of the “‘fine line between reading a claim in [light of] the specification, and reading a limitation into the claim from the specification.’”Id. at 1149 (quoting Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)).

The Federal Circuit found several problems with the district court’s construction.First, the phrases “inserted into” and “inserted through” do not appear in the plain language of the claims.Id. at 1149.The claims merely state that the floral holding material must “have an upper end, a lower end and an outer peripheral surface” and be “constructed of a material capable of receiving a portion of the floral grouping and supporting the floral grouping without any pot means.”Id. at 1150 (quoting claim 1 of the ‘856 patent and claim 9 of the ‘532 patent).Consequently, the district court’s construction could not be correct unless the intrinsic evidence indicated that the patentee unambiguously limited the scope of the claims to include the “inserted into” and “inserted through” limitations.Id. at 1148-49.Upon examining the written description, however, the Federal Circuit found that the patentee did not unambiguously provide for a contrary meaning.Id. at 1149.As a result, the Federal Circuit concluded that to interpret the claims otherwise would violate the rule against importing limitations into the plain language of the claims.Id. at 1149-50.

The Federal Circuit rejected this argument.First, the Federal Circuit stated that the cited portion of the specification did not describe the definition of “floral holding material” proposed by Polypap with “reasonable clarity, deliberateness, and precision.”Id. at 1150 (quoting In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). The court noted that the specification only mentioned that the floral holding material “may be (not must be) the type of material commonly referred to in the art as floral foam or soil.”Id. at 1150.It also noted that the specification made it clear that its descriptions were open-ended and only intended for illustrative purposes.Id.This was further supported by the varied use of language in the specification.Id.(“Varied use of a disputed term in the written description demonstrates the breadth of the term rather than providing a limited definition.”)Therefore, since the general rule of construction is that claims are not limited to their preferred embodiment unless done so by their own language, the Court concluded that the broad language of the claims must be given their ordinary meaning.Id.The Court similarly found Polypap’s arguments that the prosecution history narrowed the meaning of “floral holding material” unpersuasive.Id. at 1151

4.Electro Scientific Industries, Inc. v. Dynamic Details, Inc.

On appeal, the Federal Circuit had to determine the meaning of “circuit boards,” and in particular, whether the claim required the processing of multiple separated circuit boards or simply multiple circuit boards.The Federal Circuit concluded that the district court impermissibly limited claim scope.Electro Scientific, 307 F.3d at 1348.The correct interpretation of “circuit boards” only required the processing of multiple circuit boards, irrespective of whether the boards were on separate workpieces or one workpiece.

First, the Federal Circuit noted that the district court correctly limited “circuit boards” to require at least two substantially identical circuit boards because the preamble defined “circuit boards” as “at least first and second substantially identical circuit boards each having at least a first conductor layer, a dielectric layer, and a second conductor layer.”Id.In other words, the preamble limited the claims because it provided antecedent basis for circuit boards.Id.The Federal Circuit further stated, however, that nothing in the language of the preamble suggested that the circuit boards must be processed on separate workpieces.Id.

Next, the Federal Circuit reviewed the specification to see if the patentee had defined “circuit boards” in a manner requiring processing on separate workpieces.In particular, the court focused on language indicating that a workpiece does not become a circuit board until after processing, and therefore, “a single workpiece could embrace multiple circuit boards.”Id. at 1348.The Federal Circuit also verified that this understanding of the specification comported with the general understanding of experts in the field of electrical component fabrication.Id.

5.Inverness Medical Switzerland GmbH v. Warner Lambert Company (now known as Pfizer); Inverness Medical Switzerland GmbH v. Princeton Biomeditech Corporation

On appeal, despite the district court’s laudable efforts to ascertain the ordinary and accustomed meaning of “on” and “onto,” the Federal Circuit vacated the district court’s claim construction because it failed to embrace the ordinary and accustomed meaning of “on” and “onto.”Inverness Medical, 309 F.3d at 1382.Specifically, the Federal Circuit held that “disposition of the labelled reagent ‘on’ or ‘onto’ the test strip means disposition as a surface layer or within the test strip.”Id.Recall that this was the precise construction considered, but rejected, by the district court.Conopco, No. 99-101, at *20-22.

In reaching its decision, the Federal Circuit started with an analysis of the plain, ordinary meaning of the language of the claims.Inverness Medical, 309 F.3d at 1378.Just as the district court had done, the court began this analysis with resort to a standard English language dictionary.Id. (note: the court explained that neither party contended “on” carried a specialized meaning, and thus, a technical dictionary was not needed).

Standard English dictionaries provided the court with several potentially applicable definitions of “on.”Id. (stating that “on” has positional, functional, and temporal definitions).The Federal Circuit then determined that given the nature of the invention, the positional and functional definitions of “on” were the applicable definitions.Id.In its functional context, the ordinary meaning of “on” is “a function word [used] to indicate position over and in contact with that which supports from beneath.”Id.And, in its positional context, the ordinary meaning of “on” is “a function word [used] to indicate presence within.”Id.Provided the intrinsic evidence did not indicate that the patentee had limited the meaning of “on” to one of the two definitions, Inverness Medical presented the situation where “a word that has an ordinary meaning encompassing two relevant alternatives may be construed to encompass both alternatives.”Id. at 1379.

Again, the Federal Circuit explained that the district court did not give appropriate weight to the ordinary and accustomed meaning of the terms.Id. at 1373.The litigants did not contend that “mobility . . . is facilitated” had a technical meaning, so the Federal Circuit relied on a standard English dictionary.Id. at 1369.As found in Webster’s Dictionary, the court defined “mobility” as “the capacity or facility of movement” and “facilitated” as “to make easier or less difficult.”Id. at 1370.Therefore, the court concluded that the phrase “mobility . . . is facilitated” meant “the capacity to make movement easier,” and thus, was not limited to the ability to facilitate the release of the labelled reagent.Id.The Federal Circuit ultimately accepted this definition because nothing in the intrinsic evidence clearly indicated that the patentee had chosen to act as her own lexicographer or otherwise disclaim subject matter.Id. at 1370-73.