Other Cases

Our review of the cases in which the district courts construed claims too narrowly indicates that the Federal Circuit often found that the district courts failed to give claim terms their ordinary and accustomed meaning.Abbott Labs. v. Syntron Bioresearch, Inc., 2003 WL 21544291, at * 5 (Fed. Cir. 2003) (explaining that the district court’s interpretation of “non-diffusively bound” and “non-diffusively immobilized” impermissibly narrowed meaning of the claim); Omega Eng’g, Inc. v. Raytek Corp., 2003 WL 21517751, at * 6 (Fed. Cir. 2003) (holding that the district court erred in reading a functional limitation into the plain language of a means-plus-function claim); Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 832 (Fed. Cir. 2003) (stating that the district court relied improperly on extrinsic evidence in constructing the claims); Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 326 F.3d 1215, 1221 (Fed. Cir. 2003) (district court did not use a contemporaneous dictionary); Riverwood Int’l Corp. v. R.A. Jones & Co., Inc., 324 F.3d 1346, 1358 (Fed. Cir. 2003) (district court erred in relying on extrinsic evidence in the construction of “flight bars”); Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1372-73 (Fed. Cir. 2003) (explaining that the court committed two errors: (1) it prematurely abandoned its quest for the ordinary meaning of a phrase; and (2) it limited the language of the claim to the preferred embodiment); Northrop Gruman Corp. v. Intel Corp., 325 F.3d 1346, 1354 (Fed. Cir. 2003) (finding that the district court failed to give “bus interface unit” its ordinary and accustomed meaning); Rambus, Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1093 (Fed. Cir. 2003) (district court’s construction would render dependent claims meaningless); Middleton, Inc. v. Minnesota Mining and Mfg. Co., 311 F.3d 1384, 1387-89 (Fed. Cir. 2002) (remanding the case due to the district court’s overly restrictive interpretation of “uniform”); Union Carbide Chemicals & Plastics Tech. Corp. v. Shell Oil Co., 308 F.3d 1167, 1177-79 (Fed. Cir. 2002) (explaining that the district court impermissibly limited the scope of the claims through reliance on the specification and prosecution history).

This is not to suggest that the district courts completely overlooked the importance of the claim language.Rather, according to the Federal Circuit, the district courts did not give the ordinary meaning enough consideration, and in particular, did not necessarily apply the “heavy presumption” in favor of the ordinary meaning of a claim.In Prima Tek II, for example, the district court stated that “terms used in the claim language are to be given their ordinary and customary meaning unless another meaning is specified or evident from the patent history.Prima Tek II, No. 99-CV-0220-MJR, at * 6 (S.D. Ill. 2001).Similarly, in Electro Scientific, the district court stated that claims should be given their “ordinary meaning as used in the field of the invention unless the text of the patent indicates that a special meaning out to be applied.”Electro Scientific, SA CV 00-272 AHS, at * 2 (2001).Both of these statements are consistent with Federal Circuit precedent, however, in recent years, the Federal Circuit has shifted toward a “heavy presumption” in favor of the ordinary and accustomed meaning of a claim.Neither of these district court opinions mentions this “heavy presumption.”

In many of the cases, the Federal Circuit also placed great importance on the use of dictionaries as aids in determining the ordinary meaning.See, e.g., Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 325 F.3d 1215, 1220-22 (Fed. Cir. 2003) (providing a general description of the proper use of dictionaries); Apex, Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1373 (Fed. Cir. 2003) (looking to the Dictionary of Computing for the ordinary meaning of “circuit”); Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1346 (Fed. Cir. 2003) (stating that “[d]ictionary definitions frequently are useful in this process” of determining the ordinary and customary meaning of a claim); Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1316 (Fed. Cir. 2003); Inverness Medical Switzerland GmbH v. Princeton Biomeditech Corp., 309 F.3d 1365, 1369-70 (Fed. Cir. 2002) (defining “mobility” with aid of a dictionary); Inverness Medical Switzerland GmbH v. Warner Lambert Co., 309 F.3d 1373, 1377-78 (Fed. Cir. 2002) (relying on standard English dictionaries for the ordinary meaning of “on”); Union Carbide Chemicals & Plastics Tech. Corp. v. Shell Oil Co., 308 F.3d 1167, 1177 (Fed. Cir. 2002) (using a dictionary to define “characterizable”).In doing so, the Federal Circuit seems to emphasize that adherence to this arguably new framework of looking first to the dictionary definition of claim terms will prevent district courts from reading limitations from the specification into the patent claims.Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1204 (Fed. Cir. 2002).

Note, however, that the Federal Circuit does not always adhere to this new, Texas Digital framework, which only makes claim construction a more complicated task for the district court.Compare Waner v. Ford Motor Co., 331 F.3d 851, 854-55 (Fed. Cir. 2003) (using a dictionary to define “flange” after having determined that the intrinsic record did not provide a suitable definition), Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1346 (Fed. Cir. 2003) (stating that “[d]ictionaries definitions frequently are useful in this process” of determining the ordinary meaning of a claim), Lacks Industries, Inc. v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335, 1342 (Fed. Cir. 2003) (explaining that while dictionaries may be used to determine ordinary meaning, dictionaries are still extrinsic evidence), and Apex, Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1371 (Fed. Cir. 2003) (“When construing claims, we begin with an examination of the intrinsic evidence, i.e., the claims, the other portions of the written description, and the prosecution history . . . .Additionally, dictionary definitions may be consulted in establishing a claim term’s ordinary meaning.”), with Brookhill-Wilk 1 LLC v. Intuitive Surgical, Inc., 326 F.3d 1215, 1221-22 (Fed. Cir. 2003) (explaining that while the intrinsic record must always be consulted, the use of a dictionary is the “first step” in the claim construction process), Schumer v. Lab. Computer Sys. Inc., 308 F.3d 1304, 1311 (Fed. Cir. 2002) (“The district court’s claim construction contradicts the plain meaning of the word “or” in the claims.The proper approach is to construe the claim language using standard dictionary definitions, because here, the claims have no specialized meaning.), and Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002).

Worse still for the district courts, a careful analysis starting with the plain language of the claim and the use of a dictionary to ascertain an initial ordinary and customary meaning provides no guarantees of affirmation by the Federal Circuit.Inverness, for example, is illustrative of a district court engaging in the correct framework, but being overturned on appeal.In that case, the district court used the right framework, but, arguably, applied it incorrectly.The case illustrates that the Federal Circuit may be very reluctant to vary the ordinary meaning and will only do so in extreme situations, such as when the patentee expressly limited the invention to the preferred embodiment.

As for guidance for the district courts, to prevent the Federal Circuit from overturning a claim construction on appeal for being too narrow, a district court should make clear that it is following the basic framework of Texas Digital and its progeny. That is, the court should provide ample support for the ordinary meaning of the claim term and explain that the court recognizes a “heavy presumption” in favor of this ordinary meaning.See generally Apex, Inc. v. Raritan Computer, Inc., 325 F.3d 1364 (Fed. Cir. 2003) (taking the district court to task for failing to determine the ordinary meaning of various claim terms).In addition, the court should engage in a careful analysis reflecting how the intrinsic evidence supports the definition, though that may not always protect a court from correction by the Federal Circuit.In Bio Technology General Corp. v. Duramed Pharmaceuticals, Inc., for example, the Federal Circuit determined that the district court impermissibly narrowed a claim by relying on a statement in the specification stating that a particular drug delivery system embodied the invention.325 F.3d 1356, 1362 (Fed. Cir. 2003).In correcting the district court, the Federal Circuit explained that “characterizing a particular drug delivery system as ‘embodying’ the invention is not the same as stating that the term ‘drug delivery system’ is limited to that embodiment.”Id.

Other examples of courts placing too much emphasis on the specification or prosecution history include:Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1319 (Fed. Cir. 2003) (district court construed function too narrowly in a means-plus-function claim; the stated function is described by the language after “means for” and before “whereby”); Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1313-14 (Fed. Cir. 2003) (district court allowed the jury to add an additional limitation to the claim); Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368-70 (Fed. Cir. 2003) (district court’s construction would exclude a preferred embodiment, which “is rarely, if ever, correct and would require highly persuasive evidentiary support”); Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 830-32 (Fed. Cir. 2003) (finding that in construing the phrase “caching policy identification information,” the district court impermissibly read a limitation from the specification into the claims and improperly relied on the prosecution history and extrinsic evidence); Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1349-50 (Fed. Cir. 2003) (explaining that given the choice between two interpretations, where one of the interpretations would require importing the word “significant” into the claim language, a court should generally adopt the interpretation that does not require importing an additional limitation into the plain claim language).

C.Federal Circuit Narrowed the District Court’s Claim Construction

Although the majority of the errors in the published Federal Circuit claim construction opinions were due to a district court’s narrow claim construction, the Federal Circuit did correct a few courts for reading claims too broadly.While in some of the cases the district court made a rather fundamental interpretation error, other errors were less clear and illustrate the difficult position of a district court in determining the proper claim construction under the Federal Circuit’s current guidelines.

Waner v. Ford Motor Company is representative of the difficult position of a district court in claim construction.331 F.3d 851 (Fed. Cir. 2003).The critical issue before the district court was the meaning of “flange,” and in particular, whether it required the flange to have a raised or projected edge.Id. at 854-55.The district court gave “flange” a broad meaning, being careful to not limit the claim to the preferred embodiment: “the portion of a structure to either stiffen or attach it to another structure, not requiring the five-degree angle as described in the preferred embodiment, and not necessarily requiring any angles.”Id. at 854.

On appeal, finding that the specification did not explicitly define the term, the Federal Circuit looked to a dictionary.[1]A standard English dictionary provided two definitions: (1) “a raised or projecting edge, rib, or rim for strength, as in a T-rail; for guidance, as on a rail to keep wheels in place; for connection with some other object, as in some pipes”; (2) “a tool for making flanges.”Id. at 854 (quoting Webster’s New Twentieth Century Dictionary).The Federal Circuit then determined that the most appropriate definition was “a raised or projecting edge.”Id.This determination was based on the description of the invention in the specification: “Inboard side flange is preferably at about a 5 degree angle to the plane within which flat panel lies.”Id. (quoting column 2, line 65 to column 3, line 2 of the ‘710 patent). Based on this evidence, the Federal Circuit concluded that there was nothing in the patent to indicate a flange that was coplanar with the flat panel, and thus, the ordinary meaning of “flange” must be a “raised or projecting edge.”Id.

While the Federal Circuit’s definition may have been correct based on the dictionary definition of “flange” (although this is debatable), it is easy to see how the district court gave “flange” a broader meaning.In particular, while it is true that the specification does not indicate that the flange is coplanar, the specification also does not limit flange to non-planar structures.The portion of the specification quoted by the Federal Circuit, for example, states that the “flange is preferably at about a 5 degree angle.”Id. (emphasis added).Under the reasoning of the Federal Circuit in Prima Tek (see above), this language does not limit the claim because “preferably” is not restrictive language.See also Inverness Medical Switzerland GmbH v. Warner Lambert Company, 309 F.3d at 1379 (explaining that both constructions of “on” were supported by the intrinsic evidence because the specification merely describe the application of the labelled reagent to the surface of the test strip as being preferable, not required).

Unlike Waner, many of the other broadening errors could have been avoided through attention to more settled rules within the claim construction framework.In PIN/NIP, Inc. v. Platte Chemical Co., for example, the Federal Circuit reversed the district court’s construction of “composition” as it appeared in a chemical claim because the district court did not construe the term in accordance with the understanding of those skilled in the art.304. F.3d 1235, 1243-44 (Fed. Cir. 2002).In Verve, LLC v. Crane Cams, Inc., in construing “substantially constant wall thickness” to determine a claim of invalidity based on indefiniteness, the district court erred by holding that the specification and prosecution history are the sole sources of evidence for determining the meaning of an ambiguous claim.311 F.3d 1116, 1119 (Fed. Cir. 2002). The Federal Circuit corrected the district court by explaining that it is entirely appropriate, and indeed required, to consult extrinsic evidence if the claim term is still ambiguous after consulting the intrinsic evidence.Id. at 1119-20.Finally, in Eaton Corporation v. Rockwell International Corporation, the district court failed to include a limitation from the preamble where the preamble limitation provided antecedent basis for terms appearing in the body of the disputed claim.323 F.3d 1332, 1339 (Fed. Cir. 2003).