Giles Rich, the former Chief Judge of the Federal Circuit, once famously stated that “the name of the game is the claim.” Meaning, the patent claims themselves define the scope of the property right held by a patent owner. However, three recent Federal Circuit decisions may be shifting the spotlight away from the claims alone and shining a light onto the patent as a whole. The cases, Lexington Luminance v. Amazon.com, Fenner Invs., Ltd. V. Cello P’ship, and Pacing Tech. LLC, v. Garmin Int’l, Inc., place a stronger focus on the specification in the first instance—above even the plain meaning of the claims.
The general proposition that the courts should look to the intrinsic evidence (i.e., the specification, the figures, and the prosecution history) is not new. For example, in Phillips v. AWH Corp. the CAFC stated that the claims “are generally given their ordinary and customary meaning” as understood by persons skilled in the field of invention. The Phillips decision also stated that, in addition to looking at the plain meaning of the claims, the specification and the prosecution history may be consulted to ascertain the meaning of the claims. In Lexington Luminance, Fenner, and Pacing Tech., however, the CAFC appears to take this one step further.
In Lexington Luminance, the CAFC rejected the district court’s application of general-purpose dictionaries to determine the scope of the claim terms. Rather, the Court found that the plain meaning, as defined by dictionaries, cannot limit the scope of the claims such that the meaning assigned to it by the court is unsupported by the intrinsic record. Therefore, the Court noted that the correct construction is one that “stays true to the claim language and most naturally aligns with the patent’s description of the invention…”
Moreover, in Fenner, the CAFC upheld the district court’s construction of claim limitations based upon the specification and prosecution history. The Court noted that “patent claims are not construed in the abstract, but in the context in which the term was presented and used by the patentee, as it would have been understood by a person of ordinary skill in the field of the invention on reading the patent documents.” The Court in Fenner goes so far as to state that the principle of claim differentiation cannot override the meaning supported by the patent specification or prosecution history.
Finally, in Pacing Tech., the CAFC eschewed the plain and ordinary meaning of a claim limitation in favor of statements made by the patent holder in the specification. The Court here found that Pacing Tech. provided a disavowal or disclaimer in the specification that was effective to limit the scope of the contested claim term. The Court held that because the specification enumerated particular features that accomplish “all of [the] objects and features” of the invention, those particular features fairly limit the claims.
These three cases may represent a more definitive shift from a “plain meaning” claim construction as a base line to necessarily looking to the specification and prosecution history to ascertain the scope of the claims. Thus, when drafting a patent application in the first instance, attention should be focused on ensuring that the claims are not unintentionally being narrowed. Additionally, the specification should be drafted with particular claim terms in mind, being sure that the specification provides support for a likely most desirable interpretation, as well as other interpretations or variations that may be desirable. Still further, when responding to the USPTO during prosecution, applicants should be mindful of the impact of their arguments on future claim interpretation issues.
This update was prepared by Nutter's Intellectual Property Department. For more information, please contact your Nutter attorney at 617.439.2000.
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