Court Vacates Preliminary Injunction Based on Improper Claim Construction
July 10, 2001
Last Month at the Federal Circuit - August 2001
Judges: Lourie (author), Schall, and Linn
In Applied Concepts, Inc. v. Olympia Industrial, Inc., No. 00-1418 (Fed. Cir. July 10, 2001) (nonprecedential decision), the Federal Circuit vacated a preliminary injunction based on an error in a claim construction and remanded the case for further proceedings.
Applied Concepts, Inc. (“ACI”), an exclusive licensee of U.S. Patent No. 4,651,598 (“the ‘598 patent”), had successfully obtained a preliminary injunction against Olympia Industrial, Inc. (“Olympia”) for alleged infringement of the ‘598 patent. The patent relates to self-adjusting utility pliers having a “tooth and pawl” construction.
Olympia appealed the injunction, arguing that the district court had erred in construing two limitations of the asserted claim. The Federal Circuit reviewed the limitations at issue and rejected Olympia’s argument with regard to one limitation, but agreed with Olympia as to the other. In particular, the Court agreed that the district court had incorrectly identified the structure in the written description corresponding to a “slideable and pivotable fastening means” limitation. The Federal Circuit construed the limitation to include a “pawl” member, which it found to be an integral part of the claimed invention.
ACI argued that under the doctrine of claim differentiation, the additional structure, which was recited in a dependent claim, should not be read into the independent claim being construed. The Court disagreed and held that the doctrine of claim differentiation does not override the statutory requirements of 35 U.S.C. § 112, ¶ 6. Accordingly, the Court vacated the preliminary injunction and remanded.