Claims Limited to Only Embodiment
April 08, 2004
Last Month at the Federal Circuit - May 2004
Judges: Lourie (author), Newman, and Dyk (dissenting-in-part)
In Phillips v. AWH Corp., No. 03-1269 (Fed. Cir. Apr. 8, 2004), the Federal Circuit affirmed the district court’s SJ of noninfringement that AWH Corporation, Hopeman Brothers, Inc., and Lofton Corporation (collectively “AWH”) did not infringe U.S. Patent No. 4,677,798 (“the ‘798 patent”). The Federal Circuit found that the district court had erred in its claim construction but, ultimately, reached the same conclusion of noninfringement. The Federal Circuit also affirmed the district court’s dismissal of Phillips’s claim of tradesecret misappropriation against AWH.
As a key issue in the case, the Federal Circuit, like the district court, focused on the construction of the term “baffle.” The ‘798 patent relates to building modules adapted to fit together for the construction of fire, sound, and impact-resistant security barriers. These modules include “means disposed inside [a] shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel shell walls,” as recited in claim 1. The disclosure of the ‘798 patent describes and illustrates the baffles as angled members deployed from the shell walls at angles of other than 90 degrees. The claims, however, do not include limitations relating to the angle at which the baffles meet the shell walls.
The district court concluded that claim 1 of the ‘798 patent includes means-plusfunction language invoking 35 U.S.C. § 112, ¶ 6, and, therefore, limited the term “baffles” to the angled structures disclosed in the specification that extend from the shell walls at angles other than 90 degrees. The district court’s SJ of noninfringement followed in view of AWH’s baffles that met the shell walls at an angle of 90 degrees.
While the Federal Circuit found that the district court improperly relied upon § 112, ¶ 6 to construe the term “baffles,” the Federal Circuit reached the same conclusion with respect to noninfringement. Reading the term “baffles” in view of the specification, the Federal Circuit concluded that the term “baffles” must extend from the shell walls at acute or obtuse angles other than 90 degrees. The Court observed that the only embodiment disclosed in the ‘798 patent includes baffles angled at acute or obtuse angles with respect to the shell walls. With no other embodiments disclosed, the Court concluded that the angled baffles are the actual invention and not just a preferred embodiment. Also, the Federal Circuit found that the baffles of the ‘798 patent must be angled with respect to the shell walls to accomplish one of the stated goals of deflecting projectiles.
Thus, despite a recognized plain meaning of the term “baffles,” the Federal Circuit looked to the disclosure of the ‘798 patent and narrowly construed the term “baffles” to include elements described in the specification but not included in the claims.
In dissent, Judge Dyk argued that this claim construction went against established precedent and constituted an improper incorporation into the claims of structural details of the disclosed preferred embodiment.
With respect to Phillips’s claim of tradesecret misappropriation, the Federal Circuit agreed with the district court that the claim was time-barred by the statute of limitations clause set forth by the governing state law.