No “Heavy Presumption” of “Ordinary Meaning” for Claim Term
September 14, 2004
Last Month at the Federal Circuit - October 2004
Judges: Michel (author), Newman, and Bryson
In Iredeto Access, Inc. v. Echostar Satellite Corp., No. 04-1154 (Fed. Cir. Sept. 14, 2004), the Federal Circuit affirmed the district court’s grant of SJ of noninfringement.
This opinion is another in a string of Federal Circuit decisions weighing in on when claim terms are entitled to their ordinary meaning versus when terms should be restricted to other meanings. Notwithstanding the Court’s line of cases holding that there is a heavy presumption that claim terms should be given their ordinary meaning, the Court here ruled that a claim term was not entitled to its ordinary meaning when it has been defined in the specification by implication.
At issue was the term “group” used in claims directed to an encryption system for broadcasting satellite programming to subscribers. The patent owner argued that a “group” could include all of the subscribers in the system. The accused infringer, however, argued that a “group” is a subset of all the subscribers. Because of uncontested evidence at the district court, if a “group” is less than all subscribers, then there is no infringement. The district court construed “group” to refer to a subset of all subscribers and granted SJ of noninfringement.
The Federal Circuit affirmed, holding that the patentee had given up the more inclusive meaning of “group.” Looking at the prosecution history, the Court found that applicant took the position that “group” had no accepted meaning in the art and asserted that its definition was apparent from the specification. The Court found that every group in the specification is a subset of all of the subscribers and that there is no disclosure of a group that includes all subscribers. Accordingly, the Court found that although “the specification does not contain any statements of explicit disavowal or words of manifest exclusion, it repeatedly, consistently, and exclusively uses ‘group’ to denote fewer than all subscribers, manifesting the patentee’s clear intent to so limit the term.” Slip op. at 14. The Court concluded that the patentee’s intent to rely on the patent specification to define a “group” took this case out of the regime of cases where there is a heavy presumption that claim terms are accorded their ordinary meaning.