When Is Something “Capable of Flexing”?
September 26, 2003
Last Month at the Federal Circuit - October 2003
Judges: Linn (author), Archer, and Dyk (concurring- in-part and dissenting-in-part)
In Arlington Industries, Inc. v. Bridgeport Fittings, Inc., No. 02-1517 (Fed. Cir. Sept. 25, 2003), the Federal Circuit affirmed a judgment of infringement after finding no error in the district court’s claim construction.
Arlington Industries, Inc. (“Arlington”) owns U.S. Patent Nos. 5,042,673 and 5,117,966, both of which are directed to electrical box extenders. The claims recite wings or sides that are “capable of flexing” about the base. The district court had construed the claim limitation “capable of flexing” to mean “a generalized combination of cantilever bending and bowing about the general area of the base or base end.” Bridgeport Fittings, Inc. (“Bridgeport”) argued that the district court had erred in construing the “capable of flexing” limitation to encompass anything more than “cantilever flexing” (bending of a rigid wing or side solely about its base end connection, without other bending or bowing).
The Federal Circuit determined that the ordinary and customary meaning (“to bend”) should apply because there was no indication in the written description that the inventor acted as his own lexicographer and intended the phrase to mean something different. Nor was there any express disclaimer of a particular meaning of “flexing” during prosecution of the original applications or a reexamination proceeding.
Although Bridgeport argued on appeal that the broad construction of the “capable of flexing” limitation must be erroneous because it renders the claims invalid in light of prior art box extenders, Bridgeport did not challenge the jury’s finding that Arlington’s patent is not invalid.
The “capable of flexing” limitation in one claim is followed by the following claim language: “corners connecting said side edges of said sides . . . with said sides furthermore capable of having their corners removed to increase the degree of flexing about said base toward said axis through said face member.” The district court understood that the corners are capable of being “removed to increase the degree of flexing.” This indicated to the district court that “the corners can be removed . . . [to] provide cantilever flexing where there was none before.”
Bridgeport argued that corners “removed to increase the degree of flexing” refer to a change in the amount of flexing, not in the type of flexing. Furthermore, the corners must be “specially constructed to flex or to be cut or removed to ‘increase the degree of flexing.’” The Federal Circuit found no reason to read the words “increase [in] the degree of flexing” in the manner argued by Bridgeport and declined to find error in the district court’s construction of “flexing” on this basis.
The district court had also construed the term “base” to refer to a general area, rather than a structurally distinguishable finite section. The Federal Circuit did not find the term “base” unclear and declined to resort to the specification to supplant the ordinary meaning. There was no error in the district court’s construction.
Judge Dyk concurred with the judgment; however, he dissented from the majority’s construction of “capable of flexing” limitation, concluding that the majority’s claim construction allowed the patentee to claim the very device disclaimed in the course of patent prosecution. Judge Dyk concluded, however, that Bridgeport did not preserve this error in its objection to the jury instruction.