Abstract Dictionary Definitions Are Not Determinative of Claim Construction
April 11, 2003
Last Month at the Federal Circuit - May 2003
Judges: Linn (author), Schall, and Bryson
In Brookhill-Wilk 1, L.L.C. v. Intuitive Surgical, Inc., No. 02-1145 (Fed. Cir. Apr. 11, 2003), the Federal Circuit reversed the district court’s grant of SJ of noninfringement of U.S. Patent No. 5,217,003 (“the ‘003 patent”) and remanded the case for further proceedings.
Brookhill-Wilk 1, L.L.C. (“Brookhill”) is the owner of the ‘003 patent, which is directed to systems and methods for performing robotic surgery that allow a surgeon to operate from a “remote location beyond a range of manual contact.” This claim limitation became the focus of the appeal. Brookhill sued Intuitive Surgical, Inc. (“Intuitive”), alleging that Intuitive’s da Vinci robotic surgical system infringed Brookhill’s ‘003 patent. The accused da Vinci system was operated by a surgeon in the same operating room as the patient. Intuitive sought a construction of the term “remote location” to mean “a location outside of the operating room,” while Brookhill argued that it was merely any location of the surgeon that is beyond an arm’s length from the patient.
In construing the term “remote location,” the district court had consulted dictionary definitions, the objects and advantages of the invention, and the embodiments disclosed in the patent. In particular, the district court had determined that the patentee’s objects and advantages would not be met unless the surgeon was located beyond the room in which the patient is located. Additionally, the district court found that the written description and prosecution history of the ‘003 patent required the surgeon to be outside of the operating room. Having so ruled, the district court granted SJ of noninfringement in favor of Intuitive.
The Federal Circuit noted that the term “remote location” found context in the surrounding phrase “remote location beyond a range of direct manual contact.” The Court also looked to dictionary definitions, which it found did not favor either party’s proposed claim constructions. The Court cautioned that general meanings from dictionaries should be compared against the use of the terms in context, and instructed that the intrinsic record should be consulted to identify which dictionary meaning is most consistent with the words in the disclosure.
The Court found that while the written description of the patent sets forth no specific parameters regarding the distance between the surgeon and patient, it generally teaches that the surgeon may operate without directly touching the patient, and nothing in the patent disclosure disavows the use of the invention within an operating room. The fact that the patentee distinguished the invention from traditional surgery and touted the possibility of surgery performed at great distances from the patient did not restrict the claimed invention to embodiments where the doctor was located outside of the operating room, the Court reasoned.
The Court also noted that the prosecution history of the ‘003 patent supported its claim construction. The prosecution history includes statements that defined the term “remote location beyond a range of direct manual contact” to mean that the remote location is beyond an arm’s reach of the patient. When reviewing amendments made during prosecution in which the claim limitation “beyond a range of direct visual contact” was changed to “beyond a range of direct manual contact,” the Court found that such amendments did not attempt to capture something that was not supported by the original specification.
For these reasons, the Federal Circuit held that the district court’s construction of the term “remote location” was erroneous, reversed the grant of SJ, and remanded the case for further proceedings.