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Patentee Denied Scope of Preferred and Illustrated Embodiments Where Not All Claims Included Disputed Term and Patentee Did Not Act as Own Lexicographer

June 04, 2008

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Last Month at the Federal Circuit - July 2008

Judges: Mayer, Friedman, Moore (author)

[Appealed from: S.D. Ohio, Judge Barrett]

In Helmsderfer v. Bobrick Washroom Equipment, Inc., No. 08-1027 (Fed. Cir. June 4, 2008), the Federal Circuit affirmed the district court’s judgment of noninfringement, holding that the district court did not err in construing the term “partially hidden from view” of U.S. Patent No. 6,049,928 (“the ’928 patent”) to mean “hidden from view to some extent but not totally hidden from view.”

The ’928 patent is directed to baby diaper changing stations. John Helmsderfer and Brocar Products, Inc. (collectively “Brocar”) sued Bobrick Washroom Equipment, Inc., BWA South Company, Inc., Target Sales and Marketing, LLC, and Patterson Case Associates, Inc. (collectively “Bobrick”), alleging that Bobrick’s baby changing stations infringed the ’928 patent. After a Markman hearing, the district court construed the claim term “partially hidden from view” to mean “hidden from view to some extent but not totally hidden from view.” Based on this construction, the parties filed a stipulation asking the district court to enter final judgment of noninfringement. The district court did so. Brocar appealed.

On appeal, Brocar argued that the district court erred when it construed the term “partially hidden from view” to exclude “totally hidden from view.” Brocar proposed that the term should instead mean “positioned so at least some of the top surface is blocked from being seen.” The Federal Circuit disagreed. First, the Court rejected Brocar’s assertion that the written description supported its proposed construction because it states that the top surface is “generally hidden from view.” The Court found no evidence to support Brocar’s contention and noted that the written description did not once mention the term “partially hidden.” It noted that the claims elsewhere recited the terms “generally” and “at least.” The Court reasoned that this language gave rise to a presumption that the claim terms have different meanings and declined to construe the term “partially hidden from view” to have the same meaning as “generally hidden from view” or “at least partially hidden from view.”

The Federal Circuit also rejected Brocar’s argument that the district court accorded too much weight to extrinsic evidence. It observed that here, “partially” was not defined in the specification and that the phrase “partially hidden from view” did not even appear in the written description. The Court explained that “[w]hen the intrinsic evidence is silent as to the plain meaning of a term, it is entirely appropriate for the district court to look to dictionaries or other extrinsic sources for context—to aid in arriving at the plain meaning of a claim term.” Slip op. at 5. The Court noted that all three dictionaries cited by the district court supported its construction.

Finally, the Court found no error in that the district court’s construction excluded the preferred and every illustrated embodiment. The Court explained that its case law generally counsels against interpreting a claim term in a way that excludes the preferred embodiment from the scope of the invention. The Court noted, however, that other claims of the ’928 patent, which were not at issue on appeal, did not recite the disputed term, which left open the possibility that such claims may encompass the omitted embodiments.

Accordingly, the Federal Circuit determined that the district court did not err by construing the term “partially hidden from view” to exclude “totally hidden from view” and affirmed the district court’s judgment of noninfringement.