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Specification Clarifies Competing Dictionary Definitions of Claim Term

July 06, 2004

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Last Month at the Federal Circuit - August 2004

Judges: Michel (author), Newman, and Schall

In Searfoss v. Pioneer Consolidated Corp., No. 03-1606 (Fed. Cir. July 6, 2004), the Federal Circuit affirmed the district court’s construction of the claim terms at issue and its SJ of noninfringement that Pioneer Consolidated Corporation (“Pioneer”) did not infringe U.S. Patent No. 5,031,955 (“the ‘955 patent”) under the DOE.

The ‘955 patent, owned by Marlane and Timothy Searfoss (collectively “Searfoss”), provides a flexible cover assembly for selectively covering and uncovering the bed of a truck. The claimed cover assembly includes an actuation means for connecting a tension bail to an extension ssembly and for applying a downward force through a center section of the tension bail. The first issue on appeal was whether the meaning of “connecting,” as used in the claims of the ‘955 patent, was limited to direct connections. The district court’s claim interpretation required the meaning of the term “connecting” to exclude indirect connections because the patent referred to the term “connecting” as synonymous with “attaching.”

The Federal Circuit began its claimconstruction analysis by acknowledging that competing general dictionary definitions of the term “connect” include both direct and indirect connections. To resolve the dispute, the Court looked to the intrinsic record. It noted that the specification repeatedly refers to direct connections between the legs of the tension bail and the legs of the extension assembly. It further noted that every pertinent figure in the ‘955 patent depicts a direct connection between the legs of the tension bail and those of the tension assembly. Finally, the Court reasoned that, as found by the district court, to construe the word “connecting” to include indirect connections would be problematic since such an interpretation would lead one to understand the claims to require the cover (as the actuation means) to exert a downward force upon itself.

Having determined that the narrower interpretation of the term “connecting” applied, the Court moved on to the second issue on appeal whether the Pioneer system operated in the “same way” as the Searfoss assembly and was, thus, equivalent to the claimed assembly. Searfoss asserted that the Pioneer system combined two physical components to operate in the same way as the direct pivotal connection of the claimed invention.

While the Federal Circuit agreed that two physical components of an accused device may be viewed in combination to serve as an equivalent of one element of a claimed invention, the Court refused to accept the Appellants’ argument. Instead, the Court opined that to find that the indirect connection of the Pioneer system constitutes an equivalent of the claimed direct connection function would vitiate the claimed connection function. Such a result would require the Court to ignore the proper construction of “connecting.” Accordingly, the Court held that no reasonable jury could find that the accused system was insubstantially different than the claimed invention and affirmed the district court’s SJ of noninfringement.