Claims Improperly Construed to Exclude Embodiments Disclosed in Specification
January 30, 2008
Last Month at the Federal Circuit - February 2008
Judges: Newman (author), Schall, Linn
[Appealed from: N.D. Ohio, Judge O’Malley]
In Oatey Co. v. IPS Corp., No. 07-1214 (Fed. Cir. Jan. 30, 2008), the Federal Circuit modified the district court’s claim construction, vacated the district court’s grant of SJ of noninfringement, and remanded.
The Oatey Company (“Oatey”) owns U.S. Patent No. 6,148,850 (“the ’850 patent”) directed to washing machine “outlet boxes.” Some municipal plumbing codes prohibit sharing of waste water ports from washing machines with the waste water ports of other appliances, such as air conditioners. The outlet box of the ’850 patent accommodates two output drain ports that comply with these plumbing codes, the ports feeding into a “tailpiece.”
Oatey asserted several claims of the ’850 patent against IPS Corporation (“IPS”). The district court construed the term “first and second juxtaposed drain ports in said bottom wall” in claim 1 to exclude the embodiment shown in Figure 3, which employed a single opening divided by a wall. The district court granted SJ of noninfringement. Oatey appealed.
On appeal, the Federal Circuit concluded that the district court improperly excluded the embodiment shown in Figure 3 from the scope of claim 1. The Court explained, “We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification.” Slip op. at 8. The Court noted that it has interpreted claims to exclude embodiments where those embodiments are clearly disclaimed in the specification or prosecution history, but found no such disclaimer in this case. The Court found that the specification confirmed a broader construction by disclosing “that if a test cap is not used, the oblong opening in the bottom wall (in conjunction with the tailpiece) may itself define the drain ports.” Id. at 9. Thus, the Court held “[a]t leas[t] where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence on the contrary.” Id.
The Court further rejected IPS’s argument that the inclusion of Figure 3 in the scope of claim 1 would encompass the prior art, which shows only a single drain port. The Court concluded that “Figure 3 shows the structure whereby the two juxtaposed drain ports are formed, and the claims require two drain ports; we discern no merit to the argument that including Figure 3 in claim 1 would include prior art.” Id. at 10.
The Court also rejected IPS’s argument that the term “fluid passageways” in other claims restricted the scope of claim 1. The Court acknowledged the presumption of different scope among claims, but noted that claims may cover the same subject matter in different words. The Court concluded that although “first and second juxtaposed drain ports in said bottom wall” define distinct openings, that did not exclude the distinct openings shown by the structure in Figure 3.