February 2003
Journal of the Patent and Trademark Office Society
Authored by James R. Barney
By now, we have heard the "ordinary meaning" rule so many times that it almost goes unnoticed among the jumble of rules and canons relating to claim construction. The Federal Circuit has stated the ordinary-meaning rule in various forms:
"Absent a special and particular definition created by the patent applicant, terms in a claim are to be given their ordinary and accustomed meaning."1
"The general rule is, of course, that terms in the claim are to be given their ordinary and accustomed meaning."2
"[T]he ordinary and accustomed meaning of a disputed claim term is presumed to be the correct one . . ."3
[Courts] "indulge a 'heavy presumption' that a claim term carries its ordinary and customary meaning."4
But where did this rule come from? More importantly, can a claim term really have an "ordinary and accustomed meaning" and, if so, how does one find it? This article endeavors to provide answers to those questions. First, this article provides a brief history of the "ordinary meaning" rule and, in particular, the evolution of the "heavy presumption" in favor of the ordinary and accustomed meaning. Second, this article explores the many interpretive tools that are available to aid courts in determining the "ordinary meaning" of claim terms. Notably, courts often underutilize and/or misapply these tools, which, in turn, results in an improper allocation of the burden of proof during claim construction. Finally, this article outlines a modest proposal for how a Markman analysis might be performed, giving full weight to the text of the claims and properly allocating the burden of proof associated with the "ordinary meaning" rule.
A. The Historical Role of "Ordinary and Accustomed Meaning" in Claim Construction
In the seminal case of Autogiro Co. v. United States, Judge Durfee of the United States Court of Claims (a predecessor of the Federal Circuit) warned that "[c]laims cannot be clear and unambiguous on their face."5 Yet, thirty-five years later, nearly every claim construction decision from the Federal Circuit and the district courts now begins, as if by rote, with the incantation that "terms in a claim are to be given their ordinary and accustomed meaning."6 Has there been a major philosophical shift since 1967, away from Judge Durfee's skepticism regarding so-called "clear and unambiguous" claims toward a claim construction system that is primarily focused on the "ordinary meaning" of claim terms? The answer is both "yes" and "no." On one hand, the concept that claims should be construed according to their "ordinary" or "clear" meaning predates Autogiro by at least ninety years. In Keystone Bridge Co. v. Phoenix Iron Co.,7 the Supreme Court considered a claim directed to the use of chords in a bridge truss, in which the chords comprised:
wide and thin rolled bars with enlarged ends, formed by upsetting the iron, when heated, by compression into moulds of the required shape, for the purpose of increasing the density, toughness, and strength of the eye of the rod, and enlarging the eye, without diminishing its transverse section . . .8
The Supreme Court held that the accused truss chords, although they contained enlarged ends shaped by compression, did not infringe the asserted claim because they comprised "round or cylindrical bars" rather than "wide and thin rolled bars."9 In so holding, the Court remarked that, "When the terms of a claim in a patent are clear and distinct (as they always should be), the patentee, in a suit brought upon the patent, is bound by it."10
In Autogiro, the Court of Claims criticized the Keystone Bridge holding because the Supreme Court "confined [itself] to the language of the claims."11 According to the court in Autogiro:
The sanction of new words or hybrids from old ones not only leaves one unsure what a rose is, but also unsure whether a rose is a rose. Thus we find that a claim cannot be interpreted without going beyond the claim itself. No matter how clear a claim appears to be, lurking in the background are documents that may completely disrupt initial views on its meaning.12
Thus, the main criticism in Autogiro of the Supreme Court's decision in Keystone Bridge was that courts cannot construe the claims of a patent without referring to the written description and prosecution history of the patent. That philosophy can be characterized as a "holistic" approach to claim construction in that the entire patent (including its prosecution history) must be considered before the actual "meaning" of the claims can be resolved. To a certain extent, that philosophy is still a driving force behind the Federal Circuit's claim construction methodology.13
On the other hand, one notable change in the law of claim construction that has occurred since Autogiro is the implementation of a presumption in favor of the "ordinary and accustomed" meaning of claim terms.14 Although the court in Autogiro never addressed such a presumption, it is apparent that the court would have rejected any notion that the "plain meaning" of a claim term—as construed at first blush—should enjoy a presumption of correctness. This is reflected in the court's obvious lack of faith in the ability of the English language to convey complex technical information with any degree of legal certitude:
The very nature of words would make a clear and unambiguous claim a rare occurrence. Writing on statutory interpretation, Justice Frankfurter commented on the inexactitude of words:
They are symbols of meaning. But unlike mathematical symbols, the phrasing of a document, especially a complicated enactment, seldom attains more than approximate precision. If individual words are inexact symbols, with shifting variables, their configuration can hardly achieve invariant meaning or assured definiteness.15
The inability of words to achieve precision is none the less extant with patent claims than it is with statutes. . . . . An invention exists most importantly as a tangible structure or a series of drawings. A verbal portrayal is usually an afterthought written to satisfy the requirements of patent law. This conversion of machine to words allows for unintended idea gaps which cannot be satisfactorily filled. Often the invention is novel and words do not exist to describe it. The dictionary does not always keep abreast of the inventor. It cannot.16
Judge Durfee's concern regarding the "inexactitude of words" stands in stark contrast to today's approach to claim construction, in which "a court must presume that the terms in the claim mean what they say."17 Thus, if there is one "philosophical shift" that has occurred in the area of claim construction in the thirty-five years since Autogiro, it appears to be a renewed faith in the ability of the English language to adequately define the metes and bounds of inventions. Interestingly, that philosophical shift has mirrored a gradual change in the way courts interpret statutes, from a "holistic" or contextual approach to a stricter textual-based approach.18 With these two extremes in mind, it could be said that the presumption in favor of "ordinary and accustomed meaning" represents a compromise between the myopic approach of Keystone Bridge, where claim interpretation focuses entirely on the claims, and the holistic approach of Autogiro, where a rose cannot be called a rose until the claims, specification, and prosecution history have all been thoroughly considered. Under the current system, a rose is presumed to be a rose unless the specification or prosecution clearly indicates otherwise.
B. The "Presumption" in Favor of the "Ordinary and Accustomed Meaning" of Claim Terms
1. Origin of the Presumption
The presumption in favor of the ordinary and accustomed meaning of claim terms first appeared in 1999 in Johnson Worldwide Associates, Inc. v. Zebco Corp.19 There the Federal Circuit stated as a "general rule" that "terms in the claim are to be given their ordinary and accustomed meaning," citing Renishaw and York Products.20 Notably, neither Renishaw nor York Products actually sets forth an unqualified "ordinary meaning" rule, as recited in Johnson Worldwide. Instead, Renishaw holds that, "Absent a special and particular definition created by the patent applicant, terms in a claim are to be given their ordinary and accustomed meaning."21 Likewise, York Products holds that, "Without an express intent to impart a novel meaning to claim terms, an inventor's claim terms take on their ordinary meaning."22 Thus, both Renishaw and York Products echo the holistic approach of Autogiro, in which the "ordinary meaning" of a claim term prevails only after a thorough review of the specification and prosecution history reveals no contrary meaning.
In Johnson Worldwide, the Federal Circuit subtly altered the role of "ordinary and accustomed meaning" in the claim construction process. While recognizing that claim terms can sometimes be redefined in the specification to take on alternate meanings, the court nevertheless established a presumption—specifically a heavy presumption—in favor of the "ordinary and accustomed meaning" of claim terms, as interpreted independently of the specification and prosecution history.23 No such presumption is mentioned in Renishaw or York Products. Indeed, none of the three cases cited in Johnson Worldwide as supporting an ordinary-meaning presumption (Nike, E.I. duPont, and Envirotech)24 actually sets forth such a presumption.
In Nike, the court held, "In construing a claim, claim terms are given their ordinary and accustomed meaning unless examination of the specification, prosecution history, and other claims indicates that the inventor intended otherwise."25 In E.I. duPont—the second "presumption" case cited in Johnson Worldwide—the court held, "It is entirely proper to use the specification to interpret what the patentee meant by a word or phrase in the claim. But this is not to be confused with adding an extraneous limitation appearing in the specification, which is improper."26 Finally, in Envirotech, the court held, "Words in a claim will be given their ordinary and accustomed meaning, unless it appears that the inventor used them differently."27 Rather than establishing a presumption in favor of the ordinary and accustomed meaning of claim terms, these cases generally advocate a presumption-neutral or holistic approach to claim construction—akin to what Judge Durfee espoused in Autogiro—wherein "ordinary meaning" is simply one data point to be considered along with other relevant information found in the specification and prosecution history. None of these cases suggests that the "ordinary and accustomed meaning" of a claim term—gleaned from an isolated reading of the claim language—enjoys a special presumption of correctness relative to other sources of evidence regarding the term's meaning, e.g., the written description and prosecution history. Notwithstanding the sketchy origins of the ordinary-meaning "presumption," it is now settled law that, in construing disputed claim terms, a "heavy presumption" applies in favor of the "ordinary and accustomed" meaning. The presumption can only be overcome if (1) the "patentee has chosen to be his or her own lexicographer by clearly setting forth an explicit definition for a claim term" or (2) "the term or terms chosen by the patentee so deprive the claim of clarity that there is no means by which the scope of the claim may be ascertained from the language used."28
2. Significance of the Ordinary-Meaning Presumption
What difference does it make that courts now apply a "heavy presumption" in favor of the ordinary and accustomed meaning of claim terms, as opposed to the pre-1999 practice of giving claim terms "their ordinary and accustomed meaning unless examination of the specification, prosecution history, and other claims indicates that the inventor intended otherwise"?29 The answer is that the ordinary-meaning presumption creates a burden of proof on one party or the other, which did not exist before Johnson Worldwide. By imposing a "heavy presumption" in favor of the ordinary and accustomed meaning of claim terms, courts essentially impose a burden of proof on whichever party opposes that ordinary and accustomed meaning. Although the Federal Circuit has never precisely identified the magnitude of this burden, its references to a "heavy presumption"30 and a "strong presumption"31 suggest that the burden is likely one of clear and convincing evidence.
Interestingly, claim construction is rarely discussed today in terms of "burdens of proof."32 However, in the aftermath of the Supreme Court's 1996 Markman decision, at least one district court grappled directly with the question of whether claim construction—as a pure question of law—should involve a burden of proof. In Northern Telecom Ltd. v. Samsung Electronics Co.,33 the court concluded that a burden-of-proof analysis should not be applied during claim construction because:
claim construction is determined as a matter of law, and matters of law generally are not subject to traditional burdens of proof . . . . [I]t is the duty of the court considering all of the appropriate evidence, regardless of who produced it, to determine the proper interpretation of the claims.34
Notwithstanding the analysis in Northern Telecom, there can be little doubt today that the "heavy presumption" in favor of ordinary meaning places a burden of proof on one party or the other during claim construction.35
The nature of the ordinary-meaning presumption and its associated burden of proof can be seen in the Federal Circuit's opinion in Interactive Gift Express, Inc. v. Compuserve, Inc.36 There, the court explained:
If the claim language is clear on its face, then our consideration of the rest of the intrinsic evidence is restricted to determining if a deviation from the clear language of the claims is specified . . . . If however the claim language is not clear on its face, then our consideration of the rest of the intrinsic evidence is directed to resolving, if possible, the lack of clarity.37
As explained in Interactive, if claim language is "clear on its face," a court's consideration of the written description and prosecution history (i.e., "the rest of the intrinsic evidence") is restricted to determining if an alternate meaning is required. The word "restricted" implies that the court's review of the written description and prosecution history differs substantively depending on whether the term-at-issue is judged to have an ordinary meaning based on the claim language itself. One logical explanation for a "restricted" review of the intrinsic evidence is that, when a claim term has been deemed to have an ordinary meaning, the court looks to the written description and prosecution history only for clear and convincing evidence that a different meaning was intended. In such a "restricted" review, the court presumably ignores more subtle or implied indications of an alternate meaning, which might otherwise be considered during an "unrestricted" review. The latter type of review is prescribed in Interactive only in the event that a claim term is initially deemed ambiguous on its face or devoid of an ordinary meaning.
As explained in Interactive, claim construction begins with a critical determination regarding a term's "ordinary meaning." That determination is made before the court considers the written description and prosecution history of the patent.38 The following hypothetical helps explain the significance of this initial determination. Consider a disputed claim term that has two proposed meanings: "X" (a broad definition proposed by the plaintiff-patentee) and "Y" (a narrower definition proposed by the defendant). Assume that the specification and prosecution history contain some indications that the inventors used the term broadly to mean "X," but these indications are inferential in nature and do not rise to the level of "clear and convincing" evidence.
Following the guidance of Interactive, the first question the court must answer is whether the disputed term has an ordinary and accustomed meaning that is clear on its face. There are at least three possible answers to that question: (1) the ordinary meaning is clearly "X"; (2) the ordinary meaning is clearly "Y"; or (3) no ordinary meaning can be ascertained from the claim language itself.39 Referring to the following, it can be seen that Answer 1 will likely result in the term being construed as "X;" Answer 2 will likely result in the term being construed as "Y"; and Answer 3 could result in either construction, or a holding of indefiniteness, depending on how the court weighs the intrinsic (and possibly extrinsic) evidence of record.
Tabular or Graphic Material Set Forth at This Point is Not Displayable
The point of the foregoing example is simply to illustrate that a court's initial determination regarding the "ordinary meaning" of disputed claim terms can have a dramatic impact on the ultimate outcome of the claim construction process.
3. Is the Ordinary-Meaning Presumption Really Something New?
The astute reader may question whether the "heavy presumption" in favor of ordinary and accustomed meaning is really something new, or whether it is simply a restatement of the long-standing rule that, although a patentee may act as his own lexicographer, "any special definition given to a word must be clearly defined in the specification."40 Could it be that the "heavy presumption" in favor of the ordinary and accustomed meaning of claim terms simply reflects the requirement that alternative meanings must be "clearly defined" in the specification? The answer, once again, is both "yes" and "no."
Although the ordinary-meaning presumption generally aligns with the traditional requirement that patentees denote specialized definitions with "reasonable clarity," there are significant differences between the ordinary-meaning presumption and the "reasonable clarity" rule. Most notably, the Federal Circuit has never held that parties bear a "heavy burden" in establishing that particular claim terms are specially defined in the specification. Even in its most strident opinion on the subject, the court has required only that patentees provide such definitions with "reasonable clarity, deliberateness, and precision."41 More typically, the court has set the lexicography standard much lower, merely requiring that specialized definitions be "sufficiently clear . . . [to] a person of experience in the field of the invention."42 The court has even held that patentees may define claim terms "by implication"—that is, without providing a clear signal that an alternative definition is being set forth.43 Thus, at the very least, the ordinary-meaning presumption seems to impose a significantly tougher standard than the traditional "reasonable clarity" rule. Indeed, the most tangible effect of the ordinary-meaning presumption may be the creation of a new "dividing line" between what will, and will not, constitute an "alternative definition" in the written description.44 Arguably, when the presumption applies (i.e., when a preliminary "ordinary meaning" has been found), only an explicit definition in the specification will be deemed sufficient to overcome the "heavy presumption" in favor of the ordinary meaning.45 In contrast, when the ordinary-meaning presumption is not in effect, a much lower threshold of "evidence" applies, which could include "implied" definitions such as those discussed in SciMed and Vitronics.
Another significant aspect of the ordinary-meaning presumption is that, unlike the "reasonable clarity" rule, which applies only to claim construction arguments based on a patentee acting as his own lexicographer, the ordinary-meaning presumption cuts across all claim construction arguments with equal force. Thus, for instance, a party seeking to alter a court's preliminary assessment of a term's "ordinary and accustomed meaning" on the ground that it improperly excludes the preferred embodiment presumably faces the same "heavy" burden of proof,46 notwithstanding the Federal Circuit's guidance that a construction that excludes the preferred embodiment is "rarely, if ever, correct."47 In other words, although the ordinary-meaning presumption may align with some traditional claim construction canons, e.g., the "reasonable clarity" rule, it may also conflict with other canons.
4. "Ordinary and Accustomed Meaning" Versus "Presumed Meaning"
The presumption in favor of "ordinary and accustomed meaning" suffers from a two-fold nomenclature problem. First, a court's preliminary assessment of the "ordinary and accustomed meaning" of a claim term is not an ultimate conclusion of law. Rather, it is merely a tool for setting the "line of scrimmage" during the claim construction process. Therefore, the label "ordinary and accustomed meaning" is misleading because it implies that an ultimate conclusion has been drawn when, in fact, the court has merely established a rebuttable presumption regarding the meaning of the term-at-issue. A better label would be "presumed meaning," which appropriately signals that the "meaning" is provisional in nature.48
Second, the term "ordinary and accustomed meaning" ignores that, oftentimes, a court reaches its preliminary assessment of a term's meaning based not on an actual inquiry into the term's "ordinary" or "accustomed" meaning, but rather on contextual indications in the claim language. The contextual method of deducing a term's meaning is based primarily on logic and linguistics rather than an actual inquiry into the term's "ordinary" usage and meaning.49 Thus, once again, the term "presumed meaning" would be a better choice.50
The simplest technique for determining the presumed meaning of claim terms is to assess what is, and what is not, literally recited in the claims. This is a straightforward (though not always uncontested) concept—namely, the presumed meaning of a claim term cannot include limitations that are not explicitly recited in the claim.51
In Zoltek Corp. v. United States,52 the disputed claim limitation was "starting material," and the specific question put to the court was whether "starting material" must necessarily include polyacrylonitrile ("PAN"). To resolve that question, the court first reviewed the claim language and made an initial assessment of whether the presumed meaning of "starting material" included PAN. The court had little trouble with that inquiry:
Independent claim 1 requires "employing a carbonizable fiber starting material." The language of the claim does not specify a certain type of "starting material" other than it must be "carbonizable."53
Having thus established that the presumed meaning of "starting material" did not require the inclusion of PAN, the court turned to the question of whether the written description required a contrary definition. The court found that the patentee had not clearly established a contrary definition, i.e., one that required the presence of PAN. Accordingly, the court construed the limitation as not requiring PAN.54
The court's construction of "starting material" in Zoltek appears to be correct given the guidelines set forth in Johnson Worldwide and Interactive. However, it is interesting to note that, had the court employed the pre-1999 (burden-neutral) approach in construing "starting material," rather than the ordinary-meaning approach of Johnson Worldwide, the court could easily have reached the opposition conclusion. That is because the written description in Zoltek clearly stated, "The starting carbonizable material used in practicing the invention consists essentially of polyacrylonitrile (PAN)."55 Thus, had the defendant in Zoltek not been laboring under the "heavy presumption" created by the court's initial assessment of the claim language, it seems entirely possible that the written description could have been construed as establishing a specialized definition of "starting carbonizable material." This further illustrates the critical importance of the court's initial "presumed meaning" analysis to the overall claim construction process.
Despite the importance of the presumed-meaning analysis, courts sometimes duck the opportunity to assign a presumed meaning to a claim term. For instance, in Shen Wei (USA) Inc. v. Kimberly-Clark Corp.,56 the term-at-issue was "dipping," as used in the following claim:
A disposable examination glove comprising:
a) only a single layer of a flexible material . . .
b) a quantity of dehydrated Aloe Vera on an inner surface of the layer of the flexible material, . . . wherein the aloe vera is attached to the flexible material by dipping the glove into a solution comprising aloe vera . . .
The dispute centered on whether "dipping" could encompass a process of spraying an aloe vera solution onto the gloves. The court acknowledged that "dipping" is a "non-technical term" that has an ordinary meaning.57 Yet the court failed to articulate what that ordinary meaning is. Instead, with one eye on the written description and prosecution history, the court concluded that "the ordinary meaning of . . . 'dipping' is sufficiently broad and amorphous such that the scope of 'dipping' can only be construed with recourse to the written description."58 The court then concluded (quite correctly) that "dipping" could not include "spraying" because the patentee had relinquished "spraying" during prosecution of the patent in order to avoid the prior art.
But why did the court in Shen Wei shy away from first identifying a presumed meaning for "dipping?" The dictionary provides what appears to be an imminently reasonable definition, namely "To plunge briefly into a liquid, as in order to wet, coat, or saturate."59 Furthermore, that definition, on its face, appears to preclude spraying because spraying does not literally involve "plunging into a liquid." Thus, the court could have reached the same construction of "dipping" by applying the ordinary-meaning presumption as it did following the holistic, burden-neutral approach. One possible explanation for the court's apparent reluctance to assign a presumed meaning is that the court—having already "looked ahead" to the prosecution history—simply concluded that its analysis would be easier and "cleaner" if it avoided the ordinary-meaning analysis altogether. In other words, the court took a shortcut.60
In Shen Wei, the court's shortcut was harmless because it did not affect the ultimate claim construction. However, a similar shortcut taken by the Federal Circuit in Bell Atlantic Network Services, Inc. v. Covad Communications Group, Inc.61 arguably had a dramatic impact on the resulting claim construction.
In Bell Atlantic, the claim-at-issue recited, "A transmission system for variably transmitting information data in a plurality of different modes over a network." The parties disputed the meaning of "modes," which the district court had limited to three distinct transmission modes identified in the written description (conventional, bi-directional, and reversible). The accused system used one of those three modes—the "conventional" mode—but not a "plurality" as required by the claims. Instead, the accused system added an "echo cancellation" technique to the conventional mode. On appeal, the parties disputed whether an echo cancellation technique was covered by the term "modes" in the asserted claim.
The court undertook a preliminary "ordinary meaning" analysis and concluded that "[i]t may be true that the ordinary meaning of 'mode' supports a broader meaning than the construction ascertained by the district court."62 Yet the court did not apply a "heavy presumption" in favor of this broad ordinary meaning, nor did it proceed with a "restricted" review of the rest of the intrinsic evidence as prescribed in Interactive. Instead, the court noted that "the non-technical term 'mode' is sufficiently broad and amorphous that the scope of the claim language can be reconciled only with recourse to the written description."63 The court then proceeded to conduct an unrestricted review of the written description and prosecution history.
Ultimately, the court in Bell Atlantic concluded that the written description implicitly defined "mode" more narrowly than its ordinary meaning: "[T]he patentees defined the term 'mode' by implication, through the term's consistent use throughout the '786 patent specification."64 The question, however, is whether such an "implied" definition would have been enough to overcome the "heavy presumption" in favor of a broader definition had the court assigned one as the presumed meaning. Arguably, it would not have.
1. Avoiding Superfluity and Other Illogical Results
As with the legal exercise of statutory interpretation, several canons of textual interpretation are available during claim construction to aid courts in arriving at a presumed meaning of claim terms. Chief among these is the rule against superfluity, which holds that a term in one body of text should be construed, if possible, to avoid rendering other terms in that body of text superfluous.65 An example of this method of claim construction is found in the Federal Circuit's decision in Neomagic Corp. v. Trident Microsystems, Inc.66
In Neomagic, the asserted claims recited a second power supply at a "negative voltage with respect to" a first power supply. The district court construed "negative . . . with respect to" to mean negative with respect to ground, i.e., an absolute negative voltage. The Federal Circuit reversed that claim construction as contrary to the "plain language" of the claim. In reaching its ruling, the Federal Circuit relied on contextual indications within the claim, primarily the avoidance of superfluity:
The plain language of the claim recites relative voltage rather than absolute voltage . . . . [I]f the inventors had meant to claim an absolute negative voltage, they need not have used the words "with respect to"; "negative" would have sufficed. Indeed, "negative with respect to said first power supply" is inconsistent with a description of absolute voltage, because absolute voltage is relative to ground.67
Thus, the court held that that the term "negative with respect to" requires only that the voltage supplied by the second power supply be negative relative to that provided by the first power supply—not necessarily negative relative to zero. The court confirmed that this meaning was not altered in the specification or prosecution history.
In Interactive, the court employed similar logic in developing a contextual, presumed meaning of "material object." The claims at issue required, among other things, "reproducing information in material objects utilizing information manufacturing machines located at point of sale locations."68 The issue before the court was whether a "material object" must necessarily be a tangible medium, or whether it could also constitute information itself. The court arrived at its presumed meaning based on simple logic:
A material object cannot be the information itself . . . [C]laim 1, for example, requires that the information be reproduced in a material object. If the information itself is the material object, . . . then claim 1 would require the information to be reproduced in itself. Such a construction is illogical and does not accord with the plain import of the claim language.69
Pure contextual analyses, such as those in Neomagic and Interactive, can provide an elegant and simple solution to an otherwise messy claim construction problem. Yet some courts fail to seize the opportunity to assess the presumed meaning of claim terms in that manner. For instance, in Brookhill-Wilk 1, L.L.C. v. Intuitive Surgical, Inc.,70 the term-at-issue was "remote location" in claims that required "transmitting [a video signal to a surgeon in] a remote location beyond a range of direct manual contact with [the] patient's body."71 The issue before the court was whether "remote location" could include a location in the same operating room as the patient being operated on, or whether it necessarily required a location outside the operating room.
Following the guidance of Johnson Worldwide and Interactive, the court first performed an assessment of the claim language to discern the presumed meaning of "remote location." The court concluded that "remote location beyond a range of direct manual contact" is ambiguous on its face because it can mean either (1) "all locations 'beyond arm's reach of the patient"' or (2) all locations beyond the range in which "the surgeon has the ability to go near and touch the patient with her own hands."72 The latter meaning would exclude a location within the operating room. Because of this supposed ambiguity, the court failed to arrive at a presumed meaning of "remote location" and moved instead to the written description and prosecution history to resolve the meaning of that term, which the court ultimately found to mean "a location outside of the operating room where the patient is located."73 Did the court in Brookhill exhaust all of its contextual options before declaring that "remote location" has no plain meaning based on the claim language itself? Arguably not. Of the two possible meanings considered by the court, the second meaning (beyond the range in which "the surgeon has the ability to go near and touch the patient with her own hands") renders one of the terms in the claim superfluous—namely the word "direct." Since the claims-at-issue required that a signal be transmitted to "a remote location beyond a range of direct manual contact with [the] patient's body,"74 it must be presumed that "direct" plays some definitional role in the claim. If so, the most logical conclusion is that "direct manual contact" distinguishes the claim from indirect manual contact, e.g., where the surgeon must walk from one part of the operating room to another to touch the patient. Accordingly, a construction of "remote location" that excludes the operating room altogether would render the term "direct" superfluous. For that reason, the court in Brookhill arguably erred in not giving "remote location" a presumed meaning of "outside of arm's reach of the patient." Had the court done so, the plaintiff would have been entitled to a "heavy presumption" in favor of that meaning, and perhaps the outcome of the claim construction analysis would have been different.75
2. Claim Differentiation
Another tool of contextual interpretation is the venerable, though somewhat beleaguered, doctrine of claim differentiation. Although claim differentiation is often dismissed as a "guideline" rather than a rule,76 the doctrine should be given due weight when assessing the presumed meaning of claim language. In other words, if claim differentiation supports a certain meaning of a claim term, that meaning should be presumed correct at the outset of claim construction (all else being equal), subject to rebuttal by the written description and/or prosecution history. The proper role of the claim differentiation doctrine, vis-a-vis the ordinary meaning analysis, can be seen in Kraft Foods, Inc. v. International Trading Co.77 There the claim-at-issue (for a food package) recited a "protecting back panel," and the dispute centered on whether the back panel must be relatively stiff. At the outset of its claim construction analysis, the district court noted that another claim in the patent expressly recited a "back panel" comprising "a flat relatively stiff planar sheet." Accordingly, the court deferred to the claim differentiation doctrine and initially presumed that the "protecting back panel" of the claim-at-issue did not need to be "relatively stiff" since the "relatively stiff" limitation was specifically recited by another claim. However, upon review of the written description and prosecution history, the court found that its original presumption was overcome and that a "protecting back panel" must, indeed, be relatively stiff. This analysis (and the resulting claim construction) was affirmed by the Federal Circuit.
Another course of logic was followed in Fantasy Sports Properties, Inc. v. Sportsline.com, Inc.,78 which arguably resulted in the court's failing to assign the correct "presumed meaning" to the term-at-issue. The asserted patent in Fantasy Sports claimed an apparatus for playing "fantasy football," which included the awarding of "bonus points." The question before the court was whether "bonus points" were limited to additional points awarded only for "scoring plays," e.g., extra points for a difficult touchdown, or whether "bonus points" could also include points awarded for non-scoring plays, e.g., extra points based on total yardage.79 One of the arguments made by the patentee was a claim differentiation argument:
the doctrine of claim differentiation dictates that a broader construction must be given to claim 1 because claim 2 limits the definition of the term "bonus points" to "complex or difficult plays," and claim 3 defines that limitation in terms of specific examples, e.g., "extra points for a quarterback who receives or runs for [a] touchdown."80
The Federal Circuit began its analysis by reciting that "the words of a claim are generally given their ordinary and accustomed meaning . . ." However, the court made no attempt to ascertain the ordinary and accustomed meaning of "bonus points" from the content and context of the claim language, notwithstanding the guidance of Johnson Worldwide and Interactive. Instead, the court jumped directly to the written description and prosecution history, which, according to the court, mandated a narrow meaning of "bonus points" that excluded points for non-scoring plays. Regarding the written description, the court reasoned:
The specification states that "[c]omputerized football points are awarded for touchdowns, field goals, and points after touchdowns. Bonus points are also awarded based on the difficulty of play." The term "bonus points" therefore must be construed to mean points that are awarded for a scoring play in addition to the points given for that scoring play in an actual football game.81
That conclusion is questionable, however, since it assumes that (1) the first sentence establishes all possible sources of "computerized football points," and (2) "bonus points" are necessarily a species of "football points." Neither of these assumptions is necessarily true. For instance, it seems likely that "computerized football points" would also be awarded for a "safety" (two points awarded for downing the opponent's ball in its own end zone),82 even though that was not specifically enumerated in the written description. In any event, the court went on to find that the patentee had relinquished a broad meaning of "bonus points" by acquiescing, without comment, to a particular rejection during prosecution of the patent-in-suit.83
Only after the court in Fantasy Sports reached its conclusion that the written description and prosecution history required a narrow reading of "bonus points" did it finally consider the patentee's claim differentiation argument. The court acknowledged that "claims 2 and 3 attempt to further define the term 'bonus points"'; however, the court downplayed that fact on the ground that "[t]he doctrine of claim differentiation creates only a presumption that each claim in a patent has a different scope."84 Without mentioning the heavy presumption that would apply under Johnson Worldwide in favor of the plain language of claim terms, the court held that any presumption created by claim differentiation was overcome by the "clear disclaimer" in the prosecution history of a broad definition of "bonus points." While Fantasy Sports may have been correctly decided in view of the prosecution history, it is nevertheless significant that, as in Brookhill, the court failed to conduct a proper contextual analysis of the claim language and thus failed to arrive at a presumed meaning of the term-at-issue before turning to the "rest of the intrinsic evidence." Had the court in Fantasy Sports strictly followed the Interactive model, it arguably should have declared the presumed meaning of "bonus points" to include extra points awarded for any type of play—scoring or non-scoring. That meaning should have been afforded a "heavy presumption" of correctness, and the court should have limited itself to a "restricted" review of the written description and prosecution history. Only if those other sources of intrinsic evidence clearly overcame the presumed meaning of "bonus points" should the court have assigned the term a contrary (i.e. narrower) meaning.
Perhaps the most common technique for deriving the "ordinary and accustomed" meaning of disputed claim terms is to look them up in a dictionary.85 Although the role of dictionaries in claim construction has a somewhat checkered history, it is now firmly established that "dictionary definitions may establish a claim's ordinary meaning."86
When the ordinary meaning of a term is derived from a dictionary, that meaning is entitled to a "heavy presumption" of correctness, subject (as always) to rebuttal by the written description and prosecution history. However, the use of dictionaries during this initial phase of claim construction raises two important concerns: (1) whether a dictionary should be used at all; and (2) if so, which definition (if any) should be used when there are multiple definitions of the same term? Those questions are addressed below.
1. When to Use a Dictionary
When courts turn to dictionaries in search of the "ordinary meaning" of claim terms, they often draw a distinction between "technical" and "nontechnical" terms.87 While that distinction is helpful for determining which type of dictionary to use—standard or technical—it does not go to the heart of the matter. What matters most, from the standpoint of whether a dictionary should be employed at all, is whether the term-at-issue is a general usage term or a specialized term with a unique meaning in the art. That distinction (which is independent of whether the term is "technical" or "nontechnical")88 is important because it relates to the use of "extrinsic evidence" during claim construction. As explained below, it is inappropriate for a court—after considering only the claim language in isolation—to determine the "ordinary meaning" of a specialized term by referring to a dictionary or treatise.
The use of dictionaries during claim construction is an exception to the general rule that extrinsic evidence should not be considered unless the meaning of a disputed term remains genuinely ambiguous after consideration of the intrinsic evidence. The Federal Circuit has noted that dictionaries, although they are extrinsic evidence, nevertheless "hold a special place in claim construction"89 and are "worthy of special note."90 That is because dictionaries are considered neutral, unlike expert testimony and other extrinsic evidence, which is filtered through the parties' respective litigation positions:
Dictionaries, encyclopedias and treatises, publicly available at the time the patent is issued, are objective resources that serve as reliable sources of information on the established meanings that would have been attributed to the terms of the claims by those of skill in the art. Such references are unbiased reflections of common understanding not influenced by expert testimony or events subsequent to the fixing of the intrinsic record by the grant of the patent, not colored by the motives of the parties, and not inspired by litigation.91
Thus, unlike other sources of extrinsic evidence, a judge can pull a dictionary from his or her own shelf and find a definition of a disputed term free from any influence by the litigants. This neutrality makes dictionaries a particularly trustworthy source of extrinsic evidence.92
When litigants agree that a disputed term is not a specialized term of art, the court need not hesitate in turning to a dictionary (preferably its own) to determine the presumed meaning of that term. In contrast, when the parties agree that a particular claim term is a specialized term of art, the court should refrain from using a dictionary to ascertain the presumed meaning of the term based only on the claim language. There are two reasons for this guideline. First, it is clearly inappropriate for a court to rely on a standard English language or general-usage technical/scientific dictionary to determine the meaning of a specialized term of art.93 Second, in most situations, a court's access to specialized dictionaries and treatises is limited to those materials submitted by the parties. But, in that case, the extrinsic evidence is no longer "neutral" and, thus, is no longer a reliable source for ascertaining the presumed meaning of the term-at-issue.
2. Choosing Between Multiple Definitions
A dilemma courts sometimes face when using a dictionary to determine the presumed meaning of a claim term is that there may be several definitions to choose from. However, that dilemma can usually be resolved by considering the context of the term-at-issue, as used in the claim, and eliminating definitions that are clearly inapplicable in that context.
For instance, in Renishaw, one of the terms-at-issue was "when," as used in the phrase "the probe generating a trigger signal when said sensing tip contacts an object and said stylus holder is thereby deflected relative to said housing." The court noted that there are several common dictionary definitions of "when," including (1) "just at the moment that" and (2) "at, during, or after the time that." By carefully studying the claim language, however, the court was able to eliminate the first definition as being inconsistent with the context in which "when" was used in the claim:
The claim ties the signal to contact and deflection, thus showing that the trigger signal cannot occur until the probe has contacted the workpiece and the stylus has deflected some amount. In other words, contact and deflection are a condition precedent to signaling. Thus, the claim itself precludes us from viewing "when" as requiring signaling at the precise moment of contact . . .94
The court then further refined the meaning of "when" by referring to the written description.
Sometimes, a claim construction dispute centers on a legal term of art, such as "comprising," or "consisting essentially of." When this happens, a court can readily resolve the presumed meaning of such terms by following the precedent of the Federal Circuit. For instance, in Applera Corp. v. Micromass UK Ltd., the term-at-issue was "comprising," which the court construed to mean "requir[ing] the presence of the enumerated claim limitations . . . without prohibiting other unrecited elements, structures, or steps from being present in the invention." The court reached that conclusion not by turning to a dictionary, but simply by relying on previous decisions of the Federal Circuit construing "comprising" as a matter of law.
Arguably, the same approach should be used for all "patent-ese" terms, such as "including," "having," "consisting of," "substantially," "plurality," "a/an," "effective amount," etc. Since these terms are essentially legal terms rather than technical terms, once the Federal Circuit has construed them as a matter of law, that meaning should be presumed to apply in all cases, subject (as always) to rebuttal by the written description and prosecution history.
The following proposal is designed to formalize the procedures set forth in Johnson Worldwide and Interactive and to properly allocate the burden of proof during claim construction.
Most courts already require a preliminary exchange of "disputed terms" between the parties, which puts both parties (and the court) on notice about which terms need to be construed. As part of that exchange, the parties should also identify whether each disputed term is a specialized term of art or a generic term (whether it be "technical" or otherwise). If a party contends that a disputed term has a specialized meaning in the art, that party should submit prima facie evidence of that fact. For instance, the party could submit a journal article or a treatise showing that the term is used differently in the art than in other technical fields or in ordinary usage.95
In the preliminary statement, the parties should also identify what issue must be resolved with respect to each term's construction. This may be accomplished by each party offering a proposed definition for each disputed claim term, from which the court can deduce the real "issue" by comparing the parties' respective definitions. However, a more direct approach would be for the parties to state their claim construction positions in the form of a question, i.e., "Does the term 'X' require the presence of 'Y'?" or "Is the term 'Z' limited to A, B, and C, or can it also include D?" These sorts of questions are what courts ultimately must answer during claim construction, so there is no sense in beating around the bush with "platonic" definitions when the real question-at-hand is simply whether a particular limitation is included or excluded by the claim language.96
Optimally, the parties would jointly submit a single preliminary statement to the court, having hammered out the disputed issues amongst themselves. A joint statement would provide the court with a tighter focus on the disputed issues, and the process of crafting a joint statement may even nudge the parties toward agreement on marginal issues.
Using one of the disputed terms in Johnson Worldwide as an example, a joint preliminary statement might look something like this:
Disputed Term: "Coupled"
Issue: Whether "coupled" requires a mechanical or physical connection, or whether it may also include an electrical connection?
Nature of Term: The parties agree that "coupled" does not have a specialized meaning in the art of marine motors.
Once the parties have submitted their preliminary statement, the court should have everything it needs to perform the first step of the claim construction analysis—namely ascertaining the presumed meaning (if any) of each of the disputed claim terms. The court should accomplish this by first carefully reviewing the claim language to determine if a presumed meaning for any of the disputed terms can be derived from the language and context of the terms themselves. In so doing, the court should give ample consideration to textual and contextual canons, such as the rule against superfluity, avoidance of illogical results, and the doctrine of claim differentiation.
After thoroughly considering the text and context of the disputed claim language, the court should then consider dictionary definitions, if appropriate. The appropriateness of using a dictionary at this stage depends on the semantic nature of the term-at-issue. If the parties agree that the term is not a specialized term of art, then the court should feel free to consult a neutral dictionary. If, however, the parties agree that the term is a specialized term of art, then the court should refrain from using a dictionary for the reasons explained in part III.C.1, supra. Finally, if the parties dispute whether the term is a specialized term of art, the court should determine whether the dispute is genuine by looking at the evidence presented by the specialized-meaning proponent. If it appears that a genuine dispute exists, the court should refrain from using a dictionary. If a genuine dispute does not exist, e.g., if the specialized-meaning proponent fails to present prima facie evidence of a specialized meaning, then the court should presume that the term is not a specialized term of art and proceed with its dictionary analysis.
At the conclusion of the forgoing process, the court will have determined, for each of the disputed claim terms, (1) whether a presumed meaning exists, and (2) if so, what that presumed meaning is. That information should then be presented to the parties in the form of a "Preliminary" or "Initial" Determination. With this information in hand, the parties can then draft their Markman briefs (and prepare appropriate extrinsic evidence) with full knowledge of exactly who (if anyone) bears the burden of proof on each of the disputed claim terms.97
The implementation of a "heavy presumption" in favor of the "ordinary and accustomed meaning" of claim terms has significantly changed the claim construction analysis. First, the presumption has created a burden of proof where no burden existed before. Second, the presumption has arguably created a "two-tier" system, in which courts conduct a "restricted review" of the written description and prosecution history when a term has a presumed ordinary meaning and an "unrestricted review" when a term does not have a presumed ordinary meaning. This, in turn, has arguably created a new dividing line between "implied" and "explicit" definitions set forth in the written description. Specifically, an "implied" definition cannot overcome the heavy presumption in favor of a term's ordinary meaning (if such a meaning has been found), but it can establish a term's meaning when a presumed meaning cannot be derived from the claim language itself. Finally, the heavy presumption in favor of ordinary meaning has placed greater emphasis on the use of textual and contextual canons, as well as dictionaries, which can be used to derive the "presumed meaning" of claim terms before a court considers the written description and prosecution history.
1 Renishaw PLC v. Marposs Societa Per Azioni, 158 F.3d 1243, 1249, 48 USPQ2d 1117, 1121 (Fed. Cir. 1998).
2 Johnson Worldwide Associates, Inc. v. Zebco Corp., 175 F.3d 985, 989, 50 USPQ2d 1607, 1610 (Fed. Cir. 1999).
3 K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1362?63, 52 USPQ2d 1001, 1004 (Fed. Cir. 1999).
4 CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366, 62 USPQ2d 1658, 1662 (Fed. Cir. 2002).
5 Autogiro Co. v. United States, 384 F.2d 391, 396, 155 USPQ 697, 702 (Ct. Cl. 1967).
6 Johnson Worldwide, 175 F.3d at 989, 50 USPQ2d at 1610; see also K-2, 191 F.3d at 1362?63, 52 USPQ2d at 1004; Kraft Foods, Inc. v. International Trading Co., 203 F.3d 1362, 1366, 53 USPQ2d 1814, 1817 (Fed. Cir. 2000); Northern Telecom Ltd. v. Samsung Electronics Co., Ltd., 215 F.3d 1281, 1287, 55 USPQ2d 1065, 1072 (Fed. Cir. 2000); Tate Access Floors, Inc. v. Interface Architectural Resources, Inc., 279 F.3d 1357, 1370, 61 USPQ2d 1647, 1656 (Fed. Cir. 2002); CCS Fitness, 288 F.3d at 1366, 62 USPQ2d at 1662; Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002); Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., 2002 WL 31094845, *6 (Fed. Cir. Sep. 20, 2002).
7 95 U.S. 274 (1877).
8 Id. at 277-78.
9 Id. at 278.
10 Id.
11 Autogiro, 384 F.2d at 396, 155 USPQ at 701.
12 Id. at 397, 155 USPQ at 702.
13 The Federal Circuit has consistently held that claim construction requires reference to the written description and prosecution history to understand the intended meaning of the claims. See, e.g., Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 621, 34 USPQ2d 1816, 1819 (Fed. Cir. 1995) ("[I]t is legal error to construe a claim by considering it in isolation. A claim must be read in view of the specification of which it is a part.").
14 See, e.g., CCS Fitness 288 F.3d at 1366, 62 USPQ2d at 1662 ("We indulge a 'heavy presumption' that a claim term carries its ordinary and customary meaning.").
15 Frankfurter, "Some Reflections on the Reading of Statutes," 47 Col. L. Rev. 527, 528 (1947). See also Frankfurter, "A Re-Evaluation of the Use of Legislative History in the Federal Courts," 52 Col. L. Rev., 125 (1952).
16 Autogiro, 384 F.2d at 396-97, 155 USPQ at 702.
17 Johnson Worldwide, 175 F.3d at 989, 50 USPQ2d at 1610.
18 See William N. Eskridge, "The New Textualism," 37 UCLA L. Rev. 621 (1990) (describing a transition from traditional, intent-based statutory interpretation to a "new textualism" that places greater emphasis on the plain meaning of words.)
19 The author performed a search on Westlaw (covering all federal cases in the "Intellectual Property" database) using the search term "presum! /s (ordinary accustomed plain) /s meaning." No Federal Circuit or CCPA cases predating Johnson Worldwide were found that expressed a "presumption" in favor of the ordinary, plain, and/or accustomed meaning of claim terms.
20 Johnson Worldwide, 175 F.3d at 989, 50 USPQ2d at 1610.
21 Renishaw, 158 F.3d at 1249, 48 USPQ2d at 1121 (emphasis added).
22 York Prods., Inc. v. Central Tractor Farm & Family Center, 99 F.3d 1568, 1572, 40 USPQ2d 1619, 1622 (Fed. Cir. 1996) (emphasis added).
23 The court held that "a court must presume that the terms in the claim mean what they say, and, unless otherwise compelled, give full effect to the ordinary and accustomed meaning of claim terms." Johnson Worldwide, 175 F.3d at 989, 50 USPQ2d at 1610. The court then noted that a party asserting an alternative meaning (i.e., narrower or broader) must "overcome this heavy presumption in favor of the ordinary meaning of claim language." Id.
24 Nike Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 33 USPQ2d 1038 (Fed. Cir. 1994); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 7 USPQ2d 1129 (Fed. Cir. 1988); Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 221 USPQ 473 (Fed. Cir. 1984).
25 43 F.3d at 646, 33 USPQ2d at 1039.
26 849 F.2d at 1433, 7 USQP2d at 1129.
27 730 F.2d at 759, 221 USPQ at 477.
28 Johnson Worldwide, 175 F.3d at 900, 50 USPQ2d at 1610.
29 Nike, 43 F.3d at 646, 33 USPQ2d at 1039.
30 See CCS Fitness, 288 F.3d at 1366, 62 USPQ2d at 1662.
31 See Tate Access, 279 F.3d at 1370, 61 USPQ2d at 1656.
32 But see Brookhill-Wilk 1, L.L.C. v. Intuitive Surgical, Inc., 178 F. Supp. 2d 356, 360 (S.D.N.Y. 2001) ("[T]he burden is on the party asserting an extraordinary meaning of a claim to overcome [the ordinary-meaning] presumption."); Gentile v. Franklin Sports, Inc., 211 F. Supp. 2d 334, 337 (D. Mass. 2002) ("This allocation of the burden of proof makes sense because it places the burden on the party seeking to change the scope of patent protection from what the ordinary, plain meaning of the claim language would otherwise grant.").
33 1996 WL 532122 (N.D. Cal. Sep. 16, 1996).
34 Id at *9 n.11 (internal citations omitted).
35 See 9 Wigmore on Evidence § 2487 (Chadbourn rev. 1981) ("The essential character and operation of presumptions, so far as the law of Evidence is concerned, is in all cases the same, ... they throw upon the party against whom they work the duty of going forward with the evidence.") (quoting Thayer, Preliminary Treatise ch. 5 (1898)); see alsoK-2, 191 F.3d at 1363 ("[A] party wishing to alter the meaning of a clear claim term must overcome the presumption that the ordinary and accustomed meaning is the proper one, demonstrating why such an alteration is required.") (emphasis added).
36 256 F.3d 1323, 59 USPQ2d 1401 (Fed. Cir. 2001) (en banc).
37 Interactive, 256 F.3d at 1331-32, 59 USPQ2d at 1407.
38 The Federal Circuit has provided conflicting guidance on this point. See, e.g., Leggett & Platt, Inc. v. Hickory Springs Mfg. Co., 285 F.3d 1353, 1357, 62 USPQ2d 1266, 1269 (Fed. Cir. 2002) ("To discern accepted meaning ... the construing court consults the specification and relevant prosecution history to provide context for understanding the meaning of the terms."). However, the court has recently confirmed that the ordinary-meaning analysis must be conducted before the written description and prosecution history are considered. See Texas Digital Systems, Inc. v. Telegenix, Inc., No. 02-1032 slip op. at 13 (Fed. Cir. Oct. 16, 2002) ("Consulting the written description and prosecution history as a threshold step in the claim construction process, before any effort is made to discern the ordinary and customary meanings attributed to the words themselves, invites a violation of our precedent counseling against importing limitations into the claims.").
39 A fourth possibility is that the court could reject both "X" and "Y" and arrive at its own sua sponte definition, e.g., "Z." See Exxon Chemical Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 35 USPQ2d 1801 (Fed. Cir. 1995). But see also Douglas Y'Barbo, "Is Extrinsic Evidence Ever Necessary to Decide Claim Construction Disputes? Part I," 81 J. Pat. Trademark Off. Soc'y 687, 692 (1999) (arguing that, notwithstanding Exxon, courts should not look beyond the two competing definitions proposed by the parties. Thus, claim construction is accomplished "by selecting one from among the two constructions proffered by the parties, and more particularly, by eliminating the least plausible one.").
40 Markman v. Westview Instruments, Inc., 52 F.3d 967, 980, 34 USPQ2d 1321, 1330 (Fed. Cir. 1995) (en banc), aff'd 517 U.S. 370 (1996).
41 In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1624 (Fed. Cir. 1994)
42 Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477, 45 USPQ2d 1429, 1432 (Fed. Cir. 1998).
43 See, e.g., SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344, 58 USPQ2d 1059, 1065 (Fed. Cir. 2001) ("[T]he written description can provide guidance as to the meaning of the claims, thereby dictating the manner in which the claims are to be construed, even if the guidance is not provided in explicit definitional format."); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582, 39 USPQ2d 1573, 1577 (Fed. Cir. 1996) (specification "acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.") (emphasis added).
44 See Robert Beyers et al., "A United Framework for Patent Claims Construction," 714 PLI/PAT 425, 444-45 (July 2002) (noting an important difference in judicial and public perception between "explicit definitions" and "implicit definitions.")
45 See, e.g., Texas Digital, No. 02-1032, slip op. at 12 ("In short, the presumption in favor of a dictionary definition will be overcome where the patentee, acting as his or her own lexicographer, has clearly set forth an explicit definition of the term different from its ordinary meaning.") (emphasis added).
46 See, e.g.,Elekta Instrument S.A. v. O.U.R. Scientific Int'l, Inc., 214 F.3d 1302, 1308, 54 USPQ2d 1910, 1914 (Fed. Cir. 2000).
47 Vitronics, 90 F.3d at 1583, 39 USPQ2d at 1577.
48 See Advanced Communication Design, Inc. v. Premier Retail Networks, Inc., 2002 WL 31108793, *1 (Fed. Cir. 2002) (using the term "presumptive ordinary meaning").
49 See Part III.B infra.
50 Cf. Beyers et al., supra note 44 at 456 (using the term "contextual meaning".)
51 See Hoganas AB v. Dresser Indus., 9 F.3d 948, 950, 28 USPQ2d 1936, 1938 (Fed. Cir. 1993) (It is improper for a court to add extraneous limitations to a claim, that is, limitations added wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.) (quoting E.I. du Pont, 849 F.2d at 1433, 7 USPQ2d at 1131).
52 48 Fed. C1. 290, 57 USPQ2d 1257 (Ct. Cl. 2000).
53 57 USPQ2d at 1259.
54 Id. at 1260.
55 Id. at 1259.
56 2002 WL 1998290 (N.D. Ill. Aug. 28, 2002).
57 Id. at *4.
58 Id.
59 American Heritage College Dictionary at 391 (3d ed. 2000).
60 See Beyers et al. supra note 44 at 444 (noting that "if a court sees an explicit definition in the specification, the court will often skip the first part of claims construction (i.e. trying to construe a limitation based on the claim language alone) and immediately construe the term using the definition given in the specification.") Such shortcuts are fine of course as long as the "explicit definition" would result in the same claim construction under both a "restricted" and an "unrestricted" review of the intrinsic evidence. When that is not the case however the court should perform a proper presumed meaning analysis.
61 262 F.3d 1258, 59 USPQ2d 1865 (Fed. Cir. 2001).
62 Id. at 1269, 59 USPQ2d at 1871.
63 Id. at 1269-70, 59 USPQ2d 1872.
64 Id. at 1273, 59 USPQ2d 1874.
65 See Kungys v. United States, 485 U.S. 759, 778 (1988) (noting the "cardinal rule of statutory interpretation that no provision should be construed to be entirely redundant."); Exxon Corp. v. Hunt, 475 U.S. 355, 369 n.14 (1986).
66 287 F.3d 1062, 62 USPQ 1482 (Fed. Cir. 2002).
67 Id. at 1075, 62 USPQ2d 1490-91.
68 Interactive, 256 F.3d at 1328, 59 USPQ2d at 1404 (emphasis added).
69 Id. at 1336, 59 USPQ2d at 1411.
70 178 F. Supp. 2d 356, 60 USPQ2d 1992 (S.D.N.Y. 2001).
71 Id. at 361, 60 USPQ2d at 1993.
72 Id. at 362, 60 USPQ2d at 1996.
73 Id. at 366, 60 USPQ2d at 1999.
74 Id. at 361, 60 USPQ2d at 1992 (emphasis added).
75 It is indeed questionable whether the facts and arguments supporting the court's narrow construction of "remote location" could have overcome a "heavy presumption" in favor of a broader construction.
76 See, e.g., Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186, 48 USPQ2d 1001, 1005 (Fed. Cir. 1998) (claim differentiation is "not a hard and fast rule of claim construction.")
77 203 F.3d 1362, 53 USPQ2d 1814 (Fed. Cir. 2000); see also Zoltek, 57 USPQ2d at 1262-63 (using claim differentiation to determine the presumed meaning of "sheet product.")
78 287 F.3d 1108, 62 USPQ2d 1564 (Fed. Cir. 2002).
79 Id. at 1113, 62 USPQ2d at 1568.
80 Id.
81 Id. at 1114, 62 USPQ2d at 1568 (emphasis in original).
82 http://ww2.nfl.com/fans/rules/definitions.html(visited October 15, 2002).
83 287 F.3d at 1114-15, 62 USPQ2d at 1568-69.
84 Id. at 1115, 62 USPQ2d at 1570.
85 See, e.g., CCS Fitness, 288 F.3d at 1367, 62 USPQ2d at 1663 (construing "reciprocating member"); Frank's Casing Crew & Rental Tools, Inc. v. PMR Techs., Ltd., 292 F.3d 1363 (Fed. Cir. 2002) (construing "monitor"); Ecolab, Inc. v. Paraclipse, Inc., 285 F.3d 1360 (Fed. Cir. 2002) (construing "contain"); Tate Access, 222 F.3d at 965, 55 USPQ2d at 1518-19 (construing "inner" and "integral"); Lawman Armor Corp. v. Winner Intern., Inc., 2002 WL 123342, *12 (E.D. Pa. 2002) (construing "slot"); Anchor Wall Systems, Inc. v. Rockwood Retaining Walls, Inc., 2002 WL 538738, *11 (D. Minn. 2002) (construing, "planar," "parallel," and "area"); Streck Laboratories v. Beckman Coulter, Inc., 2002 WL 1012965, *4 (D. Neb. 2002) (construing "analog" and "surrogate").
86 CCS Fitness, 288 F.3d at 1366, 62 USPQ2d at 1662.
87 See, e.g., Renishaw, 158 F.3d at 1251, 48 USPQ2d at 1123 (turning to the dictionary after noting that "[n]either party forwards a technical meaning for 'when' in the applicable industry."); Superguide Corp. v. DirecTV Enters., Inc., 169 F.Supp.2d 492, 499 (W.D.N.C. 2001) ("[C]laim terms are given their ordinary and accustomed meanings while technical terms are construed as having meanings that a person of ordinary skill in the field . . . would have given to them."); see also Toro Co. v. White Consolidated Indus., Inc., 199 F.3d 1295, 1303 n.**, 53 USPQ2d 1065, 1070 n.** (Fed. Cir. 1999) (Rader, J. dissenting) (noting distinction between "technical" terms and those that have "no special meaning in the field.").
88 Not all "technical" terms have specialized meanings in the art. See, e.g., Astrazeneca AB. v. Mutual Pharmaceutical Co., 2002 WL 1917705, *6 (E.D.Pa. Aug. 19, 2002) (finding that "solubilizer"—albeit a "technical" term—did not bear a specialized definition in the art); CSS Fitness, 288 F.3d at 1367 (construing "reciprocating member").
89 Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., 2002 WL 31094845, *20 n.4 (Fed. Cir. Sep. 20, 2002)
90 Vitronics, 90 F.3d at 1576 n. 6, 39 USPQ2d at 1578 n.3.
91 Texas Digital, No. 02-1032 slip op. at 10.
92 See Multiform Desiccants, 133 F.3d at 1478, 45 USPQ2d at 1433 (referring to dictionaries as "usually the least controversial sources of extrinsic evidence")
93 See LizardTech, Inc. v. Earth Resource Mapping, Inc., 2002 WL 1042168, *6 (Fed. Cir. 2002) (nonprecedential) ("It is true that we have indeed relied on non-technical dictionary definitions to construe non-technical terms . . . . However, the word 'tile,' as utilized in disclosing and claiming a patented method for transforming and compressing digital images, is manifestly a technical term . . . . For that reason, we construe the claim term 'tile' from the perspective of one skilled in the art, instead of a layperson reading a dictionary").
94 Id. at 1251.
95 An appropriate standard would be the summary judgment standard. In other words, the question to be resolved by the court is whether there exists a genuine issue of fact as to whether the term-in-question is a specialized term of art.
96 See Y'Barbo, supra note 39 at 699 ("[C]laim construction is just a predicate to the ultimate question of infringement, which is a binary decision—either the accused device infringes or it does not . . . . [P]rincipled construction of a legal document should mean not seeking more precision or generality than you need for the particular task at hand."). Y'Barbo also notes that claim construction should not be "cryptographic quest for the singular correct meaning." Id.
97 See Gretchen Ann Bender, Uncertainty and Unpredictability in Patent Litigation: the Time is Ripe for a Consistent Claim Construction Methodology, J. Intell. Prop. L. 175, 215 (2001) (noting that claim construction is unwieldy in part because "[n]o burden of proof frames the issue and helps the court in its analysis").
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Conference
4th Annual Passport to Proficiency on the Essentials of Hatch-Waxman and BPCIA
October 8-24, 2024
Virtual
Conference
2024 Corporate Counsel Women of Color: Career Strategies Conference
October 2-5, 2024
Las Vegas
Hybrid Conference
2024 New York Intellectual Property Law Institute
September 30 - October 1, 2024
New York
Hybrid Conference
2024 Patent Law Institute: Critical Issues & Best Practices
September 30 - October 1, 2024
New York
Seminar
Intellectual Property in the Age of AI: What Do You Own and How Do You Balance Risks?
September 25, 2024
Boston
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