Aquatex Industries, Inc. v. Techniche Solutions
Decided August 19, 2005   pdf copy
Judge Mayer with Judges Gajarsa and Dyk

*             A specification is more important than prosecution history statements that do not show a "clear and unmistakable surrender of subject matter" for claim interpretation.

Aquatex sued Techniche at the U.S. District Court for the Middle District of Tennessee for alleged contributory infringement of claims to the use of evaporative clothing having "a fiberfill batting material." Judge Robert Echols granted Techniche summary judgment of noninfringement after construing the term "fiberfill batting material" as not including natural fibers (used in the accused method), based on prosecution history statements. Aquatex appealed to the Federal Circuit.

The Federal Circuit determined that "[t]he prosecution history …is ambiguous and does not directly address the composition of 'fiberfill'" and reversed non-infringement out of a more expansive term meaning. The Federal Circuit once again cited the recent Philips decision in favoring the specification over prosecution history, in stating: "because the prosecution history represents an ongoing negotiation, 'it often lacks the clarity of the specification and thus is less useful for claim construction purposes.'"

This case reminds us that the specification is most important for interpreting claims. One should prepare solid patent applications with numerous examples and careful definitions to alleviate lengthy argumentation during litigation. Another point was that patent references that had been incorporated by reference into a patent specification "are highly relevant to one of ordinary skill in the art for ascertaining the breadth of the claim term." A patent practitioner must be careful that entire patents that are incorporated by reference can support undesired claim term meanings.

Collegenet, Inc. v. Applyyourself, Inc.
Decided August 2, 2005   pdf copy
Judge Rader with Judges Lourie and Schall

*              "It is well settled that the term 'a' or 'an' ordinarily means 'one or more.'"

Collegenet successfully sued Applyyourself at the U.S. District Court for the District of Oregon for allegedly infringing claims to methods of creating college application forms "in a format specified by the institution." Magistrate Judge Dennis Hubel granted a motion as a matter of law for non-infringement, after broadly intgerpreting "a format" to mean "any format" and thus an unlimited number of formats. Both sides appealed to the Federal Circuit.

The Federal Circuit held that the district court misconstrued the phrase and reinstated the jury verdict of infringement. The Federal Circuit initially noted that the patentee did not "expressly define" this term and that the courts must derive the "disputed claim terms from their usage and context." However, the district court improperly replaced "a" with "any" based on one sentence from the specification and failed to see that , on the whole, the patentee had used the word consistently with general usage.

Software patent claims often use simple words such as "format" to describe advances in high technology. The patent drafter should consider linking such simple terms to a wide variety of examples or to explicit definitions to minimize court misadventure during patent enforcement.

Edward H. Phillips v. AWH Corporation et al.
Decided April 8, 2004 pdf copy
Judge Dyk with Judges Newman and Lourie

* "[A]n adjectival qualification …further narrows the scope of those structures covered by the claim and makes the term more definite."

Philips sued AWH at the U.S. District Court for the District of Colorado for alledged infringement of patent claims to "building modules…comprising internal steel baffles…..." Judge Marcia Krieger construed the term "baffle" as part of a means plus function claim, which limits the claim to structure in the specification. Because AWH's device used 90 degree angle baffles and the specification only showed oblique angle baffle structures, the court granted summary judgment of non-infringement. Philips appealed to the Federal Circuit.

The Federal Circuit found that "baffle" was not in means plus function language but found that the specification narrowly limited the claim to oblique baffles, which provide impact resistance as repeatedly emphasized in the specification and during prosecution. The court therefore affirmed, based on this alternative narrow interpretation. Judge Dyk dissented, arguing that the court improperly limited the claims to the preferred embodiment.

The majority opinion relied on the "context of the entirety of (the) invention" to limit the claims to a definition that fit the emphasized "impact resistance" in the specification. The accused device in contrast, employs a baffle geometry (at 90 degrees/perpendicular) that was not described in the specification and that did not provide the exhorted advantages. A practitioner should not define an invention by overly strong laudatory statements directed to a specific function, as a court may adopt such characterization to narrow claim scope.

Frank's Casing Crew & Rental Tools, Inc. v. Weatherford International, Inc.
Decided November 30, 2004 pdf copy
Judge Rader with Judges Friedman and Dyk

* "The same term or phrase should be interpreted consistently where it appears in claims
of common ancestry."

Frank's sued Weatherford at the U.S. District Court for the Western District of Oklahoma for allegedly infringing claims to a system that inserts oil well pipe sections via a "means for selectively pivoting" a boom. Judge Stephen Friot interpreted this means-for claim element to require "lift and boom plates" as disclosed in a preferred embodiment. The judge granted Weatherford summary judgment of no infringement because Weatherford's device lacks both structures. Frank's appealed to the Federal Circuit.

The Federal Circuit agreed that the pivoting means requires both structural features, partly because "the patent includes claims with a yawing function," which requires the same two structures, and because "[i]f possible, this court construes claim terms 'in a manner that renders the patent internally consistent.'"

This is another example of the need to be very careful when relying on means plus function claims. A recited function in this format is limited to structures presented in the specification and that are clearly linked to the function. Unfortunately for the patentee, this patent presented only one structural embodiment. The accused infringer used a "distinct (different) structural" approach to perform "essentially the same function," and escaped infringement.

Markman et al. v. Westview Instruments, Inc., et al. (95-26), 517 U.S. 370 (1996).