John A. Helmsderfer and Brocar v. Bobrick Washroom Equipment, BWS South, Patterson Case Associates, and Target (CAFC 08-1027)

The case law warm-up:

To construe a claim term, a court must determine the meaning of any disputed words from the perspective of one of ordinary skill in the pertinent art at the time of filing. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description. Id. at 1316; Bell Atl. Network Servs. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001).

The appeal was over a single term: "partially hidden from view." Brocar ran into the problem of wanting 'partially' to mean 'generally,' and include 'totally.' Going against the plain meaning of terms is a great formula for being laughed out of court, as herein.

Brocar contends that the district court erred as a matter of law when it construed that term to exclude totally hidden from view. Brocar proposes that the term should be defined as "positioned so at least some of the top surface is blocked from being seen." Brocar does not claim that it acted as its own lexicographer and concomitantly does not claim that the written description expresses a clear modification to the ordinary meaning of the term "partially." Rather Brocar's argument rests on the notion that the plain meaning of "partially" includes completely. Brocar asserts that the written description, which states the top surface is "generally hidden from view," supports its proposed construction. Id. col.4 ll.48-51, col.8 ll.16-19. Brocar provides no evidence or reasoning to explain how "generally hidden from view" in the specification supports its proposed construction, which is essentially "at least partially hidden from view." The specification never utilizes the term "partially hidden from view" to describe the platform top surface. In fact, the only place where the platform top surface is described as "partially hidden from view" is in claim 1.

Additionally, Brocar used the term "generally" and "at least" elsewhere in claim 1. Id. col.16 l.63 ("generally perpendicular to a wall"), col.16 l.65 ("a generally flat protective panel"), col.17 l.1 ("at least a portion of").1 Our precedent instructs that different claim terms are presumed to have different meanings. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) ("[T]he use of two terms in a claim requires that they connote different meanings. . . ."); CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) ("In the absence of evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings."). As Brocar provides us with no evidence to rebut this presumption, we decline 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." If Brocar had intended to use these terms to describe the platform top surface, it should have.

Contrary to Brocar's arguments, the district court did not err by giving too much weight to extrinsic evidence to construe the term "partially hidden from view." A court may look to extrinsic evidence so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record. See Intel Corp. v. VIA Techs., 319 F.3d 1357, 1367 (Fed. Cir. 2003) ("When an analysis of intrinsic evidence resolves any ambiguity in a disputed claim term, it is improper to rely on extrinsic evidence to contradict the meaning so ascertained."). Here, partially is not defined in the specification. In fact, the phrase "partially hidden from view" does not even appear in the written description. The district court's statement that there is no clear meaning of the term "partially hidden from view" apparent from the intrinsic record is correct. Helmsderfer v. Bobrick Washroom Equip., Inc., No. 1:06cv268, 2007 U.S. Dist. LEXIS 60958, at *13 (S.D. Ohio Aug. 20, 2007). When 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.

All three dictionaries cited by the district court support its construction of the term "partially."³ The first describes "partially" as "to some extent." Webster's Third New International Dictionary of the English Language Unabridged 1646, def. 1 (1993). The second defines "partially" as "[t]o a degree; not totally." American Heritage Dictionary of the English Language 1319 (1996). The third describes "partially" as "[i]n partial way or degree, as opposed to totally; to some extent; in part; incompletely, restrictedly; partly." Oxford English Dictionary 267, def. 2.a. (2d ed. 1989). None of these sources support Brocar's definition of partially--and the second and third sources specifically contradict Brocar's construction. There was no conflicting evidence. Based on the foregoing, the ordinary and customary meaning of the term "partially" excludes "totally."

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³ We cite an earlier version of the first two dictionaries relied on by the district court, as the effective filing date of the '928 patent is June 7, 1995. See Phillips, 415 F.3d at 1313 ("[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application."). We note that the definitions of the word partially did not change depending on the version of the dictionary utilized.

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Brocar argued that the adopted construction would exclude the disclosed embodiments. But that does not afford that a term contradict plain meaning. Besides, other claims, not at issue, lack the disputed term, leaving "open the possibility that claims not at issue in this appeal encompass omitted embodiments."

Our case law generally counsels against interpreting a claim term in a way that excludes the preferred embodiment from the scope of the invention. See Primos Inc. v. Hunter's Specialties Inc., 451 F.3d 841, 848 (Fed. Cir. 2006) ("[W]e . . . should not normally interpret a claim term to exclude a preferred embodiment."); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (stating a construction that excludes the preferred embodiment "is rarely, if ever correct and would require highly persuasive evidentiary support"). Specifically, our court has cautioned against interpreting a claim term in a way that excludes disclosed embodiments, when that term has multiple ordinary meanings consistent with the intrinsic record. See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007) (noting the disputed claim term has multiple ordinary meanings and adopting the ordinary meaning that includes the disclosed examples in the specification)

It is often the case that different claims are directed to and cover different disclosed embodiments. The patentee chooses the language and accordingly the scope of his claims.

Brocar's proposed construction is not consistent with any plain meaning of the term "partially" as interpreted in light of the specification. In this case there is only one ordinary meaning attributable to the word "partially" and this meaning does not include "totally." As Brocar did not act as its own lexicographer and alter the ordinary meaning of the term "partially," we cannot construe these particular claims to encompass the preferred embodiment or other illustrated embodiments. Courts cannot rewrite claim language. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999) ("Courts do not rewrite claims; instead, we give effect to the terms chosen by the patentee."); Tex. Instruments, Inc. v. U.S. Int'l Trade Comm'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) ("[C]ourts can neither broaden nor narrow claims to give the patentee something different than what he has set forth.") (internal quotes omitted).